In Re: Downing ( 2018 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
IN RE: ROBERT E. DOWNING,
Appellant
______________________
2018-1795
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 12/454,528.
______________________
Decided: December 7, 2018
______________________
ROBERT E. DOWNING, Pittsburgh, PA, pro se.
THOMAS W. KRAUSE, Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA, for
appellee Andrei Iancu. Also represented by ROBERT J.
MCMANUS, LORE A. UNT.
______________________
Before LOURIE, BRYSON, and DYK, Circuit Judges.
LOURIE, Circuit Judge.
Robert E. Downing appeals from the decision of the
United States Patent and Trademark Office Patent Trial
and Appeal Board (“the Board”) affirming the examiner’s
rejection of claims 1, 2, 7, and 8 of U.S. Patent Application
12/454,528 (“the ’528 application”), which constitute all
2 IN RE: DOWNING
pending claims, as unpatentable because they are di-
rected to patent-ineligible subject matter, lacking ade-
quate written description support, and indefinite. See Ex
parte Downing, No. 2017-010103, slip op. at 21 (P.T.A.B.
Feb. 20, 2018); J.A. 2–22. Because the Board did not err
in its decision, we affirm.
BACKGROUND
Downing filed the ’528 application on May 19, 2009. 1
See J.A. 41–46. The ’528 application, which is entitled
“Method and electronic integrated model generically
facilitating efficiency with diffusion-based prognostics of
operations, short-long term planning, risks, and impacts,”
is directed to a “personal management information sys-
tem” based on a purported new and improved planning
model using electronic spreadsheet technology. See ’528
application Abstract, ¶¶ 5, 9–10, 20. Claim 1, the only
independent claim, reads as follows:
1. A resource planning forecast product operable in
a computer and recorded on a non-transitory com-
puter-readable medium for retrieval interlinking
non-business or business information relevant to
the end user without mandatory reliance on a
network or another computer file or Internet ac-
cess to operate wherein the product is produced by
processes of:
(a) designing a diffusion-based proprietary
forecasting technique on an Excel computer
platform for operation within a resource
planning framework to: (1) simplify forecast-
ing initialization with defaults option and ex-
1 Because the ’528 application was filed before the
enactment of the Leahy-Smith America Invents Act
(“AIA”), Pub. L. No. 112-29, 125 Stat. 284 (2011), we apply
the pre-AIA versions of 35 U.S.C. §§ 101 and 112.
IN RE: DOWNING 3
clusion of advanced statistical requirements
in forecasting, (2) consider social and techno-
logical change, (3) make forecasts of opera-
tions and development and strategic plans of
1-5-15 years simultaneously, and (4) provide
automatic updates reducing manual opera-
tions and storage requirements such that this
process taken in combination improves the
end user’s ease of operation and assessments;
(b) structuring presentations on the same
computer platform by linking display of the
forecasted data with features of: (1) addition-
al resource planning applications beyond the
typical such as an information resource utility
and intangibles, (2) adjacent display of the
operations and development and strategic
plans’ 1-5-15 year forecasts, and (3) compre-
hensive print views available simultaneously
of forecasted activity reports, resource plans,
and yearly performance next 15 years such
that this process taken in combination ex-
pands the utility of resource planning in the
field of forecasting; and
(c) constructing one-time settings for the
structure, on the same computer platform, for
the capability of accommodating the full ex-
tent of resource planning cited and more effi-
cient operation by: (1) fixed display of self-
explanatory instructions and definitions, (2)
only 4 required settings of initializing diffu-
sion indices, starting calendar date, non-
financial or financial mode, and the names for
activity reports, resource plans, and optional
information reports, and (3) optional settings
related to goals-objective-missions, alloca-
tions, and risk-impact data such that this pro-
cess taken in combination improves the end
4 IN RE: DOWNING
users’ ease of use and availability of forecast-
ed resource planning applications;
such that this product’s capabilities and features
accommodate the full extent of resource types and
resource planning (encompassing the five catego-
ries of planning noted) for operation by non-
technical or technical users in one unbundled
computer file through end user interaction with
displays.
J.A. 27–28 (emphases added).
The examiner rejected all pending claims of the ’528
application as (1) directed to patent-ineligible subject
matter, see 35 U.S.C. § 101, (2) lacking adequate written
description support, see § 112 ¶ 1, and (3) indefinite, see
§ 112 ¶ 2. See J.A. 1350–59. The examiner applied the
two-step framework from Alice Corp. v. CLS Bank Inter-
national, 134 S. Ct. 2347 (2014), to determine whether the
claims were patent eligible under § 101. The examiner
determined under step one that the claims were directed
to “the abstract idea of creating an electronic spreadsheet
for personal management.” J.A. 1354. The examiner
then determined that the claims did not include signifi-
cantly more than the underlying abstract idea since the
only limitations that remained were “generically-recited
computer elements.” J.A. 1355. As a result, the examiner
concluded that the claims constituted patent-ineligible
subject matter. J.A. 1356.
