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Patent Trials and Appeals Board

Apr 10, 2019

13989786 - (D) (P.T.A.B. Apr. 10, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/989,786 05/25/2013
22879 7590 04/12/2019
HP Inc.
3390 E. Harmony Road
Mail Stop 35
FORT COLLINS, CO 80528-9544
FIRST NAMED INVENTOR
Ron Banner
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
83272436 6803
EXAMINER
DICKERSON, TIPHANY B
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
04/12/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ipa.mail@hp.com
barbl@hp.com
yvonne.bailey@hp.com
PTOL-90A (Rev. 04/07)
UNITED ST ATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RON BANNER
Appeal2018-003579
Application 13/989, 786
Technology Center 3600
Before JOHN A. JEFFERY, JENNIFERL. McKEOWN, andLINZYT.
McCARTNEY,Administrative Patent Judges.
JEFFERY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant 1 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision torejectclaims 1,3, 5-9, 11, 13, 14, 16,and 18-20. Wehave
jurisdiction under35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
Appellant's invention plans workflow for processing an article in a
plant where other articles are currently processed. To this end, a certain
workflow route with selected machines is selected based on calculated route
1 Appellant identifies the real party in interest as Hewlett-Packard
Development Company, LP. App. Br. 3.
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cost functions. The article is then processed along the selected route. See
generally Abstract. Claim 1 is illustrative:
1. A method for processing an article in a plant in which other
articles are currently being processed, the method comprising:
for each manufacturing stage of the processing, receiving into a
controller signals representative of a current congestion of capacity to
process articles based on articles currently being processed, an
additional load from introducing the article into the stage, and current
capacity from each machine of the plant that is capable of executing
that stage;
generating with the controller a machine cost value based on an
exponential function of a current congestion of each machine;
constructing with the controller a plurality of workflow routes
for processing the article, each workflow route including a series of
selected machines such that each selected machine of the series is
capable of executing a different stage of the processing to process the
article,
calculating with the controller for each workflow route of said
plurality of workflow routes a route cost function that is based on the
machine cost value, the additional load, and current capacity of the
selected machines of that workflow route for processing the article;
and
processing the article along a workflow route with selected
machines of the workflow route, the workflow route selected by the
controller from said plurality of workflow routes based on the
calculated route cost functions.
(App. Br., Claims Appendix, 14.)
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THE REJECTION2
The Examiner rejected claims 1, 3, 5-9, 11, 13, 14, 16, and 18-20
under35 U.S.C. § 101 as directed to ineligible subject matter. Final Act. 3-
5. 3
FINDINGS, CONCLUSIONS, AND CONTENTIONS
The Examiner determines that the claims are directed to an abstract
idea, namely using cost-based planning techniques (i.e., mathematical
algorithms) to plan the order of an article's machine processing. Final Act.
3--4. The Examiner adds that the claims do not include elements that add
significantly more than the abstract idea, but merely recite a controller,
computer-readable medium, and processor. Id. 4--5. According to the
Examiner, the recited limitations that process an article with selected
machines do not add significantly more to the abstract idea because they are
post-solution activity that merely generally links the algorithm's results to a
machine environment and, therefore, do not limit the claims meaningfully.
Final Act. 5; Ans. 4--5. Based on these determinations, the Examiner
concludes that the claims are ineligible under§ 101. Final Act. 3-5; Ans. 4--
5.
Appellant argues that the claimed invention is not directed to an
abstract idea. App. Br. 9-1 O; Reply Br. 3--4. According to Appellant, the
2 Because the Examiner withdrew an obviousness rejection (Ans. 3), only
the ineligibility rejection is before us.
3 Throughout this opinion, we refer to (1) the Final Rejection mailed May
19, 2017 ("Final Act."); (2) the Appeal Brief filed October 17, 2017 ("App.
Br."); (3)the Examiner's Answer mailed January 10, 2018 ("Ans."); and(4)
the Reply Brief filed February 13, 2018 ("Reply Br.").
