Brenders, Andrew et al.

Patent Trials and Appeals Board

Feb 3, 2020

14525451 - (D) (P.T.A.B. Feb. 3, 2020)

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.
14/525,451 10/28/2014 Andrew Brenders 500453 1601
4249 7590 02/03/2020
CAROL WILSON
BP AMERICA INC.
150 West Warrenville Road
MC 200-1W
Naperville, IL 60563
EXAMINER
AIELLO, JEFFREY P
ART UNIT PAPER NUMBER
2864
NOTIFICATION DATE DELIVERY MODE
02/03/2020 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):
bppatentus@bp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREW BRENDERS and JOSEPH ANTHONY DELLINGER

Appeal 2019-001979
Application 14/525,451
Technology Center 2800
Before ROMULO H. DELMENDO, CHRISTOPHER L. OGDEN, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
CASHION, 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 1–28 under 35 U.S.C. § 101 as directed
to patent-ineligible subject matter. We have jurisdiction under
35 U.S.C. § 6(b).

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 BP Corporation
North America Inc. Appeal Brief (“Appeal Br.”) filed June 25, 2018, p. 2.
We note that the pages of the Appeal Brief are not enumerated. For the
purposes of this opinion, we refer to the Appeal Brief beginning with the
title page as page 1.
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We AFFIRM.
CLAIMED SUBJECT MATTER2
The invention relates to “processing and analysis of seismic data for
the location of subsurface hydrocarbons and other fluids and, more
particularly, to the generation of seismic velocity models for use in such
activities.” Spec. ¶ 2. The Specification explains that identifying deposits
of hydrocarbons and other fluids is hampered when they are located
underground in certain types of geological formations. Id. ¶ 3. In such
situations, these deposits are typically identified by indirect means, such as
imparting acoustic waves of certain frequencies into the ground that are
reflected back to the surface when encountering these geological formations.
Id. The reflected acoustic waves are then recorded as seismic data
representative of the geological formations from which they are obtained.
Id.
The Specification also discloses that one tool used to analyze seismic
data is known as the “velocity model,” which converts seismic data into one
or more “seismic domains” that image the geological formation in different
ways. Id. ¶ 4. The velocity model relies on known wave equations to model
the transmission, reflection, and diffraction of seismic waves. Id. ¶ 36. The
Specification also discloses that the generation of images has proven to be
challenging at low frequencies below 6 Hz because the natural background
noise of the Earth gets progressively stronger, which leads to a decline in the

2 Our Decision additionally refers to the Specification (“Spec.”) filed
October 28, 2014, the Final Office Action (“Non-Final Act.”) dated January
23, 2018, and the Reply Brief (“Reply Br.”) dated December 21, 2018.

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signal-to-noise of deepwater marine seismic data of over 20 dB per octave
for frequencies below 4 Hz. Id. ¶ 6. Appellant’s invention seeks to improve
the signal to noise at low frequencies used to generate the seismic images.
Id. ¶ 7.
Claim 1, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the claimed subject matter (formatting added)3:
1. A computer-implemented process, comprising:

performing a first roll [full, sic] waveform inversion on an
initial subsurface attribute model using low frequency, known source-
signature data and low frequency humming seismic data
representative of a subterranean geological formation to generate a
first updated subsurface attribute model; and

performing a second full waveform inversion on the first
updated subsurface attribute model using low-frequency, narrowband
sweeping known source-signature data and low-frequency, swept
seismic data representative of a subterranean geological formation to
generate a second updated subsurface attribute model.

Independent claim 19 is directed to a computing apparatus comprising
a processor and software to perform the method of claim 1. Independent
claim 24 is directed to a non-transitory program storage medium comprising
encoded instructions to perform the method of claim 1.

