Chen, Gao et al.

Patent Trials and Appeals Board

Mar 27, 2020

12362209 - (D) (P.T.A.B. Mar. 27, 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.
12/362,209 01/29/2009 Gao Chen 2011-0016US01 9630
74739 7590 03/27/2020
Potomac Law Group, PLLC (Oracle International)
8229 Boone Boulevard
Suite 430
Vienna, VA 22182
EXAMINER
RIFKIN, BEN M
ART UNIT PAPER NUMBER
2123
NOTIFICATION DATE DELIVERY MODE
03/27/2020 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):
bgoldsmith@potomaclaw.com
eofficeaction@appcoll.com
patents@potomaclaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GAO CHEN and CLAIRE M. BAGLEY
____________

Appeal 2019-001050
Application 12/362,209
Technology Center 2100
____________

Before JOHN A. JEFFERY, KRISTEN L. DROESCH, and
CARL L. SILVERMAN, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
This application returns to us after another panel of this Board1
reversed the Examiner’s decision to reject then-pending claims 1–19 as
obvious over various prior art references under 35 U.S.C. § 103. Ex parte
Chen, Appeal No. 2015-006195 (PTAB Jan. 11, 2017). Prosecution
reopened after that decision, and Appellant2 now appeals under 35 U.S.C.
§ 134(a) from the Examiner’s subsequent rejection of claims 1–19 as

1 The panel for this appeal is the same as the earlier appeal except that Judge
Droesch replaces Judge Kumar.
2 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Oracle
International Corporation. Appeal Br. 2.
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ineligible under 35 U.S.C. § 101. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.

STATEMENT OF THE CASE
Appellant’s invention is a constraint-based computer system that
solves dynamic constraint satisfaction problems (CSPs), namely those where
sub-problems of variables and constraints can be added incrementally as
required. Specifically, a problem solver includes a resource sum constraint
and a port for coupling sub-problems to the port. See generally Spec. ¶¶ 1–
7. Claim 1 is illustrative:
1. A non-transitory computer readable medium having
instructions stored thereon that, when executed by a processor, cause
the processor to implement a product configurator that solves a dynamic
constraint satisfaction problem to configure a product, the problem
comprising a resource sum constraint and a port for coupling zero or more
sub-problems to the problem, the solving the dynamic constraint satisfaction
problem comprising:

coupling a first sub-problem to the port in response to an interaction
by a user with the dynamic constraint satisfaction problem, wherein the first
sub-problem comprises a plurality of variables and a plurality of constraints,
and the port comprises a definition of a first problem that can be connected
to the port and a cardinality, and the coupling comprises assigning a first
value to a first variable of the port that causes all of the variables and
constraints that comprise the first sub-problem to be coupled to the port;

based at least on the coupling, determining a revised resource sum
domain for the problem, the revised resource sum domain comprising a
contribution from existing participants comprised of existing sub-problems
coupled to the port and a contribution from potential participants comprised
of potential additional sub-problems coupled to the port based on the
resource sum constraint; and
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based on the determined revised resource sum domain, dynamically
generating a new sub-problem coupled to the port by assigning a second
value to a second variable of the port to instantiate a new sub-problem
without user interaction and before another interaction by the user;

wherein the resource sum constraint comprises a numerical range of
allowable resources provided by the zero or more sub-problems coupled to
the port;

wherein each problem corresponds to a component of the product, and
each sub-problem corresponds to a sub-component of the product.

THE REJECTION
The Examiner rejected claims 1–19 under 35 U.S.C. § 101 as
ineligible. Ans. 2–4.3

FINDINGS, CONCLUSIONS, AND CONTENTIONS
The Examiner determines that the claimed invention is directed to an
abstract idea, namely (1) gathering data, such as variables, constraints, and a
problem definition; and (2) analyzing the data to revise a resource sum
domain by trying different variables within a CSP to find the optimal
configuration for a mathematical problem. See Ans. 2–3, 5–6. The
Examiner adds that the claims do not include elements that add significantly
more than the abstract idea, but merely recite elements, including a non-
transitory medium and processor, whose generic computer functions are
well-understood, routine, and conventional. See Ans. 3–4, 8–10.

3 Throughout this opinion, we refer to (1) the Appeal Brief filed May 14,
2018 (“Appeal Br.”); (2) the Examiner’s Answer mailed September 20, 2018
(“Ans.”); and (3) the Reply Brief filed November 20, 2018 (“Reply Br.”).
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Appellant argues that the claimed invention is directed to a technical
solution to a technical problem. Appeal Br. 4–8. According to Appellant,
the Examiner not only oversimplified the claims and ignored this technical
solution, but also failed to identify court decisions with abstract ideas
corresponding to the alleged abstract idea. Appeal Br. 4–8. Appellant
emphasizes that by reducing the resource sum domain, the invention saves
space, thus allowing a computer to run faster and more efficiently when
solving a CSP. Appeal Br. 4–6. Appellant adds that the computer’s
generating a new sub-problem dynamically, without user input, likewise
generates a product configuration more efficiently. Appeal Br. 5.
Appellant also contends that the claims recite an inventive concept
because, among other things, they do not merely recite conventional
functionality, nor did the Examiner provide the requisite evidence of such
conventionality. See Appeal Br. 8–11; Reply Br. 2–3. According to
Appellant, the Examiner failed to provide evidence that the recited
functional limitations, including those beyond mere hardware components,
are well-understood, routine, and conventional as required. Reply Br. 2–3.

ISSUE
Under § 101, has the Examiner erred in rejecting claims 1–19 as
directed to ineligible subject matter? This issue turns on whether the claims
are directed to an abstract idea and, if so, whether the recited elements—
considered individually and as an ordered combination—transform the
nature of the claims into a patent-eligible application of that abstract idea.

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PRINCIPLES OF LAW
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. See, 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 (“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 formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); 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 187 n.7 (quoting Corning v. Burden, 56 U.S.
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(15 How.) 252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S.
at 67 (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 176; 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.”). That
said, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
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. (alterations in original) (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.
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In January 2019, the United States Patent and Trademark Office
(“USPTO”) published revised guidance on the application of § 101. See
USPTO’s 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) (“Guidance”). 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
(2) additional elements that integrate the judicial exception into
a practical application (see MANUAL OF PATENT EXAMINING
PROCEDURE (MPEP) §§ 2106.05(a)–(c), (e)–(h) (9th ed. Rev.
08.2017, Jan. 2018)).
Only if a claim (1) recites a judicial exception, and (2) 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, and conventional in the field
(see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, and conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See Guidance, 84 Fed. Reg. at 56.

ANALYSIS
Claims 1–19: Alice/Mayo Step One

Representative independent claim 1 recites:
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A non-transitory computer readable medium having instructions
stored thereon that, when executed by a processor, cause the processor to
implement a product configurator that solves a dynamic constraint
satisfaction problem to configure a product, the problem comprising a
resource sum constraint and a port for coupling zero or more sub-problems
to the problem, the solving the dynamic constraint satisfaction problem
comprising:

coupling a first sub-problem to the port in response to an interaction
by a user with the dynamic constraint satisfaction problem, wherein the first
sub-problem comprises a plurality of variables and a plurality of constraints,
and the port comprises a definition of a first problem that can be connected
to the port and a cardinality, and the coupling comprises assigning a first
value to a first variable of the port that causes all of the variables and
constraints that comprise the first sub-problem to be coupled to the port;

based at least on the coupling, determining a revised resource sum
domain for the problem, the revised resource sum domain comprising a
contribution from existing participants comprised of existing sub-problems
coupled to the port and a contribution from potential participants comprised
of potential additional sub-problems coupled to the port based on the
resource sum constraint; and

based on the determined revised resource sum domain, dynamically
generating a new sub-problem coupled to the port by assigning a second
value to a second variable of the port to instantiate a new sub-problem
without user interaction and before another interaction by the user;

wherein the resource sum constraint comprises a numerical range of
allowable resources provided by the zero or more sub-problems coupled to
the port;

wherein each problem corresponds to a component of the product, and
each sub-problem corresponds to a sub-component of the product.

As noted above, the claimed invention includes instructions that cause
a processor to solve a dynamic CSP comprising a resource sum constraint
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and a port. A key aspect of the recited solution is that after a first sub-
problem is coupled to the port responsive to user interaction with the
problem, (1) a revised resource sum domain for the problem is determined
dynamically based on this coupling, and (2) a new sub-problem coupled to
the port is generated dynamically.
As shown in Appellant’s Figure 2, a “port” is a structural variable
208, and is defined as “a container for problems and connects sub-problems
to the problem or another sub-problem.” Spec. ¶ 17. Claim 1 further
requires the recited port to comprise (1) a definition of a first problem that
can be connected to the port, and (2) a cardinality which, according to
paragraph 17 of Appellant’s Specification, is a numeric domain representing
how many instances of the problem is required or allowed in the port.
Paragraph 19 of Appellant’s Specification further explains that a
“resource sum constraint computes the sum of all resources provided by the
problems within a port, and when there is a requirement (i.e., a Required
Resource variable) on the sum that cannot be fulfilled by the existing
problems, it will drive the instantiation of new problems in one
embodiment.” Moreover, by the terms of claim 1, the resource sum
constraint must comprise a numerical range of allowable resources.
Turning to claim 1’s eligibility, we first note that the claim recites a
computer readable medium and, therefore, falls within the manufacture
category of § 101. But despite falling within this statutory category, we
must still determine whether the claim is directed to a judicial exception,
namely an abstract idea. See Alice, 573 U.S. at 217. To this end, we must
determine whether the claim (1) recites a judicial exception, and (2) fails to
integrate the exception into a practical application. See Guidance, 84 Fed.
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Reg. at 52–55. If both elements are satisfied, the claim is directed to a
judicial exception under the first step of the Alice/Mayo test. See id.
In the rejection, the Examiner determines that claim 1 is directed to an
abstract idea, namely (1) gathering data, such as variables, constraints, and a
problem definition; and (2) analyzing the data to revise a resource sum
domain by trying different variables within a CSP to find the optimal
configuration for a mathematical problem. See Ans. 2–3, 5–6. To determine
whether a claim recites an abstract idea, we (1) identify the claim’s specific
limitations that recite an abstract idea, and (2) determine whether the
identified limitations fall within certain subject matter groupings, namely,
(a) mathematical concepts4; (b) certain methods of organizing human
activity5; or (c) mental processes.6
Here, apart from the recited “computer readable medium,”
“processor,” “product configurator,” and instantiation “without user
interaction,” all of claim 1’s recited limitations fit squarely within at least
one of the above categories of the USPTO’s guidelines. When read as a

4 Mathematical concepts include mathematical relationships, mathematical
formulas or equations, and mathematical calculations. See Guidance, 84
Fed. Reg. at 52.
5 Certain methods of organizing human activity include 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). See Guidance, 84 Fed. Reg. at 52.
6 Mental processes are concepts performed in the human mind including an
observation, evaluation, judgment, or opinion. See Guidance, 84 Fed. Reg.
at 52.
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whole, the recited limitations are directed to solving a CSP by revising a
domain for the problem based on sub-problems, and generating a new sub-
problem based on that revision.
First, the limitations calling for “instructions . . . that . . . solve[] a
dynamic constraint satisfaction problem to configure a product, the problem
comprising a resource sum constraint and a port for coupling zero or more
sub-problems to the problem” where “the resource sum constraint comprises
a numerical range of allowable resources provided by the zero or more sub-
problems coupled to the port” and “each problem corresponds to a
component of the product, and each sub-problem corresponds to a sub-
component of the product,” where “the solving the dynamic constraint
satisfaction problem compris[es] . . . coupling a first sub-problem to the port
in response to an interaction by a user with the dynamic constraint
satisfaction problem . . .” can be done entirely mentally or with pen and
paper by merely cognitively associating a sub-problem, including its
variables and constraints, with a “port” that, according to the Specification’s
paragraph 17, is a structural variable, and is defined as “a container for
problems and connects sub-problems to the problem or another sub-
problem.” The coupling step, then, merely associates the sub-problem to the
port—an association that involves mere observation and logical reasoning
that can be done entirely mentally or with pen and paper. Cf. CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011) (noting
that a recited step that utilized a map of credit card numbers to determine the
validity of a credit card transaction could be performed entirely mentally by
merely using logical reasoning to identify a likely instance of fraud by
merely observing that numerous transactions using different credit cards all
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originated from the same IP address). That the recited coupling comprises
“assigning a first value to a first variable of the port that causes all of the
variables and constraints of the first sub-problem to be coupled to the port”
does not change our conclusion, for this assignment could be likewise done
entirely mentally or with pen and paper, as well as its associated result,
namely coupling all the first sub-problem’s variables and constraints to the
port. Therefore, the recited coupling step fits squarely within the mental
processes category of the USPTO’s guidelines and, therefore, recites an
abstract idea. See Guidance, 84 Fed. Reg. at 52 (listing exemplary mental
processes including observation and evaluation).
Furthermore, because the claimed coupling also recites mathematical
relationships, it also fits squarely in the mathematical concepts category of
the USPTO’s guidelines and, therefore, recites an abstract idea for that
additional reason. See Guidance, 84 Fed. Reg. at 52 (listing exemplary
mathematical processes including mathematical relationships); see also In re
Grams, 888 F.2d 835, 837 n.1 (Fed. Cir. 1989) (“Words used in a claim
operating on data to solve a problem can serve the same purpose as a
formula.”); Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354
(Fed. Cir. 2016) (noting that analyzing information by steps people go
through in their minds, or by mathematical algorithms, without more, are
essentially mental processes within the abstract idea category); Digitech
Image Tech., LLC v. Electronics for Imaging, Inc., 758 F.3d 1344, 1351
(Fed. Cir. 2014) (“Without additional limitations, a process that employs
mathematical algorithms to manipulate existing information to generate
additional information is not patent eligible.”); Benson, 409 U.S. 63 (holding
ineligible claims involving a mathematical algorithm and directed to
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converting binary-coded-decimal (BCD) numerals into pure binary numerals
for use with a computer). Accord CyberSource, 654 F.3d at 1375 (“That
purely mental processes can be unpatentable, even when performed by a
computer, was precisely the holding of the Supreme Court in [Benson].”).
We reach the same conclusion regarding the recited revised resource
sum domain determination that is based on the recited coupling. That the
revised resource sum domain comprises existing and potential sub-problems
from existing and potential participants, respectively, does not change our
conclusion for, here again, the revised resource sum domain determination
could be done entirely mentally or with pen and paper by using mere
observation and logical reasoning and, therefore, fits squarely within the
mental processes category of the USPTO’s guidelines and, thus, recites an
abstract idea. Cf. CyberSource, 654 F.3d at 1372 (noting that a recited step
that utilized a map of credit card numbers to determine the validity of a
credit card transaction could be performed entirely mentally by merely using
logical reasoning to identify a likely instance of fraud by merely observing
that numerous transactions using different credit cards all originated from
the same IP address); see also Guidance, 84 Fed. Reg. at 52 (listing
exemplary mental processes including observation and evaluation).
Furthermore, because the recited revised resource sum domain determination
also involves mathematical relationships, it also fits squarely in the
mathematical concepts category of the USPTO’s guidelines and, therefore,
recites an abstract idea for that additional reason. See Guidance, 84 Fed.
Reg. at 52 (listing exemplary mathematical processes including
mathematical relationships).
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We reach the same conclusion regarding “dynamically generating a
new sub-problem coupled to the port by assigning a second value to a
second variable of the port to instantiate a new sub-problem . . . before
another interaction by the user” where this generation is based on the
determined revised resource sum domain. Here again, a new sub-problem
could be generated dynamically entirely mentally or with pen and paper by
using mere observation and logical reasoning and, therefore, fits squarely
within the mental processes category of the USPTO’s guidelines and,
therefore, recites an abstract idea. Cf. CyberSource, 654 F.3d at 1372
(noting that a recited step that utilized a map of credit card numbers to
determine the validity of a credit card transaction could be performed
entirely mentally by merely using logical reasoning to identify a likely
instance of fraud by merely observing that numerous transactions using
different credit cards all originated from the same IP address); see also
Guidance, 84 Fed. Reg. at 52 (listing exemplary mental processes including
observation and evaluation). Furthermore, because the recited dynamic new
sub-problem generation also involves mathematical relationships, it also fits
squarely in the mathematical concepts category of the USPTO’s guidelines
and, therefore, recites an abstract idea for that additional reason. See
Guidance, 84 Fed. Reg. at 52 (listing exemplary mathematical processes
including mathematical relationships).
Therefore, apart from the recited “computer readable medium,”
“processor,” “product configurator,” and instantiation “without user
interaction,” all of claim 1’s recited limitations are within the mental
processes and mathematical concepts categories of the USPTO’s guidelines
and, therefore, recite an abstract idea. See Guidance, 84 Fed. Reg. at 52.
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Notably, the recited “computer readable medium,” “processor,”
“product configurator,” and instantiation “without user interaction” are the
only recited elements beyond the abstract idea, but these additional
elements, considered individually and in combination, do not integrate the
abstract idea into a practical application when reading claim 1 as a whole.
We also find unavailing Appellant’s contention that the claimed
invention is eligible because it is ostensibly directed to a technical solution
to a technical problem. Appeal Br. 4–8. First, the claimed invention does
not improve a computer or associated components’ functionality or
efficiency, or otherwise change the way those devices function, at least in
the sense contemplated by the Federal Circuit in Enfish LLC v. Microsoft
Corporation, 822 F.3d 1327 (Fed. Cir. 2016). The claimed self-referential
table in Enfish was a specific type of data structure designed to improve the
way a computer stores and retrieves data in memory. Enfish, 822 F.3d at
1339. To the extent Appellant contends that the claimed invention uses such
a data structure to improve a computer’s functionality or efficiency, or
otherwise change the way that device functions, there is no persuasive
evidence on this record to substantiate such a contention.
Nor is this invention analogous to that which the court held eligible in
McRO, Inc. v. Bandai Namco Games America, Inc., 837 F.3d 1299 (Fed.
Cir. 2016). There, the claimed process used a combined order of specific
rules that rendered information in a specific format that was applied to create
a sequence of synchronized, animated characters. McRO, 837 F.3d at 1315.
Notably, the recited process automatically animated characters using
particular information and techniques—an improvement over manual three-
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dimensional animation techniques that was not directed to an abstract idea.
Id. at 1316.
But unlike the claimed invention in McRO that improved how the
physical display operated to produce better quality images, the claimed
invention here is directed to, at a high level of generality, solving a CSP by
revising a domain for the problem based on sub-problems, and generating a
new sub-problem based on that revision. The claimed invention not only
recites abstract ideas, namely mental processes and mathematical concepts
as noted previously, but also does not improve a display mechanism as was
the case in McRO. See SAP Am. v. InvestPic, LLC, 898 F.3d 1161, 1167
(Fed. Cir. 2018) (distinguishing McRO).
To the extent Appellant contends that the claimed invention is rooted
in technology because it is ostensibly directed to a technical solution (see
Appeal Br. 5), we disagree. Even assuming, without deciding, that the
claimed invention enables a computer to run faster and more efficiently
when solving a CSP than doing so manually as Appellant seems to suggest
(see id.), any speed increase comes from the capabilities of the generic
computer components—not the recited process itself. See FairWarning IP,
LLC v. Iatric Systems, Inc., 839 F.3d 1089, 1095 (Fed. Cir. 2016) (citing
Bancorp Services, LLC v. Sun Life Assurance Co., 687 F.3d 1266, 1278
(Fed. Cir. 2012) (“[T]he fact that the required calculations could be
performed more efficiently via a computer does not materially alter the
patent eligibility of the claimed subject matter.”)); see also Intellectual
Ventures I LLC v. Erie Indemnity Co., 711 F. App. 1012, 1017 (Fed. Cir.
2017) (unpublished) (“Though the claims purport to accelerate the process
of finding errant files and to reduce error, we have held that speed and
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accuracy increases stemming from the ordinary capabilities of a general-
purpose computer do not materially alter the patent eligibility of the claimed
subject matter.”) (quotation marks, bracketed alteration, and citation
omitted).
Nor is this a case involving eligible subject matter as in DDR
Holdings, LLC v. Hotels.Com, L.P., 773 F.3d 1245 (Fed. Cir. 2014). There,
instead of a computer network operating in its normal, expected manner by
sending a website visitor to a third-party website apparently connected with
a clicked advertisement, the claimed invention in DDR generated and
directed the visitor to a hybrid page that presented (1) product information
from the third party, and (2) visual “‘look and feel’” elements from the host
website. DDR, 773 F.3d at 1258–59. Given that particular Internet-based
solution, the court held that the claimed invention did not merely use the
Internet to perform a business practice known from the pre-Internet world,
but rather was necessarily rooted in computer technology to overcome a
problem specifically arising in computer networks. Id. at 1257.
That is not the case here. As noted previously, Appellant’s claimed
invention, in essence, is directed to mental processes and mathematical
concepts, namely solving a CSP by revising a domain for the problem based
on sub-problems, and generating a new sub-problem based on that revision
—albeit by using computer-based components to achieve that end. The
claimed invention here is not necessarily rooted in computer technology in
the sense contemplated by DDR where the claimed invention solved a
challenge particular to the Internet. Although Appellant’s invention uses
various computer-based components, the claimed invention does not solve a
challenge particular to the components used to implement this functionality.
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In short, the claim’s focus is not on improving machines or computers
as tools, but rather on certain independently abstract ideas that use those
tools. See FairWarning, 839 F.3d at 1095 (quotation marks and citations
omitted). As with the ineligible claimed invention in BSG Tech LLC v.
BuySeasons, Inc., 899 F.3d 1281, 1284–91 (Fed. Cir. 2018), the claimed
invention does not improve a computer’s functionality or that of its
associated components. See BSG, 899 F.3d at 1288 (“While the presentation
of summary comparison usage information to users improves the quality of
the information added to the database, an improvement [in] . . . the
information stored by a database is not equivalent to an improvement in the
database’s functionality.”).
On this record, then, the claimed invention does not recite additional
elements that (1) improve a computer itself; (2) improve another technology
or technical field; (3) implement the abstract idea in conjunction with a
particular machine or manufacture that is integral to the claim; (4) transform
or reduce a particular article to a different state or thing; or (5) apply or use
the abstract idea in some other meaningful way beyond generally linking the
abstract idea’s use to a particular technological environment, such that the
claim as a whole is more than a drafting effort designed to monopolize the
exception. See Guidance, 84 Fed. Reg. at 55 (citing MPEP §§ 2106.05(a)–
(c), (e)). In short, the claim’s additional elements do not integrate the
abstract idea into a practical application when reading claim 1 as a whole.
Lastly, we find unavailing Appellant’s contention the Examiner failed
to show that the claims preempt using the alleged abstract idea in all fields.
App. Br. 11. Where, as here, the claims cover a patent-ineligible concept,
preemption concerns “are fully addressed and made moot” by an analysis
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under the Alice framework. See Ariosa Diagnostics, Inc. v. Sequenom, Inc.,
788 F.3d 1371, 1379 (Fed. Cir. 2015).
In conclusion, although the recited functions may be beneficial by
solving a CSP by revising a domain for the problem based on sub-problems,
and generating a new sub-problem based on that revision, a claim for a
useful or beneficial abstract idea is still an abstract idea. See id. at 1379–80.
We, therefore, agree with the Examiner that claim 1 is directed to an
abstract idea.

