Christopher Beard et al.

Patent Trials and Appeals Board

Jan 10, 2020

13155166 - (D) (P.T.A.B. Jan. 10, 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.
13/155,166 06/07/2011 Christopher Beard J-5299B 2460
28165 7590 01/10/2020
S.C. JOHNSON & SON, INC.
1525 HOWE STREET
RACINE, WI 53403-2236
EXAMINER
HARPER, ELIYAH STONE
ART UNIT PAPER NUMBER
2166
NOTIFICATION DATE DELIVERY MODE
01/10/2020 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):
mjzolnow@scj.com
selechne@scj.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER BEARD, KYLEE E. EBLIN,
FRED J. JOACHIM, H. FISK JOHNSON III, FRANK A. JONES,
JENNIFER C. PERKINS, ROBERT J. SEIFERT, KELLY M. SEMRAU,
GEORGE C. DAHER, AND USHA VEDULA
Appeal 2019-000544
Application 13/155,166
Technology Center 2100
BEFORE MICHAEL J. STRAUSS, IRVIN E. BRANCH, and
CHARLES J. BOUDREAU, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
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DECISION ON APPEAL
STATEMENT OF THE CASE1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–4 and 7–20. Claims 5 and 6 are
canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
Appellant describes the present invention as a method of developing
authorized chemical palettes for formulating products with reduced adverse
environmental and/or health concerns, and advising the public regarding the
ingredients of products formulated using these palettes. Abstract.
Independent claim 1 is representative of the appealed claims. It is
reproduced below with emphasis added identifying language that recites an
abstract idea:
1. A method of producing a list of chemicals pre-approved for
use in selected products, and a list of the selected products, and
then disclosing that list of pre-approved chemicals publicly
albeit in a manner which does not directly disclose which pre-
approved chemicals are in which of the selected products, the
method comprising:
(a) identifying all chemical components of at least ten
different multi-chemical materials, wherein the identifying

1 We refer to the Specification, filed June 7, 2011 (“Spec.”); Final Office
Action, mailed September 5, 2017 (“Final Act.”); Appeal Brief, filed June 5,
2018 (“Appeal Br.”); Examiner’s Answer, mailed September 20, 2018
(“Ans.”); and Reply Brief, filed October 23, 2018 (“Reply Br.”).
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 S. C. Johnson & Son,
Inc. Appeal Br. 2.
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involves obtaining from one or more third parties, under
confidentiality agreement restrictions, information identifying
all chemical components of the ten multi-chemical materials;
(b) based at least in part on a review of environmental and
health concerns, classifying, using a computer having a
processor and at least one database, identified chemical
components into at least:
(i) a group of pre-approved components stored in
the at least one database; and
(ii) a group of excluded components stored in the at
least one database;
(c) creating a list of the components which are pre-
approved for inclusion in the selected products and a list of the
selected products, wherein both lists are stored in the at least one
database and are publicly accessible by telecommunication; and
(d) disclosing the list of pre-approved components
included in the selected products without confidentiality
restriction in a manner that is publicly accessible by
telecommunication, whereby the list of pre-approved
components includes components not present in one or more of
the multi-chemical materials and one or more of the selected
products, and whereby the list of preapproved components does
not specify the multi-chemical materials or the selected products
of which they are a component, such that the list of pre-approved
components does not directly identify which chemical
components covered by the confidentiality restriction are in
which multi-chemical material or in which of the selected
products.
REJECTION
Claims 1–4 and 7–20 stand rejected under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter. Final Act. 2–11.3

3 Rather than repeat the Examiner’s positions and Appellant’s arguments in
their entirety, we refer to the above-mentioned Appeal Brief, as well as the
Final Action, Examiner’s Answer and Reply Brief.
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ANALYSIS
Except as noted, we adopt as our own the findings, determinations,
and reasons set forth by the Examiner in the (1) action from which this
appeal is taken (Final Act. 2–14) and (2) Examiner’s Answer in response to
Appellant’s Appeal Brief (Ans. 3–8) and concur with the findings,
determinations and conclusions reached by the Examiner. We highlight the
following for emphasis.
STANDARD OF REVIEW
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).