3 Claim 1, as originally filed, recites that the first step performs a “first full
waveform inversion” instead of the presently claimed “first roll waveform
inversion.” We take the use of the word “roll” in the currently pending
claim 1 is an unintended typographical error. Therefore we treat both steps
as performing full waveform inversions. This is consistent with the
disclosure in the Specification. See generally Spec. Appellant is advised to
correct this error via amendment.
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OPINION
The Examiner maintains the rejection of claims 1–28 under 35 U.S.C.
§ 101 as directed to patent-ineligible subject matter. Final Act. 3–6.
We review the appealed rejection for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. 37 C.F.R. § 41.37(c)(1)(iv); Ex parte Frye, 94 USPQ2d 1072, 1075
(BPAI 2010) (precedential), cited with approval in In re Jung, 637 F.3d
1356, 1365 (Fed. Cir. 2011) (explaining that even if the Examiner had failed
to make a prima facie case, “it has long been the Board’s practice to require
an applicant to identify the alleged error in the examiner’s rejections”).
After considering the argued claims relative to case law presented in
this Appeal and each of Appellant’s arguments, we are not persuaded that
Appellant identifies reversible error. Thus, we affirm the Examiner’s
rejection for the reasons expressed in the Final Office Action and the
Answer. We add the following primarily for emphasis.
Appellant does not argue any claim separately from the other claims.
See generally Appeal Br. In view of this, and for the purposes of this
opinion, we select independent claims 1, 19, and 24 as representative of the
subject matter claimed. In accordance with 37 C.F.R. § 41.37(c)(1)(iv),
dependent claims 2–18, 20–23, and 25–28 stand or fall with their respective
independent claim.
The Examiner identifies the two “performing” steps in claim 1 as an
abstract idea in the form of mental processes and a mathematical concept for
generating a subsurface seismic attribute model. Final Act. 3–4. The
Examiner further finds that the additional elements/steps of “an initial
subsurface attribute model,” “known source-signature data,” “low frequency
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humming seismic data,” “a first updated subsurface attribute model,”
“narrowband sweeping known source-signature data,” “a second updated
subsurface attribute model,” “a processor,” “a communication medium,” “a
storage,” “a software component,” and “non-transitory program storage
medium, encoded with instructions” do not add significantly more to this
abstract idea because these elements/steps are generic/conventional data
gathering, data processing, and computer/computing components, disclosed
in the Specification (Spec. ¶¶ 35, 36, 44, 45, 51, 53, and 54), that are recited
at a high level of generality, and are recited as performing generic computer
functions routinely used in computer applications. Final Act. 4. Thus, the
Examiner finds that the additional elements/steps, taken alone or as an
ordered combination, do not amount to significantly more than the judicial
exception (the abstract idea). Id. at 5.
Appellant raises a number of arguments with regard to this rejection
that we address throughout the opinion. Appeal Br. 5–11; Reply Br. 2–6.

Legal Framework
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, our
inquiry focuses on the Supreme Court’s two-step framework, described in
Mayo and Alice. Alice, 573 U.S. at 217–18 (citing Mayo Collaborative
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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 (“On their face, the claims before us are
drawn to the concept of intermediated settlement, i.e., the use of a third party
to mitigate settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611
(2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept
of hedging, or protecting against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical concepts (Flook, 437 U.S. at 594–95); and mental processes
(Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts determined to be
patent eligible include physical and chemical processes, such as “molding
rubber products” (Diamond v. Diehr, 450 U.S. 175, 191 (1981)); “tanning,
dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores”
(id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267–68 (1853)));
and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v.
Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “a claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
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of our patent laws, and this principle cannot be circumvented by attempting
to limit the use of the formula to a particular technological environment.”
Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace
that an application of a law of nature or mathematical formula to a known
structure or process may well be deserving of patent protection.”).
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-
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.
The Office has published revised guidance on the application of
§ 101. USPTO’s January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance (“Memorandum”), 84 Fed. Reg. 50, as
updated in October 2019.4 Under that guidance, we first look to whether the
claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or
mental processes); and

4 We recognize that the Memorandum was not available to the Examiner and
Appellant during the prosecution of the instant Application.
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(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h)).
Only if a claim recites a judicial exception and does not integrate that
exception into a practical application, do we then look to whether the
claim:
(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See generally Memorandum.