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claimed invention improves the technology of scheduling processing of
articles throughout various stages of manufacturing according to a workflow
route selected from a number of such routes. App. Br. 9; Reply Br. 3--4.
Appellant adds that the claimed invention adds significantly more to the
purported abstract idea by ( 1) constructing workflow routes for processing
an article through various manufacturing stages; (2) selecting a workflow
route based on criteria, where machine cost value is just one criterion; and
(3) processing the article via the selected route. App. Br. 10; Reply Br. 4--5.
According to Appellant, the claimed invention does more than schedule
article processing with generic computer components, but rather transforms
this scheduling into a practical application that implements aspects of each
machine's congestion in the plant into a machine cost value to determine a
workflow route for processing an article along with machine-based loads
and capacity. Reply Br. 4--5.
ISSUE
Under § 101, has the Examiner erred in rejecting claims 1-24 as
directed to ineligible subject matter? This issue turns on whether the claims
are directed to an abstract idea and, if so, whether recited elements-
considered individually and as an ordered combination-transform the
nature of the claims into a patent-eligible application of that abstract idea.
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
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implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. See, e.g.,Alice Corp. Pty. Ltd. v. CLSBankint'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. at217-18 (citing Mayo CollaborativeServs. v. Prometheus
Labs., Inc., 566U.S. 66, 75-77 (2012)). Inaccordancewiththat framework,
we frrst 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. Kappas, 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 (Parkerv. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubberproducts"(Diamondv. Diehr,450U.S. 175,192
(1981)); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 184 n. 7 (quoting Corningv. Burden, 56 U.S.
(15 How.) 252, 267---68 (1854))); and manufacturing flour (Benson, 409 U.S.
at 69 (citing Cochranev. Deener, 94 U.S. 780, 785 (1876))).
In Di ehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that"[ a] claim drawn to subject matter otherwise
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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 andFlook); 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 tum to the second
step oftheAlice andMayo 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. at221 (quotation marks and citation
omitted). "A claim that recites an abstract idea must include 'additional
features' to ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."' Id. (quoting Mayo, 566 U.S. at 77).
"[M]erely requir[ing] generic computer implementation[] fail[ s] to transform
that abstract idea into a patent-eligible invention." Id.
In January 2019, the USP TO published revised guidance on the
application of§ 101. See 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) ("Guidance"). Under that
guidance, we frrst look to whether the claim recites:
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( 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 p ATENT 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, 3, 5-9, 11, 13, 14, 16, and 18-20: Alice/Mayo Step One
Independent claim 1 recites "[a] method for processing an article in a
plant in which other articles are currently being processed, the method
comprising:
for each manufacturing stage of the processing, receiving into a
controller signals representative of a current congestion of capacity to
process articles based on articles currently beingprocessed, an additional
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load from introducing the article into the stage, and current capacity from
each machine of the plant that is capable of executing that stage;
generating with the controller a machine cost value based on an
exponential function of a current congestion of each machine;
constructing with the controller a plurality of worliflow routes for
processing the article, each worliflow route including a series of selected
machines such that each selected machine of the series is capable of
executing a different stage of the processing to process the article,
calculating with the controller for each worliflow route of said
plurality of worliflow routes a route cost function that is based on the
machine cost value, the additional load, and current capacity of the selected
machines ofthatworliflow route for processing the article; and
processing the article along a worliflow route with selected machines
of the worliflow route, the worliflow route selected by the controller from
said plurality of worliflow routes based on the calculated route cost
functions. "4
As the Specification's paragraph 7 explains, choosing and scheduling
a plan are two basic and related steps in a manufacturing process.
Typically, a plan choosing problem has as an input (1) a set of possible
courses of actions for each job, and (2) a cost measure for each action. Spec.
,r 7. The problem solution is one course of action, or path, that optimizes
overall performance according to a predefmed criterion. Id.
Scheduling may include a set of jobs, or a single plan, where each job
may include a partially-ordered set of tasks. Id. Scheduling may also
4 Unless otherwise indicated, we italicize or quote text associated with
various recited limitations for emphasis and clarity.
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include a set of machines, where each machine can carry out a subset of
tasks. Id. A feasible solution to a scheduling problem may include mapping
from tasks to machines over specified time intervals, so that no machine has
assigned to it more than one task at a time, and each task is completed before
starting any other task that follows it in the specified partial order. Id.
The present invention, however, assigns a single plan for each job in a
given time window such that a maximum number of jobs can be executed
concurrently by planning the workflow of processing an article in a plant
where other articles are currently processed. Id. ,r 9. To this end, a
"machine cost value" is assigned to each machine in the plant, where this
value may be an exponential function of that machine's current congestion.
Id. ,r 11. A "route cost function" is then calculated based on the machine
cost functions of the selected machines of a particular workflow route. Id.
After selecting a particular workflow route based on the calculated route cost
functions, the article is processed along the selected workflow route. Id.
To achieve this end, the invention uses a controller, such as that
shown in Figure 4, that includes a processor 402, memory 404, storage 408,
and an input/output interface 406 that can interface with machines in the
plant and other devices. Spec. ,r,r 22-23.
Turning to claim 1, we first note that the claim recites a method and,
therefore, falls within the process category of§ 101. But despite falling
within this statutory category, we must still determine whether the claim is
directed to ajudicial exception, namely an abstract idea. SeeAlice, 573 U.S.
at 217. To this end, we must determine whether ( 1) the claim recites a
judicial exception, and (2) fails to integrate the exception into a practical
application. See Guidance, 84 Fed. Reg. at 52-55. Ifboth elements are
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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 using cost-based planning techniques (i.e.,
mathematical algorithms) to plan the order of an article's machine
processing. Final Act. 3--4. 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 concepts 5; (b)
certain methods of organizing human activity6 ; or ( c) mental processes. 7
Here, apart from the recited (1) "controller"; (2) "signals"; and (3)
"processing the article along a workflow route with selected machines of the
workflow route," all of claim 1 's recited steps, which collectively are
directed to selecting a workflow route and associated machines based on
certain criteria to process an article, fit squarely within at least one of the
above categories of the agency's guidelines.
5 Mathematical concepts include mathematical relationships, mathematical
formulas or equations, and mathematical calculations. See Guidance, 84
Fed. Reg. at 52.
6 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.
7 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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First, the step reciting ''for each manufacturing stage of the
processing, receiving ... [a representati[on] of a current congestion of
capacity to process articles based on articles currently being processed, an
additional load from introducing the article into the stage, and current
capacity from each machine of the plant that is capable of executing that
stage" involves at least personal interactions, including following rules or
instructions, at least to the extent that a person could receive a representation
of ( 1) current congestion of capacity to process articles based on currently-
processed articles; (2) an additional load from introducing the article into the
stage; and (3) the current capacity from each machine that can execute that
stage merely via face-to-face or written communication with another person
with such knowledge, such as a colleague in the plant. Cf CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011) (noting
that limitation reciting obtaining information about transactions that have
used an Internet address identified with a credit card transaction can be
performed by a human who simply reads records of Internet credit card
transactions from a pre-existing database). In addition, receiving the recited
representations can be done entirely mentally by merely thinking about, or
writing down, such information based on the machines' known
capabilities-a step that can involve mere observation and logical reasoning.
Cf id. ( 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). Therefore,
the receiving step falls squarely within the mental processes and methods of
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organizing human activity categories of the agency's guidelines and,
therefore, recites an abstract idea. See Guidance, 84 Fed. Reg. at 52 (listing
exemplary (1) methods of organizing human activity, including personal
interactions and following rules or instructions; and (2) mental processes,
including observation, evaluation, judgment, and opinion).
Second, "generating ... a machine cost value based on an
exponential function of a current congestion of each machine" can not only
be done entirely mentally by merely thinking about such values and
functions or writing them down, but this value generation also involves a
mathematical relationship, namely an exponential function, on which the
value is based. See Spec. ,r 14 ( describing these exponential functions); 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."); CyberSource, 654 F.3d at 1372 (noting that a person may
construct a map of credit card numbers by writing down a list of credit card
transactions made from a particular IP address); Elec. Power Grp., LLCv.
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., LLCv. Electronics for
Imaging, Inc., 758 F.3d 1344, 1351 ("Without additional limitations, a
process that employs mathematical algorithms to manipulate existing
information to generate additional information is not patent eligible.");
Gottschalkv. Benson, 409U.S. 63 (1972) (holding ineligible claims
involving a mathematical algorithm and directed to converting binary-
coded-decimal (BCD) numerals into pure binary numerals for use with a
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computer). Accord CyberSource, 654 F. 3d at 13 7 5 ("That purely mental
processes can be unpatentable, even when performed by a computer, was
precisely the holding of the Supreme Court in [Benson]."). Therefore, the
recited generating step falls squarely within the mental processes and
mathematical concepts categories of the agency's guidelines and, therefore,
recites an abstract idea. See Guidance, 84 Fed. Reg. at 52.
Third, "constructing ... a plurality of workjlow routes for processing
the article, each workjlow route including a series of selected machines such
that each selected machine of the series is capable of executing a different
stage of the processing to process the article" can be done entirely mentally
by merely thinking about, or writing down, such routes and their associated
selected machines based on the machines' known capabilities-a step that
can involve mere observation and logical reasoning. 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).
Therefore, the recited constructing step falls squarely within the mental
processes category of the agency's guidelines and, therefore, recites an
abstract idea. See Guidance, 84 Fed. Reg. at 52.
Fourth, "calculating . .. for each workjlow route of said plurality of
workjlow routes a route cost function that is based on the machine cost
value, the additional load, and current capacity of the selected machines of
that workjlow route for processing the article" can not only be done entirely
mentally or with pen and paper, but this calculation also involves
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mathematical relationships, formulas, and calculations. See Spec. ,r,r 24---67
( detailing calculations and associated mathematical algorithms). Cf
CyberSource, 654 F.3d at 1372; see also Benson, 409 U.S. at 68-72; SAP
Am., Inc. v. Investpic, LLC, 898 F.3d 1161, 1165-70 (Fed. Cir. 2018)
(holding ineligible claim reciting method for calculating, analyzing, and
displaying investment data as directed to abstract idea of selecting certain
information, analyzing it using mathematical techniques, and reporting or
displaying the results of the analysis); Coffelt v. NVIDIA Corp., 680 F.
App'x 1010, 1010-11 (Fed. Cir. 2017) (unpublished) (holding ineligible
claim directed to abstract idea of calculating and comparing regions in
space); Grams, 8 8 8 F. 2d at 83 7 n.1 ("Words used in a claim operating on
data to solve a problem can serve the same purpose as a formula.").
Therefore, the recited calculating step falls squarely within the mental
processes and mathematical concepts categories of the agency's guidelines
and, therefore, recites an abstract idea. See Guidance, 84 Fed. Reg. at 52.
Lastly, "the worliflow route selected .. . from said plurality of
worliflow routes based on the calculated route cost functi ans" can be done
entirely mentally by merely thinking about, or writing down, this route
selection based on the calculated route cost functions-a step that can
involve mere logical reasoning. Cf CyberSource, 654 F.3d at 1372.
Although the claim recites an abstract idea based on these methods of
organizing human activity, mental processes, and mathematical concepts, we
nevertheless must still determine whether the abstract idea is integrated into
a practical application, namely whether the claim applies, relies on, or uses
the abstract idea in a manner that imposes a meaningful limit on the abstract
idea, such that the claim is more than a drafting effort designed to
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monopolize the abstract idea. See Guidance, 84 Fed. Reg. at 54--55. To this
end, we ( 1) identify whether there are any additional recited elements
beyond the abstract idea, and (2) evaluate those elements individually and
collectively to determine whether they integrate the exception into a
practical application. See id.
Here, the recited (1) "controller"; (2) "signals"; and (3) "processing
the article along a workflow route with selected machines of the workflow
route" are the only recited elements beyond the abstract idea, but those
additional elements do not integrate the abstract idea into a practical
application when reading claim 1 as a whole. First, we are not persuaded
that the claimed invention improves the computer or its components'
functionality or efficiency, or otherwise changes 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), despite
Appellant's arguments to the contrary (App. Br. 9). 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.3dat 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 (see App. Br.
9), there is no persuasive evidence on this record to substantiate such a
contention.
To the extent that Appellant contends that the claimed invention is
rooted in technology because it is ostensibly directed to a technical solution
(see App. Br. 9-1 O; Reply Br. 3--4), we disagree. Even assuming, without
deciding, that claimed invention can select workflow routes and associated
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machines to process articles faster than doing so manually, any speed
increase comes from the capabilities of the generic computer components-
not the recited process itself. See FairWarningIP, LLCv. Iatric Systems,
Inc., 839F.3d 1089, 1095 (Fed. Cir. 2016)(citing Bancorp Services, LLCv.
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'x 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 accuracy increases stemming from the
ordinary capabilities of a general-purpose computer do not materially alter
the patent eligibility of the claimed subject matter."). Like the claims in
Fair Warning, the focus of claim 1 is not on an improvement in computer
processors as tools, but on certain independently abstract ideas that use
generic computing components as tools. See FairWarning, 839 F.3d at 1095
( citations and quotation marks omitted).
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.3dat 1315.
Notably, the recited process automatically animated characters using
particular information and techniques-an improvement over manual three-
dimensional animation techniques that was not directed to an abstract idea.
Id. at 1316.
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But unlike the claimed invention in M cR O that improved how the
physical display operated to produce better quality images, the claimed
invention here merely uses generic computing components to select a
workflow route and associated machines based on certain criteria to process
an article. This generic computer implementation is not only directed to
fundamental human activity organization and mental processes, but also
does not improve a display mechanism as was the case in McRO. See SAP,
898 F.3dat 1167 (distinguishing McRO).
Therefore, we do not fmd that the claim recites additional elements
improving (1) the computer itself, or (2) another technology or technical
field. See Guidance, 84 Fed. Reg. at 55 (citing MPEP § 2106.05(a)).
Rather, the above-noted additional elements merely (1) apply the abstract
idea on a computer; (2) include instructions to implement the abstract idea
on a computer; or (3) use the computer as a tool to perform the abstract idea.
See Guidance, 84Fed. Reg. at 55 (citing MPEP §2106.05(±)).
We add that the step reciting that ''for each manufacturing stage of the
processing, receiving ... [a representati[on] of a current congestion of
capacity to process articles based on articles currentlybeingprocessed, an
additional load from introducing the article into the stage, and current
capacity from each machine of the plant that is capable of executing that
stage" in the claim's frrst clause not only organizes human activity and uses
generic computing components to perform the abstract idea as noted above,
but this receiving function is also insignificant extra-solution activity that
merely gathers data and, therefore, does not integrate the exception into a
practical application for that additional reason. See In re Bilski, 545 F.3d
943,963 (Fed. Cir. 2008) (en bane), aff'd on other grounds, 561 U.S. 593
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(2010) ( characterizing data gathering steps as insignificant extra-solution
activity); see also 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 Guidance, 84 Fed. Reg. at 5 5
(citing MPEP §2106.05(g)).
In addition, the recited ''processing the article along a workjlow route
with selected machines of the workjlow route" is insignificant post-solution
activity, at least in the sense that it is merely ancillary to the scheduling
focus of the claimed invention, particularly given its high level of generality
and context in the claimed invention. Accord Ans. 4 (fmding that processing
the article along a workflow route is merely post-solution activity). In short,
the focus of the claimed invention is scheduling article processing, not the
article processing itself. See Reply Br. 4 ( arguing that the claimed invention
improves the technology of scheduling article processing throughout various
manufacturing stages, and does not preempt all ways of scheduling articles
for processing with a computer). Indeed, the article processing step is
merely recited in general terms and does not specify exactly what this
processing entails, let alone recite how the article is processed, apart from
using selected machines on a selected workflow route. Notably, this
processing is equally applicable to routes selected entirely mentally or with
pen and paper as noted previously.
The Examiner's fmdings regarding the article processing step (Final
Act. 5; Ans. 4) are consistent with the notion that post-solution activity, no
matter how conventional or obvious in itself, cannot transform ineligible
subject matter into that which is eligible: to do otherwise exalts form over
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substance. See Flook, 437 U.S. at 590. As the U.S. Supreme Court noted,
"[a] competent draftsman could attach some form of post-solution activity to
almost any mathematical formula; the Pythagorean theorem would not have
been patentable, or partially patentable, because a patent application
contained a fz nal step indicating that the formula, when solved, could be
usefully applied to existing surveying techniques." Id. ( emphasis added).
Our emphasis underscores the striking similarity of the Court's
observation to the case here, where claim 1 's fmal step essentially indicates
that the workflow route selection technique can be usefully applied to
existing article processing techniques. Given its high level of generality and
its context with respect to the scheduling focus of the claimed invention, the
recited article processing step is, therefore, insignificant post-solution
activity. To the extent Appellant contends otherwise (see App. Br. 9), we
disagree.
To be sure, applying a law of nature or mathematical formula to a
known structure or process may well deserve patent protection. Di ehr, 450
U.S. at 187. As the U.S. Supreme Court noted, "Arrhenius' equation is not
patentable in isolation, but when a process for curing rubber is devised
which incorporates in it a more efficient solution of the equation, that
process is at the very least not barred at the threshold by § 101." Id. at 18 8.
The Court added that:
[W]hen a claim containing a mathematical formula implements or
applies that formula in a structure or process which, when considered
as a whole, is performing a function which the patent laws were
designed to protect (e.g. , transforming or reducing an article to a
different state or thing), then the claim satisfies the requirements of
§ 101.
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Id. at 192.
That is not the case here. Although the article is "processed" with
selected machines of a selected workflow route in claim 1, we cannot say-
nor has Appellant shown-that this recited "processing" transforms or
reduces the article to a different state or thing as noted in Di ehr, or is
otherwise tied to a particular machine to satisfy the machine-or-
transf ormation test-a "useful clue" to eligibility in the Alice/Mayo
framework. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed.
Cir. 20l4)(quotingBilskiv. Kappas, 561 U.S. 593, 594(20lO));seealsoin
re Bilski, 545 F.3d 943,954 (Fed. Cir. 2008), aff'd sub nom. Bilski, 561 U.S.
at 593.
Despite not being the only eligibility test, the machine-or-
transf ormation test can nevertheless indicate whether additional elements
integrate the exception into a practical application. See Guidance, 84 Fed.
Reg. at 55 (citing MPEP §§ 2106.05(b),(c)). But that is not the case here.
Although selected machines process the article in claim 1, they are not
particular machines to which the process is tied to satisfy the machine-or-
transf ormation test given the claim's high level of generality in this regard.
And given this high level of generality, merely "processing" an article,
without more, does not transform the article into a different state or thing, at
least in the sense contemplated in the relevant case law, notwithstanding the
fact the article is arguably transformed from an "unprocessed" to a
"processed" state. See Diehr, 450 U.S. at 188; see also Bilski, 561 U.S. at
604.
But even if the recited "processing" somehow transformed or
reduced the article to a different state or thing, or was otherwise tied to a
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particular machine to satisfy the machine-or-transformation test ( which it
does not), that alone is not dispositive of eligibility, for the machine-or-
transf ormation test is not the only test for eligibility as noted above. See
Bilski, 5 61 U.S. at 604. Where, as here, the recited article processing step is
merely ancillary to the scheduling focus of the claimed invention, given its
high level of generality and context in the claimed invention, the recited
article processing step is insignificant post-solution activity and, therefore,
does not integrate the exception into a practical application. See Guidance,
84 Fed. Reg. at 55 (citing MPEP § 2106.05(g)).
Lastly, we fmd unavailing Appellant's contention that the claimed
invention does not preempt all ways of scheduling processing articles with a
computer. See Reply Br. 4. Where, as here, the claims cover a patent-
ineligible concept, preemption concerns "are fully addressed and made
moot" by an analysis under the Alice/Mayo framework. See Ari osa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
In conclusion, although the claimed invention may be beneficial by
selecting a workflow route and associated machines based on certain criteria
to process an article, a claim for a useful or beneficial abstract idea is still an
abstract idea. See Ariosa, 788 F.3d at 1379-80.
We, therefore, agree with the Examiner that claim 1 is directed to an
abstract idea.
Claims 1, 3, 5-9, 11, 13, 14, 16, and 18-20: Alice/Mayo Step Two
Turning to Alice/Mayo step two, claim 1 's additional recited elements,
namely the recited (1) "controller"; (2) "signals"; and (3) "processing the
article along a workflow route with selected machines of the workflow
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route"----considered individually and as an ordered combination----do not
provide an inventive concept such that these additional elements amount to
significantly more than the abstract idea. See Alice, 573 U.S. at221;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 that Appellant contends that the recited limitations,
including (1) "generating ... a machine cost value ... "; (2) "constructing ..
. workflow routes ... , each workflow route including a series of selected
machines ... "; and (3) "calculating ... for each workflow route ... a route
cost function ... , " add significantly more than the abstract idea to provide
an inventive concept under Alice/Mayo step two (see App. Br. 5-11; Reply
Br. 2-5), these limitations are not additi anal elements beyond the abstract
idea, but rather are directed to the abstract idea as noted previously. See
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 recited "controller" and "signals" are additional recited
elements whose generic computing functionality is well-understood, routine,
and conventional. Accord Final Act. 4; Ans. 17-19 (fmding that the claims'
additional generic computer elements (e.g., controller, processor, and
computer-readable medium) do not add significantly more than the abstract
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idea). See also Spec. ,r,r 68-70 ( describing generic computer functions
associated with the disclosed invention).
We reach a similar conclusion regarding the recited insignificant post-
solution activity, namely ''processing the article along a worliflow route
with selected machines of the worliflow route." That the article is processed
with selected machines does not mean that the article is processed in an
unconventional way to add significantly more than the abstract idea and
provide an inventive concept under Alice/Mayo step two. See Guidance, 84
Fed. Reg. at 56. Given the recited processing step's high level of generality,
and that it is known to process articles along a route with selected machines
in a plant (see Spec. ,r,r 1, 7-8), the recited ''processing the article along a
worliflow route with selected machines of the worliflow route" does not add
significantly more than the abstract idea to provide an inventive concept
under Alice/Mayo step two. Appellant's arguments in this regard (see App.
Br. 10; Reply Br. 4--5) are, therefore, unpersuasive.
Despite Appellant's arguments to the contrary (Reply Br. 4), the fact
that the Examiner did not reject the claims as anticipated or obvious over
prior art is 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. at217-18. "Groundbreaking,
innovative, or even brilliant discovery does not by itself satisfy the § 101
inquiry." Ass 'nfor Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
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576,591 (20l3);seealsoDiamondv.Diehr,450U.S. l75, 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 a/Texas, LLCv. DIRECTV, LLC, 838 F.3d 1253, 1263 n.3
(Fed. Cir. 2016) (noting that an eligibility fmding does not tum on the
novelty of using a user-downloadable application for the particular purpose
recited in the claims).
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. See Alice, 573 U.S. at221; see also Guidance, 84 Fed. Reg. at 56.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 1, andclaims 3, 5-9, 11, 13, 14, 16,and 18-20notarguedseparately
with particularity.
CONCLUSION
TheExaminerdidnoterrinrejectingclaims 1,3, 5-9, 11, 13, 14, 16,
and 18-20under § 101.
DECISION
We affrrm the Examiner's decision to reject claims 3, 5-9, 11, 13, 14,
16, and 18-20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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