Gregg D. Givens et al.

Patent Trials and Appeals Board

May 11, 2020

2018005723 (P.T.A.B. May. 11, 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.
13/124,280 07/07/2011 Gregg D. Givens 5218-178 5031
20792 7590 05/11/2020
MYERS BIGEL, P.A.
PO BOX 37428
RALEIGH, NC 27627
EXAMINER
COLEMAN, CHARLES P.
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
05/11/2020 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):
uspto@myersbigel.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte GREGG D. GIVENS and JIANCHU YAO
____________________

Appeal 2018-005723
Application 13/124,280
Technology Center 3600
____________________

Before ROBERT E. NAPPI, JOHNNY A. KUMAR, and
JOHN P. PINKERTON, Administrative Patent Judges.

PINKERTON, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1–3, 5–23, 25–30, 32, and 36, which are all of the
claims pending in the application. Claims 4, 24, 31, and 33–35 are canceled.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 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 East Carolina
University. Appeal Br. 3.
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STATEMENT OF THE CASE
Introduction
Appellant generally describes the disclosed and claimed invention as
follows:
The systems, methods and associated devices performing
diagnostic hearing tests which use a distributed, client-server
architecture and the Internet to allow interaction between a test
administration site and one or a plurality of remote patient sites.
The test can be administered by an audiologist or clinician at a
site remote from the patient, in a manner, which can allow
interaction between the user and the clinician during at least a
portion of the administration of the test. The diagnostic hearing
tests can be performed such that they meet standardized
guidelines such as ANSI requirements or certification standards
and can include distortion product emission level measurements
or middle ear compliance measurements.
Abstract.2
Claims 1, 16, and 36 are independent. Claim 1 is a method claim, and
claims 16 and 36 are systems claims. Claim 16 is representative of the
subject matter on appeal and is reproduced below (with paragraph notations
added):
16. A telehearing system comprising:
(i) at least one web server in communication with a global
computer network configured to provide a web-based service
that hosts a telehearing diagnostic testing system, wherein the at
least one web server comprises a web server with web

2 Our Decision refers to the Final Office Action mailed Jan. 31, 2017
(“Final Act.”), Appellant’s Appeal Brief filed Sept. 27, 2017 (“Appeal Br.”)
and Reply Brief filed May 7, 2018 (“Reply Br.”), the Examiner’s Answer
mailed Mar. 7, 2018 (“Ans.”), and the original Specification filed Apr. 14,
2011 (“Spec.”).

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application functions that appear at portal sites of web clients
associated with different users;
(ii) a plurality of web clients in different physical
locations in communication with the at least one server, the
plurality of clients including different users with different access
levels including a plurality of audiologists at different
geographical locations, wherein the at least one web server with
the web application functions can display a different web portal
configuration with associated permissible actions and/or
different web pages depending on a specific user and/or user
type; and
(iii) a plurality of portable test adapters, each configured
to (a) connect a respective patient user to the global computer
network at a patient site, (b) convert data from an audiometer at
the patient site and transmit the converted data over the global
computer network to the web server then to a web client
associated with a remote audiologist, and (c) receive operational
command data from the web client associated with the remote
audiologist via the web server to control operation of the
respective audiometer at the patient site,
(iv) wherein the system is configured to electronically
select one of a plurality of registered audiologists to perform a
hearing test for a patient based on patient geographic location
and/or requested test times, and wherein the web-based service
is configured to electronically select an audiologist only if the
system confirms that a registered audiologist has a current
medical license for a state and/or country location where the
patient is located.
Appeal Br. 35–36 (Claims App.).
Rejection on Appeal
Claims 1–3, 5–23, 25–30, 32, and 36 stand rejected under 35 U.S.C.
§ 101 as being directed to unpatentable subject matter, i.e., to a judicial
exception without significantly more. Final Act. 2–5.

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ANALYSIS
A. Examiner’s Findings and Conclusions,
and Appellant’s Contentions
The Examiner finds that claims 1–3, 5–23, 25–30, 32, and 36 are
directed generally to the “abstract idea of ‘methods for internet based
diagnostic hearing assessment.’” Ans. 3; see also Final Act. 2. In particular,
the Examiner finds that claims 1, 16, and 36 are directed to information
processing, which is “a fundamental building block of human ingenuity”
and, therefore, an abstract idea. Ans. 4. The Examiner also finds that the
steps of “allowing patient and audiologist to communicate, accepting
electronic input, allowing multiple concurrent tests to be carried out,
selecting a proper test communication[,] . . . control protocol based on
known information, and electronically selecting a licensed audiologist”
correspond to an abstract idea, such as “an idea of itself” in Alice,3 and are
similar to the concepts of “collecting information, analyzing it, and
displaying certain results of the collection and analysis,” which were found
to be an abstract idea in Electric Power Group.4 Id. at 4, 6. The Examiner
further finds that the claims “do not include additional elements that are
sufficient to amount to significantly more” than the abstract idea and that the
additional elements amount to no more than “generic computer components
that serve to merely link the abstract idea to a particular technological
environment . . . performing routine and conventional activities that are well
understood in the healthcare industry.” Id. at 5; Final Act. 3. Moreover, the
Examiner finds that Appellant has not provided sufficient evidence that the

3 Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014).
4 Elec. Power Grp. LLC v. Alstom S.A., 830 F.3d 1350, 1355–56 (Fed. Cir.
2016).
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additional claim elements “are an improvement to the functioning of the
computer itself” or provide a technical solution to a problem rooted in
computer technology. Ans. 7–10.
Appellant contends that the Examiner’s rejection under § 101 is
erroneous and argues that claim 16 is not directed to an abstract idea because
it recites an improvement to a technological process and solutions particular
to a networked environment, and that in any event, claim 16 recites
significantly more than an abstract idea because the claimed “test adapters”
and “audiometers” are not generic computer components. Appeal Br.
14–22; Reply Br. 3–13. Appellant asserts that its arguments presented with
respect to claim 16 apply similarly to claims 1 and 36. Appeal Br. 22–28.
Appellant further argues that dependent claims 2, 5, 11, 13, 17–20, and 25
recite significantly more than an abstract idea. Appeal Br. 28–30.
In particular, Appellant argues that claim 16 is not directed to an
abstract idea (including “methods for internet based diagnostic hearing
assessment,” “an idea of itself,” and “information processing,” as found by
the Examiner) because it recites a portable test adapter (at the patient site)
“configured to receive operational command data from the web client
associated with the remote audiologist via the web server to control
operation of the respective audiometer at the patient site” “to facilitate []
conducting [] concurrent hearing tests.” Reply Br. 5–7; see also Appeal Br.
14–19. Citing Enfish5 and McRO,6 Appellant also argues that claim 16 is not
directed to an abstract idea because it recites an improvement to a

5 Enfish, LLC, v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016).
6 McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1313 (Fed.
Cir. 2016).
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technological process in which a portable test adapter controls operation of
an audiometer. Appeal Br. 17–18. Citing DDR Holdings,7 Appellant argues
that claim 16 recites “specific network-related infrastructure” to permit
remote hearing testing and multiple hearing tests concurrently. Appeal Br.
18–19; Reply Br. 9–10. Appellant further argues that claim 16 recites
significantly more than an abstract idea because it recites a portable test
adapter, which is “a specifically designed piece of equipment,” and the
Examiner’s finding that it is a “generic computer” is unsupported. Appeal
Br. 19–22 (citing Spec. ¶ 49 describing two configurations of portable test
adapter); Reply Br. 10–13 (citing Berkheimer v. HP Inc., 881 F.3d 1360
(Fed. Cir. 2018)). Moreover, Appellant argues that paragraph 25 of the
Specification does not describe conventional computer hardware, including a
conventional processor, for performing the claimed functions, as the
Examiner finds, and that even if the elements pointed to by the Examiner
existed in the Specification, “the fact that conventional technology is used to
perform a solution[] does not make the solution conventional.” Appeal Br.
21–22 (citing BASCOM Glob. Internet Servs. Inc. v. AT&T Mobility LLC,
827 F.3d 1341, 1350 (Fed. Cir. 2016)).
B. Applicable Law
“Whether a claim is drawn to patent-eligible subject matter is an issue
of law that we review de novo.” SiRF Tech., Inc. v. Int’l Trade Comm’n,
601 F.3d 1319, 1331 (Fed. Cir. 2010).
Section 101 of the Patent Act provides that “any new and useful
process, machine, manufacture, or composition of matter, or any new and

7 DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir.
2014).
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useful improvement thereof” is patent eligible. 35 U.S.C. § 101. However,
the Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit
exceptions: “[l]aws of nature, natural phenomena, and abstract ideas are not
patentable.” Alice, 573 U.S. at 216 (quoting Ass’n for Molecular Pathology
v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)). To determine whether
a claim falls within one of these excluded categories, the Court has set out a
two-part framework. The framework requires us first to consider whether
the claim is “directed to one of those patent-ineligible concepts.” Alice, 573
U.S. at 217. If so, we then examine “the elements of [the] 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 Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 78, 79 (2012)). That is, we examine
the claim for an “inventive concept,” “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 217–18 (alteration in original) (quoting Mayo, 566 U.S. at 72–
73).
In January 2019, the Patent Office issued guidance about this
framework. See 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (Jan. 7, 2019) (“Revised Guidance”).8 Under the Revised
Guidance, to decide whether a claim is directed to an abstract idea, we
evaluate whether the claim (1) recites one of the abstract ideas listed in the

8 See also USPTO, October 2019 Patent Eligibility Guidance Update (Oct.
17, 2019), https://www.uspto.gov/sites/default/files/documents/
peg_oct_2019_update.pdf.
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Revised Guidance (“Prong One”) and (2) fails to integrate the recited
abstract idea into a practical application (“Prong Two”). See Revised
Guidance, 84 Fed. Reg. at 51, 54. If the claim is directed to an abstract idea,
as noted above, we then determine whether the claim has an inventive
concept. The Revised Guidance explains that when making this
determination, we should consider whether the additional claim elements
add “a specific limitation or combination of limitations that are not well-
understood, routine, conventional activity in the field” or “simply append[]
well-understood, routine, conventional activities previously known to the
industry, specified at a high level of generality.” Revised Guidance, 84 Fed.
Reg. at 56.
With these principles in mind, we first analyze whether claim 16 is
directed to an abstract idea.9
C. Abstract Idea
1. USPTO Step 2A, Prong One
Beginning with Step 2A, Prong One, of the Revised Guidance,10 we
must determine “whether the claims at issue are directed to one of those
patent-ineligible concepts,” including the abstract ideas enumerated in the

9 Although Appellant argues claim 1 in section III, and claim 36 in section
IV, of the Appeal Brief, Appellant states that most of the arguments
presented with respect to claim 16 “apply similarly” with respect to claims 1
and 36 and that the reasons for which claims 1 and 36 are not abstract are
presented with reference to the arguments presented with respect to claim
16. See Appeal Br. 22, 25. Thus, we decide the appeal based on
representative claim 16. See 37 C.F.R. § 41.37(c)(1)(iv).
10 The Guidance refers to “Step One” as determining whether the claimed
subject matter falls within the four statutory categories identified by 35
U.S.C. § 101: process, machine, manufacture, or composition of matter.
This step is not at issue in this case.
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Revised Guidance. Alice, 573 U.S. at 217. One of the subject matter
groupings identified as an abstract idea in the Revised Guidance is “[c]ertain
methods of organizing human activity— . . . managing personal behavior or
relationships or interactions between people (including . . . following rules
or instructions).” Revised Guidance, 84 Fed. Reg. at 52.
For our prong one analysis, we set aside, for consideration below, the
technological elements recited in claim 16: “at least one web server in
communication with a global computer network,” as recited in limitation (i);
“the at least one web server comprises a web server with web application
functions that appear at portal sites of web clients associated with different
users,” as recited in limitation (i); “a plurality of web clients in different
physical locations in communication with the at least one server,” as recited
in limitation (ii); and, “portable test adapters” and “audiometer,” as recited
in limitation (iii).
The preamble of claim 16 recites a “telehearing system,” and
limitation (i) recites “a telehearing diagnostic testing system.” Limitation
(ii) recites “a plurality of audiologists at different geographical locations.”
Limitation (iii) recites (a) “connect a respective patient user . . . at a patient
site,” (b) “convert data . . . at the patient site” and “transmit the converted
data . . . to . . . a remote audiologist,” and (c) “receive operational command
data . . . to control operation . . . at the patient site.” Limitation (iv) recites
that “the system is configured to electronically select one of a plurality of
registered audiologists to perform a hearing test for a patient based on
patient geographic location and/or requested test times, and . . .
electronically select an audiologist only if the system confirms that a
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registered audiologist has a current medical license for a state and/or country
location where the patient is located.”
We determine that claim 16 focuses on performing diagnostic hearing
tests on a patient by an audiologist located at a remote location from the
patient, which constitutes managing interactions between people (including
. . . following rules or instructions), and is, therefore, a method of organizing
human activity. See Revised Guidance, 84 Fed. Reg. at 52. In that regard,
the operations of “connect” a patient at a patient site, “convert data from an
audiometer at the patient site and transmit the converted data . . . to . . . a
remote audiologist,” and “receive operational command data . . . to control
operation . . . at the patient site,” as set forth in limitations (iii)(a), (b), and
(c), respectively, are merely receiving, analyzing, manipulating, and
conveying data. Federal Circuit cases have found limitations that simply
retrieve, store, manipulate, and convey data, like those in claim 16, are
abstract. See, e.g., Elec. Power Grp. LLC v. Alstom S.A., 830 F.3d 1350,
1353 (Fed. Cir. 2016) (collection, manipulation, and display of data);
Content Extraction and Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n,
776 F.3d 1343, 1347 (Fed. Cir. 2014) (“collecting data, . . . recognizing
certain data within the collected data set, and . . . storing that recognized data
in a memory.”); see also Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of
Can., 771 F. Supp. 2d 1054, 1066 (E.D. Mo. 2011), aff’d, 687 F.3d at 1266
(explaining that “storing, retrieving, and providing data . . . are
inconsequential data gathering and insignificant post solution activity”).
Limitation (iv) focuses on the system being configured to
“electronically select one of a plurality of registered audiologists to perform
a hearing test for a patient based on patient geographic location and/or
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requested test times, and . . . electronically select an audiologist only if the
system confirms that a registered audiologist has a current medical license
for a state and/or country location where the patient is located.” We
determine that limitation (iv) describes a concept that can be performed in
the human mind or practicably with pen and paper, and, therefore, falls into
the mental processes category of abstract ideas. See 2019 Revised
Guidance, 84 Fed. Reg. at 52. Knowing the patient’s geographic location
and requested test time, a person could mentally select an audiologist to
perform the test from an identified group of audiologists licensed in the
geographic location of the patient. Although limitation (iv) recites the
system is configured to “electronically” select an audiologist, we determine
this limitation is nevertheless in the mental processes category. The Revised
Guidance explains that “[m]ental processes” include acts that people can
perform in their minds or using pen and paper, even if the claim recites that
a generic computer component performs the acts. See Revised Guidance, 84
Fed. Reg. at 52 n.14 (“If a claim, under its broadest reasonable
interpretation, covers performance in the mind but for the recitation of
generic computer components, then it is still in the mental processes
category unless the claim cannot practically be performed in the mind.”)
(emphasis omitted); see also Intellectual Ventures I LLC v. Symantec Corp.,
838 F.3d 1307, 1318 (Fed. Cir. 2016) (“[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.”); Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed.
Cir. 2016) (characterizing collecting information, analyzing information by
steps people go through in their minds, or by mathematical algorithms, and
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presenting the results of collecting and analyzing information, without more,
as matters within the realm of abstract ideas); CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1372, 1375–76 (Fed. Cir. 2011) (holding
that the incidental use of “computer” or “computer readable medium” does
not make a claim otherwise directed to process that “can be performed in the
human mind, or by a human using a pen and paper” patent eligible,
explaining that “purely mental processes can be unpatentable, even when
performed by a computer”).
We note that merely combining several abstract ideas does not render
the combination any less abstract. RecogniCorp, LLC v. Nintendo Co., Ltd.,
855 F.3d 1322, 1327 (Fed. Cir. 2017) (“Adding one abstract idea . . . to
another abstract idea . . . does not render the claim non-abstract.”); see also
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1094 (Fed. Cir.
2016) (determining the pending claims were directed to a combination of
abstract ideas).
Accordingly, we conclude that claim 16 recites the abstract idea of
organizing human activity by performing diagnostic hearing tests on a
patient by an audiologist located at a remote location from the patient and
mental processes.
2. USPTO Step 2A, Prong Two
Because we determine that claim 16 recites an abstract idea, we turn
to prong two of the first step of the Alice analysis and consider whether
claim 1 integrates this abstract idea into a practical application. See Revised
Guidance, 84 Fed. Reg. at 51. In doing so, we consider whether there are
any additional elements beyond the abstract idea that, individually or in
combination, “integrate the [abstract idea] into a practical application, using
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one or more of the considerations laid out by the Supreme Court and the
Federal Circuit.”11 Revised Guidance, 84 Fed. Reg. at 54–55.
As discussed supra, the Examiner finds that the claims “do not
include additional elements that are sufficient to amount to significantly
more” than the abstract idea and that the additional elements amount to no
more than generic computer components linking the abstract idea to a
particular technological environment and performing routine and
conventional activities that are well understood in the healthcare industry.
Ans. 5; Final Act. 3. The Examiner also finds that Appellant has not
provided sufficient evidence that the additional claim elements “are an
improvement to the functioning of the computer itself” or provide a
technical solution to a problem rooted in computer technology. Ans. 7–10.
As also discussed supra, Appellant argues that claim 16 is not directed
to an abstract idea because it recites “an improvement to a technological
process” in which a portable test adapter controls operation of an
audiometer. Appeal Br. 17–18. Appellant also argues that claim 16 recites
“specific network-related infrastructure” to permit remote hearing testing
and multiple hearing tests concurrently. Appeal Br. 18–19; Reply Br. 9–10.
In particular, Appellant asserts that “[a]t least the test adapter recited in
[c]laim 16 provides the translation necessary to convert an operational
command received over a global computer network from a remote operator
into a control operation for an audiometer.” Reply Br. 10.

11 We acknowledge that some of these considerations may be properly
evaluated under step 2 of Alice (step 2B of the Revised Guidance). Solely
for purposes of maintaining consistent treatment within the Office, we
evaluate it under step 1 of Alice (step 2A, prong two, of the Revised
Guidance). See Revised Guidance, 84 Fed. Reg. at 54–55.
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We are not persuaded by Appellant’s arguments. First, we are not
persuaded by Appellant’s arguments that claim 1 recites a technological
improvement. Appellant’s arguments are conclusory and fail to specify how
claim 16 allegedly provides any specific improvement to the technological
elements recited in claim 16. In particular, Appellant has failed to
demonstrate that claim 16 requires any specialized computer hardware or
other inventive computer components, i.e., a particular machine, that the
claimed invention is performed using other than generic computer
components, or that the claim results in the improvement of a computer or
the functioning of a computer or its components. Although Appellant argues
that claim 16 recites a portable test adapter that controls operation of an
audiometer, the portable test adapter and audiometer are recited at a high
level of generality without any particular or specialized features or
modifications. As discussed, limitation (iii) of claim 16 broadly recites a
portable test adapter that is “configured to” (a) “connect” a patient at a
patient site, (b) “convert data from an audiometer at the patient site and
transmit the converted data . . . to . . . a remote audiologist,” and (c) “receive
operational command data . . . to control operation . . . at the patient site,”
and does not recite any technological improvements to the portable test
adapter or the audiometer.
Appellant has also not identified or described any technological
improvement to the Internet or network-related infrastructure required by
claim 16 or to any hardware or software components of the portable test
adapter “to convert an operational command received over a global
computer network from a remote operator into a control operation for an
audiometer.” See Reply Br. 9–10. Nor has Appellant identified any
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disclosure in the Specification, as discussed infra, of any inventive
techniques or specialized computer components or software required by
claim 16.
We also are not persuaded by Appellant’s arguments that the Federal
Circuit’s holdings in DDR, Enfish, BASCOM, and McRO support a
conclusion that claim 16 is patent eligible. We agree with Appellant that for
the findings in these cases to be applicable here with respect to patent
eligibility, it is not necessary for the present claims to “mirror exactly both
the format and technology area” of these cases.12 See Reply Br. 13.
However, these cases are distinguishable because unlike claim 16 here, the
claims in these cases were directed to specific technological improvements
or were rooted in computer technology.
For example, in DDR, instead of a computer network operating in its
normal, expected manner by sending a website visitor to a third-party
website apparently connected with a clicked advertisement, the claimed
invention generated and directed the visitor to a hybrid page that presented
(1) product information from the third party, and (2) visual “look and feel”
elements from the host website. DDR, 773 F.3d at 1258–59. Given this
particular Internet-based solution, the court held that the claimed invention
did not merely use the Internet to perform a business practice known from
the pre-Internet world, but rather was necessarily rooted in computer
technology to overcome a problem specifically arising in computer
networks. Id. at 1257. That is not the case here. As noted previously, claim

12 We note Appellant does not state the Examiner takes this position, but
argues the point “to the extent” the Examiner is making this assertion.
Reply Br. 13. However, we do not interpret the Examiner’s findings in this
manner to any extent. See Ans. 8–10.
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16 merely uses the existing Internet and inter-related infrastructure, as well
as portable test adapters and audiometers without any recited technological
improvements, to perform hearing tests controlled by an audiologist located
at a remote location from the patient. In short, this operation is not rooted in
computer technology to overcome a problem arising in computer networks,
but is directed to organizing human activity by performing diagnostic
hearing tests remotely—an abstract idea.
In Enfish, the claims were “specifically directed to a self-referential
table for a computer database.” Enfish, 822 F.3d at 1337. The claims were,
therefore, “directed to a specific improvement to the way computers
operate,” rather than an abstract idea implemented on a computer. Id. at
1336. In contrast, claim 16 here is not directed to an improvement in the
way computers operate, nor has Appellant identified any technical advance
or improvement to or specialized computer components.
In McRO, the Federal Circuit concluded that the claim, when
considered as a whole, was directed to a “technological improvement over
the existing, manual 3-D animation techniques” and “uses the limited rules
in a process specifically designed to achieve an improved technological
result in conventional industry practice.” McRO, 837 F.3d at 1316 (citation
omitted). Specifically, the Federal Circuit found that the claimed rules allow
computers to produce accurate and realistic lip synchronization and facial
expressions in animated characters that previously could only be produced
by human animators; and the rules are limiting because they define morph
weight sets as a function of phoneme sub-sequences. Id. at 1313. Here,
Appellant has not identified any technical improvement that is attributable to
the claimed invention. Although claim 16 may permit remote hearing
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testing and multiple hearing tests concurrently, it does not achieve an
improved technological result. We see no parallel between the limiting rules
described in McRO and a portable test adapter configured to (a) “connect” a
patient at a patient site, (b) “convert data from an audiometer at the patient
site and transmit the converted data . . . to . . . a remote audiologist,” and (c)
“receive operational command data . . . to control operation . . . at the patient
site,” as recited in claim 16.
In regard to BASCOM, we note initially the claims were not found
patent eligible based on the substance, but rather because Appellant did not
provide sufficient evidence to support a Rule 12(b)(6) motion to dismiss in
which facts are presumed in the non-movant’s favor. The key fact in
BASCOM was the presence of a structural change in “installation of a
filtering tool at a specific location, remote from the end-users, with
customizable filtering features specific to each end user. This design gives
the filtering tool both the benefits of a filter on a local computer and the
benefits of a filter on the ISP server.” BASCOM, 827 F.3d at 1350. Unlike
the claims in BASCOM, claim 16 does not recite a non-conventional or non-
generic arrangement of components that provide such a structural change
and benefit as in BASCOM.
Thus, claim 16 does not recite a technological improvement to
computers, computer components or software, network-related infrastructure
(including web servers and interfaces), portable test adapters, or
audiometers. Rather, the computers, network-related infrastructure, test
adapters, and audiometers are readily available computing and networking
elements performing their available basic functions as tools in implementing
the abstract idea of performing hearing tests remotely. Accordingly, we
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determine that the additional elements recited in claim 16 do not integrate
the recited abstract idea into a practical application. See SAP Am., Inc. v.
InvestPic, LLC, 898 F.3d 1161, 1169–70 (Fed. Cir. 2018); Affinity Labs of
Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1262 (Fed. Cir. 2016) (“In this
case, the claims are directed not to an improvement in cellular telephones
but simply to the use of cellular telephones as tools in the aid of a process
focused on an abstract idea. That is not enough to constitute patentable
subject matter.”); Revised Guidance, 84 Fed. Reg. at 55 (explaining that
courts have identified “merely us[ing] a computer as a tool to perform an
abstract idea” as an example of when a judicial exception may not have been
integrated into a practical application). Further, consistent with the
Examiner’s findings (see Ans. 6–7), and in view of Appellant’s
Specification (see e.g., paragraphs 38, 39–40, 43–44, 47–49, 52–53, 56–57,
66, 75), we conclude that claim 16 does not integrate the judicial exception
into a practical application, and thus is directed to the judicial exception
itself. In particular, we determine claim 16 does 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 § 2106.05(a)–(c), (e)–(h).
3. USPTO Step 2B — Inventive Concept
Finally, we consider whether claim 16 has an inventive concept, that
is, whether any additional claim elements “‘transform the nature of the
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claim’ into a patent-eligible application.” Alice, 573 U.S. at 217 (quoting
Mayo, 566 U.S. at 78, 79). This requires us to evaluate whether the
additional claim elements add “a specific limitation or combination of
limitations that are not well-understood, routine, conventional activity in the
field” or “simply append[] well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality.”
Revised Guidance, 84 Fed. Reg. at 56.
As stated supra, the Examiner finds that the claims “do not include
additional elements that are sufficient to amount to significantly more” than
the abstract idea and that the additional elements amount to no more than
“generic computer components that serve to merely link the abstract idea to
a particular technological environment . . . performing routine and
conventional activities that are well understood in the healthcare industry.”
Ans. 5; Final Act. 3. The Examiner also finds that viewing the additional
elements as an ordered combination “adds nothing that is not already present
when looking at the elements taken individually.” Ans. 5–6. The Examiner
further finds that each step of the “claimed system/method does no more
than require a generic computer to [per]form a generic computer function.”
Id. at 6–7.
Appellant argues that claim 16 recites significantly more than an
abstract idea because it recites a portable test adapter, which is “a
specifically designed piece of equipment,” and the Examiner’s finding that it
is a “generic computer” is unsupported. Appeal Br. 19–22 (citing Spec. ¶ 49
describing two configurations of portable test adapter); Reply Br. 10–13
(citing Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018)). Moreover,
Appellant argues that paragraph 25 of the Specification does not describe
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conventional computer hardware, including a conventional processor, for
performing the claimed functions, as the Examiner finds, and that even if the
elements pointed to by the Examiner existed in the Specification, “the fact
that conventional technology is used to perform a solution[] does not make
the solution conventional.” Appeal Br. 21–22 (citing BASCOM).
We are not persuaded by Appellant’s arguments. As discussed supra,
Appellant has failed to demonstrate that claim 16 requires any specialized
computer hardware, devices, network-related infrastructure, or other
inventive computer components, i.e., a particular machine, or that the
claimed invention is performed using other than readily available
components. Specifically, we are not persuaded by Appellant’s argument
that claim 16 recites significantly more than an abstract idea because it
recites a portable test adapter.
We agree with Appellant that the Specification describes two
configurations of the portable test adapter: the first is “a standard
audiometer that can be connected to a portable test adapter that controls the
standard audiometer”; and, the second is “a portable test adapter which
contains an integrated audiometer.” See Reply Br. 11 (citing Spec. ¶ 49);
see also Spec. ¶ 48 (stating that “either way so as to connect the audiometer
to . . . the Internet.”). According to Appellant, the test adapter is “a
specifically designed piece of equipment configured to ‘convert data from an
audiometer [] to TCP/IP packets (which are in turn sent to the audiologist
over the Internet []) and also convert operational commands from an
audiologist (in TCP/IP packets) into a format that can be accepted by the
audiometer.’” Appeal Br. 20–22. We are not persuaded by this argument
for three reasons.
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First, although Appellant asserts the test adapter is “a specifically
designed piece of equipment,” claim 16 does not recite any specialized
structure or components of the test adapter, or internet-related infrastructure,
to perform the recited functions of “convert data . . . and transmit the
converted data” over the Internet to a web client associated with a remote
audiologist and “receive operational command data” from the web client
over the Internet. We also note that paragraph 49 of the Specification does
not describe any specialized structure or components of the test adapter,
including the adapter configured with an “on-board” or integrated
audiometer, or internet-related infrastructure. Moreover, paragraph 49 states
that the connection between the test adapter or integrated adapter and the
audiometer “can be hardwired (e.g., RS-232 or USB) and/or wireless (e.g.,
using a wireless protocol such as Bluetooth or Zigbee),” all of which are
well-known and conventional.
Thus, we find that the “portable test adapter” of claim 16, including a
test adapter with an integrated audiometer, does not require any specialized
structure, features or components, or any specialized interfaces or
connections with the audiometer.13 We also find that the Specification
describes the components implementing the system of claim 16 as generic
and well-understood, routine, and conventional. See, e.g., Spec. ¶¶ 38

13 We are not persuaded by Appellant’s argument that the Examiner’s
finding that the claimed “test adapter” is a “generic computer” is
unsupported because it is based on an incorrect premise. The Examiner did
not find that the test adapter is a “generic computer,” as Appellant asserts.
Appeal Br. 20. Instead, the Examiner included “test adapters” in the list of
additional elements recited in the claims that “amount to no more than
generic computer components that serve to link the abstract idea to a
particular technological environment.” Final Act. 5 (emphasis added).
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(“web-based”), 39–40, 43 (“user’s computer”), 44 (“computer program
instructions may be provided to a processor of a general-purpose
computer”), 47 (methods and devices “for performing diagnostic hearing
tests which use a computer network with a distributed, client-server
architecture”), 48 (“off-the-shelf or standard audiometer”), 49
(“connections” between test adapter and audiometer; “Internet [] can be
accessed via any desired device having access to the Internet including . . .
desktop or portable computers”), 52–53 (“web server”), 56–57 (“web
clients”), 59 (“web-based service system”), 66 (“test adapters” and
“audiometers”), 75 (“data processing system”; “components may be
conventional”). Accordingly, we further find that the recited components
implementing the system of claim 16 are readily available and well-
understood, routine, and conventional. See, e.g., Alice, 573 U.S. at 225–26
(holding that “implement[ing] the abstract idea . . . on a generic computer”
was not sufficient “to transform an abstract idea into a patent-eligible
invention”); Mortg. Grader, Inc. v. First Choice Loan Servs., Inc., 811 F.3d
1314, 1324–25 (Fed. Cir. 2016) (noting that components such an “interface,”
“network,” and “database” are generic computer components that do not
satisfy the inventive concept requirement); buySAFE, Inc. v. Google, Inc.,
765 F.3d 1350, 1355 (Fed. Cir. 2014) (“That a computer receives and sends
the information over a network—with no further specification—is not even
arguably inventive.”).
Second, we are not persuaded by Appellant’s argument that the test
adapter is a specifically designed piece of equipment configured to “convert
data from an audiometer [] to TCP/IP packets (which are in turn sent to the
audiologist over the Internet []) and also convert operational commands
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from an audiologist (in TCP/IP packets) into a format that can be accepted
by the audiometer.” Appeal Br. 20–21. Claim 16 does not recite a test
adapter configured to “convert data from an audiometer to TCP/IP packets,”
which are sent to the audiologist, or “convert operational commands from an
audiologist (in TCP/IP packets) into a format that can be accepted by the
audiometer.” Thus, Appellant’s argument is not convincing because it is not
commensurate with the scope of claim 16.14 In re Self, 671 F.2d 1344, 1348
(CCPA 1982) (“[A]ppellant’s arguments fail from the outset because . . .
they are not based on limitations appearing in the claims.”); see In re
Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998) (“[The] proffered facts . .
. are not commensurate with the claim scope and are therefore
unpersuasive.”).
Third, we are not persuaded by Appellant’s argument that the test
adapter is a specifically designed piece of equipment because, in essence,
Appellant argues that the test adapted is specialized and non-conventional
because it performs the recited functions of “convert data” from an
audiometer at the patient site and “transmit the converted data” to the web
client of an audiologist over the Internet, and “receive operational command
data” from the audiologist’s web client. However, this is nothing more than
the abstract idea itself. The law is clear that the claim elements to be
considered under Alice step 2B cannot be the abstract idea

14 Even if claim 16 recited that the test adapters are configured to “convert
audiometer data to TCP/IP packets and transmit the converted data to an
audiologist via the web server,” as recited in claim 20, Appellant’s argument
would not be persuasive because the TCP/IP protocol is a standard and well-
known set of rules for computers to communicate on the Internet. See Spec.
¶ 49.
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itself. Berkheimer v. HP Inc., 890 F.3d 1369, 1374 (Fed. Cir. 2018)
(Moore, J., concurring) (“Berkheimer . . . leave[s] untouched the numerous
cases from [the Federal Circuit] which have held claims ineligible because
the only alleged ‘inventive concept’ is the abstract idea.”); BSG Tech LLC v.
BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) (“It has been clear
since Alice that a claimed invention’s use of the ineligible concept to which
it is directed cannot supply the inventive concept that renders the invention
“significantly more” than that ineligible concept.”); Aatrix Software, Inc. v.
Green Shades Software, Inc., 890 F.3d 1354, 1359 (Fed. Cir. 2018) “[T]he
‘inventive concept’ cannot be the abstract idea itself.”).
Lastly, we are not persuaded by Appellant’s argument that paragraph
25 of the Specification does not describe conventional computer hardware,
including a conventional processor, for performing the claimed functions,
and that even if the elements pointed to by the Examiner existed in the
Specification, “the fact that conventional technology is used to perform a
solution[] does not make the solution conventional.” Appeal Br. 21–22
(citing BASCOM). Initially, however, we agree with Appellant that
paragraph 25 of the Specification does not describe conventional computer
hardware, including a conventional processor. We note that paragraph 25
refers to Figure 7A of the application, and that paragraph 75, which
describes Figure 7A, refers to a data processing system that includes “a
processor.” We also note that paragraph 44 of the Specification explains
that the claimed method and systems can be implemented by computer
program instructions provided to “a processor of a general-purpose
computer, special purpose computer, or other programmable data processing
apparatus.” Thus, although we find that the Examiner mistakenly referred to
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paragraph 25 as describing conventional hardware, including “a
conventional processor,” we also find that this error is harmless because a
conventional processor is described in paragraphs 44 and 75 of the
Specification. And, as discussed supra, we also find that other portions of
the Specification describe the components implementing the system of claim
16 as generic or well-understood, routine, and conventional. See, e.g., Spec.
¶¶ 38–40, 43–44, 47–49, 52–53, 56–57, 59, 66, 75.
We are also not persuaded by Appellant’s argument that even if the
elements pointed to by the Examiner existed in the Specification, “the fact
that conventional technology is used to perform a solution[] does not make
the solution conventional.” Appeal Br. 21–22 (citing BASCOM). Claim 16
is not analogous to the claims in BASCOM. In BASCOM, the court
determined that “an inventive concept can be found in the non-conventional
and non-generic arrangement of known, conventional pieces.” BASCOM,
827 F.3d at 1350. Here, claim 16 does not specify that the test adapter or the
test adapter and audiometer, whether integrated or not, or any internet-
related infrastructure, must be arranged in a non-conventional manner. To
the contrary, claim 16 simply recites a web server in communication with
the Internet, web clients in communication with the server, portable test
adapters “configured to” perform the functions of (a) “connect” a patient at a
patient site, (b) “convert data from an audiometer at the patient site and
transmit the converted data . . . to . . . a remote audiologist,” and (c) “receive
operational command data . . . to control operation of the respective
audiometer at the patient site,” wherein the web-based system is configured
to select a registered audiologist who is licensed where the patent is located
to perform a hearing test.
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Accordingly, considering claim 16 as a whole, we determine that the
additional elements recited in claim 16 are readily available computing and
networking elements performing their available basic functions and do not
provide “a specific limitation or combination of limitations that are not well-
understood, routine, conventional activity in the field.” Revised Guidance,
84 Fed. Reg. at 56. Rather, these elements “simply append[] well-
understood, routine, conventional activities previously known to the
industry, specified at a high level of generality.” Id. Accordingly, we find
that claim 16 does not have an inventive concept.
4. Claims 2, 5, 11, 13, 17–20, and 25
Appellant also argues that dependent claims 2, 5, 11, 13, 17–20, and
25 are patent-eligible under § 101 because of their “dependence from an
independent claim that is patent-eligible” and because they recite
significantly more than an abstract idea. Appeal Br. 28–30. We are not
persuaded by these arguments for several reasons. First, claims 17–20
depend from independent claim 16, and claims 2, 5, 11, and 13 depend from
independent claim 1. For the reasons discussed above, we have determined
that representative claim 16, and thus grouped claimed 1, are not patent-
eligible. Thus, the identified dependent claims are also not patent-eligible
based on their dependence from claims 1 and 16.
Second, we note that Appellant identifies certain limitations from each
of these dependent claims and then states they are significantly more than an
abstract idea. The mere reference to claim limitations accompanied with a
conclusory statement that they “recite significantly more than an abstract
idea” amounts to no more than reciting the claim language and asserting the
rejection is improper, which does not constitute a separate argument for
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patentability of the claim. See 37 C.F.R. § 41.37(c)(1)(iv) (“A statement
which merely points out what a claim recites will not be considered an
argument for separate patentability of the claim.”); see also In re Lovin, 652
F.3d 1349, 1357 (Fed. Cir. 2011).
Third, our step 2A, prong one, and step 2A, prong two, analysis of
claim 16 is equally applicable to these dependent claims because the recited
limitations of these claims do not change our determination that the
character of the claim, as a whole, is directed to an abstract idea. And, our
step 2B analysis is equally applicable because “‘well-understood, routine,
conventional activities’ previously known to the industry” cannot provide an
inventive concept. Alice, 573 at 221 (quoting Mayo, 566 U.S. at 79).
5. Conclusion
Because we determine that claim 16 is directed to an abstract idea and
does not contain an inventive concept, we sustain the Examiner’s rejection
of claim 16 under 35 U.S.C. § 101. For the same reasons, we sustain the
Examiner’s rejection under 35 U.S.C. § 101 of independent claims 1 and 36,
and dependent claims 3, 6–10, 12, 14–16, 21–23, 26–30, and 32, which are
not argued separately. We also determine, for the reasons discussed above,
that claims 2, 5, 11, 13, 17–20, and 25 are directed to an abstract idea and do
not contain an inventive concept, and therefore we sustain the Examiner’s
rejection of claims 2, 5, 11, 13, 17–20, and 25 under § 101.
DECISION
We affirm the Examiner’s rejection of claims 1–3, 5–23, 25–30, 32,
and 36 under 35 U.S.C. § 101.
SUMMARY
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Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–3, 5–23,
25–30, 32,
36
101 Eligibility 1–3, 5–23,
25–30, 32,
36

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