KUBOTA CORPORATION

Patent Trials and Appeals Board

Nov 5, 2021

2021004428 (P.T.A.B. Nov. 5, 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.
15/916,773 03/09/2018 Shozo KISHI 179506 8556
25944 7590 11/05/2021
OLIFF PLC
P.O. BOX 320850
ALEXANDRIA, VA 22320-4850
EXAMINER
HINZE, LEO T
ART UNIT PAPER NUMBER
2853
NOTIFICATION DATE DELIVERY MODE
11/05/2021 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):
OfficeAction25944@oliff.com
jarmstrong@oliff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHOZO KISHI and KEITA ODA

Appeal 2021-004428
Application 15/916,773
Technology Center 2800

Before JEAN R. HOMERE, JASON V. MORGAN, and
SHARON FENICK, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF THE CASE1
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s rejection of claims 1–6 and 8–11, all of the pending claims.2
Appeal Br. 3. Claims 7 and 12–16 have been canceled. Id. at 3, A-7. We
have jurisdiction under 35 U.S.C. § 6(b). An oral hearing was held in this

1 We refer to the Specification filed Mar. 9, 2018 (“Spec.”); the Final Office
Action, mailed July 23, 2020 (“Final Act.”); the Appeal Brief, filed Jan. 14,
2021 (“Appeal Br.”); the Examiner’s Answer, mailed May 17, 2021
(“Ans.”); and the Reply Brief, filed Jul. 8, 2021 (“Reply Br.”).
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies KUBOTA CORPORATION, as
the real party-in-interest. Appeal Br. 1.
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appeal on October 21, 2021. A transcript of the oral hearing will be entered
into the record in due course.
We affirm.
II. CLAIMED SUBJECT MATTER
According to Appellant, the claimed subject matter relates to a
method and system using a general purpose computer executing a structural
analysis program for estimating the behavior of a fault crossing underground
pipeline including a number of earthquake resistant joints N. Spec. ¶¶ 19,
24–26. Figures 1A and 1B, reproduced below, is useful for understanding
the claimed subject matter:

Figure 1A depicts the behavior of a pipeline, including N pipes joined to
each other with earthquake resistant joints at the time of ground subsidence.
Figure 1B illustrates the behavior of the pipeline at the time of cracking in
the ground. Spec. ¶ 23.

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Claims 1 and 8 are independent. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A behavior estimation method for a fault-crossing underground
pipeline, the method comprising:
a first step of calculating a minimum number of earthquake resistant
joints N, on one side of a fault surface, required for absorbing a fault
displacement amount H in a pipe orthogonal direction, in fault displacement
amounts, by using Formula 1, and calculating a deflection range L0 in a pipe
axis direction corresponding to the minimum number of earthquake resistant
joints N by using Formula 2, for a pipeline including joints defined with a
predetermined joint deflection spring model with a bending moment set to
be different values before and after an allowable bending angle θa and pipes
having an effective length L,
[Formula 1]
𝐻𝐻
2 ≦ 𝐿𝐿
� sin (𝑘𝑘𝜃𝜃𝑎𝑎)
𝑁𝑁
𝑘𝑘=1

[Formula 2]
𝐿𝐿0 = 𝐿𝐿 ×𝑁𝑁;

a second step of calculating a load p(y), received by the pipe due to
relative displacement y between the pipe and ground, as a trapezoidal
distribution load by using Formula 3 corresponding to a ground spring
model in the pipe orthogonal direction defined with spring constants k1y and
k2y (k1y > k2y) respectively for relative displacements smaller and larger than
predetermined relative displacement δgy,
[Formula 3]
𝑝𝑝(𝑦𝑦) = 𝑘𝑘2𝑦𝑦𝑦𝑦+ (𝑘𝑘1𝑦𝑦 − 𝑘𝑘2𝑦𝑦)𝛿𝛿𝑔𝑔𝑦𝑦;
a third step of calculating a bending moment distribution of joint
positions from a bending moment M(x) of the trapezoidal distribution load at
a position x in the pipe axis direction by using Formula 4, and obtaining a
pipe bending angle θ at each of the joint positions based on the joint
deflection spring model using the bending moment distribution obtained,
[Formula 4]
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𝑀𝑀(𝑥𝑥) = 𝑥𝑥(𝐿𝐿0−𝑥𝑥)
6
�3𝑝𝑝(0) + �2𝐿𝐿0−𝑥𝑥
𝐿𝐿0
�𝑝𝑝(𝐻𝐻
2
)�;

