Ex parte Li, Appeal 2017-008548

• Decision Date: 13 December 2018
• Docket Number: Application 12/947,928,Appeal 2017-008548
• Parties: Ex parte XIANG YANG LI and YIGANG CAI Technology Center 3600
• Court: Patent Trial and Appeal Board

Ex parte XIANG YANG LI and YIGANG CAI Technology Center 3600

Appeal 2017-008548

Application 12/947, 928^[1]

United States Patent and Trademark Office, Patent Trial and Appeal Board

December 13, 2018

FILING DATE: 11/17/2010

Before LARRY J. HUME, JENNIFER L. McKEOWN, and NORMAN H. BEAMER, Administrative Patent Judges.

DECISION ON APPEAL

HUME, ADMINISTRATIVE PATENT JUDGE.

This is a decision on appeal under 35 U.S.C. § 134(a) of the Final Rejection of claims 1-3 and 5-16, which are all claims pending in the application. Appellants have canceled claim 4. We have jurisdiction under 35 U.S.C. § 6(b).

We AFFIRM.

STATEMENT OF THE CASE^[2]

The Invention

Appellants' disclosed embodiments and claimed invention relate "generally to the field of communication networks, and, more particularly, to a method and billing system used in charging for communication services, which, in implementation, is expected to lower the cost of implementing a communication network by reducing the number of hardware components required to perform certain rating calculations." Spec. 1, ll. 5-9.

Exemplary Claim

Claim 1, reproduced below, is representative of the subject matter on appeal:

1. A communication system for assigning a service quota comprising

a charging trigger function (CTF) to receive a service request associated with a device

an online charging system (OCS) coupled to the CTF and configured to use a processor to

determine subscriber information relating to a subscriber associated with the device;

compare the service request with a policy rules database;

determine whether reverse rating is to be performed based on the comparison;

perform reverse rating if it is determined that reverse rating is to be performed; and

assign a dummy service unit quota if it is determined that reverse rating is not to be performed, wherein the dummy service quota sets a limit on an amount of the requested service to be provided.

Rejection on Appeal

Claims 1-3 and 5-16 stand rejected under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter. Final Act. 2.

CLAIM GROUPING

Based on Appellants' arguments (App. Br. 6-9) and our discretion under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of patent-ineligible subject matter Rejection R1 of claims 1-3 and 5-16 on the basis of representative claim l.^[3]

ISSUE

Appellants argue (App. Br. 6-9; Reply Br. 2-4) the Examiner's rejection of claim 1 under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter is in error. These contentions present us with the following issue:

Under our governing case law concerning 35U.S.C. § 101, did the Examiner err in concluding claim 1 is directed to a judicial exception, i.e., an abstract idea, without significantly more, and thus is patent-ineligible under § 101?

ANALYSIS

In reaching this decision, we consider all evidence presented and all arguments actually made by Appellants. To the extent Appellants have not advanced separate, substantive arguments for particular claims, or other issues, such arguments are waived. 37 C.F.R. § 41.37(c)(1)(iv).

We disagree with Appellants' arguments with respect to claim 1 and, unless otherwise noted, we incorporate by reference herein and adopt as our own: (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken, and (2) the reasons and rebuttals set forth in the Examiner's Answer in response to Appellants' arguments. We highlight and address specific findings and arguments regarding claim 1 for emphasis as follows.

Alice Framework

Section 101 provides that anyone who "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. 35 U.S.C. § 101. The Supreme Court has repeatedly emphasized that patent protection should not extend to claims that monopolize "the basic tools of scientific and technological work." Gottschalk v. Benson, 409 U.S. 63, 67 (1972); Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71 (2012); Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208; 134 S.Ct. 2347, 2354 (2014). Accordingly, laws of nature, natural phenomena, and abstract ideas are not patent-eligible subject matter. Alice Corp., 573 U.S. 208; 134 S.Ct. at 2354.

