CHIRAG BARHATE et al.Download PDFPatent Trials and Appeals BoardOct 29, 20212020002272 (P.T.A.B. Oct. 29, 2021) Copy Citation 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. 13/454,271 04/24/2012 CHIRAG K. BARHATE IN920120040US1_8150-0230 2060 112978 7590 10/29/2021 Cuenot, Forsythe & Kim, LLC 20283 State Road 7, Suite 300 Boca Raton, FL 33498 EXAMINER SKHOUN, HICHAM ART UNIT PAPER NUMBER 2169 NOTIFICATION DATE DELIVERY MODE 10/29/2021 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): ibmptomail@iplawpro.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte CHIRAG K. BARHATE, MAHESH S. PARADKAR, and BHOOSHAN P. KELKAR ____________________ Appeal 2020-002272 Application 13/454,271 Technology Center 2100 ____________________ Before ALLEN R. MacDONALD, CAROLYN D. THOMAS, and MATTHEW J. McNEILL, Administrative Patent Judges. MacDONALD, 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 25–30. Appeal Br. 2. Claims 1–24 1 Appellant identifies the real party in interest in the present appeal is IBM Corporation. Appeal Br. 1. Appeal 2020-002272 Application 13/454,271 2 have been cancelled. Id. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. CLAIMED SUBJECT MATTER Claim 25 is illustrative of the claimed subject matter (emphasis, formatting, and bracketed material added): 25. A computer-implemented method for identifying a replacement entity2 for a role being performed by an entity to be changed,3 comprising: [A.] receiving, by a computer hardware system, a change request that identifies a profile of the entity to be changed, the profile including a sociogram associated with the entity to be changed; [B.] defining, by the computer hardware system, a new role based upon the sociogram and a current business evaluation; [C.] generating, by the computer hardware system, a psychometric profile for the new role; and [D.] searching, within a computer database, for available entities that match the psychometric profile for the new role, wherein[:] [D.i.] the change request directing the change in the entity to be change, and [D.ii.] the new role defines functions to be performed by the replacement entity. 2 “[T]he entity is a human resource.” Spec. [03]. 3 Changing an entity encompasses “[r]eplacing the individual who is performing a particular role in the organization with a new individual.” Spec. [26]. “[T]here may be a number of individuals who can be found as a replacement entity (individual).” Spec. [27]. Appeal 2020-002272 Application 13/454,271 3 REFERENCES4 The Examiner relies on the following references: Name Reference Date Burritt US 2010/0262550 A1 Oct. 14, 2010 McCagg US 2012/0030126 A1 Feb. 2, 2012 Thell US 2012/0221378 A1 Aug 30, 2012 REJECTIONS A. The Examiner rejects claims 25–30 under 35 U.S.C. § 101 “because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more” (Final Act. 2), i.e., the claimed invention is directed to patent-ineligible subject matter. Final Act. 2–10. We select claim 25 as representative. See 37 C.F.R. § 41.37(c)(1)(iv). Appellant does not separately argue claims 26–30. Except for our ultimate decision, we do not discuss the merits of the § 101 rejection of claims 26–30 further herein. B. The Examiner rejects claims 25, 26, and 28–30 under 35 U.S.C. § 103(a) as being as being unpatentable over the combination of Burritt and McCagg. Final Act. 7–14. 4 All citations herein to patent and pre-grant publication references are by reference to the first named inventor only. Appeal 2020-002272 Application 13/454,271 4 The Examiner rejects claim 27 under 35 U.S.C. § 103(a) as being as being unpatentable over the combination of Burritt, McCagg, and Thell. Final Act. 14–15. The contentions discussed herein as to claim 25 are dispositive as to these rejections. Therefore, we select claim 25 as the representative claim for these rejections. Except for our ultimate decision, we do not address the merits of the § 103(a) rejection of claims 26–30 further herein. OPINION We have reviewed the Examiner’s rejections in light of Appellant’s arguments that the Examiner has erred. We concur with the Examiner’s ultimate conclusion that claims 25–30 are not patentable. We highlight the following points. A. Section 101 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 U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014). In determining whether a claim falls within an excluded category, we are guided by the Court’s two-part framework, described in Mayo and Alice. Alice, 573 U.S. 