Kymal, Chandran et al.

Patent Trials and Appeals Board

Dec 27, 2019

14042851 - (D) (P.T.A.B. Dec. 27, 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.
14/042,851 10/01/2013 Chandran Kymal OEM 0112 PUS 2193
22045 7590 12/27/2019
Brooks Kushman
1000 Town Center
22nd Floor
Southfield, MI 48075
EXAMINER
KARMIS, ALISSA D
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
12/27/2019 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):
docketing@brookskushman.com
kdilucia@brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHANDRAN KYMAL and GREGORY FRANCIS GRUSKA
Appeal 2019-000980
Application 14/042,851
Technology Center 3600
Before LINZY T. McCARTNEY, BETH Z. SHAW, and ALEX S. YAP,
Administrative Patent Judges.
McCARTNEY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 seeks review under 35 U.S.C. § 134(a) of the Examiner’s
final rejection of claims 1–29. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 Appellant identifies the real party in interest as Omnex Systems LLC.
Appeal Brief 2, filed May 7, 2018 (“Appeal Br.”).
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BACKGROUND
This patent application concerns “methods and systems for knowledge
management throughout the entire life cycle of a product for use in product
and process optimization, problem solving, and the development of other
products and services.” Specification ¶ 1, filed October 1, 2013 (“Spec.”).
Claim 1 illustrates the claimed subject matter:
1. A non-transitory machine readable storage medium
storing instructions that, when executed, cause a processor to
perform a method comprising:
receive input defining one or more requirements for a
product;
generate one or more cross-reference matrices from the
one or more requirements based on an hazard analysis risk
assessment;
generate a parent-child structure for the one or more cross-
reference matrices;
populate a requirement file based on the cross-reference
matrices;
generate a risk prevention analysis file based on input from
the requirement file and one or more linkages between the one or
more requirements and the parent-child structure; and
output the risk prevention analysis file, including a tree
structure and a tool to enable a user to scroll through the tree
structure.
Appeal Br. 13.

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REJECTIONS
Claims

35 U.S.C. § References 
1–29 101
1–29 103 Minotto,2 Harsh3
DISCUSSION
We have reviewed the Examiner’s rejections and Appellant’s
arguments. We disagree with Appellant that the Examiner erred in rejecting
claims 1–29 under § 101. For this rejection, as consistent with the discussion
below, we adopt the Examiner’s reasoning, findings, and conclusions on
pages 2–4 and 7–10 of the Final Office Action mailed September 8, 2017
(“Final Act.”) and pages 3–6 of the Examiner’s Answer mailed September
20, 2018 (“Ans.”). But we agree with Appellant that the Examiner erred in
rejecting claims 1–29 under § 103. We address these rejections in turn.
Section 101 Rejection
Section 101 of the Patent Act provides that “any new and useful
process, machine, manufacture, or composition of matter, or any new and
useful improvement thereof” is patent eligible. 35 U.S.C. § 101. But the
Supreme Court has long recognized an implicit exception to this section:
“Laws of nature, natural phenomena, and abstract ideas are not patentable.”
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (quoting Ass’n for
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
To determine whether a claim falls within one of these excluded categories,

2 Minotto (US 2006/0122873 A1; June 8, 2006).
3 Harsh et al. (US 2012/0253875 A1; October 4, 2012).
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the Court has set out a two-part framework. The framework requires us first
to consider whether the claim is “directed to one of those patent-ineligible
concepts.” Alice, 573 U.S. at 217. If so, we then examine “the elements of
[the] claim both individually and ‘as an ordered combination’ to determine
whether the additional elements ‘transform the nature of the claim’ into a
patent-eligible application.” Alice, 573 U.S. at 217 (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78, 79 (2012)).
That is, we examine the claim for an “inventive concept,” “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 217–18 (alteration in original) (quoting
Mayo, 566 U.S. at 72–73).
The Patent Office has revised its guidance about this framework. See
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (“Revised Guidance”). Under the Revised Guidance, to decide
whether a claim is directed to an abstract idea, we evaluate whether the
claim (1) recites subject matter that falls within one of the abstract idea
groupings listed in the Revised Guidance and (2) fails to integrate the recited
abstract idea into a practical application. See Revised Guidance, 84 Fed.
Reg. at 51, 54. If the claim is directed to an abstract idea, as noted above, we
then determine whether the claim has an inventive concept. The Revised
Guidance explains that when making this determination, we should consider
whether the additional claim elements add “a specific limitation or
combination of limitations that are not well-understood, routine,
conventional activity in the field” or “simply append[] well-understood,
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routine, conventional activities previously known to the industry, specified
at a high level of generality.” Revised Guidance, 84 Fed. Reg. at 56.