The examiner also rejected all pending claims for
lacking adequate written description support. See 35
U.S.C. § 112 ¶ 1. The examiner found that the “intangi-
bles” recited in claim 1 were not disclosed in the original
specification. J.A. 1352; see generally ’528 application
(stating nothing about “intangibles”). While Downing
attempted to amend the specification during prosecution
to add disclosures describing the “intangibles,” see J.A.
1298, the examiner objected to these amendments as
IN RE: DOWNING 5
improperly introducing new matter. J.A. 1352; see also 35
U.S.C. § 132(a) (“No amendment shall introduce new
matter into the disclosure of the invention.”).
The examiner lastly rejected all pending claims as in-
definite. See 35 U.S.C. § 112 ¶ 2. The examiner deter-
mined that it was unclear whether the applicant was
claiming “a process, machine, manufacture, or composi-
tion of matter, or any new and useful improvement there-
of.” J.A. 1354. The examiner also found that the
“business information relevant to the end user” limitation
was indefinite because of the lack of an antecedent basis
for “the end user.” Id. (emphasis added).
Downing appealed to the Board, which affirmed the
examiner’s rejections on all three grounds. The Board
agreed with the examiner that the claims were directed to
patent-ineligible subject matter. According to the Board,
the claims were directed to the abstract idea of “personal
management” or “resource planning” under Alice step one.
See J.A. 16. The Board then determined that, under Alice
step two, the remaining claim limitations recited nothing
more than generic computer components, which were
insufficient to transform the abstract concept into patent-
eligible subject matter. See J.A. 19–21. Specifically, the
Board observed that the claims recited the use of Excel®,
which is a “known and conventional computer platform,”
and other “generic computing components performing
routine and conventional computer functions.” J.A. 20.
The Board therefore concluded that the claims were
directed to patent-ineligible subject matter. See J.A. 22.
The Board also agreed with the examiner that the
claims lacked adequate written description support. The
Board found that there was insufficient support in the
original disclosure for the “intangibles” recited in claim 1.
See J.A. 10. The Board disagreed with Downing that the
original specification’s disclosure of a “predefined master
budget” disclosed the meaning of “intangibles.” See id.
6 IN RE: DOWNING
The Board also rejected Downing’s arguments that the
“Gifts and Property” line item in the figures adequately
described “intangibles.” Id. (citing J.A. 205). The Board
reasoned that even if “gifts and property fall within the
category of ‘intangibles,’ this category also includes other
types of assets.” Id. Moreover, according to the Board, a
person of ordinary skill in the art would not have under-
stood the disclosure of gifts and property to disclose the
entire category of “intangibles.” Id.
The Board lastly determined that the examiner had
properly concluded that the claims were indefinite.
Although the claims expressly recited that “the product is
produced by processes of . . . ,” see J.A. 27, the Board
found that “the claimed steps do not define how the
product is made, but rather describe the functions per-
formed by the product.” J.A. 11. Specifically, the Board
observed that the claimed resource planning product “is
not made by designing a diffusion-based proprietary
forecasting technique, structuring presentations, and
constructing one-time settings” as recited in the claim
limitations. J.A. 12. Instead, the Board determined that
these steps describe functions that the resource planning
product performs. Id. The Board therefore determined
that claim 1 was not a product by process claim and the
limitation “wherein the product is produced by processes
of” was “unclear.” Id. The Board also agreed that the
claim term “business information relevant to the end user”
lacked an antecedent basis. Because the specification
disclosed multiple different end users, the Board agreed
with the examiner that this rendered the claim term
unclear. See J.A. 13. The Board thus affirmed the exam-
iner’s rejections of the claims as indefinite. See J.A. 14.
Accordingly, the Board affirmed the rejection of claims 1,
2, 7, and 8 of the ’528 application. J.A. 22.
Downing timely appealed to this court. We have ju-
risdiction under 28 U.S.C. § 1295(a)(4)(A).
IN RE: DOWNING 7
DISCUSSION
We review the Board’s legal determinations de novo,
In re Elsner, 381 F.3d 1125, 1127 (Fed. Cir. 2004), and the
Board’s factual findings underlying those determinations
for substantial evidence, In re Gartside, 203 F.3d 1305,
1316 (Fed. Cir. 2000). A finding is supported by substan-
tial evidence if a reasonable mind might accept the evi-
dence to support the finding. Consol. Edison Co. v.
NLRB, 305 U.S. 197, 229 (1938).
Patent eligibility under 35 U.S.C. § 101 “is ultimately
an issue of law we review de novo” based on underlying
facts. Berkheimer v. HP Inc., 881 F.3d 1360, 1365 (Fed.
Cir. 2018) (italics added). Whether there is adequate
written description support as required by 35 U.S.C. § 112
¶ 1 is a question of fact. Ariad Pharm., Inc. v. Eli Lilly &
Co., 598 F.3d 1336, 1351 (Fed Cir. 2010) (en banc). Indef-
initeness under 35 U.S.C. § 112 ¶ 2 is a question of law
that we review de novo. Solomon v. Kimberly-Clark
Corp., 216 F.3d 1372, 1377 (Fed. Cir. 2000).
Downing challenges the Board’s decision to affirm the
examiner’s rejections of the claims as (1) directed to
patent-ineligible subject matter, (2) lacking adequate
written description support, and (3) indefinite. We take
each argument in turn.
A. Patent-Eligible Subject Matter
Downing first argues that the claims are directed to
patent-eligible subject matter because the invention is “an
improvement to the functioning of forecasting products’
technology.” Appellant’s Br. 10. Additionally, Downing
contends that his invention solved needs of “computer-
related forecasting products.” Id. at 11. Downing thus
argues that these claims are similar to those in McRO,
Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299,
1314–16 (Fed. Cir. 2016), which were directed to an
“improvement in computer animation,” and DDR Hold-
8 IN RE: DOWNING
ings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed.
Cir. 2014), which were directed to a solution “rooted in
computer technology.” According to Downing, the claims
at issue are therefore not directed to an abstract idea, and
thus we need not reach step two. See Appellant’s Br. 10.
Even if we reach step two, Downing contends that, alt-
hough a generic spreadsheet is used, it is combined with
“an innovative and unconventional sequence” and is able
“to perform functions that are not merely generic.” Id. at
12–13.
The Director responds that the Board properly af-
firmed the examiner’s determination that the claims
constitute patent-ineligible subject matter. First, the
Director argues that the claims are directed to the ab-
stract idea of resource planning. Second, the Director
contends that the remaining claim limitations recite
nothing more than generic computer components, such as
Excel®.
We agree with the Director that the claims are di-
rected to patent-ineligible subject matter. Under § 101,
“[w]hoever invents or discovers any new and useful pro-
cess, machine, manufacture, or composition of matter, or
any new and useful improvement thereof, may obtain a
patent therefor, subject to the conditions and require-
ments of this title.” 35 U.S.C. § 101. The Supreme Court
has recognized “important implicit exception[s]” to the
categories of patent-eligible subject matter such as “[l]aws
of nature, natural phenomena, and abstract ideas.” Alice,
134 S. Ct. at 2354 (internal citation omitted). We follow
the Supreme Court’s two-step framework in determining
whether an invention is patent-eligible subject matter
under § 101. First, we first “determine whether the
claims at issue are directed to a patent-ineligible concept.”
Id. at 2355. If so, then 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
IN RE: DOWNING 9
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566
U.S. 66, 72–73, 78 (2012)).
Under Alice step one, the claims as a whole are di-
rected to the concept of personal management, resource
planning, or forecasting. See ’528 application ¶¶ 4, 7, 10;
J.A. 27–28. As recited in the claims, the claimed “re-
source planning forecast product” collects and analyzes
“non-business or business information relevant to the end
user.” J.A. 27. This court has consistently treated inven-
tions directed to collecting, analyzing, and displaying
information as abstract ideas. See, e.g., Elec. Power Grp.
v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016) (“The
advance [the claims] purport to make is a process of
gathering and analyzing information of a specified con-
tent, then displaying the results, and not any particular
assertedly inventive technology for performing those
functions. They are therefore directed to an abstract
idea.”). And, unlike in McRO and DDR Holdings, Down-
ing is not claiming an improvement in Excel® spread-
sheets or an improved resource planning computer
technology. See McRO, 837 F.3d at 1314–16 (claiming an
“improvement in computer animation”); DDR Holdings,
773 F.3d at 1257 (claiming a solution that is “rooted in
computer technology”); see also Data Engine Techs. LLC v.
Google LLC, 906 F.3d 999, 1007–11 (Fed. Cir. 2018)
(holding that a claim “directed to a specific method for
navigating through three-dimensional electronic spread-
sheets” is not an abstract idea). We therefore conclude
that the claims are directed to an abstract idea.
Next, under Alice step two, we do not discern an in-
ventive concept sufficient to transform the claims into
patent-eligible subject matter. The claims merely recite
the use of generic computer components, such as a “com-
puter platform” with Excel®, “resource planning applica-
tions,” and “displays.” See J.A. 27–36. The case law has
consistently held that generic computer components are
not sufficient to transform abstract claims into patent-
10 IN RE: DOWNING
eligible subject matter. 2 Because the claims are drawn to
an abstract idea and add nothing more than generic
computer components, we conclude that the Board did not
err in holding the claims ineligible under § 101.
B. Written Description
Downing next argues that the Board erred in finding
that the claims are not adequately supported by the
written description. Downing cites his amendments to
the specification added during prosecution, which the
examiner objected to as new matter, that define “intangi-
bles” as “intellectual property, goodwill, gifts, barter.” See
J.A. 1298. Downing now requests that the definition be
2 See, e.g., Alice, 134 S. Ct. at 2359–60 (holding that
“implement[ing] the abstract idea . . . on a generic com-
puter” was not sufficient “to transform an abstract idea
into a patent eligible invention”); Intellectual Ventures I
LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1341–42
(Fed. Cir. 2017) (holding that “using generic computer
components and conventional computer data processing
activities” was not sufficient to find an “inventive con-
cept”); In re TLI Commc’ns LLC Patent Litig., 823 F.3d
607, 613–14 (Fed. Cir. 2016) (“These steps fall squarely
within our precedent finding generic computer compo-
nents insufficient to add an inventive concept to an oth-
erwise abstract idea.”); Mortg. Grader, Inc. v. First Choice
Loan Servs. Inc., 811 F.3d 1314, 1324–25 (Fed. Cir. 2016)
(holding that generic computer components such as an
“interface,” “network,” and “database” fail to satisfy the
“inventive concept requirement” (internal quotation
marks omitted)); Content Extraction & Transmission LLC
v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1347–48
(Fed. Cir. 2014) (“There is no ‘inventive concept’ in [Con-
tent Extraction’s] use of a generic scanner and computer
to perform well-understood, routine, and conventional
activities commonly used in industry.”).
IN RE: DOWNING 11
amended to “gifts and property” as a “nomenclature
error.” See Appellant’s Br. 2. Additionally, Downing
contends that a person of ordinary skill in the art would
understand the term “intangibles” to mean “Gifts and
Property Acquired.” Id. at 2–3 (quoting J.A. 205).
The Director responds that the term “intangibles”
lacks written description support because it is not men-
tioned anywhere in the original specification. The Direc-
tor argues that the support Downing cites is found in the
amendments to the specification that he added during
prosecution, and not in the original specification. And,
according to the Director, the Board properly affirmed the
examiner’s decision to reject the amendments because it
introduced new matter. Additionally, the Director argues
that there is no evidence that a person of ordinary skill in
the art would understand “intangibles” to correspond to
“gifts and property.”
We agree with the Director that the claims lack ade-
quate written description support. Under § 112, “[t]he
specification shall contain a written description of the
invention . . . .” 35 U.S.C. § 112 ¶ 1. To satisfy the writ-
ten description requirement, a patent specification must
describe the claimed invention in sufficient detail so that
it “reasonably conveys to those skilled in the art that the
inventor had possession of the claimed subject matter as
of the filing date.” Ariad, 598 F.3d at 1351 (internal
citations omitted); see also U.S. Patent & Trademark
Office, Manual of Patent Examining Procedure § 2163
(9th ed. 08.2017 rev., 2018) [hereinafter MPEP]. Because
the adequacy of the written description is judged “as of
the filing date,” each claim limitation must be supported
by the originally filed specification. See In re Koller, 613
F.2d 819, 823 (CCPA 1980). As a result, it is also improp-
er to amend the specification to add new matter during
prosecution. See 35 U.S.C. § 132(a). If new matter is
added, the examiner may object to, and require the appli-
cant to, cancel the new matter. See MPEP § 2163.06.
12 IN RE: DOWNING
Here, claim 1 recites “intangibles,” which is not dis-
closed or even mentioned in the original specification. See
J.A. 41–46. The examiner properly objected to Downing’s
attempts to amend the specification during prosecution to
add new matter defining “intangibles.” See J.A. 1352–53.
Additionally, the Board found no evidence that a person of
ordinary skill in the art would understand “intangibles”
as referring to the specific items listed by Downing, see
J.A. 10, a finding that is subject to deference on appeal.
The Board therefore did not err in affirming the examin-
er’s rejection that the claims lack adequate written de-
scription support.
C. Indefiniteness
Downing finally argues that the Board erred in de-
termining that the claims are indefinite. Downing con-
tends that the fact that the claim recites “wherein the
product is produced by processes of” clearly indicates that
this is a product-by-process claim. Appellant’s Br. 5
(emphasis added). According to Downing, the claim
elements summarize “processes which enable operation of
the end product.” Id. at 4. Downing also argues that the
“business information relevant to the end user” limitation
is not indefinite because the specification is clear on the
scope of end users. See id. at 5. According to Downing,
“[a]n end user in this context is one using the end prod-
uct.” Id. at 6.
The Director responds that the Board properly deter-
mined that the claims are indefinite. Although the claim
expressly states that it is a product-by-process claim, the
claim limitations that follow—“designing a diffusion-
based proprietary forecasting technique,” “structuring
presentations,” and “constructing one-time settings”—are
not steps detailing how the claimed product, a “resource
planning forecast product,” is made, but rather reflect
functions performed by the product. Appellee’s Br. 28–29.
The Director also contends that the lack of an antecedent
IN RE: DOWNING 13
basis renders the claims indefinite. According to the
Director, the claim language does not properly identify
the alleged “end user,” and due to the specification’s
disclosure of multiple end user types, the requisite clarity
is missing.
We agree with the Director that the claims are indefi-
nite because the claim reciting a product by process does
not recite the steps for making the claimed product.
Under 35 U.S.C. § 112 ¶ 2, the “specification shall con-
clude with one or more claims particularly pointing out
and distinctly claiming the subject matter which the
applicant regards as his invention.” The Supreme Court
has interpreted this to mean that a patent’s claims,
“viewed in light of the specification and prosecution
history,” must “inform those skilled in the art about the
scope of the invention with reasonable certainty.” Nauti-
lus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 910
(2014). This requires “clarity” with the understanding
that “absolute precision is unattainable.” Id.
A product-by-process claim is one in which a product
is claimed by the “process by which it is made.” In re
Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985). The product
claimed in claim 1 is a “resource planning forecast prod-
uct.” J.A. 27. The claim limitations that follow should
therefore define the “process by which [the resource
planning forecast product] is made.” Thorpe, 777 F.2d at
697. However, it is unclear how the recited claim limita-
tions of “designing a diffusion-based proprietary forecast-
ing technique,” “structuring presentations,” and
“constructing one-time settings,” see J.A. 27, describe how
the forecasting product is made. Instead, the claimed
steps appear to be functions or features of the forecasting
product and impart no information on how to actually
make the product. We therefore agree that the claims are
indefinite for failing to clearly recite the steps for making
the claimed product.
14 IN RE: DOWNING
We, however, do not agree that the claims are indefi-
nite due to a lack of an antecedent basis for “the end
user.” A claim is indefinite when it contains words or
phrases where the meaning is unclear, which may be the
result of the lack of an antecedent basis. See In re Pack-
ard, 751 F.3d 1307, 1310, 1314 (Fed. Cir. 2014). For
example, “[t]he lack of clarity could arise where a claim
refers to ‘said lever’ or ‘the lever,’ where the claim con-
tains no earlier recitation or limitation of a lever and
where it would be unclear as to what element the limita-
tion was making reference.” MPEP § 2173.05(e) (empha-
sis added). But the lack of an antecedent basis does not
render a claim indefinite as long as the claim “apprises
one of ordinary skill in the art of its scope and, therefore,
serves the notice function required by [§ 112 ¶ 2].” Id.
Thus, a claim term that lacks an antecedent basis may,
but does not necessarily, render a claim indefinite. See id.
In this case, the “business information relevant to the
end user” limitation introduces the term “the end user”
without an antecedent basis. See J.A. 27 (emphasis
added). However, claim 1 only references one “end user.”
See J.A. 27–28. While the specification discloses many
different end users, see J.A. 191–92, claim 1’s recitation of
one end user could only refer to the end user using the
product. Who else could the end user be? We therefore
agree with Downing that the claims are not indefinite for
lacking an antecedent basis for “the end user,” and that it
was improper for the Board to affirm the examiner’s
rejection of indefiniteness on that ground. However,
because we have also determined that the claims are
indefinite for failing to clearly recite the steps for making
the claimed product, we conclude that the Board did not
err in affirming the examiner’s indefiniteness rejection.
We have considered Downing’s remaining arguments
but find them unpersuasive.
IN RE: DOWNING 15
CONCLUSION
For the foregoing reasons, we conclude that the Board
did not err in affirming the examiner’s rejection of claims
1, 2, 7, and 8 of the ’528 application.
AFFIRMED