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 Appeal 2020-002272 Application 13/454,271 5 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 waterproof 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 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 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 Appeal 2020-002272 Application 13/454,271 6 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 part 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. B. USPTO § 101 Guidance In January 2019, the U.S. Patent and Trademark Office (USPTO) published revised guidance on the application of § 101.5 The Manual of Patent Examining Procedure (“MPEP”) now incorporates this revised 5 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019 Revised Guidance”). In response to received public comments, the Office issued further guidance on October 17, 2019, clarifying the 2019 Revised Guidance. USPTO, October 2019 Update: Subject Matter Eligibility (the “October 2019 Update”). “All USPTO personnel are, as a matter of internal agency management, expected to follow the guidance.” 84 Fed. Reg. at 51; see also October 2019 Update at 1. Appeal 2020-002272 Application 13/454,271 7 guidance and subsequent updates at § 2106 (9th ed. Rev. 10.2019, rev. June 2020).6 Under MPEP § 2106, 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) (“Step 2A, Prong One”); and (2) additional elements that integrate the judicial exception into a practical application (“Step 2A, Prong Two”).7 MPEP § 2106.04(a) and § 2106.04(d). Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look, under Step 2B, to whether the claim: (3) adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional activity” in the field; 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. MPEP § 2106.05(d). 6 All references to the MPEP are to the Ninth Edition, Revision 10.2019 (Last Revised June 2020), unless otherwise indicated. 7 “Examiners evaluate integration into a practical application by: (1) identifying whether there are any additional elements recited in the claim beyond the judicial exception(s); and (2) evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application.” MPEP § 2106.04(d)II. Appeal 2020-002272 Application 13/454,271 8 C. Examiner’s § 101 Rejection - Alice/Mayo - Parts 1 and 2 C.1. 2019 Revised Guidance Step 2A – Prong One Applying the Alice/Mayo framework, the Examiner determines that claim 25 recites: [P]erformance of the limitation in the mind but for the recitation of generic computer components. That is, other than reciting “by a computer hardware system” nothing in the claim element precludes the step from practically being performed in the mind, then it falls within the “Mental Processes” grouping of abstract ideas such “concepts performed in the human mind (including an observation, evaluation, judgment, opinion)” and “Certain methods of organizing human activity” grouping of abstract ideas such [as] “managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions)” grouping of abstract ideas. Accordingly, the claim recites an abstract idea. Ans. 4 (emphasis omitted). In particular, the Examiner determines that: Claim 25 recites, in part [:] [B.] defining a new role based upon the sociogram and a current business evaluation; [C.] generating a psychometric profile for the new role; and [D.] searching for available entities that match the psychometric profile for the new role, wherein[:] [D.i.] the change request directing the change in the entity to be change, and [D.ii.] the new role defines functions to be performed by the replacement entity. Ans. 4 (emphasis modified; formatting and brackets added). A mental process (thinking) that “can be performed in the human mind, or by a human using a pen and paper.” CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372[] (Fed. Cir. 2011). As the Federal Circuit explained, “methods which can be performed mentally, or which are the Appeal 2020-002272 Application 13/454,271 9 equivalent of human mental work, are unpatentable abstract ideas--the ‘basic tools of scientific and technological work’ that are open to all.” 654 F.3d at 1371[] (citing Gottschalk v. Benson, 409 U.S. 63[] (1972)). “Courts have examined claims that required the use of a computer and still found that the underlying, patent-ineligible invention could be performed via pen and paper or in a person’s mind.” Versata Dev. Group v. SAP Am., Inc., 793 F.3d 1306, 1335[] (Fed. Cir. 2015). Here, the claims are directed to analyzing job requirements based on information about the person currently occupying the role and attempting to find a replacement based on that analysis. Nothing in the claims differentiates the claimed process from exactly the kind of mental work that a hiring manager might do when looking to replace an employee: in response to an employee who left the company, creating a list of qualifications, and searching for candidates to replace the employee, that meet those requirements and business need. Final Act. 3. C.2. 