Amy Carenza

Patent Trials and Appeals Board

Feb 2, 2021

2020004301 (P.T.A.B. Feb. 2, 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.
16/161,449 10/16/2018 Amy Carenza 4552.05 1845
135206 7590 02/02/2021
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
02/02/2021 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 2020-004301
Application 16/161,449
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 1–32. 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.
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CLAIMS
Appellant’s disclosure “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. ¶ 2.
Claims 1, 16, 17, and 32 are independent. Claim 1, reproduced below,
illustrates the claimed subject matter on appeal.
1. An employee vacation scheduling system comprising:
(a) an employee database comprising a plurality of employee
entries and a plurality of non-working 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
(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
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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. 40–41 (Claims App.).

REJECTIONS
Claims 1–32 are provisionally rejected under 35 U.S.C. § 101 as
claiming the same invention as that of claims 1–32 of co-pending
Application No. 15/070,741 (“’741 Application”). Final Act. 3.
Claims 1–32 are rejected on the ground of non-statutory double
patenting as unpatentable over Carenza (US 9,305,290 B2, issued Apr. 5,
2016). Final Act. 5.
Claims 1–32 are rejected under 35 U.S.C. § 101 as directed to patent-
ineligible subject matter. Final Act. 7.
ANALYSIS
Statutory Double Patenting
In the Appeal Brief, Appellant does not address the rejection of claims
1–32 under 35 U.S.C. § 101 as claiming the same invention as that of claims
1–32 of the ’741 Application. Accordingly, we sustain this rejection.
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Non-Statutory Double Patenting
In the Appeal Brief, Appellant also does not address the rejection of
claims 1–32 on the ground of non-statutory double patenting as unpatentable
over 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 turn to 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-
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eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted). “A
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 January 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., mathematical concepts, certain methods of organizing human activities,
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).
Only if the claim both recites a judicial exception and fails to integrate
the judicial exception into a practical application, do we 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 1–32 as a group (Appeal Br. 9–38) and
highlights similar limitations recited in independent claims 1, 16, 17, and 32
(id. at 11–14, 18–22, 28–32, 35–38). We select claim 1 as representative of
the group to decide the appeal of the rejection, with claims 2–32 standing or
falling 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.”).2
Step 1— Statutory Category
All 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 Judicial Exception
The Examiner determines that claim 1 recites a judicial exception.
First, the Examiner notes that claim 1 recites the limitations: (a) “providing
an employee database comprising a plurality of employee entries,” (b)
“enabling an employee to purchase a vacation travel service,” (c) “enabling

2 Furthermore, although claims 1–16 are directed to an employee vacation
scheduling system and claims 17–32 are directed to an employee vacation
scheduling method, as stated in Alice, “Put another way, the system claims
are no different from the method claims in substance. The method claims
recite the abstract idea implemented on a generic computer; the system
claims recite a handful of generic computer components configured to
implement the same idea. This Court has long “warn[ed] . . . against”
interpreting § 101 “in ways that make patent eligibility ‘depend simply on
the draftsman’s art.’” [Citations and quotations omitted.] See Alice, 134 S.
Ct. at 2360.
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the employee to pay for the vacation travel service,” and (d) “converting a
currently available paid leave of an employee into an equivalent monetary
value.” Final Act. 7–8 (emphasis omitted). The Examiner determines that
limitations (a)–(d) recite a method that falls within the certain methods of
organizing human activity grouping of abstract ideas, 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. at 8; see 84 Fed. Reg. 52.
Second, the Examiner notes the claim language 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.” Advisory Act. 2. This language is
recited in claim 16 and is similar to limitation (b)(iii) of claim 1. The
Examiner determines that this limitation, under its broadest reasonable
interpretation, covers performance in the mind. Id. Thus, the Examiner
determines that this limitation falls within the mental processes grouping of
abstract ideas— i.e., concepts performed in the human mind, including an
observation, evaluation, judgment, or opinion. Id.; see 84 Fed. Reg. 52;
MPEP § 2106.04(a)(2)(III).
Appellant contends that claim 1 does not recite an abstract idea.
Appeal Br. 9. First, Appellant contends that above-noted limitations (a)–(d)
do not recite a method of organizing human activity. Id. at 10. Appellant
appears to contend that the Examiner is required to “refer to the body of case
law precedent in order to identify abstract ideas by way of comparison to
concepts already found to be abstract” (id.) and “to compare the instantly
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identified ‘abstract idea’ to a similarly, previously adjudicated ‘abstract
idea’” (id. at 11). The Examiner responds that this comparison is no longer
applicable. Ans. 3.
We agree with the Examiner that this comparison to legal precedent is
not required. As explained in the Guidance, “[i]n accordance with judicial
precedent and in an effort to improve consistency and predictability, the
2019 Revised Patent Subject Matter Eligibility Guidance extracts and
synthesizes key concepts identified by the courts as abstract ideas.” See 84
Fed. Reg. 52 (emphasis added). These “key concepts” are included in the
three enumerated groupings of abstract ideas as described in the Guidance.
See id. Accordingly, Appellant’s contention is unpersuasive.3
Second, Appellant disagrees that claim 1 recites a mental process.
Appeal Br. 11. Appellant highlights 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 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,” “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.

