Luiz A. Rizzolo et al.

Patent Trials and Appeals Board

Dec 12, 2019

15064077 - (D) (P.T.A.B. Dec. 12, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/064,077 03/08/2016 Luiz A. Rizzolo 006593-02495US 2227
33375 7590 12/12/2019
THOMPSON HINE LLP / ITW
Intellectual Property Group
10050 Innovation Drive
Suite 400
DAYTON, OH 45342-4934
EXAMINER
MAI, THIEN T
ART UNIT PAPER NUMBER
2887
NOTIFICATION DATE DELIVERY MODE
12/12/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ipdocket@thompsonhine.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte LUIZ A. RIZZOLO,
ROBERT S. DAVIS, and MICHAEL J. NIEBERDING
____________

Appeal 2019-001569
Application 15/064,077
Technology Center 2800
____________

Before ROMULO H. DELMENDO, GEORGE C. BEST, and
CHRISTOPHER C. KENNEDY Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
The Appellant1 appeals under 35 U.S.C. § 134(a) from the Primary
Examiner’s final decision to reject claims 1, 2, 5, and 7–11.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42—namely, Illinois Tool Works, Inc. (Application Data Sheet
filed March 8, 2016 at 6), which is also identified as the real party in interest
(Appeal Brief filed August 6, 2018 (“Appeal Br.”) at 3).
2 See Appeal Br. 11–37; Final Office Action entered March 7, 2018 (“Final
Act.”) at 2–6; Examiner’s Answer entered October 16, 2018 (“Ans.”) at 3–
10.
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I. BACKGROUND
The subject matter on appeal relates to a scale system used in grocery
stores for weighing and pricing items or to a store transaction system
(Specification filed March 8, 2016 (“Spec.”) ¶ 1; original claim 7). In the
Inventors’ own words,
An important point in the above system is the inclusion of
both POS[3] or purchase transaction data (from store POS
systems) and fresh item transaction data (from store scales and
wrappers) into the data that is used for supply chain forecasting,
planning and replenishment. The supply chain system can
thereby identify potential shrink, waste and/or fraud associated
with the perishable food items.
(Id. ¶ 23).
Independent claims 1, 2, and 7, which are the only independent claims
on appeal, are reproduced from the Claims Appendix to the Appeal Brief, as
follows:
1. A scale system, comprising:
a plurality of weighing scales located within a store, each
weighing scale including (i) a weighing station, (ii) a user
interface including a display, (iii) a label printer and (iv) a
controller, each weighing scale controller configured for
weighing and pricing fresh items, a multiplicity of the weighing
scale controllers configured to control the label printer to
produce labels for fresh items that have been priced for sale,
wherein each weighing scale controller incorporates:
a discard transaction function configured to enable
an operator to enter data regarding fresh items being
discarded, including data regarding (a) fresh item identity
and (b) quantity of fresh item discarded, wherein data
regarding quantity of fresh item discarded is identified by
at least one of manual input of an item count via the user

