Levine, Frank Eliot.

Patent Trials and Appeals Board

Jan 25, 2021

2019005501 (P.T.A.B. Jan. 25, 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.
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

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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).
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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).
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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.
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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?
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(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.”).
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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.”).
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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.
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(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.
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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.
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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).
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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’”).

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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
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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.
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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
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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.
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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)
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(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).
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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
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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/
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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
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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
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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:
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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
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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
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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
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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