Kaustubh DIGHE

Patent Trials and Appeals Board

Nov 23, 2021

2021004979 (P.T.A.B. Nov. 23, 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.
16/099,686 11/07/2018 Kaustubh V. DIGHE 3347-00104 8089
23505 7590 11/23/2021
CONLEY ROSE, P.C.
575 N. Dairy Ashford Road
Suite 1102
HOUSTON, TX 77079
EXAMINER
NGUYEN, TAN D
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
11/23/2021 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):
pathou@conleyrose.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KAUSTUBH V. DIGHE
____________

Appeal 2021-004979
Application 16/099,686
Technology Center 3600
____________

Before MICHAEL C. ASTORINO, NINA L. MEDLOCK, and
KENNETH G. SCHOPFER, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 2–7 and 18–25. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Our decision references Appellant’s Appeal Brief (“Appeal Br.,”
filed June 1, 2021) and Reply Brief (“Reply Br.,” filed August 16, 2021), the
Examiner’s Answer (“Ans.,” mailed June 21, 2021), Advisory Action
(“Advisory Act.,” mailed March 15, 2021), and Final Office Action (“Final
Act.,” mailed December 31, 2020). Appellant identifies the inventor,
Kaustubh V. Dighe, as the real party in interest (Appeal Br. 3).
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CLAIMED INVENTION
The Specification states, “[t]he present disclosure generally relates to
systems and methods for managing the integrity of marine riser assets” and,
more specifically, to “systems and methods for monitoring marine riser
assets, determining the frequency of inspections of mariner riser assets, and
identifying and scheduling remedial actions for marine riser assets”
(Spec. ¶ 3).
Claims 3 and 20 are the independent claims on appeal. Claim 3,
reproduced below with bracketed notations added, is illustrative of the
claimed subject matter:
3. A computer program product for decreasing an
inspection frequency for a riser asset of a marine riser comprising
a computer readable storage medium having program
instructions embodied therewith, the program instructions
executable by a computer to cause the computer to:
[(a)] calculate a first predictive degradation rate of a first
potential flaw in the riser asset;
[(b)] determine a first actual degradation rate of a first
flaw in the riser asset based on a physical inspection of the riser
asset, the first flaw corresponding with the first potential flaw;
[(c)] determine a first remaining operating lifetime of the
riser asset based on the first predictive degradation rate and the
first actual degradation rate;
[(d)] determine the inspection frequency for the riser
asset by multiplying a safety factor with the first remaining
operating lifetime of the riser asset; and
[(e)] generate an inspection timeline based on the
inspection frequency, wherein the inspection frequency is less
frequent than every 5 years.
Appeal Br. 31–32 (Claims App.).
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REJECTIONS2
Claims 2–7 and 18–25 are rejected under 35 U.S.C. § 112(a) as failing
to comply with the written description requirement.
Claims 2–7 and 18–25 are rejected under 35 U.S.C. § 101 as directed
to a judicial exception without significantly more.
ANALYSIS
Written Description
Section 112(a) reads, in part, “[t]he specification shall contain a
written description of the invention.” 35 U.S.C. § 112(a). The purpose of
this written description requirement is to “ensure that the scope of the right
to exclude, as set forth in the claims, does not overreach the scope of the
inventor’s contribution to the field of art as described in the patent
specification.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1353–
54 (Fed. Cir. 2010) (citation omitted). The requirement, thus, “ensures that
the public receives a meaningful disclosure in exchange for being excluded
from practicing an invention for a period of time.” Id. at 1354.
To satisfy the written description requirement, the specification must
describe the claimed invention in sufficient detail such that one skilled in the
art can reasonably conclude that the inventor had possession of the claimed
subject matter at the time the application was filed. Vas-Cath, Inc. v.
Mahurkar, 935 F.2d 1555, 1562–63 (Fed. Cir. 1991). In particular, the
specification must describe the claimed invention in a manner

2 We understand, based on the absence of any mention of the rejection in
the Answer, that the Examiner has withdrawn the rejection of claims 2–7
and 18–25 under 35 U.S.C. § 112(b) (see Ans. 3 (identifying the grounds of
rejection as under 35 U.S.C. § 112(a) and § 101)).
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understandable to a person of ordinary skill in the art and show that the
inventor actually invented the claimed invention. Id.; see also Ariad,
598 F.3d at 1351; Examining Computer-Implemented Functional Claim
Limitations for Compliance with 35 U.S.C. 112, 84 Fed. Reg. 57, 61–62
(Jan. 7, 2019) (the “2019 § 112 Guidelines”). The written description
requirement does not demand any particular form of disclosure; however, “a
description that merely renders the invention obvious does not satisfy the
requirement.” Ariad, 598 F.3d at 1352 (citation omitted).
Here, in rejecting the pending claims under 35 U.S.C. § 112(a), the
Examiner noted that the claims recite that “the inspection frequency is less
frequent than every 5 years” (Final Act. 4). And the Examiner determined
that the claims are properly rejected as failing to comply with the written
description requirement because “[t]he added material . . . is not supported
by the original disclosure” (id. (observing that “less than 5 years reads [on]
over ‘zero’ or ‘0.00’” and that the Specification “appears to teach
‘traditionally inspected at a preset time interval of 1 or 5 years’”)).
The Specification discloses, at paragraph 61, that embodiments of the
present invention “consider a variety of factors . . . and predictive analytics
to generate a tailored inspection frequency (e.g., time interval until the
marine riser asset should be inspected),” and explains, “[a]s a result, there
may no longer be a need for an inspection every five years.” Id. The
Specification, thus, describes that “some marine riser assets may need more
frequent inspections (e.g., every two years) due to operating conditions,
whereas other marine riser assets may need less frequent inspections (e.g.,
every seven years)” (id.), which is “less frequent than every five years.”
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The Specification further describes, in paragraph 194, that, based on a
remaining operating lifetime prediction of 20 years for a 50 foot marine riser
asset, the “amount of time between inspections will be computed . . . causing
the inspections of this marine riser asset to occur every 8 years.” And a
computed inspection frequency of 8 years, i.e., an “inspection frequency . . .
less frequent than every 5 years,” also is discussed in paragraph 226.
We agree with Appellant that the Specification, thus, provides the
requisite written description support (Appeal Br. 14–16). Therefore, we do
not sustain the Examiner’s rejection of claims 2–7 and 18–25 under
35 U.S.C. § 112(a).
Patent-Ineligible Subject Matter
Appellant argues pending claims 2–7 and 18–25 as a group (Appeal
Br. 16–29). We select independent claim 3 as representative. The
remaining claims stand or fall with claim 3. See 37 C.F.R. §41.37(c)(1)(iv).
Under 35 U.S.C. § 101, “[w]hoever invents or discovers any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof, may obtain a patent therefor.” 35 U.S.C.
§ 101. The Supreme Court, however, has long interpreted § 101 to include
an implicit exception: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216
(2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), “for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts.” Alice Corp., 573 U.S. at 217.
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The first step in that analysis is to “determine whether the claims at issue are
directed to one of those patent-ineligible concepts.” Id. If the claims are not
directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry
ends. Otherwise, the inquiry proceeds to the second step where the elements
of the claims are considered “individually and ‘as an ordered combination’”
to determine whether there are additional elements that “‘transform the
nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo,
566 U.S. at 79, 78). This is “a search for an ‘inventive concept’ — i.e., an
element or combination of elements that is ‘sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself.’” Id. at 217–18 (alteration in original).
The U.S. Patent and Trademark Office (the “USPTO”) published
revised guidance on January 7, 2019, for use by USPTO personnel in
evaluating subject matter eligibility under 35 U.S.C. § 101. 2019 REVISED
PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50 (Jan. 7,
2019) (the “2019 Revised Guidance”).3 That guidance revised the USPTO’s
examination procedure with respect to the first step of the Mayo/Alice
framework by (1) “[p]roviding groupings of subject matter that [are]
considered an abstract idea”; and (2) clarifying that a claim is not “directed
to” a judicial exception if the judicial exception is integrated into a practical
application of that exception. Id. at 50.
The first step, as set forth in the 2019 Revised Guidance (i.e.,
Step 2A), is, thus, a two-prong test. In Step 2A, Prong One, we look to

3 The MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”) incorporates
the revised guidance and subsequent updates at Section 2106 (9th ed.
Rev. 10.2019, rev. June 2020).
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whether the claim recites a judicial exception, e.g., one of the following
three groupings of abstract ideas: (1) mathematical concepts; (2) certain
methods of organizing human activity, e.g., fundamental economic
principles or practices, commercial or legal interactions; and (3) mental
processes. 2019 Revised Guidance, 84 Fed. Reg. at 54. If so, we next
determine, in Step 2A, Prong Two, whether the claim as a whole integrates
the recited judicial exception into a practical application, i.e., whether the
additional elements recited in the claim beyond the judicial exception, 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. Id. at 54–55. Only if
the claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application do we conclude that the claim is
“directed to” the judicial exception, e.g., an abstract idea. Id.
If the claim is determined to be directed to a judicial exception under
revised Step 2A, we next evaluate the additional elements, individually and
in combination, in Step 2B, to determine whether they provide an inventive
concept, i.e., whether the additional elements or combination of elements
amounts to significantly more than the judicial exception itself; only then, is
the claim patent eligible. 2019 Revised Guidance, 84 Fed. Reg. at 56.
Here, in rejecting the pending claims under 35 U.S.C. § 101, the
Examiner determined that independent claim 3 (which the Examiner treated
as representative) recites “evaluating the conditions of a marine asset
(i.e.[, a] riser) for [an] inspection schedule by analyzing a condition/event of
the asset[,] such as asset fatigue, degradation, or corrosion rate, determining
[the] remaining operating lifetime of the asset, and generating an inspection
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timeline (schedule) of the asset” (Final Act. 11) (emphasis omitted). The
Examiner reasoned that, under a broadest reasonable interpretation, the
claim, thus, recites steps that “a person would perform when evaluating the
conditions of a system/device using an analytic predictive model . . . to
generate (1) a tailored inspection frequency data and (2) timeline (schedule)
data for inspection or repair”; that the recited subject matter falls within the
“certain methods of organizing human activity” grouping of abstract ideas
(id. at 11–12); and that it also fits within the category of “mental processes”
(id. at 12). The Examiner determined that the additional elements recited in
independent claim 3 do not integrate the recited abstract idea into a practical
application (id. at 12–18); and that the claims lack an inventive concept (id.
at 18–23).
Step One of the Mayo/Alice Framework (2019 Revised Guidance, Step 2A)
We are not persuaded by Appellant’s argument that the Examiner
erred in determining that claim 3 is directed to an abstract idea (Appeal
Br. 16–29). The Federal Circuit has explained that “the ‘directed to’ inquiry
applies a stage-one filter to claims, considered in light of the specification,
based on whether ‘their character as a whole is directed to excluded subject
matter.’” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir.
2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d
1343, 1346 (Fed. Cir. 2015)). It asks whether the focus of the claims is on a
specific improvement in relevant technology or on a process that itself
qualifies as an “abstract idea” for which computers are invoked merely as a
tool. See id. at 1335–36. Here, it is clear from the Specification (including
the claim language) that claim 3 focuses on an abstract idea, and not on an
improvement to technology and/or a technical field.
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The Specification is titled “SYSTEMS AND METHODS FOR
MONITORING AND MANAGING MARINE RISER ASSETS,”4 and
discloses in the Background section that marine risers are subjected to
various dynamic loads during transport, installation, drilling operations, and
retrieval (Spec. ¶ 5). For example, the Specification describes that, during
drilling operations, the marine riser may experience dynamic tensile loads,
torsional loads, and cyclical bending loads, and may also experience lateral
loads applied by subsea currents and surface waves (id.). Additionally, the
marine riser may be inadvertently impacted by other equipment or hardware,
and also experience internal fluid pressures applied by the drilling mud
flowing therethrough and external fluid pressures applied by the surrounding
ocean (id.). “The abrasive and corrosive drilling fluid inside the marine riser
and the corrosive salt water outside the marine riser may also induce erosion
and/or corrosion along the inner and outer surfaces of the marine riser” (id.).
The Specification describes that if the damage to a marine riser is
sufficient, it may compromise the integrity of the riser and potentially result
in an inadvertent loss of drilling fluid into the surrounding sea (Spec. ¶ 60).
To reduce and/or minimize these risks, marine risers are traditionally
inspected at a preset time interval of 1 or 5 years (id.). “In particular, visual
inspections of mariner risers are typically performed once a year and non-
destructive testing (NOT) inspections are performed once every five years.”
(id.). “This conventional approach is applied regardless of the actual threats

4 Marine risers are cylindrical conduits used to transfer crude oil from a
subsea wellhead to an offshore facility and, as described in the Specification,
are connected to a blowout preventer (“BOP”) and used during drilling
operations by floating drilling vessels (see Spec. ¶ 4).
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to the marine risers, the actual condition of the marine riser, the
environmental conditions experienced by the marine riser, or the anticipated
operating conditions the marine riser asset may experience in subsequent
installations” (id.).
Embodiments of the claimed invention provide a different approach to
monitoring and managing the integrity of marine risers, and consider a
variety of factors (e.g., threats to the marine riser asset, environmental
conditions actually experienced by the marine riser asset and anticipated to
be experienced by the marine riser asset, installation location, actual
physical condition of the marine riser asset, etc.) and predictive analytics to
generate an inspection frequency (e.g., time interval until the marine riser
asset should be inspected) and a timeline for any repairs (Spec. ¶ 61).
Claim 3, thus, recites a computer program product for decreasing an
inspection frequency for a riser asset of a marine riser comprising a
computer readable storage medium having program instructions embodied
therewith that, when executed by a computer, cause the computer to:
(1) calculate a first predictive degradation rate of a first potential flaw in the
riser asset based on an engineering assessment, and determine, based on a
physical inspection of the riser asset, a first actual degradation rate of a first
flaw in the riser asset that corresponds to the first potential flaw, i.e.,
“calculate a first predictive degradation rate of a first potential flaw in the
riser asset” and “determine a first actual degradation rate of a first flaw in
the riser asset based on a physical inspection of the riser asset, the first flaw
corresponding with the first potential flaw” (steps (a) and (b));
(2) “determine a first remaining operating lifetime of the riser asset based on
the first predictive degradation rate and the first actual degradation rate”
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(step (c)); (3) determine a first inspection frequency for the riser asset based
on a first safety factor and the first remaining operating lifetime of the riser
asset, i.e., “determine the inspection frequency for the riser asset by
multiplying a safety factor with the first remaining operating lifetime of the
riser asset” (step (d)); and (4) generate a first inspection timeline based on
the first inspection frequency, i.e., “generate an inspection timeline based on
the inspection frequency, wherein the inspection frequency is less frequent
than every 5 years” (step (e)). We agree, for the reasons set forth by the
Examiner, that these limitations, when given their broadest reasonable
interpretation, recite a method of organizing human activity and, therefore,
an abstract idea (Final Act. 11).
Appellant does not present any substantive challenge to the
Examiner’s determination that claim 3 recites an abstract idea. Instead,
Appellant maintains that, even if claim 3 recites an abstract idea, the claim is
nonetheless patent eligible because any alleged abstract idea is integrated
into a practical application, i.e., that claim 3 reflects an improvement to
another technology or technical field (see, e.g., Appeal Br. 24 (“Appellant
does not presently take a position as to whether the claims do or do not recite
an abstract idea, and reserves the right to later argue that the claims do not
recite an abstract idea. Instead, Appellant has emphasized and continues to
assert that because the claims reflect an improvement to the technical field
of marine risers, the claims are eligible as a practical application of any
allegedly recited abstract idea, if such a recited abstract idea exists.”)).
The 2019 Revised Guidance references MPEP, Ninth Edition
(rev. Jan 2018) (available at https://www.uspto.gov/web/offices/
pac/mpep/old/mpep_E9R08-2017.htm) § 2106.05(a)–(c) and (e) in
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non-exhaustively listing considerations indicative that an additional element
or combination of elements may have integrated a recited judicial exception
into a practical application. 2019 Revised Guidance, 84 Fed. Reg. at 55.
In particular, the Guidance describes that an additional element may have
integrated the judicial exception into a practical application if, inter alia,
“[the] additional element reflects an improvement in the functioning of a
computer, or an improvement to other technology or technical field.” Id.
At the same time, the Guidance makes clear that merely including
instructions to implement an abstract idea on a computer, or merely using a
computer as a tool to perform an abstract idea; adding insignificant extra-
solution activity to the judicial exception; or only generally linking the use
of the judicial exception to a particular technological environment or field
are not sufficient to integrate the judicial exception into a practical
application. Id.
Appellant notes here that claim 3 recites “wherein the inspection
frequency is less frequent than every 5 years” (Appeal Br. 16), and directing
our attention to the first of two declarations under 37 C.F.R. § 1.132 of the
inventor, Kaustubh Dighe, Appellant asserts that claim 3 is patent eligible
because “the technical field of marine risers is improved for the technical
reasons stated in paragraph 8 of the First Declaration, which are not business
improvements” (id.).
Mr. Dighe describes in his first § 1.132 declaration, that “[t]he
technical field of marine risers is crucial to safely containing fluids from
being leaked to the ocean” (First Dighe Decl. ¶ 4), and referencing
paragraph 60 of the Specification, explains that risers are conventionally
inspected every 1 to 5 years, and repairs performed based on the presence of
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a flaw without regard to the actual rate of degradation of the flaw; “[f]or
example, a repair might be made if corrosion (the flaw) in the riser is
present, regardless of the actual rate of degradation of the corrosion” (id.
¶ 5).
Mr. Dighe describes in paragraph 8 of the declaration that using
predictive and actual degradation rates to determine the remaining operating
lifetime and, in turn, an inspection frequency for a marine riser asset is not
conventional. And Mr. Dighe posits that by using these two degradation
rates of a particular flaw in a riser asset to determine a remaining operating
lifetime, and then determining an inspection frequency from the
“unconventionally obtained” remaining operating time, “the inspection
scope, [the] time the risers are out of service, and [the] magnitude of repairs
are reduced, while the degradation rate is slowed, which, in some cases, can
extend the remaining life of the riser beyond the normal life expectancy”
(First Dighe Decl. ¶ 8). Mr. Dighe also states that “[b]y using the actual and
future degradation rates of the specific flaw in the riser asset, the assessment
is specific to the individual riser asset,” which “allows for the inspection
interval, repairs, and remaining life to be specific to the particular riser asset,
rather than to risers in general” (id.).
Appellant characterizes these alleged improvements as “technical,”
not “business improvements” (Appeal Br. 16). Yet, we find no indication in
the Specification (nor, for that matter, does Appellant direct us to any
indication) that merely reducing the time between inspections (and, thus, the
time risers are out of service) or the magnitude of repairs results in any
improvements to the structure or function of the riser asset itself or that this
otherwise changes how the riser asset fundamentally operates.
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Appellant asserts, “Appellant has provided adequate factual evidence
to support the improvement in the field of marine risers because any
reduction in inspection frequency is significant to the field of marine risers”
(Appeal Br. 16). Yet, the relevant inquiry is not whether a reduction in
inspection frequency is significant to the field of marine risers. Instead, the
question is whether this amounts to a technological improvement in the
field; and we are not persuaded, on the present record, that it does.
An owner/operator of a marine riser might well (and likely would)
view a reduction in inspection frequency, as well as a reduction in the
magnitude of required repairs, as a significant improvement in that it can
reduce the cost and time for inspection and repairs and also reduce the out of
service time of the affected risers (see, e.g., Spec. ¶¶ 235, 236). Such an
owner/operator might also appreciate the reduction in infant mortality that
Appellant alleges is a byproduct of the reduction in inspection frequency
(see, e.g., Appeal Br. 20–21 (citing Second Dighe Decl. ¶ 5)).5 But, we are
not persuaded that these reductions reflect improvements in technology or a
technical field. Instead, they, at best, represent improvements to the abstract
idea of evaluating the condition of a marine riser asset and generating an
inspection timeline, i.e., schedule, for the asset, which is not enough for
patent eligibility. See SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1170

5 Mr. Dighe states that “[a] well-recognized phenomenon associated with
inspection of risers is of the increased risk of failure of the riser upon
returning to service after an inspection”; this phenomenon is referred to as
the infant mortality of the riser and, according to Mr. Dighe, is caused
because the assembly of the riser introduces human error, for example, by
personnel not correctly tightening all the bolts that reassemble component
parts (Second Dighe Decl. ¶ 5).
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(Fed. Cir. 2018) (“[P]atent law does not protect such claims [i.e., claims to
an asserted advance in the realm of abstract ideas], without more, no matter
how groundbreaking the advance.”). This is particularly true, where, as
here, there is no indication that the operations recited in claim 3 require any
specialized computer hardware or other inventive computer components,
invoke any allegedly inventive programming, or that the claimed invention
is implemented using other than a generic computer component to perform
generic computer functions.
It also is significant here that the relevant question under Step 2A,
Prong 2 is not whether the claimed invention itself (i.e., reducing the
inspection frequency to less than 5 years) is a practical application; instead,
the question is whether the claim includes additional elements beyond the
judicial exception that integrate the judicial exception into a practical
application. Here, as described above, the only additional element recited in
claim 3 beyond the abstract idea is “a computer,” i.e., a generic computer
component (see, e.g., Spec. ¶¶ 56, 87). “And after Alice, there can remain
no doubt: recitation of generic computer limitations does not make an
otherwise ineligible claim patent-eligible.” DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014).
We conclude, for the reasons outlined above, that claim 3 recites a
method of organizing human activity, i.e., an abstract idea, and that the
additional element recited in the claim beyond the abstract idea is no more
than a generic computer component used as a tool to perform the recited
abstract idea. As such, it does not integrate the abstract idea into a practical
application. See Alice Corp., 573 U.S. at 223–24 (“[W]holly generic
computer implementation is not generally the sort of ‘additional featur[e]’
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that provides any ‘practical assurance that the process is more than a drafting
effort designed to monopolize the [abstract idea] itself.’” (quoting Mayo,
566 U.S. at 77)). Accordingly, we agree with the Examiner that claim 3 is
directed to an abstract idea.
Step Two of the Mayo/Alice Framework (2019 Revised Guidance, Step 2B)
Having determined under step one of the Mayo/Alice framework that
claim 3 is directed to an abstract idea, we next consider under Step 2B of the
2019 Revised Guidance, the second step of the Mayo/Alice framework,
whether claim 3 includes additional elements or a combination of elements
that provides an “inventive concept,” i.e., whether an additional element or
combination of elements adds specific limitations beyond the judicial
exception that are not “well-understood, routine, conventional activity” in
the field (which is indicative that an inventive concept is present) or simply
appends well-understood, routine, conventional activities previously known
to the industry to the judicial exception. 2019 Revised Guidance,
84 Fed. Reg. at 56.
Appellant maintains here, as described above, that using a
combination of predictive and actual degradation rates to determine a
remaining operating lifetime and, in turn, an inspection frequency for a
marine riser asset, is unconventional (Appeal Br. 14). Yet, that cannot
provide the basis for an inventive concept at least because “determin[ing] a
first remaining operating lifetime of the riser asset based on the first
predictive degradation rate and the first actual degradation rate” and
“determin[ing] the inspection frequency for the riser asset by multiplying a
safety factor with the first remaining operating lifetime of the riser asset,”
i.e., steps (c) and (d), are part of the abstract idea itself; they are not
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additional elements to be considered in determining whether claim 3
includes additional elements or a combination of elements sufficient to
amount to significantly more than the judicial exception.
It could not be clearer from Alice, that under step two of the
Mayo/Alice framework, the elements of each claim are considered both
individually and “as an ordered combination” to determine whether the
additional elements, i.e., the elements other than the abstract idea itself,
“transform the nature of the claim” into a patent-eligible application. Alice
Corp., 573 U.S. at 217 (citation omitted); see Mayo, 566 U.S. at 72–73
(requiring that “a process that focuses upon the use of a natural law also
contain other elements or a combination of elements, sometimes referred to
as an ‘inventive concept,’ sufficient to ensure that the patent in practice
amounts to significantly more than a patent upon the natural law itself”
(emphasis added) (citation omitted)). In other words, the inventive concept
under step two of the Mayo/Alice test cannot be the abstract idea itself:
It is clear from Mayo that the “inventive concept” cannot be the
abstract idea itself, and Berkheimer . . . leave[s] untouched the
numerous cases from this court which have held claims ineligible
because the only alleged “inventive concept” is the abstract idea.
Berkheimer v. HP Inc., 890 F.3d 1369, 1374 (Fed. Cir. 2018) (Moore, J.,
concurring); see also BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281,
1290 (Fed. Cir. 2018) (“It has been clear since Alice that a claimed
invention’s use of the ineligible concept to which it is directed cannot supply
the inventive concept that renders the invention ‘significantly more’ than
that ineligible concept.”).
Here, the Examiner determined and we agree, that the only additional
element recited in claim 3 beyond the abstract idea is “a computer,” i.e., a
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generic computer component (see, e.g., Final Act. 12) — a determination
amply supported by and fully consistent with the Specification (see, e.g.,
Spec. ¶¶ 87). Appellant cannot reasonably maintain that there is insufficient
factual support for the Examiner’s determination that the operation of this
component is well-understood, routine, or conventional, where, as here,
there is nothing in the Specification to indicate that the operations recited in
claim 3 require any specialized hardware or inventive computer components
or that the claimed invention is implemented using other than a generic
computer component to perform generic computer functions, e.g., receiving
and processing information. Indeed, the Federal Circuit, in accordance with
Alice, has “repeatedly recognized the absence of a genuine dispute as to
eligibility” where claims have been defended as involving an inventive
concept based “merely on the idea of using existing computers or the
Internet to carry out conventional processes, with no alteration of computer
functionality.” Berkheimer, 890 F.3d at 1373 (Moore, J., concurring)
(internal citations omitted); see also BSG Tech LLC, 899 F.3d at 1291
(“BSG Tech does not argue that other, non-abstract features of the claimed
inventions, alone or in combination, are not well-understood, routine and
conventional database structures and activities. Accordingly, the district
court did not err in determining that the asserted claims lack an inventive
concept.”).
We are not persuaded, on the present record, that the Examiner erred
in rejecting independent claim 3 under 35 U.S.C. § 101. Therefore, we
sustain the Examiner’s rejection of claim 3, and claims 2, 4–7, and 18–25,
which fall with claim 3.
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CONCLUSION
In summary:
Claim(s)
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
2–7, 18–25 112(a) Written
Description
2–7, 18–25
2–7, 18–25 101 Eligibility 2–7, 18–25
Overall
Outcome
2–7, 18–25
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