13434507 - (D) (P.T.A.B. Jul. 5, 2019)

Ex Parte McCarty et al

Patent Trials and Appeals BoardJul 5, 2019

13434507 - (D) (P.T.A.B. Jul. 5, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/434,507 03/29/2012 23345 7590 MCGUIREWOODS, LLP 1750 TYSONS BLVD SUITE 1800 Tysons Corner, VA 22102 07/09/2019 FIRST NAMED INVENTOR Joel McCarty 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. 2067562-0l 14PTUS 9526 EXAMINER SCHEUNEMANN, RICHARD N ART UNIT PAPER NUMBER 3624 NOTIFICATION DATE DELIVERY MODE 07/09/2019 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): patents@mcguirewoods.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOEL MCCARTY and DAVID MIYA TAKE 1 Appeal 2018-005618 Application 13/434,507 Technology Center 3600 Before MICHAEL J. STRAUSS, GREGG I. ANDERSON, and MICHAEL M. BARRY, Administrative Patent Judges. STRAUSS, Administrative Patent Judge. DECISION ON APPEAL 1 According to Appellants, the real party in interest is A TC Logistics & Electronics, Inc. See App. Br. 3. Appeal 2018-005618 Application 13/434,507 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. Â§ 134(a) from a rejection of claims 1-8, 11-16, and 18-21. Claims 9, 10 and 17 are canceled. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We affirm. 2 THE INVENTION The claims are directed to checking quality processing of electronic devices, e.g., refurbished cellular telephones. Spec., Abstract, ,-J 2. The devices are randomly sampled using thresholds automatically adjusted in real-time in response to results of the sampling. Id. For example, repeated successful passes may result in decreasing a sampling rate and identification of one or more failures may result in increasing the sampling rate. Spec. ,-J 51. Devices are also tested for the presence of consumer personal information which, if discovered, is removed from the device. Claim 16. Claim 16, reproduced below3 with bracketed numbering added designating disputed limitations as emphasized in italics, is representative of the claimed subject matter: 16. A server comprising: a processor for executing a set of instructions; and a memory for storing the set of instructions, wherein the set of instructions are configured to: 2 We refer to the Specification, filed March 29, 2012 ("Spec."); Final Office Action, mailed August 21, 2017("Final Act."); Appeal Brief, filed January 22, 2018 ("App. Br."); Examiner's Answer, mailed March 9, 2018 ("Ans.") and Reply Brief, filed May 8, 2018 ("Reply Br."). 3 Claim 16 appearing in Appellants' Claims Appendix is incomplete, omitting the first portion of the step of establishing data communication with the recited plurality of electronic devices and further omitting the wherein clause of the sampling step describing and providing antecedent basis for the subsequently recited consumer private information (CPI). 2 Appeal 2018-005618 Application 13/434,507 establish data communication with a plurality of electronic devices for processing; sample the plurality of electronic devices utilizing sampling rates to determine defects with the plurality of electronic devices, wherein the sampling comprises consumer private information (CPI) presence testing on each of the plurality of electronic devices; remove CPI stored on the plurality of electronic devices discovered during the CPI presence testing; [(l)] automatically adjust the sampling rates in real-time in response to results of the sampling, [(2)] wherein automatically adjusting the sampling rates comprises decreasing the sampling rates in response to sampling a designated number of the plurality of electronic devices without any of the plurality of electronic devices failing the sampling; generate failure records in response to one or more of the plurality of electronic devices failing the sampling; and record the one or more tickets including information associated with the processing of the plurality of electronic devices in one or more databases. REFERENCES4 The following prior art is relied upon by the Examiner in rejecting the claims on appeal: Mok US 7,165,003 B2 Jan. 16, 2007 Chaya et al. US 2004/0081349 A 1 Apr. 29, 2004 Enright et al. US 2008/0009959 Al Jan. 10, 2008 Sexton et al. US 2008/0047727 Al Feb. 28, 2008 Kolman US 2008/0155329 Al June 26, 2008 Izikson et al. US 2008/0286885 Al Nov. 20, 2008 Jimenez et al. US 2011/0102276 Al May 05, 2011 Svensson et al. US 2011/0314541 Al Dec. 22, 2011 Application Note AN-999: International Rectifier's Total Dose Radiation Hardness Assurance (RHA) Test Program Application 4 All citations herein to patent and patent publication references are by reference to the first named inventor only. 3 Appeal 2018-005618 Application 13/434,507 Note AN-999, https://web.archive.org/web/20101231003128/ http://www.irf.com/technical-info/appnotes/an-999.pdf, 2010 (last visited June 13, 2019) ("International Rectifier") REJECTIONS The Examiner made the following rejections: Claims 1-8, 11-16, and 18-21 stand rejected under 35 U.S.C. Â§ 101 as directed to patent-ineligible subject matter. Final Act. 4-6. Claims 1-8, 11-16, and 18-21 stand rejected under pre-AIA 35 U.S.C. Â§ 112, second paragraph5, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the applicant regards as the invention. Final Act. 7. Claim 16 stands rejected under pre-AIA 35 U.S.C. Â§ 103(a) as being unpatentable over Jimenez, Kolman, Svensson, and Izikson. Final Act. 8-11. Claims 1, 2, 8, and21 stand rejected underpre-AIA 35 U.S.C. Â§ 103(a) as being unpatentable over Jimenez, Svensson, Kolman, International Rectifier, and Izikson. Final Act. 11-12. Claims 5, 11, 12, and 14 stand rejected under pre-AIA 35 U.S.C. Â§ 103(a) as being unpatentable over Jimenez, Svensson, Kolman, International Rectifier, Izikson, and Mok. Final Act. 20-27. 5 Appellants' application was filed on March 29, 2012 which is prior to the September 16, 2012 effective date ofÂ§ 4(c) of the Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) ("AIA"). Accordingly, the pre-AIA version of 35 U.S.C. Â§ 112 applies. See AIA Â§ 4(e). 4 Appeal 2018-005618 Application 13/434,507 Claim 7 stands rejected under pre-AIA 35 U.S.C. Â§ 103(a) as being unpatentable over Jimenez, Svensson, Kolman, International Rectifier, Izikson, and Enright. Final Act. 21-22. Claim 18 stands rejected under pre-AIA 35 U.S.C. Â§ 103(a) as being unpatentable over Jimenez, Svensson, Kolman, International Rectifier, Izikson, Enright, and Official Notice. Final Act. 27-28. Claim 4 stands rejected under pre-AIA 35 U.S.C. Â§ 103(a) as being unpatentable over Jimenez, Svensson, Kolman, International Rectifier, Izikson, Chaya, and Sexton. Final Act. 28-30. Claim 13 stands rejected under pre-AIA 35 U.S.C. Â§ 103(a) as being unpatentable over Jimenez, Mok, Kolman, Izikson, Svensson, International Rectifier, and Enright. Final Act. 30-31. Claim 15 stands rejected under pre-AIA 35 U.S.C. Â§ 103(a) as being unpatentable over Jimenez, Mok, Kolman, Izikson, Svensson, International Rectifier, and Official Notice. Final Act. 31-32. The rejections of claims 3, 6, 19, and 20 under pre-AIA 35 U.S.C. Â§ 103(a) are withdrawn. Ans. 5-6. ANALYSIS Appellants' contentions are persuasive of reversible Examiner error in connection with the rejection of claims under 35 U.S.C. Â§ 112, second paragraph, as being indefinite. However, Appellants' contentions are unpersuasive with regard to the rejections of claims under 35 U.S.C. Â§Â§ 101 and 103(a). Except as noted, we adopt as our own ( 1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken (Final 5 Appeal 2018-005618 Application 13/434,507 Act. 4-16, 20-32) and (2) the reasons set forth by the Examiner in the Examiner's Answer in response to Appellants' Appeal Brief (Ans. 6-9) and concur with the conclusions reached by the Examiner. We highlight the following for emphasis. ANALYSIS Â§ 101 Section 101 defines patentable subject matter: "Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title." 35 U.S.C. Â§ 101. The U.S. Supreme Court, however, has "long held that this provision contains an important implicit exception" that "[l]aws of nature, natural phenomena, and abstract ideas are not patentable." Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012) (quotation omitted). "Eligibility under 35 U.S.C. Â§ 101 is a question of law, based on underlying facts." SAP America, Inc. v. InvestPic, LLC, 898 F.3d 1161, 1166 (Fed. Cir. 2018). To determine patentable subject matter, we undertake a two part test. "First, we determine whether the claims at issue are directed to one of those patent-ineligible concepts" of "laws of nature, natural phenomena, and abstract ideas." Alice Corp. v. CLS Bank Int'!, 573 U.S. 208,217 (2014). "The inquiry often is whether the claims are directed to 'a specific means or method' for improving technology or whether they are simply directed to an abstract end-result." RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1326 (Fed. Cir. 2017). A court must be cognizant that "all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural 6 Appeal 2018-005618 Application 13/434,507 phenomena, or abstract ideas" (Mayo, 566 U.S. at 71), and "describing the claims at ... a high level of abstraction and untethered from the language of the claims all but ensures that the exceptions to Â§ 101 swallow the rule." Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1337 (Fed. Cir. 2016). Instead, "the claims are considered in their entirety to ascertain whether their character as a whole is directed to excluded subject matter." Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015). If the claims are directed to an abstract idea or other ineligible concept, then we continue to the second step and "consider the elements of each claim both individually and 'as an ordered combination' to determine whether the additional elements 'transform the nature of the claim' into a patent-eligible application." Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S. at 79, 78). The Court describes the second step as a search for "an 'inventive concept' - i.e., 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."' Id. ( quoting Mayo, 566 U.S. at 72-73). The Office recently published revised guidance on the application of Â§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) ("Guidance"). Under that guidance, we look to whether the claim recites ( 1) a judicial exception, such as a law of nature or any of the following groupings of abstract ideas: (a) mathematical concepts, such as mathematical formulas; (b) certain methods of organizing human activity, such as a fundamental economic practice; or 7 Appeal 2018-005618 Application 13/434,507 ( c) mental processes, such as an observation or evaluation performed in the human mind; (2) any additional limitations that integrate the judicial exception into a practical application (see MPEP Â§ 2106.05(a)-(c), (e)-(h)); and (3) any additional limitations beyond the judicial exception that, alone or in combination, were not "well-understood, routine, conventional" in the field (see MPEP Â§ 2106.05(d)). See Guidance 52, 55, 56. Under the Guidance, if the claim does not recite a judicial exception, then it is eligible under Â§ 101, and no further analysis is necessary. Id. at 54. Similarly, under the Guidance, "if the claim as a whole integrates the recited judicial exception into a practical application of that exception," then no further analysis is necessary. Id. at 53, 54. The Examiner finds "the claims are directed to managing quality processing of electronic devices ... , an abstract idea." Final Act. 5. According to the Examiner "the claims recite steps for adjusting sampling thresholds for testing electronic devices in response to the testing" which "could be performed mentally or on paper." Id. at 5-6. The Examiner further finds "[t]he steps of exemplary claim 1 additionally include, 'establishing data communication,' 'testing ... for consumer private information,' 'removing ... the CPI stored on the plurality of electronic devices,' 'sampling [a] plurality of electronic devices,' 'automatically adjusting the sampling rates,' 'generating failure records,' and 'recording information."' Id. at 6. The Examiner finds these additional elements do not "amount to significantly more [than] the judicial exception because the claims do not recite an improvement to another technology or technical 8 Appeal 2018-005618 Application 13/434,507 field, nor do they recite an improvement to the functioning of the computer itself." Id. The Examiner finds the testing system "is merely used for an insignificant intrasolution data gathering step." Id. Appellants contend the claims are similar to the Example 1 "Abstract Idea Examples," published on January 27, 2015. (App. Br. 21)6 (hereinafter "Example l "). App. Br. 14-15. Appellants attempt to distinguish their claims over those found patent-ineligible in Myriad Genetics 7, contending, in that case, the "claims were ineligible because they involved comparing and analyzing naturally occurring DNA sequences, which is clearly not relevant to ... when, [ as in the present claims, the] observation is directed to non-naturally occurring items." Id. at 16. Appellants further contend the claims are not abstract because "the claims are confined to a particular useful application [ of removing consumer private information ( CPI) from a device] as opposed to being directed to the broad idea of simply acquiring and manipulating data." Id. at 17. Appellants additionally contend "claim 1 includes meaningful limitations such as testing devices, sampling data resulting from the tests, and making automatic adjustments of sampling rates in response to the results of the sampling. These additional features improve the technology involved in the quality processing of electronic devices by reducing processing time." Id. at 17-18. The Examiner responds, explaining, "Example 1 deals with a specific method for removing malicious code from an electronic communication. A method such as the method recited in Example 1 is clearly rooted in 6 Available at https://www.uspto.gov/sites/default/files/documents/ abstract idea examples.pdf. - - 7 Ass 'nfor Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013). 9 Appeal 2018-005618 Application 13/434,507 computer technology. In contrast, the present claims recite a highly generalized method for managing quality processing of electronic devices." Ans. 6. According to the Examiner "personal or private information does not inherently need to be on an electronic device to create a privacy concern [ and] can also be transmitted on paper or verbally. In contrast, malicious code [ as in Example 1] only has a malicious effect when it is on a computer." Id. at 7. The Examiner also disagrees with Appellants that "the testing step amounts to significantly more than an abstract idea [because] the testing is [itself] an abstract idea." Id. at 6-7. The Examiner further disagrees Myriad is inapposite, finding "both tests merely purport to identify the presence of a known thing. The present claims identify consumer private information, and the [Myriad] claims identify DNA sequences." Id. at 7. Finally, the Examiner disagrees "adjusting the sampling rate adds significantly more than the abstract idea of quality processing of device." Id. Instead, the Examiner finds "this step does not tie the abstract idea to computer technology. The step appears to reflect a business decision to reduce the amount of testing based on the observation that a number of devices are of satisfactory quality. Such a decision does not improve a technology or technical field." Id. Appellants reply, contending the Examiner misinterprets Example 1 as relying on the malicious characteristic of the data being eliminated, arguing instead "that it is simply electronic data to be removed thus transforming the electronic device in the process." Reply Br. 4. Appellants further argue the Examiner's finding that CPI may be written on paper or spoken aloud fails to consider "that sensitive data that may be inadvertently 10 Appeal 2018-005618 Application 13/434,507 distributed to unknown parties via a sale or salvage of a consumer electronic device - is inherently malicious in a way that handwritten and spoken CPI is not. This inherent maliciousness is due to the CPI being inextricably rooted in computer technology." Id. at 5. According to Appellants "[t]he sanitization of the electronic device does not fall into any of the judicial exceptions." Id. Appellants further contend Unlike, the Myriad Genetics case, Appellant[s'] process is transformative. Appellant[s'] claims are directed to identifying CPI and then removing CPI, thus transforming the electronic device in the process from one in which a consumer's sensitive information may be accessed and exploited to a sanitized electronic device which is safe to resell or salvage. Id. at 6. Appellants' contentions of error are unpersuasive for the following reasons. USPTO Step 2A, Prong 1 Claim 16 recites, in part, requirements to (a) establish data communication with a plurality of electronic devices for processing; (b) sample the plurality of electronic devices utilizing sampling rates to determine defects with the plurality of electronic devices, wherein the sampling comprises consumer private information (CPI) presence testing on each of the plurality of electronic devices; ( c) remove CPI stored on the plurality of electronic devices discovered during the CPI presence testing; ( d) automatically adjust the sampling rates in real-time in response to results of the sampling, wherein automatically adjusting the sampling rates comprises decreasing the sampling rates in response to sampling a designated number of the plurality of electronic devices without any of the 11 Appeal 2018-005618 Application 13/434,507 plurality of electronic devices failing the sampling; ( e) generate failure records in response to one or more of the plurality of electronic devices failing the sampling; and (f) record the one or more tickets including information associated with the processing of the plurality of electronic devices in one or more databases. Thus, steps (b), (d), (e) and (f) recite sampling devices under test to identify a targeted condition, i.e., the presence of CPI, decreasing the sampling rate when the targeted condition is unlikely to be present based on past sampling results, and recording the results. We agree with the Examiner these step may be implemented as mental processes (see Final Act. 6) including observation, evaluation, and judgment. For example, quality assurance personal might be tasked with inspecting ( e.g., observing or viewing) devices, such as cell phone, to identify personal data such as a prior owner's name or other identifying information written on or in the device. These activities would involve no more than observation of the devices and evaluation about whether personal information was visible or otherwise present. In response to not finding any personal information on some number of devices, the inspector might conclude it is unlikely that devices not yet processed would include personal information and decide to only sample future devices rather than inspect each one individually. This is the use of judgment, also a mental process. Step (a) of establishing communication with the devices being tested is merely data gathering. Data gathering limitations add nothing more than insignificant extra-solution activity to the mental process. See MPEP Â§ 2016.05(g); In re Bilski, 545 F.3d 943, 963 (Fed. Cir. 2008) (en bane), ajfd on other grounds sub nom. Bilski v. Kappas, 130 S. Ct. 3218 (2010) (Data gathering is a classic example of insignificant extra-solution activity.) 12 Appeal 2018-005618 Application 13/434,507 Furthermore, we agree with the Examiner that CPI could be stored on paper (Final Act. 2) and, as such, CPI removal step ( c) encompasses a mental process. CPI removal step ( c) may be further characterized as a "business process" (Final Act. 2), i.e., a sales activity involved in refurbishing and reselling goods by restoring the goods to saleable condition. Sales activities are commercial or legal interactions that are certain methods of organizing human behavior. Alternatively, CPI removal step ( c) is insignificant post- solution activity of deleting identified information to avoid improper transmission of the information to unauthorized persons, e.g., subsequent users of a refurbished device. Appellants' specification supports the Examiner's characterization of the claims as directed to managing quality processing of electronic devices (Final Act. 5) including the removal of CPI from a device (Final Act. 2). For example, Appellants describe their disclosure as "[a] system and computer implemented method for managing quality processing of electronic devices." Spec., Abstract. In particular, Appellants disclose "[i]t is imperative that any electronic device that has been returned [for repair, exchange, warranty issues, etc.] be cleared of all personal information, sensitive data, or other information linked to a previous user." Spec. ,i 2. Thus, consistent with the Specification, the claims recite managing quality processing of electronic devices by adjusting sampling thresholds used for testing electronic devices in response to prior testing outcomes and removing CPI identified by the testing, these concepts involving mental processes and certain methods of organizing human activity, both of which are abstract ideas. 13 Appeal 2018-005618 Application 13/434,507 USPTO Step 2A, Prong 2 We are unpersuaded the claims integrate the judicial exception into a practical application. The claims, although reciting specific actions for managing the quality processing of electronic devices by adjusting sampling thresholds for testing electronic devices in response to the testing and removing CPI, these additional limitations only generally link the use of the recited concept to a particular technological environment, e.g., computerized testing of electronic devices. 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. 3218 ("limiting an abstract idea to one field of use ... did not make the concept patentable"); MPEP Â§ 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). We are also not persuaded the removal of CPI integrates the abstract idea into a practical application because it is part of the underlying concept and does not otherwise embody any of the considerations described in MPEP Â§ 2106.05(a)-(c) and (e)-(h) such improving the operation of a computer or other technology. Instead, the claims automate a manual process of testing ( or, with respect to CPI, inspecting) products prior to being placed back into commerce and the hands of consumers by reversing any alterations to the original products, e.g., removing personalization information such as CPI. Merely adjusting the sample rate does not address a technological problem or result in an improvement to the implementing technology. Instead, adjusting the sample rate only affects the underling 14 Appeal 2018-005618 Application 13/434,507 concept of efficiently testing for CPI by decreasing a sample rate in response to an absence of CPI being found in previously tested devices. We are unpersuaded the claims are analogous to Example 1 for the reasons explained by the Examiner. Ans. 6. In particular, the malicious code of Example 1 adversely affects the operation of a computer such that its removal avoids degradation of a computer's performance. In contrast, the removal of information, whether CPI or other user sensitive information, does not affect the instrumentality used to remove the information, whether human or machine. We further agree with the Examiner "personal or private information does not inherently need to be on an electronic device to create a privacy concern." Final Act. 7. Therefore, we are not persuaded the removal of CPI renders the claims patent-eligible because we disagree with Appellants that "the claims are confined to a particular useful application as opposed to being directed to the broad idea of simply acquiring and manipulating data." See App. Br. 17. Thus, Example 1 is patent-eligible for reasons that are not applicable to Appellants' claims. We are also unpersuaded of the presence of any additional features that improve technology as argued by Appellants. See id. at 17-18. For example, providing the argued reduction in processing time by decreasing a sampling rate (id. at 17) is a result of observing the absence of devices failing the sampling and evaluating or making a judgment that it is not necessary to continue sampling at the present rate or, for that matter, at all (i.e., sampling may be discontinued). As explained above, observation, evaluation and judgment are mental processes, not technological improvements. Although the functions recited in Appellants' system claims may be performed faster or more efficiently with the recited processor and 15 Appeal 2018-005618 Application 13/434,507 memory, the resultant speed increase comes from a "general-purpose computer, rather than from the patented method itself," and does "not materially alter the patent eligibility of the claimed [invention]." FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1095 (Fed. Cir. 2016 ( citation omitted). Thus, the argued improvement is to the underlying concept of managing quality processing by testing for and removal of CPI from electronic devices not from any technological improvement. See Ans. 6-7. We are also unpersuaded by Appellants' transformation argument. Reply Br. 6. The claims do not require the transformation of matter but, at most, the transformation of information by its removal. See MPEP Â§ 2106.05 (c); Gottschalk, 409 U.S. at 71-72 (holding that a computer based algorithm that merely transforms data from one form to another is not patent-eligible); CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 13 7 5 (Fed. Cir. 2011) ("The mere manipulation or reorganization of data, however, does not satisfy the transformation prong."). Moreover, Appellants' Specification discloses implementations using "electronic components known in the art for both executing and storing the RQIL application, such as one or more processors and memories." Spec. ,-J 17. Use of a general-purpose processor and memory supports the determination the claimed invention does not improve technology, but is instead directed to a result or effect that itself is the abstract idea that is merely invoked using generic processes and machinery. See Enfish, 822 F.3d at 1335-36. Thus, disclosure of a generic processor or memory does 16 Appeal 2018-005618 Application 13/434,507 not save the claims from being directed to an abstract idea under Step 1 or constitute an inventive concept under Step 2 of the Alice/Mayo Framework. For the reasons discussed, we agree with the Examiner the claims do not include additional elements that integrate the judicial exception into a practical application because the additional elements do not recite: (i) an improvement to the functioning of a computer; (ii) an improvement to another technology or technical field; (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 Â§Â§ 2106.05(a)-(c), (e)-(h). Instead, any improvement is to the underlying idea of managing quality processing of electronic devices by adjusting sampling thresholds used for testing electronic devices in response to prior testing outcomes and removing CPI. Thus, claim 16 does not integrate the judicial exception into a practical application. USPTO Step 2B Finally, we agree with the Examiner that "[t]he claims require no more than generic hardware ('electronic devices' in claim 1 and a server in claims 11 and 16) and a 'testing system' used for an insignificant step of data input. The use of computer to acquire and manipulate data is well understood, routine, and conventional." Final Act. 6. As explained above, Appellants' Specification supports the Examiner's finding by disclosing 17 Appeal 2018-005618 Application 13/434,507 implementations using generic components. See Spec. ,i 17. As 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). We, therefore, determine that the limitations of claim 16 do not add significantly more to the patent-ineligible abstract idea. Accordingly, for the reasons discussed, the claims are directed to (i) mental processes and/or (ii) organizing human activity, i.e. managing personal behavior including sales activities. Both mental processes and managing personal behavior are identified in the Memorandum 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 claim 16 under 35 U.S.C. Â§ 101 and, for the same reasons, the rejection of independent claims 1 and 11, together with dependent claims 2-8, 12-15 and 18-21, which are not argued separately with particularity. Â§ 112 The claims stand rejected as indefinite under 35 U.S.C. Â§ 112, second paragraph, the Examiner finding "[i]t is unclear how to test for consumer private information at least because it is unclear what consumer private information would include or exclude. No method for testing for consumer private information is provided in the specification." Final Act. 7. 18 Appeal 2018-005618 Application 13/434,507 Appellants direct attention US 9,311,488, incorporated by reference into and thereby forming part of Appellants' Specification, contending the patent "clearly teaches specific aspects of testing for CPI." In particular, Appellants argue: [T]he descriptive listing provided in US Patent No. 9,311,488 defines the CPI as "sensitive information associated with the user or utilized by the user" and provides an extensive list of the types of information that would qualify as "sensitive information associated with the user or utilized by the user." Indeed, MPEP Â§ 2163(II)(A)(3)(a)(ii) provides that "a claimed genus may be satisfied through sufficient description of a representative number of species." Here, Appellant has not only defined the CPI genus as "sensitive information associated with the user or utilized by the user," but Appellant has also provided a sufficient description of a representative number of species of that genus (e.g., "names, phone numbers, addresses, e-mail addresses, IP addresses, social security numbers, databases, email addresses, bank accounts, contact lists, address books, passwords, [ and] usemames"). Accordingly, CPI is clearly defined such that one skilled in the art of managing quality processing of electronic devices is able to ascertain the metes and bounds of the term "CPI." App. Br. 19. The Examiner responds, finding Appellants fail to identify what are the argued specific aspects and that "Appellant[ s'] definition of CPI as 'sensitive information associated with the user or utilized by the user' is indefinite at least because it is relative." Ans. 8. The Examiner further finds "assuming, arguendo, that CPI is a definite term; the method for testing for CPI is still unclear." Id. Appellants reply, directing attention to US 9,311,488 for disclosing testing of CPI device 301 by management logic 302 including "data, 19 Appeal 2018-005618 Application 13/434,507 pictures, contacts, menu items, called log entries, user applications, and so forth, that do not conform with a desired state for that electronic device." Reply Br. 6-7 (citing US 9,311,488, col. 10, 11. 34-57). Further addressing the Examiner's Answer, Appellants again argue the disclosed examples of sensitive information associated with the user or utilized by the user are a sufficient description of CPI to satisfy the requirements of 35 U.S.C. Â§ 112, second paragraph. Reply Br. 7. We disagree with the Examiner's reasoning in making the rejection, i.e., that use of the term consumer private information renders the claims indefinite. In this context, "[i]t is of utmost importance that patents issue with definite claims that clearly and precisely inform persons skilled in the art of the boundaries of protected subject matter." Manual of Patent Examining Procedure (MPEP) Â§ 2173 (9th ed. Rev. 07.2015, Nov. 2015). Language in a claim is unclear if it is "ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention ... ," In re Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014), or ifit is "is amenable to two or more plausible claim constructions ... ," Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential); see also Ex parte McAward, Appeal No. 2015-006416, 2017 WL 3669566 (PTAB 2017) (precedential) ( discussing the test for indefiniteness during prosecution and affirming Miyazaki's continued precedential status (at *2, n.3)). However, "[t]he requirement, applied to the real world of modem technology, does not contemplate in every case a verbal precision of the kind found in mathematics." Packard, 751 F.3d at 1313. Furthermore "[b ]readth of a claim is not to be equated with indefiniteness." MPEP Â§ 2173.04, citing In re Miller, 441 F.2d 689, 693 (CCPA 1971). 20 Appeal 2018-005618 Application 13/434,507 We agree with Appellants the rejection is improper for the reasons set forth in the Briefs (App. Br. 18-19; Reply Br. 6-7). In particular, the description of CPI as sensitive information associated with the user or utilized by the user together with the given examples are sufficient such that a person of ordinary skill in the art would understand with reasonable certainty the scope of the disputed limitation. See Packard, 751 F. 3d at 1313. We are also unpersuaded by the Examiner's conclusion the claims are rendered indefinite because "the method for testing for CPI is ... unclear." The Examiner has rejected the claim under 35 U.S.C. Â§ 112, second paragraph, not first paragraph. Thus, the basis for the rejection is that the claim is indefinite and not for a failure to provide a written description enabling a skilled person to make and use the invention including a best mode. See 35 U.S.C. Â§ 112, first paragraph.8 Therefore, for the reasons discussed above, we disagree the claims are indefinite. Furthermore, to the extent the Examiner alleges the method for testing CPI is unclear, we disagree. As explained by Appellants, by virtue of incorporation by reference of US 9,311,488, Appellants' Specification discloses testing of CPI device 301 by management logic 302. The Examiner provides insufficient evidence or argument that one skilled in the art would have not understood how to search for the disclosed types of information including, for example, "names, phone numbers, addresses, e-mail addresses, IP 8 The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention. 21 Appeal 2018-005618 Application 13/434,507 addresses, social security numbers, databases, email addresses, bank accounts, contact lists, address books, passwords, [ and] usemames." See App. Br. 19; US Patent No. 9,311,488, col. 3, 11. 21-27. Accordingly, we do not sustain theÂ§ 112, second paragraph, rejection of claims 1-8, 11-16, and 18-21 under 35 U.S.C. Â§ 112, second paragraph. Â§ 103(a) In connection with adjusting limitation (1 ), the Examiner finds Kolman's "test sequencing logic [including] the ability to specify, on a test by test basis, the pass threshold, the normal sampling interval, and the bypass sampling interval" together with Kolman' s disclosure of a bypassed test that "may operationally be reactivated on a sampling basis at some desired frequency, so that it is still applied periodically" teaches automatically adjusting sampling rates in real-time response to results of sampling. Final Act. 9 (citing Kolman ,i,i 49, 54-55). The Examiner finds Izikson's dynamic sampling scheme that adjusts sampling based on how a fabrication process is behaving such that, "[i]n processes with low variations, fewer wafers per lot, fewer measurements per wafer, etc. can be performed by selecting [a] reduced sampling scheme" teaches or suggests sampling rate decrease limitation (2) reciting decreasing the sampling rates in response to sampling a designated number of the plurality of electronic devices without any of the plurality of electronic devices failing the sampling. Id. at 10 ( citing Izikson ,i 63). Appellants contend the rejections of the independent claims under 35 U.S.C. Â§ 103(a) are improper, arguing: 1. "There is no discussion in Kolman of automatically adjusting the sampling rates, as recited by [limitation (l)]." App. Br. 21. 22 Appeal 2018-005618 Application 13/434,507 2. "Izikson discloses assigning a higher or a lower sampling rate to [ different semiconductor fabrication] processes" based on historical results for respective processes, not in response to sampling a designated number of the plurality of electronic devices without any of the plurality of electronic devices failing the sampling as required by limitation (2). Id. at 22. The Examiner responds to contention 1, explaining In ,i [0049] and [0054]-[0055]; Kolman describes adjustment of a Bypass Interval that indicates how often the test should be executed. This is also considered to be the sampling interval. See Script 3. In ,i [0055]; the bypass sampling interval is adjusted because a failure has not been detected in a threshold number of devices. This is an explicit teaching of an adjustment made in sampling interval because a pass threshold has been reached. Ans. 8-9. The Examiner responds to contention 2, explaining In iJ[0063]; Izikson discloses that excellent performance decreases the number of measurements. This effectively teaches the first part of the limitation, "wherein automatically adjusting the sampling rates comprises decreasing the sampling rates in response to sampling a designated number of the plurality of electronic devices without any of the plurality of electronic devices failing the sampling." Emphasis added. Id. at 9. Appellants reply, arguing Kolman's "sampling intervals are all predetermined on a tests-by-test basis," not automatically adjusted in "real- time during testing in response to the sampling, as claimed by Appellant[s]." Reply Br. 8. In connection with limitation (2), Appellants reply that Izikson discloses "assigning different sampling rates when testing features are generated by different processes," not the automatic assignment of a sampling scheme "in response to sampling a designated number of the 23 Appeal 2018-005618 Application 13/434,507 plurality of electronic devices without any of the plurality of electronic devices failing the sampling" as required. Id. Appellant's contentions are unpersuasive of reversible Examiner error. In connection with Kolman, we disagree adjusting a sampling interval on a test-by-test basis means the adjustment is not performed in real-time. To the contrary, Kolman discloses "[a] given bypassed test may optionally be reactivated on a sampling basis at some desired frequency, so that it is still applied periodically." Kolman ,i 50. Kolman further discloses "embodiments of the invention employ test sequencing logic that analyzes test performance in real time and allows bypassing of tests which, based on their test performance history, add little or no useful diagnostic knowledge to the testing of a set of devices under test." Kolman ,i 42 ( emphasis added). In contrast, Appellants fail to provide a definition for or explanation of what is required by the argued real-time language of the claims that is not taught or suggested by Kolman's periodic adjustment of sampling frequency and "realtime" test performance analysis. We are also unpersuaded Izikson is deficient. Although arguing Izikson adjusts on a process-by-process basis, Appellants fail to explain why such adjustment using a reduced sampling scheme fails to teach decreasing a sampling rate. Appellants' contentions are further unpersuasive as an improper attack on the references individually where the rejection is based on the combination of references. See In re Keller, 642 F.2d 413,426 (CCP A 1981 ); In re Merck & Co., Inc., 800 F .2d 1091, 1097 (Fed. Cir. 1986). In particular, the Examiner also relies on Kolman for teaching automatically adjusting sample rates such that the combination of Kolman's 24 Appeal 2018-005618 Application 13/434,507 real-time adjustment and Izikson's decreased sampling teaches or suggests the disputed limitation (2). For the reasons discussed above, Appellants' contentions of error in connection with the rejection of independent claim 16 under 35 U.S.C. Â§ 103(a) (App. Br. 20-23) are unpersuasive of Examiner error. Appellants arguments in connection with the rejection of independent claim 1 (App. Br. 23-26) and independent claim 11 (App. Br. 29-31) are substantially the same as those presented in connection with independent claim 16 and are unpersuasive for the same reasons. Dependent claims 2, 4, 5, 7, 8, 12-15, 18, and 21 are argued on the basis of their respective base independent claim and thereby fall therewith. Accordingly, we sustain the rejection of claims 1, 2, 4, 5, 7, 8, 11-16, 18, and 21 under 35 U.S.C. Â§ 103(a). DECISION We affirm the Examiner's decision to reject claims 1-8, 11-16, and 18-21 under 35 U.S.C. Â§ 101. We reverse the Examiner's decision to reject claims 1-8, 11-16, and 18-21 under 35 U.S.C. Â§ 112, second paragraph. We affirm the Examiner's decision to reject claims 1, 2, 4, 5, 7, 8, 11- 16, 18, and 21 under 35 U.S.C. Â§ 103(a). Because we affirm at least one ground of rejection with respect to each claim on appeal, we affirm the Examiner's decision rejecting claims 1-8, 11-16, and 18-21. See 37 C.F.R. Â§ 41.50(a)(l). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ l.136(a)(l)(iv). See 37 C.F.R. Â§ 41.50(Â±). AFFIRMED 25