Holt, Christopher L.

Patent Trials and Appeals Board

Dec 1, 2020

2019003451 (P.T.A.B. Dec. 1, 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.
13/336,087 12/23/2011 Christopher L. Holt 31547-362 / LEN0081I3 7520
146524 7590 12/01/2020
Dinsmore & Shohl LLP
255 E. Fifth Street
Suite 1900
Cincinnati, OH 45202
EXAMINER
MENG, JAU SHYA
ART UNIT PAPER NUMBER
2168
NOTIFICATION DATE DELIVERY MODE
12/01/2020 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):
CincyPAIR@dinsmore.com
elise.merkel@dinsmore.com
jennifer.baker@dinsmore.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________ 

Ex parte CHRISTOPHER L. HOLT
________________

Appeal 2019-003451
Application 13/336,087
Technology Center 2100
________________

Before CATHERINE SHIANG, JASON J. CHUNG, and
CARL L. SILVERMAN, Administrative Patent Judges.

CHUNG, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals the Final Rejection
of claims 1–17. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
INVENTION
The invention relates to a patent examiner information accessing
system for accessing patent examiner information from a database.
Abstract. Claim 1 is illustrative of the invention and is reproduced below:
1. A computer implemented method for creating and
providing information relating to one or more patent examiners,
the method comprising:

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. According to Appellant, Reed Technology and
Information Services, Inc. is the real party in interest. Appeal Br. 2.
Appeal 2019-003451
Application 13/336,087

2
receiving, by a processing device, an assignee name input;
accessing, by the processing device, an examiner data
system based on the assignee name, wherein the examiner data
system provides data regarding the one or more patent examiners
and comprises aggregated examiner-specific data relating to one
or more issued patents and documents in associated file wrappers
of the issued patents, pending patent applications and documents
in associated file wrappers of the pending patent applications,
and abandoned patent applications and documents in associated
file wrappers of the abandoned patent applications;
identifying, by the processing device, a set of one or more
patent examiners from the aggregated examiner-specific data in
the examiner data system, wherein each of the one or more patent
examiners in the identified set examine patent applications
assigned to an assignee represented by the assignee name;
calculating, by the processing device, one or more patent
prosecution statistics for the identified set of one or more patent
examiners based only on patent applications assigned to the
assignee, wherein the patent prosecution statistics comprise a
particular examiner's time to first office action, a particular
examiner's number of allowed cases, and an average number of
office actions for a particular examiner; and
automatically directing, by the processing device, a user
interface display to display the patent prosecution statistics
along with a list of the identified set of one or more patent
examiners, each displayed patent examiner in the identified set
being displayed with a corresponding actuable user input which,
when actuated, causes the processing device to direct the user
interface display to automatically display the one or more patent
prosecution statistics for the patent examiner corresponding to
the actuated user input.
Appeal Br. 62 (Claims Appendix) (emphases added).

REJECTIONS
The Examiner rejects claims 1–17 under 35 U.S.C. § 101 as being
directed to patent ineligible subject matter. Final Act. 2–4.
Appeal 2019-003451
Application 13/336,087

3
The Examiner rejects claims 1–3, 6, 7, and 9–15 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Eckardt (US
2006/0106847 A1; published May 18, 2006), Cockburn (Are All Patent
Examiners Equal? The Impact of Characteristics on Patent Statistics and
Litigation Outcomes Working Paper 8980 NATIONAL BUREAU OF ECONOMIC
RESEARCH (June 2002), and Taketa (US 7,281,019 B2; filed Sept. 26, 2002).
Final Act. 5–17.
The Examiner rejects claims 4 and 5 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Eckardt, Cockburn, Taketa, and
Aberson (US 6,546,400 B1; issued Apr. 8, 2003). Final Act. 17–19.
The Examiner rejects claim 8 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Eckardt, Cockburn, Taketa, and
Piasecki (US 2007/0136373 A1; filed Dec. 14, 2005). Final Act. 19–20.
The Examiner rejects claim 16 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Eckardt, Cockburn, and Ng (US
2008/0201187 A1; provisional application no. 60/899,937 priority date Feb.
15, 2007). Final Act. 20–27.
The Examiner rejects claim 17 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Eckardt, Cockburn, and Aberson.
Final Act. 27–33.
ANALYSIS
I. Claims 1–17 Rejected Under 35 U.S.C. § 101
A. Principles of Law
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to
Appeal 2019-003451
Application 13/336,087

4
include implicit exceptions: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573
U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-part framework, described in Mayo and Alice.
Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 75–77 (2012)). In accordance with that framework, we first
determine what concept the claim is “directed to.” See Alice, 573 U.S. at
219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Court held that “a claim drawn to subject matter otherwise statutory does not
Appeal 2019-003451
Application 13/336,087

5
become nonstatutory simply because it uses a mathematical formula.”
Diehr, 450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as
nothing more than a process for molding rubber products and not as an
attempt to patent a mathematical formula.”). Having said that, the Court
also indicated that a claim “seeking patent protection for that formula in the
abstract . . . is not accorded the protection of our patent laws, and this
principle cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment.” Id. (citation omitted)
(citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that
an application of a law of nature or mathematical formula to a known
structure or process may well be deserving of patent protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted).
“A claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo,
566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention.” Id.
B. USPTO Section 101 Guidance
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
Appeal 2019-003451
Application 13/336,087

6
(“2019 Revised Guidance”).2 “All USPTO personnel are, as a matter of
internal agency management, expected to follow the guidance.” Id. at 51;
see also Update at 1.
Under the 2019 Revised Guidance and the Update, we first look to
whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th ed.
Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).3
2019 Revised Guidance, 84 Fed. Reg. at 52–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
Step 2B, to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not

2 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (the “Update”)
(available at
https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p
df).
3 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See 2019 Revised Guidance - Section III(A)(2), 84
Fed. Reg. 54–55.
Appeal 2019-003451
Application 13/336,087

7
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
2019 Revised Guidance, 84 Fed. Reg. at 52–56.
C. The Examiner’s Rejection and Appellant’s Arguments
The Examiner concludes the present claims recite mental processes.
Ans. 5, 10, 13; see Final Act 3 (concluding the present claims are analogous
to the claims in Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350
(Fed. Cir. 2016), which held that claims drawn to “collecting information,
analyzing it, and displaying certain results of the collection and analysis”
(i.e., a mental process) were ineligible under §101). The Examiner
concludes the present claims are not integrated into a practical application
and there are no limitations recited in the present claims that add
significantly more to the abstract idea. Ans. 5–7, 10, 13–14. The Examiner
determines the present claims do not amount to significantly more than an
abstract idea itself because the abstract idea is implemented using additional
elements that are well-understood, routine, and conventional. Final Act. 3–4
(citing Alice, 573 U.S. at 225–26).
Appellant argues that the present claims recite an improvement of the
functioning of the computer by providing rules relating specifically to the
use of patent prosecution information and the ability to interact with a user
to provide the patent prosecution information. Appeal Br. 24–25 (citing
McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir.
2016); Spec. ¶ 7). Appellant argues the present claims do not preempt any
Appeal 2019-003451
Application 13/336,087

8
abstract idea. Appeal Br. 25. Appellant argues the present claims recite
unconventional limitations because no other processes do what is recited in
Appellant’s claims. Id. at 27–28.
Appellant argues the present claims recite a non-conventional and
non-generic arrangement of known, conventional elements, which results in
an inventive concept. Id. at 21–22, 26 (citing BASCOM Global Internet
Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016)).
Appellant argues the Examiner does not provide the evidence required by
Berkheimer to support a determination that the additional elements are well-
understood, routine, or conventional. Reply Br. 7–9 (citing Berkheimer v.
HP Inc., 881 F.3d 1360 (Fed. Cir. 2018)); Appeal Br. 28. We disagree with
Appellant.
D. Step 2A, Prong 1
Patent eligibility under 35 U.S.C. § 101 is a question that we resolve
pursuant to the 2019 Revised Guidance. The emphasized portions of claim
1, reproduced above (see supra at 2)4, recite concepts performed in the
human mind (including an observation, evaluation, judgment, opinion)
because they pertain to activities that can be performed using a pencil and
paper. See 2019 Revised Guidance, 84 Fed. Reg. at 52 n.14; Final Act. 3.
Concepts performed in the human mind (including an observation,
evaluation, judgment, opinion) fall into the category of mental processes.
2019 Revised Guidance, 84 Fed. Reg. at 52 n.14. Mental processes are a
type of abstract idea. Id.
We also agree with the Examiner’s conclusion that the present claims

4 We determine that the “receiving,” “accessing,” and “automatically”
limitations amount to insignificant extra-solution activities.
Appeal 2019-003451
Application 13/336,087

9
are analogous to the claims in Electric Power Group, LLC v. Alstom S.A.,
830 F.3d 1350 (Fed. Cir. 2016). Final Act. 3. In Electric Power, the court
held that the claims were drawn to “collecting information, analyzing it, and
displaying certain results of the collection and analysis,” which is a mental
process (i.e., an abstract idea). Id. at 1355–1356. The present claims are
similar because they recite “receiving,” “accessing” (i.e., these are analogous
to “collecting information” in Electric Power), “identifying,” “calculating”
(i.e., these steps are analogous to “analyzing it” in Electric Power), and
“directing . . . display” (i.e., this is analogous to displaying certain results of
the collection and analysis in Electric Power).
We must still determine whether the abstract idea is integrated into a
practical application, namely whether the claim applies, relies on, or uses the
abstract idea in a manner that imposes a meaningful limit on the abstract
idea, such that the claim is more than a drafting effort designed to
monopolize the abstract idea. See 2019 Revised Guidance, 84 Fed. Reg. at
54–55. We therefore (1) identify whether there are any additional recited
elements beyond the abstract idea, and (2) evaluate those elements both
individually and collectively to determine whether they integrate the
exception into a practical application. See id.
Accordingly, we proceed to Prong 2.
E. Step 2A, Prong 2
Here, the elements in the present claims used to implement the
abstract idea are the “processing device,” “examiner data system,” and “user
interface display.” See 2019 Revised Guidance, 84 Fed. Reg. at 52. The
additional elements of the present claims do not integrate the abstract idea
into a practical application because they do not impose any meaningful
Appeal 2019-003451
Application 13/336,087

10
limits on practicing the abstract idea for the following reasons.
Appellant does not identify persuasively how the Specification sets
forth an improvement in technology. Appeal Br. 24–25 (citing McRO, Inc.
v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016); Spec.
¶ 7). The Update addresses how we consider evidence of improvement that
is presented to us. The Update states:
[T]he evaluation of Prong Two requires the use of the
considerations (e.g. improving technology, effecting a particular
treatment or prophylaxis, implementing with a particular
machine, etc.) identified by the Supreme Court and the Federal
Circuit, to ensure that the claim as a whole “integrates [the]
judicial exception into a practical application [that] will apply,
rely on, or use the judicial exception in a manner that imposes a
meaningful limit on the judicial exception, such that the claim is
more than a drafting effort designed to monopolize the judicial
exception.
Update 11 (emphases added). The Update further states:
During examination, the examiner should analyze the
“improvements” consideration by evaluating the specification
and the claims to ensure that a technical explanation of the
asserted improvement is present in the specification, and that the
claim reflects the asserted improvement. Generally, examiners
are not expected to make a qualitative judgment on the merits of
the asserted improvement. If the examiner concludes the
disclosed invention does not improve technology, the burden
shifts to applicant to provide persuasive arguments supported by
any necessary evidence to demonstrate that one of ordinary skill
in the art would understand that the disclosed invention improves
technology. Any such evidence submitted under 37 C.F.R.
§ 1.132 must establish what the specification would convey to
one of ordinary skill in the art and cannot be used to supplement
the specification. For example, in response to a rejection under
35 U.S.C. § 101, an applicant could submit a declaration under
§ 1.132 providing testimony on how one of ordinary skill in the
art would interpret the disclosed invention as improving
Appeal 2019-003451
Application 13/336,087

11
technology and the underlying factual basis for that conclusion.
Id. at 13 (emphasis added).
We, therefore, focus on any evidence Appellant cites in its briefs, as
discussed in the Update. Appellant refers us to paragraph 7 of the
Specification. Appeal Br. 24–25 (citing Spec. ¶ 7). However, that
paragraph discusses that there is no current way to gather information
efficiently on an Examiner-specific basis. Spec. ¶ 7.
At best, this is an improvement to mental process (i.e., an abstract idea
as discussed supra in § I.D). Id.; see, e.g., Synopsys, Inc. v. Mentor
Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (“[A] claim for a new
abstract idea is still an abstract idea.”). “[U]nder the Mayo/Alice framework,
a claim directed to a newly discovered law of nature (or natural phenomenon
or abstract idea) cannot rely on the novelty of that discovery for the
inventive concept necessary for patent eligibility . . . .” Genetic Techs. Ltd.
v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016) (citations omitted).
Furthermore, the additional elements in the present claims, namely
“processing device,” “examiner data system,” and “user interface display”
do not, either individually or in combination, integrate the abstract idea into
a practical application. In particular, Appellant’s Specification discloses that
these elements encompass generic computer components. Spec. ¶¶ 31, 32,
34, 35. Merely adding generic computer components to perform abstract
ideas does not integrate those ideas into a practical application. See 2019
Revised Guidance, 84 Fed. Reg. at 55 (identifying “merely includ[ing]
instructions to implement an abstract idea on a computer” as an example of
when an abstract idea has not been integrated into a practical application).
We disagree with Appellant’s argument that the present claims recite
Appeal 2019-003451
Application 13/336,087

12
an improvement the functioning of the computer by providing rules relating
specifically to the use of patent prosecution information and the ability to
interact with a user to provide the patent prosecution information. Appeal
Br. 24–25 (citing McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d
1299 (Fed. Cir. 2016); Spec. ¶ 7).
The subject claim considered by the McRO court concerned a method
for automatically animating lip synchronization and facial
expressions. McRO, 837 F.3d at 1303. The McRO court concluded the
subject claims did not recite an abstract idea because the computer animation
improved the prior art through the use of rules, rather than artists, to set
morph weights and transitions between phonemes. Id. at 1308. Thus, the
claimed invention in McRO allowed for computer performance of animation
steps that previously had to be performed by human animators. Id. at
1313. Notably, the court in McRO determined that the process required by
the claims was not a process previously used by human animators. Id. at
1314. As such, the court determined that the present claims were “unlike
Flook, Bilski, and Alice, where the claimed computer-automated process and
the prior art method were carried out in the same way.” Id. at 1314–15
(emphasis added). Therefore, the subject claims in McRO used “limited
rules in a process specifically designed to achieve an improved technological
result” over “existing, manual 3–D animation techniques.” Id. at
1316. Here, in contrast to McRO, the present claims do not recite a
computer-automated process that uses rules for animators unlike those
previously employed by humans or a similar type of improvement. Rather,
the present claims recite activities that can be performed by the human mind
with the assistance of a pencil and paper (i.e., an abstract idea as discussed
Appeal 2019-003451
Application 13/336,087

13
supra in § I.D.).
Appellant’s arguments that the present claims do not preempt any
abstract idea (Appeal Br. 25) do not persuade us that the claims are patent
eligible. Although preemption may denote patent ineligibility, its absence
does not demonstrate patent eligibility. See FairWarning IP, LLC v. Iatric
Sys., Inc., 839 F.3d 1089, 1098 (Fed. Cir. 2016). For claims covering a
patent-ineligible concept, preemption concerns “are fully addressed and
made moot” by an analysis under the Mayo/Alice framework. Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
We, therefore, conclude that the additional elements, whether
considered individually or as an ordered combination, do not integrate the
abstract idea into a practical application because the additional elements are
generic computer components that do not impose meaningful limits on
practicing the abstract idea.
Appellant does not make any other arguments pertaining to Step 2A,
Prong 2. Because we determine that the present claims recite an abstract
idea that is not integrated into a practical application, we proceed to Step 2B.
F. Step 2B
We disagree with Appellant’s argument that the Examiner does not
provide the evidence required by Berkheimer to support a determination that
the additional elements are well-understood, routine, or conventional. Reply
Br. 7–9 (citing Berkheimer, 881 F.3d 1360); Appeal Br. 28.
The Examiner determines the present claims do not amount to
significantly more than an abstract idea itself because the abstract idea is
implemented using additional elements that are well-understood, routine,
and conventional. Final Act. 3–4 (citing Alice, 573 U.S. at 225–26).
Appeal 2019-003451
Application 13/336,087

14
The Specification indicates that the additional elements (i.e.,
“processing device,” “examiner data system,” and “user interface display”)
are nothing more than generic computer components. Spec. ¶¶ 31, 32, 34,
35. Appellant’s Specification indicates these additional elements were well-
understood, routine, and conventional components because it describes them
at a high level of generality and in a manner that indicates that they are
sufficiently well-known. Id.
We disagree with Appellant’s argument that the present claims are
unconventional limitations because no other processes do what is recited in
Appellant’s claims. Appeal Br. 27–28. Appellant improperly conflates the
requirements for patent-eligible subject matter (§ 101) with the independent
requirements of novelty (§ 102) and non-obviousness (§ 103). “The
‘novelty’ of any element or steps in a process, or even of the process itself, is
of no relevance in determining whether the subject matter of a claim falls
within the § 101 categories of possibly patentable subject matter.” Diehr,
450 U.S. at 188–89; see also Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d
1369, 1376 (Fed. Cir. 2016) (stating that, “under the Mayo/Alice framework,
a claim directed to a newly discovered law of nature (or natural phenomenon
or abstract idea) cannot rely on the novelty of that discovery for the
inventive concept necessary for patent eligibility”).
We agree with the Examiner that the additional elements, either
individually or in combination, do not amount to an inventive concept. Ans.
6. An inventive concept “cannot be furnished by the unpatentable law of
nature (or natural phenomenon or abstract idea) itself.” Genetic, 818 F.3d at
1376; see also 2019 Revised Guidance; Alice, 573 U.S. at 217 (explaining
that, after determining a claim is directed to a judicial exception, “we then
Appeal 2019-003451
Application 13/336,087

15
ask, ‘[w]hat else is there in the claims before us?”’ (alteration in original)
(quoting Mayo, 566 U.S. at 78)). Instead, an “inventive concept” is
furnished by an element or combination of elements that is recited in the
claim in addition to the judicial exception and sufficient to ensure the claim,
as a whole, amounts to significantly more than the judicial exception itself.
Alice, 573 U.S. at 218–19 (citing Mayo, 566 U.S. at 72–73); see BSG Tech
LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) (explaining
that the Supreme Court in Alice “only assessed whether the claim limitations
other than the invention’s use of the ineligible concept to which it was
directed were well-understood, routine and conventional” (emphasis
added)).
Appellant’s citation to BASCOM is unavailing. Appeal Br. 21–22, 26.
As an initial matter, Appellant’s argument appears misplaced because all of
the features recited, with the exception of the additional elements identified
above, are directed to the abstract idea, as discussed supra.
Moreover, in BASCOM, the claims were directed to “a filter
implementation versatile enough that it could be adapted to many different
users’ preferences while also installed remotely in a single location.”
BASCOM, 827 F.3d at 1348–51. The inventive concept was “the installation
of a filtering tool at a specific location, remote from the end-users, with
customizable filtering features specific to each end user” that “gives the
filtering tool both the benefits of a filter on a local computer and the benefits
of a filter on the [Internet Service Provider] server.” Id. at 1350. Thus,
when considered as an ordered combination, the Federal Circuit concluded
the claims provided “an inventive concept can be found in the non-
conventional and non-generic arrangement of known, conventional pieces.”
Appeal 2019-003451
Application 13/336,087

16
Id. Here, the present claims recite an abstract idea using additional elements
that are generic computer components as discussed supra, or at best,
improving an abstract idea—not an inventive concept. Accordingly,
Appellant’s assertion fails to identify error in the Examiner’s analysis.
For at least the above reasons, we conclude, under the 2019 Revised
Guidance, that each of the present claims, considered as a whole, is directed
to a patent-ineligible abstract idea that is not integrated into a practical
application, and does not include an inventive concept. We, therefore,
sustain the Examiner’s rejection of: (1) independent claims 1, 16, and 17;
and (2) dependent claims 2–155 under § 101.
II. Claims 1–17 Rejected Under 35 U.S.C. § 103
A. Calculating Patent Prosecution Statistics
The Examiner finds Eckardt teaches creating a meta-link list for a
common examiner and common assignee, which the Examiner maps to the
limitation “calculating . . . one or more patent prosecution statistics for the
identified set of one or more patent examiners based only on patent
applications assigned to the assignee” recited in claim 1 (and similarly
recited in claims 16 and 17). Ans. 16 (citing Eckardt ¶¶ 180, 181, 188, 276).
The Examiner finds Cockburn teaches collecting an examiner’s complete set
of issued patents, which the Examiner maps to the limitation
calculating . . . one or more patent prosecution statistics for the

5 We disagree with Appellant’s argument that the Examiner provides no
analysis to substantiate the rejections of dependent claims 3, 4, 6–9, and 13–
15. Reply Br. 9. The Examiner addresses claims 1–17 on pages 2 to 4 of
the Final Action. Compare Final Act. 2–4 with Appeal Br. 13–29 (lacking
specificity in pointing out errors in the § 101 rejection of dependent claims
3, 4, 6–9, and 13–15); Reply Br. 9 (lacking specificity in pointing out errors
in the § 101 rejection of dependent claims 3, 4, 6–9, and 13–15).
Appeal 2019-003451
Application 13/336,087

17
identified set of one or more patent examiners . . . wherein the
patent prosecution statistics comprise a particular examiner’s
time to first office action, a particular examiner’s number of
allowed cases, and an average number of office actions for a
particular examiner
recited in claim 1 (and similarly recited in claims 16 and 17). Ans. 16
(citing Cockburn 2:21–22, 2:27, 19:26–27).
Appellant argues Cockburn merely teaches supervisors evaluate data
relating to distribution of times to action and the number of actions required
prior to disposal of an application, but fails to teach
calculating, by the processing device, one or more patent
prosecution statistics for the identified set of one or more patent
examiners based only on patent applications assigned to the
assignee, wherein the patent prosecution statistics comprise a
particular examiner’s time to first office action, a particular
examiner’s number of allowed cases, and an average number of
office actions for a particular examiner
(hereinafter “calculating limitation”) recited in claim 1. Appeal Br. 52–55;
Reply Br. 9–10.
As an initial matter, the Examiner makes a further finding in the
Answer, which Appellant does not rebut. Compare Ans. 16 (citing Eckardt
¶¶ 180, 181, 188, 276, Fig. 14); Reply Br. 9–10 (lacking a specific argument
addressing Eckardt teaching this limitation), with Final Act. 9 (lacking
citation to Eckardt with respect to the calculating limitation); Appeal Br. 52–
54. As a result, Appellant fails to show Examiner error. See In re Baxter
Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the function of
this court to examine the claims in greater detail than argued by an appellant,
looking for [patentable] distinctions over the prior art.”).
Nonetheless, Eckardt teaches creating a meta-link list (i.e., calculating
one or more patent prosecution statistics) for a common examiner (i.e., for
Appeal 2019-003451
Application 13/336,087

18
the identified set of one or more patent examiners) and common assignee
(i.e., based only on patent applications assigned to the assignee), which
teaches or suggests the limitation “calculating . . . one or more patent
prosecution statistics for the identified set of one or more patent examiners
based only on patent applications assigned to the assignee” recited in claim 1
(and similarly recited in claims 16 and 17). Ans. 16 (citing Eckardt ¶¶ 180,
181, 188, 276).
As for the limitation “wherein the patent prosecution statistics
comprise a particular examiner’s time to first office action, a particular
examiner’s number of allowed cases, and an average number of office
actions for a particular examiner,” we turn to claim construction to resolve
whether Cockburn teaches this limitation.
Claim construction is an issue of law that is left for a court or a
tribunal. “[W]hen the district court reviews only evidence intrinsic to the
patent (the patent claims and specifications, along with the patent’s
prosecution history), the judge’s determination will amount solely to a
determination of law.” Teva Pharms. USA, Inc. v. Sandoz, Inc., 574 U.S.
318, 331 (2015). “[T]he ultimate issue of the proper construction of a claim
should be treated as a question of law.” Id. at 326. Claim construction at the
Patent Trial and Appeal Board is a question of law, which is reviewed de
novo. In re Donaldson Co., 16 F.3d 1189, 1192 (Fed. Cir. 1994) (en banc).
We construe claim terms according to their broadest reasonable
construction in light of the specification of the patent or application in which
they appear. In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004). Consistent
with the broadest reasonable construction, claim terms are generally given
their ordinary and customary meaning, as understood by a person of
Appeal 2019-003451
Application 13/336,087

19
ordinary skill in the art, in the context of the entire specification. In re
Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Also, we must
be careful not to read a particular embodiment appearing in the written
description into the claim if the claim language is broader than the
embodiment. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993)
(“[L]imitations are not to be read into the claims from the specification.”).
However, a term may be defined in the specification with reasonable clarity,
deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
1994).
We note that the limitation
calculating, by the processing device, one or more patent
prosecution statistics for the identified set of one or more patent
examiners based only on patent applications assigned to the
assignee, wherein the patent prosecution statistics comprise a
particular examiner’s time to first office action, a particular
examiner’s number of allowed cases, and an average number of
office actions for a particular examiner
(emphases added) states “one or more patent prosecution statistics.”
Consequently, this verbiage only requires that Cockburn teach “one” of
(1) “a particular examiner’s time to first office action,” (2) “a particular
examiner’s number of allowed cases,” and (3) “an average number of office
actions for a particular examiner” to meet the limitation.
In this case, Cockburn teaches collecting an examiner’s complete set
of issued patents (i.e., a particular examiner’s allowed cases), which teaches
the limitation
calculating . . . one or more patent prosecution statistics for the
identified set of one or more patent examiners . . . wherein the
patent prosecution statistics comprise a particular examiner’s
time to first office action, a particular examiner’s number of
allowed cases, and an average number of office actions for a
Appeal 2019-003451
Application 13/336,087

20
particular examiner
(emphases added) recited in claim 1. Ans. 16 (citing Cockburn 2:21–22,
2:27, 19:26–27). Even if Cockburn does not teach the calculating limitation,
the Examiner makes further findings in the Answer, which Appellant does
not rebut. Compare Ans. 16 (citing Cockburn, 2:21–22, 2:27, 19:26–27);
Reply Br. 9–10 (lacking rebuttal to Cockburn, 2:21–22, 2:27, 19:26–27) with
Final Act. 16 (citing Cockburn 19:26); Appeal Br. 52–55 (lacking rebuttal to
Cockburn, 2:21–22, 2:27, 19:26–27). See Baxter Travenol Labs., 952 F.2d
at 391.
Moreover, we disagree with Appellant’s argument because of an
additional reason––i.e., Appellant is attacking references individually.
Appeal Br. 52–55; Reply Br. 9–10. One cannot show nonobviousness “by
attacking references individually” where the rejections are based on
combinations of references. In re Merck & Co., Inc., 800 F.2d 1091, 1097
(Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)). In
this case, as explained above, the Examiner rejects the calculating limitation
using the combination of Eckardt and Cockburn, rather than Cockburn
individually.
Accordingly, Appellant does not persuade us of error in the
Examiner’s finding that the combination of Eckardt and Cockburn teach the
calculating limitation.
B. Motivation To Combine
The Examiner concludes that a person having ordinary skill in the art
at the time of the invention (hereinafter “PHOSITA”) would have combined
Eckardt’s systems and methods with Cockburn’s systems and methods to
improve visible aspects of the examination process. Final Act. 10 (citing
Appeal 2019-003451
Application 13/336,087

21
Cockburn, 25:27–28).
Appellant argues a PHOSITA would not have combined Eckardt’s
“big picture” systems and methods for determining relationships between
patents in a group of patents with Cockburn’s minute details regarding
patent prosecution statistics. Appeal Br. 56–57 (citing Eckardt ¶ 202). We
disagree with Appellant.
Eckardt’s paragraph 202 merely states “the user can quickly
understand what technology areas each company is working on and who the
key inventors are within those areas of technology.” Eckardt ¶ 202.
However, this excerpt does not suggest that a PHOSITA would not combine
Eckardt’s patent database with Cockburn’s patent prosecution statistics as
the Examiner concludes. Final Act. 10 (citing Cockburn, 25:27–28).
Therefore, Appellant does not persuade us of error.
C. Hindsight
The Examiner concludes that a PHOSITA would have combined
Eckardt’s systems and methods with Cockburn’s systems and methods to
improve visible aspects of the examination process. Final Act. 10 (citing
Cockburn, 25:27–28).
Appellant argues the Examiner’s reasoning relies on impermissible
hindsight because such reasoning is only present in Appellant’s Specification
at paragraphs 6 and 7. Appeal Br. 57–58. We disagree with Appellant.
As an initial matter, the Examiner’s reasoning was not only present in
Appellant’s paragraphs 6 and 7. As noted above, the Examiner cites
Cockburn, page 25, lines 27 and 28 to support their conclusion, which
Appellant does not rebut.
In particular, Appellant has not provided persuasive evidence that
Appeal 2019-003451
Application 13/336,087

22
combining the respective teachings of the references (as concluded by the
Examiner — Final Act. 10 (citing Cockburn, 25:27–28)) would have been
“uniquely challenging or difficult for one of ordinary skill in the art,” or that
such a combination would have “represented an unobvious step over the
prior art.” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162
(Fed. Cir. 2007). Nor has Appellant provided any objective evidence of
secondary considerations, which, as our reviewing court explains, “operate[]
as a beneficial check on hindsight.” Cheese Sys., Inc. v. Tetra Pak Cheese &
Powder Sys., Inc., 725 F.3d 1341, 1352 (Fed. Cir. 2013). In this case, the
Examiner concludes a PHOSITA would have combined Eckardt’s systems
and methods with Cockburn’s systems and methods to improve visible
aspects of the examination process. Final Act. 10 (citing Cockburn, 25:27–
28). We, therefore, find the Examiner has set forth sufficient “articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. at 418 (quoting In re
Kahn, 441 F.3d at 988).
Appellant does not argue claims 2–11 and 13–15 separately with
particularity. Appeal Br. 29–60. Accordingly, we sustain the Examiner’s
rejection of (1) independent claim 1; and (2) dependent claims 2–11 and 13–
15 under § 103(a).
D. Claim 12
The Examiner finds Eckardt teaches the limitations “the predicted
prosecution volume for the other entity in juxtaposed relation to the
predicted prosecution volume for the scope unit” recited in claim 12. Final
Act. 16–17 (citing Eckardt ¶ 281).
Appellant argues paragraph 281 of Eckardt fails to teach the limitation
Appeal 2019-003451
Application 13/336,087

23
“the predicted prosecution volume for the other entity in juxtaposed relation
to the predicted prosecution volume for the scope unit” recited in claim 12.
Appeal Br. 55.
In order to rebut a prima facie case of unpatentability, Appellant must
point out the supposed Examiner errors distinctly and specifically, and the
specific distinctions believed to render the claims patentable over the applied
references. See 37 C.F.R. § 41.37(c)(1)(iv) (2018) (“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) (“[W]e hold that the Board reasonably
interpreted Rule 41.37 to require more substantive arguments in an appeal
brief than a mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art.”); cf. In re
Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the
function of this court to examine the claims in greater detail than argued by
an appellant, looking for [patentable] distinctions over the prior art.”).
In this case, Appellant does not distinctly and specifically point out
why Eckardt fails to teach the limitation “the predicted prosecution volume
for the other entity in juxtaposed relation to the predicted prosecution
volume for the scope unit” recited in claim 12. Appeal Br. 55.6

6 Appellant alleges that because the Examiner makes a new finding in the
Answer by citing to Eckardt’s paragraphs 78 and 180, Appellant can
introduce new detailed arguments pertaining to Eckardt. Reply Br. 10–11.
However, the Examiner also cites to paragraph 173 and claim 26 of Eckardt
in the Answer, which Appellant does not rebut. Compare Ans. 17–18 (citing
Eckardt ¶¶ 78, 173, 180, claim 26) with Reply Br. 10–11 (lacking an
argument to Eckardt’s paragraph 173 and claim 26). Even if Appellant
rebutted Eckardt’s paragraph 173 and claim 26, we note that Appellant’s
Appeal 2019-003451
Application 13/336,087

24
Accordingly, we sustain the Examiner’s rejection of claim 12 under
§ 103(a).
D. Claim 16
The Examiner finds the combination of Eckardt, Cockburn, and Ng
teach the limitations recited in claim 16. Final Act. 20–27.
Appellant argues claim 16 is not obvious in view of the combination
of Eckardt, Cockburn, and Ng for at least the same reasons as argued for
claim 1. Appeal Br. 59. Appellant also argues Eckardt, Cockburn, and Ng
fail to teach the limitation
directing, by the processing device, the user interface display to
display a plurality of actuable scope selector input mechanisms,
wherein each actuable scope selector input mechanism
corresponds to a scope unit associated with a subset of the patent
applications assigned to the assignee
(hereinafter “directing limitation”) recited in claim 16. Id. We disagree
with Appellant.
As stated above, Appellant does not persuade us of error in the
Examiner’s findings and conclusions pertaining to claim 1.
Regarding Appellant’s argument pertaining to the directing limitation,
in order to rebut a prima facie case of unpatentability, Appellant must point
out the supposed Examiner errors distinctly and specifically, and the specific
distinctions believed to render the claims patentable over the applied
references. See 37 C.F.R. § 41.37(c)(1)(iv) (2018); see also Lovin, 652 F.3d

argument pertaining to claim 12 in the Appeal Brief remains deficient
because the argument does not rebut Eckardt’s paragraph 281 distinctly and
specifically. Compare Final Act. 16–17 (citing Eckardt ¶ 281) with Appeal
Br. 55 (lacking an argument pointing out the Examiner’s errors distinctly
and specifically).
Appeal 2019-003451
Application 13/336,087

25
at 1357; cf. Baxter Travenol Labs., 952 F.2d at 391. In this case, Appellant
does not distinctly and specifically point out why Eckardt, Cockburn, and
Ng fail to teach the directing limitation. Appeal Br. 59.7
Accordingly, we sustain the Examiner’s rejection of claim 16 under
§ 103(a).
E. Claim 17
The Examiner finds the combination of Eckardt, Cockburn, and
Aberson teach the limitations recited in claim 17. Final Act. 27–33.
Appellant argues claim 17 is not obvious in view of the combination
of Eckardt, Cockburn, and Aberson for at least the same reasons as argued
for claim 1. Appeal Br. 59–60; Reply Br. 12. Appellant also argues
Eckardt, Cockburn, and Aberson fail to teach the limitation
automatically directing, by the processing device, a user interface
display to display the patent prosecution statistics along with a
list of the identified set of one or more patent examiners, each
displayed patent examiner in the identified set being displayed
with a corresponding actuable user input which, when actuated,
causes the processing device to direct the user interface display

7 Appellant alleges that because the Examiner makes a new finding in the
Answer by citing to Eckardt’s paragraphs 155 and 379, Appellant can
introduce new detailed arguments pertaining to Eckardt. Reply Br. 11.
However, the Examiner cites to Eckardt’s paragraphs 155 and 379 in the
Final Action. Final Act. 21 (citing Eckardt ¶¶ 155, 379). Appellant’s
argument is untimely and waived because the Examiner did not change the
theory of unpatentability in the Answer (compare Final Act. 11 (citing
Eckardt ¶¶ 155, 379) with Ans. 20–21 (citing Eckardt ¶¶ 155, 379))), while
Appellant proffered new arguments in the Reply Brief (compare Appeal Br.
59 (lacking arguments that distinctly and specifically point out the alleged
Examiner’s error) with Reply Br. 11 (including new specific arguments
pertaining to Eckardt)) without showing good cause. See 37 C.F.R.
§ 41.41(b)(2). We, therefore, do not consider Appellant’s untimely
argument on page 11 of the Reply Brief.
Appeal 2019-003451
Application 13/336,087

26
to automatically display the one or more patent prosecution
statistics for the patent examiner corresponding to the actuated
user input
(hereinafter “automatically directing limitation”) recited in claim 17.
Appeal Br. 60. We disagree with Appellant.
As stated above, Appellant does not persuade us of error in the
Examiner’s findings and conclusions pertaining to claim 1.
Regarding Appellant’s argument pertaining to the automatically
directing limitation, in order to rebut a prima facie case of unpatentability,
Appellant must point out the supposed Examiner errors distinctly and
specifically, and the specific distinctions believed to render the claims
patentable over the applied references. See 37 C.F.R. § 41.37(c)(1)(iv)
(2018); see also Lovin, 652 F.3d at 1357; cf. Baxter Travenol Labs., 952
F.2d at 391. In this case, Appellant does not distinctly and specifically point
out why Eckardt, Cockburn, and Aberson fail to teach the automatically
directing limitation. Appeal Br. 59.
Accordingly, we sustain the Examiner’s rejection of claim 17 under
§ 103(a).
We have only considered those arguments that Appellant actually
raised in the Briefs. Arguments Appellant could have made, but chose not to
make, in the Briefs have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(iv).

Appeal 2019-003451
Application 13/336,087

27

CONCLUSION

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

AFFIRMED

Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–17 101 Eligibility 1–17
1–3, 6, 7,
9–15
103(a) Eckardt, Cockburn,
Taketa
1–3, 6, 7,
9–15

4, 5 103(a) Eckardt, Cockburn,
Taketa, Aberson
4, 5
8 103(a) Eckardt, Cockburn,
Taketa, Piasecki
8
16 103(a) Eckardt, Cockburn,
Ng
16
17 103(a) Eckardt, Cockburn,
Aberson
17
Overall
Outcome
1–17