Case: 22-1310 Document: 57 Page: 1 Filed: 09/09/2022
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
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IN RE: JASON SMITH,
Appellant
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2022-1310
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Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 14/786,244.
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Decided: September 9, 2022
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JAMES A. MITCHELL, Mitchell Intellectual Property
Law, Ada, MI, for appellant.
SARAH E. CRAVEN, Office of the Solicitor, United States
Patent and Trademark Office, Alexandria, VA, for appellee
Katherine K. Vidal. Also represented by MAI-TRANG DUC
DANG, THOMAS W. KRAUSE, AMY J. NELSON, FARHEENA
YASMEEN RASHEED.
______________________
Before LOURIE, DYK, and HUGHES, Circuit Judges.
PER CURIAM
The Patent and Trademark Office rejected claims 1–13
and 15–36 of Jason Smith’s patent application as patent
ineligible under 35 U.S.C. § 101. The Patent Trial and
Case: 22-1310 Document: 57 Page: 2 Filed: 09/09/2022
2 IN RE: SMITH
Appeal Board (“Board”) affirmed. Mr. Smith appeals. We
affirm.
BACKGROUND
Mr. Smith’s patent application number 14/786,244 re-
lates to software for asset acquisition and management.
U.S. Pat. App. Pub. 2016/0063403 at 1. Claim 1, a repre-
sentative claim, is reproduced below:
A method for facilitating asset acquisition, asset
management and asset maintenance whereby cus-
tomers can purchase from multiple vendors com-
prising:
providing to vendor and customer users access to
consortium management software;
providing and maintaining in said consortium
management software relational data base tables
which are linked together, including a vendor/cus-
tomer database table, whereby vendor users and
customer users can enter their identifying and per-
sonal data, and a searchable product catalogue da-
tabase table;
providing in said searchable product catalogue da-
tabase for receipt from vendor users, product, prod-
uct pricing and product maintenance data;
providing an inventory database table and a cus-
tomer asset management database table;
providing customer users access to said searchable
product catalogue database, whereby a customer
searches the catalogue data base and purchases
from any vendor user product selected from said
product catalogue database;
providing for association of any said user's identi-
fying data with information in any database table,
which information is pertinent only to a particular
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IN RE: SMITH 3
said identified user with said users identifying
data;
[and] linking the purchasing customer's identifying
information from the customer/vendor database ta-
ble, and the product, product pricing and product
maintenance data for the selected product or prod-
ucts, to one or both of said inventory database table
and/or said customer asset management data base
table, such that the customer can retrieve, use and
manipulate the product, product pricing and prod-
uct maintenance data in connection with the man-
agement of the assets purchased.
Id. at 5.
Mr. Smith filed the application at issue, which claims
priority from an earlier provisional application, on October
22, 2015. The examiner issued a final office action reject-
ing the application on March 7, 2019. Mr. Smith appealed
this rejection to the Board. The Board affirmed the exam-
iner’s rejection, finding that claim 1 recited “collection, dis-
play, and manipulation of data” and was thus directed to
an abstract idea, and that it contained no inventive concept
that would make it patent eligible. Ex parte Smith, No.
2020-004436, at 10, 17 (P.T.A.B. July 1, 2021). With re-
spect to the dependent claims, the Board determined that
Mr. Smith’s arguments were simply restatements of the de-
pendent claims’ limitations and lacked “sufficient particu-
larity” to “explain adequately how the limitations of the
dependent claims integrate the abstract idea into a practi-
cal application or recite an inventive concept.” Id. at 18.
Mr. Smith appeals to this court. We have jurisdiction un-
der 28 U.S.C. § 1295(a)(4)(A).
DISCUSSION
We review the Board’s legal determination de novo and
underlying factual findings for substantial evidence.
Google LLC v. IPA Techs. Inc., 34 F.4th 1081, 1085 (Fed.
Case: 22-1310 Document: 57 Page: 4 Filed: 09/09/2022
4 IN RE: SMITH
Cir. 2022). “Eligibility under 35 U.S.C. § 101 is a question
of law, based on underlying facts.” SAP Am., Inc. v. In-
vestPic, LLC, 898 F.3d 1161, 1166 (Fed. Cir. 2018).
The Supreme Court has set out a two-step framework
for courts analyzing patent eligibility. Alice Corp. Pty. Ltd.
v. CLS Bank Int’l, 573 U.S. 208, 217 (2014). “First, we de-
termine whether the claims at issue are directed to . . . pa-
tent-ineligible concepts” such as “laws of nature, natural
phenomena, and abstract ideas.” Id. If so, we examine the
elements of each claim, considered both individually and as
an ordered combination, for an “inventive concept” suffi-
cient to transform the nature of the claim into a patent-
eligible application. Id at 217-18.
The Board analyzed claim 1 under the two-step Alice
inquiry and determined it was ineligible under § 101. At
step one, the Board determined that “[e]ach of the . . . steps
[in the claim] relate to storing vendor/customer infor-
mation, product information, and asset management infor-
mation, associating the various items of information with
other items of information, and enabling the retrieval of
any information and any of its associated information.” Ex
parte Smith, No. 2020-004436, at 8 (P.T.A.B. July 1, 2021).
It further found that “[s]uch data organization is akin to
collecting data, analyzing the data (e.g., associating and/or
linking certain data), and displaying results (e.g., the re-
quested data and any linked or associated data),” which
this court in earlier similar cases has found patent ineligi-
ble at step one of Alice. Id. The Board thus concluded that
claim 1 is directed to abstract ideas. Id. at 9. At step two,
the Board determined that “to the extent claim 1 includes
additional elements, any such additional elements include
only conventional computer components” and that these el-
ements, “when considered individually and as an ordered
combination, are well-understood, routine, conventional
activity in the field and are not specified beyond a high
level of generality.” Id. at 17. The Board concluded that
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IN RE: SMITH 5
there was no inventive concept that would render claim 1
patent eligible. Id.
We see no error in the Board’s analysis. As for step one
of Alice, claim 1 recites methods for collecting data (e.g.,
customers “enter their identifying and personal data” and
vendors enter “product, product pricing and maintenance
data”), analyzing data (e.g., “providing for association of
any said user’s identifying data with information in any
database table” and “linking the purchasing customer’s
identifying information . . . and the data for the selected
product or products”), and displaying the results (e.g.,
“providing customer users access to said searchable prod-
uct catalogue database” to purchase products and allowing
“the customer [to] retrieve, use and manipulate the prod-
uct, product pricing and product maintenance data in con-
nection with the management of the assets purchased”).
Our court has held that claims that “are directed to col-
lection of information, comprehending the meaning of that
collected information, and indication of the results, all on a
generic computer network operating in its normal, ex-
pected manner” are claims to abstract ideas. In re Killian,
No. 21-2113, 2022 WL 3589496 at *4 (Fed. Cir. Aug. 23,
2022); see also Elec. Power Group, LLC v. Alstom S.A., 830
F.3d 1350, 1353–54 (Fed. Cir. 2016); Intellectual Ventures
I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1340 (Fed.
Cir. 2017); In re TLI Commc’ns LLC Patent Litig., 823 F.3d
607, 613 (Fed. Cir. 2016).
Regarding Alice step two, nothing in the claim recites
an inventive concept to transform the abstract idea into a
patent-eligible application. The claim recites generic com-
puter functions, which the specification describes are car-
ried out by conventional computer components and can be
implemented using existing technologies. See U.S. Pat.
App. Pub. 2016/0063403 at 1 (“[T]he consortium manage-
ment software is written in an entry related database such
as ERD and converted to MySQL and PHP.”). There is no
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6 IN RE: SMITH
argument here that the claims are directed to an “improve-
ment in the functioning of a computer” or other technology
rather than merely invoking computers as a tool to perform
data manipulation. In re Killian, 2022 WL 3589496 at *4;
see also Enfish, LLC v. Microsoft Corp., 822 F.3d 1327,
1336 (Fed. Cir. 2016).
Mr. Smith argues without citation that “the first step
in analyzing a claim to a new process or an improvement
thereof must be to determine whether it is useful” and that
“[i]f it is useful, it is by law patent eligible.” Appellant’s Br.
22 (quotations omitted). But utility is not the test for pa-
tent eligibility under the Supreme Court’s cases, e.g., Ass’n
for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 591 (2013) (holding isolation of “important and useful
gene . . . not an act of invention”), and Mr. Smith’s argu-
ment is inconsistent with the framework set out in Alice.
Mr. Smith also argues that the Board failed to consider
the claims as a whole, but the Board explicitly did so and
determined that “even the combination of various tables of
data . . . solely relates to the storage, organization, and dis-
play (e.g., retrieval) of data, which has consistently been
held . . . to constitute an abstract idea.” Ex parte Smith,
No. 2020-004436, at 3 (P.T.A.B. July 1, 2021) (internal quo-
tations omitted). We have considered Mr. Smith’s remain-
ing arguments and find them unpersuasive.
CONCLUSION
The decision of the Board is affirmed.
AFFIRMED