J. Reddy et al.

Patent Trials and Appeals Board

Nov 17, 2021

2021001908 (P.T.A.B. Nov. 17, 2021)

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.
13/683,805 11/21/2012 J. Nirdosh Reddy ANA-00001 9501
72060 7590 11/17/2021
John A. Miller
Shumaker, Loop & Kendrick, LLP
1000 JACKSON STREET
TOLEDO, OH 43604
EXAMINER
MARCUS, LELAND R
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
11/17/2021 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
cgolupski@shumaker.com
hpeppard@shumaker.com
tlopez@shumaker.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte J. NIRDOSH REDDY and ARVIND J. REDDY
Appeal 2021-001908
Application 13/683,805
Technology Center 3600
Before THU A. DANG, JOYCE CRAIG, and MATTHEW J. McNEILL,
Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–19, 22–26, and 28–32. See Final Act.
1. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as named
inventors J. Nirdosh Reddy and Arvind J. Reddy. Appeal Br. 3.
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CLAIMED SUBJECT MATTER
The claims are directed to a process review system for becoming
globally competitive. Claim 1, reproduced below, illustrates the claimed
subject matter:
1. A computer system for managing processes in an organization
where the system comprises:
a computer with a memory having instructions embodied
on a non-transitory machine readable medium that:
determines a process flow for an organization with a
global process flowchart having a set of processes, where a first
process from the set of processes has a macro flowchart that has
a sub-process, and the sub-process has a micro flowchart, and
where the set of processes includes a set of primary processes
and at least one enabling process, where the set of primary
processes process the organization's orders, and the enabling
process enables at least one primary process, and where a second
process in the set of processes has an associated process leader
who is responsible for the second process, where the first process
and the second process can be the same process;
associates individual process summaries to individual
processes from the set of processes, where each process summary
has at least one related process selected from a list of a customer
process, a supplier process and an interfacing process;
associates the related process with a parameter to measure,
where the parameter to measure is an aspect of the individual
process, and where the parameter has expectations for the
measured values;
finds discrepancies between expectations for parameters
that measure the same feature where one parameter is measuring
the feature as output from an upstream process and the other
parameter is measuring the feature as input to a downstream
process, where the upstream process and the downstream process
are members of the set of processes;
receives actual measurement information about the
parameter from the processes in the organization, including
automatically receiving actual measurement information from
other systems;
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generates an exception report including a row for each
exception and a plurality of columns, where an exception is any
process from the global process flowchart set of processes having
a measurement parameter whose actual measurement does not
meet expectations or whose actual measurement information is
missing, and the columns include identification of which process
is an exception, a target value and a range for the expectations of
the measurement parameter, actual measurement minimum and
maximum values, percent of actual measurement outside of
range, and a reason why the exception is included in the
exception report;
sends emails or electronic alerts to the process leader
when an exception report is generated indicating where
improvements are needed for a process for which the process
leader is responsible;
sends emails or electronic alerts to the process leader
when a revised process summary, macro flowchart, or
expectation has been posted in the system and is in need of
approval by the process leader;
receives emails or electronic communications from the
process leader when a revised process summary, macro
flowchart, or expectation is approved by the process leader; and
sends emails or electronic alerts to the organization when
a process summary, a macro flowchart, or expectation is revised,
or when new global documents are released, attached or
published in the system.
Appeal Br. 23–24 (Claims App.) (limitations added by amendment shown in
italics).
REJECTION
Claims 1–19, 22–26, and 28–32 stand rejected under 35 U.S.C. § 101
because the claimed invention is directed to patent-ineligible subject matter.
Non-Final Act. 2–5.
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ANALYSIS
Appellant argues that the Examiner’s rejection of claim 1 under
35 U.S.C. § 101 as directed to patent-ineligible subject matter is in error. To
the extent Appellant has not advanced separate, substantive arguments for
particular claims, or other issues, such arguments are waived. 37 C.F.R.
§ 41.37(c)(1)(iv). Appellant argues claims 1–19, 22–26, and 28–32 as a
group. Appeal Br. 13. Given our discretion under 37 C.F.R.
§ 41.37(c)(1)(iv), we decide the § 101 rejection of claims 1–19, 22–26, and
28–32 based on representative claim 1.
Legal Standard
“Whether a claim is drawn to patent-eligible subject matter is an issue
of law that we review de novo.” SiRF Tech., Inc. v. Int’l Trade Comm’n, 601
F.3d 1319, 1331 (Fed. Cir. 2010).
The Supreme Court’s two-step framework guides our analysis of
patent eligibility under 35 U.S.C. § 101. Alice Corp. v. CLS Bank Int’l, 573
U.S. 208, 217 (2014). In addition, the Office published revised guidance for
evaluating subject matter eligibility under 35 U.S.C. § 101, specifically with
respect to applying the Alice framework. USPTO, 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Office
Guidance”). If a claim falls within one of the statutory categories of patent
eligibility (i.e., a process, machine, manufacture, or composition of matter)
then the first inquiry is whether the claim is directed to one of the judicially
recognized exceptions (i.e., a law of nature, a natural phenomenon, or an
abstract idea). Alice, 573 U.S. at 217. As part of this inquiry, we must “look
at the ‘focus of the claimed advance over the prior art’ to determine if the
claim’s ‘character as a whole’ is directed to excluded subject matter.”
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Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed.
Cir. 2016). Per Office Guidance, this first inquiry has two prongs of analysis
(i) does the claim recite a judicial exception (e.g., an abstract idea), and (ii)
if so, is the judicial exception integrated into a practical application. 84 Fed.
Reg. at 54. Under the Office Guidance, if the judicial exception is integrated
into a practical application, see infra, the claim is patent eligible under
§ 101. 84 Fed. Reg. at 54–55. If the claim is directed to a judicial exception
(i.e., recites a judicial exception and does not integrate the exception into a
practical application), the next step is to determine whether any element, or
combination of elements, amounts to significantly more than the judicial
exception. Alice, 573 U.S. at 217; 84 Fed. Reg. at 56. 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 (citation omitted).
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101.2,3

2 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (“2019 Revised Guidance”). 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”). “All USPTO
personnel are, as a matter of internal agency management, expected to
follow the guidance.” 84 Fed. Reg. at 51; see also Oct. 2019 Update at 1.
3 The Manual of Patent Examining Procedure (“MPEP”) now incorporates
this revised guidance and subsequent updates at Section 2106 (9th ed. Rev.
10.2019, rev. June 2020). All references to the MPEP are to the Ninth
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Under MPEP § 2106, 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 (“Step 2A, Prong Two”).4
MPEP § 2106.04(a) and (d).
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 activity”5 in the field; or

Edition, Revision 10.2019 (Last Revised June 2020), unless otherwise
indicated.
4 “Examiners evaluate integration into a practical application by: (1)
identifying whether there are any additional elements recited in the claim
beyond the judicial exception(s); and (2) evaluating those additional
elements individually and in combination to determine whether” the claim as
a whole “integrates the exception into a practical application.” MPEP
§ 2106.04(d)(II).
5 This corresponds to Alice part one where it is determined whether the claim
is “directed to” an abstract idea. See Alice, 573 U.S. at 219. If a claim is “not
directed to an abstract idea under part one of the Alice framework, we do not
need to proceed to step two.” Enfish, LLC v. Microsoft Corp., 822 F.3d
1327, 1339 (Fed. Cir. 2016).
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(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception.6
MPEP § 2106.05(d).
Step 1
Claim 1, as a system claim, recites one of the enumerated categories
of eligible subject matter in 35 U.S.C. § 101 (machine). See MPEP
§§ 2106.03, 2106.06.
Step 2A(i): Does the Claim Recite a Judicial Exception?
As an initial matter, we decline Appellant’s invitation to “revisit” the
issues raised in the previous appeal of the Examiner’s § 101 rejection of
claim 1. See Appeal Br. 13. The issues raised in previous appeals (Appeal
No. 2017-001071 and the request for rehearing thereof, and Appeal No.
2019-000504) were fully adjudicated by the Board, which most recently
issued a written decision in Appeal No. 2019-000504 on February 28, 2020.
We incorporate the February 28, 2020 decision (“2020 Decision”) herein by
reference unless otherwise noted.
Appellant’s attempt to incorporate its briefing from Appeal No. 2019-
000504 “by reference” is improper. See Appeal Br. 13. 37 C.F.R. § 41.37(c)
identifies the appropriate content for an Appeal Brief filed with the Board.
No subsection thereof provides for incorporation by reference. Rather, as
subsection (1) states, “[e]xcept as otherwise provided in this paragraph, the
brief shall contain the following items under appropriate headings and in the

6 This corresponds to Alice part two where it is determined whether the
claim contains an ‘inventive concept’ sufficient to ‘transform’ the claimed
abstract idea into a patent-eligible application.” Alice, 573 U.S. at 221.
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order indicated in paragraphs (c)(1)(i) through (v) of this section.” We
conclude that the attempt to incorporate by reference fails to constitute an
argument on the merits. See 37 C.F.R. § 41.37(c)(1)(iv) (“Except as
provided for in §§ 41.41, 41.47 and 41.52, any arguments or authorities not
included in the appeal brief will be refused consideration by the Board for
purposes of the present appeal.”); see also MPEP § 1205.02 (“It is essential
that the Board be provided with a brief fully stating the position of the
appellant with respect to each ground of rejection presented for review in the
appeal so that no search of the Record is required in order to determine that
position. Thus, the brief should not incorporate or reference previous
responses. 37 CFR 41.37(c)(1) requires that the brief contain specific items,
as discussed below.” (emphasis added)). Thus, we have considered in this
decision only those arguments Appellant actually raised in the Briefs.
Arguments not made are forfeited. See 37 C.F.R. § 41.37(c)(1)(iv) (2017).
Turning to the present appeal, Appellant first argues that claim 1 has
been amended “to include several steps for sending emails or electronic
alerts and a step for receiving emails or electronic communications,” which
are not methods of organizing human activity because “they are actual
physical and concrete processes and not processes of ‘organizing.’” Appeal
Br. 15–16.
We note that the analysis in step 2A(i) does not require that every
limitation in a claim recite an abstract idea in order for the claim to recite an
abstract idea. See MPEP § 2106.04(a) (“Examiners should determine
whether a claim recites an abstract idea by (1) identifying the specific
limitation(s) in the claim under examination that the examiner believes
recites an abstract idea, and (2) determining whether the identified
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limitations(s) fall within at least one of the groupings of abstract ideas listed
above. . . . If the identified limitation(s) falls within at least one of the
groupings of abstract ideas, it is reasonable to conclude that the claim recites
an abstract idea in Step 2A Prong One.”).
The Examiner determined that claim 1 recites “a process review
system for becoming globally competitive,” which is a certain method of
organizing human activity, and thus an abstract idea. Non-Final Act. 3; see
also 2020 Decision 5–6 (citing Final Act. 3). As in the 2020 Decision, we
agree with the Examiner that at least the “determines,” “associates,” and
“finds” steps, as recited in claim 1, are steps for managing personal behavior
or relationships or interactions between people, which is a certain method of
organizing human activity, and thus an abstract idea. See 2020 Decision 6.
With regard to the “send” and “receive” limitations added to claim 1
by Amendment, the Examiner determined that, because the added steps
“recite the method of use of emails or electronic alerts by a human,” the
added steps may be considered “a method of organizing human activity
associated with use of emails or electronic alerts.” Ans. 4.
Appellant’s arguments based on the definition of “organizing” in the
online dictionary, Dictionary.com, do not persuade us that the Examiner
erred. We refer Appellant to MPEP § 2106, which provides legal standards
and explanations that guide the § 101 analysis at the Board. See Ans. 6
(“[T]hese arguments are improper because the lay use of a word is
irrelevant”). The “certain methods of organizing human activity” category of
abstract ideas includes managing personal behavior or relationships or
interactions between people. See MPEP § 2106.04(a). The added “sends”
limitations, which convey information to “the process leader” and “the
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organization,” and the added “receives” limitation, which conveys
information from “the process leader,” involve managing personal behavior
or relationships or interactions between people. Thus, we agree with the
Examiner that the added “sends” and “receives” limitations recite a certain
method of organizing human activity.7 See Non-Final Act. 3; Ans. 3.
Appellant next argues that “physically sending and receiving emails
are not mental processes that can be performed in the human mind” because
“the claimed processes for sending and receiving emails are actual concrete
things performed by a human body, not the human mind.” Appeal Br. 17.
Appellant thus argues that claim 1 is not a mental process. Id.
The Examiner determined that claim 1 recites mental processes, and
thus an abstract idea. Non-Final Act. 3–4; see also 2020 Decision 5–6. As in
the 2020 Decision, we agree with the Examiner that at least the
“determines,” “associates,” and “finds” steps, as recited in claim 1, describe
concepts that can be performed mentally, which fall into the mental process
category of abstract ideas. See 2020 Decision 6–7.
With regard to the “sends” and “receives” limitations added to claim 1
by Amendment, the Examiner determined that “[t]he abstract idea of sending

7 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. Moreover, merely
combining several abstract ideas does not render the combination any less
abstract. RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir.
2017) (“Adding one abstract idea (math) to another abstract idea . . . does
not render the claim non-abstract.”); see also FairWarning IP, LLC v. Iatric
Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir. 2016) (determining the pending
claims were directed to a combination of abstract ideas).
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and receiving emails and electronic alerts is well within the capacity of the
human mind.” Ans. 4.
We agree with Appellant that the disputed “send” and “receive”
limitations do not recite mental processes. Instead, we treat those limitations
as “additional elements” for the remainder of our § 101 analysis. The
“determines,” “associates,” and “finds” steps of claim 1, however, recite
mental processes, which fall into one of the categories of abstract ideas. See
2020 Decision 6–7.
Because we agree with the Examiner that claim 1 recites an abstract
idea, we proceed to Prong Two of Step 2A to determine if the idea is
integrated into a practical application, in which case the claim as a whole
would not be “directed to” merely an abstract idea.
Step 2A(ii): Judicial Exception Integrated into a Practical Application?
We next determine whether the recited judicial exception is integrated
into a practical application of that exception by: (a) identifying whether
there are any additional elements recited in the claim beyond the judicial
exception(s); and (b) evaluating those additional elements individually and
in combination to determine whether they integrate the exception into a
practical application.
We use the term “additional elements” for claim features, limitations,
or steps that the claim recites beyond the identified judicial exception. See
MPEP § 2106.04(d). In claim 1, the additional elements include the
limitations “computer system” and “a computer with a memory having
instructions embodied on a non-transitory machine readable medium,” as
well as the recited “sends,” “receives,” and “generates” steps.
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Appellant argues that the “sends” and “receives” limitations, added by
Amendment, integrate the abstract ideas into a practical application because
“providing this information to actual persons as it is being generated
specifically and clearly provides a practical application for the claimed
invention.” Appeal Br. 19.
The Examiner determined that none of the additional limitations is
sufficient to amount to significantly more than the judicial exception
because the additional computer elements amount to “the use of a generic
computer performing generic computing tasks” that do not integrate the
abstract ideas into a practical application. Non-Final Act. 4. In particular, the
Examiner determined that “the claims do not recite how to send or receive
emails or electronic alerts.” Id. at 5.
Appellant’s arguments are not persuasive. We agree with the
Examiner that claim 1 as a whole merely uses instructions to implement the
abstract idea on a computer or, alternatively, merely uses a computer as a
tool to perform the abstract idea. See id. Here, the additional limitations,
including the disputed “sends” and “receives” limitations, do not integrate
the judicial exception into a practical application. More particularly, the
claims do not recite (i) an improvement to the functionality of a computer or
other technology or technical field (see MPEP § 2106.05(a)); (ii) a
“particular machine” to apply or use the judicial exception (see MPEP
§ 2106.05(b)); (iii) a particular transformation of an article to a different
thing or state (see MPEP § 2106.05(c)); or (iv) any other meaningful
limitation (see MPEP § 2106.05(e)). Rather, claim 1 recites an abstract idea
as identified in Step 2A(i), supra, and none of the limitations integrates the
judicial exception into a practical application.
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Therefore, because the abstract idea is not integrated into a practical
application, we conclude that the claim is directed to the judicial exception.
Step 2B — “Inventive Concept” or “Significantly More”
If the claims are directed to a patent-ineligible concept, as we
conclude above, we proceed to the “inventive concept” step. For Step 2B we
must “look with more specificity at what the claim elements add, in order to
determine ‘whether they identify an “inventive concept” in the application of
the ineligible subject matter’ to which the claim is directed.” Affinity Labs of
Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1258 (Fed. Cir. 2016)
(internal quotation omitted). We look to see whether there are any
“additional features” in the claims that constitute an “inventive concept,”
thereby rendering the claims eligible for patenting even if they are directed
to an abstract idea. Alice, 573 U.S. at 221. Those “additional features” must
be more than “well-understood, routine, conventional activity.” Mayo, 566
U.S. at 79.
Appellant argues that “the several steps of sending emails or
electronic alerts and receiving emails or electronic alerts create significantly
more and provide an inventive solution for the claimed invention.” Appeal
Br. 20. Appellant’s arguments rely on the Dictionary.com definitions for the
words “significant” and “more.” Id. at 20–21; see also Ans. 6.
Appellant’s arguments are not persuasive. The disputed “sending” and
“receiving” steps are merely data gathering steps that amount to insignificant
extra-solution activity that is insufficient to confer patent eligibility. See
MPEP § 2106.05(g). Appellant does not direct our attention to anything in
the Specification that indicates the computer components perform anything
other than well-understood, routine, and conventional functions, such as
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sending and receiving data, analyzing data, and generating a report.
Moreover, collecting, analyzing, and reporting data are routine computer
functions. See Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1355
(Fed. Cir. 2016); see also In re TLI Commc’ns LLC Patent Litig., 823 F.3d
607, 614 (Fed. Cir. 2016) (server that receives data, extracts classification
information from the received data, and stores the digital images insufficient
to add an inventive concept); Alice, 573 U.S. at 225–26 (receiving, storing,
sending information over networks insufficient to add an inventive concept).
Because the Specification describes the additional elements in general
terms, without describing the particulars, we conclude the claim limitations
may be broadly but reasonably construed as reciting conventional computer
components and techniques. See Berkheimer Memo8 § III.A.1; Spec. Fig. 1,
¶¶ 26, 74. We conclude claim 1 does not have an inventive concept because
the claim, in essence, merely recites various computer-based elements along
with no more than mere instructions to implement the identified abstract idea
using the computer-based elements.
Appellant further argues that “[t]here is no art rejection under 102 or
103” and “the contribution that the claimed invention makes over the prior
art should be considered in the patent subject matter eligibility analysis.”
Appeal Br. 17–18. As we explained in the 2020 Decision, the novelty of any

8 “Changes in Examination Procedure Pertaining to Subject Matter
Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP,
Inc.)” at 3 (Apr. 19, 2018) (explaining that a specification that describes
additional elements “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)” can
show that the elements are well understood, routine, and conventional).
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element or steps in a process, or even of the process itself, is of no relevance
in determining whether the subject matter of a claim falls within the § 101
categories of possibly patentable subject matter. See 2020 Decision at 15;
Diamond v. Diehr, 450 U.S. 175, 188–89 (1981).
For these reasons and the reasons set forth in the 2020 Decision, claim
1 is directed to an abstract idea, without significantly more. Accordingly, we
sustain the Examiner’s § 101 rejection of independent claim 1 and grouped
claims 2–19, 22–26, and 28–32, not argued separately with particularity.
DECISION
We affirm the decision of the Examiner rejecting claims 1–19, 22–26,
and 28–32.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–19, 22–26,
28–32
101 Eligibility 1–19, 22–26,
28–32

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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED