Ex Parte SUTTON

Patent Trial and Appeal Board

Sep 25, 2018

12823465 (P.T.A.B. Sep. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/823,465 06/25/2010
72058 7590 09/27/2018
Kilpatrick Townsend & Stockton LLP
Adobe Systems, Inc. 58083
Mailstop: IP Docketing - 22
1100 Peachtree Street, Suite 2800
Atlanta, GA 30309-4530
FIRST NAMED INVENTOR
Lee Anthony SUTTON
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
058083-0413489 (B1201) 7922
EXAMINER
NGUYEN, TAND
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
09/27/2018 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):
ipefiling@kilpatricktownsend.com
KTSDocketing2@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LEE ANTHONY SUTTON
Appeal2017-005200
Application 12/823,465 1
Technology Center 3600
Before HUBERT C. LORIN, NINA L. MEDLOCK, and
BRADLEY B. BAY AT, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Lee Anthony Sutton (Appellant) seeks our review under 35 U.S.C.
§ 134(a) of the Final Rejection of claims 24--45. We have jurisdiction under
35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
1 The Appellant identifies Adobe Systems Incorporated, as the real party in
interest. Appeal Br. 4.
Appeal2017-005200
Application 12/823,465
THE INVENTION
Claim 24, reproduced below with bracketed numerals added, is
illustrative of the subject matter on appeal.
24. A method, comprising:
[ 1] determining, by a processing device, that a first
document created with an electronic collaboration tool by a first
computing device must be modified with the electronic
collaboration tool by a second computing device to complete an
automated business process;
[2] modifying, by the electronic collaboration tool, the first
document in accordance with the automated business process
based on inputs received via a graphical interface from the
second computing device, wherein the graphical interface is
provided by the electronic collaboration tool;
[3] collecting, by the processing device, data used in the
automated business process from a first communication flow,
wherein the first communication flow involves at least one of a
first user associated with the first computing device and a
second user associated with the second computing device and is
external to a second communication flow between first and
second computing devices, wherein the second communication
flow is performed via the graphical interface, wherein
collecting the data comprises:
[ 4] monitoring the first communication flow based on
determining that the first document must be modified
with the electronic collaboration tool by the second
computing to complete the automated business process,
[5] obtaining a second document from the first
communication flow,
[ 6] matching content of the second document to a
unique identifier for the automated business process; and
[7] generating a reference to the second document in a
computer memory device accessible by the electronic
collaboration tool, wherein the reference includes the
2
Appeal2017-005200
Application 12/823,465
unique identifier and is generated based on matching the
second document to the unique identifier, wherein the
electronic collaboration tool performs at least one action
of the automated business process by retrieving the data
from the second document using the unique identifier.
THE REJECTIONS
The following rejections are before us for review:
Claims 24--45 are rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.
Claims 24--45 are rejected under 35 U.S.C. § 101 as being directed to
directed to judicially-excepted subject matter.
Claims 24--45 are rejected under 35 U.S.C. § I03(a) as being
unpatentable over Kraenzel et al. (US 2003/0171941 Al, pub. Sept. 11,
2003) (hereinafter "Kraenzel"), Gupta et al. (US 2002/0099775 Al,
pub. July 25, 2002) (hereinafter "Gupta"), and Moody et al.
(US 2003/0167310 Al, pub. Sept. 4, 2003) (hereinafter "Moody").
ISSUES
Did the Examiner err in rejecting claims 24--45 under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement?
Did the Examiner err in rejecting claims 24--45 under 35 U.S.C. § 101
as being directed to directed to judicially-excepted subject matter?
Did the Examiner err in rejecting claims 24--45 under 35 U.S.C.
§ I03(a) as being unpatentable over Kraenzel, Gupta, and Moody?
3
Appeal2017-005200
Application 12/823,465
ANALYSIS
The rejection of claims 24-45 under 35 US.C. § 112,first paragraph, as
failing to comply with the written description requirement.
The Examiner finds that the Specification does not provide adequate
written description support for "first document ... must be modified, in
steps [1]-[4], [1] determining step, [2] modifying step, and [4] monitoring
step" as recited in claim 24. Final Act. 8 ( emphasis omitted).
The Appellant argues that the claim language is supported by the
Specification, in particular paragraphs 18-20, 22, 23, 24, 25, 26, 29, 32, 35,
and 36.
We agree with the Appellant.
Paragraph 18 of the Specification discloses that "[a] business process
is a set of steps which requires a plurality of collaborative actions from one
or more users which assists in developing work product or a decision" with
examples including "a loan application and approval process, an insurance
claim application and approval process." Paragraph 19 discloses, as an
example, that "[t]he electronic collaboration tool may be configured to route
copies of the collected documents and forms to a loan specialist for initial
review and to a bank manager for final approval." Paragraph 22 discloses
that "the computing device may be configured to monitor a 'talk-back'
electronic mailbox for copies of correspondence sent by participants in the
business process when corresponding outside of the automated business
process." A person of ordinary skill in the art would understand this to mean
that a document ( e.g., loan application) must be modified to satisfy the
business process ( e.g., loan approval process).
4
Appeal2017-005200
Application 12/823,465
Accordingly, the rejection of claims 24--45 under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description requirement
is not sustained.
The rejection of claims 24-45 under 35 US.C. § 101 as being directed to
judicially-excepted subject matter.
The Appellant argues these claims as a group. See Reply Br. 2-8. We
select claim 24 as the representative claim for this group, and the remaining
claims 25--45 stand or fall with claim 24. 37 C.F.R. § 4I.37(c)(l)(iv).
Alice Corp. Proprietary Ltd. v. CLS Bank International, 134 S. Ct.
2347 (2014), identifies a two-step framework for determining whether
claimed subject matter is judicially-excepted from patent-eligibility under
35 U.S.C. § 101.
According to Alice step one, "[ w ]e must first determine whether the
claims at issue are directed to a patent-ineligible concept," such as an
abstract idea. Alice, 134 S. Ct. at 2355.
In that regard, the Examiner determined that the claims are directed to
"managing content for an electronic collaboration tool or in general 'a
business process management'," which the Examiner determines amounts to
instructing "how business should be conducted," i.e., "a fundamental
economic/business practice." Final Act. 13. According to the Examiner, the
claims are directed to concepts similar to abstract ideas identified in, inter
alia, SmartGene, Inc. v. Advanced Biological Labs., SA, 555 F. App'x 950
(Fed. Cir. 2014), Wireless Media Innovations, LLC v. Maher Terminals,
LLC, 100 F. Supp. 3d 405 (D.N.J. 2015), ajf'd, 636 F. App'x 1014 (Fed. Cir.
2016), Bancorp Servs., L.L.C., v. Sun Life Assurance Co. of Can., 687 F.3d
5
Appeal2017-005200
Application 12/823,465
1266 (Fed. Cir. 2012), Cyberfone Sys., LLC v. CNN Interactive Grp., Inc.,
558 F. App'x 988 (Fed. Cir. 2014) (nonprecedential), and Ultramercial, Inc.
v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014). Final Act. 15-21.
The Appellant begins by questioning the sufficiency of the procedure
the Examiner used in determining that the claims are directed to the abstract
idea of managing content for an electronic collaboration tool. Appeal
Br. 13-18. But the central concern is a legal one; that is, whether the
Examiner properly characterized the concept the claimed subject matter is
directed to and whether such a concept is an abstract idea. "Whether an
invention recites patent-eligible subject matter under section 101 is a pure
question of law []. Genetic Techs. Ltd. v. Merial LLC, 818 F.3d 1369, 1373
(Fed. Cir. 2016)." In re Wang,_F. App'x_, 2018 WL 3045563, at *2
(Fed. Cir. June 20, 2018). Be that as it may, the Examiner correctly
followed the Alice two-step framework to make a determination as to
whether the claims are directed to an abstract idea. See Final Act. 8-22
whereat the Alice framework is applied in detail. In doing so, the Appellant
was put on notice of the reasons for the rejection. See 35 U.S.C. § 132,
which sets forth a more general notice requirement whereby the applicant is
notified of the reasons for a rejection together with such information as may
be useful in judging the propriety of continuing with prosecution of the
application. See also In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011).
Evidence may be helpful in certain situations where, for instance,
facts are in dispute. But it is not always necessary. See, e.g., Mortgage
Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325-26
(Fed. Cir. 2016) ("[I]t is also possible, as numerous cases have recognized,
that a § 101 analysis may sometimes be undertaken without resolving fact
6
Appeal2017-005200
Application 12/823,465
issues."); Berkheimer v. HP Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018)
("When there is no genuine issue of material fact regarding whether the
claim element or claimed combination is well-understood, routine, [or]
conventional to a skilled artisan in the relevant field, this issue can be
decided on summary judgment as a matter of law."). We note that the
Appellant has put forward no rebuttal evidence showing the claims are not
directed to an abstract idea.
The Appellant argues that "these claims are different from the
concepts that have been identified by the courts as 'organizing human
activity."' Appeal Br. 18. According to the Appellant, "nothing about the
rejected claims is directed to ( or even involves) the management of
relationships or transactions between people." Id. at 19. The Appellant
also argues that the claims are not directed to a fundamental
economic/business practice. Id. In particular, the Appellant reproduces
limitations [2] and [3] of claim 24 (i.e., "modifying" and "collecting" steps),
and argues that these steps do not amount to a fundamental economic
practice or a method of organizing human activity. Id. at 20.
We are not persuaded of error in the Examiner's rejection.
The "directed to" inquiry in the claims applies a stage-one filter to the
claims, considered in light of the Specification, based on whether "their
character as a whole is directed to excluded subject matter." Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015);
see also Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir.
2016); Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016)
(Inquiring into "the focus of the claimed advance over the prior art.").
7
Appeal2017-005200
Application 12/823,465
Claim 24 recites "[a] method comprising:" ( 1) determining that a first
document must be modified in order to complete an automated business
process, (2) modifying the first document in accordance with the automated
business process, and (3) collecting data from a first communication flow
that involves at least one of a first user and a second user and is external to a
second communication flow. The "collecting" step involves (4) "monitoring
the first communication flow," (5) "obtaining a second document from the
first communication flow," (6) "matching content of the second document to
a unique identifier for the automated business process," and (7) "generating
a reference to the second document" that "includes the unique identifier."
The court in Enfzsh put the question as being "whether the focus of the
claims is on [a] specific asserted improvement in computer capabilities ...
or, instead, on a process that qualifies as an 'abstract idea' for which
computers are invoked merely as a tool." Enfzsh, 822 F.3d at 1335-36. The
court found that the "plain focus of the claims" was on "an improvement to
computer functionality itself, not on economic or other tasks for which a
computer is used in its ordinary capacity." Id. at 1336.
"In determining the eligibility of respondents' claimed process for
patent protection under § 101, their claims must be considered as a whole."
Diamond v. Diehr, 450 U.S. 175, 188 (1981). The question is whether the
claims as a whole "focus on a specific means or method that improves the
relevant technology" or are "directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery." McRO,
Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir.
2016).
8
Appeal2017-005200
Application 12/823,465
In this case, we find that claim 24, as a whole, is focused on managing
content for an electronic collaboration tool in order to automate a business
process. We do not see that claim 24 is focused on an improvement to any
technology such as a computer or an improved process for storing or
retrieving data in a computer. Here, as in CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011), all ofclaim24's
"method steps can be performed in the human mind, or by a human using a
pen and paper." As in CyberSource, the method of claim 24 "can be
performed by a human who simply reads records ... from a preexisting
database." Id. Determining, modifying, and collecting information is akin
to purely mental processes. Return Mail, Inc. v. United States Postal Serv.,
868 F.3d 1350, 1368 (Fed. Cir. 2017) ("Encoding and decoding mail
recipient information-including whether the sender wants a corrected
address-are processes that can, and have been, performed in the human
mind.").
"The 'abstract idea' step of the inquiry calls upon us to look at the
'focus of the claimed advance over the prior art' to determine if the claim's
'character as a whole' is directed to excluded subject matter." Affinity Labs
of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016)
(citing Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353
(Fed. Cir. 2016)); see also Enfish, 822 F.3d at 1335, quoted in Apple, Inc. v.
Ameranth, Inc., 842 F.3d 1229, 1241 (Fed. Cir. 2016).
In that regard, the Background section of the Specification discusses
the problem, which is that "[ w ]hile many businesses and organizations
benefit from electronic collaboration tools which are configured to automate
business processes, the automated processes are only useful for interacting
9
Appeal2017-005200
Application 12/823,465
with and storing data and communications which are within the confines of
the predefined automated process" and "[ u ]nfortunately, the same electronic
communication tools which enable people to connect and interact with the
automated business process are often used outside of the automated business
process to communicate information which is relevant to the business
process." Spec. para. 4. For example, an insurance agent reviewing a claim
for an auto accident "could decide that an additional picture might be helpful
in resolving the insurance claim" and "[ t ]he agent might email or call the
driver or the auto repair shop for more information." Id. In response, "the
driver or repair shop could provide further information in an email and/or
attach an additional picture to help the process along" and "voicemails or
text messages could also be exchanged during the follow-up with the
driver." Id. According to the Specification, the inventor solved the problem
by providing a content management system having a computing device
"configured to obtain data associated with an activity of the business process
wherein said activity is external to an automated business process of the
electronic collaboration tool." Id. para. 6. In light of the Specification's
description of the problem and solution, the advance over the prior art by the
claimed invention is obtaining data associated with an activity of a business
process, wherein said activity is external to an automated business process.
Given the focus of claim 24 as a whole, in light of the Specification, is
on data gathering activities2 in support of an automated business process, the
2 Cf Elec. Power Grp., 830 F.3d at 1353 (When "[t]he focus of the asserted
claims" is "on collecting information, analyzing it, and displaying certain
results of the collection and analysis," the claims are directed to an abstract
idea).
10
Appeal2017-005200
Application 12/823,465
claims are properly characterized as being "directed to" managing content
for an electronic collaboration tool in order to automate a business process.
Managing content for an electronic collaboration tool in order to automate a
business process is an abstract idea. Cf Content Extraction & Transmission
LLC v. Wells Fargo Bank, Nat. Ass 'n, 776 F.3d 1343, 1347 (Fed. Cir. 2014)
(holding that claims reciting "1) collecting data, 2) recognizing certain data
within the collected data set, and 3) storing that recognized data in a
memory" were drawn to an abstract idea).
The Appellant argues that the Specification discloses a technical
solution to a technical problem, namely "technical problems associated with
having communications relevant to a business process, but that are
nonetheless external to an electronic collaboration tool configured to
automate the business process." App. Br. 21 (citing Enfzsh and paragraphs
2-5 and 18-26 of the Appellant's Specification); see also, Reply Br. 3--4.
According to the Appellant, "[t]he technical solution improves the
computer-related technology by collecting the relevant data generated
outside of an automated business process, and referencing the relevant data
within the context of the particular business process ( as identified by its
unique identifier)." Id.
The Specification belies the Appellant's argument that the claimed
subject matter does not merely use generic computers as a tool or that their
functioning is improved by the claimed scheme. The cited paragraphs
generally describe collecting and organizing data using a "unique identifier."
Paragraph 21 discloses that a "business process may be identified with a
unique identifier" such as a unique tracking identifier assigned to a particular
loan application, and that "the unique identifier may be a numeric sequence,
11
Appeal2017-005200
Application 12/823,465
an alphabetical sequence, a symbolic sequence, or any combination thereof."
Paragraph 22 discloses obtaining data external to the automated business
process "in many ways, including, but not limited to obtaining an email ... ,
obtaining a voicemail ... , obtaining a sound file ... , obtaining a
memo ... , obtaining a video file ... , obtaining an electronic
document ... , and obtaining a text message." For example, "[p ]aper
memos may include any paper that is scanned, imaged, or otherwise
captured into a data format." Paragraph 23 further describes "other
embodiments" such as importing data from a data repository, "using an
automated crawling process or mechanism, such as a crawling bot or a type
of spider which looks for the unique identifier," or receiving a data
submission from a user interface. Paragraph 24 discloses that "[ t ]he unique
identifier may be present in many ways in the obtained data," including "in
the body of the text or in a file header," embedded in a file as a watermark or
barcode, and as a required data field for a data submission via a user
interface. Paragraph 25 describes correlating obtained data to a unique
identifier based on, for example, loan application records. Paragraph 26
discloses that "value may then be derived from the process by associating
the obtained data in a computer memory device with the automated business
process" which "has the advantage of increasing the amount of data which is
available for audit reviews or other types of analysis of a particular business
process."
In view of the forgoing disclosure in the Specification, we cannot
agree with Appellant that the claimed use of "a unique identifier" constitutes
an improvement to computer technology. On the contrary, the above
discussion in the Specification indicates that the invention is directed to a
12
Appeal2017-005200
Application 12/823,465
business practice that involves using generic computer components as tools
( e.g., using a scanner to scan a paper) to enhance the automation of a
business process. Cf Secured Mail Sols. LLC v. Universal Wilde, Inc.,
873 F.3d 905, 910 (Fed. Cir. 2017), cert. denied, 138 S. Ct. 2000 (2018)
("The fact that an identifier can be used to make a process more efficient,
however, does not necessarily render an abstract idea less abstract.").
In view of the above, we see no error in the Examiner's determination
that claim 24 is directed to an abstract idea. We reach the same conclusion
as to media claim 33 and system claim 42. As in Alice, "[t]he method claims
recite the abstract idea implemented on a generic computer; the system
claims recite a handful of generic computer components configured to
implement the same idea." Alice, 134 S. Ct. at 2360.
Step two of the Alice framework is "a search for an 'inventive
concept'-i.e., an element or combination of elements that is 'sufficient to
ensure that the patent in practice amounts to significantly more than a patent
upon the [ineligible concept] itself."' Alice, 134 S. Ct. at 2355 (alteration in
original) (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 73 (2012)).
In that regard, the Examiner determined that the additional limitations
in the claims "appear to improve the business process collaboration in
general but not in a significant way." Final Act. 18 ( citing paragraph 4 of
Appellant's Specification). According to the Examiner, "the additional
elements in the claims (e.g., 'a processing device'), when taken alone or in
combination do not off er 'significantly more' than the abstract idea itself."
Id. The Examiner also points out that "the [S]pecification describes mere
general purpose computing equipment." Id. (citing Figure 2 and
13
Appeal2017-005200
Application 12/823,465
paragraph 27 of Appellant's Specification discussing computing device
210).
The Appellant argues that "[ t ]he claims recite significantly more than
any abstract idea" because "the claims are directed to an Internet-centric
problem" and "the claimed solution requires (i.e., is 'rooted in') computer
technology." App. Br. 23. In particular, the Appellant reproduces the
determining, modifying, and collecting limitations of claim 24. Id. at 24.
But the Appellant merely reproduces claim limitations without explaining
how those limitations amount to more than the abstract idea of storing and
retrieving answers to predetermined questions.
The Appellant argues that the claims are similar to the claims held
eligible in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir.
2014). App. Br. 24--25; see also Reply Br. 7-8 (citing paragraphs 23-27).
According to the Appellant, "[ t ]he claimed solution for capturing and
referencing all data relevant to the business process, even if the data occurs
outside the electronic collaboration tool implementing the automated
business process, is necessarily rooted in computer technology." App.
Br. 25. In particular, the Appellant contends that "[t]he computer
technology implements the electronic collaboration tool and overcomes a
problem specifically arising in the realm of computer networks for
identifying and collecting data relevant to a business process from a plurality
of possible electronic communication sources external to the electronic
collaboration tool." Id.
In DDR Holdings, the Federal Circuit determined that although the
patent claims at issue involved conventional computers and the Internet, the
claims nevertheless addressed the problem of retaining website visitors who,
14
Appeal2017-005200
Application 12/823,465
if adhering to the routine, conventional functioning of the Internet hyperlink
protocol, would be transported instantly away from a host's website after
"'clicking"' on an advertisement and activating a hyperlink. DDR Holdings,
7 7 3 F. 3 d at 12 5 7. The court determined that those claims were directed to
patent-eligible subject matter because they claim a solution "necessarily
rooted in computer technology in order to overcome a problem specifically
arising in the realm of computer networks." Id.
No such technological advance is evident in the claimed invention.
Unlike the situation in DDR Holdings, the claimed computer components
operate precisely in the expected manner of collecting, matching, and storing
data in association with other data. (See, e.g., Spec para. 27 ("computing
device 210 may be a personal computer, a server, a processor, a mobile
computing device, an application specific integrated circuit (ASIC), a field
programmable gate array (FPGA), digital circuitry, analog circuitry, or
any plurality and/or combination thereof.")). Cf SmartGene, 555 F. App'x
at 955 ("The claim does not purport to identify new computer hardware: it
assumes the availability of physical components for input, memory, look-up,
comparison, and output."). Contrary to the Appellant's argument, claim 24
does not recite the Internet or any computer network. Nothing in the claim,
understood in light of the Specification, requires anything more than
conventional computer implementation. "The specification fails to provide
any technical details for the tangible components, but instead predominately
describes the system and methods in purely functional terms." In re TL!
Commc 'ns LLC Patent Litig., 823 F.3d 607, 612 (Fed. Cir. 2016). "[A]fter
Alice, there can remain no doubt: recitation of generic computer limitations
15
Appeal2017-005200
Application 12/823,465
does not make an otherwise ineligible claim patent-eligible." DDR
Holdings, 773 F.3d at 1256 (citation omitted).
A difficulty with the Appellant's argument is that claim 24 recites an
"electronic collaboration tool" that, in light of the Specification, appears to
cover generic computer implementation. See, e.g., Spec. para. 19 ("Non-
limiting examples of electronic collaboration tools include solutions
implemented with Adobe® LiveCycle®, WebOrb, Granite, OpenAMF, and
WebSphere"). We do not see in the subject matter as claimed any assertedly
inventive technology. Nor does the claim provide details as to any non-
conventional software. The claim language provides only a result-oriented
solution with insufficient detail for how a computer accomplishes it. Cf
Interval Licensing LLC v. AOL, Inc., 896 F.3d. 1335, 1344 (Fed. Cir. 2018):
Other software-based claimed inventions, however, have
failed to pass section 101 muster, because they did not recite
any assertedly inventive technology for improving computers as
tools and/or because the elements of the asserted invention were
so result-based that they amounted to patenting the patent-
ineligible concept itself.
See also Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044, 1057
(Fed. Cir. 2017):
Significantly, the claims do not provide details as to any non-
conventional software for enhancing the financing process. See
Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332,
1342 (Fed. Cir. 2017) (explaining that "[o]ur law demands more" than
claim language that "provides only a result-oriented solution, with
insufficient detail for how a computer accomplishes it"); Elec. Power
Grp., 830 F.3d at 1354 (explaining that claims are directed to an
abstract idea where they do not recite "any particular assertedly
inventive technology for performing [ conventional] functions").
16
Appeal2017-005200
Application 12/823,465
We also are not persuaded of error by the Appellant's argument that
"[a]bsent the claimed solution, identifying and referencing the various
external data that is relevant to a business process would not be possible."
App. Br. 25. See, e.g., Elec. Power Grp., 830 F.3d at 1353 ("we have
treated collecting information, including when limited to particular content
(which does not change its character as information), as within the realm of
abstract ideas."); SAP America, Inc. v. Investpic, LLC, 898 F.3d 1161, 1168
(Fed. Cir. 2018) ("As many cases make clear, even if a process of collecting
and analyzing information is 'limited to particular content' or a particular
'source,' that limitation does not make the collection and analysis other than
abstract." (quoting Elec. Power Grp., 830 F.3d at 1355 (citing cases)).
The mere combination of data sources, however, does not make
the claims patent eligible. As we have explained, "merely
selecting information, by content or source, for collection,
analysis, and [announcement] does nothing significant to
differentiate a process from ordinary mental processes, whose
implicit exclusion from § 101 undergirds the information-based
category of abstract ideas."
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1097 (Fed. Cir.
2016) (quoting Elec. Power Grp., 830 F.3d at 1355).
The Appellant's arguments challenging the Examiner's determination
that independent claims 24, 33, and 42 do not add anything significantly
more to transform the abstract idea to which they are directed into an
inventive concept are unpersuasive.
We have considered all of the Appellant's remaining arguments and
have found them unpersuasive. Accordingly, we sustain the Examiner's
determination that independent claim 24, and claims 25--45 which fall with
claim 24, are directed to ineligible subject matter under 35 U.S.C. § 101. Cf
17
Appeal2017-005200
Application 12/823,465
LendingTree, LLC v. Zillow, Inc., 656 F. App'x 991, 997 (Fed. Cir. 2016)
("We have considered all of Lending Tree's remaining arguments and have
found them unpersuasive. Accordingly, because the asserted claims of the
patents in suit are directed to an abstract idea and do not present an
'inventive concept,' we hold that they are directed to ineligible subject
matter under 35 U.S.C. § 101.").
The rejection is sustained.
The rejection of claims 24-45 under 35 US.C. § 103(a) as being
unpatentable over Kraenzel, Gupta, and Moody.
In the Final Office Action, the Examiner indicates that "[t]he
rejections are repeated due to the objection of the amendment and the 112,
1st paragraph rejections of claims 24--45 due the objection of the
amendment."
The Appellant argues that "the Office Action failed to consider or
even cite any language from the amendments made in the Response to Non-
Final Office Action filed on December 17, 2015." App. Br. 28.
It is apparent from the Examiner's rejection of claims 24--45 as failing
to comply with the written description requirement (supra), that the
amendment filed December 17, 2015, was entered.
Because the Examiner's rejection does not address the claim language
on appeal, the rejection is reversed proforma. 3
3 See MPEP 706.03(0) (form paragraph 7.28): If new matter is added only to
a claim, an objection using this paragraph should not be made, but the claim
should be rejected using form paragraph 7.31.01. As to any other
appropriate prior art or 35 U.S.C. 112 rejection, the new matter must be
considered as part of the claimed subject matter and cannot be ignored.
18
Appeal2017-005200
Application 12/823,465
CONCLUSIONS
The rejection of claims 24--45 under 35 U.S.C. § 112, first paragraph,
as failing to comply with the written description requirement is reversed.
The rejection of claims 24--45 under 35 U.S.C. § 101 as being directed
to judicially-excepted subject matter is affirmed.
The rejection of claims 24--45 under 35 U.S.C. § 103(a) as being
unpatentable over Kraenzel, Gupta, and Moody is reversed pro forma.
DECISION
The decision of the Examiner to reject claims 24--45 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
19