Claims 1–19: Alice/Mayo Step Two
Turning to Alice/Mayo step two, claim 1’s additional recited elements,
namely the recited “computer readable medium,” “processor,” “product
configurator,” and instantiation “without user interaction”—considered
individually and as an ordered combination—do not provide an inventive
concept that amounts to significantly more than the abstract idea when
reading claim 1 as a whole. See Alice, 573 U.S. at 221; see also Guidance,
84 Fed. Reg. at 56. As noted above, the claimed invention merely uses
generic computing components to implement the recited abstract idea.
To the extent Appellant contends that the recited limitations, including
those detailed above in connection with Alice step one, add significantly
more than the abstract idea to provide an inventive concept under
Alice/Mayo step two (see App. Br. 8–11; Reply Br. 2–3), these limitations
are not additional elements beyond the abstract idea, but rather are directed
to the abstract idea as noted previously. See BSG, 899 F.3d at 1290
(explaining that the Supreme Court in Alice “only assessed whether the
claim limitations other than the invention’s use of the ineligible concept to
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which it was directed were well-understood, routine and conventional”)
(emphasis added); see also Guidance, 84 Fed. Reg. at 56 (instructing that
additional recited elements should be evaluated in Alice/Mayo step two to
determine whether they (1) add specific limitations that are not well-
understood, routine, and conventional in the field, or (2) simply append
well-understood, routine, and conventional activities previously known to
the industry (citing MPEP § 2106.05(d)).
Rather, the the recited “computer readable medium,” “processor,”
“product configurator,” and instantiation “without user interaction” are the
only additional recited elements whose generic computing functionality is
well-understood, routine, and conventional. See Mortgage Grader, 811 F.3d
at 1324–25 (noting that components such an “interface,” “network,” and
“database” are generic computer components that do not satisfy the
inventive concept requirement); buySAFE 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.”). Accord Spec. 12–15 (describing generic computer components
used to implement the invention); Ans. 3, 8–9 (determining that the recited
memory, processors, and computers are additional elements that do not add
significantly more than the abstract idea).
We find unavailing Appellant’s contention that the Examiner
allegedly did not comply with the evidentiary requirements under the April
2018 USPTO memorandum mandating these requirements for ineligibility
rejections after Berkheimer v. HP, Inc., 881 F.3d 1360, 1369 (Fed. Cir.
2018). See Appeal Br. 9–10; Reply Br. 2–3. To be sure, the Examiner must
show—with supporting facts—that certain claim elements are well-
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understood, routine, and conventional where such a finding is made. See
Berkheimer, 881 F.3d at 1369 (noting that whether something is well-
understood, routine, and conventional to a skilled artisan at the time of the
invention is a factual determination). In light of this factual determination,
the USPTO issued a memorandum requiring that Examiners support a
finding that an additional element of a claim is well-understood, routine, and
conventional. Robert W. Bahr, Changes in Examination Procedure
Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility
Decision (Berkheimer v. HP, Inc.), USPTO, Apr. 19, 2018 (“Berkheimer
Memo.”), at 2–3 (noting that the Berkheimer decision clarifies the inquiry
whether an additional element (or combination of additional elements)
represents well-understood, routine, and conventional activity).
Appellant’s contention, then, that the additional elements for which
evidence must be provided include the functional elements beyond the mere
hardware components which, according to Appellant, are all functional
limitations (Reply Br. 3), is unavailing. In short, Appellant’s argument is
not commensurate with the more limited scope of the Examiner’s findings in
this regard that pertain only to the elements other than the abstract idea,
namely the additional computer-based elements, such as the medium and
processor, whose generic computing functionality is well-understood,
routine, and conventional. See Ans. 3, 8–9.
As noted previously, there is ample evidence of this generic
computing functionality in not only the cited case law, but also Appellant’s
own Specification. See, e.g., Fair Warning, 839 F.3d at 1096 (noting that
using generic computing components like a microprocessor or user interface
do not transform an otherwise abstract idea into eligible subject matter);
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Spec. ¶¶ 12–15 (describing generic computer components used to implement
the invention). Therefore, the additional recited elements, namely the
recited “computer readable medium,” “processor,” “product configurator,”
and instantiation “without user interaction”—when considered individually
and as an ordered combination—do not add significantly more than the
abstract idea to render the claim patent-eligible when reading claim 1 as a
whole.
Appellant’s reliance on the earlier Board decision (Appeal Br. 8–11;
Reply Br. 2–3) is also unavailing in this regard. Not only is the Board’s
earlier decision inapposite to the ineligibility rejection at issue here as the
Examiner correctly indicates (Ans. 6), it is well settled that an invention’s
novelty and non-obviousness are not dispositive to patent eligibility—a
separate statutory inquiry. See Return Mail, Inc. v. U.S. Postal Service, 868
F.3d 1350, 1370 (Fed. Cir. 2017). Although the second step in the
Alice/Mayo test is a search for an “inventive concept,” the analysis is not
directed to novelty or nonobviousness, but rather searches for elements
sufficient to ensure that the claimed invention is directed to more than a
patent ineligible concept, such as an abstract idea. See Alice, 573 U.S. at
217–18. “Groundbreaking, innovative, or even brilliant discovery does not
by itself satisfy the § 101 inquiry.” Ass’n for Molecular Pathology v.
Myriad Genetics, Inc., 569 U.S. 576, 591 (2013); see also Diamond v.
Diehr, 450 U.S. 175, 188–89 (1981) (“The ‘novelty’ of any element or steps
in a process, or even of the process itself, is of no relevance in determining
whether the subject matter of a claim falls within the § 101 categories of
possibly patentable subject matter.”); Affinity Labs of Texas, LLC v.
DIRECTV, LLC, 838 F.3d 1253, 1263 n.3 (Fed. Cir. 2016) (noting that an
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eligibility finding does not turn on the novelty of using a user-downloadable
application for the particular purpose recited in the claims). Therefore, the
earlier panel’s reversing the Examiner’s obviousness rejection is irrelevant
to the ineligibility rejection at issue here.
In conclusion, the additional recited elements—considered
individually and as an ordered combination—do not add significantly more
than the abstract idea to provide an inventive concept under Alice/Mayo step
two when reading the claims as a whole. See Alice, 573 U.S. at 221; see
also Guidance, 84 Fed. Reg. at 56.
Therefore, we are not persuaded that the Examiner erred in rejecting
claims 1–19 as ineligible under § 101.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–19 101 Ineligibility 1–19

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)(1).

AFFIRMED