3 POS denotes “point-of-sale” (Spec. ¶ 3).
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interface or weighing of fresh item to be discarded by
placement on the weighing station;
a transaction data tracking function that stores a
fresh item transaction record for (a) each fresh item
transaction completed at the weighing scale in which a
fresh item is priced for sale and (b) each fresh item
transaction completed at the weighing scale in which a
fresh item is discarded, wherein each fresh item
transaction record includes data identifying at least (i)
fresh item identity, (ii) quantity of the fresh item involved
in the transaction, (iii) fresh item price or fresh item value,
(iv) transaction date, (iv) fresh item brand and (v) fresh
item supplier;
a plurality of POS terminals at which items being
purchased from the store are identified and paid for, wherein
purchase transaction records from the POS terminals are
collected and stored by a POS server in communication with the
POS terminals;
a scale management computer in communication with
each of the weighing scales and in communication with the POS
server, the scale management computer including a transaction
data collection function that obtains fresh item transaction
records from each weighing scale and purchase transaction
records from the POS server, enabling identification of
inconsistencies between fresh item transaction records from
the weighing scales and purchase transaction records from the
POS server;
wherein the scale management computer is configured to
send both the fresh item transaction records and the purchase
transaction records to an off-site supply chain analysis system
that in tum is configured to evaluate one or more of fresh item
shrink, fresh item waste and/or fresh item fraud and to
generate fresh item inventory management requests that take
into account such fresh item shrink, fresh item waste and/or
fresh item fraud;
wherein one or more of the weighing scale includes
operator login functionality and a fraud prevention function,
and wherein the fraud prevention function is configured such that
at least one of:
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(i) responsive to the weighing scale receiving a
fraud detection message that includes operator identity
data, the fraud prevention function initiates an operator
lockout that prevents the operator login functionality
from logging in the operator associated with the operator
identity data;
or
(ii) responsive to the weighing scale receiving a
fraud detection message that includes operator identity
data and fresh item identity data, the fraud prevention
function generates a fraud alert message when the
operator associated with the operator identity data
initiates a product pricing transaction at the weighing
scale for the fresh item corresponding to the fresh item
identity data.
2. A scale system, comprising:
a plurality of weighing scales located within a store, each
weighing scale including (i) a weighing station, (ii) a user
interface including a display, (iii) a label printer and (iv) a
controller, each weighing scale controller configured for
weighing and pricing fresh items, a multiplicity of the weighing
scale controllers configured to control the label printer to
produce labels for fresh items that have been priced for sale,
wherein each weighing scale controller incorporates:
a discard transaction function configured to enable
an operator to enter data regarding fresh items being
discarded, including data regarding (a) fresh item identity
and (b) quantity of fresh item discarded, wherein data
regarding quantity of fresh item discarded is identified by
at least one of manual input of an item count via the user
interface or weighing of fresh item to be discarded by
placement on the weighing station;
a transaction data tracking function that stores a
fresh item transaction record for (a) each fresh item
transaction completed at the weighing scale in which a
fresh item is priced for sale and (b) each fresh item
transaction completed at the weighing scale in which a
fresh item is discarded, wherein each fresh item
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transaction record includes data identifying at least (i)
fresh item identity, (ii) quantity of the fresh item involved
in the transaction, (iii) fresh item price or fresh item value,
(iv) transaction date, (iv) fresh item brand and (v) fresh
item supplier;
a plurality of POS terminals at which items being
purchased from the store are identified and paid for, wherein
purchase transaction records from the POS terminals are
collected and stored by a POS server in communication with the
POS terminals;
a scale management computer in communication with
each of the weighing scales and in communication with the POS
server, the scale management computer including a transaction
data collection function that obtains fresh item transaction
records from each weighing scale and purchase transaction
records from the POS server, enabling identification of
inconsistencies between fresh item transaction records from the
weighing scales and purchase transaction records from the POS
server;
wherein the scale management computer is configured to
send both the fresh item transaction records and the purchase
transaction records to an off-site supply chain analysis system
that in turn is configured to distinctly identify and record each of:
(1) fresh item transaction records that have
corresponding purchase transaction records, but where
some transaction data in the purchase transaction record is
inconsistent with transaction data of the fresh item
transaction record,
(2) purchase transaction records for fresh items that
do not have a corresponding fresh item transaction record;
and
(3) fresh item transaction records that do not have a
corresponding purchase transaction record.
7. A store transaction system, comprising:
a plurality of weigh/wrap devices within the store, each
weigh/wrap device configured for pricing fresh items for sale
within the store, one or more of the weigh/wrap devices
producing pricing labels for application to fresh items that have
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been priced; a plurality of point-of-sale checkout devices within
the store for identifying items being purchased by customers
from the store;
a data collection system for collecting purchase
transaction data from the point-of-sale checkout devices and for
collecting fresh item transaction data from the weigh/wrap
devices; and
a supply chain analysis system for receiving the purchase
transaction data and the fresh item transaction data from the data
collection system, the supply chain analysis system configured
to compare purchase transaction data for fresh items and fresh
item transaction data to identify differences between the two and
take into account such differences for the purpose of inventory
management of the fresh items, wherein the supply chain
analysis system is configured to evaluate potential waste
associated with the fresh items and to take into account such
waste for the purpose of inventory management of the fresh
items;
wherein a multiplicity of the weigh/wrap devices include
a controller with an operator login functionality and an
associated waste prevention function, wherein, the waste
prevention function is configured such that, responsive to the
weigh/wrap device receiving a waste detection message that
includes operator identity data, the waste prevention function
initiates a function lockout that prevents an operator associated
with the operator identity data from performing the function that
is locked out.
(Appeal Br. 38–40, 41 (emphases added)).
II. REJECTION ON APPEAL
Claims 1, 2, 5, and 7–11 stand rejected under 35 U.S.C. § 101 as
directed to a judicial exception (i.e., a law of nature, a natural phenomenon,
or an abstract idea) without significantly more (Final Act. 2–6; Ans. 3–10).
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III. DISCUSSION
1. Claim Groupings
The Appellant submits arguments under separate subheadings for each
independent claim (Appeal Br. 11–37). But the respective arguments for
each independent claim are substantially the same or similar in each
instance. Therefore, we confine our discussion to claim 1, which is arguably
the narrowest independent claim. All other claims on appeal stand or fall
with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
2. The Examiner’s Position
Applying the Supreme Court’s two-step framework described in Alice
Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014) and Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012),
the Examiner finds that claim 1 “recite[s] a system for collecting data
regarding discarded items, purchase transactions associated with fresh items,
and operator login information to enable identification of inconsistencies
associating with certain operators[,]” i.e., the claim “describe[s] a process of
collecting and comparing of information to identify waste or fraud based on
inconsistencies between the collected and analyzed data” (Final Act. 2). The
Examiner finds that this mental process “is a process of managing behavior
that could be performed in the human mind, or by a human using a pen and
paper” (id.). In the Examiner’s own words,
Such a basic concept is similar to other mental processes
found abstract by the courts such as Cyber[S]ource [Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011)]
(“claim simply requires one to obtain and compare intangible
data pertinent to business risks [underlining added]”),
Fair[W]arning [IP, LLC v. Iatric Systems, Inc., 839 F.3d 1089,
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1094 (Fed. Cir. 2016)] (claims directed to “collecting and
analyzing information to detect misuse and notifying a user when
misuse is detected [underlining added]”), and Electric Power
Group[, LLC v. Alstom S.A., 830 F.3d 1350, 1351, 1355 (Fed.
Cir. 2016)](“[t]hough lengthy and numerous, the claims do not
go beyond requiring the collection, analysis, and display of
available information in a particular field . . . claims at issue here
do not require an arguably inventive device or technique for
displaying information, unlike the claims at issue in DRR
Holdings[, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed.
Cir. 2014) (underlining added)]”). (Step 2A: YES)
(Final Act. 2–3).
After finding that claim 1 recites an abstract idea, the Examiner next
determines that although the claim recites various apparatuses and devices,
these apparatuses and devices are well-understood and conventional in the
relevant art and that “importing the abstract idea of detecting or preventing
frauds and wastes into existing weigh/wrap devices is not enough to be
significantly more” (Final Act. 3). The Examiner concludes that
“[c]onsidered as an ordered combination, the claim elements do not add
anything inventive to the abstract concept underlying them” (id. at 4).
3. The Appellant’s Contentions
The Appellant contends that the two-part Alice/Mayo test has not been
properly applied because “the Examiner merely paraphrases the plain
language of the test itself, quotes portions of the claim elements, and
generalizes the holdings of a few Federal Circuit decision” (Appeal Br. 11–
12). Specifically, the Appellant argues that “the overgeneralization of the
claimed invention outlined in the current rejection goes beyond the broadest
reasonable interpretation and supports a finding that the Examiner has failed
to properly construe each rejected claim when determining the focus of the
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claim as a whole under the first step of the framework” (id. at 12). In the
Appellant’s view, claim 1 “describes a much more detailed system than is
suggested by the shorthand description and analysis provided by the
Examiner in the current rejection” (id.). The Appellant argues that, under
the broadest reasonable interpretation standard, each weighing scale is
configured in a specific way to permit operator interaction in a specific
manner to carry out a fresh item discard and to store transaction information
relating to a fresh food product processed by the scale and further includes
operator login functionality and fraud prevention function (e.g., operator
lockout or fraud alert messaging) (id. at 13). Furthermore, the Appellant
asserts that “[i]t is not possible for a human mind, or a human using pen and
paper to, for example, control the manner in which a scale operates based
upon the receipt of a fraud detection message” (id. at 14). The Appellant
urges that “[c]laim 1 addresses a problem that the retail industry faces in
reconciling discrepancies between data concerning distinct phases in which
products are handled and stored to better manage demand forecasting,
planning, and replenishment transactions, as well as enabling specific
machine operational responses to identified fraud” (id. at 15–16). The
Appellant criticizes the Examiner’s reliance on CyberSource, FairWarning,
and Electric Power, adding that “a claimed concept is not to be identified as
an abstract idea unless it is similar to at least one concept that the courts
have identified” (id. at 19).
4. Opinion
The Appellant’s arguments fail to identify reversible error in the
Examiner’s rejection. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
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A. Claim Construction
We start with claim construction. MyMail, Ltd. v. ooVoo, LLC, 934
F.3d 1373, 1379 (Fed. Cir. 2019) (“Determining patent eligibility requires a
full understanding of the basic character of the claimed subject matter.”).
Claim 1 recites that “each weighing scale controller incorporates . . . a
discard transaction function . . . [and] a transaction data tracking function”
such that “a scale management computer in communication with each of the
weighing scales and in communication with [a] POS server . . . enabl[es]
identification of inconsistencies between fresh item transaction records from
the weighing scales and purchase transaction records from the POS server”
and, in concert with “an off-site supply chain analysis system,” allows
detection of fresh item shrink, waste, and/or fraud (Appeal Br. 38–39).
Based on the detection, a fresh item inventory management request may be
generated or fraud may be prevented by implementing an operator lockout or
fraud messaging (id. at 39). The claim, however, does not specify a
minimum number of weighing scales, the minimum number of fresh item
transaction records, or the number of stored records. Absent limitations on
these parameters, we conclude that the broadest reasonable interpretation for
claim 1, taking into account Specification disclosure, encompasses only a
few stored records and a few item transaction records in a system that
consists of only two weighing scales. In re ICON Health & Fitness, Inc.,
496 F.3d 1374, 1379 (Fed. Cir. 2007) (“[W]e look to the specification to see
if it provides a definition for claim terms, but otherwise apply a broad
interpretation. As this court has discussed, this methodology produces
claims with only justifiable breadth.”).
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Because the claimed scale system broadly reads on only two weighing
scales configured to work with only a few fresh item records and stored
records, the comparison of records and identification of inconsistencies may
be performed entirely in the human mind or using pen and paper. Thus, we
discern no reversible error in the Examiner’s determination on this point.
B. Principles of Law
Having construed claim 1, we turn to patent eligibility. An invention
is patent-eligible if it claims a “new and useful process, machine,
manufacture, or composition of matter.” 35 U.S.C. § 101. The Supreme
Court, however, 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, 573 U.S. at 216.
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, 566 U.S. at 75–77). In accordance
with that framework, we first determine what concept the claim is “directed
to.” See Alice, 573 U.S. at 219 (“On their face, the claims before us are
drawn to the concept of intermediated settlement, i.e., the use of a third party
to mitigate settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611
(2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept
of hedging, or protecting against risk.”).
Concepts determined to be abstract ideas, and thus patent-ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts
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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.
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.”).
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 (quotation marks omitted). “A
claim that recites an abstract idea must include ‘additional features’ to
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ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
The PTO recently published revised guidance on the application of
§ 101 with regard to the first step of the Alice/Mayo test (i.e., Step 2A of the
USPTO’s Subject Matter Eligibility Guidance as incorporated into MPEP
§ 2106 and as updated in October 2019). USPTO’s January 7, 2019, 2019
Revised Patent Subject Matter Eligibility Guidance (“Revised Guidance”).
84 Fed. Reg. 50 (Jan. 7, 2019). Thus, under Step 1 of the Guidance, as
revised, we determine whether the claimed subject matter falls within the
four statutory categories: process, machine, manufacture, or composition of
matter. Step 2A of the Guidance is two-pronged, under which we look to
whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h)).
See 84 Fed. Reg. at 54–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then, under Step
2B, look to whether the claim:
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(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See 84 Fed. Reg. at 56.
C. Analysis
1. Guidance Step 1
We find that, under Step 1 of the Guidance, claim 1 falls within the
four statutory categories of patent subject matter identified by 35 U.S.C.
§ 101. Specifically, claim 1 recites a scale system—i.e., a machine or
manufacture that includes a combination of various components, devices, or
sub-systems. That, however, does not end our inquiry. Alice, 573 U.S. at
224 (“[M]any computer-implemented claims are formally addressed to
patent-eligible subject matter. But if that were the end of the § 101 inquiry,
an applicant could claim any principle of the physical or social sciences by
reciting a computer system configured to implement the relevant concept.”);
In re Abele, 684 F.2d 902, 909 (CCPA 1982) (explaining that, in the context
of patent eligibility, an apparatus claim may constitute an attempt to exalt
form over substance where the claim recites elements by their functions).
2A(1). Guidance Step 2A, Prong 1
Under the first prong of Step 2A, we find that claim 1 sets forth or
describes judicial exceptions by reciting mental processes. Specifically, as
we noted above, claim 1 involves data gathering including discard
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transaction information and then comparing the data to identify any
inconsistencies between the fresh item transaction records obtained from the
weighing scales and the stored purchase transaction records to evaluate the
existence of fresh item shrink, waste, or fraud. As the Examiner finds, these
mental processes can be performed entirely in the human mind or using pen
and paper because, as we discussed above, claim 1 is drafted broadly to read
on an analysis that involves only as few as two weighing scales and a limited
number of records. CyberSource, 654 F.3d at 1373 (explaining that mental
processes that can be performed entirely in the human mind are unpatentable
not because there is anything wrong with a claim reciting mental method
steps but rather because computational methods which can be performed
entirely in the human mind are the types of methods that embody the “basic
tools of scientific and technological work” that are free to all men and
reserved exclusively to none). See also October 2019 Update: Subject
Matter Eligibility at 8, n. 53 (citing Revised 101 Guidelines, 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.”)).
Indeed, as the Examiner explains (Ans. 4), the mental processes (data
gathering and comparing data) recited in the claims are similar to those
previously found to be directed to abstract idea. CyberSource, 654 F.3d at
1370, 1372 (determining credit card transaction validity by obtaining
information about other transactions that have utilized an Internet address
that is identified with the credit card transaction, which can be performed by
a human who simply reads records of Internet credit card transactions from a
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preexisting database, found to be directed to a mental process);
FairWarning, 839 F.3d at 1093–94 (collecting and analyzing information to
detect misuse in a patient health information system and notifying a user
when misuse is detected found to be directed to a mental process); see also
id. at 1094–95 (“The claimed rules ask . . . the same questions (though
perhaps phrased with different words) that humans in analogous situations
detecting fraud have asked for decades, if not centuries.”).
2A(2). Guidance Step 2A, Prong 2
Next, we address the second prong of Step 2A to determine whether
additional elements in the claim integrate the judicial exception into a
practical application. The “additional elements” in the claim, which are
identified by the Examiner (Final Act. 3–4), merely recite, at a high level of
generality, conventional devices such as weighing scales, computer systems,
or servers for performing various tasks such as recording transactions. In
addition, the claimed system includes a weighing scale that is configured to
perform a fraud prevention function by initiating an operator lockout or
generating a fraud alert message. Furthermore, the claimed system includes
an off-site supply chain analysis system that is configured to evaluate the
shrink, waste, or fraud and to generate a fresh item inventory management
request. But the claim as a whole, taken together with these additional
elements individually and in combination, does not integrate the judicial
exception into a practical application because additional elements such as
fraud prevention measures or even misuse detection notifications tied to
mental processes similar to those recited in claim 1 have been considered
insufficient post-solution activity. CyberSource, 654 F.3d at 1371–72;
FairWarning, 839 F.3d at 1093–95. See also Flook, 437 U.S. at 590 (“[T]he
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Pythagorean theorem would not have been patentable, or partially
patentable, because a patent application contained a final step indicating that
the formula, when solved, could be usefully applied to existing surveying
techniques.”).
2B. Guidance Step 2B
Under Step 2B, we also discern no error in the Examiner’s
determination that the additional elements, taken individually and in
combination, do not result in the claim, as a whole, amounting to
significantly more than the judicial exception. Consistent with the PTO’s
Memorandum to Patent Examiners dated April 19, 2018 on Berkheimer v.
HP Inc., 881 F.3d 1360 (Fed. Cir. 2018), the evidence cited in the Answer,
(Ans. 9), support the Examiner’s position that the improvement described in
the Specification, to the extent they are captured in claim 1 as broadly
recited, constitute well-understood, routine, and conventional activities.
Teraoka at al.4 (“Teraoka”), for example, describes a system for selling
products that can include a weighing machine, wherein data are analyzed to
keep track of shoplifting (Teraoka ¶¶ 2, 32, 47, 207). Peters et al.5
(“Peters”) also discloses a system that tracks product information including
expiration date such that promotional sales can automatically be triggered
when appropriate, thus reducing waste (Peters ¶¶ 5, 15–18). When
considered together with the fact that scale systems and supply management
systems that keep track of data collected at the POS systems are well-known
(Spec. ¶¶ 2–3), these references establish that the additional elements recited

4 US 2003/0004750 A1, published January 2, 2003.
5 US 2011/0307316 A1, published December 15, 2011.
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in claim 1, both individually and as an ordered combination, are in fact well-
understood, routine, and conventional, as evidenced by the Teraoka and
Peters references and the Appellant’s admitted prior art as described in the
Specification.
The fact that claim 1 recites a more specific abstract idea or mental
process that avoids a rejection under 35 U.S.C. § 102 or 35 U.S.C. § 103
does not alter our analysis because “a claim for a new abstract idea is still an
abstract idea.” Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138,
1151 (Fed. Cir. 2016).
In view of our analysis under the steps of the PTO’s Revised
Guidance as updated in October 2019, we conclude that claim 1 is directed
to patent ineligible subject matter. Therefore, we uphold the Examiner’s
rejection.
IV. CONCLUSION
In summary:
Claims
Rejected 35 U.S.C. §
Reference(s)/
Basis Affirmed Reversed
1, 2, 5, 7–11 101 Teraoka, Peters/Ineligibility 1, 2, 5, 7–11

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

AFFIRMED