2019 Revised Guidance Step 2A – Prong Two Further applying the Alice/Mayo framework, the Examiner determines claim 25 is directed to an abstract idea. This judicial exception is not integrated into a practical application. In particular, the claim [25] only recites additional elements - using “a computer hardware system” to perform the steps of claim 25 that are recited at a high level of generality and are recited as performing generic computer functions routinely used in computer applications. Ans. 5; Final Act 3. The claim include the additional element “receiving a change request that identifies a profile of the entity to be changed, the profile including a sociogram associated with the entity to be changed” that does not integrate the judicial exception into a practical application, This element recites, at a high level of generality, receiving information and adding insignificant extra-solution activity to the judicial exception Appeal 2020-002272 Application 13/454,271 10 (pre-solution activity of receiving information) - see MPEP 2106.05(g)). Ans. 5. C.3. 2019 Revised Guidance Step 2B Applying the Alice/Mayo framework, the Examiner determines: Generic computer components recited as performing generic computer functions that are well-understood, routine and conventional activities amount to no more than implementing the abstract idea with a computerized system. Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). Ans. 5; Final Act 3 (emphasis added). The claim does not include additional element that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of using “a computer hardware system” to perform the steps of claim 25 amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. The claims is not patent eligible. Final Act. 4; See also Ans. 5 (emphasis added). D. Appellant’s § 101 Arguments & Panel’s Analysis D.1. 2019 Revised Guidance Step 2A, Prong 1 D.1.a. As to Step 2A, Prong 1, Appellant contends: Appellants respectfully disagree with the Examiner’s assertion that the claimed invention can be performed mentally. Performing a search of a computer database cannot be performed mentally. Appeal 2020-002272 Application 13/454,271 11 Appeal Br. 8 (emphasis added). Appellant’s argument is not persuasive. As to mental processes, there is no requirement that mental steps be performed entirely in a human’s mind or for a person to perform these operations entirely in their head. Rather, “[c]ourts have examined claims that required the use of a computer and still found that the underlying, patent-ineligible invention could be performed via pen and paper or in a person’s mind.” Versata Dev. Grp. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed Cir. 2015). Also, the incidental use of a “computer” or “computer readable medium” does not make a claim otherwise directed to a process that “can be performed in the human mind, or by a human using a pen and paper” patent eligible. CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375, 1372 (Fed. Cir. 2011). D.1.b. Also, as to Step 2A, Prong 1, Appellant contends: [T]he Examiner makes no attempt to identify the limitations that involve the alleged abstract idea. Appeal Br. 2 (emphasis added); see also Reply Br. 2. Appellant’s argument is not persuasive for the reasons discussed infra in section D.1.d. D.1.c. Further, as to Step 2A, Prong 1, Appellant contends: Since the Examiner did not identify the alleged abstract idea in the Examiner’s new analysis in the Eighth Office Action [February 20, 2019], Appellants are left to address the Examiner’s old analysis in the Seventh Office Action [October 19, 2018]. Appeal Br. 8 (emphasis added); see also Reply Br. 4. Appeal 2020-002272 Application 13/454,271 12 [T]he Examiner’s assertion that the claimed invention is directed to “human resource analytics” [Seventh Office Action 3] is an overgeneralization of the claimed invention. Appeal Br. 9 (emphasis added). Appellant’s argument is not persuasive. First, contrary to Appellant’s argument, we conclude the Examiner identifies the limitations that involve the abstract idea as discussed infra in section D.1.d. Second, the 35 U.S.C. § 101 rejection on appeal is not the rejection as set forth in the Seventh Office Action. Rather, the rejection on appeal is the rejection as set forth in the Eighth Office Action (as modified in the Examiner’s Answer). Third, we do not find the argued phrase “human resource analytics” or a similar phrase in the rejection as set forth in Eighth Office Action (as modified in the Examiner’s Answer). Therefore, the “human resource analytics” contention is not relevant to the appeal before us. D.1.d. The Examiner determines that claim 25 recites “analyzing job requirements based on information about the person currently occupying the role and attempting to find a replacement based on that analysis” (Final Act. 3 (emphasis omitted)) including the following limitations: [B.] defining a new role based upon the sociogram and a current business evaluation; [C.] generating a psychometric profile for the new role; and [D.] searching for available entities that match the psychometric profile for the new role, wherein[:] [D.i.] the change request directing the change in the entity to be change, and Appeal 2020-002272 Application 13/454,271 13 [D.ii.] the new role defines functions to be performed by the replacement entity. Ans. 4; Final Act. 2 (emphasis modified; formatting, and bracketed material added). Similarly, our review determines that claim 25 recites “analyzing job requirements based on information about the person currently occupying the role and attempting to find a replacement based on that analysis” including the following limitations: [B.] defining a new role based upon the sociogram and a current business evaluation; [C.] generating a psychometric profile for the new role; and [D.] searching for available entities that match the psychometric profile for the new role, wherein[:] [D.i.] the change request directing the change in the entity to be change, and [D.ii.] the new role defines functions to be performed by the replacement entity. Claim 25 (emphasis, formatting, and bracketed material added). Contrary to Appellant’s argument, we conclude the Examiner correctly determines that claim 25 recites a method directed to analyzing job requirements based on information about the person currently occupying the role and attempting to find a replacement based on that analysis which is both a mental process and a process for managing personal behavior; and managing personal behavior or relationships or interactions between people is one of certain methods of organizing human activity identified in the 2019 Revised Guidance (as is mental processes), and thus an abstract idea. MPEP § 2106.04(a). Appeal 2020-002272 Application 13/454,271 14 D.2. 2019 Revised Guidance Step 2A, Prong 2 Having determined that claim 25 recites an abstract idea, we now turn to whether claim 25 is directed to that abstract idea, or instead integrates the judicial exception into a practical application. D.2.a. As to Step 2A, Prong 1, Appellant contends: [T]he absence of broad preemption of the abstract idea is a determinative factor in finding that claims are not directed to an abstract idea. Appeal Br. 12 (emphasis added). Appellant’s “preemption” argument is not persuasive because although “preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). We are instructed that “[w]here a patent’s claims are deemed only to disclose patent ineligible subject matter under the [Alice/Mayo] framework . . . , preemption concerns are fully addressed and made moot.” Id. D.2.b. Also, as to Step 2A, Prong 2, Appellant contends: Like McRo, the claimed invention involves a practice that was once performed manually. . . . Additionally, the claimed invention provides a set of unique rules for generating a psychometric profile for a new role (i.e., a computer data structure) that can be used to search for entities that match the psychometric profile. Accordingly, the claimed invention is not directed to an abstract idea. Appeal Br. 13 (emphasis added). Appeal 2020-002272 Application 13/454,271 15 [G]enerating a psychometric profile (i.e., a specialized computer data structure) for the new role is neither a mental process nor a method of organizing human activity. Additionally, defining the new role (i.e., another computer data structure) is also not a mental process or a method of organizing human activity. Reply Br. 3 (emphasis added). Appellant’s argument is not persuasive. First, claiming a specific data structure (i.e., a specific configuration of the database) may improve computer functionality. Enfish, 822 F.3d at 1339 (“[T]he self-referential table recited in the claims on appeal is a specific type of data structure designed to improve the way a computer stores and retrieves data in memory”). However, contrary to Appellant’s argument, claim 25 does not explicitly require a “specific data structure,” nor do we find where Appellant explains why claim 25 implicitly requires a specific data structure. Further, we do not find where the argued “psychometric profile” is disclosed as requiring any specific data structure (e.g. Spec. [03]–[04]). Second, McRO applies its set of rules to provide a practical application. The search for a practical application has also been referred to as the search for a technological solution to a technological problem. See Amdocs (Isr.), Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1300 (Fed. Cir. 2016) (“[T]his claim entails an unconventional technological solution . . . to a technological problem . . . .”). As acknowledged by Appellant, Appellant’s claim 25 is solving the problem of “identifying a replacement entity [human] for a role being performed by an entity [human] to be changed” (Appeal Br. 2) which is an organizing human activity problem and not a technological problem. We do not agree with Appellant that “identifying a replacement entity” is either a “technological field” or a “technological problem” or a “technological Appeal 2020-002272 Application 13/454,271 16 solution.” Rather, we determine that this is directed to the field of organizing human activity and its problems and solutions. D.2.c. Further, as to Step 2A, Prong 2, Appellant contends: [T]he Examiner’s dismissal of the additional limitations as being “at a high level of generality” and “adding insignificant extra- solution activity” [Ans. 5] are conclusory assertions unaccompanied by analysis. Reply Br. 3 (emphasis added). Appellant’s argument is not persuasive. Contrary to Appellant’s contention, the Examiner’s analysis points out that the claimed function of “receiving” is “performing [a] generic computer function[] routinely used in computer applications.” Ans. 5. That the additional limitation of the “receiving” step is at a high-level of generality is self-evident as, in addition to the generic “receiving” function, the step only recites the particular data to be received (“a change request that identifies a profile of the entity to be changed, the profile including a sociogram associated with the entity to be changed”). Claim 25 places no further computer operation limitation on how the function of “receiving” is to be performed. D.2.d. In view of Appellant’s Specification, and consistent with the Examiner’s determinations, we conclude that claim 25 covers a disclosed embodiment that does not integrate the judicial exception into a practical application. We determine claim 25 does not recite: (i) an improvement to the functioning of a computer; (ii) an improvement to another technology or technical field; Appeal 2020-002272 Application 13/454,271 17 (iii) an application of the abstract idea with, or by use of, a particular machine; (iv) a transformation or reduction of a particular article to a different state or thing; or (v) other meaningful limitations beyond generally linking the use of the abstract idea to a particular technological environment. See MPEP §§ 2106.05(a)–(c), (e)–(h). We agree with the Examiner that claim 25 is directed to a judicial exception, and does not integrate the judicial exception into a practical application. D.3. 2019 Revised Guidance Step 2B The Examiner determines that the additional elements recited in claim 25 perform functions that are “well-understood, routine and conventional.” Generic computer components recited as performing generic computer functions that are well-understood, routine and conventional activities amount to no more than implementing the abstract idea with a computerized system. Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). Ans. 5; Final Act 3 (emphasis added). Appellant contends: As stated by the Federal Circuit within Berkheimer v. HP Inc., 881 F.3d 1360, 1389 (Fed. Cir. 2018), “[w]hether something is well-understood, routine, and conventional to a skilled artisan at the time of the patent is a factual determination.” However, Appellants’ position is that the Examiner has not presented sufficient factual evidence to support a finding that the claimed combination of elements was well-understood, routine, and conventional. Instead, the Examiner’s analysis in the first full paragraph on page 4 of the Eighth Office Action is conclusory. Appeal 2020-002272 Application 13/454,271 18 Appeal Br. 10–11 (emphasis added). Appellant’s argument is not persuasive. Appellant cites to Berkheimer, but Appellant overlooks that Berkheimer supports the Examiner’s determination as to finding that the claimed combination of elements was well-understood, routine, and conventional. The court in Berkheimer contrasted claims 1–3 and 9 (affirmed summary judgement of ineligible) and claims 4–7 (vacated summary judgement) because as to claims 1–3 and 9 “[t]he limitations amount to no more than performing [the claimed functions] with conventional computer components.” Berkheimer, 881 F.3d 1370. Appellant at paragraphs 13–14 of the Specification describes the computer hardware system of the invention “as well-known computing systems, environments, and/or configurations that may be suitable for use.” The record before us supports the Examiner’s determination. We determine that the Examiner correctly determines that in addition to the abstract idea, claim 25 recites only well-understood, routine, conventional elements/combination of elements previously known in the industry. In view of Appellant’s Specification, and consistent with the Examiner’s determinations, we determine that beyond the abstract idea, the claims do not recite: (vi) a specific limitation other than what is well-understood, routine, conventional activity in the field or unconventional steps that confine the claim to a particular useful application. See MPEP § 2106.05(d). Appeal 2020-002272 Application 13/454,271 19 E. § 103 – Claim 25 We have reviewed the Examiner’s rejections in light of Appellant’s arguments that the Examiner has erred. Appellant’s contentions we discussed are dispositive as to the rejections on appeal. Therefore, Appellant’s other contentions are not discussed in detail herein. E.1. As reproduced supra, part B. of claim 25 requires (emphasis added): [B.] defining, by the computer hardware system, a new role based upon the sociogram and a current business evaluation. In rejecting claim 25, the Examiner finds that the part B. is taught by Burritt at paragraph 22. E.2. Appellant contends that the Examiner erred in rejecting claim 25 under 35 U.S.C. § 103 because: Notably, [Burritt at paragraph 22] says nothing about the defining of a new role. Moreover, this passage says nothing about a current business evaluation. Finding a person with “similar talent, experience, credibility” is neither a “new role” nor a business evaluation. The business is not being evaluated, and the current business is not being evaluated. The Examiner’s assertion that “finding a replacement for a person on a team that left/changed role within the company reads on ‘defining a new role’” is a conclusory assertion unsupported by analysis. The fact that a replacement person is found does not mean that a new role has been defined. Appeal Br. 16. Appeal 2020-002272 Application 13/454,271 20 E.4. As articulated by the Federal Circuit, the Examiner’s burden of proving non-patentability is by a preponderance of the evidence. See In re Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985) (“[P]reponderance of the evidence is the standard that must be met by the PTO in making rejections”). “A rejection based on section 103 clearly must rest on a factual basis[.]” In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). “The Patent Office has the initial duty of supplying the factual basis for its rejection. It may not . . . resort to speculation, unfounded assumptions or hindsight reconstruction to supply deficiencies in its factual basis.” Id. We conclude the Examiner’s analysis fails to meet this standard because the rejection does not adequately explain the Examiner’s findings of fact. E.5. We agree with Appellant that Burritt at paragraph 22 “says nothing about the defining of a new role.” Appeal Br. 16. We conclude, consistent with Appellant’s argument, that there is currently insufficient articulated reasoning to support the Examiner’s finding that Burritt teaches or suggests part B. as required by claim 25. Therefore, we conclude that there is insufficient articulated reasoning to support the Examiner’s final conclusion that claim 25 would have been obvious to one of ordinary skill in the art at the time of Appellant’s invention. Appeal 2020-002272 Application 13/454,271 21 CONCLUSION The Examiner has not erred in rejecting claims 25–30 under 35 U.S.C. § 101, as being directed to patent-ineligible subject matter. Appellant has shown that the Examiner erred in rejecting claims 25– 30 as being unpatentable under 35 U.S.C. § 103(a). The Examiner’s rejection of claims 25–30 under 35 U.S.C. § 101, as being directed to patent-ineligible subject matter, is affirmed. The Examiner’s rejections of claims 25–30 as being unpatentable under 35 U.S.C. § 103(a) are reversed. Because at least one rejection encompassing all claims on appeal is affirmed, the decision of the Examiner is affirmed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Basis/Reference(s) Affirmed Reversed 25–30 101 Eligibility 25–30 25, 26, 28–30 103(a) Burritt, McCagg 25, 26, 28–30 27 103(a) Burritt, McCagg, Thell 27 Overall Outcome 25–30 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 Copy with citationCopy as parenthetical citation