Anuradha Narasimhaswamy Melkote et al.

Patent Trials and Appeals Board

Dec 2, 2019

12950066 - (D) (P.T.A.B. Dec. 2, 2019)

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.
12/950,066 11/19/2010 Anuradha Narasimhaswamy Melkote ANAQ0103PUS1 7013
28395 7590 12/02/2019
BROOKS KUSHMAN P.C./FGTL
1000 TOWN CENTER
22ND FLOOR
SOUTHFIELD, MI 48075-1238
EXAMINER
WEISENFELD, ARYAN E
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
12/02/2019 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):
docketing@brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANURADHA NARASIMHASWAMY MELKOTE and
KELLY ANNE SLANK

Appeal 2018–008432
Application 12/950,066
Technology Center 3600

Before HUBERT C. LORIN, BRUCE T. WIEDER, and
TARA L. HUTCHINGS, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 2–20. 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(a). Appellant identifies the real party in interest as Anaqua, Inc.
Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The claimed subject matter “relates to an improved data processing
system, and more particularly, to an on-line invention disclosure submission
system” (Spec., 1:1–4). Claim 2, reproduced below, is illustrative of the
claimed subject matter (emphasis added):
2. A method of forming an invention disclosure for a
patent application comprising:
at one or more computers of an on-line invention
disclosure submission system,
receiving an electronic invention disclosure for a patent
application identifying inventors into a disclosure system,
storing the electronic invention disclosure in a database,
obtaining from each of the inventors an approval of a same
version of the electronic invention disclosure that asserts status
as inventor with regard to the electronic invention disclosure,
locking the electronic invention disclosure such that
modification thereof is prevented in response to receiving the
approvals, and
associating with the electronic invention disclosure an
approval log indicating that each of the inventors has reviewed
and approved the same version of the electronic invention
disclosure.
REFERENCES
The prior art relied upon by the Examiner is:
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Name Reference Date
Dziewit US 4,981,370 Jan. 1, 1991
Lee US 7,016,851 B1 Mar. 21, 2006
Official Notice (See Final Rej. 14, 17, and 18 (“Examiner takes Official
Notice that it is old and well known in the art of intellectual property to
assign a patent application number (i.e. docket number) for patent
application that are [sic] submitted to the patent offices.”) and 16
(“Examiner takes Office Notice that it is old and well known in the
intellectual property art to notify the inventors of events regarding the
prosecution/examination of a patent application such as an Office Action
being mailed or the date in which an application went abandoned (i.e. a
date closed).”).
MPEP (Manual of Patent Examining Procedure, Rev. 1, Feb. 2000 (See
Final Rej. 18–19 (“MPEP discloses the method of examining patent
applications with the concept of receiving a classification code associated
with the electronic application invention disclosure into the disclosure
system (Section 903.08; 903.08(a); 903.08(b); 903.08(e), discloses
receiving a classification regarding a patent application (i.e. disclosure
information) wherein a class and subclass (i.e. classification code) is
assigned to the patent application).”) and 19 (“MPEP discloses the
method of examining patent applications with the concept of in response
to receiving the classification code, assigning a docket attorney/patent
evaluator to the electronic application invention disclosure (Section
903.08; 903.08(a); 903.08(b); 903.08(e), discloses assigning an examiner
to the patent application in response to patent application being classified.
Examiner asserts the type of person being assigned to the disclosure
information holds little, if any, patentable weight to the method claim.”))
REJECTIONS
Claims 2–20 are rejected under 35 U.S.C. § 101 as being directed to
judicially-excepted subject matter.
Claims 2, 13, and 19 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lee and Dziewit.
Claims 3–7, 11, 12, 14–18, 20 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Lee, Dziewit, and Official Notice.
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Claims 8–10 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lee, Dziewit, and MPEP.
OPINION
The rejection of claims 2–20 under 35 U.S.C. § 101 as being directed to
judicially-excepted subject matter.
The Appellants argued these claims as a group. See Appeal Br. 3–4.
We select claim 2 as the representative claim for this group, and the
remaining claims 3–20 stand or fall with claim 2. 37 C.F.R.
§ 41.37(c)(1)(iv).

Preliminary comment
Our following analysis will comport with the 2019 Revised 101
Guidance. The 2014 Interim Guidance and July 2015 Update relied upon by
the Examiner (see Final Act. 3) have been superseded by the 2019 Revised
Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019),
hereinafter “2019 Revised 101 Guidance”. Id. at 51 (“Eligibility–related
guidance issued prior to the Ninth Edition, R–08.2017, of the MPEP
(published Jan. 2018) should not be relied upon.”).

Introduction
35 U.S.C. § 101 provides that “[w]hoever invents or discovers any
new and useful process, machine, manufacture, or composition of matter, or
any new and useful improvement thereof, may obtain a patent therefor.”
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In that regard, claim 2 covers a “process” and is thus statutory subject
matter for which a patent may be obtained.2 This is not in dispute.
However, the § 101 provision “contains an important implicit
exception: Laws of nature, natural phenomena, and abstract ideas are not
patentable.” Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 216
(2014) (quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc.,
569 U.S. 576, 589 (2013)).
In that regard, notwithstanding claim 2 covers statutory subject
matter, the Examiner has raised a question of patent–eligibility on the
ground that claim 2 is directed to an abstract idea.
Alice identifies a two-step framework for determining whether
claimed subject matter is directed to an abstract idea. Id. at 217.

Alice step one – the “directed to” inquiry
According to Alice step one, “[w]e must first determine whether the
claims at issue are directed to a patent-ineligible concept.” Id. at 218
(emphasis added).
The Examiner determined that claim 2 is directed to, inter alia, simply
collecting information, analyzing it, and displaying certain results of the
collection and analysis, which was deemed abstract in Electric Power Group

2 This corresponds to Step 1 of the 2019 Revised 101 Guidance which
requires determining whether “the claim is to a statutory category.” Id. at
53. See also sentence bridging pages 53 and 54 (“consider[ ] whether the
claimed subject matter falls within the four statutory categories of patentable
subject matter identified by 35 U.S.C. 101 . . . .”).
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[Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir.
2016).].” Final Act. 4–5.
Appellant argues that the claim is not directed to an abstract idea
because it includes the claim limitation “locking the electronic invention
disclosure such that modification thereof is prevented in response to
receiving the approvals” (claim 2, emphasis added).
With regard to claim 2, the examiner asserts that “[t]he
abstract functions of the claims . . . are . . . locking the invention
disclosure . . . .” Office Action, November 27, 2017 p. 4,
Applicant disagrees. The claimed locking is performed in
response to a trigger condition (in response to receiving the
approvals) and prevents modification of the electronic invention
disclosure. An abstract function could not have such an effect.
That is, mental steps could not prevent modification of an
electronic invention disclosure. Moreover, just as a system that,
responsive to a certain trigger condition, locks a door to prevent
entry is not abstract, so too is a system that, responsive to a
certain trigger condition, locks an electronic invention disclosure
to prevent modification thereof.

In response, the examiner argues that
[a] person can simply mandate that the document
not be changed or physically lock the document
away. There is nothing fundamentally different
about electronically locking a document compared
to physically/manually locking it. Moreover, the
focus of the claim is not solely on locking a
document . . . .

Office Action, November 27, 2017, p. 20.

Applicant disagrees. Of course there is a fundamental difference
between electronically locking a document compared to
physically/manually locking it: mandating that a document not
be changed or physically locking the document away does not
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change anything about the nature of the document itself–unlike
electronically locking a document such that modification thereof
is prevented. By analogy, telling someone not to open a door is
fundamentally different than locking the door to prevent it from
being opened. Moreover, the locking activity is integral to the
claim as it is an explicit limitation thereof. Put a different way,
the claims are not directed to abstract function.
Appeal Br. 3–4. This is Appellant’s only argument.
Accordingly, there is a dispute over whether claim 2 is directed to an
abstract idea. Specifically, does the claim limitation “locking the electronic
invention disclosure such that modification thereof is prevented in response
to receiving the approvals” affect the Examiner’s step one determination that
claim 2 is directed to an abstract idea?
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Claim Construction3
We consider the claim as a whole4 giving it the broadest reasonable
construction5 as one of ordinary skill in the art would have interpreted it in
light of the specification6 at the time of filing.
Claim 2 calls for a “method” comprising five steps performed “at one
or more computers of an on-line invention disclosure submission system.”
(Emphasis added.). Claim 2 does not require any of the recited steps to be
performed on or by the “one or more computers of an on-line invention

3 “[T]he important inquiry for a § 101 analysis is to look to the claim.”
Accenture Glob. Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336,
1345 (Fed. Cir. 2013). “Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of
Can., 687 F.3d 1266, 1273 (Fed. Cir. 2012), the court observed that ‘claim
construction is not an inviolable prerequisite to a validity determination
under § 101.’ However, the threshold of § 101 must be crossed; an event
often dependent on the scope and meaning of the claims.” Internet Patents
Corp. v. Active Network, Inc., 790 F.3d 1343, 1347–48 (Fed. Cir. 2015).

4 “In determining the eligibility of respondents’ claimed process for patent
protection under § 101, their claims must be considered as a whole.”
Diamond v. Diehr, 450 U.S. 175, 188 (1981).

5 2019 Revised 101 Guidance, page 53, footnote 14 (“If a claim, under its
broadest reasonable interpretation . . . .”) (emphasis added.).

6 “First, it is always important to look at the actual language of the claims
. . . . Second, in considering the roles played by individual limitations, it is
important to read the claims ‘in light of the specification.’” Smart Sys.
Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1387 (Fed. Cir.
2017) (J. Linn, dissenting in part and concurring in part), citing Enfish, LLC
v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016), among others.

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disclosure submission system.” As long as the steps are performed “at” (i.e.,
near) said “one or more computers,” the claim reasonably broadly covers it.
The first step calls for “receiving an electronic invention disclosure
for a patent application identifying inventors into a disclosure system.” That
the “disclosure system” “receiv[es] an electronic invention disclosure”
implies that the “disclosure system” can be construed reasonably broadly as
a computer. However, this step does not refer to the “one or more
computers of an on-line invention disclosure submission system” recited
earlier in the claim but rather to “a disclosure system.” Accordingly, this
step broadly covers employing a separate computer as “a disclosure system.”
Also, this step does not specify the form that the “electronic invention
disclosure” must be in when the “a disclosure system” (i.e., a computer)
receives it. It could be data inputted via an electronic form or submitted as
an electronic document, to name but a few well–known possibilities.
Accordingly, this first step reasonably broadly covers receiving an electronic
document; more particularly, an invention disclosure.
The second recited step is “storing the electronic invention disclosure
in a database, obtaining from each of the inventors an approval of a same
version of the electronic invention disclosure that asserts status as inventor
with regard to the electronic invention disclosure.” This step calls for a
database storing said invention disclosure. Presumably the database is
associated with the computer of the first step, although that is not clearly
expressed. The rest of the recited step calls for “obtaining from each of
the inventors an approval of a same version of the electronic invention
disclosure that asserts status as inventor with regard to the electronic
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invention disclosure.” There is no device attached to this “obtaining.” It
could be obtained verbally. This second step reasonably broadly covers
storing an electronic document (i.e., an invention disclosure) and verbally
obtaining approval.
The third step, the one at issue, calls for “locking the electronic
invention disclosure such that modification thereof is prevented in response
to receiving the approvals.” The step reasonably broadly covers preventing
the information disclosure from being modified by “locking” it. In that
regard, the Specification provides no express meaning for “locking.” The
Specification discloses that “[w]hen all the inventors approve the document,
the document is locked to prevent further changes.” Spec., 14:15–17 (see
also 14:28). No further details are disclosed. Accordingly, we give the
claim term “lock[ ]” its ordinary and customary meaning, which is “to keep
from going in or out” (Webster’s New World Dictionary, 3rd Ed., 1988, p.
793, entry 2 for “lock” as a verb transitive). Given this broad meaning,
“locking the electronic invention disclosure such that modification thereof is
prevented” reasonably broadly covers any means that prevents the invention
disclosure from going in or out, thereby preventing its modification. To one
of ordinary skill in the art, this would reasonably cover such conventional
practices as password–protecting the invention disclosure and, as the
Examiner suggests (see Ans. 4), physically locking the invention disclosure
by, for example, locking down the computer that houses it. As far as the
“locking” being triggered “in response to receiving the approvals,”
consistent with our construction of the “obtaining” limitation above, the
“receiving [of] the approvals” can be accomplished simply by listening for
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said approvals. Thus this step covers preventing the electronic document
from being modified by “locking” the computer once approvals are heard.
The last step calls for “associating with the electronic invention
disclosure an approval log indicating that each of the inventors has reviewed
and approved the same version of the electronic invention disclosure.” This
step is not associated with any device. It simply asks that that one type of
data, an invention disclosure, be associated with another type of data, an
approval log with certain indications. This can be performed purely
mentally.
Putting it all together, the claim reasonably broadly covers a computer
receiving an information disclosure, storing said information disclosure in a
database, verbally obtaining approval, preventing said information
disclosure from being modified by locking the computer once approvals are
heard, and mentally associating said information disclosure with an approval
log.
Given the method as claimed as reasonably broadly construed and in
light of the Specification’s description of the invention as being related to
“an on–line invention disclosure submission system” (Spec. 1:3–4), based on
the record before us, we reasonably broadly construe claim 2 as being
directed to a scheme for securing an electronic document, albeit, the
electronic document is more particularly an approved invention disclosure.
Furthermore, the steps for carrying out the recited securing an
approved invention disclosure scheme does not ask the “one or more
computers of an on-line invention disclosure submission system,” the “a
disclosure system,” or the “database” to go beyond their common functions.
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While invoking a computer to perform certain steps can be patentably
significant (see Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir.
2016) and Ancora Technologies, Inc. v. HTC America, Inc., 908 F.3d 1343
(Fed. Cir. 2018)), here the instant record does not sufficiently support the
view that the recited steps are caused to be performed by instructions having
a non–conventional effect on said devices. To the contrary, the record
supports viewing the claimed subject matter as amounting to implementing a
scheme for securing an approved invention disclosure on a generic
computer. Cf. Alice 573 U.S. at 225–26 (“Instead, the claims at issue
amount to ‘nothing significantly more’ than an instruction to apply the
abstract idea of intermediated settlement using some unspecified, generic
computer.”).
Accordingly, we reasonably broadly construe claim 2 as being
directed to securing an electronic document (specifically, an approved
invention disclosure) on a generic computer system.
The Abstract Idea7
Above, where we reproduce claim 2, we identify in italics the
limitations we believe recite an abstract idea.8 Based on our claim

7 This corresponds to Step 2A of the 2019 Revised 101 Guidance. Step 2A
determines “whether a claim is ‘directed to’ a judicial exception,” such as an
abstract idea. Step 2A is two prong inquiry.

8 This corresponds to Prong One (a) of Step 2A of the 2019 Revised 101
Guidance. “To determine whether a claim recites an abstract idea in Prong
One, examiners are now to: (a) Identify the specific limitation(s) in the claim
under examination (individually or in combination) that the Examiner
believes recites an abstract idea . . . .” Id. at 54.

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construction analysis (above), we determine that the identified limitations
describe a type of commercial interaction, more particularly securing an
electronic document. Securing electronic documents is a fundamental
economic practice that falls within the enumerated “Certain methods of
organizing human activity” grouping of abstract ideas set forth in the 2019
Revised 101 Guidance.9
Improvement In the Functioning of a Computer10 (Appellant’s
Argument)

9 This corresponds to Prong One [“Evalutate Whether the Claim Recites a
Judicial Exception”] (b) of Step 2A of the 2019 Revised 101 Guidance. “To
determine whether a claim recites an abstract idea in Prong One, examiners
are now to: . . . (b) determine whether the identified limitation(s) falls within
the subject matter groupings of abstract ideas enumerated in Section 1 of the
[2019 Revised 101 Guidance].” Id. at 54. This case implicates subject
matter grouping “(b)”:
(b) Certain methods of organizing human activity—fundamental
economic principles or practices (including hedging, insurance,
mitigating risk); commercial or legal interactions (including
agreements in the form of contracts; legal obligations; advertising,
marketing or sales activities or behaviors; business relations);
managing personal behavior or relationships or interactions between
people (including social activities, teaching, and following rules or
instructions);
Id. at 52.

10 This corresponds to Prong Two [“If the Claim Recites a Judicial
Exception, Evaluate Whether the Judicial Exception Is Integrated Into a
Practical Application”] of Step 2A of the 2019 Revised 101 Guidance. “A
claim that integrates a judicial exception into a practical application will
apply, rely on, or use the judicial exception in a manner that imposes a
meaningful limit on the judicial exception, such that the claim is more than a
drafting effort designed to monopolize the judicial exception.” Id. at 54.
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The Examiner’s characterization of what the claim is directed to
(collecting, analyzing, displaying) is similar to our own (securing an
electronic document), albeit our characterization is described at a lower level
of abstraction.
We have reviewed the record and are unpersuaded as to error in our or
the Examiner’s characterization of what claim 2 is directed to.
Appellant’s only argument is the one reproduced above whereby
Appellant argues that claim 2 is not directed to an abstract idea because it
includes the claim limitation “locking the electronic invention disclosure
such that modification thereof is prevented in response to receiving the
approvals.”
Appellant states that there is a “fundamental difference between
electronically locking a document compared to physically/manually locking
it.” Appeal Br. 4. We agree with the Examiner that “the claims do not even
recite electronically locking a document; the claim recites ‘locking the
electronic invention disclosure.’” Ans. 4. Accordingly, that part of the
argument is unpersuasive as to error in the Examiner’s determination under
Alice step one because it is not commensurate in scope with what is claimed.
“Many of appellant’s arguments fail from the outset because, . . . they are

One consideration, implicated here, that is “indicative that an additional
element (or combination of elements) may have integrated the exception into
a practical application” (id., at 55) is if “[a]n additional element reflects an
improvement in the functioning of a computer, or an improvement to other
technology or technical field” (id. at 55).

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not based on limitations appearing in the claims . . . .” In re Self, 671 F.2d
1344, 1348 (CCPA 1982).
There is no dispute that “the locking activity is integral to the claim
as it is an explicit limitation thereof.” Appeal Br. 4. The question is whether
that step adds anything significant to transform the abstract idea (securing an
electronic document) into an inventive concept. In that regard, specific
asserted improvements in computer capabilities, when claimed, can render
claimed subject matter not directed to an abstract idea. Cf. McRO, Inc. v.
Bandai Namco Games Am. Inc., 837 F.3d 1299, 1316 (Fed. Cir. 2016).
(“When looked at as a whole, claim 1 is directed to a patentable,
technological improvement over the existing, manual 3–D animation
techniques.”) But there is no argument and insufficient evidence in the
record before us that the claimed subject matter reflects any specific asserted
improvement in computer capabilities.
We have carefully reviewed the Specification nonetheless but can find
no disclosure that any of the claimed elements are improved. Rather than
being directed to any specific asserted improvement in computer
capabilities, the record supports the view that the claimed subject matter is
directed to securing an electronic document using a generic computer as a
tool.11

11 See the 2019 Revised 101 Guidance at 55:

The courts have also identified examples in which a judicial exception
has not been integrated into a practical application:
• An additional element merely recites the words “apply it” (or an
equivalent) with the judicial exception, or merely includes
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We agree with the Examiner. See Final Rej. 5–6. According to the
Specification, the “one or more computers of an on-line invention disclosure
submission system,” the “a disclosure system,” and the “database” cover
generic devices that were commonly available at the time the application
was filed. See Spec. 6:10 – 9:20. The claim provides no additional
structural details12 that would distinguish said devices from those that were
well known at the time the application was filed.
Also, claim 2 calls upon said devices to perform only basic functions
– i.e., “receiving,” “storing”, and “locking”. The Specification attributes no
special meaning to any of these terms. In our view, consistent with the
Specification, these are common processing functions that one of ordinary
skill in the art at the time of the invention would have known generic
processors were capable of performing and would have associated with
generic processors. Cf. OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d
1359, 1363 (Fed. Cir. 2015):
Beyond the abstract idea of offer-based price optimization, the claims
merely recite “well-understood, routine conventional activit[ies],”
either by requiring conventional computer activities or routine data-
gathering steps. Alice, 134 S. Ct. at 2359 (quoting Mayo, 132 S.Ct. at
1294) (alterations in original). . . . For example, claim 1 recites
“sending a first set of electronic messages over a network to devices,”
the devices being “programmed to communicate,” storing test results

instructions to implement an abstract idea on a computer, or
merely uses a computer as a tool to perform an abstract idea.
12 Cf. Move, Inc. v. Real Estate Alliance Ltd., 721 F. App’x 950, 954 (Fed.
Cir. 2018) (non-precedential). “Claim 1 is aspirational in nature and devoid
of any implementation details or technical description that would permit us
to conclude that the claim as a whole is directed to something other than the
abstract idea identified by the district court.”
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in a “machine-readable medium,” and “using a computerized system
. . . to automatically determine” an estimated outcome and setting a
price. Just as in Alice, “all of these computer functions are ‘well-
understood, routine, conventional activit[ies]’ previously known to the
industry.” Alice, 134 S.Ct. at 2359 (quoting Mayo, 132 S.Ct. at 1294)
(alterations in original); see also buySAFE[, Inc. v. Google, Inc.], 765
F.3d [1350,] 1355 [(Fed. Cir. 2014)] (“That a computer receives and
sends the information over a network—with no further specification—
is not even arguably inventive.”).
At best, the claimed devices distinguish over other generic processors
known at the time the application was filed in the type of electronic
document that is to be secured; that is, an invention disclosure. But that
difference (document v. invention disclosure) alone is not patentably
consequential. This is so because “[c]laim limitations directed to the content
of information and lacking a requisite functional relationship are not entitled
to patentable weight because such information is not patent eligible subject
matter under 35 U.S.C. § 101.” Praxair Distribution, Inc. v. Mallinckrodt
Hosp. Prods. IP Ltd., 890 F.3d 1024, 1032 (Fed. Cir. 2018).
Accordingly, within the meaning of the 2019 Revised 101 Guidance,
we find there is no integration into a practical application.
We have considered Appellant’s argument challenging the
Examiner’s determination under step one of the Alice framework and find it
unpersuasive. For the foregoing reasons, the record supports the Examiner’s
determination that claim 2 is directed to an abstract idea.

Alice step two – Does the Claim Provide an Inventive Concept?13

13 This corresponds to Step 2B of the 2019 Revised 101 Guidance (see
p. 56).
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Step two is “a search for an ‘inventive concept’—i.e., an element or
combination of elements that is ‘sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [ineligible
concept] itself.’” Alice, 573 U.S. at 221 (quoting Mayo Collaborative Servs.
v. Prometheus Labs., Inc., 566 U.S. 66, 73 (2012)).
In that regard, the Examiner determined inter alia that the
the structural elements of the invention . . . together do not offer
‘significantly more’ than the abstract idea itself because the
claims do not recite an improvement to another technology or
technical field, an improvement to the functioning of any
computer itself, or provide meaningful limitations beyond
generally linking an abstract idea (forming an invention
disclosure) to a particular technological environment (a general
purpose computer).
Final Act. 6. We agree.
We addressed this matter of whether there were any purported specific
asserted improvements in computer capabilities in our analysis above under
step one of the Alice framework. This is consistent with the case law. See
Ancora, 908 F.3d at 1347 (“We have several times held claims to pass
muster under Alice step one when sufficiently focused on such
improvements.”). Such an argument can also challenge a determination
under step two of the Alice framework. See buySAFE, 765 F.3d at 1354–55.

[I]f a claim has been determined to be directed to a judicial exception
under revised Step 2A, examiners should then evaluate the additional
elements individually and in combination under Step 2B to determine
whether they provide an inventive concept (i.e., whether the additional
elements amount to significantly more than the exception itself).
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“[R]ecent Federal Circuit jurisprudence has indicated that eligible subject
matter can often be identified either at the first or the second step of the
Alice/Mayo [framework].” 2019 Revised 101 Guidance at 53; see also id.
n. 17.
Be that as it may, we are unpersuaded that claim 2 presents an element
or combination of elements indicative of a specific asserted improvement in
computer capabilities, thereby rendering the claimed subject matter
sufficient to ensure that the patent in practice amounts to significantly more
than a patent upon the securing an electronic document abstract idea itself.
We have reviewed the Specification and, as explained above, we can
find no suggestion of any improvements to the system as a result of
performing the recited steps.
We cited the Specification in our discussion as intrinsic evidence that
the claimed devices are conventional. In doing so, we have followed
“Changes in Examination Procedure Pertaining to Subject Matter Eligibility,
Recent Subject Matter Eligibility Decision (Berkheimer v. HP Inc.[, 881
F.3d 1360 (Fed. Cir. 2018)],” USPTO Memorandum, Robert W. Bahr,
Deputy Commissioner For Patent Examination Policy, April 19, 2018 (the
“Berkheimer Memo”)).
The court in Berkheimer held that “[t]he patent eligibility inquiry may
contain underlying issues of fact.” Berkheimer, 881 F.3d at 1365 (quoting
Mortgage Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314,
1325 (Fed. Cir. 2016) (“The § 101 inquiry ‘may contain underlying factual
issues.”’)). But the court also held that “[w]hen there is no genuine issue of
material fact regarding whether the claim element or claimed combination is
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well-understood, routine, [and] conventional to a skilled artisan in the
relevant field, this issue can be decided on summary judgment as a matter of
law.” Id. at 1368 (emphasis added). This qualification has been
subsequently reiterated.
If there is a genuine dispute of material fact, Rule 56 requires
that summary judgment be denied. In Berkheimer, there was
such a genuine dispute for claims 4–7, but not for claims 1–3
and 9 . . . . [I]n accordance with Alice, we have repeatedly
recognized the absence of a genuine dispute as to eligibility for
the many claims that have been defended as involving an
inventive concept based merely on the idea of using existing
computers or the Internet to carry out conventional processes,
with no alteration of computer functionality.
Berkheimer v. HP Inc., 890 F.3d 1369, 1371, 1373 (Fed. Cir. 2018) (Order,
On Petition for rehearing en banc, May 31, 2018); see also Aatrix Software,
Inc. v. Green Shades Software, Inc., 890 F.3d 1354, 1368 (Fed. Cir. 2018)
(“A factual allegation or dispute should not automatically take the
determination out of the court’s hands; rather, there needs to be justification
for why additional evidence must be considered—the default being a legal
determination.”). Here, the Specification indisputably shows the claimed
devices were conventional at the time of filing. Accordingly, no genuine
issue of material fact exists as to the well–understood, routine, or
conventional nature of the devices as claimed.
No persuasive arguments having been presented, we conclude that no
error has been committed in the determination under Alice step two that
claim 2 does not include an element or combination of elements
circumscribing the patent-ineligible concept it is directed to so as to
transform the concept into an inventive application.
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As to Appellant’s only argument, we reiterate that the “locking”
limitation adds nothing of significance to the concept of securing an
electronic document to which the claim is directed such that said concept is
transformed into an inventive concept. As indicated above, locking an
electronic document was conventional at the time the application was filed.
This is evidenced by such common actions as, for example, password–
protecting a document.
We have considered all of the Appellant’s arguments (including those
made in the Reply Brief) and find them unpersuasive.
Accordingly, because we are not persuaded as to error in the
determinations that representative claim 2, and claims 3–20 which stand or
fall with claim 2, are directed to an abstract idea and do not present an
“inventive concept,” we sustain the Examiner’s conclusion that they are
directed to patent-ineligible subject matter for being judicially-excepted
from 35 U.S.C. § 101. Cf. LendingTree, LLC v. Zillow, Inc., 656 F. App’x
991, 997 (Fed. Cir. 2016) (“We have considered all of LendingTree’s
remaining arguments and have found them unpersuasive. Accordingly,
because the asserted claims of the patents in suit are directed to an abstract
idea and do not present an ‘inventive concept,’ we hold that they are directed
to ineligible subject matter under 35 U.S.C. § 101.”); see, e.g., OIP Techs.,
788 F.3d at 1364; FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089,
1098 (Fed. Cir. 2016).

The rejection of claims 2, 13, and 19 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Lee and Dziewit.
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As we understand it, Appellant is arguing that Lee discloses
intellectual property filings rather than invention disclosures as claimed in
each of independent claims 2, 13, and 19 and that that difference is a
patentable distinction over Lee. See e.g., Appeal Br. 4 (“The intellectual
property filings of Lee are patent applications, which of course are not
invention disclosures.”).
The structural difference between Lee’s information system and the
claimed combination of devices is not apparent. Both process information.
If there is a difference it would appear to be in what is being processed. For
the claimed combination of devices, the information is received, stored, and
locked. There is insufficient evidence that the claimed combination of
devices is functionally affected by processing information disclosures rather
than some other type of information. It is thus reasonable to characterize the
information being processed (i.e., information disclosures) as printed matter.
Given that printed matter is not given patentable weight, the “information
disclosure” claim limitations — as a distinction between the claimed
combination of devices and that of Lee’s information system — are not
patentably consequential. They amount to nonfunctional descriptive
material. “[N]on-functional descriptive material, being useful and
intelligible only to the human mind, is given no patentable weight.” Ex
parte Graf, Appeal 2012-003941, 2013 WL 3873066, at *4 (PTAB July 23,
2013) (non-precedential), aff’d, In re Graf, 585 F. App’x 1012 (Fed. Cir.
2014) (non-precedential); cf. In re DiStefano, No. 2015–1453 (Fed. Cir.
2015); as explained in In re Xiao, 462 F. App’x 947, 950–52 (Fed. Cir.
2011) (non-precedential):
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[T]he Board did not create a new “mental distinctions” rule in
denying patentable weight . . . . On the contrary, the Board
simply expressed the above-described functional relationship
standard in an alternative formulation—consistent with our
precedents—when it concluded that any given position label’s
function . . . is a distinction “discernable only to the human
mind.” Board Decision at 6; see In re Lowry, 32 F.3d 1579, 1583
(Fed. Cir. 1994) (describing printed matter as “useful and
intelligible only to the human mind”) (quoting In re Bernhart,
417 F.2d 1395, 1399 (CCPA 1969)).
“The rationale behind this line of cases is preventing the indefinite patenting
of known products by the simple inclusion of novel, yet functionally
unrelated limitations.” King Pharms., Inc. v. Eon Labs, Inc., 616 F.3d 1267,
1279 (Fed. Cir. 2010).
Appellant also argues that
A system that requires inventors to sign a declaration stating that
they have read and understood a patent application does not
preclude an inventor reviewing an electronic invention
disclosure from making changes unbeknownst to other inventors
unless the system requires that all inventors approve a same
version of the invention disclosure.
Appeal Br. 5; see also Reply Br. 2. However, the claims are not so limited.
They broadly cover the possibility of an inventor unlocking the locked
document and modifying the document unbeknownst to all the other
inventors who have already approved a same version of the invention
disclosure that triggered the initial locking of the document. The argument
is therefore not commensurate in scope with what is more broadly claimed
and is thus unpersuasive as an argument challenging the rejection.
We have reviewed all the arguments but find them unpersuasive.

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The rejection of claims 3–7, 11, 12, 14–18, 20 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Lee, Dziewit, and Official Notice.
The rejection of claims 8–10 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lee, Dziewit, and MPEP.
Appellant presents no arguments challenging these rejections. See
Appeal Br. 5–6. Accordingly, they are sustained for the reasons discussed
above in sustaining the rejection of the independent claims.

CONCLUSION
The decision of the Examiner to reject claims 2–20 is affirmed.
More specifically:
The rejection of claims 2–20 under 35 U.S.C. § 101 as being directed
to judicially-excepted subject matter is affirmed.
The rejection of claims 2, 13, and 19 under 35 U.S.C. § 103(a) as
being unpatentable over Lee and Dziewit is affirmed.
The rejection of claims 3–7, 11, 12, 14–18, 20 under 35 U.S.C.
§ 103(a) as being unpatentable over Lee, Dziewit, and Official Notice is
affirmed.
The rejection of claims 8–10 under 35 U.S.C. § 103(a) as being
unpatentable over Lee, Dziewit, and MPEP is affirmed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
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2–20 101 2–20
2, 13, 19 103 Lee, Dziewit 2, 13, 19
3–7, 11,
12, 14–18,
20
103 Lee, Dziewit,
Official Notice
3–7, 11, 12,
14–18, 20

8–10 103 Lee, Dziewit,
MPEP
8–10
Overall
Outcome
2–20

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