Analysis
Claims 1, 19, and 24
Determination of Claims’ Statutory Category
Before any consideration as to whether claims 1, 19, and 24 are
directed to patent-ineligible subject matter, such as an abstract idea, we must
first determine if the claim falls under a statutory category, as a “new and
useful process, machine, manufacture, or composition of matter.” 35 U.S.C.
§ 101.
There is no dispute between Appellant and the Examiner that claim 1
falls under a statutory category under 35 U.S.C. § 101. See generally
Appeal Br.; see generally Non-Final Act.
For completeness, we note that (1) independent claim 1 is a method
claim falling under the statutory category of a “process,” (2) independent
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claim 19 is an apparatus falling under the statutory category of “machine”
under 35 U.S.C. § 101, and (3) independent claim 24, directed to a non-
transitory program storage medium, is an article or manufacture falling
under the statutory category of “manufacture” under 35 U.S.C. § 101.
Having established that the claims fall in a statutory category, we now
follow the Memorandum to analyze claims 1, 19, and 24 to determine if they
are directed to patent-ineligible subject matter.
Determination of Patent Subject Matter Eligibility
Applying the guidance set forth in the Memorandum, we conclude
that claims 1, 19, and 24, and thus all claims on appeal, do not recite patent-
eligible subject matter.
Revised Step 2A, Prong One–Recites a Judicial Exception
The Memorandum instructs us first to determine whether each claim
recites any judicial exception to patent eligibility. 84 Fed. Reg. at 54. The
Memorandum identifies three judicially-excepted groupings of abstract
ideas: (1) mathematical concepts, (2) certain methods of organizing human
activity such as fundamental economic practices, and (3) mental processes.
Id. at 52. The Examiner finds claim 1 recites a mathematical relationship for
calculating a line-to-neutral voltage and a mental process. Non-Final Act.
4–6.
Claim 1
Claim 1 recites a computer-implemented process comprising two
steps of performing full waveform inversions (FWI) to arrive at an updated
subsurface attribute model, each wave inversions using different types of
seismic data.

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a. Step of performing a first full waveform inversion . . .
The first step of claim 1, performing a first FWI inversion on an initial
subsurface attribute model using low frequency, known source-signature
data and low frequency humming seismic data representative of a
subterranean geological formation to generate a first updated subsurface
attribute model, is recited at a high level of generalization and merely
provides information, through mathematical operations, to be used in the
process. Providing information through mathematical operations is a step
that can be performed in the human mind. As such, this step is a mental step
that recites a mental process.
This step recites a mathematical concept because information is
provided for use in a FWI. According to the Specification, FWI is a well-
known technique for constructing a subsurface attribute model that involves
using low frequencies at the beginning and then adding higher and higher
frequencies to slowly and progressively define the finer features of the
subsurface attribute model. Spec. ¶ 30. A wave equation, which is a partial
differential equation, is used to model transmission, reflection, diffraction,
etc., of seismic waves, as is well-known in the art. Id. ¶ 36. As the
Specification explains, the full waveform inversion relies on an
extrapolation engine used within an iterative optimization process that
attempts to find an earth model that explains all of the recorded seismic data.
Id. ¶ 37. This iterative optimization process can be associated with an
acoustic wave equation. Id. As such, this step is recites a mathematical
concept.
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b. Step of performing a second full waveform inversion. . .
The second step of claim 1, performing a second FWI inversion on the
first updated subsurface attribute model using low-frequency, narrowband
sweeping known source-signature data and low-frequency, swept seismic
data representative of a subterranean geological formation to generate a
second updated subsurface attribute model, is also recited at a high level of
generalization and merely provides information through mathematical
operations. Providing information through mathematical operations is a step
that can be performed in the human mind. As such, this step is a mental step
that recites a mental process.
This step recites a mathematical concept because the information is
provided for use in a FWI, as discussed above with respect to the step of
performing a FWI. This step also involves an iterative optimization process
that can be associated with an acoustic wave equation. Id. As such, this step
is a recites a mathematical concept.
Claim 9
Independent claim 9 recites a computing apparatus comprising a
processor, a communication medium, a storage, and a software component
residing on storage, where the software component performs the method of
claim 1 when executed. Claim 9 recites these components at a high level of
generality. The Specification teaches that the processor may be any suitable
processor or processor set known. Spec. ¶ 52. The Specification also
indicates that the communication medium may be a user interface. Id. ¶ 56.
The Specification describes the storage as including include a hard disk
and/or random access memory, a floppy magnetic disk or an optical disk
(id. ¶ 54) and the software component as an operating system, an
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application, data structures, etc. (id.). These devices are merely configured
so as to perform the method of claim 1, which recites a judicial exception,
i.e., mathematical concept, and the system likewise also recites this judicial
exception. Fundamentally, this claim recites the same judicial exception, a
mental process and mathematical concept, for substantially the same reasons
as provided above regarding claim 1.
Claim 24
Independent claim 24 recites a non-transitory program storage
medium encoded with instructions that, when executed, performs the
computer-implemented method corresponding to that of claim 1. As such,
claim 24 recites the same judicial exception as claim 1—a mental process
and mathematical concept.
Accordingly, applying the guidance in the Memorandum, we conclude
that claims 1, 9 and 24 each recite an abstract idea, i.e., a mental process and
a mathematical concept, and, thus, recite a judicial exception.
Revised Step 2A, Prong Two – Practical Application5
Having determined that claims 1, 9, and 24 recite the abstract ideas of
a mental process and mathematical concept, we next look to determine
whether the claims recite “additional elements that integrate the [judicial]
exception into a practical application.” MPEP § 2106.05(a)–(c), (e)–(h);
Memorandum, 84 F.3d at 53–54. Integration into a practical application
requires an additional element or a combination of additional elements in the

5 We acknowledge that some of these considerations may be properly
evaluated under Step 2 of Alice (Step 2B of Office Memorandum). Solely
for purposes of maintaining consistent treatment within the Office, we
evaluate it under Step 1 of Alice (Step 2A of Office Memorandum). See
generally Memorandum, 84 Fed. Reg. 50.
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claim to “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.”
Memorandum, 84 Fed. Reg. at 53–54; see also id. at 55 (setting forth
exemplary considerations indicative that an additional element or
combination of elements may have integrated the judicial exception into a
practical application).
With regard to claim 1, Appellant argues that the claimed invention is
directed to improvements to computer-related technologies or technological
processes beyond computer improvements. Appeal Br. 5. Thus, Appellant
contends that the subject matter of claim 1 does not recite an abstract idea.
Id. According to Appellant, the claimed invention pertains to improvements
to computer-related technologies or technological processes beyond
computer improvements because seismic exploration is a long established
technological art. Appeal Br. 6.
Appellant contends that the claimed subject matter improves
computer-related technologies because analysis of the seismic data is
computationally intensive and requires specific data mass storage design.
Appeal Br. 6–7 (citing Spec. ¶¶ 53, 55, 81–84).
We first note that method claim 1 generally recites the use of a
computer to perform the claimed method in the preamble and does not
specifically recite any other technology. As the Examiner notes, the subject
matter claimed is performing generic computer functions routinely used in
computer applications. Final Act. 4. In fact, the Specification discloses that
the method can be practiced using any suitable processor or processor set
known. Id. ¶ 52. That is, the method can be practiced using a general
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purpose computer. Further, the Specification also discloses that “there is no
requirement that the functionality of the computing system . . . be
implemented as disclosed.” Id. ¶ 58. Thus, Appellant directs us to no
evidence explaining how the mass storage, which is not part of the subject
matter of claim 1, improves the computer’s functionality itself. Specifically,
Appellant does not explain how the mass storage improves the computer’s
operation or how it relates to any rules with specific characteristics reflecting
an implementation not likely to be used. McRO, 837 F.3d. at 1313, 1316.
While Appellant asserts an improvement to a computer-related
technology, the Specification does not adequately describe the asserted
improvement nor does Appellant directs us to any portion of the
Specification that describes the asserted improvement.
Appellant also relies on In re Abele, 684 F.2d 902 (C.C.P.A 1982) and
McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir.
2016) to argue that the claimed invention is not directed to an abstract idea.
Appeal Br. 6–7. Appellant argues that Abele stands for the proposition that a
computer-implemented process is statutory, i.e., does not claim an abstract
idea-where the data operated upon is representative of tangible, real world
objects. Appeal Br. 6 (citing Abele, 684 F.2d at 907–908). Thus, Appellant
contends that the claim 1 is not directed to an abstract idea because, like
Abele, it is a computer implemented method operating on seismic data that
representative of tangible, real world objects. Appeal Br. 6.
We have considered Appellant’s arguments with respect to Abele
(Appeal Br. 6–7; Reply Br. 3), but are unpersuaded of reversible error in the
Examiner’s determination that Claim 1 is directed to an abstract idea.
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First, we note that Appellant’s reliance on Abele is misplaced because
the eligibility test applied in Abele was abrogated by In re Bilski, 545 F.3d
943 (Fed. Cir. 2008) (en banc), aff'd but criticized sub nom. Bilski v. Kappos,
561 U.S. 593 (2010), although our reviewing court subsequently relied on a
different holding of Abele. See Cybersource Corp. v. Retail Decisions, Inc.,
654 F.3d 1366, 1374 (Fed. Cir. 2011).
Second, even if Abele is good law, Appellant does not explain
adequately how it supports Appellant’s position that the claim invention is
directed to patent eligible subject matter. As the Examiner explains, the
issue of patent eligibility does not revolve on whether the computer-
implemented process was patent eligible. Ans. 6. Instead, the issue is
whether the claim attempts to patent an abstract idea. Id. at 6–7.
To the extent that Appellant relies on McRO (Appeal Br. 6–7), “the
claims [in McRO were] limited to rules with specific characteristics” and
“the structure of the limited rules reflects a specific implementation not
demonstrated as that which ‘any [animator] engaged in the search for [an
automation process] would likely have utilized.”’ McRO 837 F.3d at 1313,
1316 (alterations to second quotation in original) (quoting Ass'n for
Molecular Pathology v. Myriad Genetics, Inc., 133 S.Ct. 2107, 2119–20
(2013)). Here, Appellant does not point to any portion of the claims, that
when read in light of the Specification, recites rules with specific
characteristics reflecting an implementation not likely to be used.
Thus, contrary to Appellant’s arguments, the Examiner’s
identification of the judicial exception which the claim recites—a mental
process and a mathematical concept—is supported by a preponderance of
the evidence and is sufficiently identified as required by the Memorandum.
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Therefore, we find that the claimed subject matter does not integrate
the judicial exception into a practical application.
Accordingly, we conclude, as did the Examiner, that claim 1 recites a
judicial exception, i.e., the abstract ideas of a mental process and a
mathematical concept, and does not integrate this judicial exception into a
practical application.
With regard to apparatus claim 9, as indicated above, none of
apparatus’s components improve the functioning of a computer or another
technology or technical field. This is also true with respect to non-transitory
program storage medium claim 24. We note that Appellant’s apparatus’s
components and the non-transitory program storage medium are broadly
disclosed. Spec. ¶¶ 52, 54, 56.6 But such disclosure does not integrate the
mental processes or mathematical concepts recited in the claims into a
practical application. See Memorandum, 84 Fed. Reg. at 55 (setting forth
examples in which a judicial exception has not been integrated into a
practical application).
Accordingly, we conclude, as did the Examiner, that the claims recite
a judicial exception, i.e., the abstract idea of a mathematical relationship for
calculating the transmittance and reflectance values of a material, and do not
integrate this judicial exception into a practical application.

6 Although some of these considerations also may be properly evaluated
under Step 2 of Alice (Step 2B of Office guidance), consistent with the
Memorandum, we evaluate them under Step 1 of Alice (Step 2A of Office
guidance). See Memorandum, 84 Fed. Reg. at 55.
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Step 2 B–Inventive Concept
Because we determine that claims 1, 9, and 24 recite an abstract idea
and does not include additional elements that integrate the abstract idea into
a practical application, we look to whether the claims provide an inventive
concept, i.e., adds a specific limitation beyond the judicial exception that is
not “well-understood, routine, conventional” in the field. Memorandum, 84
Fed. Reg. at 56.
As we note above, claim 1 only generally recites the use of a
computer to perform the claimed method in the preamble and does not
specifically recite any other technology. Claim 1 does not recite any
additional elements, such as specific components of the computer. While
Appellant contends that the computer requires specific mass storage design
to the voluminous seismic data (Appeal Br. 6–7 (citing Spec. ¶¶ 53, 55, 81–
84)), the Specification describes that storage includes well known
components such as a hard disk and/or random access memory, and/or
removable storage such as a floppy magnetic disk and an optical disk (Spec.
¶ 54). In addition, as we note above, the Specification discloses that the
method can be practiced using any suitable processor or processor set
known. Id. ¶ 52. That is, the method can be practiced using a general
purpose computer. Thus, even if the computer was positively claimed in
claim 1, it would not add a specific limitation beyond the judicial exception
that is not “well-understood, routine, conventional” in the field, taken
individually or as an ordered combination with the claimed steps.
We have again considered Appellant’s arguments regarding the
claimed invention being an improvement in computer-related technologies
in our deliberations of this step. Appeal Br. 6–8; Reply Br. 2–3. We
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maintain our position that these arguments lack persuasive merit for the
reasons we give above.
Appellant argues that the additional elements are not well-understood,
routine, and conventional. Appeal Br. 10.
We disagree. As the Examiner asserts, the Specification recites the
claimed elements (computer, processor, communication medium, storage,
software components) as known in the art. Final Act. 5; Spec. ¶¶ 52, 54, 55,
58. Given this disclosure, Appellant has not identified error in the
Examiner’s determination that the components are “well, understood,
conventional.”
We also disagree with Appellant’s argument that the lack of an art
rejection is implicit evidence that the claimed subject matter is patent
eligible. Appeal Br. 11. Initially, we note that the Examiner actually stated
that these claims would be allowable if rewritten to overcome any
outstanding section 101 rejections. Final Act. 6. Thus, the Examiner is
merely stating that these claims recite subject matter which, when combined
with the limitations of the base and any intervening claims, is free of the
prior art, i.e., is novel and non-obvious. At the same time, the Examiner
clearly stated that any such amended claims must be rewritten to also
overcome the § 101 rejection, thereby indicating that these claims are not in
compliance with § 101. Thus, Appellant’s argument misapprehends the fact
that there is no prior art rejection.
Moreover, to the extent Appellant asserts the claims are
distinguishable from the claims of other cases due to a lack of applied prior
art (see Appeal Br. 11), we note that the mere fact an abstract idea is novel
or non-obvious does not render the subject matter eligible under § 101. In
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response to an argument that a claim contained an inventive concept because
it was not shown to be anticipated under § 102 or obvious under § 103, the
Federal Circuit has stated:
[t]hat position misstates the law. It is true that “the § 101 patent-
eligibility inquiry and, say, the § 102 novelty inquiry might
sometimes overlap.” Mayo, 132 S. Ct. at 1304. But, a claim for a
new abstract idea is still an abstract idea. The search for a § 101
inventive concept is thus distinct from demonstrating § 102
novelty.
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed.
Cir. 2016).
With regard to apparatus claim 9, this claim recites a computing
apparatus comprising a processor, a communication medium, a storage, and
a software component residing on storage, where the software component
performs the method of claim 1 when executed.
As we discuss above, the Specification recites the claimed elements
(computer, processor, communication medium, storage, software
components) as known in the art and, thus, “well, understood, conventional.”
Final Act. 5; Spec. ¶¶ 52, 54, 55, 58. Appellant has not argued adequately to
the contrary. Appeal Br. 10.
Appellants also do not identify any inventive concept in the recited
combination of steps here or any specific arrangement of computing
components. Indeed, the claim’s focus is to perform calculations and not a
specific configuration of the computer.
Therefore, we agree with the Examiner’s determination that the
claimed steps and components are well understood, routine and conventional
activities/components. Ans. 5. Further, courts have recognized the
performance of repetitive calculations by a computer as a well understood,
Appeal 2019-001979
Application 14/525,451

20
routine, conventional activity. Flook, 437 U.S. at 594 (recomputing or
readjusting alarm limit values); Bancorp Servs. L.L.C. v. Sun Life Assurance
Co., 687 F.3d 1266, 1278 (Fed. Cir. 2012) (“The computer required by some
of Bancorp’s claims is employed only for its most basic function, the
performance of repetitive calculations, and as such does not impose
meaningful limits on the scope of those claims.”).
We also reevaluate our conclusions about whether the recited
computer apparatus integrates the abstract idea into a practical application.
See Guidance, 84 Fed. Reg. at 56. Because the recited computer apparatus
(and its components) adds nothing more than well-understood, routine,
conventional activities, those conclusions stand. Considering both our
previous conclusions and the findings about well‐understood, routine, and
conventional activity, we determine that the claimed method does not use
the computer apparatus in a way that indicates that the claim provides an
inventive concept. Therefore, we find no element or ordered combination of
elements recited in claims 1, 9, and 24 that contains any “inventive concept”
or adds anything “significantly more” to transform the abstract concept (i.e.,
mental processes and mathematical concepts) into a patent-eligible
application.
Accordingly, we conclude that method claims 1–28 are directed to
patent-ineligible subject matter under 35 U.S.C. § 101. They ensnare the
abstract ideas of a mental process and mathematical concept and do not
recite additional elements, individually or as an ordered combination, that
integrate this mental process and mathematical concept into a practical
application.

Appeal 2019-001979
Application 14/525,451

21
CONCLUSION
In summary:

Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–28 101 Ineligible subject
matter
1–28

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