Levine, Frank Eliot.Download PDFPatent Trials and Appeals BoardJan 25, 20212019005501 (P.T.A.B. Jan. 25, 2021) Copy Citation 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. 14/726,567 05/31/2015 Frank Eliot Levine LEV201300001US2 4748 74465 7590 01/25/2021 Frank E. Levine Levine''s Tech Consulting 9406 Chapel Down St. Austin, TX 79729-1942 EXAMINER MITCHELL, JASON D ART UNIT PAPER NUMBER 2199 NOTIFICATION DATE DELIVERY MODE 01/25/2021 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): levinef@hotmail.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte FRANK ELIOT LEVINE ____________________ Appeal 2019-005501 Application 14/726,567 Technology Center 2100 ____________________ Before ERIC S. FRAHM, JOHNNY A. KUMAR, and BARBARA A. PARVIS, Administrative Patent Judges. FRAHM, Administrative Patent Judge. DECISION ON APPEAL Appeal 2019-005501 Application 14/726,567 2 STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from a rejection of claims 1, 3–9, 11–14, and 16–20. Claims 2, 10, and 15 have been canceled (see Appeal Br. 3). We have jurisdiction under 35 U.S.C. § 6(b). We affirm. DISCLOSED AND CLAIMED INVENTION According to Appellant, the disclosed invention, entitled “Excluding Counts on Software Threads in a State” (Title), “relates to computer- implemented recording of activity for a software environment” (Spec. ¶ 1). More particularly, the invention “relates to computer-implemented recording” that “exclude[es] counts relating to the state of code running on threads in the software environment” (Spec. ¶ 1) through the use of performance tools (e.g., hardware-based performance tools or software- based performance tools) to monitor data processing systems to determine resource consumption as various software applications are executing (see Spec. ¶ 4–11). Independent claims 1, 9, and 14 recite commensurate limitations regarding a method (see claim 1) and computer program product (see claim 9) for factoring out event counts for a routine in a thread state targeted for elimination of the event counts, and a system to factor out event counts occurring on a thread during a state targeted for compensation (see 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42 (2017). “The word ‘applicant’ when used in this title refers to the inventor or all of the joint inventors, or to the person applying for a patent as provided in §§ 1.43, 1.45, or 1.46.” 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as the inventor, Frank Eliot Levine (Appeal Br. 3). Appeal 2019-005501 Application 14/726,567 3 claim 14) providing a model for identification of threats and weaknesses specific to an application, using heuristics and conclusions to generate a model of the application (see e.g., claim 1). Claim 1, reproduced below with bracketed lettering and emphases added, is illustrative of the claimed subject matter: 1. A method for factoring out event counts for a routine in a thread state targeted for elimination of the event counts comprising: accumulating the event counts as a per thread base time using means for accumulating counts; and attributing the per thread base time to a routine executing instructions on a thread to form an accumulated per thread base time for the routine wherein the accumulated per thread base time is only for executing instructions by the routine outside of a thread state targeted for elimination of the event counts and wherein the thread state is a software spin loop. Appeal Br. 23, Claims Appendix (emphases added). REJECTIONS The Examiner made the following rejections: (1) Claims 1, 3–9, 11–14, and 16–20 stand rejected under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter (an abstract idea), without significantly more.2 Final Act. 5–7; Ans. 3–6. (2) Claims 1, 3, 5–9, 11, 13, 14, 16, and 18–20 stand rejected under 35 U.S.C. § 103 as being unpatentable over Bryant et al. (US 6,728,949 B1; 2 Although the Examiner lists claims 2, 10, and 15 in the heading of the statement of the eligibility rejection (see Final Act. 5; Ans. 3), and addresses these claims in the body of the eligibility rejection (see Final Act. 5–7; Ans. 3–6), claims 2, 10, 15 are not rejected because they have been canceled (see Amendment filed Sept. 27, 2017, pp. 3, 5, 7). Appeal 2019-005501 Application 14/726,567 4 issued April 27, 2004) (hereinafter, “Bryant”) and Arimilli et al. (US 2009/0199197 A1; published Aug. 6, 2009) (hereinafter, “Arimilli”).3 Final Act. 8–11; Ans. 6–9. (3) Claims 4, 12, and 17 stands rejected under 35 U.S.C. § 103 as being unpatentable over Bryant and Kosche et al. (US 2008/0127120 A1; published May 29, 2008). Final Act. 11–12; Ans. 9–10. Appellant’s Contentions (1) With regard to the patent eligibility rejection, Appellant argues claims 1, 3–9, 11–14, and 16–20 as a group, primarily referring to limitations occurring throughout claim 1, and relying on those arguments for the eligibility of claims 3–9, 11–14, and 16–20 (see Appeal Br. 10–16; Reply Br. 2–6). Based on Appellant’s patent eligibility arguments, and because independent claims 1, 9, and 14 contain commensurate limitations, we select claim 1 as representative of claims 1, 3–9, 11–14, and 16–20 rejected under 35 U.S.C. § 101 for patent-ineligibility. See 37 C.F.R. § 41.37(c)(1)(iv). (2) With regard to the obviousness rejection of claims 1, 3, 5–9, 11, 13, 14, 16, and 18–20 over the combination of Bryant and Arimilli, Appellant primarily argues the merits of independent claim 1, and makes similar arguments as to the patentability of remaining independent claims 9 3 Although the Examiner lists claims 1, 3, 5–8, 14, 16, and 18–20 in the heading of the obviousness rejection over the combination of Bryant and Arimilli, omitting claims 9, 11, and 13 (see Final Act. 8; Ans. 6), the Examiner addresses claims 9, 11, and 13 on the merits in the body of the rejection (see Final Act. 8–10; Ans. 6–8). Therefore, we consider (i) this as harmless error, and (ii) the rejection to apply to claims 1, 3, 5–9, 11, 13, 14, 16, and 18–20. Appeal 2019-005501 Application 14/726,567 5 and 14 (see Appeal Br. 16–21; Reply Br. 6–10). Based on Appellant’s arguments, and because independent claims 1, 9, and 14 contain commensurate limitations, we select claim 1 as representative of claims 1, 3, 5–9, 11, 13, 14, 16, and 18–20 rejected under 35 U.S.C. § 103 over the combination of Bryant and Arimilli. See 37 C.F.R. § 41.37(c)(1)(iv). (3) Because Appellant does not present any separate arguments as to the obviousness rejection of claims 4, 12, and 17 over the combination of Bryant and Kosche, Appellant has not shown that the Examiner erred in rejecting claims 4, 12, and 17, and we sustain the obviousness rejection of claims 4, 12, and 17 over Bryant and Kosche pro forma. Ex parte Frye, 94 USPQ2d 1072, 1076 (BPAI 2010) (“Precedential”) (“[T]he Board will generally not reach the merits of any issues not contested by an appellant.”); 37 C.F.R. § 41.37 (c)(1)(iv)(2017) (Each ground of rejection must be treated under a separate heading.). Other than including this prior art rejection of claims 4, 12, and 17 (see supra Rejection 3) in our conclusion, we will not discuss this rejection further. Principal Issues on Appeal Based on Appellant’s arguments in the Appeal Brief (Appeal Br. 2– 21) and the Reply Brief (Reply Br. 2–11), the following principal issues are presented on appeal: (1) Has Appellant shown the Examiner erred in rejecting representative claim 1, as well as claims 3–9, 11–14, and 16–20 grouped therewith, under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter (i.e., a judicial exception such as an abstract idea), without significantly more? Appeal 2019-005501 Application 14/726,567 6 (2) Did the Examiner err in rejecting claims 1, 3, 5–9, 11, 13, 14, 16, and 18–20 under 35 U.S.C. § 103 as being unpatentable over the combination of Bryant and Arimilli because the combination is not properly combinable to teach or suggest accumulating event counts and attributing a per thread base time to a routine, as set forth in representative claim 1? ANALYSIS First Issue: Patent Eligibility Under 35 U.S.C. § 101 Section 101 of the Patent Act provides “[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, subject to the conditions and requirements of this title.” 35 U.S.C. § 101. However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014). In determining whether a claim falls within an excluded category, we are guided by the Supreme Court’s two-step framework, described in Mayo and Alice. Id. 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.”). Appeal 2019-005501 Application 14/726,567 7 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” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. (15 How.) 252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). In Diehr, the claim at issue recited a mathematical formula, but the Supreme Court held 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 187; see also id. at 191 (“We view respondents’ claims as nothing more than a process for molding rubber products and not as an attempt to patent a mathematical formula.”). Having said that, the Supreme Court also indicated that a claim “seeking patent protection for that formula in the abstract . . . is not accorded the protection of our patent laws, . . . and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.”). Appeal 2019-005501 Application 14/726,567 8 If the claim is “directed to” an abstract idea, we turn to the second step of the Alice and Mayo framework, where “we must examine the elements of the claim to determine whether it contains an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent- eligible application.” Alice, 573 U.S. at 221 (citation omitted). “A claim that recites an abstract idea must include ‘additional features’ to ensure ‘that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo, 566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[] fail[s] to transform that abstract idea into a patent-eligible invention.” Id. The PTO published revised guidance on the application of § 101. USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”).4 The Manual of Patent Examining Procedure (“MPEP”) now incorporates this revised guidance and subsequent updates at Section 2106 (9th ed. Rev. 10.2019, rev. June 2020).5 Under MPEP § 2106,, we first look to whether the claim recites: (1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, or mental processes) (“Step 2A, Prong 1”); and 4 In response to received public comments, the Office issued further guidance on October 17, 2019, updating and clarifying the Guidance. USPTO, October 2019 Update: Subject Matter Eligibility (the “October 2019 Update”) (available at https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p df). 5 All references to the MPEP are to the Ninth Edition, Revision 10.2019 (Last Revised June 2020), unless otherwise indicated. Appeal 2019-005501 Application 14/726,567 9 (2) additional elements that integrate the judicial exception into a practical application (see MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”) § 2106.05(a)–(c), (e)–(h)) (9th Ed., Rev. 08.2017, 2018) (“Step 2A, Prong 2”).6 MPEP § 2106.04(a)) and § 2106.04(d). Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look 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 (“Step 2B”). See MPEP § 2106.05(d). Even if the claim recites an abstract idea, the Federal Circuit explains the “directed to” inquiry is not simply asking whether the claims involve a patent-ineligible concept: The “directed to” inquiry . . . cannot simply ask whether the claims involve a patent-ineligible concept, because essentially every routinely patent-eligible claim involving physical products and actions involves a law of nature and/or natural phenomenon—after all, they take place in the physical world. See Mayo, 132 S.Ct. at 1293 (“For all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.”) Rather, the “directed to” inquiry applies a stage-one filter to claims, considered in light of the 6 This evaluation is performed by (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception, and (b) evaluating those additional elements individually and in combination to determine whether the claim as a whole integrates the exception into a practical application. See Guidance — Section III(A)(2), 84 Fed. Reg. 54– 55. Appeal 2019-005501 Application 14/726,567 10 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) (citation omitted); see also Diehr, 450 U.S. at 188 (“In determining the eligibility of respondents’ claimed process for patent protection under § 101, their claims must be considered as a whole.”); McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016) (the question is whether the claims as a whole “focus on a specific means or method that improves the relevant technology or are instead directed to a result or effect that itself is the abstract idea and merely invoke generic processes and machinery”). “Whether a claim is drawn to patent-eligible subject matter is an issue of law that we review de novo.” SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319, 1331 (Fed. Cir. 2010). Based on the record before us, Appellant has not shown the Examiner erred in rejecting representative claim 1 under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter. Our reasoning follows. Step 1 – Statutory Category Under Step 1 of the patent-eligibility inquiry under § 101, we determine whether a claim is directed to one of the four statutory categories of invention, i.e., a process, machine, manufacture, or composition of matter. In the instant case on appeal, representative claim 1 recites “[a] method for factoring out event counts for a routine in a thread state targeted for elimination of the event counts” including a series of two steps (e.g., accumulating and attributing). Therefore, claim 1 as a method claim, recites at least one of the enumerated categories (e.g., a process) of eligible subject matter in 35 U.S.C. § 101. Appeal 2019-005501 Application 14/726,567 11 As a result, as to claim 1, as well as claims 3–9, 11–14, and 16–20 grouped therewith, we continue our analysis under Step 2A, Prong 1 of the Guidance to determine whether claim 1 recites a judicial exception (a law of nature, natural phenomenon, or subject matter within the enumerated groupings of abstract ideas above). Step 2A, Prong 1 – Focus of the Claim If a claim falls within one of the statutory categories of patent eligibility (i.e., a process, machine, manufacture, or composition of matter) then the first inquiry is whether the claim is directed to one of the judicially recognized exceptions (i.e., a law of nature, a natural phenomenon, or an abstract idea). Alice, 573 U.S. at 217. As part of this inquiry, we must “look at the ‘focus of the claimed advance over the prior art’ to determine if the claim’s ‘character as a whole’ is directed to excluded subject matter.” Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (citations omitted). Here, the focus of claim 1 is accumulating event counts (i.e., a mathematical concept) while factoring out certain event counts (i.e., a mental process involving judgment, evaluation, or opinion using a computer/processor as a tool).7 This is in agreement with Appellant’s disclosure that the invention “relates to computer-implemented recording 7 Our reviewing court has held that combining several abstract ideas does not render the combination any less abstract. RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017) (“Adding one abstract idea . . . to another abstract idea . . . does not render the claim non-abstract.”); see also FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94 (Fed. Cir. 2016) (patent-ineligible claims were directed to a combination of abstract ideas). Appeal 2019-005501 Application 14/726,567 12 and excluding counts relating to the state of code running on threads in the software environment.” Spec. ¶ 1; see also Title (“Excluding Counts on Software Threads in a State”). And, as the Examiner finds (see Ans. 4), Appellant has employed performance tools that are well-understood, routine, and conventional (see Spec. ¶¶ 4, 8–12, 15–18), and relying on a computer to perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible.8 The advance over the prior art performance tools is knowing when not to attribute counts/events (see Spec. ¶ 1 (“excluding counts”), ¶ 10 (“a user may select the events within the data processing system to be monitored and specify the conditions under which the counters are enabled”), ¶ 20 (“it would therefore be advantageous to factor out or compensate for the metrics 8 See Interval Licensing LLC v. AOL, Inc., 896 F.3d 1335, 1346 (Fed. Cir. 2018) (“It is well-settled that placing an abstract idea in the context of a computer does not ‘improve’ the computer or convert the idea into a patent- eligible application of that idea.”); OIP Techs., Inc. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015); CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) (“That purely mental processes can be unpatentable, even when performed by a computer, was precisely the holding of the Supreme Court in Gottschalk v. Benson[, 409 U.S. 63, 67 (1972)].”); Alice, 573 U.S. at 224 (programming a computer to perform what would otherwise be an abstract idea is not sufficient to impart patent eligibility); see also Trading Technologies International, Inc. v. IBG LLC, No. 2017-2323 (Fed. Cir. April 30, 2019) (affirming the Board’s conclusion that the claims were directed to an unpatentable abstract idea of calculating and displaying information that “is nothing more than ‘mere automation of manual processes using computers’”). Appeal 2019-005501 Application 14/726,567 13 affected by spinning or other system conditions when recoding information and for producing reports” (emphasis added)). Mathematical Concept: Claims focused on “collecting information, analyzing it, and displaying certain results of the collection and analysis” are directed to an abstract idea. Electric Power, 830 F.3d at 1353; SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018) (finding claims “focus[ed] . . . on selecting certain information, analyzing it using mathematical techniques, and reporting or displaying the results of the analysis” are directed to an abstract idea); see also Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Canada, 687 F.3d 1266, 1278 (Fed. Cir. 2012) (“[T]he fact that the required calculations could be performed more efficiently via a computer does not materially alter the patent eligibility of the claimed subject matter.”). “Information as such is an intangible,” hence abstract, and “collecting information, including when limited to particular content (which does not change its character as information), [i]s within the realm of abstract ideas.” Electric Power, 830 F.3d at 1353 (citing cases). “[A]nalyzing information . . . by mathematical algorithms, without more” is an abstract idea. Id. at 1354 (citing cases, including Parker v. Flook, 437 U.S. 584 (1978), and Gottschalk v. Benson, 409 U.S. 63 (1972)). In the instant case, the step of accumulating event counts is a mathematical calculation based on collected data, which is a mathematical concept (i.e., addition), albeit performed by a “means for accumulating counts” (claim 1), which Appellant discloses can be a performance monitoring tool, “such as, Performance Inspector” (Appeal Br. 5 citing Spec. ¶ 17; see also Spec. ¶¶ 8, 10). Using a computerized performance Appeal 2019-005501 Application 14/726,567 14 monitoring tool to perform arithmetic (e.g., accumulating or counting), as in claim 1 before us, does not provide an inventive concept. Mental Process: The 2019 Revised Guidance explains that “mental processes” include acts that people can perform in their minds or using pen and paper, even if the claim recites that a generic computer component performs the acts. See Guidance, 84 Fed. Reg. at 52 n.14 (“If a claim, under its broadest reasonable interpretation, covers performance in the mind but for the recitation of generic computer components, then it is still in the mental processes category unless the claim cannot practically be performed in the mind.”); MPEP § 2106.04(a)(2)(III)(C); see also Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016) (“[W]ith the exception of generic computer-implemented steps, there is nothing in the claims themselves that foreclose them from being performed by a human, mentally or with pen and paper”), quoted in MPEP § 2106.04(a)(2)III. The Guidance states that the abstract idea exception includes mental processes, which include “concepts performed in the human mind (including an observation, evaluation, judgment, opinion).” Guidance, 84 Fed. Reg. at 52. Such concepts must be capable of being practically performed in the human mind, although the use of a physical aid, such as a pen and paper, or a computer, does not negate the mental nature of such a concept. October 2019 Update: Subject Matter Eligibility Guidance (hereinafter, 2019 Update) 8–9 (October 2019), available at https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p df. Appeal 2019-005501 Application 14/726,567 15 Here, Appellant’s advance over the prior art is knowing when not to count, i.e., “factoring out event counts” (claim 1, preamble), which is a mental process involving observation, evaluation, judgment, or opinion. This is supported by Appellant’s disclosure that “a user may select the events within the data processing system to be monitored and specify the conditions under which the counters are enabled” (Spec. ¶ 10) (emphasis added). Here, although claim 1 nominally recites “using means for accumulating counts,” claim 1 recites the performance of steps of a mental process (see Gottschalk v. Benson, 409 U.S. 63, 67 (1972), i.e., attributing the per thread base time under certain conditions (e.g., outside of a thread state such as a software spin loop). Here, we conclude representative claim 1 recites a mental process (i.e., a concept performed in the human mind, such as, an observation, evaluation, judgment, and opinion), using a computer as a tool (e.g., a performance monitoring tool as disclosed by Appellant at Spec. ¶¶ 10, 17; see also Appeal Br. 5 citing Spec. ¶¶ 10, 17), which is an abstract idea. See Guidance, 84 Fed. Reg. at 52; Guidance Update, 7–9; Digitech Image Techs., LLC v. Elecs. For Imaging, Inc., 758 F.3d 1344, 1351 (2014) (concluding claims reciting receiving two data sets, and combining those data sets into a single data set is “an ineligible abstract process of gathering and combining data”); Elec. Power Group, 830 F.3d at 1353–54 (concluding claims directed to “collecting information, analyzing it, and displaying certain results of the collection and analysis” were abstract); SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018) (concluding claims were directed to the abstract idea of “selecting certain information, analyzing it using mathematical techniques, and Appeal 2019-005501 Application 14/726,567 16 reporting or displaying the results of the analysis”); Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1146 (Fed. Cir. 2016) (“analyzing information by steps people [can] go through in their minds, or by mathematical algorithms, without more [are] mental processes within the abstract-idea category.”); CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) (“That purely mental processes can be unpatentable, even when performed by a computer, was precisely the holding of the Supreme Court in Gottschalk v. Benson.”); Benson, 409 U.S. at 67. Forming an accumulated per thread base time for a routine, as recited in claim 1, is a mental process. The steps of claim 1 involve observations, evaluations, judgments, and/or opinions that are capable of being performed by a human with the use of a computer (e.g., a performance monitoring tool) as a tool, and are mental processes. Thus, consistent with the Guidance and case law, we conclude representative claim 1 recites a mental process (i.e., a concept performed in the human mind, such as, an observation, evaluation, judgment, and opinion), which is an abstract idea. In view of the foregoing, claim 1 can be characterized as reciting a judicial exception to patent-eligible subject matter. As a result, we agree with the Examiner that claim 1 recites an abstract idea, and we proceed to Prong Two of Step 2A to determine if the idea is integrated into a practical application, in which case the claim as a whole would not be “directed to” merely an abstract idea. Step 2A, Prong 2 – Practical Application Because claim 1 recites a judicial exception, we next determine whether claim 1 integrates the judicial exception into a practical application. Appeal 2019-005501 Application 14/726,567 17 Guidance, 84 Fed. Reg. at 54. To determine whether the judicial exception is integrated into a practical application, we identify “whether there are any additional elements recited in the claim beyond the judicial exception(s)” and evaluate those elements, along with the limitations that recite the abstract idea, to determine whether the claim as a whole integrates the abstract idea into a recognized practical application. Guidance, 84 Fed. Reg. at 54–55 (emphasis added); see also Manual of Patent Examining Procedure (“MPEP”) § 2106.05(a)–(c), (e)–(h) (9th ed. Rev. 08.2017, Jan. 2018); Guidance Update, 11–12. We use the term “additional elements” for claim features, limitations, or steps that the claim recites beyond the identified judicial exception. See MPEP § 2106.04(d)(I).. Here, claim 1 recites the additional element of a “means for accumulating” which serves merely to gather and analyze (i.e., accumulate or add) data (i.e., event counts). Appellant discloses that the means for accumulating is a performance monitoring tool such as Performance Inspector from International Business Machines Corporation (see Appeal Br. 5 citing Spec. ¶ 17). Merely adding a programmed computer to perform generic computer functions does not automatically overcome an eligibility rejection. Alice, 573 U.S. at 223–24. Furthermore, the use of a general purpose computer to apply an otherwise ineligible algorithm does not qualify as a particular machine. See Ultramercial Inc. v. Hulu, LLC, 772 F.3d 709, 716–17 (Fed. Cir. 2014); In re TLI Commc’ns LLC v. AV Automotive, LLC, 823 F.3d 607, 613 (Fed. Cir. 2016) (mere recitation of concrete or tangible components is not an inventive concept); Eon Corp. IP Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616, 623 (Fed. Cir. 2015) Appeal 2019-005501 Application 14/726,567 18 (noting that Alappat’s9 rationale that an otherwise ineligible algorithm or software could be made patent-eligible by merely adding a generic computer to the claim was superseded by the Supreme Court’s Bilski and Alice decisions). In the instant case, using a performance monitoring tool having one or more counters to more quickly facilitate accumulating event counts while factoring out certain event counts is nothing more than the abstract idea itself (i.e., a mental process, and mathematical calculation and concept). The type of improvements to the abstract idea set forth in claim 1 results from the routine application of computerized performance monitoring units as tools, not from any technical innovation. See Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367 (Fed. Cir. 2015) (“claiming the improved speed or efficiency inherent with applying the abstract idea on a computer [does not] provide a sufficient inventive concept”). “[R]elying on a computer to perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible.” OIP Technologies, Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (citing Alice Corp., 134 S. Ct. at 2359). Therefore, we do not consider representative claim 1 to recite any element(s), or ordered combination of elements, which transforms the abstract idea to patent eligible subject matter. In summary, representative claim 1 does not recite: (i) an improvement to the functionality of a computer or other technology or technical field (see MPEP § 2106.05(a)); (ii) a “particular machine” to apply or use the judicial exception (see MPEP § 2106.05(b)); (iii) a particular 9 In re Alappat, 33 F.3d 1526 (Fed. Cir. 1994). Appeal 2019-005501 Application 14/726,567 19 transformation of an article to a different thing or state (see MPEP § 2106.05(c)); or (iv) any other meaningful limitation (see MPEP § 2106.05(e)). See also Guidance, 84 Fed. Reg. at 55. Claim 1 does not recite any improvement to computer functionality or the manipulation of data, or specify what is done with the accumulated data to improve functionality. Considering claim 1 as a whole, the additional element fails to apply or use the abstract idea in a meaningful way such that the claim as a whole is more than a drafting effort designed to monopolize the exception. The additional limitation recited beyond the judicial exception itself fails to integrate the exception into a practical application. Because Appellant has not persuaded us the Examiner’s determination that claim 1 recites an abstract idea under Step 2A is in error, and claim 1 recites a judicial exception (i.e., the abstract idea of a mathematical calculation and concept, and/or a mental process) that is not integrated into a practical application, in accordance with the Guidance, we conclude claim 1 and claims 3–9, 11–14, and 16–20 grouped therewith, are directed to an abstract idea under Step 2A, and the eligibility analysis with regard to claims 1, 3–9, 11–14, and 16–20 proceeds to Step 2B. Step 2B — Inventive Concept Having determined claim 1 and claims 3–9, 11–14, and 16–20 grouped therewith are directed to an abstract idea that is not integrated into a practical application, we now evaluate whether the additional elements, whether examined alone or as an ordered combination, add a specific limitation that is not well-understood, routine, or conventional activity in the field, or simply append well-understood, routine, conventional activities Appeal 2019-005501 Application 14/726,567 20 previously known to the industry, specified at a high level of generality, to the abstract idea. See generally Guidance. Here, claim 1 recites the additional elements of a “means for accumulating counts” (claim 1). Considering claim 1 as a whole, none of the additional elements applies or uses the abstract idea in a meaningful way such that the claim as a whole is more than a drafting effort designed to monopolize the exception. The means for accumulating recited in claim 1 is a performance monitoring tool including one or more counters, and serves merely to gather, analyze, and generate data in the form of data structures. Appellant has not sufficiently shown, with argument or evidence that claim 1 recites significantly more than the mathematical concept and mental process outline above. Furthermore, Appellant has not shown that claim 1 recites features, or a combination of features, that are not well-understood, routine, and conventional. To the contrary, the Examiner finds (see Ans. 4 citing Spec. ¶ 8), and we agree, that the additional element recited in claim 1 is a well-understood, routine, and conventional performance monitoring tool. This is supported by paragraphs 4, 8 through 10, and 17 of Appellant’s Specification, disclosing that the invention is performed by known performance monitoring tools. See Berkheimer v. HP Inc., 890 F.3d 1369, 1370 (Fed. Cir. 2018); see also Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1384 (Fed. Cir. 1986) (explaining that “a patent need not teach, and preferably omits, what is well known in the art”); see also 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/ Appeal 2019-005501 Application 14/726,567 21 documents/memo-berkheimer-20180419.PDF (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); 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.”). As a result, we are not persuaded that the additional element, and namely the functions of the means for accumulating recited in claim 1, are anything beyond generic computer functions as opposed to an improvement to a mental process and business operations. Considering the elements of claim 1 individually and as an ordered combination, claim 1 does no more than simply instruct the practitioner to implement the abstract idea on a generic computer and/or processor. Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333–34 (Fed. Cir. 2012) (“Simply adding a ‘computer aided’ limitation to a claim covering an abstract concept, without more, is insufficient to render [a] claim patent eligible.”); Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (updating an activity log by computer is well- understood, routine, conventional activity). As explained by the Supreme Court, the presence of a generic computer performing generic computer functions, such as calculation and transmission of data, is not enough to Appeal 2019-005501 Application 14/726,567 22 transform an abstract idea into a patent-eligible invention. Alice Corp. v. CLS Bank, 573 U.S. 208, 225–226 (2014). As a result, Appellant has not persuaded us the Examiner erred with respect to the Guidance’s Step 2B analysis. See Guidance, 84 Fed. Reg. at Step 2B. Summary As explained above, under the USPTO’s Revised Patent Eligibility Guidance, based on the record before us, and informed by our governing case law concerning 35 U.S.C. § 101, Appellant has not sufficiently shown the Examiner erred in rejecting representative claim 1, as well as claims 3–9, 11–14, and 16–20 grouped therewith, as being directed to patent-ineligible subject matter without significantly more, and we sustain the rejection of claims 1, 3–9, 11–14, and 16–20 under 35 U.S.C. § 101. Second Issue: Obviousness We have reviewed the Examiner’s rejections (Final Act. 8–11; Ans. 6–9) in light of Appellant’s arguments (Appeal Br. 10–16; Reply Br. 2–6) that the Examiner has erred, as well as the Examiner’s response to Appellant’s arguments in the Appeal Brief (Ans. 11–15). With regard to representative claim 1, we agree with and adopt as our own the Examiner’s findings of facts and conclusions as set forth in the Final Rejection (Final Act. 8–9) and Answer (Ans. 6–7). We provide the following explanation for emphasis only. We emphasize that the Examiner’s ultimate legal conclusion of obviousness is based upon the combined teachings of the cited references. Moreover, “‘the question under 35 USC 103 is not merely what the Appeal 2019-005501 Application 14/726,567 23 references expressly teach but what they would have suggested to one of ordinary skill in the art at the time the invention was made.’” Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)) (emphasis added); see also MPEP § 2123. In this light, we agree with the Examiner that the combined teachings and suggestions of Bryant and Arimilli support the legal conclusion of obviousness as to claim 1. We agree with the Examiner’s (i) findings that Bryant teaches performance tools for accumulating event counts by attributing a per thread base time and Arimilli teaches a thread state that is a software spin loop, as recited in claim 1; and (ii) conclusion of obviousness for claim 1 (see Final Act. 8–9; Ans. 6–7). The Examiner finds (see Ans. 17), and we agree, Arimilli teaches, in paragraph 175, threads spinning on a lock until a lock is free, which is encompassed by the limitation set forth in claim 1, “wherein the thread state is a software spin loop.” In addition, Bryant teaches “a method and apparatus that reduces the amount of data generated during tracing” (col. 2, ll. 56–57) and “alleviate[s] the performance bias and other complications that entry/exit hooks can produce” (col. 14, ll. 9–10) by allowing a user (i) “[to] select an execution condition to be added or deleted from the user-specified trace mask” (col. 23, ll. 64–65); and (ii) “to qualify tracing during a profiling phase and/or during a post-processing phase” (col. 23, ll. 51–52). Bryant also suggests that “[o]ther conditions specifying other resources may be employed” (col. 24, ll. 4–5). In particular, the Examiner finds, and we agree that: Appeal 2019-005501 Application 14/726,567 24 It would have been obvious at the time of filing to condition event counting (Bryant col. 23, line 62-col. 24, line 3 “a user may select an execution condition”) on a software spin loop state (Arimilli par. [0175] “thread 1002 is spinning on a lock”). Those of ordinary skill in the art would have been motivated to do so as a known thread state whose inclusion would have produced only the expected results (Bryant col. 24, 4-5 “Other conditions specifying other resources may be employed”). Final Act. 9; Ans. 7. Appellant’s contentions (see Appeal Br. 16–21; Reply Br. 6–11) that there is no motivation to combine Bryant and Arimilli are unpersuasive. Moreover, we are not persuaded that modifying Bryant and Arimilli would not merely produce predictable results or was “uniquely challenging or difficult for one of ordinary skill in the art” at the time of Appellant’s invention (see Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)). This is evidenced by the fact that both Bryant and Arimilli, and Appellant’s recited invention pertain to data processing systems acting on and monitoring threads, along with Bryant’s suggestion to reduce the amount of data collected as discussed above. In view of the foregoing, Appellant has not overcome the Examiner’s prima facie case of obviousness with respect to independent claim 1, and we are not persuaded the Examiner erred in rejecting claim 1. Accordingly, we sustain the Examiner’s rejection of claim 1, as well as claims 3, 5–9, 11, 13, 14, 16, and 18–20 grouped therewith. While, on this record, Appellant has not shown error in the Examiner’s motivation for modifying Bryant’s performance monitoring method with Arimilli’s spin loop teachings, Appellant may consider Appeal 2019-005501 Application 14/726,567 25 showing non-obviousness through secondary considerations, like unexpected results, by way of an oath or declaration submitted under 37 C.F.R. § 1.132. Evidence of secondary considerations must be considered in determining obviousness if present. See Ruiz v. A.B. Chance Co., 234 F.3d 654, 667 (Fed. Cir. 2000); Stratoflex Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538 (Fed. Cir. 1983). Here, however, Appellant has not provided any objective evidence of secondary considerations (e.g., unexpected results), which our reviewing court guides “operates as a beneficial check on hindsight.” Cheese Sys., Inc. v. Tetra Pak Cheese & Powder Sys., Inc., 725 F.3d 1341, 1352 (Fed. Cir. 2013). In Stratoflex the court explained that evidence of secondary considerations may often be the most probative and cogent evidence in the record. It may often establish that an invention appearing to have been obvious in light of the prior art was not. It is to be considered as part of all the evidence, not just when the decisionmaker remains in doubt after reviewing the art. Stratoflex 713 F.2d at 1538–1539. Such evidence of non-obviousness must be commensurate in scope with the claims which the evidence is offered to support. In re Tiffin, 448 F.2d 791 (CCPA 1971). In other words, there must be a nexus between the merits of the claimed invention and the evidence on secondary considerations being offered in order for such evidence to be given substantial weight in the determination of nonobviousness. Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 305 n. 42 (Fed. Cir. 1985), cert denied, 475 U.S. 1017 (1986); Stratoflex Inc. v. Aeroquip Corp., 713 F.2d 1530, 1539 (Fed. Cir. 1983). The burden of showing unexpected results rests on the person who asserts them by establishing that the difference between the claimed Appeal 2019-005501 Application 14/726,567 26 invention and the closest prior art was an unexpected difference. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972); Ex parte Ishizaka, 24 USPQ2d 1621, 1624 (BPAI 1992). Further, the showing of unexpected results must be commensurate in scope with the claims. See In re Peterson, 315 F.3d 1325, 1330–31 (Fed. Cir. 2003). Finally, unexpected results must be established by factual evidence. See In re Geisler, 116 F.3d 1465, 1470–71 (Fed. Cir. 1997). See also Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (“In giving more weight to prior publications than to subsequent conclusory statements by experts, the Board acted well within [its] discretion.”). But unsupported statements in the specification will not support a finding of unexpected results. In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). CONCLUSIONS (1) As explained above, under the USPTO’s Revised Patent Eligibility Guidance, based on the record before us, and informed by our governing case law concerning 35 U.S.C. § 101, Appellant has not shown the Examiner erred in rejecting representative claim 1, as well as claims 3–9, 11–14, and 16–20 grouped therewith, as being directed to patent-ineligible subject matter without significantly more, and we sustain the rejection of claims 1, 3–9, 11–14, and 16–20 under 35 U.S.C. § 101. (2) In addition, Appellant has not shown the Examiner erred in rejecting claims 1, 3–9, 11–14, and 16–20 as being unpatentable under 35 U.S.C. § 103 over either the combination of (a) Bryant and Arimilli (as to claims 1, 3, 5–9, 11, 13, 14, 16, and 18–20); or (b) Bryant and Kosche (as to Appeal 2019-005501 Application 14/726,567 27 claims 4, 12, and 17). In view of the foregoing, we sustain the obviousness rejections of claims 1, 3–9, 11–14, and 16–20. In summary: Claims Rejected 35 U.S.C. § References/Basis Affirmed Reversed 1, 3–9, 11–14, 16–20 101 Eligibility 1, 3–9, 11–14, 16–20 1, 3, 5–9, 11, 13, 14, 16, 18–20 103 Bryant, Arimilli 1, 3, 5–9, 11, 13, 14, 16, 18– 20 4, 12, 17 103 Bryant, Kosche 4, 12, 17 Overall Outcome 1, 3–9, 11–14, 16–20 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation