James Neal. Richter

Patent Trials and Appeals Board

Oct 15, 2019

13961586 - (D) (P.T.A.B. Oct. 15, 2019)

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.
13/961,586 08/07/2013 JAMES NEAL RICHTER ORA120925-US-
DIV-3(O-492)
6854
51444 7590 10/15/2019
Kraguljac Law Group/Oracle
4700 Rockside Road
Summit One, Suite 510
Independence, OH 44131
EXAMINER
MANSFIELD, THOMAS L
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
10/15/2019 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):
DDay@KragLaw.com
MPusti@KragLaw.com
PTOMail@KragLaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES NEAL RICHTER
Appeal 2017-011845
Application 13/961,586
Technology Center 3600

Before ROBERT E. NAPPI, LARRY J. HUME, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
HUME, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant,1 Oracle OTC Subsidiary
LLC, appeals from the Examiner’s decision rejecting claims 1 and 20–38,
which are all claims pending in the application. Appellant has canceled
claims 2–19. Final Act. 2; App. Br. 3. 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(a). Appellant identifies the real parties in interest as Oracle
OTC Subsidiary LLC, and Oracle International Corporation by virtue of
being the parent corporation to the Assignee and Applicant. App. Br. 3.
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STATEMENT OF THE CASE2
The Invention
The claims are directed to predictive and profile learning sales
automation analytics system and method. Spec., Title. In particular,
Appellant’s disclosed embodiments and claimed invention “relate[]
generally to sales automation and forecasting systems and, more particularly,
to tracking and storing sales data for performance prediction.” Spec. ¶ 1.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal:
1. A sales automation method comprising:
providing, by a computer, a repository of learned sales
data profiles and profiles representing goal sales of one or more
top-performing sales persons and a repository of raw sales data,
wherein the learned sales data profiles are modeled from one or
more raw sales records;
extracting, by the computer, raw sales data, learned sales
data, and sales data representing the goal sales of the one or
more top-performing sales persons;
defining, by the computer, a sales pipeline having a
construct of a series of stages thereby defining a sales strategy
where each stage is assigned a conversion rate and assumed
value potential, and wherein the sales pipeline includes one or
more deals;

2 Our decision relies upon Appellant’s Appeal Brief (“App. Br.,” filed
Mar. 27, 2017); Reply Brief (“Reply Br.,” filed Sept. 25, 2017); Examiner’s
Answer (“Ans.,” mailed July 27, 2017); Final Office Action (“Final Act.,”
mailed Sept. 27, 2016); and the original Specification (“Spec.,” filed
Aug. 7, 2013) (claiming benefit of U.S. Application No. 11/617,437, filed
Dec. 28, 2006, now issued as U.S. Patent No. 8,527,324 B2).
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correlating, by the computer, the raw sales data among
the series of stages based on a respective task;
correlating, by the computer, the learned sales data
among the series of stages based on the respective task;
correlating, by the computer, the sales data representing
the goal sales of the one or more top-performing sales persons
among the series of stages based on the respective task;
developing, by the computer, a predictive model of the
conversion rate of the sales strategy based on the correlating of
the learned sales data and the correlating of the sales data
representing the goal sales of the one or more top-performing
sales persons;
developing, by the computer, a raw predictive model
based on applying the predictive model to the correlated raw
sales data;
learning, by the computer, using a supervised machine
learning algorithm, a classification system for assigning quality
scores to the one or more deals using characteristics of the one
or more deals based on the raw predictive model; and
assigning, by the computer, a quality score to a deal from
the one or more deals based on the learned classification
system.
Rejection on Appeal3
Claims 1 and 20–38 are rejected under 35 U.S.C. § 101 because the
claimed invention is directed to a judicial exception (i.e., a law of nature, a
natural phenomenon, without significantly more). Final Act. 8.

3 We note the Examiner withdrew the objection to claims 1, 26, and 33, and
also withdrew the rejection of claims 1 and 20–38 under 35 U.S.C. § 112(a).
Final Act. 2.
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CLAIM GROUPING
Based on Appellant’s arguments (App. Br. 7–11) and our discretion
under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of the patent-
ineligible subject matter rejection of claims 1 and 20–38 on the basis of
representative claim 1.4
ISSUE
Appellant argues (App. Br. 7–11; Reply Br. 2–5) the Examiner’s
rejection of claim 1 under 35 U.S.C. § 101 as being directed to patent-
ineligible subject matter is in error. These contentions present us with the
following issue:
Under the USPTO’s Revised Guidance, informed by our governing
case law concerning 35 U.S.C. § 101, is claim 1 patent-ineligible under
§ 101?
PRINCIPLES OF LAW
A. 35 U.S.C. § 101
“Eligibility under 35 U.S.C. § 101 is a question of law, based on
underlying facts.” SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1166
(Fed. Cir. 2018).

4 “Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately.” 37 C.F.R. § 41.37(c)(1)(iv).
In addition, when Appellant does not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
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An invention is patent-eligible if it is a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.5
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. Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 70 (2012) (brackets in original) (citing Diamond v. Diehr,
450 U.S. 175, 185 (1981)).
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. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014)
(citing Mayo, 566 U.S. at 75–77). 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

5 This threshold analysis of whether a claim is directed to one of the four
statutory categories of invention, i.e., a process, machine, manufacture, or
composition of matter, is referred to as “Step 1” in the USPTO’s patent-
eligibility analysis under § 101. MPEP § 2106.
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determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diehr, 450 U.S. at 191); “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))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held “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 Supreme 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.”).
Abstract ideas may include, but are not limited to, fundamental
economic practices, methods of organizing human activities, and
mathematical formulas or relationships. Alice, 573 U.S. at 217–21. Under
this guidance, we must therefore ensure at step one that we articulate what
the claims are directed to with enough specificity to ensure the step one
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inquiry is meaningful. Id. at 217 (“[W]e tread carefully in construing this
exclusionary principle lest it swallow all of patent law.”).
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). “A claim
that recites an abstract idea must include ‘additional features’ to ensure ‘that
the [claim] is more than a drafting effort designed to monopolize the
[abstract idea].’” Id. (alterations in original) (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
B. USPTO Revised Guidance
The PTO recently published revised guidance in the Federal Register
concerning the application of § 101. 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50 (January 7, 2019) (hereinafter
“Revised Guidance”) (https://www.govinfo.gov/content/pkg/FR-2019-01-
07/pdf/2018-28282.pdf).
Under the Revised Guidance, 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);6 and

6 Referred to as “Revised Step 2A, Prong 1” in the Revised Guidance
(hereinafter “Step 2A(i)”).
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(2) additional elements that integrate the judicial
exception into a practical application (see Manual for Patent
Examining Procedure (“MPEP”) §§ 2106.05(a)–(c), (e)–(h)).7
See Revised Guidance 52–53.
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.8
See Revised Guidance 56.
Step 2A(i) – Abstract Idea
Informed by our judicial precedent, the Revised Guidance extracts and
synthesizes key concepts identified by the courts as abstract ideas to explain
that the abstract idea exception includes the following groupings of subject
matter, when recited as such in a claim limitation:
(a) Mathematical concepts—mathematical relationships,
mathematical formulas or equations, mathematical calculations;
(b) Certain methods of organizing human activity —
fundamental economic principles or practices (including
hedging, insurance, mitigating risk); commercial or legal
interactions (including agreements in the form of contracts;
legal obligations; advertising, marketing or sales activities or

7 Referred to as “Revised Step 2A, Prong 2” in the Revised Guidance
(hereinafter “Step 2A(ii)”).
8 Items (3) and (4) continue to be collectively referred to as “Step 2B” of the
Supreme Court’s two-step framework, described in Mayo and Alice.
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behaviors; business relations); managing personal behavior or
relationships or interactions between people (including social
activities, teaching, and following rules or instructions); and
(c) Mental processes—concepts performed in the human
mind (including an observation, evaluation, judgment, opinion).
Revised Guidance 52 (footnotes omitted).
Under the Revised Guidance, if the claim does not recite a judicial
exception (a law of nature, natural phenomenon, or subject matter within the
enumerated groupings of abstract ideas above), then the claim is patent
eligible at Step 2A(i). This determination concludes the eligibility analysis,
except in situations identified in the Revised Guidance.9
However, if the claim recites a judicial exception (i.e., an abstract idea
enumerated above, a law of nature, or a natural phenomenon), the claim
requires further analysis for a practical application of the judicial exception
in Step 2A(ii).
Step 2A(ii) – Practical Application
If a claim recites a judicial exception in Step 2A(i), we determine
whether the recited judicial exception is integrated into a practical
application of that exception in Step 2A(ii) 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

9 In the rare circumstance in which an examiner believes a claim limitation
that does not fall within the enumerated groupings of abstract ideas should
nonetheless be treated as reciting an abstract idea, the procedure described in
of the Guidance for analyzing the claim should be followed. See Revised
Guidance, Section III.C.
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in combination to determine whether they integrate the exception into a
practical application.
The seven identified “practical application” sections of the MPEP,10
cited in the Revised Guidance under Step 2A(ii), are:
(1) MPEP § 2106.05(a) Improvements to the Functioning of
a Computer or To Any Other Technology or Technical
Field
(2) MPEP § 2106.05(b) Particular Machine
(3) MPEP § 2106.05(c) Particular Transformation
(4) MPEP § 2106.05(e) Other Meaningful Limitations
(5) MPEP § 2106.05(f) Mere Instructions To Apply An
Exception
(6) MPEP § 2106.05(g) Insignificant Extra-Solution Activity
(7) MPEP § 2106.05(h) Field of Use and Technological
Environment
See Revised Guidance 55.
If the recited judicial exception is integrated into a practical
application as determined under one or more of the MPEP sections cited
above, then the claim is not directed to the judicial exception, and the patent-
eligibility inquiry ends. See Revised Guidance 54. If not, then analysis
proceeds to Step 2B.

10 See MPEP §§ 2106.05(a)–(c), (e)–(h). Citations to the MPEP herein refer
to revision [R-08.2017]. Sections 2106.05(a), (b), (c), and (e) are indicative
of integration into a practical application, while §§ 2106.05(f), (g), and (h)
relate to limitations that are not indicative of integration into a practical
application.
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Step 2B – “Inventive Concept” or “Significantly More”
Under our reviewing court’s precedent, it is possible that a claim that
does not “integrate” a recited judicial exception under Step 2A(ii) is
nonetheless patent eligible. For example, the claim may recite additional
elements that render the claim patent eligible even though a judicial
exception is recited in a separate claim element.11 The Federal Circuit has
held claims eligible at the second step of the Alice/Mayo test (USPTO Step
2B) because the additional elements recited in the claims provided
“significantly more” than the recited judicial exception (e.g., because the
additional elements were unconventional in combination).12 Therefore, if a
claim has been determined to be directed to a judicial exception under
Revised Step 2A, we must also evaluate the additional elements individually
and in combination under Step 2B to determine whether they provide an
inventive concept (i.e., whether the additional elements amount to
significantly more than the exception itself).13
Under the Revised Guidance, we must consider in Step 2B whether an
additional element or combination of elements: (1) “Adds a specific

11 See, e.g., Diehr, 450 U.S. at 187.
12 See, e.g., Amdocs (Isr.), Ltd. v. Openet Telecom, Inc., 841 F.3d 1288,
1300, 1304 (Fed. Cir. 2016); BASCOM Glob. Internet Servs., Inc. v. AT&T
Mobility LLC, 827 F.3d 1341, 1349–52 (Fed. Cir. 2016); DDR Holdings,
LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257–59 (Fed. Cir. 2014).
13 The patent eligibility inquiry may contain underlying issues of fact.
Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325
(Fed. Cir. 2016). In particular, “[t]he question of whether a claim element or
combination of elements is well-understood, routine and conventional to a
skilled artisan in the relevant field is a question of fact.” Berkheimer v. HP
Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018).
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limitation or combination of limitations that are not well-understood,
routine, conventional activity in the field, which is indicative that an
inventive concept may be present;” or (2) “simply appends well-understood,
routine, conventional activities previously known to the industry, specified
at a high level of generality, to the judicial exception, which is indicative
that an inventive concept may not be present.” See Revised Guidance,
Section III.B.14
In the Step 2B analysis, an additional element (or combination of
elements) is not well-understood, routine or conventional unless the
examiner finds an evidentiary basis, and expressly supports a rejection in
writing with, one or more of the following:
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 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).

14 In accordance with existing Step 2B guidance, an Examiner’s finding that
an additional element (or combination of elements) is well understood,
routine, conventional activity must be supported with at least one of the four
specific types of evidence required by the USPTO Berkheimer
Memorandum, as shown above. For more information concerning evaluation
of well-understood, routine, conventional activity, see MPEP § 2106.05(d),
as modified by the USPTO Berkheimer Memorandum (USPTO
Commissioner for Patents Memorandum dated Apr. 19, 2018, “Changes in
Examination Procedure Pertaining to Subject Matter Eligibility, Recent
Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.)” (hereinafter
“Berkheimer Memo”).
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3. A citation to a publication that demonstrates the
well-understood, routine, conventional nature of the additional
element(s). . . .
4. A statement that the examiner is taking official
notice of the well-understood, routine, conventional nature of
the additional element(s). . . .
Berkheimer Memo 3–4.
If the Examiner or the Board determines under Step 2B that the
element (or combination of elements) amounts to significantly more than the
exception itself, the claim is eligible, thereby concluding the eligibility
analysis.
However, if a determination is made that the element and combination
of elements do not amount to significantly more than the exception itself, the
claim is ineligible under Step 2B, and the claim should be rejected for lack of
subject matter eligibility.
ANALYSIS
Step 1 – Statutory Category
Claim 1, as a method (process) claim, recites one of the enumerated
categories of eligible subject matter in 35 U.S.C. § 101. Therefore, the issue
before us is whether it is directed to a judicial exception without
significantly more.
Step 2A(i): Does the Claim Recite a Judicial Exception?
The Examiner determined that “[c]laims 1 and 20-38 are directed to
the abstract idea of assigning quality scores to one or more [s]ales. This is a
concept related to commercial practices and can be performed in a human
mind or via pen and paper.” Final Act. 8.
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First, we look to the Specification to provide context as to what the
claimed invention is directed to. In this case, the Specification discloses that
the invention “relates generally to sales automation and forecasting systems
and, more particularly, to tracking and storing sales data for performance
prediction.” Spec. ¶ 1.
Appellant’s Abstract describes the invention as:
A sales automation system and method, namely a system
and method for scoring sales representative performance and
forecasting future sales representative performance. These
scoring and forecasting techniques can apply to a sales
representative monitoring his own performance, comparing
himself to others within the organization (or even between
organizations using methods described in application),
contemplating which job duties are falling behind and which art
ahead of schedule, and numerous other related activities.
Similarly, with the sales representative providing a full set of
performance data, the system is in a position to aid a sales
manager identify which sales representatives are behind others
and why, as well as help with resource planning should
requirements, such as quotas or staffing, change.
Spec. ¶ 154 (Abstract).
Amdocs
Appellant contends “[t]he facts of this case are similar to Amdocs.”
App. Br. 8. Appellant further argues:
In the present case, the filed specification explains that prior
systems “have neglected to use the data naturally collected by
the sales automation system to reflect back and help provide the
necessary feedback to keep the system accurately tuned.” [Spec.
¶ 6]. The claims utilize that naturally collected data. The
specification describes in detail, particularly at FIGS. 15A and
15B, how this data is utilized to keep the system tuned to assign
quality scores to deals. The supervised machine learning
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employed by the system to keep the system tuned and assign
quality scores is an unconventional technological solution to a
problem described in the specification.
Id.
In Amdocs, the Federal Circuit held that claim 1 of the patent at issue
is also like the claims in BASCOM because even though the
system in the ‘065 patent relies upon some arguably generic
limitations, when all limitations are considered individually and
as an ordered combination, they provide an inventive concept
through the use of distributed architecture. This is similar to the
design in BASCOM which permitted the invention to have a
filtering tool with the benefits of a filter on a local computer
and the benefits of a filter on an ISP server. The benefits in
BASCOM were possible because of customizable filtering
features at specific locations remote from the user. Similarly,
the benefits of the ’065 patent’s claim 1 are possible because of
the distributed, remote enhancement that produced an
unconventional result—reduced data flows and the possibility
of smaller databases. This arrangement is not so broadly
described to cause preemption concerns. Instead, it is narrowly
circumscribed to the particular system outlined. As in
BASCOM, this is a technical improvement over prior art
technologies and served to improve the performance of the
system itself.
Amdocs, 841 F.3d at 1302.
We determine Appellant’s reliance upon Amdocs is unavailing
because there is no indication that claim 1 on appeal provides
unconventional results produced by a distributed, remote enhancement that
reduces data flows and allows for the possibility of smaller databases.
DDR Holdings
Appellant contends the court in DDR Holdings “emphasized that
claims that do not preempt every application of an idea, and particularly
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claims that provide a technical solution to a technical problem are patent
eligible under § 101.” App. Br. 8 (citing DDR Holdings, LLC v. Hotels.com,
L.P., 773 F.3d at 1259).
Regarding preemption, “[w]hile preemption may signal patent
ineligible subject matter, the absence of complete preemption does not
demonstrate patent eligibility. . . . Where a patent’s claims are deemed only
to disclose patent ineligible subject matter under the Mayo framework, as
they are in this case, preemption concerns are fully addressed and made
moot.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379
(Fed. Cir. 2015); 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.”).
Thus, Appellant’s reliance upon DDR Holdings and lack of
preemption is not persuasive.15
Appellant further argues, “[s]everal of the claims have never faced a
§ 102 or § 103 rejection.” App. Br. 9.
In response, we note the Supreme Court emphasizes, “[t]he ‘novelty’
of any element or steps in a process, or even of the process itself, is of no
relevance in determining whether the subject matter of a claim falls within
the § 101 categories of possibly patentable subject matter.” Diehr, 450 U.S.

15 Appellant makes further arguments regarding the lack of preemption
necessitating a conclusion that the claims are not abstract. App. Br. 8–9
(citing McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed.
Cir. 2016)). We are similarly not persuaded that the lack of complete
preemption renders the claims patent eligible.
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at 188–89 (emphasis added). Our reviewing court further guides that
“[e]ligibility and novelty are separate inquiries.” Two-Way Media Ltd. v.
Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1340 (Fed. Cir. 2017); see
also Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1263
(Fed. Cir. 2016) (holding that “[e]ven assuming” that a particular claimed
feature was novel does not “avoid the problem of abstractness”).
Thus, we are not persuaded by Appellant’s arguments.
In TABLE 1 below, we identify in italics the specific claim
limitations that we conclude recite an abstract idea. We additionally identify
in bold the additional (non-abstract) claim limitations that represent generic
computer components and techniques (bracketed reference letters added to
limitations for reference):
TABLE 1
Independent Claim 1 Revised Guidance
A sales automation method
comprising:
A process (method) is a statutory
subject matter class. See 35 U.S.C.
§ 101.
[a] providing, by a computer, a
repository of learned sales data
profiles and profiles representing
goal sales of one or more top-
performing sales persons and a
repository of raw sales data,
wherein the learned sales data
profiles are modeled from one or
more raw sales records;
Receiving or providing
information, i.e., data gathering, is
insignificant extra-solution activity.
Revised Guidance 55, n.31.
[b] extracting, by the computer,
raw sales data, learned sales data,
and sales data representing the goal
Receiving or extracting
information, i.e., data gathering, is
insignificant extra-solution activity.
Revised Guidance 55, n.31.
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Independent Claim 1 Revised Guidance
sales of the one or more top-
performing sales persons;
[c] defining, by the computer, a
sales pipeline having a construct of
a series of stages thereby
defining a sales strategy where
each stage is assigned a conversion
rate and assumed value potential,
and wherein the sales pipeline
includes one or more deals;
“[D]efining . . . a sales pipeline
[and] a sales strategy” is an abstract
idea, i.e., an observation,
evaluation, judgment, opinion
which could be performed as a
mental process. See Revised
Guidance 52. See also Spec. ¶ 115
(“A sales pipeline is an abstract
construct consisting of series of
‘stages’. At each stage a set of tasks
is to be performed by the sales
representative.”).
[d] correlating, by the computer,
the raw sales data among the series
of stages based on a respective
task;
“Correlating” is an abstract idea,
i.e., an observation, evaluation,
judgment, opinion which could be
performed as a mental process. See
Revised Guidance 52.
[e] correlating, by the computer,
the learned sales data among the
series of stages based on the
respective task;
“Correlating” is an abstract idea,
i.e., an observation, evaluation,
judgment, opinion which could be
performed as a mental process. See
Revised Guidance 52.
[f] correlating, by the computer,
the sales data representing the goal
sales of the one or more top-
performing sales persons among
the series of stages based on the
respective task;
“Correlating” is an abstract idea,
i.e., an observation, evaluation,
judgment, opinion which could be
performed alternatively as a mental
process. See Revised Guidance 52.
[g] developing, by the computer, a
predictive model of the conversion
rate of the sales strategy based on
the correlating of the learned sales
data and the correlating of the sales
data representing the goal sales of
“[D]eveloping . . . a predictive
model” is an abstract idea, i.e., a
concept performed in the human
mind, including an observation,
evaluation, judgment, opinion
which could be performed as a
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Independent Claim 1 Revised Guidance
the one or more top-performing
sales persons;
mental process. See Revised
Guidance 52.
[h] developing, by the computer, a
raw predictive model based on
applying the predictive model to
the correlated raw sales data;
“[D]eveloping . . . a raw predictive
model” is an abstract idea, i.e., a
concept performed in the human
mind, including an observation,
evaluation judgment, opinion which
could be performed as a mental
process. See Revised Guidance 52.
[i] learning, by the computer,
using a supervised machine
learning algorithm, a classification
system for assigning quality scores
to the one or more deals using
characteristics of the one or more
deals based on the raw predictive
model; and
“[L]earning . . . a classification
system” is an abstract idea, i.e., a
concept performed in the human
mind, including an observation,
evaluation, judgment, opinion
which could be performed as a
mental process. See Revised
Guidance 52.
[j] assigning, by the computer, a
quality score to a deal from the
one or more deals based on the
learned classification system.
“[A]ssigning . . . a quality score” is
an abstract idea, i.e., a concept
performed in the human mind,
including an observation,
evaluation, judgment, opinion
which could be performed as a
mental process. See Revised
Guidance 52.
Claims App.
We determine that, overall, claim 1 recites mental processes that may
be carried out in the human mind, and which also may be performed using
pen and paper. This type of activity, i.e., sales scoring and forecasting, as
recited as a whole in limitations (a) through (j), for example, includes
longstanding conduct that existed well before the advent of computers and
the Internet, and could be carried out by a human with pen and paper. See
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CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir.
2011) (“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.”).16
Thus, under Step 2A(i), we agree with the Examiner that claim 1’s
sales automation method is a judicial exception. We conclude claim 1,
under our Revised Guidance, recites a judicial exception of sales scoring and
forecasting, i.e., mental processes, and thus an abstract idea.
Step 2A(ii): Judicial Exception Integrated into a Practical Application?
If the claims are directed to a patent-ineligible concept, as we
conclude above, we proceed to the “practical application” Step 2A(ii), in
which we 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

16 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. Further, “[t]he Board’s
slight revision of its abstract idea analysis does not impact the patentability
analysis.” Id. 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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to determine whether they integrate the exception into a practical
application.
As to the specific limitations, we find limitations [a] and [b] recite
insignificant data gathering. See MPEP § 2106.05(g). Data gathering, as
performed by the steps or function in Appellant’s claims, is a classic
example of insignificant extra-solution activity. See, e.g., In re Bilski, 545
F.3d 943, 963 (Fed. Cir. 2008) (en banc), aff’d sub nom, Bilski v. Kappos,
561 U.S. 593 (2010).
With respect to this prong of the analysis, Appellant argues the lack of
preemption provides
clear evidence that the claims require “significantly more” than
the alleged abstract idea in contradiction to the assertions made
in the Final Office Action . . . . More specifically, the claims
contain several elements that specifically show a patent-eligible
application of the alleged abstract idea, such as “developing a
predictive model of the conversion rate of the sales strategy
based on the correlating of the learned sales data and the
correlating of the sales data representing the goal sales of the
one or more top-performing sales persons,” “developing a raw
predictive model based on applying the predictive model to the
correlated raw sales data,” “learning, using a supervised
machine learning algorithm, a classification system for
assigning quality scores to the one or more deals using
characteristics of the one or more deals based on the raw
predictive model,” and “assigning a quality score to a deal from
the one or more deals based on the learned classification
system.” These elements ensure that the claims do not preempt
other applications of the alleged abstract idea.
App. Br. 9.
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From our analysis above (Step 2A(i)), we conclude the limitations
cited by Appellant above are mere recitations of abstract ideas carried out by
a generic computer.
On this record, we are of the view that Appellant’s claims do not
operate the recited generic computer components, i.e., a “computer” and a
“repository” in an unconventional manner to achieve an improvement in
computer functionality. See MPEP § 2106.05(a).
We find each of the limitations of claim 1 recites abstract ideas or data
gathering as identified in Step 2A(i), supra, and none of the limitations
integrates the judicial exception into a practical application as determined
under one or more of the MPEP sections cited above. The claim 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.
Under analogous circumstances, the Federal Circuit has held that
“[t]his is a quintessential ‘do it on a computer’ patent: it acknowledges that
[such] data . . . was previously collected, analyzed, manipulated, and
displayed manually, and it simply proposes doing so with a computer. We
have held such claims are directed to abstract ideas.” Univ. of Fla. Research
Found., Inc. v. Gen. Elec. Co., 916 F.3d 1363, 1367 (Fed. Cir. 2019); see
also Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1351 (Fed. Cir.
2016) (“Though lengthy and numerous, the claims do not go beyond
requiring the collection, analysis, and display of available information in a
particular field, stating those functions in general terms, without limiting
them to technical means for performing the functions that are arguably an
advance over conventional computer and network technology.”).
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Therefore, on this record, Appellant has not shown an improvement or
practical application under the guidance of MPEP section 2106.05(a)
(“Improvements to the Functioning of a Computer or to Any Other
Technology or Technical Field”) or section 2106.05(e) (“Other Meaningful
Limitations”). Nor does Appellant advance any arguments in the Briefs that
are directed to the Bilski machine-or-transformation test. See MPEP
§§ 2106.05(b) (“Particular Machine”) and 2106.05(c) (“Particular
Transformation”).
Accordingly, we conclude the judicial exception is not integrated into
a practical application, and thus the claim is directed to the judicial
exception.
Step 2B – “Inventive Concept” or “Significantly More”
If the claims are directed to a a judicial exception and not integrated
into a practical application, 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, 838 F.3d at 1258 (quoting Elec.
Power Grp., 830 F.3d at 1353).
In applying step two of the Alice analysis, our reviewing court guides
we must “determine whether the claims do significantly more than simply
describe [the] abstract method” and thus transform the abstract idea into
patentable subject matter. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709,
715 (Fed. Cir. 2014). We look to see whether there are any “additional
features” in the claims that constitute an “inventive concept,” thereby
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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.
Limitations referenced in Alice that are not enough to qualify as
“significantly more” when recited in a claim with an abstract idea include, as
non-limiting or non-exclusive examples: adding the words “apply it” (or an
equivalent) with an abstract idea17; mere instructions to implement an
abstract idea on a computer18; or requiring no more than a generic computer
to perform generic computer functions that are well-understood, routine and
conventional activities previously known to the industry.19
The patent-eligibility inquiry may contain underlying issues of fact.
Mortg. Grader, 811 F.3d at 1325. In particular, “[t]he question of whether a
claim element or combination of elements is well-understood, routine and
conventional to a skilled artisan in the relevant field is a question of fact.”
Berkheimer, 881 F.3d at 1368.
As evidence of the conventional nature of the recited “computer” and
“repository” in claim 1, the Specification discloses:
Unless specifically stated otherwise as apparent from the
following discussions, terms such as “processing” or
“computing” or “calculating” or “determining” or “displaying’’
or the like, refer to the action and processes of a computer

17 Alice, 573 U.S. at 221–23.
18 Alice, 573 U.S. at 222–23, e.g., simply implementing a mathematical
principle on a physical machine, namely a computer (citing Mayo, 566 U.S.
at 84–85).
19 Alice, 573 U.S. at 225, e.g., using a computer to obtain data, adjust
account balances, and issue automated instructions.
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system, or similar computing device, that manipulates and
transforms data represented as physical (e.g., electronic)
quantities within the computer system’s registers and memories
into other data similarly represented as physical quantities
within the computer system memories or registers or other such
information storage, transmission or display devices.
Spec. ¶ 47. The Specification further discloses:
FIGs. 15-19 are flowcharts illustrating methods
according to various embodiments of the invention. The
methods to be performed by the embodiments may constitute
computer programs made up of computer-executable
instructions. Describing the methods by reference to a flowchart
enables one skilled in the art to develop such programs
including such instructions to carry out the method on suitable
processors (the processor or processors of the computer
executing the instructions from computer-readable media such
as ROM, RAM, CD-ROM, DVD-ROM, flash memories, hard
drives . . . .
Spec. ¶ 70.
Thus, 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, particularly in light of Appellant’s
Specification, as quoted above.20
The MPEP, based upon our precedential guidance, provides additional
considerations with respect to analysis of the well-understood, routine, and
conventional nature of the claimed computer-related components.

20 Claim terms are to be given their broadest reasonable interpretation, as
understood by those of ordinary skill in the art and taking into account
whatever enlightenment may be had from the Specification. In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
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Another consideration when determining whether a claim
recites significantly more than a judicial exception is whether
the additional elements amount to more than a recitation of the
words “apply it” (or an equivalent) or are more than mere
instructions to implement an abstract idea or other exception on
a computer. As explained by the Supreme Court, in order to
transform a judicial exception into a patent-eligible application,
the additional element or combination of elements must do
“‘more than simply stat[e] the [judicial exception] while adding
the words ‘apply it’”. Alice Corp. v. CLS Bank, 573 U.S. __,
134 S. Ct. 2347, 2357, 110 USPQ2d 1976, 1982-83 (2014)
(quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 72, 101 USPQ2d 1961, 1965). Thus, for example,
claims that amount to nothing more than an instruction to apply
the abstract idea using a generic computer do not render an
abstract idea eligible. Alice Corp., 134 S. Ct. at 2358, 110
USPQ2d at 1983. See also 134 S. Ct. at 2389, 110 USPQ2d at
1984 (warning against a § 101 analysis that turns on “the
draftsman’s art”) . . . .
In Alice Corp., the claim recited the concept of
intermediated settlement as performed by a generic computer.
The Court found that the recitation of the computer in the claim
amounted to mere instructions to apply the abstract idea on a
generic computer. 134 S. Ct. at 2359-60, 110 USPQ2d at 1984.
The Supreme Court also discussed this concept in an earlier
case, Gottschalk v. Benson, 409 U.S. 63, 70, 175 USPQ 673,
676 (1972), where the claim recited a process for converting
binary-coded-decimal (BCD) numerals into pure binary
numbers. The Court found that the claimed process had no
substantial practical application except in connection with a
computer. Benson, 409 U.S. at 71-72, 175 USPQ at 676. The
claim simply stated a judicial exception (e.g., law of nature or
abstract idea) while effectively adding words that “apply it” in a
computer. Id.
MPEP § 2106.05(f) (“Mere Instructions To Apply An Exception”) .
Evaluating representative claim 1 under step 2 of the Alice analysis,
we conclude it lacks an inventive concept that transforms the abstract idea
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into a patent-eligible application of that abstract idea because the recited
additional limitations are simply not enough to transform the patent-
ineligible abstract idea here into a patent-eligible invention under Step 2B.
See Alice, 573 U.S. at 221 (“[C]laims, which merely require generic
computer implementation, fail to transform [an] abstract idea into a patent-
eligible invention.”). We conclude the claims fail the Step 2B analysis
because claim 1, 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.
Therefore, in light of the foregoing, we conclude, under the Revised
Guidance, that each of Appellant’s claims 1 and 20–38, considered as a
whole, is directed to a patent-ineligible abstract idea that is not integrated
into a practical application and does not include an inventive concept.
Accordingly, we sustain the Examiner’s § 101 rejection of independent
claim 1, and grouped claims 20–38 which fall therewith. See Claim
Grouping, supra.
REPLY BRIEF
To the extent Appellant may advance new arguments in the Reply
Brief (Reply Br. 2–5) not in response to a shift in the Examiner’s position in
the Answer, arguments raised in a Reply Brief that were not raised in the
Appeal Brief or are not responsive to arguments raised in the Examiner’s
Answer will not be considered except for good cause (see 37 C.F.R.
§ 41.41(b)(2)), which Appellant has not shown.
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CONCLUSION
Under our Revised Guidance, governed by relevant case law, claims 1
and 20–38 are patent-ineligible under 35 U.S.C. § 101, and we sustain the
rejection.
DECISION SUMMARY
Claims
Rejected
Basis
35 U.S.C. §
Affirmed Reversed
1, 20–38 101 1, 20–38
FINALITY AND 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)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED