Amy Carenza

Patent Trials and Appeals Board

Aug 31, 2021

2021001266 (P.T.A.B. Aug. 31, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/070,741 03/15/2016 Amy Carenza 4552.04 1213
135206 7590 08/31/2021
Wick Phillips Gould & Martin LLP
3131 McKinney Avenue
Suite 100
Dallas, TX 75204
EXAMINER
NGUYEN, NGA B
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
08/31/2021 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
wppatents@wickphillips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte AMY CARENZA
____________

Appeal 2021-001266
Application 15/070,741
Technology Center 3600
____________

Before EDWARD A. BROWN, CARL M. DeFRANCO, and
NATHAN A. ENGELS, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 seeks review under 35 U.S.C. § 134(a) of the Examiner’s
decision rejecting claims 1–22 and 24–32, which are all the pending claims.2
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Amy Carenza as the real party in
interest. Appeal Br. 3 (filed June 11, 2020).
2 Appellant indicates that the present application is related to U.S. Appl. No.
16/161,449, which is now abandoned. The Board issued a decision in the
’449 application on February 2, 2021 (Appeal No. 2020-004301).
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CLAIMED SUBJECT MATTER
“The present invention relates to online travel scheduling and
purchase systems and more particularly to an online vacation scheduling and
purchase system purposed for employees in a bid to make them utilize the
paid leaves thereof particularly for vacations.” Spec. 1.
The appealed claims include independent claims 1 and 16 directed to
an employee vacation scheduling system, and independent claims 17 and 32
directed to an employee vacation scheduling method. Claim 1, reproduced
below, is illustrative.
1. An employee vacation scheduling system comprising:
(a) an employee database comprising a plurality of employee
entries and a plurality of nonworking calendar dates wherein,
each employee entry represents an employee working for an
employer and wherein, each non-working date represents a non-
working day, which comprises a day whereon an employee is
exempted from working, each employee entry associated with
at least one employee paid-leave-deposit-rate and a number of
used paid leaves, wherein, a paid-leave-deposit-rate represents
the number of paid leaves allotted to an employee per a
predetermined length of time within a current calendar year, the
sum of each predetermined length of time pertaining to each of
the at least one paid- leave-deposit-rate being equivalent to the
time span of the current calendar year, and wherein, a used paid
leave represents a paid leave utilized by an employee; and
(b) a store module for enabling an employee to purchase a
vacation travel service out of a plurality of vacation travel
services, a vacation travel service spanning a predetermined
number of vacation days, the store module comprising:
(i) a date module for enabling the employee, in the
process of purchasing the vacation travel service, to mark
successive vacation dates for the utilization of the vacation
travel service, the vacation dates comprising an end vacation
date representing the last day of the utilization of a vacation
travel service; and
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(ii) a payment module for enabling the employee to
pay for the vacation travel service upon determining that the
number of vacation days, which pertain to the vacation dates
and which exclude the non-working days, are lesser than or
equivalent to the sum of the number of paid leaves that the
employee will have by the end vacation date as determined
from the at least one paid-leave-deposit-rate corresponding to
the employee and a number of carried-over paid leaves that
corresponds to the employee subtracted by the number of used
paid leaves;
wherein, the number of carried-over paid leaves are
associated with each employee entry, a carried-over paid leave
representing an unused paid leave of an employee that is carried
over from a previous calendar year or years;
(iii) a conversion module for converting a currently
available paid leave of an employee into an equivalent
monetary value wherein unused vacation time is a payment
within the payment module.

Appeal Br. 43–44 (Claims App.).

REJECTIONS
Claims 1–22 and 24–32 are rejected on the ground of non-statutory
double patenting as unpatentable over claims 1–32 of Carenza (US
9,305,290 B2, issued Apr. 5, 2016). Final Act. 3.
Claims 1–22 and 24–32 are rejected under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter. Final Act. 5.

ANALYSIS
Non-Statutory Double Patenting
Appellant does not address the rejection of claims 1–22 and 24–32 on
the ground of non-statutory (obviousness-type) double patenting as
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unpatentable over claims 1–32 of Carenza. Accordingly, we sustain this
rejection.

Eligibility
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See Alice, 573
U.S. at 219.
Concepts that have been determined to be abstract ideas, and thus
patent-ineligible, include certain methods of organizing human activity
(Alice, 573 U.S. at 219–20; Bilski v. Kappos, 561 U.S. 593 (2010));
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)).
If the claim is “directed to” an abstract idea, we next address the
second step of the Alice and Mayo framework, where “we must 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.” Alice, 573 U.S. at 221 (quotation marks omitted). “A
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claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
Consistent with the Supreme Court’s two-step framework is the
Office’s 2019 Revised Patent Subject Matter Eligibility Guidance. 84 Fed.
Reg. 50 (issued Jan. 7, 2019) (hereinafter “Guidance”). Step 2A, Prong 1, of
the Guidance involves first determining whether the claim recites any
judicial exception, including certain groupings of abstract ideas (i.e., certain
methods of organizing human activities, mathematical concepts, or mental
processes). See id. at 52.
If the claim is determined to recite a judicial exception, Step 2A,
Prong 2, of the Guidance involves next determining whether the claim
recites additional elements that integrate the judicial exception into a
practical application. See 84 Fed. Reg. 52; see also MPEP § 2106.05(a)–(c),
(e)–(h).
If the claim both recites a judicial exception and fails to integrate the
judicial exception into a practical application, we then proceed to Step 2B of
the Guidance. At Step 2B, we determine whether the claim adds a specific
limitation beyond the judicial exception that is not “well-understood,
routine, conventional” in the field (see MPEP § 2106.05(d)); or simply
appends well-understood, routine, conventional activities previously known
to the industry, specified at a high level of generality, to the judicial
exception. See 84 Fed. Reg. 56.
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Claim Grouping
Appellant argues claims 1–22 and 24–32 as a group under a single
heading (Appeal Br. 10–42) and highlights similar language recited in
independent claims 1, 16, 17, and 32 (id. at 12–16, 20–23, 31–34, and 37–
41). We select claim 1 as representative of the group to decide the appeal as
to the rejection, and remaining claims 2–22 and 24–32 stand or fall with
claim 1. See 37 C.F.R. § 41.37(c)(1)(iv)(“Under each heading identifying
the ground of rejection being contested, any claim(s) argued separately or as
a subgroup shall be argued under a separate subheading that identifies the
claim(s) by number. A statement which merely points out what a claim
recites will not be considered an argument for separate patentability of the
claim.”).3
Step 1— Statutory Category
All pending claims are directed to one of the statutory classes of
subject matter eligible for patenting under 35 U.S.C. § 101.
Step 2A, Prong 1—Recitation of a Judicial Exception
The Examiner determines that claim 1 recites a judicial exception.
Final Act. 6. First, the Examiner identifies the following claim limitations:
(1) “providing an employee database comprising a plurality of employee
entries”; (2) “enabling an employee to purchase a vacation travel service”;
(3) “enabling the employee to pay for the vacation travel service”; and (4)
“converting a currently available paid leave of an employee into an
equivalent monetary value.” Final Act. 6 (emphasis omitted). The

3 Furthermore, although claims 1–16 recite an employee vacation scheduling
system, whereas claims 17–22 and 24–32 recite an employee vacation
scheduling method, the system claims are not different from the method
claims in substance.
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Examiner determines that these limitations recite a method that falls within
the grouping of abstract ideas that includes certain methods of organizing
human activity, and, more specifically, the enumerated sub-grouping of
“commercial or legal interactions including agreements in the form of
contracts; legal obligations; advertising, marketing or sales activities or
behaviors; business relations,” as set forth in the Guidance. Id.; see 84 Fed.
Reg. 52.
Second, the Examiner identifies the claim recitation of “converting a
currently available paid leave of the employee into equivalent vacation
money, upon conversion, the vacation money associated with the
corresponding employee entry, the vacation money to be used towards the
purchase of a vacation travel service.” Ans. 4 (emphasis omitted). We note
that this recitation is similar to limitation (b)(iii) in claim 1. See Appeal Br.
44 (Claims App.). The Examiner determines that this limitation, under its
broadest reasonable interpretation, covers performance in the mind, and
thus, falls within the mental processes grouping of abstract ideas— i.e.,
concepts performed in the human mind, including an observation,
evaluation, judgment, or opinion. Ans. 4; see 84 Fed. Reg. 52; MPEP
§ 2106.04(a)(2)(III).
In contrast, Appellant contends that claim 1 does not recite an abstract
idea. Appeal Br. 11. Appellant submits that the Examiner disregards
“specific, important, patent eligible portions of the claims.” Id. at 12.
According to Appellant, the Examiner disregards the following language in
claim 1: a “scheduling system”; “an employee database comprising a
plurality of employee entries and a plurality of nonworking calendar dates”;
“a store module for enabling an employee to purchase a vacation travel
service out of a plurality of vacation travel services”; “a date module for
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enabling the employee, in the process of purchasing the vacation travel
service, to mark successive vacation dates for the utilization of the vacation
travel service”; “a payment module for enabling the employee to pay for the
vacation travel service upon determining that the number of vacation days”;
and “a conversion module for converting a currently available paid leave of
an employee into an equivalent monetary value.” Id. at 12–13 (boldface
omitted, emphasis added). Appellant contends that when the claim is
considered with the “disregarded technical, physical, computer-
implemented, and electronic elements,” “‘organizing human activity’ is not
‘recited on its own.’” Id. at 17 (citing 84 Fed. Reg. 51–52).
These contentions are unpersuasive. First, Appellant does not address
the Examiner’s determination that the above-noted limitations (1)–(4)
recited in claim 1, by themselves, fall within the certain methods of
organizing human activity grouping. See Final Act. 6. Instead, Appellant
contends that the Examiner disregards additional claim language that is
associated with these limitations, but not relied on by the Examiner. Appeal
Br. 12–13. Also, Appellant merely quotes the additional language and does
not explain persuasively how it affects the Examiner’s determination that
limitations (1)–(4) recite a method that falls within the certain methods of
organizing human activity grouping of abstract ideas.4 Accordingly,
Appellant’s contention does not apprise us of Examiner error.

4 As stated in In re Marco Guldenaar Holding B.V., 911 F.3d 1157, 1162
(Fed. Cir. 2018), “our case law and Rule 41.37(c)(1)(iv) make clear that, for
an applicant to receive separate consideration by the Board for each of its
appealed claims, an applicant’s appeal brief must contain substantive
argument beyond ‘a mere recitation of the claim elements and a naked
assertion that the corresponding elements were not found in the prior art.’”
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Second, as we discuss below, the Examiner addresses the recited
“store module,” “date module,” “payment module,” and “conversion
module” in the analysis under Step 2A, Prong 2, and thus, considers these
elements in the eligibility analysis.
Third, apart from limitations (1)–(4) identified by the Examiner,
claim 1 generally recites a vacation scheduling system that enables
employees working for an employer to purchase and pay for a vacation
travel service, subject to data in the employee database, which comprises
employee entries for employees working for the employer. Scheduling
employee vacations by use of the claimed vacation scheduling system is a
method of organizing human activity that falls within the subgrouping of
“managing personal behavior or relationships or interactions between people
(including social activities, teaching, and following rules or instructions).”
See 84 Fed. Reg. 52; MPEP § 2106.04(a)(2)(II). For these additional
reasons, Appellant does not apprise of error in the Examiner’s determination
that claim 1 recites a method of organizing human activity.
We also agree with the Examiner that claim 1 recites limitations that
fall within the mental processes grouping of abstract ideas. The “employee
database” recited in limitation (a) comprises “a plurality of employee
entries” and “a plurality of non-working calendar dates.” Limitation (a)
does not require the employee database to comprise more than two employee
entries, i.e., to comprise more than only a limited amount of data. Further,
the data in the employee database could be compiled and organized by a
human on paper, for example.

See also In re Lovin, 652 F.3d 1349, 1356 (Fed. Cir. 2011); 37 C.F.R.
§ 41.37(c)(1)(iv).

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Although claim 1 recites “a store module,” “a date module,” “a
payment module,” and “a conversion module,” each having an associated
function in the employee vacation scheduling system, the recitation of these
modules alone does not establish that the corresponding functions of the
modules do not recite mental steps. To the contrary, “[i]f a claim, under its
broadest reasonable interpretation, covers performance in the mind but for
the recitation of generic computer components, then it is still in the mental
processes category unless the claim cannot practically be performed in the
mind.” See 84 Fed. Reg. 52n.14; see also Intellectual Ventures I LLC v.
Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016) (“[W]ith the
exception of generic computer-implemented steps, there is nothing in the
claims themselves that foreclose them from being performed by a human,
mentally or with pen and paper.”); Versata Dev. Grp. v. SAP Am., Inc., 793
F.3d 1306, 1335 (Fed. Cir. 2015) (“Courts have examined claims that
required the use of a computer and still found that the underlying, patent-
ineligible invention could be performed via pen and paper or in a person’s
mind.”). See also MPEP § 2106.04(a)(2)(III)(C). Here, the “store module,”
“date module,” and “payment module” are “for enabling the employee” to
perform the recited acts; namely, “purchase a vacation travel service,” “mark
successive vacation dates,” and “pay for the vacation travel service.” Each
of these acts could be performed in the human mind, or using pen and paper.
As for limitation (b)(iii), the recited “converting currently available paid
leave of an employee into an equivalent monetary value” likewise could be
performed in the human mind.5

5 In addition to the abstract idea groupings discussed above, limitation (b)(ii)
of claim 1 implicitly calls for comparing values (i.e., “the number of
vacation days” to “the sum of the number of paid leaves”) as determined by
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For the above reasons, we agree with the Examiner that claim 1
recites a judicial exception.
Step 2A, Prong 2—Practical Application of Judicial Exception
Under the Guidance, the next determination is whether claim 1, as a
whole, integrates the recited judicial exception into a practical application.
This determination involves: (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception; and
(b) evaluating those additional elements individually and in combination to
determine whether they integrate the exception into a practical application.
See 84 Fed. Reg. 54–55.
An exemplary consideration indicative of an additional element (or a
combination of elements) that may integrate the exception into a practical
application is an additional element that reflects an improvement in the
functioning of a computer, or an improvement to other technology or
technical field. See 84 Fed. Reg. 55. The Examiner determines that claim 1
recites the additional elements of “a computer, and using the computer to
perform the providing, enabling and converting steps.” Final Act. 6. The
Examiner submits, however, that “[t]he processors in all steps is [sic] recited

basic mathematical calculations (e.g., determining a sum of two numbers,
and subtracting one number from another number). Appeal Br. 43–44.
Additionally, limitation (b)(iii) calls for converting one value (“currently
available paid leave”) into another value (“an equivalent monetary value”),
another basic mathematical calculation. Id. at 44. Limitations (b)(ii) and
(b)(iii) fall within the mathematical concepts grouping of abstract ideas,
which includes mathematical relationships, mathematical formulas or
equations, and mathematical calculations. See 84 Fed. Reg. 52; MPEP
§ 2106.04(a)(2)(I). Further, “performance of a claim limitation using
generic computer components does not necessarily preclude the claim
limitation from being in the mathematical concepts grouping, Benson, 409
U.S. at 67.” See 84 Fed. Reg. 52n. 14.
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at a high-level of generality (i.e., as a generic computing device performing
a generic computer function of providing, enabling and converting) such that
it amounts no more than mere instructions to apply the exception using
generic computer components.” Id. at 6–7. The Examiner further submits
that the store module, date module, payment module, and conversion module
are software components that “represent no more than mere instructions to
apply the judicial exception on a computer . . . [and] nothing more than an
attempt to generally link the use of the judicial exception to the
technological environment of a computer.” Ans. 5; see also 84 Fed. Reg.
55. The Examiner determines that the conversion module is “recited at a
high level of generality (i.e., as a general means of converting data), and
amounts to mere data converting, which is a form of insignificant extra-
solution activity.” Ans. 5. The Examiner determines that the additional
elements do not integrate the judicial exception into a practical application
because they fail to impose any meaningful limits on practicing the abstract
idea. Final Act. 7.
Appellant contends that the abstract idea in claim 1 identified by the
Examiner (i.e., limitations (1)–(4) corresponding to “organizing human
activity”) “is integrated [into] a practical application via the requirement that
the ‘abstract idea’ be performed by ‘an additional element [which]
implements a judicial exception with, or uses a judicial exception in
conjunction with, a particular machine or manufacture that is integral to the
claim.” Appeal Br. 24 (citing 84 Fed. Reg. 55, emphasis added); Final Act.
6.
As for a “manufacture,” Appellant states:
As can be seen, all of the claims require at least four different
“modules,” e.g., “a store module,” “a date module,” and “a
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payment module.” . . . A person of ordinary skill in the art
would understand that the claimed “modules” are each separate
computer processor components that serve to cause the
“computer-based employee vacation scheduling system” to
perform unique and separate functions.
Appeal Br. 24 (citing Spec. ¶¶ 63, 64, 69). Appellant asserts that one of
ordinary skill in the art would understand that the claims require specialized
program[m]ing executed by computer processors.” Id. at 24–25.
Appellant contends that the term “manufacture” is defined as “a
tangible article that is given a new form, quality, property, or combination
through man-made or artificial means.” Appeal Br. 25 (citing MPEP
§ 2106.3). Appellant asserts, “[o]ne of ordinary skill in the art would
understand the claimed ‘modules’ to be the result of a process wherein raw
materials were given a new form, quality, and or property through man-
made artificial means.” Id.
As set forth in the Guidance, a consideration indicative that an
additional element (or combination of elements) may have integrated the
judicial exception into a practical application is “an additional element
implements a judicial exception with, or uses a judicial exception in
conjunction with, a particular machine or manufacture that is integral to the
claim.” See 84 Fed. Reg. 55 (emphasis added). Appellant contends that the
recited “modules,” i.e., “manufacture,” satisfy this “integrated into a
practical application” standard. Appeal Br. 25.
As for a “particular machine,” Appellant asserts, “[a]s noted by the
Federal Circuit, ‘programming creates a new machine because a general
purpose computer, in effect, becomes a special purpose computer once it is
programmed to perform particular functions pursuant to instructions from
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program software.’” Appeal Br. 25 (citing In re Alappat, 33 F.3d 1526,
1545 (Fed. Cir. 1994). According to Appellant,
the instant claims’ methods comprising specifically
programmed computer processors performing particular, recited
functions, inarguably amount to the claims being performed by
“an additional element [which] implements a judicial exception
with, or uses a judicial exception in conjunction with, a
particular machine or manufacture that is integral to the claim.”
Id. at 26 (citing 84 Fed. Reg. 55).
Appellant does not explain persuasively how the recited additional
elements; namely, “a store module,” “a date module,” “a payment module,”
and “a conversion module,” “implement[] a judicial exception with, or use[]
a judicial exception in conjunction with, a particular machine or manufacture
that is integral to the claim.” First, Appellant has not shown that the claimed
employee vacation scheduling system includes, or uses, a particular
machine. Merely that the recited modules perform certain associated
functions does not establish that the claim is tied to a particular novel
machine or apparatus, rather than to a general purpose computer. In this
regard, we note that the Specification describes “a computer-based employee
vacation scheduling system . . . which may be best run as a third-party
service provider that serves employers and the employees thereof.” See
Spec. 11. Appellant does not direct us to any detailed description of a
“computer” of the scheduling system. Accordingly, the Specification does
not appear to disclose that the unspecified “computer” is required to be more
than a general purpose computer that implements software to perform the
functions of the modules.
Applying a judicial exception, such as an abstract idea, by use of
“only a general purpose computer” does not qualify as a “particular novel
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machine or apparatus.” Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716
(Fed. Cir. 2014). As discussed by the Examiner, as noted in Eon Corp. IP
Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616, 623 (Fed. Cir. 2015),
Alappat’s rationale that an otherwise ineligible algorithm or software could
be made patent-eligible by merely adding a generic computer to the claim
was superseded by Bilski and Alice. Ans. 6. Adding a generic computer,
generic computer components, or a programmed computer to perform
generic computer functions does not automatically overcome an eligibility
rejection. Alice, 573 U.S. at 223–24; MPEP § 2106.05(b)(I). In claim 1, the
recited “modules” are used as a tool to implement the abstract concepts.
This is an example that courts have identified as not integrating a judicial
exception into a practical application. See 84 Fed. Reg. 55.
Appellant further contends that, according to the Guidance, another
exemplary consideration indicating that an additional element may have
integrated the judicial exception into a practical application is that “an
additional element effects a transformation or reduction of a particular
article to a different state or thing.” Appeal Br. 26–27 (citing 84 Fed. Reg.
55, emphasis added). Appellant asserts that “the claims recite some form of
‘converting a currently available paid leave of an employee into equivalent
vacation money” and this “conversion” meets this indicator of patent
eligibility. Id. at 27.
We are unpersuaded. Limitation (b)(iii) of claim 1 requires
“converting a currently available paid leave of an employee into an
equivalent monetary value.” Appeal Br. 44 (Claims App.). The logic
associated with the conversion module is described in the Specification with
reference to Figure 6, as follows:
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In step 607, the equivalent monetary value of the
unelected/selected paid leaves is determined and credited (on a
ledger basis) to an escrow account for the benefit of the
employee to purchase future travel expenditures (or may be
applied toward the balance of a travel purchase or other good or
service purchase selected from the store module 18).
Spec. 15 (emphasis added). As described, the equivalent monetary value is
not required to be a physical object or substance, but instead, can be a credit
to an escrow account. It appears that the claimed “converting” could be
achieved by performing a mathematical calculation electronically with the
conversion module. This is insufficient as an indicator of patent eligibility.
See Ultramercial, 772 F.3d at 717 (“These manipulations of ‘public or
private legal obligations or relationships, business risks, or other such
abstractions cannot meet the test because they are not physical objects or
substances, and they are not representative of physical objects or
substances.’”).
For the above reasons, we are unpersuaded that the additional
elements recited in claim 1 integrate the judicial exception into a practical
application of the exception. That is, we determine that claim 1 is “directed
to” the judicial exception. See 84 Fed. Reg. 54.
Step 2B – Inventive Concept
The next consideration is whether claim 1 adds a specific limitation
beyond the judicial exception that is not “well-understood, routine,
conventional” in the field. See 84 Fed. Reg. 56. The Examiner determines
that “the additional element of using the computer to perform the providing,
enabling and converting steps amounts to no more than mere instructions to
apply the exception using a generic computer component . . . [which] cannot
provide an inventive concept.” Final Act. 7.
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Appellant contends that because there are no prior art rejections of the
claims, they “must comprise elements ‘other than what is well-understood,
routine, and conventional in the field’ and recite ‘significantly more’ than
any alleged abstract idea.” Appeal Br. 29 (citing MPEP § 2106.05(d)).
This contention is unpersuasive because the patent eligibility analysis
is not an evaluation of novelty or non-obviousness. “A claim for a new
abstract idea is still an abstract idea.” Synopsys, Inc. v. Mentor Graphics,
Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016). Even assuming that the
claimed method may be novel, “[t]he ‘novelty’ of . . . the . . . [claim] itself,
is of no relevance in determining whether the subject matter of a claim falls
within the § 101 categories of possibly patentable subject matter.” See
Diamond v. Diehr, 450 U.S. 175, 188–189 (1981). A novel and non-obvious
claim directed to a purely abstract idea is, nonetheless, patent-ineligible. See
Mayo, 566 U.S. at 90–91.
Appellant also contends:
because there is nothing in the Specification describing the
instant claim elements as “conventional” and because no cited
prior art discloses all the elements of the instant claims, the
instant claims must comprise elements “other than what is well-
understood, routine, and conventional in the field” and recite
“significantly more” than any alleged abstract idea – so as to
patent eligible. See, e.g., MPEP § 2103 V. (Claims which are
novel and non-obvious, i.e., not rejected in view of the prior art,
are patentable)[.]
Appeal Br. 29.
This contention is also unpersuasive. First, we are aware of no
requirement that the “cited prior art disclose[] all the elements of the instant
claims.” Second, Appellant does not explain persuasively why the
additional elements in claim 1 identified by the Examiner are sufficient to
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amount to significantly more than the abstract idea itself. Rather, Appellant
is relying on the content of the employee database and the functions of the
store module, date module, payment module, and conversion module, as
recited in claim 1. Appeal Br. 30. However, these recited functions
encompass the several abstract ideas themselves, with the modules merely
implementing the abstract ideas. Appellant does not show persuasively that
the abstract ideas recited in claim 1 are applied using techniques that are not
routine, conventional and well-understood.
As discussed, the Specification describes a “computer-based
employee vacation scheduling system . . . which may be best run as a third-
party service provider that serves employers and the employees thereof.”
See Spec. 11. The Specification also describes that “[c]onventional payment
means such as, credit cards, debit cards, Internet banking, and etc., may be
accepted by the payment module for the payment towards the payment
purposes once the payment processing is allowed by the paid leaves
module.” See id. at 18. The Examiner submits that these paragraphs
describe “using [a] general purpose computer and conventional means to
perform the method.” Ans. 9.
To the extent Appellant is relying on the claim limitations that recite
the several abstract ideas as providing significantly more, “[i]t has been clear
since Alice that a claimed invention’s use of the ineligible concept to which
it is directed cannot supply the inventive concept that renders the invention
‘significantly more’ than that ineligible concept.” BSG Tech LLC v.
Buyseasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018); Synopsys, 839 F.3d
at 1151 (“[A] claim for a new abstract idea is still an abstract idea.”). We
agree with the Examiner that, as disclosed, the claimed system can use
generic components as a tool to perform the abstract ideas, which use does
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not transform the claim into a patent-eligible application of the abstract idea.
Alice, 573 U.S. at 212.
According to Appellant, “claims which satisfy the ‘machine or
transformation’ test comprise patent eligible subject matter.” Appeal Br. 30
(citing MPEP § 2106.05(b)–(c)). We disagree. As explained in DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014),
“in Mayo, the Supreme Court emphasized that satisfying the machine-or-
transformation test, by itself, is not sufficient to render a claim patent-
eligible, as not all transformations or machine implementations infuse an
otherwise ineligible claim with an ‘inventive concept.’” The Federal Circuit
explains that “[the machine-or-transformation] test can provide a ‘useful
clue’ in the second step of the Alice framework.” Ultramercial, 772 F.3d at
716.
Appellant also contends that “MPEP § 2106.05(b) provides that
‘[a]pplying the judicial exception with, or by use of, a particular machine’ is
a limitation which ‘qualif[ies] as ‘significantly more’ when recited in a claim
with a judicial exception.’” Appeal Br. 31 (citing MPEP § 2106.05(b)).
We disagree that claim 1 recites a “particular machine.” Appeal Br.
31–37. According to Appellant, “[a] person of ordinary skill in the art
would understand that the claimed ‘modules’ are each separate computer
processor and their imbedded/executable software that serve to cause the
particular portions of the ‘computer-based employee vacation scheduling
system’ to perform unique and separate functions.” Id. at 35. However,
even if the recited modules might perform “unique and separate functions”
from each other, the recited functions nonetheless encompass the identified
abstract ideas.
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Appellant further contends that “MPEP § 2106.05(c) provides that
‘effecting a transformation or reduction of a particular article to a different
state or thing’ is a limitation which ‘qualif[ies] as ‘significantly more’ when
recited in a claim with a judicial exception.’” Appeal Br. 37. According to
Appellant, “[t]he claimed methods and systems all recite an ‘effecting a
transformation or reduction of a particular article to a different state or
thing.’” Id.
We disagree that limitation (b)(iii) of claim 1 “effect[s] a
transformation or reduction of a particular article to a different state or
thing.” Appeal Br. 37–42. According to Appellant, “claim[] 1 . . .
involve[s] tasks which, when taken in combination, involve the
transformation of paid leave (i.e., time) to a different state or thing, i.e.,
tangible vacation money, Appellant’s claims are patent eligible.” Id. at 42
(citing MPEP § 2106.05(c)). We disagree. Limitation (b)(iii) does not recite
any language that requires “conversion” of one physical object or substance
to another. Hence, the recited conversion is insufficient as an indicator of
patent eligibility.
Thus, as Appellant does not apprise us of error in the Examiner’s
determination that claim 1 fails to add a specific limitation beyond the
judicial exception that is not “well-understood, routine, conventional” in the
field, we sustain the rejection of claim 1 under 35 U.S.C. § 101. Claims 2–
22 and 24–32 fall with claim 1.

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CONCLUSION
We affirm the rejections of claims 1–22 and 24–32.

DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–22, 24–32 101 Obviousness-type
Double Patenting
1–22, 24–32
1–22, 24–32 101 Eligibility 1–22, 24–32
Overall
Outcome
1–22, 24–32

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED