NOTE: This disposition is nonprecedential.

 

United States Court of Appeals 

for the Federal Circuit ______________________ 

IN RE: JASON SMITH,

Appellant

______________________ 

2022-1310

______________________ 

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. 14/786,244.

______________________ 

Decided: September 9, 2022

______________________ 

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 

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2 IN RE: SMITH

Appeal Board (“Board”) affirmed. Mr. Smith appeals. We 

affirm. 

BACKGROUND

Mr. Smith’s patent application number 14/786,244 relates to software for asset acquisition and management. 

U.S. Pat. App. Pub. 2016/0063403 at 1. Claim 1, a representative claim, is reproduced below:

A method for facilitating asset acquisition, asset 

management and asset maintenance whereby customers can purchase from multiple vendors comprising: 

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/customer database table, whereby vendor users and 

customer users can enter their identifying and personal data, and a searchable product catalogue database table; 

providing in said searchable product catalogue database for receipt from vendor users, product, product pricing and product maintenance data; 

providing an inventory database table and a customer 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 identifying data with information in any database table, 

which information is pertinent only to a particular 

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said identified user with said users identifying 

data; 

[and] linking the purchasing customer's identifying 

information from the customer/vendor database table, and the product, product pricing and product 

maintenance data for the selected product or products, 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 product maintenance data in connection with the management 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 rejecting the application on March 7, 2019. Mr. Smith appealed 

this rejection to the Board. The Board affirmed the examiner’s rejection, finding that claim 1 recited “collection, display, 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 respect to the dependent claims, the Board determined that 

Mr. Smith’s arguments were simply restatements of the dependent claims’ limitations and lacked “sufficient particularity” to “explain adequately how the limitations of the 

dependent claims integrate the abstract idea into a practical application or recite an inventive concept.” Id. at 18. 

Mr. Smith appeals to this court. We have jurisdiction under 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. 

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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. InvestPic, 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 determine whether the claims at issue are directed to . . . patent-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” sufficient to transform the nature of the claim into a patenteligible 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 information, product information, and asset management information, 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 requested data and any linked or associated data),” which 

this court in earlier similar cases has found patent ineligible 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 elements, “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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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 product catalogue database” to purchase products and allowing

“the customer [to] retrieve, use and manipulate the product, product pricing and product maintenance data in connection with the management of the assets purchased”). 

Our court has held that claims that “are directed to collection of information, comprehending the meaning of that 

collected information, and indication of the results, all on a 

generic computer network operating in its normal, expected 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 computer functions, which the specification describes are carried 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 management software is written in an entry related database such 

as ERD and converted to MySQL and PHP.”). There is no 

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argument here that the claims are directed to an “improvement 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 patent 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 argument 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 display (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 quotations omitted). We have considered Mr. Smith’s remaining arguments and find them unpersuasive.

CONCLUSION

The decision of the Board is affirmed.

AFFIRMED

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