[00:00:25] Speaker 01:
Next case is Henry C. Douglas Thomas, 2019-2053.

[00:00:33] Speaker 01:
Mr. Thomas.

[00:00:37] Speaker 05:
Greetings, Your Honors.

[00:00:38] Speaker 05:
May it please the Court.

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The Board affirmed the examiner's Section 101 rejection, relying on the abstract idea, judicial exception.

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However, the Board did reverse the examiner on the 103 rejection.

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At issue is the Mayo-Alice two-step framework test.

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Step one of that test requires evaluation of whether it was an abstract idea.

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But look, Council, when we look at the steps

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of the claim, whether maybe A to O, maybe 15 of them.

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Each one of them is either requesting or receiving information and going back and forth with information.

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This is the epitome of abstractions, passing information back and forth.

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It's not just general information.

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It's doing a specific purpose.

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It has a technical effect.

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And it's yielding something that's unconventional, was not well known.

[00:01:48] Speaker 01:
But in this case, the... It occurs through the transmission, solid transmission of information, isn't that right?

[00:01:56] Speaker 05:
It includes transfer of information, but it's specific information, the claim is specific.

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I don't think we should get held up on the fact that it involves data transmission.

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That's not the test.

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You wish we weren't, but that's what it is.

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It includes it, but that's not what it is.

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So is it your view that the character of the information is what makes it patent eligible, the passing back and forth of information?

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Well, in this case, the examiner never really identified the abstract idea.

[00:02:35] Speaker 02:
They just highlighted everything that was basically not a hardware limitation, which as we just looked at is a lot of... I'm just trying to understand your theory of what makes this claim patent eligible when what I see is a lot of steps

[00:02:53] Speaker 02:
about creating a survey, a questionnaire that looks like it could be done over the phone where a person says can you please give me some information to create the questionnaire that you want to pose questions to participants and then back and forth they collect the information and then they create this survey questionnaire and then they

[00:03:21] Speaker 02:
That could all be done over the phone, for example.

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Would that be patent eligible?

[00:03:26] Speaker 05:
Well, I think we should stick with what we have to work with here.

[00:03:30] Speaker 02:
Yeah, but I'm trying to get an idea of where you think the locus of your inventive context or your patent eligibility is.

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Because right now, the asking and receiving of various pieces of information to create a final questionnaire

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That could all be done over the phone and so that couldn't possibly be what makes this patent eligible.

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It has to be something else.

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We're using a remote server in conjunction with an internet-based survey manager and we are creating a survey through these interactions and that was never done before.

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And then once we create this survey,

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were able to host it on this internet-based survey manager.

[00:04:17] Speaker 02:
And that allows people to... What is the survey manager?

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It is akin to a server, as the director has noted.

[00:04:27] Speaker 02:
I thought they also pointed out that we have a previous opinion called Enray Thomas, where that term survey manager was interpreted to include a person.

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Is that right?

[00:04:41] Speaker 05:
I don't recall that, but I'm not sure.

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But in any case, here the invention provides new and non-obvious functionality.

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It is in the processing, and there's no case it says it can't be in the processing.

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Well, Mr. Thomas, isn't the computer just being used

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for its traditional purpose, receiving data, analyzing the data, outputting data.

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Nothing is, as I understand it, nothing is being done to the hardware, the computer itself.

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It's just being used in its normal way.

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With respect to the hardware, but the claim, as we saw, has many limitations beyond the hardware.

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And those limitations

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in combination were found to be not handable.

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You're talking about the survey items.

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Because of the, pardon me?

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You're talking about the survey items.

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I'm talking about all, there's various limitations in the claim.

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For example, one of them is there's an interaction to select a participant group and that will correlate to the people who will eventually be permitted to use the survey.

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And you're using the computer to do that.

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Yes, sure.

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Computers are used for lots of things.

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It doesn't mean that the subject matter is not patentable.

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We're not claiming the computer.

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We're claiming the processing.

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Improved technological processing.

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In MCRO, it was the same situation.

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It was the processing, not the computer.

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What processing is going on in the claim?

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the interaction with the person who desires the survey.

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He has to go through all these steps to create the survey.

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And then once created, he permits it to be hosted.

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And then once hosted, the InterBase Survey Manager is able to facilitate

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the appropriate participants to gain access to the survey and complete it.

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In step two, the question is, is there inventive concept?

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That is, does the claim recite something more than is well-known, routine, or conventional?

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Here, there should be no doubt that that is the case.

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There is something more.

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And that's something more is in the findings and conclusions in the record from the board, that certain limitations in the claim, processing limitations, were found non-obvious.

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Since the inventive concept notion is akin to what cases kind of implied is something less formal than obviousness determination,

[00:07:51] Speaker 01:
Well, that's one of the problems.

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The Supreme Court has dealt with 101, bringing in concepts of obviousness.

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But we've kept them separate.

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Well, the Supreme Court said it was the crux of step two.

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And if that's the case, the... In other words, step two is an obviousness question?

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No, step two is

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is whether the claims recite something more than what is well known, excuse me, well understood, routine or conventional.

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And it also has to be something that's not the abstract idea itself.

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Exactly.

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So if what you're pointing to as being novel or non-obvious is still

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Part of the abstract idea that's not something you can count on.

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Please don't talk through the question.

[00:08:54] Speaker 05:
My apologies, sir.

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In this case, the board found the abstract idea to be performing surveys.

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That is clearly wrong because the claim is not directed to performing surveys.

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But if that's the abstract idea, the balance of the claim remains to be considered for the inventive concept.

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And here the board found limitations in claim 20, processing ones, to be non-obvious.

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And that, by definition, must establish that those limitations, which were not part of the abstract idea of performing surveys, they are something more that is necessarily not well understood, routine, or conventional.

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So you think this is a case of first impression, and that we should hold that where the board at some stage of the proceedings

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has found the claims to be non-obvious, even though ineligible under 101.

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If so facto, they should therefore have been found to have met the inventive step aspect of step two.

[00:10:26] Speaker 05:
Yes, I think a written opinion would clarify that an obviousness determination is also an inventive concept determination in probably most, if not all, instances.

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I'm going to hold to balance my time for rebuttal.

[00:10:49] Speaker 01:
We will certainly do that.

[00:10:52] Speaker 01:
Mr. Matich?

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Did I get it right?

[00:11:00] Speaker 00:
Yes, Your Honor, Matich.

[00:11:01] Speaker 00:
Thank you.

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And may it please the court, Mr. Thomas's patent application seeks to claim an ordinary survey done on an ordinary computer.

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Surveys are not patent-eligible subject matter.

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As the specification itself says at Appendix 53, surveys have long been part of economic, commercial, and political life.

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Nothing in the claims' technical limitations moves them beyond the abstract.

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The computers are described in purely functional terms.

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So something is novel?

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and non-obvious and definitely, definitely claimed and adequately supported by the written description and fully enabled to one's skill in the art, it could still nevertheless be patent ineligible for being an abstract idea.

[00:11:47] Speaker 00:
So, Your Honor, this court and even the Supreme Court have acknowledged there's a little bit of tension in between the 103 and 101 analyses.

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Here, the board... Is the answer yes?

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It still can be patented ineligible to be directed to nothing more than an abstract idea?

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So yes, Your Honor.

[00:12:06] Speaker 00:
For example, in SAP America, this court said that we could assume that something is novel and groundbreaking, but if it's an innovation not in a patent-eligible area, so in that case it was a financial statistical analysis, that's not something that's patent-eligible.

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Here, I don't think that's what we have going on.

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Here, Mr. Thomas's

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application claims simply just doing a survey on a computer and then the computers are described in purely functional terms as computers that do the things necessary to automate the survey function.

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So I don't think one needs to delve into the exact line between 101 and 103 analysis here.

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Indeed, in fact, Mr. Thomas's brief at page 25 admits that the remote server element of his claim, which is the element that does most of the computing work, is in fact a generic computing device.

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The purported advance of Mr. Thomas's invention is simply automating an ordinary survey on a computer.

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This court has repeatedly held that that kind of subject matter is not patent-eligible.

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That's what the board held here, and for that reason, this court should affirm.

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In other words, the board's finding of non-arguestess should just be ignored by us.

[00:13:27] Speaker 00:
No, Your Honor.

[00:13:27] Speaker 00:
I don't think you necessarily need to ignore it, although I don't think it necessarily requires a full written opinion to deal with it.

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Here, the board expressly dealt with the tension.

[00:13:40] Speaker 00:
You mean Rule 36?

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If this court were to decide to issue a Rule 36 in this case, we would not object to that.

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Never have.

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It at appendix 20 and 21 which is the the board's response to mr. Thomas's request for me hearing the board squarely dealt with the tension between 101 and 103 and said notwithstanding that We we think this is subject matter ineligible.

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I think it could also be helpful to look at appendix 12 and I'm sorry 13 and 14 where

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the board discusses which aspects of the claims it was saying weren't discussed so at 14 weren't found in the prior art.

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It says requesting identification of one or more participant groups from plurality of available participants with the claim limitation that the board said wasn't in the prior art.

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That's at the core of the abstract idea, just the idea of asking for survey information.

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Unless the court has additional questions, I'm happy to yield the remainder of my time.

[00:14:48] Speaker 01:
Thank you, counsel.

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Mr. Thomas has some rebuttal time.

[00:15:10] Speaker 05:
It's always a problem when the Patent Office can't apply the

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abstract idea inquiry properly.

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The board found a new abstract idea and the fundamental problem is the claim is more than 300 words.

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The board whittled it down to two words.

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The director whittled it down to one in their brief.

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drop the word performing, and just call it surveys.

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But it's not performing a survey.

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It is not a survey.

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It's a method for creating and hosting surveys.

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If we look again back to step two, we see that what was considered

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was only two things, performing surveys as the abstract idea.

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And then what else did they look to in that 310 words?

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They found basically two, a remote server.

[00:16:31] Speaker 01:
And it's easy to say that that's- Of course, if we get to step two, it's because under step one, the claims are abstract.

[00:16:40] Speaker 01:
Do you concede that they're abstract?

[00:16:43] Speaker 05:
I do not concede that they are abstract.

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They are creating something that was not created before.

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But we have many opinions where something was allegedly created that it wasn't created before.

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Are you familiar with the electric power group opinion?

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So that's an opinion where nobody disputed that that system for displaying information

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that was collected through a whole host of sensors that were measuring different conditions across a large power grid where all, you know, where all this information was being collected, it was being combined together and distilled and analyzed and then ultimately stored and then presented on a display in some coherent way for a person to look at and understand and get a feel for the entire

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condition of the power grid and even if that was something that had never been done before, the whole scheme of collecting information, storing information, displaying information,

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for some person to use was deemed to be directed to simply an abstract idea, and ultimately no inventive concept was found, because there was no actual improvement to a computer.

[00:18:13] Speaker 02:
Yes, maybe a computer had never performed this particular function before, but because the claim was recited at such a high level of generality, it was deemed to be too result-oriented, to be anything more than just the abstract idea of ultimately

[00:18:29] Speaker 02:
collecting, transmitting, storing, displaying information.

[00:18:33] Speaker 05:
Well, yeah, I think that's one of the fundamental problems I see is that the characterization of the abstract idea, what does that really do to the claim?

[00:18:49] Speaker 05:
In this case, it appears that

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It basically captures 308 words other than remote server.

[00:19:00] Speaker 05:
And that seems to be completely unfair.

[00:19:05] Speaker 05:
In the MCRO case, that was processing limitations.

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They were effective.

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Core wireless was also information driven about displaying information.

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This is the information technology world we're living in.

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These are what the inventions are.

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And if it's continuously found that calling something an abstract idea means you can completely eviscerate all the processing limitations of the claim, that would seem to be a real travesty.

[00:19:43] Speaker 05:
In this case, that's what happened.

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And that's why there's no real analysis

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under step two because they just ignore everything other than what they deem to be a hardware limitation.

[00:20:03] Speaker 05:
I believe a written opinion could clarify this, that all claim limitations not within the abstract idea.

[00:20:15] Speaker 01:
As you see, your time has expired.

[00:20:17] Speaker 01:
Do you have one final thought?

[00:20:20] Speaker 05:
Yes, all limitations should be considered.

[00:20:23] Speaker 05:
Claim should be considered as a whole.

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And just because there was a finding of abstractness somewhere in the claim doesn't mean all the limitations shouldn't be considered.

[00:20:34] Speaker 05:
Preemption should be a guidepost.

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And there's no reason why this claim creates a significant preemption concern.

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And since that is the undertone of

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the abstract idea exception that should be used as a benchmark.

[00:20:52] Speaker 01:
Thank you, Council.

[00:20:53] Speaker 01:
We have your position.

[00:20:54] Speaker 01:
The case is submitted.