a bending performance evaluation step of evaluating bending
performance based on whether the bending angle θ, obtained in the third
step, does not exceed the allowable bending angle θa; and
a bending performance output step of outputting an evaluation result
when the bending angle θ does not exceed the allowable bending angle θa as
a document expressing earthquake resistance indicating bending resistance
performance, wherein
the bending resistance performance is able to be evaluated only based
on the fault displacement amount H in the pipe orthogonal direction, for
various fault displacements with different fault displacement amounts in the
pipe axis direction.
III. REJECTION3
The Examiner rejects claims 1–6 and 8–11 under 35 U.S.C. § 101 as
being directed to patent ineligible subject matter. Final Act. 5–10.
IV. ANALYSIS
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to
include implicit exceptions: “[l]aws of nature, natural phenomena, and
abstract ideas are not patentable.” Alice Corp. v. CLS Bank Int’l, 573 U.S.
208, 216 (2014) (quoting Assoc. for Molecular Pathology v. Myriad
Genetics, Inc., 569 U.S. 576, 589 (2013)).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-step framework, described in Mayo and Alice.

3 The Examiner withdraws the indefiniteness rejection previously entered
against claims 12–16. Ans. 3.
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Alice, 573 U.S. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See Alice, 573
U.S. at 219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (Diehr, 450 U.S. 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
Court held that “[a] claim drawn to subject matter otherwise statutory does
not become nonstatutory simply because it uses a mathematical formula.”
Diehr, 450 U.S. at 176; see also id. at 191 (“We view respondents’ claims as
nothing more than a process for molding rubber products and not as an
attempt to patent a mathematical formula.”). Having said that, the Court
also indicated that a claim “seeking patent protection for that formula in the
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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. (citing Benson and
Flook); id. at 187 (“It is now commonplace that an application of a law of
nature or mathematical formula to a known structure or process may well be
deserving of patent protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221. “A claim that recites an
abstract idea must include ‘additional features’ to ensure ‘that the [claim] is
more than a drafting effort designed to monopolize the [abstract idea].’” Id.
(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.
The Office published revised guidance on the application of § 101.
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50–
57 (Jan. 7, 2019) (“2019 PEG”). Recently, the Office published an update to
that guidance. October 2019 Patent Eligibility Guidance Update, 84 Fed.
Reg. 55,942 (hereinafter “PEG Update”). Under the 2019 PEG and PEG
Update (collectively referred to as “2019 Updated PEG”), 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); and
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(2) additional elements that integrate the judicial exception
into a practical application (see MPEP § 2106.05(a)–(c),
(e)–(h)).4

See 2019 Updated PEG, 52, and 55–56. Only if a claim: (1) recites a
judicial exception; and (2) does not integrate that exception into a practical
application, does the office then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception
that is not “well-understood, routine, conventional” in the
field (see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a
high level of generality, to the judicial exception.
See 2019 Updated PEG 56.
We analyze the patent-eligibility rejection with the principles
identified above in mind.
Examiner’s Findings and Conclusions
In the first part of the Alice inquiry, the Examiner determines that
claims 1–6 and 8–11 are directed to “mathematical concepts and/or mental
processes that are used to estimate a fault-crossing underground pipeline
behavior.” Final Act. 6–8. In particular, the Examiner avers that
independent claims 1 and 8 merely recite the steps of using formulae to
calculate performance parameters of the pipeline, to evaluate the
mathematical calculations, and to display the results of the evaluation. Ans.
4–7. According to the Examiner, the cited steps are mathematical steps that
can be performed mentally by an operator to verify that the behavior

4 All references to the MPEP are to 9th Ed., Rev. 08.2017 (Jan. 2018).
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estimation meets the conditions set forth in the claim. Id. at 7. Therefore,
the Examiner finds that because the cited claims merely estimate the fault
behavior of the pipeline through mathematical operations, they are directed
to an abstract idea consistent with the case law. Id. Further, the Examiner
finds that because the claims merely recite using a general purpose computer
that automates the performance of the cited steps, the claims do not recite
any additional elements that would integrate the judicial exceptions into a
practical application. Id. at 8–9.
In the second part of the Alice inquiry, the Examiner determines the
claims do not recite additional elements sufficient to amount to significantly
more than the abstract idea. Id. at 10. According to the Examiner, the
claimed subject matter fails to show an inventive concept because it merely
recites a general purpose computer according to conventional functionality
to perform the abstract idea. Id. at 10–12. Therefore, the Examiner avers
that because the claims do not recite additional elements beyond the general
purpose computer for performing the steps in the mental process, there is no
need to provide evidence that additional elements are well-understood,
routine, conventional activities. Id. at 15.
Appellant’s Arguments and Contentions
Appellant argues that the claims are patent-eligible because they
pertain to improving computer-related technology by using a general
purpose computer to estimate the behavior of a fault-crossing underground
pipeline prior to a conventional dedicated simulation device carrying out a
final analysis resulting in a faster evaluation of the pipeline thereby reducing
the overall processing thereof. Appeal. Br. 11–14 (citing McRo, Inc. v.
Bandai Namco Games Am., Inc., 837 F.3d 1299 (Fed. Cir. 2016); Spec. ¶¶ 8,
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19, 26, 60, 81, 105). Further, Appellant argues that the steps of “evaluating
bending performance . . . , outputting evaluation an result . . . ,” and “the
bending resistance performance is able to be evaluated . . . integrate the
mathematical formulas . . . for use on a general purpose computer to
evaluate a joint deflection angle due to pipe orthogonal direction ground
displacement of a pipeline in a relatively short amount [of] time.” Id. at 15
(citing Spec. ¶¶ 33–41). Additionally, Appellant argues that because the
Examiner has failed to provide evidence that the cited features of claims 1
and 8 are well-understood, routine, and conventional, the claims recite
significantly more than the abstract idea, and it is patent-eligible. Id. at 19.
Our Review
Applying the guidance set forth in the 2019 Updated PEG and
controlling case law, we determine whether the Examiner has erred in
rejecting the claims as directed to patent ineligible subject matter.
In revised step 1 of 2019 PEG, we consider whether the claimed
subject matter falls within the four statutory categories of patent-eligible
subject matter identified by 35 U.S.C. § 101: process, machine, manufacture,
or composition of matter. Because independent claim 1 recites a “method”
including a number of steps, claim 1 falls within the “process” category of
patent-eligible subject matter. Because independent claim 8 recites a
“device” including a plurality of units for performing various functions,
claim 8 falls within the “machine” category of patent-eligible subject matter.
In prong 1 of revised step 2A of the 2019 PEG, we determine whether
any judicial exception to patent eligibility is recited in the claims. The
guidance identifies three judicially-excepted groupings of abstract ideas:
(1) mathematical concepts; (2) certain methods of organizing human
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activity, such as fundamental economic practices; and (3) mental processes.
Independent claims 1 and 8 recite, inter alia, a method, a plurality of units
for (1) calculating a minimum number of earthquake resistant joints, (2)
calculating a load p(y), (3) calculating a bending moment distribution of
joint positions, (4) evaluating bending performance (4) outputting evaluation
result as a document expressing earthquake resistance.5
At an initial matter, we note that independent claims 1 and 8 merely
recite performing certain calculations regarding earthquake resistant joints
without detailing any particular hardware circuitry beyond a processor
circuitry performing mathematical operations to execute steps 1 through 4
above. Such a manipulation of the input data relates to the pre-Internet
activity of performing mathematical computations to convert input data into
equivalent output performance data. As drafted, these claim limitations,

5 Appellant argues for the first time in the Reply Brief that outputting the
evaluation as a document expressing earthquake resistance is not a mental
step because a document cannot be a mental process. Reply Br. 2–3 (citing
Thales Visonix, Inc. v United States, 850 F.3d 1343 (Fed. Cir. 2017)).
Appellant fails to show good cause for this new argument, and as such,
Appellant’s belated argument is deemed waived as untimely. 37 C.F.R.
§ 41.41(b)(2) (2016). See In re Hyatt, 211 F.3d 1367, 1373 (Fed. Cir. 2000)
(noting that an argument not first raised in the brief to the Board is waived
on appeal); Ex parte Nakashima, 93 USPQ2d 1834, 1837 (BPAI 2010)
(explaining that arguments and evidence not timely presented in the
principal Brief, will not be considered when filed in a Reply Brief, absent a
showing of good cause explaining why the argument could not have been
presented in the Principal Brief); Ex parte Borden, 93 USPQ2d 1473, 1477
(BPAI 2010) (informative) (“Properly interpreted, the Rules do not require
the Board to take up a belated argument that has not been addressed by the
Examiner, absent a showing of good cause.”). Therefore, we do not address
Appellant’s contention further.

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under their broadest reasonable interpretation, recite a mental process for
organizing information through mathematical correlations that can be
performed in the human mind or using a pen and paper. See,e.g.,
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372–73 (Fed.
Cir. 2011) (determining that a claim whose “steps can be performed in the
human mind, or by a human using a pen and paper” is directed to an
unpatentable mental process). We thus agree with the Examiner that the
claimed subject matter is merely relates to the basic concept of
“mathematical concepts and/or mental processes that are used to estimate a
fault-crossing underground pipeline behavior.” Ans. 7. Accordingly, we
find that independent claims 1 and 8 recite the judicial exception of a mental
process.
Having determined that the claims recite a judicial exception, our
analysis under the 2019 PEG turns now to determining whether there are
“additional elements that integrate the judicial exception into a practical
application.” See MPEP § 2106.05(a)–(c), (e)–(h).6 “Integration into a
practical application” requires an additional element or a combination of

6 Specifically, we determine whether the claims recite:
(i) an improvement to the functioning of a computer [(or a mobile
device)];
(ii) an improvement to another technology or technical field;
(iii) an application of the abstract idea with, or by use of, a particular
machine;
(iv) a transformation or reduction of a particular article to a different
state or thing; or
(v) other meaningful limitations beyond generally linking the use of
the abstract idea to a particular technological environment.
Id.
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additional elements in the claim to 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 exception. 84 Fed. Reg. at 53.
Appellant’s claims 1 and 8 recite computer-related limitations (e.g.,
performance evaluation unit). Appellant argues that the claimed “evaluating
bending performance . . ., outputting evaluation an result . . .,” and “the
bending resistance performance is able to be evaluated . . . integrate the
mathematical formulas . . . for use on a general purpose computer to
evaluate a joint deflection angle due to pipe orthogonal direction ground
displacement of a pipeline in a relatively short amount [of] time.” Appeal
Br. 15. Therefore, Appellant argues that the claims are directed to an
improvement to computer functionality. Id.
We do not find the recited computer-related limitations are sufficient
to integrate the judicial exception into a practical application. Although the
claim nominally requires these steps to be performed by a performance
evaluation unit, this computer implementation of a mental process is
insufficient to take the invention out of the realm of abstract ideas. Versata
Dev. Grp. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) (“Courts
have examined claims that required the use of a computer and still found that
the underlying, patent-ineligible invention could be performed via pen and
paper or in a person’s mind.”); Alice, 573 U.S. at 223 (“Stating an abstract
idea while adding the words ‘apply it with a computer’” is insufficient to
confer eligibility.). Further, the Specification does not provide additional
details about the general purpose computer that would transform it into a
specific computing device for converting input data from one form to
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another. Although we do not dispute that the processing circuitry includes
specific instructions for performing the recited functions, Appellant has not
explained persuasively how the derived content transforms the received data
into a new state or thing. See MPEP § 2106.05(a). Rather, the claims
merely adapt the mental process of calculating input data into an equivalent
output performance data, and subsequently displaying the performance data.
See Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1055 (Fed.
Cir. 2017) (“Our prior cases have made clear that mere automation of
manual processes using generic computers does not constitute a patentable
improvement in computer technology.”); see also Bancorp Servs., L.L.C. v.
Sun Life Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012)
(A computer “employed only for its most basic function . . . does not impose
meaningful limits on the scope of those claims.”).
Further, Appellant’s identified improvements are to the abstract idea
itself, not improvements to a technology or computer functionality. That is,
the cited claim limitations do not improve the functionality of the general
purpose computer system, nor do they achieve an improved technological
result in conventional industry practice. See McRO, 837 F.3d at 1316.
Thus, we agree with the Examiner that the claims do not recite an additional
element reflecting an improvement in the functioning of a computer, or an
improvement to other technology or technical field. Ans. 12–13; see Diehr,
450 U.S. 175; DDR Holdings, 773 F.3d 1245, 1258–59 (Fed. Cir. 2017);
Intellectual Ventures I LLC v. Cap. One Bank (USA), 792 F.3d 1363, 1371
(Fed. Cir. 2015). As correctly noted by the Examiner, the claims do not
recite an additional element that implements the abstract idea with a
particular machine or manufacture that is integral to the claim. Id. Instead,
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the claim limitations only recite result-based functional steps that do not
describe how to achieve the performance enhancement of pipeline joints in a
non-abstract way. Id.; see RecogniCorp, LLC v. Nintendo Co., 855 F.3d
1322 (Fed. Cir. 2017); CyberSource Corp. v. Retail Decisions, Inc., 654
F.3d 1366, 1375 (Fed. Cir. 2011). Prior to the Internet, such activities were
widely practiced, and became computerized to facilitate conversion of input
data into an equivalent output performance data, which is subsequently
displayed. See OIP Techs, Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1364
(Fed. Cir. 2015).
Because the claimed subject matter outlined above does not (1)
provide any technical solution to a technical problem as required by DDR
Holdings;7 (2) provide any particular practical application as required by
BASCOM8; or (3) entail an unconventional technological solution to a
technological problem as required by Amdocs, 9 we agree with the
Examiner’s determination that Appellant’s claims 1 and 8 are directed to an
abstract idea that is not integrated into a practical application.

7 The Federal Circuit found DDR’s claims are patent-eligible under
35 U.S.C. § 101 because DDR’s claims: (1) do not merely recite “the
performance of some business practice known from the pre-Internet world”
previously disclosed in Bilski and Alice; but instead (2) provide a technical
solution to a technical problem unique to the Internet, i.e., a “solution . . .
necessarily rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer networks.” DDR Holdings, 773
F.3d at 1257.
8 BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341
(Fed. Cir. 2016).
9 See Amdocs Ltd. v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016).
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Alice/Mayo—Step 2B (Inventive Concept)
Turning to step 2B of the 2019 PEG, we look to whether the claim:
(a) recites a specific limitation or combination of limitations that are not
well-understood, routine, conventional activity in the field; or (b) simply
appends well-understood, routine, conventional activities previously known
to the industry, specified at a high level of generality, to the judicial
exception. 84 Fed. Reg. 56; see Alice, 573 U.S. at 217 (“[W]e consider the
elements of each claim both individually and ‘as an ordered combination’”
to determine whether the claim includes “significantly more” than the
ineligible concept); see also BASCOM, 827 F.3d at 1350 (“[A]n inventive
concept can be found in the non-conventional and non-generic arrangement
of known, conventional pieces.”).
We discern no additional element or combination of elements recited
in Appellant’s independent claims 1 and 8 that contain any “inventive
concept” or add anything “significantly more” to transform the abstract
concept into a patent-eligible application. Alice, 573 U.S. at 221. We are
not persuaded by Appellant’s remarks, noted above, alleging the claims are
directed to a non-routine and unconventional system because it recites a new
method for evaluating performance data of an underground pipeline.
Appellant has failed to establish on this record how converting input data
into equivalent output performance data is distinguished from the
conventional processor-implemented calculation of data. We agree with the
Examiner that using generic processing circuitry is a routine and
conventional approach to performing mathematical data calculations. Ans.
13–14. Further, Appellant does not direct our attention to any portion of the
Specification indicating that the claimed processing circuitry performs
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anything other than well-understood, routine, and conventional functions,
such as receiving, processing, and displaying data. See Elec. Power Group,
LLC v. Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016) (“Nothing in the
claims, understood in light of the [S]pecification, requires anything other
than off-the-shelf, conventional computer, network, and display technology
for gathering, sending, and presenting the desired information.”); see also
Alice, 573 U.S. at 224–26 (receiving, storing, sending information over
networks insufficient to add an inventive concept); buySAFE, Inc. v. Google,
Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (“That a computer receives and
sends the information over a network—with no further specification—is not
even arguably inventive.”). Instead, Appellant’s claimed subject matter
simply uses a generic processing circuitry to perform the abstract idea of
converting input data from one form to another, and displaying the result.
As noted above, the use of a generic computer does not alone transform an
otherwise abstract idea into patent-eligible subject matter. As our reviewing
court has observed, “after Alice, there can remain no doubt: recitation of
generic computer limitations does not make an otherwise ineligible claim
patent-eligible.” DDR, 773 F.3d at 1256 (citing Alice, 573 U.S. at 223).
Because the discussed claim elements only recite generic computer
functions that are well-understood, routine, and conventional, individually
and in combination, the claim is devoid of an inventive concept. See Alice,
573 U.S. at 217. “[T]he ‘inventive concept’ [under the second part of the
Mayo/Alice test] cannot be the abstract idea itself” and “Berkheimer . . .
leave[s] untouched the numerous cases from [the Federal Circuit] 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.
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2018) (Moore, J., concurring). “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.” BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1281,
1290 (Fed. Cir. 2018). We, therefore, agree with the Examiner that the
computer functions recited in the claims were, in fact, generic, and are met
by numerous precedent establishing that using a generic computer to
expedite and automate processes traditionally performed manually, or that
are otherwise abstract, is a well-understood, routine, and conventional use of
such computers. Ans. 14–15; see also, e.g., Intell. Ventures I LLC v.
Symantec Corp., 838 F.3d 1307, 1321 (Fed. Cir. 2016) (utilizing an
intermediary computer to forward information); Bancorp Services,
L.L.C., 687 F.3d at 1278 (“The computer required by some of Bancorp’s
claims is employed only for its most basic function, the performance of
repetitive calculations, and as such does not impose meaningful limits on the
scope of those claims.”).
Therefore, we conclude that claim 1’s and 8’s elements, both
individually and as an ordered combination, do not provide an inventive
concept. See 84 Fed. Reg. 56; see also Berkheimer, 881 F.3d at 1370 (“The
limitations amount to no more than performing the abstract idea of parsing
and comparing data with conventional computer components.”); Bancorp,
687 F.3d at 1278 (“[T]he use of a computer in an otherwise patent-ineligible
process for no more than its most basic function—making calculations or
computations—fails to circumvent the prohibition against patenting abstract
ideas and mental processes.”).
Appeal 2021-004428
Application 15/916,773

18
To the extent Appellant argues the claims necessarily contain an
“inventive concept” based on their alleged novelty or non-obviousness over
the cited references, Appellant misapprehends the controlling precedent.
Although the second part in the Alice/Mayo framework is termed a search
for an “inventive concept,” the analysis is not an evaluation of novelty or
non-obviousness, but, rather, a search for “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.’” Alice,
573 U.S. at 217–218 (quoting Mayo, 566 U.S. 72–73). A novel and
nonobvious claim directed to a purely abstract idea is, nonetheless, patent-
ineligible. See Mayo, 566 U.S. at 90.
In many cases, “relying on a computer to perform routine tasks more
quickly or more accurately is insufficient to render a claim patent eligible.”
OIP Techs., 788 F.3d at 1363 (citing Alice, 573 U.S. at 224) (“[U]se of a
computer to create electronic records, track multiple transactions, and issue
simultaneous instructions” is not an inventive concept.); see also, e.g., Intell.
Ventures I, 792 F.3d at 1370 (“[M]erely adding computer functionality to
increase the speed or efficiency of the process does not confer patent
eligibility on an otherwise abstract idea.”). Therefore, the functions recited
in independent claims 1 and 8 do not add meaningful limitations beyond
generally linking the abstract idea to the particular technological
environment. See Ans. 15–16.
Because Appellant’s claims 1 and 8 are directed to a patent-ineligible
abstract concept and do not recite something “significantly more” under the
second prong of the Alice analysis, we sustain the Examiner’s rejection of
independent claims 1 and 8 under 35 U.S.C. § 101.
Appeal 2021-004428
Application 15/916,773

19
Regarding dependent claims 2–6 and 9–11, Appellant has not
presented separate patentability arguments or has reiterated substantially the
same arguments as those previously discussed for the patentability of claims
1 and 8. As such, claims 2–6 and 9–11 fall therewith. See 37 C.F.R.
§ 41.37(c)(1)(iv).
VI. CONCLUSION
We affirm the Examiner’s patent eligibility rejection of claims 1–6
and 8–11 under 35 U.S.C. § 101.
DECISION SUMMARY
In summary:
Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–6, 8–11 101 Eligibility 1–6, 8–11

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

AFFIRMED