3 Furthermore, as recited in claim 1, the vacation scheduling system enables
employees to purchase and pay for vacation travel services, subject to the
data contained in the employee entries. Scheduling vacations using the
recited system is a method of organizing human activity falling within
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).
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at 11–12 (boldface omitted). Appellant contends that these limitations
“require specific computer components to convert paid leave into a
monetary value and allow an employee to pay for vacation time with that
monetary value.” Id. at 15 (citing Spec. ¶ 58).
These contentions are unpersuasive. We 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.” This limitation does not recite any language that requires more than
two employee entries, that is, more than a limited amount of data.
Moreover, the data in the employee database could be compiled and
organized by a human on paper, for example.
Although claim 1 recites a store module, date module, payment
module, and conversion module, the recitation of these elements alone does
not establish that the corresponding limitations do not recite mental steps.
“If 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
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“store module,” “date module,” and “payment module,” as recited in
limitations (b), (b)(i), and (b)(ii), respectively, are “for enabling an
employee” to perform the acts subsequently recited in the limitations,
including “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. As for limitation (b)(iii), the recited
“converting” likewise could be performed in the human mind.4
In the Reply Brief, Appellant contests the Examiner’s determination
that claim 1 recites concepts falling within both the “certain methods of
organizing human activity” and “mental processes” groupings of abstract
ideas. Reply Br. 9–10. Appellant quotes statements made by the Examiner
in the Examiner’s Answer (id. at 9 (citing Ans. 4)) even though the
Examiner made these same statements earlier in the Final Action and
Advisory Action. See Final Act. 7–8; Advisory Act. 2. Appellant contends
in the Reply Brief that the Examiner ignored express/explicit claim elements
in claim 1 (and the other independent claims) in determining that the claims

4 In addition to the abstract ideas discussed above, we note that limitation
(b)(ii) of claim 1 calls for calls for comparing values (i.e., “the number of
vacation days” to “the sum of the number of paid leaves”) as determined by
basic mathematical calculations (e.g., determining a sum of two numbers,
and subtracting one number from another number). Appeal Br. 40–41.
Limitation (b)(iii) calls for converting one value (currently available paid
leave) into another value (“an equivalent monetary value”), a basic
mathematical calculation. Id. at 41. Accordingly, 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). “[P]erformance 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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recite the identified abstract ideas, and did not properly apply the guidance.
See Reply Br. 10–16. However, this argument was not presented in the
Appeal Brief. See Appeal Br. 9–15. Rather, in the Appeal Brief, Appellant
merely highlighted certain language in claim 1 (and the other independent
claims).5 As set forth in 37 C.F.R. § 41.41(b)(2) (2015):
Any argument raised in the reply brief which was not raised in
the appeal brief, or is not responsive to an argument raised in
the examiner’s answer, including any designated new ground of
rejection, will not be considered by the Board for purposes of
the present appeal, unless good cause is shown.
Appellant has not shown good cause for initially raising this argument in the
Reply Brief, which deprives the Examiner of an opportunity to respond.
Furthermore, that claim 1 recites an employee database, a store
module, a date module, a payment module, and a conversion module, the
recitation of these elements alone does not establish that the corresponding
limitations do not recite mental steps as determined by the Examiner.
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.

5 As stated in In re 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.”
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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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 id. at 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. 8. The Examiner submits that “[t]he
processors in all steps is [sic] recited 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.
The Examiner also determines that the conversion module limitation is
recited at a high level of generality and “amounts to mere data converting.”
Ans. 5. The Examiner determines that the additional elements do not
integrate the judicial exception into a practical application because they do
not impose any meaningful limits on practicing the abstract idea. Final
Act. 8. The Examiner also determines that the recited software components
(i.e., modules) “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.

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Appellant contends:
As can be seen, all of the claims require at least three different
“modules,” e.g., “a store module,” “a date module,” and “a
payment module.” . . . A person of ordinary skill in the art
would understand that the claimed “modules” are each separate
software components that serve to cause particular portions
(i.e., processors) of the “computer-based employee vacation
scheduling system” to perform unique and separate functions.
Appeal Br. 22 (citing Spec. ¶¶ 63, 64, 69). Appellant further contends that
the abstract idea identified by the Examiner (i.e., the limitations of claim 1
that the Examiner determined correspond to the abstract idea of “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.” Id. at 22–23 (citing 84 Fed. Reg. 55); see also Final Act. 7–8.
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 program software.’” Appeal Br. 23
(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. (citing 84 Fed. Reg. 55).
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Appellant does not explain persuasively how the recited additional
elements; namely, “a store module,” “a date module,” and “a payment
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
system includes or uses a particular machine. That the modules recited in
claim 1 perform certain functions does not establish that the claim is tied to
any particular novel machine or apparatus, rather than to a general purpose
computer. The Specification describes “a computer-based employee
vacation scheduling system.” See Spec. ¶ 36. Appellant does not, however,
identify, and we are unable to find, any 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 recited
modules’s functions.
We note, however, that applying a judicial exception, such as an
abstract idea, by use of “only a general purpose computer” does not qualify
as a “particular novel machine or apparatus.” Ultramercial, Inc. v. Hulu,
LLC, 772 F.3d 709, 717 (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.
And, 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
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to implement the abstract concepts. According to the Guidance, this is an
example that courts have identified as not integrating a judicial exception
into a practical application. See 84 Fed. Reg. 55.
Second, Appellant contends that the claims each “recite some form of
‘converting a currently available paid leave of an employee into equivalent
vacation money,” and that this “conversion” meets the indicator of patent
eligibility of “an additional element effects a transformation or reduction of
a particular article to a different state or thing” set forth in the Guidance.
Appeal Br. 24 (citing 84 Fed. Reg. 54–55). Limitation (b)(iii) requires
“converting a currently available paid leave of an employee into an
equivalent monetary.” Appeal Br. 41 (Claims App.). The logic of the
conversion module is described at paragraph 41 of the Specification with
reference to Figure 6:
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. ¶ 41 (emphasis added).
According to this passage, the equivalent monetary value is not required to
be a physical object or substance, but can be a credit to an escrow account.
It appears that the claimed “converting” could be by performing a
mathematical calculation electronically with the conversion module. As
such, this conversion 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.’”).
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Again for the first time in the Reply Brief, Appellant emphasizes that
the modules recited in claim 1 correspond to a “manufacture” and claim 1
uses a manufacture in conjunction with a particular manufacture that is
integral to the claim, thereby satisfying the “integrated into a practical
application” standard of the Guidance. Reply Br. 22–23. We note, however,
that Appellant has not shown good cause for initially raising this argument
in the Reply Brief. We, therefore, will not consider this untimely argument
for purposes of the present appeal.6
We have also considered Appellant’s contentions in the Reply Brief in
regard to claim 1 reciting a “particular machine” (Reply Br. 24–25) and a
“transformation” (id. at 25), but these contentions are also unpersuasive for
reasons discussed above.
Accordingly, 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 the claim 1 is “directed to” the judicial
exception. See 2019 Guidance at 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

6 Arguments that Appellant could have made, but chose not to make in the
Appeal Brief, have not been considered and are deemed to be waived. See
37 C.F.R. § 41.37(c)(1)(iv); see also In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011); Ex Parte Frye, 94 USPQ2d 1072, 1075–76 (BPAI 2010,
precedential).
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apply the exception using a generic computer component . . . [which] cannot
provide an inventive concept.” Final Act. 8–9.
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. 26.
This contention is unpersuasive because the patent eligibility analysis
is not an evaluation of either 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. 27.
This contention is also unpersuasive. First, there is no requirement
that the “cited prior art disclose[] all the elements of the instant claims.”
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Second, Appellant does not argue persuasively that the additional claim
elements identified by the Examiner are sufficient to amount to significantly
more than the abstract idea itself. Rather, Appellant is relying on the
employee database and the functions of the store module, date module,
payment module, and conversion module recited in claim 1. Appeal Br. 28.
However, these recited functions encompass the abstract ideas themselves,
with the modules 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. We note
the Specification describes a “computer-based employee vacation scheduling
system (hereinafter, ‘scheduling system’), which may be best run as a third-
party service provider that serves employers and the employees thereof.”
See Spec. ¶ 36. 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. ¶¶ 44, 55. 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 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
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generic components as a tool to perform the abstract ideas, which use does
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. 28
(citing MPEP § 2106.05). 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. 28 (citing MPEP § 2106.05(b).
However, we are unpersuaded by Appellant that claim 1 recites a
“particular machine.” Appeal Br. 28–34. According to Appellant, “[a]
person of ordinary skill in the art would understand that the claimed
‘modules’ are each separate software components that serve to cause
particular portions (i.e., processors) of the ‘computer-based employee
vacation scheduling system’ to perform unique and separate functions.” Id.
at 32. However, even if the recited modules perform “unique and separate
functions” from each other, the recited functions of the modules encompass
the identified abstract ideas.
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Appellant 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. 35. 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.
However, we are unpersuaded by Appellant that limitation (b)(iii)
“effect[s] a transformation or reduction of a particular article to a different
state or thing.” Appeal Br. 35–38. According to Appellant, “claims 1, 16,
and 32 involve 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 38
(citing MPEP § 2106.05(c)). We disagree. As discussed, limitation (b)(iii)
does not recite any language that requires the recited “conversion” to be of
one physical object or substance to another. As such, the recited conversion
is insufficient as an indicator of patent eligibility
We have also considered Appellant’s contentions in the Reply Brief.
Reply Br. 26–29. These contentions address the Examiner’s discussion
regarding paragraphs 36, 44, and 55 of the Specification. See Ans. 9. We
agree with the Examiner that paragraph 36 does not indicate that the recited
vacation scheduling system requires more than a generic computer. The
computer-based system implements software that provides the functions of
the recited modules. We are unpersuaded that this use of use a computer-
based system transforms the claim into a patent-eligible application of the
abstract idea.
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Thus, we sustain the rejection of claim 1 under 35 U.S.C. § 101.
Claims 2–32 fall with claim 1.

CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–32 101 ’741 Application 1–32
1–32 101 Carenza 1–32
1–32 101 Eligibility 1–32
Overall
Outcome
1–32

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