With these principles in mind, we turn to the § 101 rejection.
Appellant argues claims 1–29 together, so as permitted by 37 C.F.R.
§ 41.37(c)(1)(iv), we decide the appeal for this ground of rejection based on
claim 1.
Abstract Idea
The Revised Guidance explains that the abstract idea exception
includes “mental processes,” that is, acts that people can perform in their
minds or using pen and paper. See Revised Guidance, 84 Fed. Reg. at 52 &
nn. 14–15; see also USPTO, October 2019 Update: Subject Matter
Eligibility at 9, https://www.uspto.gov/sites/default/files/documents
/peg_oct_2019_update.pdf (“October SME Update”) (explaining that mental
processes encompass acts that people can perform in their minds or using
pen and paper). The Examiner determined that claim 1 recites subject matter
that falls within this category of abstract ideas. See, e.g., Final Act. 8
(determining that claim 1 includes limitations that “are directed to an idea of
itself since they can be performed by a human using pen and paper”).
Appellant does not explicitly dispute that claim 1 recites an abstract
idea, and we agree with the Examiner that it does so. Claim 1 recites (1)
receiving input defining requirements for a product, (2) generating cross-
reference matrices from the requirements based on a hazard analysis risk
assessment, and (3) generating a parent-child structure for the cross-
reference matrices. Appeal Br. 13. Claim 1 also recites (4) populating a
requirement filed based on the cross-reference matrices; (5) generating a risk
prevention analysis file based on input from the requirement file and
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linkages between the requirements and the parent-child structure; and (6)
outputting the risk prevention analysis file, including a tree structure. Appeal
Br. 13.
These limitations are functional and result-oriented in nature, a
common feature of claims that recite abstract ideas. See, e.g., Elec. Power
Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1356 (Fed. Cir. 2016) (“Indeed,
the essentially result-focused, functional character of claim language has
been a frequent feature of claims held ineligible under § 101, especially in
the area of using generic computer and network technology to carry out
economic transactions.”). These limitations recite what the claimed method
does—receive input; generate cross-reference matrices, parent-child
structures, and risk prevention analysis files; populate requirement files; and
output risk prevention analysis files with a tree structure—but do not
meaningfully limit how the claimed method does it. Other than specifying
what certain results are “from” or “based on,” these limitations place almost
no restrictions on how the claimed method produces the recited results. See
Appeal Br. 13.
These limitations are so broadly written that they encompass acts that
people can perform in their minds or using pen and paper. See, e.g.,
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir.
2011) (determining that a claim limitation “is so broadly worded that it
encompasses literally any method” for performing the limitation including
“even logical reasoning that can be performed entirely in the human mind”).
For example, people can receive the recited input by reading the input from
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a database4 and can generate the recited cross-reference matrices and parent-
child structure by mentally considering the underlying information and
writing the matrices and structure on a piece of paper. See, e.g.,
CyberSource, 654 F.3d at 1372 (determining that a step that “requires
‘obtaining information about other transactions that have utilized an Internet
address that is identified with the [ ] credit card transaction’—can be
performed by a human who simply reads records of Internet credit card
transactions from a preexisting database” and a step that requires
“construct[ing] a map of credit card numbers” can be performed “by writing
down a list of credit card transactions made from a particular IP address”
(first alteration in original)). Similarly, people can populate the recited
requirement file, generate the recited risk prevention analysis file, and output
the risk analysis file along with a tree structure5 by writing down the
necessary information. See, e.g., CyberSource, 654 F.3d at 1372. Because
these limitations encompass acts that people can perform in their minds or
using pen and paper, claim 1 recites mental processes. See CyberSource, 654

4 Even if this limitation did not encompass mental processes, the limitation
would not make claim 1 patent eligible because it simply gathers data. See,
e.g., CyberSource, 654 F.3d at 1372 (“[E]ven if some physical steps are
required to obtain information from the database (e.g., entering a query via a
keyboard, clicking a mouse), such data-gathering steps cannot alone confer
patentability.”).
5 Like the step of receiving input defining product requirements, even if the
step of outputting the risk prevention analysis file (including a tree structure)
did not encompass mental processes, this step would not make claim 1
patent eligible because the step involves insignificant post-solution activity.
Cf. Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1242 (Fed. Cir. 2016)
(agreeing with the Board that downloading and printing menus “are
insignificant post-solution activities”).
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F.3d at 1372 (determining “that unpatentable mental processes are the
subject matter of” a claim when the claim’s “method steps can be performed
in the human mind, or by a human using a pen and paper”); October SME
Update 9 (explaining that mental processes encompass acts that people can
perform in their minds or using pen and paper). Claim 1 thus recites an
abstract idea. See Revised Guidance, 84 Fed. Reg. at 52 (explaining that the
abstract idea exception includes mental processes).
Because we determine that claim 1 recites an abstract idea, we next
consider whether claim 1 integrates the abstract idea into a practical
application. See Revised Guidance, 84 Fed. Reg. at 51. In doing so, we
evaluate the claim as a whole to determine whether the claim “integrate[s]
the [abstract idea] into a practical application, using one or more of the
considerations laid out by the Supreme Court and the Federal Circuit.”
Revised Guidance, 84 Fed. Reg. at 55; see also October SME Update 12
(discussing the practical application analysis). That is, we consider any
additional elements recited in the claim along with the limitations that recite
an abstract idea to determine whether the claim integrates the abstract idea
into a practical application. See October SME Update 12.
The additional elements recited in claim 1 include “a processor,” “a
tree structure,” “a tool to enable a user to scroll through the tree structure,”
and the step of “output[ting] . . . a tool to enable a user to scroll through the
tree structure.” Appeal Br. 13. The written description describes the recited
processor, tree structure, and tool, as well as the operations they perform, in
largely functional terms with few implementation details. See, e.g., Spec.
¶¶ 23 (disclosing that “system architecture 100 network diagrams may
include, but is not limited to, a server 102, one or more processors, one or
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more client systems 104, and software that may be designed to be a
standalone system”), 27 (disclosing that “[t]he risk management process
may receive the requirements from one or more users at a client computer”
and “[t]he risk management process may generate one or more cross-
reference matrices based on the information received by the requirement
manager”), 28 (disclosing that “the requirements manager may present the
cross-reference matrices based on the analysis and requirements information
to a user using several formats including, but not limited to, a parent-child
structure, a fault tree analysis, and/or a dashboard display”), 29 (“At step
206, the requirements manager is able to replicate the product requirements
into one or more FMEAs.”), 52 (disclosing that “the system may generate a
fault tree analysis based on a feature or function of the product”), 86 (“The
computer system generation of a fault tree analysis may allow one or more
user to visual[ly] scroll through the analysis of a system, subsystem, and/or
component on a display.”).
The lack of implementation details shows that these elements and
their associated operations are generic. See, e.g., Intellectual Ventures I LLC
v. Erie Indem. Co., 850 F.3d 1315, 1331 (Fed. Cir. 2017) (“The claimed
mobile interface is so lacking in implementation details that it amounts to
merely a generic component (software, hardware, or firmware) that permits
the performance of the abstract idea, i.e., to retrieve the user-specific
resources.”); Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367,
1384 (Fed. Cir. 1986) (“[A] patent need not teach, and preferably omits,
what is well known in the art.”). As for the outputting step, like the other
additional elements, the written description describes this step in a generally
functional manner and provides few implementation details about the step.
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See, e.g., Spec. ¶ 86 (“The computer system generation of a fault tree
analysis may allow one or more user to visual[ly] scroll through the analysis
of a system, subsystem, and/or component on a display.”). This indicates
that this step is generic. See, e.g., Intellectual Ventures I, 850 F.3d at 1331;
Hybritech, 802 F.2d at 1384. In any case, this limitation simply outputs a
generic tool that enables users to scroll through a tree structure. See Appeal
Br. 13. This limitation therefore does not impose meaningful limits on the
claimed method and thus amounts to insignificant extra-solution activity. Cf.
Apple, 842 F.3d at 1242.
Considering these additional elements along with the limitations that
recite an abstract idea, both individually and as an ordered combination, we
determine that the claimed method does not integrate the abstract idea into a
practical application. The claimed method uses generic computer
components performing generic computer operations to implement the
abstract idea. See Appeal Br. 13. Using a generic computer component in
this way does not integrate an abstract idea into a practical application. See,
e.g., Alice, 573 U.S. at 223–24 (“[W]holly generic computer implementation
is not generally the sort of ‘additional featur[e]’ 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)
(second and third alterations in original)). The claimed method also adds to
the abstract idea the generic insignificant extra-solution activity of
outputting a generic tool to enable a user to scroll through the tree structure.
See Appeal Br. 13. Adding this activity to the abstract idea does not integrate
the abstract idea into a practical application. See Bilski v. Kappos, 561 U.S.
593, 612 (2010) (“Flook established that limiting an abstract idea to one
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field of use or adding token postsolution components did not make the
concept patentable.”). And, in the context of the claim as a whole,
combining generic computer components that perform generic computer
operations to implement the abstract idea with generic insignificant extra-
solution activity fails to integrate the abstract idea into a practical
application. See, e.g., Intellectual Ventures I, 850 F.3d at 1328–29; Apple,
842 F.3d at 1242–43.
Appellant has not persuaded us otherwise. Appellant contends that the
Examiner erroneously assumed “that any element so-analyzed for
‘something more’ be apart from the elements included in the so-called
abstract idea.” Appeal Br. 6; Reply Brief 2–4, November 19, 2018 (“Reply
Br.”) (making related arguments). Even if the Examiner made this
assumption, for the reasons discussed above, considering the additional
elements together with the limitations that recite an abstract idea does not
show that claim 1 amounts to significantly more than the recited abstract
idea. Appellant also asserts that “[t]he interoperable elements of the claim
function to improve the creation and processing of fault tree analysis in an
uncommon and atypical manner.” Appeal Br. 9; see also Reply Br. 4
(arguing that “[a]s a whole concept, in ordered combination, the claims
present an atypical and uncommon approach to solving the problem”). But
Appellant has provided no persuasive evidence or reasoning to support this
assertion. See Appeal Br. 9; Reply Br. 4. In any event, although claim 1
recites “including a tree structure and a tool to enable a user to scroll through
the tree structure,” the claim does not require creating and processing a
“fault tree analysis.” Appeal Br. 13. Nor does the written description limit
the recited tree structure to a fault tree analysis. See, e.g., Spec. ¶ 6 (“The
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system may output the risk prevention analysis as a tree structure including,
but not limited to, a fault tree analysis.”). We thus find this argument
unpersuasive. See, e.g., Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d
1138, 1149 (Fed. Cir. 2016) (“While Synopsys may be correct that the
inventions of the Gregory Patents were intended to be used in conjunction
with computer-based design tools, the Asserted Claims are not confined to
that conception. The § 101 inquiry must focus on the language of the
Asserted Claims themselves.”).
Inventive Concept
Finally, we consider whether claim 1 has an inventive concept, that is,
whether the claim has additional elements that “‘transform the nature of the
claim’ into a patent-eligible application.” Alice, 573 U.S. at 217 (quoting
Mayo, 566 U.S. at 78, 79). As discussed above, this requires us to evaluate
whether the additional claim elements add “a specific limitation or
combination of limitations that are not well-understood, routine,
conventional activity in the field” or “simply append[] well-understood,
routine, conventional activities previously known to the industry, specified
at a high level of generality.” Revised Guidance, 84 Fed. Reg. at 56.
The Examiner found that the additional elements recited in claim 1
add well-understood, routine, and conventional activities. See, e.g., Ans. 4–
5. Appellant has not explicitly challenged this finding, and we agree with the
Examiner that the additional elements perform well-understood, routine, and
conventional activities. As discussed above, the additional elements include
the recited processor, tree structure, tool, and the step of outputting a tool
that enables users to scroll through a tree structure. See Appeal Br. 13. As
also discussed above, the written description describes these elements (and
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when applicable, their associated functions) in largely functional terms with
few implementation details. See, e.g., Spec. ¶¶ 23, 27–29, 52, 86. This shows
that these elements and their functions are conventional. See, e.g., Hybritech,
802 F.2d at 1384 (“[A] patent need not teach, and preferably omits, what is
well known in the art.”); USPTO, Memorandum on Changes in Examination
Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter
Eligibility Decision (Berkheimer v. HP, Inc.) at 3 (Apr. 19, 2018), available
at https://www.uspto.gov/sites/default/files/documents/memo-berkheimer-
20180419.PDF (“Berkheimer Memo”) (explaining that a specification that
describes additional elements “in a manner that indicates that the additional
elements are sufficiently well-known that the specification does not need to
describe the particulars of such additional elements to satisfy 35 U.S.C.
§ 112(a)” can show that the elements are well understood, routine, and
conventional).
Whether we consider these additional elements individually or as an
ordered combination, these elements do not transform the nature of claim 1
into a patent-eligible application. These elements are largely recited at a high
level of generality, and there is no indication that these elements override the
conventional use of known features or involve an unconventional
arrangement or combination of elements. At bottom, claim 1 recites
conventional computer components employed in a customary manner, which
is not enough to provide an inventive concept. Alice, 573 U.S. at 223 (“[T]he
mere recitation of a generic computer cannot transform a patent-ineligible
abstract idea into a patent-eligible invention.”).
Appellant contends that the Examiner was required to consider
whether claim 1, “as a whole concept, represent[s] routine and common
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practices.” Appeal Br. 6. Appellant asserts that on this issue the Examiner
offered only a “conclusory statement” and argues that this statement is
insufficient under the Berkheimer Memo, other Patent Office guidance, and
Federal Circuit precedent to show that an element (or a combination of
elements) is routine and commonplace. See Appeal Br. 6–9.
We find these arguments unpersuasive. The Federal Circuit has made
clear that “the relevant inquiry is not whether the claimed invention as a
whole is unconventional or non-routine.” BSG Tech LLC v. Buyseasons, Inc.,
899 F.3d 1281, 1290 (Fed. Cir. 2018) (emphases added). See also Bridge &
Post, Inc. v. Verizon Commc’ns, Inc., 778 F. App’x 882, 892 (Fed. Cir.
2019) (“At Alice step two we assess ‘whether the claim limitations other
than the invention’s use of the ineligible concept to which it was directed
were well-understood, routine, and conventional.’” (quoting BSG Tech, 899
F.3d at 1290)). The Federal Circuit has explained that “[i]t 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, 899 F.3d at
1290. See also Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1378, 1385
(Fed. Cir. 2019) (“The abstract idea itself cannot supply the inventive
concept, ‘no matter how groundbreaking the advance.’” (quoting SAP Am.,
Inc. v. InvestPic, LLC, 898 F.3d 1161, 1170 (Fed. Cir. 2018)). Accordingly,
these arguments have not persuaded us that the Examiner erred.
Summary
For at least the reasons discussed above, we determine that claim 1 is
directed to an abstract idea and lacks an inventive concept. We therefore
sustain the Examiner’s rejection of claim 1 under § 101.
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Section 103 Rejection
Claim 1 recites “generate one or more cross-reference matrices from
the one or more requirements based on an hazard analysis risk assessment.”
Appeal Br. 13. Independent claims 12 and 19 recite generating one or more
cross-reference matrices from “the one or more requirements” and “the one
or requirements based on at least one design specification,” respectively.
Appeal Br. 15, 16.
The Examiner found that Minotto teaches these limitations because
Minotto discloses a “risk matrix” that allegedly includes a value related to
the hazards, requirements, requests, and features of a defined product. See
Ans. 7 (citing Minotto ¶¶ 39–42); Final Act. 11, 17. Appellant argues that
the cited portions of Minotto discuss using a risk matrix but not generating
the risk matrix in the manner recited in independent claims 1, 12, and 19.
See Appeal Br. 9–11.
We agree with Appellant. The cited portions of Minotto disclose
accessing a risk matrix that “indicates, for a given pairing of hazard severity
and probability, a resultant value of risk tolerance,” Minotto ¶ 42, but does
not explicitly disclose that these values are related to the hazards,
requirements, requests, and features of a defined product as found by the
Examiner. Thus, even assuming that Minotto teaches generating this risk
matrix, the Examiner has not shown that Minotto generates the risk matrix
from the elements recited in independent claims 1, 12, and 19. We thus do
not sustain the Examiner’s rejection of independent claims 1, 12, and 19 and
their respective dependent claims.
Claim 24 recites “generate a parent-child structure for the one or more
requirements.” Appeal Br. 17. The Examiner found that Minotto teaches this
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limitation for the same reason that Minotto teaches generating a parent-child
structure for the one or more cross-reference matrices in claim 1. See Final
Act. 18. Appellant argues that the Examiner erred “because the ‘parent-
child’ relationship in [claim 24] . . . is generated . . . [for] product
requirements, whereas in claim 1 the relationship was generated for the
cross-reference matrix.” Appeal Br. 11 (emphases added).
We agree with Appellant. As argued by Appellant, showing that
Minotto teaches generating parent-child relationship for a cross-reference
matrix does not, without more, show that Minotto teaches generating this
relationship for product requirements as required by claim 24. We thus do no
sustain the Examiner’s rejection of claim 24 and its dependent claims.
CONCLUSION
Claims
Rejected 35 U.S.C. § References  Affirmed Reversed
1–29 101   1–29
1–29 103 Minotto, Harsh  1–29
Overall
Outcome 1–29

Because we affirm at least one ground of rejection for each claim on
appeal, we affirm the Examiner’s decision. See 37 C.F.R. § 41.50(a)(1). No
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