The Supreme Court's two-part Alice framework guides us in distinguishing between patent claims that impermissibly claim the "building blocks of human ingenuity" and those that "integrate the building blocks into something more." Alice Corp., 573 U.S. 208; 134 S.Ct. at 2354 (internal quotation marks, citation, and bracketing omitted). First, we "determine whether the claims at issue are directed to [a] patent-ineligible concept[]." Id. at 2355. If so, we "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." Id. at 2357 (quoting Mayo, 566 U.S. at 72, 79). Although the two steps of the Alice framework are related, the "Supreme Court's formulation makes clear that the first-stage filter is a meaningful one, sometimes ending the § 101 inquiry." Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). We note the Supreme Court "has not established a definitive rule to determine what constitutes an 'abstract idea'" for the purposes of step one. Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1334 (Fed. Cir. 2016) (citing Alice, 573 U.S. 208; 134 S.Ct. at 2357).

In Enfish, our reviewing court held claims directed to a self-referential logical model for a computer database patent-eligible under step one of Alice. Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1330 (Fed. Cir. 2016). The disclosed technique enabled faster searching and more effective storage of data than previous methods. Id. at 1333. The court found the claims directed to "a specific improvement to the way computers operate, embodied in the self-referential table" (id. at 1336), and explained that the claims are "not simply directed to any form of storing tabular data, but instead are specifically directed to a self-referential table for a computer database" that functions differently than conventional databases. Id. at 1337.

In McRO, the claims were not held to be abstract because they recited a "specific . . . improvement in computer animation" using "unconventional rules that relate[d] sub-sequences of phonemes, timings, and morph weight sets." McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1302- 03, 1307-08, 1314-15 (Fed. Cir. 2016). In McRO, "the incorporation of the claimed rules, not the use of the computer," improved an existing technological process. Id. at 1314.

In Bascom, the claims were directed to the inventive concept of providing customizable Internet-content filtering which, under Step 2 of the Alice analysis, was found to transform the abstract idea of filtering content into a patent-eligible invention. Although the underlying idea of filtering Internet content was deemed to abstract, under step 2 of the Alice analysis, the claims carved out a specific location for the filtering system, namely a remote Internet service provider (ISP) server, and required the filtering system to give users the ability to customize filtering for their individual network accounts. Bascom Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1349 (Fed. Cir. 2016).

However, our reviewing court has held claims ineligible as directed to an abstract idea when they merely collect electronic information, display information, or embody mental processes that could be performed by humans. Elec. Power Grp., 830 F.3d at 1353-54 (collecting cases). At the same time, "all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas." Mayo, 566 U.S. at 71. Abstract ideas may include, but are not limited to, fundamental economic practices, methods of organizing human activities, an idea of itself, and mathematical formulas or relationships. Alice, 573 U.S. 208; 134 S.Ct. at 2355-57. Under this guidance, we must therefore ensure at step one that we articulate what the claims are directed to with enough specificity to ensure the step one inquiry is meaningful. Id. at 2354 ("[W]e tread carefully in construing this exclusionary principle lest it swallow all of patent law.").

Under the "abstract idea" step we must evaluate "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 Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (internal citation omitted). If the claims are not directed to a patent-ineligible concept, the inquiry ends. See Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253, 1262 (Fed. Cir. 2017). If the concept is directed to a patent-ineligible concept, we proceed to the "inventive concept" step. For that second step we must "look with more specificity at what the claim elements add, in order to determine 'whether they identify an "inventive concept" in the application of the ineligible subject matter' to which the claim is directed." Affinity Labs, 838 F.3d at 1258 (quoting Elec. Power Grp., 830 F.3d at 1353).

Alice Step 1 -Abstract Idea

The Examiner concludes "[t]he claims are directed to a judicial exception (i.e., . . . [an] abstract idea), specifically the abstract idea of billing a customer." Final Act. 2. "The reason that the limitations are considered abstract idea is that evaluating customer data against policy rules and billing customers accordingly is a well-understood, routine, and conventional activity previously known to the industry." Id.

Appellants generally contend, "the [c]laims 1-3 and 5-16 are not directed to a judicial exception of an...