International Business Machines Corporation

Patent Trials and Appeals Board

Jul 29, 2020

2019002050 (P.T.A.B. Jul. 29, 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.
15/371,808 12/07/2016 Donna K. Byron AUS920160572US1 3377
50170 7590 07/29/2020
IBM CORP. (WIP)
c/o WALDER INTELLECTUAL PROPERTY LAW, P.C.
445 CRESTOVER CIRCLE
RICHARDSON, TX 75080
EXAMINER
KAZEMINEZHAD, FARZAD
ART UNIT PAPER NUMBER
2657
MAIL DATE DELIVERY MODE
07/29/2020 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DONNA K. BYRON, CARMINE M. DIMASCIO,
BENJAMIN L. JOHNSON, and FLORIAN PINEL
Appeal 2019-002050
Application 15/371,808
Technology Center 2600
Before MICHAEL J. STRAUSS, MICHAEL M. BARRY, and
PHILLIP A. BENNETT, Administrative Patent Judges.

STRAUSS, Administrative Patent Judge.
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2
DECISION ON APPEAL1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–20. See Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Summary of the Disclosure
Appellant’s claimed subject matter relates to “automatically
identifying required tools for performing actions specified in electronic
documents.” Abstract.
Illustrative claim
Claim 1, reproduced below with element labels added in brackets and
those portions of the claim determined to correspond to abstract concepts
emphasized in italics, is illustrative of the claimed subject matter:
1. A method, in a data processing system comprising a processor
and a memory, wherein the memory comprises instructions
executed by the processor to cause the processor to implement
the method, comprising:
[(i)] performing, by the data processing system, natural
language processing of content of a training corpus of electronic
documents to identify associations of action terms with required
tools for performing actions corresponding to the action terms;

1 We refer to the Specification, filed December 7, 2016 (“Spec.”); Final
Office Action, mailed April 6, 2018 (“Final Act.”); Appeal Brief, filed
August 23, 2018 (“Appeal Br.”); Examiner’s Answer, mailed November 14,
2018 (“Ans.”); and Reply Brief, filed January 10, 2019 (“Reply Br.”).
2 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as International
Business Machines Corporation. Appeal Br. 2.
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[(ii)] training, by the data processing system, an ontology
model based on the identified associations of the action terms
with required tools for performing actions corresponding to the
action terms;
[(iii)] performing, by the data processing system, analysis
of electronic documents of one or more other corpora based on
the trained ontology model to identify required tools for
performing actions specified in the electronic documents; and
[(iv)] annotating, by the data processing system, one or
more of the electronic documents of the one or more other
corpora to include required tools annotation metadata
identifying tools required to perform actions corresponding to
action terms present in the one or more electronic documents to
thereby generate at least one updated corpus.
REJECTION3
Claims 1–20 stand rejected under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter. Final Act. 19–22.
STANDARD OF REVIEW
The Board undertakes a limited de novo review of the appealed
rejections for error based upon the issues identified by Appellant, and in
light of the arguments and evidence produced thereon. Ex parte Frye,
94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).

3 The Examiner has withdrawn (i) the rejection of claims 11–19 under 35
U.S.C. § 101 as covering non-statutory subject matter (i.e., transitory
signals) appearing at pages 22–23 of the Final Action, (ii) the rejection of
claims 1–4, 11–14, and 20 under 35 U.S.C. § 102(a)(1) appearing at pages
23–28 of the Final Action, and (iii) the rejection of claims 5–10 and 15–19
under 35 U.S.C. § 103 appearing at pages 28–36 of the Final Action. Ans. 3.
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OPINION
We are not persuaded the Examiner erred in rejecting independent
claims 1, 11, and 25 under 35 U.S.C. § 101 as being directed to patent-
ineligible subject matter. We agree with and adopt the Examiner’s findings
and reasoning in the Final Office Action and in the Answer as our own and
add any additional findings of fact appearing below for emphasis.
I. Principles of Law
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
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 Supreme Court’s two-step 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 id. 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);
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5
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67–68 (1972)).
Concepts determined to be patent eligible include physical and chemical
processes, such as “molding rubber products” (Diamond v. Diehr, 450 U.S.
175, 191 (1981)); “tanning, dyeing, making water-proof cloth, vulcanizing
India rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56
U.S. 252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
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. “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.
In January 2019, the USPTO published revised guidance on the
application of § 101 (“Guidance”). See, e.g., USPTO, 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019
Revised Guidance”); USPTO, October 2019 Update: Subject Matter
Eligibility (Oct. 17, 2019) (“Update”), 84 Fed. Reg. 55942 (Oct. 18, 2019)
(notice).
Under the 2019 Revised Guidance, we first look to whether the claim
recites:
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(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activities 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”).4
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, 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.
See 2019 Revised Guidance, 84 Fed. Reg. at 56.
INDEPENDENT CLAIMS 1, 11, AND 20
II. Examiner’s Determinations
The Examiner determines claim 1 is

4 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.
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directed to “identify[ing] required tools for performing actions
specified in” (e.g., tools used in a “cooking domain” “used in
recipes” (spec ¶ 0016 line 3)) “electronic documents” (could be
e.g. “health care documents” (spec ¶ 00102 last 4 lines)). In so
doing it utilizes a “training” “ontology” (spec, ¶ 0075 last
sentence: “may implement a hierarchical” “parent child
relationship between related concepts”). Once it determines the
“tools”, it “annotate[s]” the “electronic document” by the
“required tool” to clarify “tools required to perform actions
corresponding to action terms present in the one or more
electronic documents”.
Final Act. 20. According to the Examiner, claim 1 is “using ‘action terms’
(new data) and comparing them with ‘required tools’ (stored information
from a ‘train[ed] ontology’) and using ‘identif[ied] associations’ (rules) to
‘identify’ the ‘required tools’ (options) (SmartGene[5]) to be followed by the
annotation step which appears nothing more than a general computer
implementation or field of use.” Id. at 21. As such, the Examiner
determines claim 1 “is directed to a disembod[ied] concept; i.e., it comprises
mental activity forming an evaluation of e.g. sentences; it can
be human behavior using personal knowledge of grammar and vocabulary in
a language.” Id.
Addressing elements in additional to those determined to be part of
the underlying concept characterized as mental activities, the Examiner
explains:
The claim recites other limitations, i.e., using a “data processing
system comprising a” “processor”. Nonetheless, the additional
limitations simply call for the implementation of the abstract idea
on a conventional processor, e.g., a computer. Therefore, the

5 SmartGene, Inc. v. Advanced Biological Laboratories, S.A., 555 F. App’x
950, 954–56 (Fed. Cir. 2014) (claims drawn to abstract idea of comparing
new and stored information and using rules to identify options).
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other elements in the claim do not appear to be “sufficient to
ensure that the claim amounts to significantly more than the
abstract idea itself.[”] In order to overcome Alice 101 rejection,
the claimed invention “should achieve other benefits over
conventional databases, such as increased flexibility, faster
search times, and smaller memory requirements” (Enfish[6]),
and/or “improve computer-related technology by allowing
computer performance of a function not previously performable
by a computer” (McRO[7]).
Id.
The Examiner rejects dependent claims 11 and 20 on a similar rationale.
Final Act. 22.
III. Appellant’s Contentions of Error
Appellant contends the Examiner mischaracterizes the invention.
Appeal Br. 4. Appellant argues, rather than being directed to evaluating a
document or identifying tools required for performing actions, “the presently
claimed invention is directed to [a] specific computer tool for improving a
corpus of electronic documents.” Id. According to Appellant, “[t]his new
functionality is an improvement to computer functionality and specifically
solves a problem specifically in computer technology, namely problems or
limitations associated with natural language processing and cognitive
processing of electronic content.” Id. at 4–5. Appellant argues
While a human being will be able to infer . . . information based
on their previous experiences, a computer cannot determine what
tools are required to perform the actions of stirring and toasting
unless it is explicitly told what tools are needed for such actions.

6 Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1337 (Fed. Cir. 2016).
7 McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir.
2016) (technical improvement in how a physical display operated to produce
better quality images).
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Thus, it would be desirable to be able to have a computer-based
mechanism that learns such associations of required tools with
actions so that this information may be conveyed to natural
language processing and cognitive systems so that the
information may be used to perform natural language processing
and cognitive system operations.
Id. at 5. Appellant emphasizes the claims require the performance of
specific computer operations such that the steps do not recite a mental
activity of a human. Id. at 6. Appellant further argues “Mental processes do
not train an ontology model. The ontology model only exists within a
computing environment.” Id. at 7. In support, Appellant directs attention to
the Specification, noting “there is not a single embodiment anywhere in the
specification where any of the claimed operations is described as being
performed as a mental process.” Id.
Favorably comparing claim 1 to claims found patent eligible in
Enfish, Appellant argues “the present claims are not ‘directed to’ any alleged
abstract idea, even if they ‘involve’ an abstract idea, arguendo, and in fact
recite an improvement to computer-related technology by improving the
functionality of computer-related technology with regard to [the steps of
claim 1].” Id. at 10. Appellant further contends the rejection is improper
based on argument analogizing the claims to those found patent eligible in
McRO (id. at 11–13) and Finjan8 (id. at 13–16).
Addressing Step 2B of the Alice/Mayo analysis, Appellant contends
the claims recite significantly more than the abstract idea by reason of
satisfying five of the six categories of limitations listed at MPEP
§ 2106.05(I)(A) and thereby qualifying as “significantly more,”, i.e.:

8 Finjan, Inc. v. Blue Coat Systems, Inc., 879 F.3d 1299 (Fed. Cir. 2018).
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1. An improvement to another technology or technical field;
MPEP § 2106.05(a) (argued at Appeal Br. 16–17);
2. An improvement of the functioning of the computer itself;
MPEP § 2106.05(a) (argued at Appeal Br. 17–18);
3. Applying the judicial exception with, or by use of, a
particular machine; MPEP § 2106.05(b) (argued at Appeal
Br. 18);
4. Adding a specific limitation other than what is well
understood, routine and conventional in the field, or adding
unconventional steps that confine the claim to a particular
useful application; MPEP § 2106.05(d) (argued at Appeal
Br. 18–19); and
5. A meaningful limitation beyond generally linking the use of
an abstract idea to a particular technological environment;
MPEP § 2106.05(e) (argued at Appeal Br. 19).
Appeal Br. 16.
Appellant further contends the analysis applied in BASCOM,9 when
properly applied to the present claims, would result in a determination that
“the ordered combination of elements is sufficient to set forth significantly
more than the alleged abstract idea.” Id. at 20–21.
In connection with step 2B, Appellant contends the Examiner has
failed to provide support for a determination that the elements in addition to
the underlying judicial exception(s) are well-understood, routine, and
conventional. Id. at 21–23 (citing Berkheimer v. HP Inc., 881 F.3d 1360
(Fed. Cir. 2018)).
In connection with various dependent claims, Appellant contends each
“define[s] the non-generic computer operations recited in the independent
claims and therefore, further define[s] the specific ordered combination of

9 BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341
(Fed. Cir. 2016).
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operations which amounts to significantly more than any alleged abstract
idea.” Appeal Br. 23–27.
IV. Step 2A, Prong 1 (Judicial Exception)
Under Prong 1 of the 2019 Revised Guidance, we determine whether
the claim recites a recognized judicial exception.
Element (i) of claim 1 recites, in part, “performing . . . natural
language processing of content of a training corpus of electronic documents
to identify associations of action terms with required tools for performing
actions corresponding to the action terms.” Appellant directs attention to
paragraphs 20–21, 61–65, 69–73, and 112 of the Specification together with
Figures 3 and 4 of the drawings in support of this claim element. Appeal
Br. 2.
The cited portions of the Specification describe natural language
processing (NLP) functionally, as receiving and processing natural language
content and a database of tools characteristics and generating knowledge
data structures correlating actions with required tools and a confidence level
of the correlation. See, e.g., Spec. ¶ 20. This is part of “a learning phase in
which electronic documents of a training corpus . . . are used to learn what
tools are used in what contexts based on explicit mentions of such tools with
actions.” Spec. ¶ 21. For example, “[u]sing natural language processing
techniques, it can be determined from this statement that the action term
‘blend’ is associated with the tool ‘blender.’” Spec. ¶ 63. Rather than
describe detailed steps for implementing natural language processing,
Appellant discloses “[i]t should be appreciated that there may be many
different types of natural language processing techniques that may be
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implemented by the tool/action association learning engine 124 to identify
associations of action terms with noun phrases.” Spec. ¶ 65.
We agree with the Examiner that this element, as are the other
elements discussed below, is reasonably interpreted as a mental process, i.e.,
a concept performed in the human mind or using pen and paper. Final Act.
21 (claim 1 “is directed to a disembody[ed] concept; i.e., it comprises mental
activity forming an evaluation of e.g. sentences; it can be human behavior
using personal knowledge of grammar and vocabulary in a language.”) Our
determination is consistent with a common definition of natural-language
processing as “[a] field of computer science and linguistics that studies
computer systems that can recognize and react to human language, either
spoken or written.” MICROSOFT COMPUTER DICTIONARY 358 (5th ed. 2002).
Thus, natural language processing uses a computer to perform linguistic
tasks otherwise performed in the human mind including interpreting natural
language content and extracting particular information. Furthermore,
Appellant does not disclose any particular methodology used in performing
the natural language processing of content, reciting only the desired result of
“identify[ing] associations of action terms with required tools for performing
actions corresponding to the action terms.” See also Ans. 4 (“‘natural
language processing and cognitive processing of electronic content’ . . .
amount to nothing more than routine computer usage”) Thus, the
identification required by claim element (i) is reasonably interpreted as
reciting a concept able to be performed in the human mind (e.g., an
observation or evaluation) that is a mental process. The 2019 Revised
Guidance recognizes mental processes as constituting abstract ideas. 2019
Revised Guidance, 84 Fed. Reg. at 52.
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Element (ii) of claim 1 recites, in part, “training . . . an ontology
model based on the identified associations of the action terms with required
tools for performing actions corresponding to the action terms.” Appellant
directs attention to paragraphs 75–76 and 112 of the Specification together
with Figures 3 and 4 of the drawings in support of this claim element.
Appeal Br. 2. The cited portions of the Specification describe an ontology
model implemented as a hierarchical model representing parent-child
relationships between related concepts, such as linking an action to a tool or
object required to perform the action. Recognizing relationships and
associating actions with tools required for performing the actions is
reasonably characterized as an observation, evaluation, and/or judgment
performed in the human mind. Thus, the training required by claim element
(ii) is reasonably interpreted as reciting a concept performed in the human
mind that is a mental process. The 2019 Revised Guidance recognizes
mental processes as constituting abstract ideas. 2019 Revised Guidance, 84
Fed. Reg. at 52.
Element (iii) of claim 1 recites, in part, “performing . . . analysis of
electronic documents of one or more other corpora based on the trained
ontology model to identify required tools for performing actions specified in
the electronic documents.” Appellant directs attention to paragraphs 77–79
and 113 of the Specification together with Figures 3 and 4 of the drawings in
support of this claim element. Appeal Br. 2. The cited portions of the
Specification describes analyzing the content of documents based on the
trained domain specific ontology model to return required tools. By way of
example, the Specification discloses “the system may determine a
confidence that the project is attempting to achieve a particular outcome and
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thus, identifies tools that are consistent with the projects of the identified
type, e.g., high confidence that the project is a chair-construction project and
thus, the system will suggest tools found in other chair-construction
documents.” Spec. ¶ 78.
Recognizing relationships and associating actions with tools required
for performing the actions based on past experiences/learning (i.e., an
ontology model) is reasonably characterized as an observation, evaluation,
and/or judgment performed in the human mind. Thus, the analysis required
by claim element (iii) is reasonably interpreted as reciting a concept
performed in the human mind that is a mental process. The 2019 Revised
Guidance recognizes mental processes as constituting abstract ideas. 2019
Revised Guidance, 84 Fed. Reg. at 52.
Element (iv) of claim 1 recites, in part, “annotating . . . one or more of
the . . . documents of the one or more other corpora to include required tools
annotation metadata identifying tools required to perform actions
corresponding to action terms present in the one or more electronic
documents to thereby generate at least one updated corpus.” Appellant
directs attention to paragraphs 58, 81–82, and 113 of the Specification
together with Figures 3 and 4 of the drawings in support of this claim
element. Appeal Br. 2. The cited portions of the Specification describe
augmenting documents with information specifying the required tools for
performing actions specified in the documents. Thus, annotating is
reasonably interpreted as augmenting information with related information,
i.e., associating information. Recognizing relationships and associating
information are reasonably characterized as observations, evaluations, and/or
judgments performed in the human mind and/or with pen and paper (e.g.,
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recording information). Thus, the annotating required by claim element (iii)
is reasonably interpreted as reciting a concept performed in the human mind
that is a mental process. The 2019 Revised Guidance recognizes mental
processes as constituting abstract ideas. 2019 Revised Guidance, 84 Fed.
Reg. at 52.
We disagree the Examiner has mischaracterized the invention.
Appeal Br. 4. Other than generic computer components in the form of
hardware (i.e., processor and memory) and generic functions performed by
that hardware (i.e., analyzing information using natural language processing,
identifying and linking objects to train and apply the learned relationships,
and providing the results by annotating a document), claim 1 recites
concepts performed in the human mind, i.e., mental processes as discussed
above. Furthermore, our reviewing court recognizes that
“[a]n abstract idea can generally be described at different levels of
abstraction.” Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir.
2016). That need not and, in this case does not, “impact the patentability
analysis.” Id. at 1241. For the reasons discussed above, we determine that
claim 1 recites subject matter reasonably characterized as mental processes
(i.e., observations, evaluations, judgments, and opinions that are concepts
performed in the human mind or with pen and paper), which are identified in
the 2019 Revised Guidance as abstract ideas. See 2019 Revised Guidance,
84 Fed. Reg. at 52.
III. Step 2A, Prong 2 (Integration into a Practical Application)
Under Step 2A, Prong 2, of the 2019 Revised Guidance, we determine
whether the additional elements beyond the abstract idea, alone or in
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combination, integrate the abstract ideas into a practical application. 2019
Revised Guidance, 84 Fed. Reg. at 54. The 2019 Revised Guidance
provides exemplary considerations that are indicative of an additional
element or combination of elements integrating the judicial exception into a
practical application, such as an additional element reflecting an
improvement in the functioning of a computer or an improvement to other
technology or technical field. Id. at 55; MPEP § 2106.05(a).
We agree with the Examiner “the additional limitations simply call for
the implementation of the abstract idea on a conventional processor” and are
insufficient to ensure that the claims amount to significantly more than the
abstract idea itself. Final Act. 21. Method claim 1 recites a data processing
system comprising a processor and memory with instructions causing the
processor to implement the steps recited by claim elements (i) through (iv).
In addition, each of the claim elements is recited as being implemented in a
generic computer environment. Similarly, the claim elements specifically
refer to electronic documents. Likewise, extracting information from these
electronic documents is performed using natural language processing,
meaning computer processing for recognizing and reacting to human
language, i.e., providing functionality corresponding to that performed in the
human mind as mental processes.
As found by the Examiner, Appellant discloses the claimed data
processing system as a general-purpose computer. Ans. 12 (citing Spec.
¶ 31). See also, e.g., Spec. ¶ 51. (“[C]ognitive system 100 is implemented
on one or more computing devices 104A-D (comprising one or more
processors and one or more memories, and potentially any other
computing device elements generally known in the art including buses,
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storage devices, communication interfaces, and the like)” connected to the
computer network 102.) Consistent with the 2019 Revised Guidance, these
additional elements are not sufficient to integrate the judicial exception into
a practical application of a judicial exception as they effectively amount to
instructions to apply the judicial exception using generic technology, or that
merely includes instructions to implement an abstract idea on a computer, or
that merely use a computer as a tool to perform an abstract idea. 2019
Revised Guidance, 84 Fed. Reg. at 54; see also Alice, 573 U.S. at 221
(“[M]erely requir[ing] generic computer implementation[] fail[s] to
transform that abstract idea into a patent-eligible invention.”); MPEP
§ 2106.05(f)(2) (“Use of a computer or other machinery in its ordinary
capacity for economic or other tasks (e.g., to receive, store, or transmit data)
or simply adding a general purpose computer or computer components after
the fact to an abstract idea (e.g., a fundamental economic practice or
mathematical equation) does not . . . provide significantly more.”).
In connection with natural language processing, for the reasons
discussed above, the functionality provided by such processing is reasonably
characterized as a mental process. Considering the implementation of such a
mental process on a machine (i.e., computer), Appellant identifies suitable
cognitive systems include IBM Watson™. Spec. ¶ 43. Functionally, natural
language processing is described as including basic operations of associating
data using rules, e.g., “[determining] . . . that the action term ‘blend’ is
associated with the tool ‘blender.’” Spec. ¶ 63; accord Ans. 4 (“‘natural
language processing and cognitive processing of electronic content’ . . .
amount to nothing more than routine computer usage.”). Thus, based on (1)
the lack of detail provided in connection with performance of the recited
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natural language processing, (2) the availability of cognitive systems
implementing natural language processing, and (3) the apparent simplicity of
associating actions with tools for performing the action as evidenced by
Appellant’s example, the recited natural language processing is reasonably
considered to be a generic computer capability implemented on a generic
computing device.
In connection with the recited ontology model, Appellant generally
describes the model as functioning to associate an action with a tool. See,
e.g., Spec. ¶ 75. Thus, as explained above, the recited ontology model is
reasonably characterized as a mental process. Furthermore, for reasons
similar to those discussed above in connection with natural language
processing, the recited ontology model is reasonably considered to be a
generic computer capability implemented on a generic computing device.
Still further, annotating element (iv), in addition to its recited abstract
limitations, also recites only generic technology that amounts to insignificant
extra-solution activity. In particular, claim element (iv) recites “annotating,
by the data processing system, one or more of the electronic documents of
the one or more other corpora to include required tools annotation metadata
identifying tools required to perform actions corresponding to action terms
present in the one or more electronic documents to thereby generate at least
one updated corpus.” Identification of the tools is the subject of claim
element (iii). Thus, claim element (iv) merely outputs the result provided by
the prior step of claim element (iii) and is, therefore, reasonably
characterized as an insignificant extra-solution activity. See MPEP §
2106.05(g) (reciting “adding a final step of storing data . . . does not add a
meaningful limitation to the process of computing the area”); MPEP
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19
§ 2106.05(f)(2) (“Use of a computer or other machinery in its ordinary
capacity for economic or other tasks (e.g., to receive, store, or transmit data);
see also, e.g., OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363
(Fed. Cir. 2015) (noting that storing data is well-understood, routine, and
conventional and does not render claims eligible).
We are unpersuaded by Appellant’s contentions that the claims are
directed to a computer-based solution to a computer problem. See generally
Appeal Br. 4–23 (independent claims) and 23–27 (dependent claims).
Instead, we agree with the Examiner’s findings, reasoning, and responses to
Appellant’s contentions of error (Final Act. 2–22, Ans. 3–34) and add any
additional findings of fact appearing below for emphasis.
Appellant’s claimed invention identifies tools required to perform
actions. The tools being identified are not specific to actions performed by
computers in providing services, e.g., processing data. Instead, the action
and tools are described as, for example, implements used in preparing food
according to a recipe. The recited actions and tools are not specialized
computer functions or components, for example, software (e.g., a cache
maintenance routine) or hardware (e.g. memory) selected based on particular
computer operations (e.g., a particular multitasking operation) that thereby
improve the operations of the computer (e.g., memory usage and access
latency). Instead, Appellant’s claims involve the processing of information
in general and in a platform-agnostic environment as evidenced by
Appellant’s description of the identification of cooking implements required
to perform the steps of preparing food according to a recipe. See, e.g., Spec.
¶¶ 16, 37, 39, 81, 85. The problem to which the claims are directed is one of
collecting and organizing information, a problem that is neither unique to
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computer operations nor improves computer operations including
performing natural language processing.
Although Appellant’s claims employ a computer to implement actions
that would otherwise be accomplished in the human mind, “[M]erely
requir[ing] generic computer implementation[] fail[s] to transform that
abstract idea into a patent-eligible invention.” Alice, 573 U.S. at 221. Using
high level technical terminology such as natural language processing does
not effectively add an element to the abstract concept as it provides merely a
nom de plume designation for a mental process (i.e., interpreting a collection
of symbols to extract meaning and information) when performed by a
computer. Although aspects of that process as performed by a computer
may include patent-eligible subject matter if directed to overcoming a
problem specific to how a computer would collect and organize information,
that is not the case here. Instead, Appellant describes and claims natural
language processing at a high, generic level of detail and provides
insufficient evidence that the natural language processing or any other aspect
of the claimed invention is directed to solving a problem unique to the
computer itself or any other technology. Appellant’s claims merely
automate processes performed in the human mind or with pen and paper
without identifying and/or addressing technological challenges encountered
in making the transition from processing performed in the human mind to an
implementation by a machine, i.e., computer.
Addressing seriatim particular arguments made by Appellant
applicable to Prong 2 of our analysis, we disagree “the claimed invention is
not reciting mental activity of a human being but rather specific operations
of a computing device in a computing environment.” Appeal Br. 6. As
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discussed above, although the claims require a computer implementation of
the recited activities (i.e., operations), the claims are directed to those
abstract activities rather than how the computer accomplishes those
activities. Because we determine the activities recited by the claim elements
are reasonably characterized as mental processes, implementing those
activities in a computer environment using specific computer operations
does not transform the claims into patent-eligible subject matter. See
discussion supra.
We further disagree with Appellant’s assertion that “[m]ental
processes do not train an ontology model.” Id. at 7. According to one
source, “[o]ntology provides a way to model things that exist. Basic
constructs of an ontology model are classes, properties thereof and
inheritance.” Appellant’s U.S. Patent No. 7,962,503 B2, col. 1, ll. 31–33
(issued June 14, 2011). Thus, an ontology is a set of concepts within a
domain. Accordingly, an ontology model is reasonably interpreted as a
formalistic approach to defining relationships between information. Not
only is there insufficient evidence that training an ontology model is a
specialized process that cannot be performed in the human mind or with pen
and paper, but there is insufficient evidence that an ontology model is not
how a human mind would actually process information to form
relationships. In so finding, we remind Appellant that mere attorney
argument and conclusory statements, which are unsupported by factual
evidence, are entitled to little probative value. In re Geisler, 116 F.3d 1465,
1470 (Fed. Cir. 1997); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
Attorney argument is not evidence. In re Pearson, 494 F.2d 1399, 1405
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(CCPA 1974). Nor can such argument take the place of evidence lacking in
the record.
Appellant’s argument that annotating and electronic documents
cannot be a mental process (Appeal Br. 7) is also unpersuasive. Annotating
can be accomplished with pen and paper as discussed under Prong 1 and, in
any case, is mere extra-solution activity as discussed above. Requiring the
annotation be of an electronic document is no more than implementing a
human process on a computer wherein electronic documents represent paper
documents.
Appellant’s analogy to Enfish (id. at 8–9) is also unpersuasive in
demonstrating the claims include significantly more than the abstract idea of
evaluating a document to identify required tools for performing actions. In
Enfish, the Federal Circuit relied on the distinction made in Alice between
improvements to computer functionality and uses of existing computers as
tools in aid of processes focused on “abstract ideas.” See Enfish, 822 F.3d at
1335–36; see also Alice, 573 U.S. at 222–25. The present case is different
from Enfish because the focus of the claims here is not on an improvement
in computers as tools or upon an innovative way to use computers or other
devices; but, instead, the claims are directed to an abstract idea (i.e., mental
process) that uses generic and routinely used computer equipment as tools.
That is, here, the arguably innovative technique of claim 1 is inextricably a
part of the abstract idea of analyzing and manipulating data itself.
Moreover, nothing in the claims, understood in light of the Specification
(see, e.g., Spec. ¶ 51), requires anything other than off-the-shelf,
conventional computer equipment used for collecting and processing/
analyzing various information/data.
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Appellant’s reliance on McRO (Appeal Br. 11–13) is likewise
misplaced. The reasons claim 1 in McRO was found patent-eligible do not
apply to Appellant’s claims. “The claimed improvement [in McRO] was to
how the physical display operated (to produce better quality images), unlike
(what is present here) a claimed improvement in [an associating] technique
with no improved display mechanism.” SAP Am., Inc. v. InvestPic, LLC,
898 F.3d 1161, 1167 (Fed. Cir. 2018). That is, in McRO, data was used to
improve the technology, i.e., the display mechanism. Here, although claim 1
recites, e.g., (i) identifying associations, (ii) training a model, (iii) analyzing
documents, and (iv) annotating the documents, it merely recites the
functional results to be achieved. For example, claim 1 does not recite
technical implementation details of how the claimed method identifies
associations other than to indicate it is performed using natural language
processing. Specifying natural language processing represents little more
than a tautology, as the recited processing is the processing of a document
presumably having content that is represented in a natural language rather
than in machine language or data format. “Indeed, the claim language here
provides only a result-oriented solution, with insufficient detail for how a
computer accomplishes it. Our law demands more.” Intellectual Ventures I
LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1342 (Fed. Cir. 2017).
Appellant’s reliance on Finjan (Appeal Br. 13–16) is also
unpersuasive. The claims in Finjan “employ [] a new kind of file that
enables a computer security system to do things it could not do before. The
security profile approach allows access to be tailored for different users and
ensures that threats are identified before a file reaches a user’s computer.”
Finjan, 879 F.3d at 1305. Here, although the claims recite a specific abstract
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idea implemented in software, that software does not alter the computer
itself, but rather falls into the category of methods “that can be performed by
human thought alone . . . and is not patent-eligible under § 101.”
CyberSource, 654 F.3d at 1373, 1375 (“That purely mental processes can be
unpatentable, even when performed by a computer, was precisely the
holding of the Supreme Court in Gottschalk v. Benson.”).
Appellant’s contentions that the claims satisfy five of the six
categories of limitations listed at MPEP § 2106.05(I)(A) as qualifying as
“significantly more,” (Appeal Br. 16–19) are also unpersuasive. In
particular, Appellant argues “the claimed invention improves knowledge
representation in a corpus of electronic documents by the creation of the
required tools metadata and association of such required tools metadata with
the corresponding electronic documents, which in turn improves the
functionality of natural language processing and cognitive computing
systems.” Id.at 16–17. This argument is unpersuasive because the argued
improvement is to the underlying abstract concept of identify required tools
for performing actions specified in documents and annotating the document
with the identities of the tools. That is, the alleged improvement to
knowledge representation is neither unique to computers nor does it solve a
technological problem. Instead, the claimed method equally applies to
mental processes. For example, a person might well recognize (e.g., observe
and evaluate) and notate (e.g., use pen and paper) on a food recipe
describing ingredients and action steps for preparing a food, required
implements or tools (e.g., a grater to grate an ingredient or a blender to blend
a mixture of ingredients).
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In connection with how the annotations are stored, one definition of
metadata is “[d]ata about data. For example, the title, subject, author, and
size of a file constitute metadata about the file.” MICROSOFT COMPUTER
DICTIONARY 336 (5th ed. 2002). Thus, metadata as used in the claims is
merely data about the document, in this case, an electronic annotation
identifying required tools. We find insufficient evidence that the use of
metadata for making the annotations improves the functionality of natural
language processing and cognitive computing systems as argued.
We are also unpersuaded the claim recites an improvement to the
“functionality of the computer or data processing system by providing
additional functionality.” Appeal Br. 18. Again, any additional
functionality is part of the underling abstract concept rather than being
directed to the operation of the computer platform implementing the recited
actions.
Likewise, we are unpersuaded “the claim clearly recites the
application of the ‘abstract idea’ by a specific machine.” Id. In particular,
Appellant argues the claims are tied to a particular machine, and are,
therefore, patent-eligible because a general purpose computer becomes a
special purpose computer once it is programmed to perform particular
functions pursuant to instructions from program software. Id. The Supreme
Court made clear in Alice, however, that the recitation of generic computer
limitations is not enough to transform an otherwise patent-ineligible abstract
idea into a patentable invention. See Alice, 573 U.S. at 222–25.
We are also unpersuaded by Appellant’s argument “[t]he claimed
invention is not attempting to pre-empt all uses of any alleged abstract idea
of ‘evaluating a document’ or identifying ‘required tools for performing
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actions specified in electronic documents.” Appeal Br. 18. Preemption is
not a stand-alone test for eligibility. Although preemption “‘might tend to
impede innovation more than it would tend to promote it,’ thereby thwarting
the primary object of the patent laws” (Alice, 573 U.S. at 216 (quoting
Mayo, 566 U.S. at 71)), “the absence of complete preemption does not
demonstrate patent eligibility” (Ariosa Diagnostics, Inc. v. Sequenom, Inc.,
788 F.3d 1371, 1379 (Fed. Cir. 2015); see also OIP Techs., 788 F.3d at
1362–63 (“[T]hat the claims do not preempt all price optimization or may be
limited to price optimization in the e-commerce setting do not make them
any less abstract.”).
Appellant’s further argument that “[a] general purpose computing
device does not perform [the claimed] operations” (Appeal Br. 19) is also
unpersuasive. Programming a general-purpose computer to perform abstract
ideas does not integrate those ideas into a practical application. See 2019
Eligibility 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).
Appellant’s contention that the “the claims clearly provide meaningful
limitations beyond generally linking the use of any alleged abstract idea to a
particular technological environment” because they apply “machine learning
to the training of an ontology model” is unpersuasive for, inter alia, the
reason articulated by the Examiner. See Ans. 14–15. In particular, the
Examiner determines, and we agree, the claims do not recite the argued
machine learning and, accordingly, such argument is not commensurate in
scope with the claims. Id. Furthermore, any implied learning is part of the
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underlying abstract concept rather than an additional element considered
under Prong 2 of our analysis.
We also are unpersuaded the claims are patent-eligible based on any
similarity with the subject matter determined to be patent-eligible in
BASCOM as argued. See Appeal Br. 21–22. 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. In that case, the installation of a filtering tool at a specific
location, remote from the end users, with customizable filtering features
specific to each end user, provided an inventive concept in that it gave the
filtering tool both the benefits of a filter on a local computer and the benefits
of a filter on the ISP server. Id. No analogous achievement of a technical
improvement exists here. Appellant has not shown that any of the presently
claimed steps address a technological problem.
For the reasons outlined above, we determine that claim 1 recites
mental processes, i.e., an abstract idea, and that the additional elements
recited in the claim, i.e., processor, memory (claims 1 and 20), and computer
readable medium (claim 11), are no more than generic components used as
tools to perform the recited abstract idea. As such, the additional elements
do not integrate the abstract idea into a practical application. See Alice,
573 U.S. at 223–24 (“[W]holly generic computer implementation is not
generally the sort of ‘additional featur[e]’ that provides any ‘practical
assurance that the process is more than a drafting effort designed to
monopolize the [abstract idea] itself.’” (quoting Mayo, 566 U.S. at 77)).
Accordingly, we agree with the Examiner that the independent claims are
directed to an abstract idea.
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Step 2B
The only claim elements beyond the recited abstract idea are a data
processing system (claim 1) including a processor and a memory (claims 1
and 20) and computer readable storage medium storing a computer readable
program (claim 11) performing each of the steps otherwise recited by the
elements of claim 1. Appellant contends “The Examiner has not satisfied
any of these 4 ways [discussed at MPEP §§ 2106.05(d)(I)(2) and
2106.07(a)(III)] of establishing additional elements as being well-
understood, routine, or conventional and thus, has not presented a prima
facie case.” Appeal Br. 22. Appellant further argues “[a]nyone of ordinary
skill in the art would readily recognize that causing a data processing system
or computing device to learn associations of tools with action terms is not a
generic computer operation,” making corresponding contentions with regard
to training an ontology model, analyzing electronic documents based on the
model, and annotating the documents. Id. According to Appellant, “[t]he
claims clearly recite specific non-generic operations being performed by a
specific data processing system or computing device.” Id. at 23.
The Examiner responds, explaining that, “according to applicant’s
original disclosure . . ., the steps in these claim limitations require nothing
beyond a ‘general purpose computer’, which refutes the assertion above that
the examiner is ‘merely alleging that processors and memories are
conventional’; i.e., according to published specification ¶ 0031.” Ans. 16.
See also Ans. 17 (citing Spec. ¶ 65).
We agree with the Examiner that all claim elements, with the
exception of the recited processors, memories, and computer readable
storage media, correspond to concepts determined to be abstract ideas for the
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reasons discussed above in connection with Prong 1 of our analysis. These
abstract concepts need not be shown to be well-understood, routine, and
conventional. Other than naked allegations, Appellant provides insufficient
evidence that the computer components (i.e., processors, memories, and
computer readable storage media) and functionalities required to execute the
claimed steps are anything other than well-understood, routine, and
conventional.
For example, although natural language processing may involve
complex procedures, Appellant discloses examples that are relatively
simplistic and on a par with operations considered generic computer
capabilities and/or functionalities, e.g., comparing, analyzing, and storing
data. In particular, Appellant discloses an example of the results of natural
language processing producing an annotation as follows: “the sentence
‘Blend milk and remaining berries’ may be annotated or augmented with
required tool information indicating a ‘blender’ while the sentence ‘Blend
the spices with the remaining dry ingredients’ may be annotated or
augmented with required tool information specifying a ‘spoon.’” Spec. ¶ 68.
That is, document text including the action word blend is associated with the
tool blender. Appellant discloses other examples of natural language
processing that are also relatively simplistic (e.g., relate specific actions
words to a corresponding tool) such as performing a morphological
similarity analysis. Spec. ¶ 69. “For example, in the sentence ‘Saw crown
molding making sure that the miter saw is at a 45 degree angle,’ the action
term ‘saw’ and the required tool ‘miter saw’ have overlap in the term ‘saw’
which is indicative of the text ‘miter saw’ being directed to a tool required to
perform the action ‘saw.’” Id. Thus, the argued computerized
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implementation of tasks performable in the human mind are not evidenced to
be anything other than conventional computer analysis and processing of
information even if encompassed within a branch of computer science (i.e.,
natural language processing) that may otherwise include more complex
processing that is not well-understood, routine, or conventional.
In sum, Appellant’s disclosure of a wide range of suitable processors
and computers and the lack of details describing implementation of the
recited functions (such as might have been indicated by inclusion of a
detailed flow chart depicting unconventional computer operations and/or
routines for performing each of the claimed steps), persuades us that the
omitted details are well-understood, routine, and conventional. See, e.g.,
MPEP § 2106.07(a)(III)(A).10
Consistent with the Berkheimer Memorandum, the claims merely
recite generic computer components (e.g., a data processing system having a
processor and memory) performing generic computing functions that are
well-understood, routine, and conventional. See Alice, 573 U.S. at 225 (the
“use of a computer to obtain data, adjust account balances, and issue
automated instructions; all of these computer functions are ‘well-understood,
routine, conventional activit[ies]’ previously known to the industry”)
(alteration in original) (quoting Mayo, 566 U.S. at 71–73); see also Benson,
409 U.S. at 65 (noting that a “computer operates then upon both new and

10 A specification demonstrates the well-understood, routine, conventional
nature of additional elements when it describes the additional elements as
well-understood or routine or conventional (or an equivalent term), as a
commercially available product, or in a manner that indicates that the
additional elements are sufficiently well-known that the specification does
not need to describe the particulars of such additional elements to satisfy 35
U.S.C. [§] 112(a).
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previously stored data. The general-purpose computer is designed to
perform operations under many different programs.”); FairWarning IP, LLC
v. Iatric Sys., Inc., 839 F.3d 1089, 1096 (Fed. Cir. 2016) (noting that using
generic computing components like a microprocessor or user interface does
not transform an otherwise abstract idea into eligible subject matter); Mortg.
Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324–25 (Fed.
Cir. 2016) (indicating components such as an “interface” are generic
computer components that do not satisfy the inventive concept requirement);
MPEP § 2106.05(d)(II) (citing Alice and Mayo); accord Berkheimer Memo
3–4. Thus, Appellant’s reliance on Berkheimer is misplaced.
For these reasons, we determine that claim 1 does not recite additional
elements that, either individually or as an ordered combination, amount to
significantly more than the judicial exception within the meaning of the
2019 Revised Guidance. 84 Fed. Reg. at 52–55; MPEP § 2106.05(d).
Appellant does not argue Independent claims 11 and 20 separately from
claim 1. Accordingly, for the reasons discussed above, Appellant’s
contentions of error in the rejection of claims 1, 11, and 20 under 35 U.S.C.
§ 101 are unpersuasive of error and we sustain the Examiner’s rejection of
independent claims 1, 11, and 20.
THE DEPENDENT CLAIMS
II. Examiner’s Determinations
The Examiner determines claims 2–10 “do not recite ‘significantly
more’ than what is recited in the parent claim 1, therefore they are also
directed to an abstract idea.” Final Act. 21. The Examiner rejects claim 12–
19, which are dependent from claim 11, based on similar reasoning. Id.
III. Appellant’s Contentions of Error
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Appellant contends “the Examiner fails to address any of the specific
additional features set forth in the dependent claims, let alone establish a
prima facie case that these claims allegedly recite non-statutory subject
matter.” Appeal Br. 23. Appellant argues the failure to individually address
each of the dependent claims is reversible error. Id.
Appellant further contends the dependent claims recite significantly
more than the alleged abstract idea. Id. at 23–27. In particular, Appellant
argues dependent claims 2 and 12 recite data processing system operations
that are “specific non-generic, non-routine, non-well-understood, and non-
conventional,” i.e., “non-WURC.” Id. at 24. Appellant makes similar non-
WURC arguments in connection with the pairs of dependent claims 3, 13
and 7, 17. Id. at 24, 26. Appellant further argues dependent claims 5–8 and
15–18 recite the performance of operations in a manner that is only
accomplished by a computer and not in the human mind. Id. at 25–26.
Appellant also argues claims and 4 and 14 “further defin[e] the specific
ordered combination of operations performed by the specifically configured
data processing system or computing device, which amounts to significantly
more than merely generally linking an alleged abstract idea to a generic
computer performing generic functions” (id. at 25), with similar argument
made in connection with claims 8 and 18 (id. at 26).
The Examiner responds, addressing Appellant’s contentions for each
pair of the dependent claims. Ans. 17–29. We agree with and adopt the
Examiner’s responses as our own.11

11 Although we disagree the Examiner fails to address the dependent claims,
we note in passing that the Federal Circuit has, in at least one case, found it
unnecessary to address those claims when they recite little more than the
same abstract idea and certain claims are analyzed as representative.
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Claims 2 and 12
Claim 2 recites:
The method of claim 1, wherein at least one electronic document
of the one or more other corpora does not explicitly indicate, in
content of the electronic document, a tool to perform a task
specified in the content of the electronic document, and wherein
performing analysis of electronic documents of one or more
other corpora based on the trained ontology model comprises
associating a tool with the task based on at least one action term
specified in the content of the electronic document in association
with the task.
Appellant argues “while [determining a required tool to perform an
action] may be something that may be intuitive to a human being, a
computer determining such associations is a technological operation that
requires a technological solution, as provided by the presently claimed
invention.” Appeal Br. 24. The Examiner responds, contending the
additional limitation “amounts to nothing more than execution [of] an
abstract idea on a conventional computer.” Ans. 18.
Appellant replies, contending claim 2 requires more than associating a
tool with a task by defining the problem as one of computer natural language
processing of electronic documents. Reply Br. 20. Thus, according to
Appellant, rather than claiming the abstract idea of associating tools with
actions, the claim recite “a specific computer tool that performs the specific
ordered combination of operations recited in the claims.” Id.
Appellant’s contention is unpersuasive of reversible Examiner error.
Claim 2 further limits claim 1 in that the required tool is not explicitly

Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat. Ass’n,
776 F.3d 1343, 1348 (Fed. Cir. 2014)
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indicated in the content of the electronic document. If the claims were
directed to performing natural language processing as argued, then the
claims would be expected to detail how natural language processing was to
be accomplished; Appellant’s claims do not. Instead, Appellant merely
provides examples that support a finding that the requirement for natural
language processing is achieved by merely associating an action with a tool
for performing that action. Thus, our analysis above in connection with
claim 1 is also applicable to claim 2. In particular, performing natural
language processing of content by associating the action “blend” with the
tool “blender” or the action term “saw” with the tool “miter saw” is the type
of computer processing that is well-understood, routine, and conventional.
See discussion infra. Accordingly, we sustain the rejection of dependent
claim 2 under 35 U.S.C. § 101 together with claim 12 which is argued
together with that of claim 2.
Claims 3 and 13
Claim 3 recites:
The method of claim 1, wherein performing natural language
processing of content of a training corpus comprises performing
a morphological similarity analysis that identifies action terms
and entities specified in natural language content of the training
corpus that have an overlapping stem.
Appellant argues claim 3 “further definin[es] a non-generic computer
operation that the data processing system or computing device recited in the
present claims must be specifically configured to perform.” Appeal Br. 24.
According to Appellant, “this is significantly more than any generic linking
of some alleged abstract idea to a computer and hence, recites significantly
more than any alleged abstract idea.” Id. The Examiner responds, finding
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“The claim is silent on the scope of the ‘morphological similarity’ and
‘stem.’” Ans. 18. The Examiner directs attention to the Specification
description of morphological similarity, but finds the “broad example is
neither limiting and nor specifically claimed. Indeed it is not even clear
what operation or operations if any are part of the ‘morphological similarity’
determination.” Id. at 19 (citing Spec. ¶ 69).
Appellant replies, arguing “[t]here is nothing unclear in [the] example
[disclosed at paragraph 69 of the Specification] to those of ordinary skill in
the art and the way to implement this morphological similarity analysis is
self-evident to those of ordinary skill in the art from the examples provided
in the present specification.” Reply Br. 23. Appellant further argues the
claimed “morphological similarity analysis is not a process that a human
mind would engage in, i.e., the claimed feature is a feature that only is
performed by a computer performing natural language processing of the
content of an electronic document.” Id
Appellant’s contention is unpersuasive of reversible Examiner error.
In the context of linguistics, morphology is the study of word formations.
The American Heritage Dictionary of the English Language 854 (Morris ed.,
1981). Morphological analysis is understood to be the grammatical analysis
of how words are formed by using morphemes, which are the minimum unit
of meaning. A stem is understood to be a root or existing word. Thus, claim
3 requires analyzing action terms and entities that have overlapping (e.g., the
same) base word-portions or morphemes. Thus, it is unclear why such
analysis is unique to natural language processing performed on a computer.
Certainly, a person knowing the meaning of an action word such as “fold”
would understand a similar, derivative word of “unfold” would mean to
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reverse the action of folding or that “refold” means to fold again. Likewise,
that “toasting” is performed by “toaster.” Modifying a root word, such as
the word “toast,” by appending the suffix “ing” to create a gerund or the
suffix “er” to indicate a device for operating on (e.g., creating) the subject of
the root and their corresponding interpretations are processes that are not
limited to machine analysis of language. Contrary to Appellant’s argument,
we disagree a human mind would not engage in a morphological similarity
analysis. Appellant provides insufficient evidence to persuade us otherwise.
Accordingly, we sustain the rejection of dependent claim 3 under 35 U.S.C.
§ 101 together with that of claim 13 which is argued together with claim 3.
Claims 4 and 14
Claim 4 recites (italicization added):
The method of claim 1, wherein performing natural language
processing of content of a training corpus comprises performing
a posteriori tool mention analysis which identifies text in the
content of the training corpus where a tool required to perform
an action corresponding to an action term in the text is present in
the text after an instance of the action term corresponding to the
action.
Appellant argues claim 4 “is again a specific type of computer
analysis of natural language content that is performed by the specifically
configured data processing system to identify tools required to perform
actions corresponding to an action term as part of the machine’s learning of
the association of tools with actions.” Appeal Br. 24–25.
The Examiner responds, finding, although giving an example of the
results of such analysis, the Specification fails to disclose how to perform
the recited a posteriori tool mention analysis. Ans. 20. The Examiner
considers it unclear how the recited steps “are interpreted by the applicant to
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correspond to ‘machine’s learning of the association of tools with actions’
as contended.” Id. According to the Examiner, “The steps quoted do not
require any machine learning either expressly and/or inherently. They don’t
define and/or require any specific algorithm, mathematical formalism,
and/or specific technique in a specific technology to warrant patent
eligibility.” Id. at 21.
Appellant replies, arguing
more important to the issue at hand [than whether there is support
for how to perform a posteriori tool mention analysis], is the fact
that a human mind does not explicitly perform a posteriori tool
mention analysis of content of electronic documents as part of a
natural language processing operation, precisely because this is
a computer operation, not an abstract idea.
Reply Br. 24 (italicization added).
Appellant’s contention is unpersuasive of reversible Examiner error.
As discussed by the Examiner, Appellant’s Specification provides an
example of a posteriori analysis of two sentences which, when considered
together, are used to identify a tool. See Ans. 20. Once again, it is unclear
why a human would not perform the same mental processes in relating an
action (e.g., bake) and a tool (e.g., oven) for performing the action.
Accordingly, we sustain the rejection of dependent claim 4 under 35 U.S.C.
§ 101 together with that of claim 14 which is argued together with claim 4.
Claims 5 and 15
Claim 5 recites:
The method of claim 1, wherein the ontology model comprises a
plurality of tuples, wherein each tuple associates an action term
with a corresponding tool for performing an action
corresponding to the action term, and wherein performing
analysis of electronic documents of one or more other corpora
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based on the trained ontology model to identify required tools for
performing actions specified in the electronic documents
comprises matching action terms in the electronic documents
with action terms in tuples of the plurality of tuples.
Appellant argues claim 5’s recitation of an ontology model
comprising a plurality of tuples “specifically definin[es] the way in which
the computer operations recited in the independent claims are actually
performed in a manner that is only done in a computer and thus, amounts to
significantly more than any general linking of any alleged abstract idea to a
generic computer.” Appeal Br. 25. The Examiner responds, finding, based
on the examples disclosed at paragraph 20 of the Specification, “[t]hese
operations can either be accomplished mentally by a human, and/or program
a computer using a simple program to form so-called ‘3-tuple’ and/or ‘4-
tuple’ data structures with similar properties.” Ans. 22.
Appellant replies, arguing “The issue is not whether similar results
could be achieved by a human mind, but rather whether the claimed
operations are claimed as being performed by a human mind or rather are
claimed as computer specific operations, i.e., as a technological solution to
technological problem.” Reply Br. 26.
Appellant’s contentions are unpersuasive. Contrary to Appellant’s
argument, a mental process is not rendered patent-eligible by limiting to
execution on a machine. Here, forming tuples is merely a tool in analyzing a
document to associate actions with instrumentalities for performing the
actions or are otherwise associated with the actions. The particular
algorithms used to make the associations do not impart patent-eligibility
because, rather than directed to improving the operation of the computer, the
functionalities implemented by the algorithms are part of the underlying
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abstract concept of associating actions with tools. Accordingly, we sustain
the rejection of dependent claim 5 under 35 U.S.C. § 101 together with that
of claim 15 which is argued together with claim 5.
Claims 6 and 16
Claim 6 recites:
The method of claim 5, wherein each tuple further associates the
action term and corresponding tool with at least one of an object
upon which the action is performed or a confidence score
indicating a confidence that the corresponding tool is required to
perform an action corresponding to the action term.
Appellant’s argument is substantially the same as argued against the
rejection of claim 5 (Appeal Br. 25) and is unpersuasive for similar reasons
including those set forth by the Examiner (see Ans. 23–24
Accordingly, we sustain the rejection of dependent claim 6 under 35
U.S.C. § 101 together with that of claim 16 which is argued together with
claim 6.
Claims 7 and 17
Claim 7 recites:
The method of claim 6, wherein the confidence score is
calculated by the data processing system based on a function of
a frequency of occurrence of the tuple present in the training
corpus.
Appellant argues computers, not human, calculate confidence scores
and use tuples. Therefore, according to Appellant, claim 7 recites
significantly more than the abstract idea. Thus, Appellant’s argument is
substantively similar to the previously discussed argument that we find
unpersuasive for the reasons discussed above. In particular, “[M]erely
requir[ing] generic computer implementation[] fail[s] to transform that
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abstract idea into a patent-eligible invention.” Alice, 573 U.S. at 221.
Although claim 7 recites specific actions, these actions represent the
machine equivalent of human thought, i.e., the details of programming a
computer to accomplish the underlying concept of identify required tools for
performing actions specified in documents and annotating the document
with the identities of the tools. Rather than improving how the computer
operates, these details are part of a high-level implementation of the abstract
concept using a computer, i.e., how the concept is implemented. Couching
the claims in technical parlance reciting computer operations equivalent to
actions performed in the human mind (e.g., observations and evaluations)
does not change that the claims merely recite the routine automation of
mental processes. Thus, these details fail to transform the claimed abstract
idea into a patent-eligible application. Accordingly, we sustain the rejection
of dependent claim 7 under 35 U.S.C. § 101 together with that of claim 17
which is argued together with claim 7.
Claims 8 and 18
Claim 8 recites:
The method of claim 1, wherein performing natural language
processing of content of a training corpus comprises:
applying one or more pre-defined textual patterns to the
content of the training corpus, wherein each pre-defined textual
pattern specifies a mention of a tool name and an action term;
identifying matching portions of text in the content of the
training corpus that match one or more of the pre-defined textual
patterns; and
extracting, from the matching portions of text, a tool name
and action term.
Appellant’s arguments in connection with claim 8 (Appeal Br. 26) are
similar to those discussed above and are unpersuasive for similar reasons.
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Accordingly, we sustain the rejection of dependent claim 8 under 35 U.S.C.
§ 101 together with claim 18 which is argued together with claim 8.
Claims 9 and 19
Claim 9 recites:
The method of claim 1, further comprising:
receiving, by the data processing system from a user
computing device, a request for a project to be performed by the
user;
performing, by the data processing system, a search of the
updated corpus for a document specifying instructions for
performing a project matching criteria specified in the request;
identifying, by the data processing system, based on the
search results, tools required to perform tasks specified in the
instructions for performing the project; and
outputting, by the data processing system, the document
specifying instructions for performing the project and a listing of
required tools for performing tasks specified in the search results
to a user via the user computing device.
Appellant’s arguments in connection with claim 9 (Appeal Br. 26–27)
are similar to those discussed above and are unpersuasive for similar
reasons. Accordingly, we sustain the rejection of dependent claim 9 under
35 U.S.C. § 101 together with that of claim 19 which is argued together with
claim 9.
Claim 10
Claim 10 recites:
The method of claim 9, further comprising:
performing, by the data processing system, for at least one
tool in the listing of required tools, a search of at least one tool
provider information source for tool information describing the
at least one tool in the listing of required tools; and
outputting, by the data processing system, the tool
information obtained from the at least one tool provider
information source.
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Appellant’s arguments in connection with claim 9 (Appeal Br. 26–27)
are similar to those discussed above and are unpersuasive for similar
reasons. Accordingly, we sustain the rejection of dependent claim 9 under
35 U.S.C. § 101 together with claim 19 which is argued together with claim
9.
DECISION SUMMARY
In summary:
We affirm the Examiner’s rejection of claims 1–20 under 35 U.S.C.
§ 101 as being directed to patent-ineligible subject matter.

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

AFFIRMED
Claims
Rejected
35 U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed
1–20 101 Eligibility 1–20