PRINCIPLES OF LAW
A. SECTION 101
Inventions for “new and useful process, machine, manufacture, or
composition of matter” generally constitute patent-eligible subject 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-step framework, described in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66
(2012), and Alice. Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S. at 75–
77). 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
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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 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1854))); 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. at 191 (citing
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Benson and Flook) (citation omitted); 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 (internal 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 SECTION 101 GUIDANCE
In January 2019, the United States Patent and Trademark Office
(“USPTO”) published revised guidance on the application of 35 U.S.C.
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) (“2019 Guidance”), updated by USPTO, October
2019 Update: Subject Matter Eligibility (available at https://www.uspto.gov/
sites/default/files/documents/peg_oct_2019_update.pdf) (jointly referred to
as “the 2019 Guidance”); see also October 2019 Patent Eligibility Guidance
Update, 84 Fed. Reg. 55942 (Oct. 18, 2019) (notifying the public of the
availability of the October update).
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Under the 2019 Guidance, we first look to whether the claim recites
the following:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activities such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h)).
2019 Guidance, 84 Fed. Reg. at 52–55.
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, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
2019 Guidance, 84 Fed. Reg. at 56.

EXAMINER’S FINDINGS and CONTENTIONS OF ERROR
The Examiner determines
The[] limitations [of claim 1] are abstract ideas of collecting
information analyzing information and presenting certain results
of the analysis (See Electric Power Group LLC, V. Alstom[4])[.]

4 Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir.
2016) (“[M]erely selecting information, by content or source, for collection,
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The instant application collects identifying information for
chemical components of at least ten different multi-chemical
materials, analyzes the information collected to create a list of
components which are pre-approved for inclusion and displays
the results of the analysis in the form a list of pre-approved
components. As the court in Electric Power Group held
collecting information, analyzing the information and displaying
certain results of the analysis do not amount to significantly more
than the judicial exception. All of these computer functions are
well understood routine conventional activities previously
known to the industry. Each step does no more than require a
generic computer to perform generic computer functions.
Final Act. 9–10.
Appellant contends the rejection is improper. According to Appellant,
the claims are distinguishable over those found ineligible in Electric Power
by virtue of reciting steps in addition to information collection and analysis.
Appeal Br. 6. In contrast to Electric Power Appellant argues the claims
recite a novel technique for displaying information, analogizing the claims to
those found patent-eligible in Core Wireless Licensing S.A.R.L. v. LG
Electronics, Inc., 880 F.3d 1356, 1362 (Fed. Cir. 2018). Id. Appellant
argues “claim 1 expressly recites that [the chemical] components are
disclosed in such a way so as to ‘not directly identify which chemical
components covered by the confidentiality restriction are in which multi-
chemical material or in which of the selected products.’” Id. In connection
with claims 7–12 Appellant additionally argues the step of formulating a
product effectively transforms an article into a different state or thing
thereby satisfying the requirement of § 101. Id. at 7. In making this

analysis, and display does nothing significant to differentiate a process from
ordinary mental processes, whose implicit exclusion from § 101 undergirds
the information-based category of abstract ideas.”).
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argument, Appellant asserts the step of formulating “relates to the actual
production of the product.” Id. at 8 (citing Spec. ¶ 3). In connection with
claims 13–20 Appellant additionally argues the recited three databases
including second and third databases that “store[] data in a particular way”
constitute specific limitations beyond the judicial exception. Id.
Appellant further contends the Examiner failed to perform the proper
analysis under Step Two of the Alice and Mayo framework, arguing that the
Examiner failed to consider each of the claims as an ordered combination
(Appeal Br. 9); the claims recite significantly more than an abstract idea
because the claims recite a novel technique (id. at 9–10); and the claims are
distinguishable over those found ineligible in Elec. Power such that the
Examiner improperly relied on that case as evidence that the claimed
computer functions are well-understood, routine, and conventional (id. at
11).
The Examiner responds, explaining why each of the steps of claim 1
recites a mental process, finding the “limitations are directed towards the
abstract idea of collecting information, analyzing information and displaying
certain results of the collection and analysis and can be performed without a
computer.” Ans. 3–5. In connection with claim 7 the Examiner finds the
Specification does not define how a product is produced or formulated. Id.
at 5–6. Finding “the definition of formulate is ‘to express in precise form;
state definitely or systematically,[’]” the Examiner interprets the formulating
step to be taught or suggested by the production of a list or text such that it
merely requires the display of the results of the collection and analysis in the
form of a list or a textual display but does not require production of a
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physical chemical product as argued. Id. In response to Appellant’s
argument in connection with claim 13, the Examiner finds
Including a first, second and third database changes where the
data is collected from but doesn’t change that information is
collected from these databases[,] analyzed[,] and then the result
of collection and analysis is produced in the form of a list that
formulates/list[s] precisely the chemical components that are the
results of the analysis.
Id. at 6–7.
Responding to Appellant’s contention the claims represent
significantly more than the identified abstract idea, the Examiner finds “the
claim limitations [addressed] in step 2B amount to nothing more than an
instruction to apply the abstract idea using a generic computer and thus do
not render the identified abstract idea eligible.” Id. at 7. Addressing the
alleged insufficiency of evidence under Step 2B, the Examiner finds “the
only limitations considered ‘conventional’ are a computer comprising a
processor, the computer having stored therein databases, a first database, a
second database, a third database” and that these limitations “are merely
directed towards a generic computer to implement the abstract idea of
collecting information, analyzing information and displaying certain results
of collection and analysis.” Id. at 8.
Appellant replies, contending the claim elements relating to the step
of disclosing the list of pre-approved components requires implementation
by a computer, arguing
Even if a person were to mentally carry out the identifying,
classifying, and creating steps, it would be impossible for that
person to not know “which chemical components covered by the
confidentiality restriction are in which multi-chemical material
or in which of the selected products,” since that person would
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have the knowledge necessary to make those connections by
virtue of having undertaken the identifying step.
Reply Br. 2.
Addressing the Examiner’s interpretation of the formulating step of
claim 7, Appellant argues an interpretation consistent with the Specification
dictates “the step of ‘formulating’ requires actually making a product, as
Appellant previously argued.” Id. at 4. Appellant further argues such an
interpretation is required by claim language reciting the step of formulating
uses a supply of multiple components, alleging “[i]t is clear that this
language refers to actually using the physical components to make, i.e.,
formulate, the product and not merely to ‘devise’ or ‘develop’ the product in
‘a list or text’ as the Examiner alleges.” Id. at 5.
Appellant reasserts the court’s decision in Electric Power, indicating
“that a novel ‘technique for displaying information’ could satisfy the
requirement that a claim does not recite an abstract idea or, conversely, that
it recites significantly more than an abstract idea” compels a determination
that Appellant’s claims, which disclose pre-approved product components,
are patent-eligible. Id. (citing Elec. Power, 830 F.3d at 1354–55).
Finally, Appellant argues the Examiner misapplied the Berkheimer5
standard by failing to “to evaluate what the computer systems do, and not
just the structural components of the recited computer” in providing
evidence the claim elements are well-understood, routine, and conventional
activities. Id. at 5–6.

5 Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018))
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ANALYSIS
Step 2A, Prong 1
Under step 2A, prong 1, of the 2019 Guidance, we first look to
whether the claim recites any judicial exceptions, including certain
groupings of abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activities such as a fundamental economic principles or
practices, or mental processes). 2019 Guidance, 84 Fed. Reg. at 52–54.
Appellant’s identifying step (a) recites “identifying all chemical
components of at least ten different multi-chemical materials, wherein the
identifying involves obtaining from one or more third parties, under
confidentiality agreement restrictions, information identifying all chemical
components of the ten multi-chemical materials.” Identifying chemical
components, i.e., information, reasonably can be characterized as reciting
mental processes that entail concepts that can be performed in the human
mind, i.e., an observation or evaluation. The 2019 Guidance expressly
recognizes mental processes, including observations, evaluations,
judgments, and opinions that can be performed in the human mind as patent-
ineligible abstract ideas. See also In re Bilski, 545 F.3d 943, 963 (Fed. Cir.
2008) (en banc), aff'd on other grounds, 561 U.S. 593 (2010) (characterizing
data gathering steps as insignificant extra-solution activity); CyberSource,
654 F.3d at 1371-72 (noting that even if some physical steps are required to
obtain information from a database (e.g., entering a query via a keyboard,
clicking a mouse), such data-gathering steps cannot alone confer
patentability). Accord 2019 Guidance, 84 Fed. Reg. at 52, 55 (citing MPEP
§ 2106.05(g)). Accordingly, identifying step (a) can be characterized as
reciting a judicial exception to patent-eligible subject matter.
