Ivory Wellman. Knipfer et al.

Patent Trials and Appeals Board

Mar 12, 2020

13163673 - (D) (P.T.A.B. Mar. 12, 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.
13/163,673 06/18/2011 Ivory Wellman Knipfer AUS920110111US1 1198
133513 7590 03/12/2020
IBM CORP. (WIP)
c/o WALDER INTELLECTUAL PROPERTY LAW, P.C.
1701 N. COLLINS BLVD.
SUITE 2100
RICHARDSON, TX 75080
EXAMINER
ROBINSON, AKIBA KANELLE
ART UNIT PAPER NUMBER
3628
MAIL DATE DELIVERY MODE
03/12/2020 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 IVORY WELLMAN KNIPFER, CARL CRAIG MEIER,
DALE WILLIAM PETERSILKA, and
MATTHEW H. ZEMKE
___________

Appeal 2018-008929
Application 13/163,673
Technology Center 3600
____________

Before CAROLYN D. THOMAS, CARL W. WHITEHEAD JR.
and KARA L. SZPONDOWSKI, Administrative Patent Judges.

WHITEHEAD JR., Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 is appealing the final rejection of claims 1–6, 9–14, and
16–23 under 35 U.S.C. § 134(a). Appeal Brief 6. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.

Introduction

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies International Business Machines
Corporation, as the real party in interest. Appeal Brief 2.
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According to Appellant, the invention is directed to a “production
system includ[ing] an information handling system (IHS) having a carrier
capacity prediction tool that receives a customer order that may include
packaging and carrier requirements.” Abstract.

Representative Claim
1. A method, in an information handling system (IHS) having a
processor and a memory, the memory comprising instructions which are
executed by the processor to specifically configure the processor to
implement a carrier capacity prediction tool, the method comprising:
receiving, by the carrier capacity prediction tool of the IHS, a first
order for configurable customer goods at a first order time;
determining, by the carrier capacity prediction tool, a complexity level
exhibited by the first order based on availability of volumetric weight data in
a volumetric weight database, wherein the complexity level comprises at
least one of a first complexity level corresponding to a simple order whose
volumetric weight is specifically calculated based on specific order
characteristic information and specific packaging history information in the
volumetric weight database corresponding to the configurable customer
goods, and a second complexity level corresponding to a complex order, for
which there is insufficient specific order characteristic information and
insufficient specific packaging history information for the configurable
customer goods in the volumetric weight database, and whose volumetric
weight is estimated based on a predictive analysis of the first order using
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historical information for similar customer goods of previously processed
orders;
determining, by the carrier capacity prediction tool, a carrier capacity
for the configurable customer goods corresponding to the first order based
on the determined complexity level exhibited by the first order, wherein:
the carrier capacity is specifically calculated based on the
specifically calculated volumetric weight of the configurable customer
goods in response to the complexity level being the first complexity
level,
the carrier capacity is estimated based on an estimation of the
volumetric weight of the configurable customer goods in response to
the complexity level being the second complexity level, and
the carrier capacity includes volumetric weight of the
configurable customer goods of the first order;
generating, by the carrier capacity prediction tool, carrier
capacity requirements for the first order based on at least one of the
determined or predicted carrier capacity; and
outputting, by the carrier capacity prediction tool, the carrier
capacity requirements to a shipping department IHS that operates on
the carrier capacity requirements to ship the configurable customer
goods corresponding to the first order, wherein the shipping
department IHS:
receives the carrier capacity requirements;
processes the carrier capacity requirements to determine a
number of shipping vehicles with an appropriate volume and weight
capability to ship the configurable customer goods; and
orders the number of shipping vehicles based on the
determination.
Rejection on Appeal
Claims 1–6, 9–14 and 16–23 stand rejected under 35 U.S.C. § 101 as
being directed to patent-ineligible subject matter. Final Action 2–3.

ANALYSIS
Rather than reiterate the arguments of Appellant and the Examiner,
we refer to the Appeal Brief (filed August 24, 2017), the Reply Brief (filed
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September 13, 2018), the Final Action (mailed March 27, 2017) and the
Answer (mailed July 13, 2018), for the respective details.

PRINCIPLES OF LAW
A. Section 101
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
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
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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
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 part
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.
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(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)
(“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 October 2019 Update at 1.
Under the 2019 Revised Guidance and the October 2019 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

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 “October
2019 Update”) (available at https://www.uspto.gov/sites/default/files/
documents/peg_oct_2019_update.pdf).
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
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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
“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.

35 U.S.C. § 101 Rejection
The Examiner determines the claims are patent ineligible under
35 U.S.C. § 101. See Final Action 2–3. We agree with the Examiner’s
determination because the claims are directed to an abstract idea comprising
“Mathematical concepts—mathematical relationships, mathematical
formulas or equations, mathematical calculations” and do not include
additional elements that are sufficient to amount to significantly more than
the abstract idea. See Alice, 573 U.S. at 217 (describing the two-step
framework “for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts”).

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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We are not persuaded the Examiner’s rejection is in error. Unless
otherwise indicated, we adopt the Examiner’s findings and conclusions as
our own. We add the following primarily for emphasis and clarification
with respect to the 2019 Revised Guidance.
Alice/Mayo—Step 1 (Abstract Idea)
Step 2A–Prongs 1 and 2 identified in the 2019 Revised Guidance
Step 2A, Prong One (Recitation of an Abstract Idea)
“Appellant disagrees with the Final Office Action regarding the
conclusion that the claimed invention is directed to an abstract idea.”
Appeal Brief 7 (“With regard to whether the claims are ‘directed to’ an
abstract idea, the Final Office Action over simplifies and generalizes the
claimed invention and makes general conclusory allegations without any
evidential support or analysis.”).
The Specification discloses:
[A] method for determining required carrier capacity is
disclosed that includes receiving, by a carrier capacity prediction
tool, a first order for configurable customer goods at a first order
time. The method also includes determining at approximately the
first order time, by the carrier capacity prediction tool, if the first
order exhibits a first complexity level for which the carrier
capacity prediction tool already includes sufficient order
characteristic information and sufficient packaging history
information to make a carrier capacity prediction for the
configurable customer goods corresponding to the first order.
Specification ¶ 3.
Volumetric weight databases 300 includes part
information database 330 that may include volume and weight
information. Part information database 330 provides carrier
capacity prediction tool 180 with information pertaining to
particular part number volume and weight information. Part
information database 330 may provide carrier capacity
prediction tool 180 with volume and weight information that
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carrier capacity prediction tool 180 may accumulate to generate
a portion of total volume and weight information for customer
order 220, and more particularly for customer goods 255.
Specification ¶ 40.
Carrier capacity prediction tool 180 may employ the information
within weight minimum database 335 and weight maximum
database 336 to determine boundaries for weight information
that pertains to work units 235 and ultimately customer goods
255. In this manner, carrier capacity prediction tool 180 may
determine minimum and maximum weight predictions for
production system 210 finished goods, such as customer goods
255.
Specification ¶ 50.
Allowed packaging material database 340 includes an
available fill volume database 347 and actual volume coefficient
database 348. Available fill volume database 34 7 stores
information so that carrier capacity prediction tool 180 may
determine how much volume for particular customer goods 255
includes fill materials, such as foam padding or shipping peanuts.
Specification ¶55.

Claim 1 recites a method in an IHS with the carrier capacity
prediction tool:
[1] determining, by the carrier capacity prediction tool, a
complexity level exhibited by the first order based on availability
of volumetric weight data in a volumetric weight database,
wherein the complexity level comprises at least one of a first
complexity level corresponding to a simple order whose
volumetric weight is specifically calculated based on specific
order characteristic information and specific packaging history
information in the volumetric weight database corresponding to
the configurable customer goods, and a second complexity level
corresponding to a complex order, for which there is insufficient
specific order characteristic information and insufficient specific
packaging history information for the configurable customer
goods in the volumetric weight database, and whose volumetric
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is weight is estimated based on a predictive analysis of the first
order using historical information for similar customer goods of
previously processed orders;
[2] determining, by the carrier capacity prediction tool, a carrier
capacity for the configurable customer goods corresponding to
the first order based on the determined complexity level
exhibited by the first order, wherein:
the carrier capacity is specifically calculated based
on the specifically calculated volumetric weight of the
configurable customer
goods in response to the complexity level being the first
complexity level,
the carrier capacity is estimated based on an
estimation of the volumetric weight of the configurable
customer goods in response to the complexity level
being the second complexity level, and the carrier capacity
includes volumetric weight of the configurable customer
goods of the first order;
[3] generating, by the carrier capacity prediction tool,
carrier capacity requirements for the first order based on at least
one of the determined or predicted carrier capacity.

Accordingly, the claim recites the abstract idea of “Mathematical
concepts—mathematical relationships, mathematical formulas or equations,
mathematical calculations.” See 2019 Revised Guidance, Section I
(Groupings of Abstract Ideas); see also Specification ¶¶ 40–55. Our
reviewing court has found claims to be directed to abstract ideas when they
recited similar subject matter. See SAP America, Inc. v. InvestPic, LLC, 898
F.3d 1161, 1163 (Fed. Cir. 2018) (holding that claims to a “series of
mathematical calculations based on selected information” are directed to
abstract ideas); Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758
F.3d 1344, 1350 (Fed. Cir. 2014) (holding that claims to a ‘‘process of
organizing information through mathematical correlations’’ are directed to
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an abstract idea); Bancorp Servs., LLC v. Sun Life Assurance Co. of Can.
(U.S.), 687 F.3d 1266, 1280 (Fed. Cir. 2012) (identifying the concept of
“managing a stable value protected life insurance policy by performing
calculations and manipulating the results” as an abstract idea).4 Therefore,
we conclude the claims recite an abstract idea pursuant to Step 2A, Prong
One of the guidance. See 2019 Revised Guidance, Section III(A)(1) (Prong
One: Evaluate Whether the Claim Recites a Judicial Exception).

Step 2A, Prong Two (Integration into a Practical Application)
Under Prong Two of the 2019 Revised Guidance, we must determine
“whether the claim as a whole integrates the recited judicial exception
into a practical application of the exception”; it is noted that a “claim that
integrates a judicial exception into a practical application 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.” 2019 Revised Guidance,
Section III(A)(2).
Appellant argues:
The claims clearly are directed to a specific computer
environment implementation that is specifically configured and
operating to perform the specific combination of operations to
ultimately, through a specific process that did not exist prior the

4 See also Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed.
Cir. 2016) (holding that “collecting information, analyzing it, and displaying
certain results of the collection and analysis” are “a familiar class of claims
‘directed to’ a patent-ineligible concept”); see also In re TLI Commc’ns LLC
Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016); FairWarning IP, LLC v.
Iatric Sys., Inc., 839 F.3d 1089, 1093–94 (Fed. Cir. 2016).
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presently claimed invention, as is evident from the lack of any
prior art rejections in the Final Office Action, output carrier
capacity requirements to a shipping department information
handling system that operates on the carrier capacity
requirements to ship the configurable customer goods
corresponding to the first order.
Appeal Brief 9; see also Appeal Brief 11, 12. 14, 16–19, 27, 28.
We find Appellant’s arguments unpersuasive, as the claimed
recitation of generic computer components (database, processor) do not
suffice to render the claims patent eligible. See Specification ¶ ¶ 22, 23 and
39-41; see also Alice, 573 U.S. at 223 (“[T]he mere recitation of a generic
computer cannot transform a patent-ineligible abstract idea into a patent-
eligible invention.”). We further note, as the Federal Circuit has explained,
a “claim for a new abstract idea is still an abstract idea.” Synopsis, Inc. v.
Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016). Even
assuming the technique claimed was “[g]roundbreaking, innovative, or even
brilliant,” that would not be enough for the claimed abstract idea to be patent
eligible. See Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569
U.S. 576, 591 (2013).
Appellant contends, “Appellants are not preempting any alleged
abstract idea of determining carrier capacity requirements based on a
complexity level that corresponds to an order.” Appeal Brief 13–14. The
U.S. Supreme Court has described “the concern that drives this exclusionary
principle [i.e., the exclusion of abstract ideas from patent eligible subject
matter] as one of pre-emption.” Alice, 573 U.S. at 216. However,
characterizing preemption as a driving concern for patent eligibility is not
the same as characterizing preemption as the sole test for patent eligibility.
As our reviewing court has explained, “[t]he Supreme Court has made clear
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that the principle of preemption is the basis for the judicial exceptions to
patentability,” and “[f]or this reason, questions on preemption are inherent in
and resolved by the § 101 analysis.” Ariosa Diagnostics, Inc. v. Sequenom,
Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (citing Alice, 573 U.S. at 216).
Although “preemption may signal patent ineligible subject matter, the
absence of complete preemption does not demonstrate patent eligibility.” Id.
Moreover, “[w]here a patent’s claims are deemed only to disclose patent
ineligible subject matter under the [Alice/Mayo] framework . . . , preemption
concerns are fully addressed and made moot.” Id.; see also OIP Techs., Inc.
v. Amazon.com, Inc., 788 F.3d 1359, 1362–63 (Fed. Cir. 2015) (“[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.”).
Further, we find Appellant’s claims are distinguished from those
claims that our reviewing court has found to be patent eligible by virtue of
reciting technological improvements to a computer system because claims
merely employ a generic processor to implement the abstract idea wherein
there is no improvement to the processor itself. See, e.g., DDR Holdings,
LLC v. Hotels.com, L.P., 773 F.3d 1245, 1249, 1257 (Fed. Cir. 2014)
(holding that claims reciting computer processor for serving “composite web
page” were patent eligible because “the claimed solution is necessarily
rooted in computer technology in order to overcome a problem specifically
arising in the realm of computer networks”); Visual Memory LLC v. NVIDIA
Corp., 867 F.3d 1253, 1259 (Fed. Cir. 2017) (holding that claims directed to
“an improved computer memory system” having many benefits were patent
eligible); see also Appeal Brief 9, 16.
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Appellant also argues:
[T]he 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 determining a carrier capacity requirement for an order
based on a determined complexity level of the order, which is
determined based on availability of volumetric weight data, and
providing that carrier capacity requirement to a shipping
department information handling system to ship configurable
customer goods corresponding to the order.
Appeal Brief 21; see also Appeal Brief 22–27.
We do not find Appellants’ arguments persuasive because the claims
utilize a processor without any improvement to the functioning of the
processor itself. See generally Specification; Appeal Brief 19–22; see also
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335–36 (Fed. Cir. 2016)
(distinguishing between “claims are directed to an improvement to computer
functionality versus being directed to an abstract idea” or whether “the focus
of the claims is on the specific asserted improvement in computer
capabilities . . . or, instead, on a process that qualifies as an ‘abstract idea’
for which computers are invoked merely as a tool.”). The claims do not
recite an additional element or elements that reflect an improvement in the
functioning of a computer, or an improvement to other technology or
technical field. See Alice, 573 U.S. at 222 (“In holding that the process was
patent ineligible, we rejected the argument that ‘implement[ing] a principle
in some specific fashion’ will ‘automatically fal[l] within the patentable
subject matter of § 101.’” (Alterations in original) (quoting Parker v. Flook,
437 U.S. 584, 593 (1978))).
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In McRO5, the Federal Circuit concluded that the claim, when
considered as a whole, was directed to a “technological improvement over
the existing, manual 3-D animation techniques” through the “use [of] limited
rules . . . specifically designed to achieve an improved technological result in
conventional industry practice.” McRO, 837 F.3d at 1316. Specifically, the
Federal Circuit found that the claimed rules allowed computers to produce
accurate and realistic lip synchronization and facial expressions in animated
characters that previously could only be produced by human animators; and
the rules were limiting because they defined morph weight sets as a function
of phoneme sub-sequences. McRO, 837 F.3d at 1313 (internal citations
omitted).
We find insufficient evidence of record here that the present situation
is like the one in McRO where computers were unable to make certain
subjective determinations, i.e., regarding morph weight and phoneme
timings, which could only be made prior to the claimed invention by human
animators. See Appeal Brief 22–24. The Background section of the McRO
’576 patent includes a description of the admitted prior art method and the
shortcomings associated with that prior method. See McRO, 837 F.3d at
1303–06. There is no comparable discussion in Appellant’s Specification or
elsewhere of record. For example, see Appeal Brief 24 (“Thus, similar to
the McRO patent, the present claims are patent eligible because the claimed
process uses different techniques from those that have previously been
accomplished only manually.”), it is of note, that “[M]ere automation of
manual processes using generic computers does not constitute a patentable

5 McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299, 1303
(Fed. Cir. 2016).
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improvement in computer technology.” Credit Acceptance Corp. v.
Westlake Services, 859 F.3d 1044, 1055 (Fed. Cir. 2017).
Subsequently, we detect no additional element (or combination of
elements) recited in Appellant’s representative claim 1 that integrates the
judicial exception into a practical application. See 2019 Revised Guidance,
Section III(A)(2). For example, Appellant’s claimed additional elements
(e.g., processor, database) do not: (1) improve the functioning of a computer
or other technology; (2) are not applied with any particular machine (except
for a generic computer); (3) do not effect a transformation of a particular
article to a different state; and (4) are not applied in any meaningful way
beyond generally linking the use of the judicial exception to a particular
technological environment, such that the claim as a whole is more than a
drafting effort designed to monopolize the exception. See MPEP
§ 2106.05(a)–(c), (e)–(h).
Accordingly, we determine the claim does not integrate the recited
judicial exception into a practical application. See 2019 Revised Guidance,
Section III(A)(2) (Prong Two: If the Claim Recites a Judicial Exception,
Evaluate Whether the Judicial Exception Is Integrated Into a Practical
Application).

Alice/Mayo—Step 2 (Inventive Concept)
Step 2B identified in the 2019 Revised Guidance
Step 2B
Next, we determine whether the claim includes additional elements
that provide significantly more than the recited judicial exception, thereby
providing an inventive concept. Alice, 573 U.S. at 217–18 (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72–73 (2012)).
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Appellant argues the “Examiner has failed to provide any
evidence that would demonstrate that Appellants are merely reciting
generic functionality of a generic computing device, i.e. a computing
device performing operations that are well-understood, routine, or
conventional. Reply Br. 9; see Berkheimer v. HP Inc., 881 F.3d 1360
(Fed. Cir. 2018). 2019 Revised Guidance, Section III (B) (footnote 36)
states (emphasis added):
In accordance with existing guidance, an examiner’s
conclusion that an additional element (or combination of
elements) is well understood, routine, conventional activity must
be supported with a factual determination. For more information
concerning evaluation of well-understood, routine, conventional
activity, see MPEP 2106.05(d), as modified by the USPTO
Berkheimer Memorandum[6].

The Berkheimer Memorandum Section III (A) states when
formulating rejections, “[i]n a step 2B analysis, an additional element (or
combination of elements) is not well-understood, routine or conventional
unless the examiner finds, and expressly supports a rejection in writing.”
The Berkheimer Memorandum provides four criteria for the Examiner to
utilize to provide support for the additional elements to be considered to be
well-understood, routine, or conventional. 7

6 “Changes in Examination Procedure Pertaining to Subject Matter
Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP,
Inc.).” April 19, 2018.

7 Berkheimer Memorandum Section III (A) (1. A citation to an express
statement in the specification or to a statement made by an applicant during
prosecution that demonstrates the well-understood, routine, conventional
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The Examiner determines in the Answer’s Response to Arguments
section that:
In fact, the ordering step of the present invention is well
understood, routine activity in the shipping industry, and when
combined with the other steps of the claims leads to a
combination of steps that are no more than well understood,
routine, conventional activity in the shipping industry for years.
In addition, with reference to Applicant’s specification,
paragraph 2 of the background admits that order fulfillment
including shipment of customer goods is normal. Also, as
discussed in MPEP, 2106.05(d)(II), Examiner cites to the
following court decisions as noting the well-understood, routine,
conventional nature of the steps of the claims: Recording a
customer’s order, Apple, Inc. v. Ameranth, Inc., 842 F3d 1229,
1244, 120 USPQ2d 1844, 1856 (Fed. Cir. 2016); and also
Electronic recordkeeping, Alice Corp., 134 S, Ct. at 2359, 110
USPQ2d at 1984 (creating and maintaining “shadow accounts”)
since the steps of the claims are merely processing the final
WURC action of ordering shipments for the customer.
Answer 13–14.
Consequently, we do not find Appellant’s argument persuasive
because in determining if the additional element (or combination of
additional elements) represents well-understood, routine, conventional
activity, the Examiner supported the determination based upon a factual

nature of the additional element(s); 2. A citation to one or more of the court
decisions discussed in MPEP § 2106.05(d)(II) as noting the well-understood,
routine, conventional nature of the additional element(s); 3. A citation to a
publication that demonstrates the well-understood, routine, conventional
nature of the additional element(s) and 4. A statement that the examiner is
taking official notice of the well-understood, routine, conventional nature of
the additional element(s).).

Appeal 2018-008929
Application 13/163,673

19

determination as specified in the Berkheimer Memorandum. See
Berkheimer Memorandum Section III (A)(1),(2); Answer 13–14.
Appellant further argues:
Applying similar analysis to the present claims, one can
clearly see that the claims are directed to an ordered combination
of elements that sets forth a technology-based solution to a
computer-based problem, namely carrier capacity requirement
determinations based on complexity levels associated with
orders where the complexity level is determined based on
availability of volumetric weight data in a volumetric weight
database, and the ordering of shipping vehicles to provide a
required carrier capacity for shipping configurable customer
goods.
Reply Brief 4; see Bascom Global Internet Servs., Inc. v. AT&T Mobility
LLC, 827 F.3d 1314 (Fed. Cir. 2016).
In Bascom, our reviewing court found that while the claims of the
patent were directed to an abstract idea, the patentee alleged an “inventive
concept can be found in the ordered combination of the claim limitations
that transform the abstract idea of filtering content into a particular, practical
application of that abstract idea.” Bascom, 827 F.3d at 1352. In particular,
the patent claimed “a technology-based solution (not an abstract-idea-based
solution implemented with generic technical components in a conventional
way) to filter content on the Internet that overcomes existing problems with
other Internet filtering systems.” Bascom, 827 F.3d at 1351. In contrast,
Appellant’s claim 1 is immediately distinguishable, as it recites an abstract-
idea-based solution, that is, carrier capacity prediction, implemented with
generic technical components (processor, database), in a conventional way.
(See generally Specification). Therefore, we are not persuaded that ordered
Appeal 2018-008929
Application 13/163,673

20

combinations of steps in claim 1 provide an inventive concept. See 2019
Revised Guidance at 56.
Accordingly, we conclude claims 1–6, 9–14 and 16–23 are directed to using
Mathematical concepts—mathematical relationships, mathematical formulas
or equations, mathematical calculations identified in the 2019 Revised
Guidance and are therefore directed to an abstract idea wherein the claims
do not recite limitations that amount to significantly more than the abstract
idea itself. We sustain the Examiner’s § 101 rejection of claims 1–6, 9–14
and 16–23.

CONCLUSION
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–6, 9–14,
16–23
101 Eligibility 1–6, 9–14,
16–23

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)(v).

AFFIRMED