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Classifying step (b) recites “based at least in part on a review of
environmental and health concerns, classifying . . . identified chemical
components into at least (i) a group of pre-approved components . . .; and
(ii) a group of excluded components.” For the same reasons discussed above
in connection with identifying step (a), we determine classifying step (b)
also reasonably can be itself characterized as a mental process. See also
Cyberfone Sys., LLC v. CNN Interactive Grp., Inc., 558 Fed. App’x. 988,
992 (Fed. Cir. 2014) (“using categories to organize, store, and transmit
information is well-established,” and “the well-known concept of categorical
data storage, i.e., the idea of collecting information in classified form, then
separating and transmitting that information according to its classification, is
an abstract idea that is not patent-eligible”).
List creating step (c) recites “creating a list of the components which
are pre-approved for inclusion in the selected products and a list of the
selected products, wherein both lists . . . are publicly accessible.” Thus, list
creating step (c) requires, at most, data acquisition (e.g., an observation),
compilation, and making the compilation accessible which reasonably can
be characterized as reciting mental processes that entail concepts that can be
performed (i) in the human mind, i.e., an observation or evaluation and/or
(ii) with pen and paper, i.e., providing a list. Accordingly, list creating step
(c) can be characterized as reciting a judicial exception to patent-eligible
subject matter.
Disclosing step (d) recites “disclosing the list of pre-approved
components included in the selected products without confidentiality
restriction in a manner that is publicly accessible . . . , whereby the list of
pre-approved components includes components not present in one or more
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of the multi-chemical materials and one or more of the selected products,
and whereby the list of preapproved components does not specify the multi-
chemical materials or the selected products of which they are a component,
such that the list of pre-approved components does not directly identify
which chemical components covered by the confidentiality restriction are in
which multi-chemical material or in which of the selected products.” Thus,
disclosing step (d) requires the evaluation and organization of data which
reasonably can be characterized as reciting mental processes that entail
concepts that can be performed in the human mind, i.e., an observation or
evaluation performed mentally and/or with pen and paper for disclosing a
list. Accordingly, disclosing step (d) can be characterized as reciting a
judicial exception to patent-eligible subject matter.
Our determination that each of the steps can be performed in the
human mind is further consistent with Appellant’s Specification, which at
least implies each of the steps can be performed by a human rather than
requiring a computer. In particular, in connection with the steps of claim 1,
Appellant describes “[o]ne identifies all chemical components of at least ten
different multi-chemical materials . . .” (Spec. ¶ 10 (emphasis added));
“[b]ased at least in part on a review of environmental and health concerns
one classifies the identified chemical components into . . . groups” (Spec.
¶ 11 (emphasis added)); and “[t]hen, one creates a list of the components
which are pre-approved for inclusion in the selected products, and discloses
the list of pre-approved components included in the products without
confidentiality restriction in a manner that does not identify which chemicals
covered by the confidentiality restriction are in which multi-chemical
material” (Spec. ¶ 16 (emphasis added)). In context, the reference to “one”
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reasonably refers to an individual person such that one skilled in the art
would have understood each of the recited steps could be performed
manually without the use of a computer or other specialized technological
assistance. This is further supported by Appellant’s disclosure of a
subsequently described alternative embodiment such that “[i]n yet another
aspect, the invention provides an automated computer system for storing and
updating a list of pre-approved chemicals.” Spec. ¶ 22. By expressly
including a computer system for performing the method as an alternative,
automated implementation, it is reasonable to infer that an alternative non-
automated (i.e., manual) implementation is also practical.
For these reasons, the above-identified limitations encompass steps
that can be reasonably performed by a human mentally or with pen and
paper. The 2019 Guidance identifies an evaluation performed by a human
mentally or with pen and paper as a mental process, and thus an abstract
idea. 84 Fed. Reg. at 52 & nn.14-15; see also Intellectual Ventures I LLC v.
Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016) (“Symantec”)
(“[W]ith the exception of generic computer-implemented steps, there is
nothing in the claims themselves that foreclose them from being performed
by a human, mentally or with pen and paper.”).
We further determine claim 1, when considered as an ordered
combination, concerns “methods for better informing the public regarding
the chemical make-up of [household] products without materially
undermining trade secret protection on proprietary component/additive
materials used therein.” Spec. ¶ 3. Providing information about products to
consumers, such as product ingredients, is an advertising, marketing or sales
activity and further may be provided in compliance with legal requirements
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(e.g., public health laws) or obligations of disclosure (e.g., under contract),
all of which are commercial or legal interactions included under the
classification of certain methods of organizing human activity considered to
be abstract ideas. MPEP § 2106.04(a)(2)(II); 2019 Guidance, 84 Fed. Reg.
at 52.
We also are unpersuaded by Appellant’s argument the claims must be
implemented by a computer because, if implemented by a single person, that
person by virtue of having access to and processed the proprietary
information, “it would be impossible for that person to not know which
chemical components covered by the confidentiality restriction are in which
multi-chemical material or in which of the selected products,” Reply Br. 2.
This argument is unpersuasive for at least two reasons. First, we are unable
to identify any claim language that recites the argued limitation.
Accordingly, the argument is not commensurate in scope with the claims.
Secondly, even if there were some requirement to isolate the information to
prevent disclosure that would necessitate limitations on the transfer of
information, Appellant does not explain why the recited steps could not be
performed in the minds of multiple people to prevent unauthorized transfer
and disclosure of proprietary information. That is, we know of no authority
determining that mental processes requiring multiple human minds is patent-
eligible subject matter.
For the reasons discussed above, each of the recited limitations (a)
through (d) of claim 1 reasonably can be characterized as reciting a judicial
exception to patent-eligible subject matter under step 2A, prong 1, of the
2019 Guidance.
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Step 2A, Prong 2
Under step 2A, prong 2, of the 2019 Guidance, we next analyze
whether claim 1 recites additional elements that individually or in
combination integrate the judicial exception into a practical application.
2019 Guidance, 84 Fed. Reg. at 53–55. The 2019 Guidance provides
exemplary considerations that are indicative of an additional element or
combination of elements integrating the judicial exception into a practical
application, such as an additional element reflecting an improvement in the
functioning of a computer or an improvement to other technology or
technical field. Id. at 55; MPEP § 2106.05(a).
In addition to the mental processes discussed above, claim 1 recites a
computer having a processor and at least one database. Appellant discloses
“[t]he particular computer hardware to implement the automated computer
system is not critical. Many types of office computer equipment (e.g. Dell
systems) would be suitable.” Spec. ¶ 37. There is no mention, much less
any description, of the claimed processor. And although mentioned, the
various databases are described only in terms of the information stored; no
structural or special functionalities are disclosed. Thus, we are unable to
ascertain any features provided by these additional elements that integrate
the judicial exception into a practical application according to the 2019
Guidance. Instead, we agree with the Examiner that collecting information,
analyzing the information and displaying certain results of the analysis do
not amount to significantly more than the judicial exception, the steps, at
most, requiring a generic computer to perform generic computer functions.
See Final Act. 9–10.
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In particular, although reciting specific actions for producing a list of
chemicals pre-approved for use in selected products, the claims only
generally link the use of the recited concept to a particular technological
environment, e.g., computerized information processing which is insufficient
to render the claims patent-eligible. See Smart Sys. Innovations, LLC v.
Chicago Transit Auth., 873 F.3d 1364, 1373 (Fed. Cir. 2017) (“merely
limiting the field of use of the abstract idea to a particular . . . environment
does not render the claims any less abstract”); Bilski, 130 S. Ct. at 3231
(“limiting an abstract idea to one field of use . . . did not make the concept
patentable”); MPEP § 2106.05(h) (claims only generally linking the use of a
judicial exception to a particular technological environment or field of use
are insufficient to constitute significantly more than a judicial exception).
Herein the claims are silent regarding specific limitations directed to an
improved computer system, processor, network, or database nor does
Appellant direct our attention to such specific limitations. “[T]he mere
recitation of a generic computer cannot transform a patent-ineligible abstract
idea into a patent-eligible invention.” Alice, 573 U.S. at 223; see also
BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341,
1348 (Fed. Cir. 2016) (“An abstract idea on ‘an Internet computer network’
or on a generic computer is still an abstract idea”).
We are also unpersuaded “the same novel techniques recited in
Appellant’s claims that establish that those claims are not merely directed to
the abstract idea of collecting information, analyzing it, and displaying the
results of that analysis also establish that Appellant’s claims recite
significantly more than an abstract idea.” Appeal Br. 10. A finding of
novelty or non-obviousness does not require the conclusion that the claimed
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subject matter is patent-eligible. Although the second step in the Mayo/Alice
framework is termed a search for an “inventive concept,” the analysis is not
an evaluation of novelty or nonobviousness, but, rather, is a search for “an
element or combination of elements that is ‘sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself.’” Alice, 573 U.S. at 216. “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). A novel and non-obvious claim directed to a purely
abstract idea is, nonetheless, patent-ineligible. See Mayo, 566 U.S. at 90.
See also Diehr, 450 U.S. at 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.”).
Further, we disagree with Appellant’s argument that the Examiner has
applied an overly broad interpretation of Electric Power. App. Br. 6. In that
case, the court found
The claims at issue here do not require an arguably inventive
device or technique for displaying information, unlike the claims
at issue in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d
1245, 1257 (Fed. Cir. 2014) (at JMOL stage finding inventive
concept in modification of conventional mechanics behind
website display to produce dual-source integrated hybrid
display).
Elec. Power, 830 F.3d at 1355. Thus, the court distinguished the claims at
issue from claims that provided a dual-source integrated hybrid display for a
website as in DDR.
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Nothing in the claims, understood in light of the specification,
requires anything other than off-the-shelf, conventional
computer, network, and display technology for gathering,
sending, and presenting the desired information. That is so even
as to the claim requirement of “displaying concurrent
visualization” of two or more types of information, . . . even if
understood to require time-synchronized display: nothing in the
patent contains any suggestion that the displays needed for that
purpose are anything but readily available. We have repeatedly
held that such invocations of computers and networks that are
not even arguably inventive are “insufficient to pass the test of
an inventive concept in the application” of an abstract idea.
Id. (citations omitted). In the present case, Appellant fails to identify, and
we are unable to ascertain, any technical feature that addresses a
technological problem or provides a technological solution for displaying
information as being required by claim 1. Instead, any novel technique
involves what is displayed, i.e., the information content of the data, rather
than how the information is displayed. Thus, the argued display technique is
part of the underlying concept of providing selected types of information
rather than an additional limitation to the judicial exception to be considered
under Step 2A, Prong 2, and Step 2B of our analysis.
We are also unpersuaded by Appellant’s argument analogizing the
claims to those found patent eligible Core Wireless, indicating that its claim
similarly “directed to a particular manner of summarizing and presenting
information in electronic devices.” Appeal Br. 6 (quoting Core Wireless,
880 F.3d at 1362). The claim in Core Wireless was directed to “an
improved user interface for electronic devices, particularly those with small
screens” where the improvement was in “the efficiency of using the
electronic device by bringing together ‘a limited list of common functions
and commonly accessed stored data,’ which can be accessed directly from
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the main menu.” Core Wireless, 880 F.3d at 1363. The Specification in that
case confirmed these improvements over “the prior art interfaces [that] had
many deficits relating to the efficient functioning of the computer, requiring
a user ‘to scroll around and switch views many times to find the right
data/functionality.’” Id. The court found that the disclosure in the
Specification regarding the improved speed of a user’s navigation through
various views and windows “clearly indicates that the claims are directed to
an improvement in the functioning of computers, particularly those with
small screens.” Id. In contrast, Appellant does not demonstrate that listing
product ingredients (i.e., chemicals) that may be contained in specified
products without disclosing specific formulations of the materials
constituting a particular product is related to an identified improvement in
the functioning of computers. As described above, any purported
improvement is to the data acquisition, analysis, organization, and filtering,
not to the computer or its operation and/or function in order to achieve
technological improvements.
We further disagree that the claim is similar to those of Trading
Techs. Int’l, Inc. v. CQG, Inc., 675 F. App’x 1001 (Fed. Cir. 2017)
(“Trading Techs.”). Appeal. Br. 6. In Trading Techs., under Step 1
(corresponding to USPTO Step 2A), the district court held that the claims
were “directed to improvements in existing graphical user interface devices
that have no ‘pre-electronic trading analog,’ and recite more than ‘setting,
displaying, and selecting’ data or information that is visible on the [graphical
user interface] device.” Trading Techs. 675 F. App’x at 1004 (internal
quotations omitted). The district court determined that the claims “solve
problems of prior graphical user interface devices . . . in the context of
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computerized trading[ ] relating to speed, accuracy and usability” and did
not “simply claim displaying information on a graphical user interface.” Id.
The claims required “a specific, structured graphical user interface paired
with a prescribed functionality directly related to the graphical user
interface’s structure that is addressed to and resolves a specifically identified
problem in the prior state of the art.” Id. Further, under Step 2
(corresponding to USPTO Step 2B), the district court held that “the specific
structure and concordant functionality of the graphical user interface are
removed from abstract ideas, as compared to conventional computer
implementations of known procedures.” Id. The Federal Circuit agreed,
holding that “the claimed subject matter is ‘directed to a specific
improvement to the way computers operate,’ . . . for the claimed graphical
user interface method imparts a specific functionality to a trading system
‘directed to a specific implementation of a solution to a problem in the
software arts.’” Id. at 1006 (citations omitted).
Here, the claim simply requires identifying, classifying, organizing
(i.e. listing), and disclosing without any specific functionality directly
related to the computer, its processor, or database structure that is addressed
to and resolves a problem in technology, as discussed above. Rather, the
claim is similar to those in Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d
1084, 1094 (Fed. Cir. 2019) (“Trading Techs. I”) and Trading Techs. Int’l,
Inc. v. IBG LLC, 921 F.3d 1378, 1384 (Fed. Cir. 2019) (“Trading Techs. II”)
where the claims directed to displaying particular information in a particular
way did not focus on an improvement to computer technology.
For at least the reason noted supra, we determine that claim 1
(i) recites a judicial exception and (ii) does not integrate that exception into a
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practical application. Thus, representative claim 1 is directed to the
aforementioned abstract idea.
In connection with claim 7 we are unpersuaded by Appellant’s
argument that the formulating step transforms the nature of the claim into a
patent-eligible application. Appeal Br. 7. Initially, we disagree with
Appellant’s contention that the formulating step requires actually making a
product. Reply Br. 3. We find insufficient evidence that formulating
requires actual production of a physical product versus, for example,
generating a formula specifying the constituent materials used to produce the
product. We note Appellant’s Specification discloses “Once the excluded
and pre-approved lists are created for a large number of fragrances found in
a large selection of products marketed by a company, a first database of the
selected products formulated using approved chemicals can be created.”
Spec. 54 (emphasis added). We find no indication the product is actually
manufactured. Furthermore, U.S. Patent 6,973,362 to Long et al., referenced
by Appellant for describing “formulating commercial products” (Spec. ¶ 8),
also uses the term in the sense of deriving a formula for the product, e.g.,
“[t]he art has . . . begun to develop a number of different techniques for
taking into account environmental issues when formulating products and
acquiring their raw materials.” Long, col. 1, ll. 43–45. See also col. 3,
ll. 27–31 (describing formulating a product by selecting the environmentally
better of two formulas), col. 5, ll. 35–37 (disclosing “[w]here all other
factors are equal, the better overall environmental grade may be used as a
determinative factor in selecting the final formulation”).
In contrast to Appellant’s argument, we are persuaded by the
Examiner that a broad but reasonable interpretation of formulating is to
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express in precise form; state definitely or systematically; to devise or
develop as a method; and to reduce and express in a formula. Ans. 5–6.
Accordingly, Appellant’s argument that the Examiner’s construction is
impermissibly overbroad is unpersuasive. Furthermore, we agree with the
Examiner in finding production of a list satisfies the formulating step
without requiring production of a physical product. Because production of a
list can be accomplished in the human mind and/or with pen and paper, it is
considered to be a mental process that is an abstract idea rather than
something additional to be considered under Prong 2 of our analysis.
We are also unpersuaded of Examiner error by Appellant’s arguments
directed specifically toward claim 13. Appeal Br. 8–9. In particular,
Appellant argues the databases store data in a particular way. However, this
argument conflates how data is stored in a databased with what data is stored
in a database. Appellant provides insufficient evidence that the various
listings are stored in any particular arrangement, data structure, or memory
device. Instead, Appellant merely argues what is stored in each of the
databases, not how the information is stored in each database. Id. at 8.
Accordingly, Appellant fails to persuade us that “it was error to assert that
Appellant’s claims are directed merely to an abstract idea of ‘collecting
information[,] analyzing information[,] and presenting certain results of the
analysis.’” Id. (citing Final Act. 4, 6, 9).
For the reasons discussed and in the absence of sufficient evidence or
argument to the contrary, we determine the claims do not include additional
elements that integrate the judicial exception into a practical application
because the additional elements: (1) do not improve the functioning of a
computer or other technology; (2) are not applied with any particular
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machine (except for a generic computer); (3) do not effect a transformation
of a particular article to a different state; and (4) are not applied in any
meaningful way beyond generally linking the use of the judicial exception to
a particular technological environment, such that the claim as a whole is
more than a drafting effort designed to monopolize the exception. See
MPEP § 2106.05(a)–(c), (e)–(h). Instead, any improvement is to the
underlying idea of informing the public about the chemical make-up of
household products without revealing trade secrets about proprietary
component/additive materials requiring only the collection and analysis of
information and providing the results of the analysis. Thus, the claims do
not integrate the judicial exception into a practical application.
USPTO Step 2B
Finally, we agree with the Examiner the recited method of producing
lists of chemicals and products and disclosing a list of pre-approved
components included in the products as claimed requires no more than a
generic computer to perform generic computer functions. Final Act. 4.
Accordingly, we further agree all of these computer functions are well
understood, routine, and conventional activities previously known to the
industry. Id.
We disagree with Appellant’s contention that the Examiner has failed
to provide sufficient support in finding the computer and computer
operations were well understood, routine and conventional. Appeal Br. 11
(citing Berkheimer, 881 F.3d at 1368). As set forth in the USPTO
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Berkheimer Memorandum,6 support for a finding an additional element or
combination of elements is well-understood, routine and convention may be
satisfied by, inter alia, a citation to an express statement in the specification
or a citation to one of more of the court decisions discussed in MPEP
§ 2106.05(d)(II). Herein Appellant’s Specification discloses “[t]he
particular computer hardware to implement the automated computer system
is not critical. Many types of office computer equipment (e.g. Dell systems)
would be suitable.” Spec. ¶ 37. Furthermore, the Federal Circuit has held,
“the use of conventional computer components, such as a database and
processors, operating in a conventional manner” “do[es] not confer patent
eligibility.” Intellectual Ventures I LLC v. Capital One Bank (USA), 792
F.3d 1363, 1371 (Fed. Cir. 2015). This is because “mere automation of
manual processes using generic computers does not constitute a patentable
improvement in computer technology.” Credit Acceptance Corp. v.
Westlake Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017). See also buySAFE,
Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (it is well-
understood, routine and conventional use of a computer to receive and send
information over a network).
We, therefore, determine that the limitations of claim 1 and, for the
same reasons, the limitations of independent claims 7 and 13, do not add
“significantly more” to the patent-ineligible abstract idea, whether
considered individually or as an ordered combination.

6 USPTO Memorandum of April 19, 2018, “Changes in Examination
Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter
Eligibility Decision (Berkheimer v. HP, Inc.)” (Apr. 19, 2018), available at
https://www.uspto.gov/sites/default/files/documents/memo-berkheimer-
20180419.PDF
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Accordingly, for the reasons discussed, the claims recite (i) mental
processes and/or (ii) certain methods organizing human activity, i.e.,
commercial or legal interactions including advertising, marketing, sales
activities, or legal obligations. Both mental processes and certain methods
of organizing human behavior are identified in the 2019 Guidance as
abstract ideas. Furthermore, the claims do not recite limitations that amount
to significantly more than the abstract idea itself. Accordingly, we sustain
the rejection of independent claims 1, 7, and 13 under 35 U.S.C. § 101 and,
for the same reasons, the rejection of dependent claims 2–4, 8–12, and 14–
20, which are not argued separately with particularity.

CONCLUSION
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
Overall
Outcome
101 Eligibility 1–4, 7–20

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED