McLean, Lewis I.

Patent Trials and Appeals Board

Nov 19, 2019

14274058 - (D) (P.T.A.B. Nov. 19, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/274,058 05/09/2014 Lewis I. McLean DC-103094 6298
114324 7590 11/19/2019
Larson Newman, LP (Dell)
8200 N. Mopac Expy., Suite 280
Austin, TX 78759
EXAMINER
ANDERSEN, KRISTOPHER E
ART UNIT PAPER NUMBER
2158
NOTIFICATION DATE DELIVERY MODE
11/19/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing@larsonnewman.com
jjordan@larsonnewman.com
landre@larsonnewman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte LEWIS I. McLEAN
____________

Appeal 2019-000425
Application 14/274,058
Technology Center 2100
____________

Before JOHN A. JEFFERY, JUSTIN BUSCH, and CARL L. SILVERMAN,
Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Under 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s
decision to reject claims 1–20. 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. Appellant identifies the real party in interest as
SecureWorks Corp. Appeal Br. 3.
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STATEMENT OF THE CASE
Appellant’s invention orders a set of regular expressions (REs) for
matching against a string to determine whether the string is contained in a
set of strings described by the RE. Spec. ¶¶ 14, 15. To this end, REs are
first placed into parent/child relationships, and a graph is then formed from
the REs based on the parent/child relationships. Spec. ¶¶ 19, 35; Fig. 1. The
REs are then matched against a string in an order derived from the graph’s
structure. Spec. ¶ 44; Fig. 1. Claim 1 is illustrative:
1. A method comprising:
placing by an information handling system regular
expressions into parent/child relationships wherein a first
regular expression is set as a child of a second regular
expression based upon obtaining information about whether the
first regular expression matches a first string from matching the
second regular expression against the first string, wherein
matching the first regular expression against the first string
includes determining whether the first string is contained in a
set of strings described by the first regular expression;
forming the regular expressions into a graph, the graph
containing vertices representing the regular expressions and
edges representing the parent/child relationships between the
regular expressions; and
matching the regular expressions against a second string
in an order based upon a structure of the graph, the order
comprising matching a third regular expression against the
second string before matching a fourth regular expression
against the second string based upon a vertex representing the
fourth regular expression being a child of a vertex representing
the third regular expression.

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THE REJECTIONS
The Examiner rejected claims 1–20 under 35 U.S.C. § 101 as directed
to ineligible subject matter. Final Act. 5–7.2
The Examiner rejected claims 1, 2, 7, 10, and 11 under 35 U.S.C.
§ 102(a)(1) as anticipated by Thorup (US 2011/0153641 A1; published June
23, 2011). Final Act. 7–10.
The Examiner rejected claims 3 and 4 under 35 U.S.C. § 103 as
unpatentable over Thorup and Gutierrez (US 8,261,241 B2; issued Sept. 4,
2012). Final Act. 10–12.
The Examiner rejected claim 8 under 35 U.S.C. § 103 as unpatentable
over Thorup and Duxbury (US 2007/0282835 A1; published Dec. 6, 2007).
Final Act. 13.
The Examiner rejected claim 9 under 35 U.S.C. § 103 as unpatentable
over Thorup, Gutierrez, and Duxbury. Final Act. 14–15.
The Examiner rejected claims 5, 6, 12, and 14–20 under 35 U.S.C.
§ 103 as unpatentable over Thorup and Michela Becchi & Patrick Crowley,
Extending Finite Automata to Efficiently Match Perl-Compatible Regular
Expressions, CoNEXT 2008, ACM (2008) (“Becchi”). Final Act. 15–21.
The Examiner rejected claim 13 under 35 U.S.C. § 103 as
unpatentable over Thorup, Becchi, and Duxbury. Final Act. 21–22.

2 Throughout this opinion, we refer to (1) the Final Rejection mailed January
25, 2018 (“Final Act.”); (2) the Appeal Brief filed June 22, 2018 (“Appeal
Br.”); (3) the Examiner’s Answer mailed August 24, 2018 (“Ans.”); and (4)
the Reply Brief filed October 24, 2018 (“Reply Br.”).
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THE INELIGIBILITY REJECTION
The Examiner determines that the claims are directed to an abstract
idea, namely organizing information (regular expressions) through
mathematical correlations (matching). See Final Act. 5–6; Ans. 9–13. The
Examiner adds that the claims do not include elements that add significantly
more than the abstract idea, but merely recite a conventional computer
implementation of the identified abstract idea. See Final Act. 7.
Appellant argues that the claims are eligible because, among other
things, they are directed to (1) improvements to a computer’s functioning
through improved software, and (2) a specific implementation of a solution
to a problem in the software arts by describing a particular method of
matching regular expressions against strings—a method whose specified
order is said to increase efficiency. Appeal Br. 11–20; Reply Br. 10–17.
According to Appellant, the Examiner not only disregarded existing
eligibility case law and associated guidelines, but the Examiner also
misapplied controlling law. Id. Appellant adds that the Examiner failed to
provide evidence that the additional elements are well-understood, routine,
and conventional. Id.

ISSUE
Under § 101, has the Examiner erred in rejecting claims 1–20 as
directed to ineligible subject matter? This issue turns on whether the claims
are directed to an abstract idea and, if so, whether the recited elements—
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considered individually and as an ordered combination—transform the
nature of the claims into a patent-eligible application of that abstract idea.

PRINCIPLES OF LAW
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the 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. See, 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.”).
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,
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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 187 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 176; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). That
said, 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
ensure ‘that the [claim] is more than a drafting effort designed to
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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.
In January 2019, the United States Patent and Trademark Office
(“USPTO”) published revised guidance on the application of § 101. See
USPTO’s 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) (“Guidance”). Under that guidance, we first look to
whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes); and
(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, Jan. 2018)).
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, and conventional in the field
(see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, and conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See Guidance, 84 Fed. Reg. at 56.

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ANALYSIS
Claims 1–20: Alice/Mayo Step One
Representative independent claim 1 recites a method comprising three
steps. First, an information handling system places regular expressions
(REs) into parent/child relationships where a first RE is set as a child of a
second RE when information about matching the first RE against a first
string is obtained by matching the second RE against the first string.
Second, REs are formed into a graph, where the graph contains
vertices representing the REs and edges representing the parent/child
relationships between the REs.
Third, REs are matched against a second string in an order based upon
the graph’s structure, the order comprising matching a third RE against the
second string before matching a fourth RE against the second string based
upon a vertex representing the fourth RE being a child of a vertex
representing the third RE.
As the disclosure explains, Appellant’s invention orders a set of REs,
namely a description of a set of strings over an alphabet, such as the letters
of the Roman alphabet, for matching against a string to determine whether
the string is contained in a set of strings described by the RE. Spec. ¶¶ 14–
15. To this end, REs are first placed into parent/child relationships by
transforming the REs into deterministic finite automatas (DFAs), namely
finite state machines that (1) input finite symbol strings, and (2) output
acceptance or rejection. Spec. ¶¶ 14–16; Fig. 1 (block 110). DFAs may be
represented as graphs whose vertices and edges may represent portions of
circuits or programs. Spec. ¶ 16.
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Classes of relationship rules are then applied to generate the
parent/child relationships, where the rules can be based on information about
matching one RE against a string that is obtained from attempting to match
the string against another RE. Spec. ¶ 19; Fig. 1 (block 115). For example,
a first RE may be placed in a parent/child relationship with a second RE if
the first RE’s (1) matching string implies that the second RE is a possible
match, and (2) not matching the string implies that the second RE is not a
possible match. Spec. ¶ 19. Moreover, information about the number of
characters in the first RE matched by the string may provide information
about the number of characters in the second RE matched by the string. Id.
The character match (CM) may be counted only for matches of characters
specified explicitly in the RE. Id. For example, a match of the RE “.*ab” to
the string “zzzab” returns CM=2 because the only characters listed explicitly
in the RE that were part of the match were “a” and “b.” Id.
In one embodiment, four classes of relationship rules can be applied
as shown in Figures 2 to 5, where the four rules are described in paragraphs
20 to 33. If one of the rules applies to two REs, namely REs 1 and 2, then a
parent/child relationship is created between those REs. Spec. ¶ 20; Fig. 1
(block 117).
A graph is then formed from the REs based on the parent/child
relationships. Spec. ¶ 35; Fig. 1 (block 120). One such graph, shown in
Figure 7, is formed from seven REs based on the classes of rules, where the
graph has seven vertices representing REs 1 to 7, respectively, and
associated connecting edges that indicate (1) whether the parent/child
relationship is transitive, and (2) the relevant CM value. Spec. ¶¶ 35–36.
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The REs are then matched against a string in an order derived from
the graph’s structure. Spec. ¶ 44; Fig. 1 (block 125). When a parent vertex
is a parent of a child vertex, traversing the graph matches the RE represented
by the parent vertex against a string before matching the RE represented by
the child vertex against the string. Spec. ¶ 44. As paragraph 47 explains,
matching parent vertices ahead of child vertices may increase efficiency by
obviating matching a child vertex against the string.
Turning to claim 1, we first note that the claim recites a method and,
therefore, falls within the process category of § 101. But despite falling
within this statutory category, we must still determine whether the claim is
directed to a judicial exception, namely an abstract idea. See Alice, 573 U.S.
at 217. To this end, we must determine whether the claim (1) recites a
judicial exception, and (2) fails to integrate the exception into a practical
application. See Guidance, 84 Fed. Reg. at 52–55. If both elements are
satisfied, the claim is directed to a judicial exception under the first step of
the Alice/Mayo test. See id.
In the rejection, the Examiner determines that claim 1 is directed to an
abstract idea, namely organizing information (regular expressions) through
mathematical correlations (matching). See Final Act. 5–6. To determine
whether a claim recites an abstract idea, we (1) identify the claim’s specific
limitations that recite an abstract idea, and (2) determine whether the
identified limitations fall within certain subject matter groupings, namely,
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(a) mathematical concepts3; (b) certain methods of organizing human
activity4; or (c) mental processes.5
Here, apart from the recited “information handling system” that places
REs into parent/child relationships—the sole function performed by this
system6—all of claim 1’s recited limitations fit squarely within at least one
of the above categories of the USPTO’s guidelines. When read as a whole,
the recited limitations are directed to matching REs against a string in an
order according to a hierarchy of other REs, where the hierarchy is based on
the other REs matching another string.
First, placing REs into parent/child relationships where a first RE is
set as a child of a second RE when information about matching the first RE
against a first string is obtained by matching the second RE against the first
string involves at least mental processes, at least to the extent that a person

3 Mathematical concepts include mathematical relationships, mathematical
formulas or equations, and mathematical calculations. See Guidance, 84
Fed. Reg. at 52.
4 Certain methods of organizing human activity include fundamental
economic principles or practices (including hedging, insurance, mitigating
risk); commercial or legal interactions (including agreements in the form of
contracts; legal obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior or relationships
or interactions between people (including social activities, teaching, and
following rules or instructions). See Guidance, 84 Fed. Reg. at 52.
5 Mental processes are concepts performed in the human mind including an
observation, evaluation, judgment, or opinion. See Guidance, 84 Fed. Reg.
at 52.
6 The information handling system of claim 1 is recited only in connection
with placing REs into parent/child relationships, but is not recited as
performing the other two method steps, namely (1) forming the REs into a
graph, and (2) matching the REs against a second string in an order based on
the graph’s structure.
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could merely (1) think about—or write down—the REs and strings; (2)
cognitively compare the REs and strings to determine a match; and, based on
that information, (3) graphically represent a hierarchical parent/child RE
relationship by using a pen and paper. In short, these steps involve mere
observation and logical reasoning. Cf. CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011) (noting that a recited
step that utilized a map of credit card numbers to determine the validity of a
credit card transaction could be performed entirely mentally by merely using
logical reasoning to identify a likely instance of fraud by merely observing
that numerous transactions using different credit cards all originated from
the same IP address); see also id. (noting that a person could construct a map
of credit card numbers by merely writing down a list of credit card
transactions made from a particular IP address); In re Morinville, 767 F.
App’x 964, 966–70 (Fed. Cir. 2019) (unpublished) (holding ineligible
recited method for dynamically generating a hierarchical functional structure
from a hierarchical operational structure); Versata Dev. Grp., Inc. v. SAP
Am., Inc., 793 F.3d 1306, 1312, 1330–36 (Fed. Cir. 2015) (holding ineligible
claims directed to product price determination using sorted pricing
information according to, among other things, arranged hierarchies of
organizational and product groups); Apple, Inc. v. Ameranth, Inc., 842 F.3d
1229, 1234–43 (Fed. Cir. 2016) (holding ineligible claims reciting
information management system that can generate a second menu from a
first menu by allowing (1) selecting categories and items from the first
menu; (2) adding menu categories to the first menu; (3) assigning parameters
to items in the second menu using a graphical user interface); Evolutionary
Intelligence LLC v. Sprint Nextel Corp., 677 F. App’x 679, 679–81 (Fed.
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Cir. 2017) (unpublished) (holding ineligible computer-implemented method
of U.S. Patent 7,702,682 reciting, among other things, (1) receiving a search
query; (2) searching, using the computer, first container registers
encapsulated and logically defined in plural containers to identify identified
containers responsive to the search query; (3) encapsulating the identified
containers in a new container; (4) updating second container registers of the
identified containers with data associated with interactions of the identified
containers with the new container; and (5) providing a list characterizing the
identified containers as directed to the abstract idea of selecting and sorting
information by user interest or subject matter—a longstanding activity of
libraries and other human enterprises); Intellectual Ventures I LLC v.
Symantec Corp., 838 F.3d 1307, 1313–16 (Fed. Cir. 2016) (holding
ineligible claim reciting (1) determining whether received file content
identifiers matched characteristics of other identifiers, and (2) outputting an
indication of the data file characteristics based on that determination);
Intellectual Ventures I LLC v. Erie Indemnity Co., 850 F.3d 1315, 1326–29
(Fed. Cir. 2017) (holding ineligible claim reciting searching an information
database where a set of XML tags from query results were combined into a
key that was used to search the database for records with the tags as directed
to the abstract idea of creating an index to search for and retrieve data).
We reach the same conclusion regarding forming the REs into a graph
as claimed with the recited vertices and edges that represent REs and
associated parent/child relationships, respectively. Here again, this graphical
representation could be performed entirely mentally or with pen and paper as
noted above. Cf. CyberSource, 654 F.3d at 1372 (noting that a person could
construct a map of credit card numbers by merely writing down a list of
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credit card transactions made from a particular IP address). And, for the
reasons noted previously, the recited matching REs against a second string
in an order based on the graph’s structure as claimed could also be done
entirely mentally or with pen and paper. These steps, like the previous steps,
involve mere observation and logical reasoning. See id.
Therefore, apart from the recited “information handling system”7—a
system that is recited only in connection with the placing step—all of claim
1’s limitations fall squarely within the mental processes category of the
USPTO’s guidelines and, therefore, recite an abstract idea. See Guidance,
84 Fed. Reg. at 52 (listing exemplary mental processes including
observation and evaluation).
Here, the recited “information handling system” is the only recited
element beyond the abstract idea, but this additional element, considered
individually and in combination, does not integrate the abstract idea into a
practical application when reading claim 1 as a whole. First, we are not
persuaded that the claimed invention improves the computer or its

7 Paragraph 2 of Appellant’s Specification defines “information handling
system” quite broadly as a system that “generally processes, compiles,
stores, or communicates information or data for business, personal, or other
purposes.” According to paragraph 63, “an information handling system
includes any instrumentality or aggregate of instrumentalities operable to
compute, classify, process, transmit, receive, retrieve, originate, switch,
store, display, manifest, detect, record, reproduce, handle, or use any form of
information, intelligence, or data for business, scientific, control,
entertainment, or other purposes.” An information handling system can be,
for example, “a personal computer, a consumer electronic device, a network
server or storage device, a switch router, wireless router, or other network
communication device, a network connected device (cellular telephone,
tablet device, etc.), or any other suitable device, and can vary in size, shape,
performance, price, and functionality.” Spec. ¶ 63 (emphasis added).
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components’ functionality or efficiency, or otherwise changes the way those
devices function, at least in the sense contemplated by the Federal Circuit in
Enfish LLC v. Microsoft Corporation, 822 F.3d 1327 (Fed. Cir. 2016),
despite Appellant’s arguments to the contrary (Appeal Br. 12, 14, 15, 17;
Reply Br. 11, 12). The claimed self-referential table in Enfish was a specific
type of data structure designed to improve the way a computer stores and
retrieves data in memory. Enfish, 822 F.3d at 1339. To the extent Appellant
contends that the claimed invention uses such a data structure to improve a
computer’s functionality or efficiency, or otherwise change the way that
device functions, there is no persuasive evidence on this record to
substantiate such a contention.
To the extent Appellant contends that the claimed invention is rooted
in technology because it ostensibly is directed to a technical solution (see
Appeal Br. 11–15; Reply Br. 2–5), we disagree. Even assuming, without
deciding, that the claimed invention can match REs against character strings
faster than doing so manually, any speed increase comes from the
capabilities of the generic computer components—not the recited process
itself. See FairWarning, 839 F.3d at 1095 (citing Bancorp Services, LLC v.
Sun Life Assurance Co., 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.”)); see also Intellectual Ventures I LLC v. Erie Indemnity
Co., 711 F. App’x 1012, 1017 (Fed. Cir. 2017) (unpublished) (“Though the
claims purport to accelerate the process of finding errant files and to reduce
error, we have held that speed and accuracy increases stemming from the
ordinary capabilities of a general-purpose computer do not materially alter
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the patent eligibility of the claimed subject matter.”) (quotation marks,
bracketed alteration, and citation omitted).
That the disclosed invention’s ordering REs to match parent vertices
ahead of child vertices may increase efficiency by obviating matching the
child vertex against a string as noted in the Specification’s paragraph 47
does not change our conclusion. As noted previously, the recited ordering
can be performed entirely mentally or with pen and paper and, therefore,
recites an abstract idea. Although the Specification’s paragraph 47 notes an
experiment conducted in connection with a system for detecting malicious
events containing a class of over 200,000 REs, where the experiment
suggested that matching time can be halved in many cases by eliminating the
need to match children, these particulars are not claimed, let alone the
particular malicious event detection that was the subject of that experiment.
Accord Ans. 11 (noting this point); Reply Br. 14, 15 (conceding that the
claims do not reflect this particular application). In any event, merely
reciting that the claimed invention is for detecting malicious or anomalous
events, without more, does not integrate the abstract idea into a practical
application, for merely generally linking the use of an abstract idea to a
particular technological environment or field of use does not render the
claimed invention any less abstract. See Affinity Labs of Texas, LLC v.
DirectTV, LLC, 838 F.3d 1253, 1259 (Fed. Cir. 2016); accord Flook, 437
U.S. at 584, 588–90, 596–97 (holding ineligible method for updating an
alarm limit on a process variable, despite the process involving the catalytic
chemical conversion of hydrocarbons); see also Guidance, 84 Fed. Reg. at
55 (citing MPEP § 2106.05(h)).
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Like the claims in FairWarning, the focus of claim 1 is not on an
improvement in computer processors as tools, but on certain independently
abstract ideas that use generic computing components as tools. See
FairWarning, 839 F.3d at 1095 (quotation marks and citations omitted). As
with the ineligible claimed invention in BSG Tech LLC v. BuySeasons, Inc.,
899 F.3d 1281, 1284–91 (Fed. Cir. 2018), the claimed invention does not
improve a computer’s functionality or that of its associated components, but
rather the benefits flow from performing the abstract idea in conjunction
with those generic computer components. See BSG, 899 F.3d at 1288
(“While the presentation of summary comparison usage information to users
improves the quality of the information added to the database, an
improvement [in] . . . the information stored by a database is not equivalent
to an improvement in the database’s functionality.”).
Nor is this a case involving eligible subject matter as in DDR
Holdings, LLC v. Hotels.Com, L.P., 773 F.3d 1245 (Fed. Cir. 2014) despite
Appellant’s arguments to the contrary (Appeal Br. 15–16). There, instead of
a computer network operating in its normal, expected manner by sending a
website visitor to a third-party website apparently connected with a clicked
advertisement, the claimed invention in DDR generated and directed the
visitor to a hybrid page that presented (1) product information from the third
party, and (2) visual “look and feel” elements from the host website. DDR,
773 F.3d at 1258–59. Given this particular Internet-based solution, the court
held that the claimed invention did not merely use the Internet to perform a
business practice known from the pre-Internet world, but rather was
necessarily rooted in computer technology to overcome a problem
specifically arising in computer networks. Id. at 1257.
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That is not the case here. As noted previously, Appellant’s claimed
invention, in essence, is directed to matching REs against a string in an order
according to a hierarchy of other REs, where the hierarchy is based on the
other REs matching another string—albeit using computer-based
components to achieve that end.8 The claimed invention here is not
necessarily rooted in computer technology in the sense contemplated by
DDR where the claimed invention solved a challenge particular to the
Internet. Although Appellant’s invention uses computer-based components
as noted previously, the claimed invention does not solve a challenge
particular to the computing components used to implement this
functionality.
Nor is this invention analogous to that which the court held eligible in
McRO, Inc. v. Bandai Namco Games America, Inc., 837 F.3d 1299 (Fed.
Cir. 2016) despite Appellant’s arguments to the contrary (Appeal Br. 13;
Reply Br. 12). There, the claimed process used a combined order of specific
rules that rendered information in a specific format that was applied to create
a sequence of synchronized, animated characters. McRO, 837 F.3d at 1315.
Notably, the recited process automatically animated characters using
particular information and techniques—an improvement over manual
three-dimensional animation techniques that was not directed to an abstract
idea. Id. at 1316.
But unlike the claimed invention in McRO that improved how the
physical display operated to produce better quality images, the claimed
invention here merely uses generic computing components to match REs

8 As noted previously, the recited information handling system is used only
in claim 1’s placing step—not the forming and matching steps.
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against a string in an order according to a hierarchy of other REs, where the
hierarchy is based on the other REs matching another string. This generic
computer implementation is not only directed to mental processes, but also
does not improve a display mechanism as was the case in McRO. See SAP
Am. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018) (distinguishing
McRO).
Appellant’s reliance on the decision in Amdocs (Israel) Ltd. v. Openet
Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016) (App. Br. 15; Reply Br. 12) is
unavailing. There, the court held that a claim directed to using accounting
information with which a network accounting record is correlated to enhance
the record was held eligible because the claim involved an unconventional
technological solution (enhancing data in a distributed fashion) to a
technological problem (massive record flows which previously required
massive databases). Although the court recognized that this solution used
generic components, the recited enhancing function necessarily required
these generic components to operate in an unconventional manner to achieve
an improvement in computer functionality. Id. at 1300–01. Notably, the
recited enhancement in Amdocs depended on not only the network’s
distributed architecture, but also on the network devices and “gatherers”
working together in a distributed environment. Id. at 1301. In reaching its
eligibility conclusion, the court noted the patent’s emphasis on the
drawbacks of previous systems where all network information flowed to one
location making it very difficult to keep up with massive record flows from
network devices and requiring huge databases. Id. at 1300. The court also
noted similar network-based drawbacks that were overcome by similar
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unconventional distributed solutions in other patents at issue. See id. at
1305–06.
That is not the case here. Although the claimed invention uses
conventional computing components that store and process data—at least
with respect to the placing step—there is no persuasive evidence on this
record to show that these generic components operate in an unconventional
manner to achieve an improvement in computer functionality as in Amdocs.
Appellant’s reliance on Finjan, Inc. v. Blue Coat Systems, Inc., 879
F.3d 1299 (2018) (Appeal Br. 16) is likewise unavailing. There, the court
held eligible claims directed to a behavior-based virus scanning system. In
reaching this conclusion, the court noted that the claimed invention
employed a new kind of file that enabled a computer security system to do
that which could not be done previously, including accumulating and using
newly-available, behavior-based information about potential threats. Finjan,
879 F.3d at 1305.
That is not the case here. To the extent Appellant contends that the
claimed invention is directed to such improvements in computer capabilities
(see App. Br. 16), there is no persuasive evidence on this record to
substantiate such a contention.
We also find unavailing Appellant’s contention that the claimed
invention is eligible because it is tied to a “particularized structure,” namely
an information handling system. See Appeal Br. 18–19; Reply Br. 15. To
be sure, the machine-or-transformation test, although not the only test, can
nevertheless provide a “useful clue” to patent eligibility in the Alice/Mayo
framework. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir.
2014) (quoting Bilski v. Kappos, 561 U.S. 593, 594 (2010)). Under the
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machine-or-transformation test, a claimed process is patent-eligible if it: (1)
is tied to a particular machine or apparatus, or (2) transforms a particular
article into a different state or thing. In re Bilski, 545 F.3d 943, 954 (Fed.
Cir. 2008), aff’d sub nom. Bilski, 561 U.S. at 593. Therefore, satisfying
either prong of the machine-or-transformation test may integrate an abstract
idea into a practical application. See Guidance, 84 Fed. Reg. at 55 nn. 27–28
(citing MPEP §§ 2106.05(b)–(c)).
It is well settled, however, that whether a recited device is a tangible
system or, in 35 U.S.C. § 101 terms, a “machine,” is not dispositive to
eligibility. ChargePoint, Inc. v. SemaConnect, Inc., 920 F.3d 759, 770 (Fed.
Cir. 2019) (quoting In re TLI Commc’ns, 823 F.3d 607, 611 (Fed. Cir. 2016)
(“[N]ot every claim that recites concrete, tangible components escapes the
reach of the abstract-idea inquiry.”). For a machine to impose a meaningful
limit on the claimed invention, it must play a significant part in permitting a
claimed method to be performed, rather than function solely as an obvious
mechanism for permitting a solution to be achieved more quickly. Versata,
793 F.3d at 1335; see also MPEP § 2106.05(b)(II) (citing Versata).
The latter role is the case here. Leaving aside the fact that the
information handling system is used only in claim 1’s placing step—not the
other recited steps—the recited information handling system is merely an
obvious mechanism that achieves the recited solution more quickly, namely
matching REs against a string in an order according to a hierarchy of other
REs, where the hierarchy is based on the other REs matching another string.
That is, despite the computing device’s components that are used to achieve
this end, the focus of the claim is nonetheless directed to an abstract idea,
albeit using computer-based components to achieve that end. Cf.
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ChargePoint, 920 F.3d at 772–73 (holding ineligible claim reciting a
network-controlled charge transfer system for electric vehicles comprising,
among other things, a communication device configured to connect a
controller to a mobile wireless communication device for communication
between the electric vehicle operator and the controller); see also id. at 772
(noting that the lack of an indication that (1) the disclosed invention was
intended to improve the recited components, including the communications
devices, or (2) that the inventors viewed the combination of those
components as their invention).
That the recited information handling system is described quite
broadly and at a high level of generality only underscores the claimed
invention not being tied to a particular machine. Paragraph 2 of Appellant’s
Specification defines “information handling system” quite broadly as a
system that “generally processes, compiles, stores, or communicates
information or data for business, personal, or other purposes.” The
Specification adds that “an information handling system includes any
instrumentality or aggregate of instrumentalities operable to compute,
classify, process, transmit, receive, retrieve, originate, switch, store, display,
manifest, detect, record, reproduce, handle, or use any form of information,
intelligence, or data for business, scientific, control, entertainment, or other
purposes.” Spec. ¶ 63 (emphasis added). An information handling system
can be, for example, “a personal computer, a consumer electronic device, a
network server or storage device, a switch router, wireless router, or other
network communication device, a network connected device (cellular
telephone, tablet device, etc.), or any other suitable device, and can vary in
size, shape, performance, price, and functionality.” Id. (emphasis added).
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Given this broad, general, and non-limiting description of an information
handling system, the claimed invention is not tied to a particular machine or,
in Appellant’s parlance, a “particularized structure” (Appeal Br. 19), to
satisfy the machine-or-transformation test. To the extent Appellant contends
otherwise, we disagree.
We also find unavailing Appellant’s contention that the claimed
invention does not preempt related technologies. Appeal Br. 19. Where, as
here, the claims cover a patent-ineligible concept, preemption concerns “are
fully addressed and made moot” by an analysis under the Alice/Mayo
framework. See Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1379 (Fed. Cir. 2015).
In conclusion, although the recited functions may be beneficial by
matching REs against a string in an order according to a hierarchy of other
REs, where the hierarchy is based on the other REs matching another string,
a claim for a useful or beneficial abstract idea is still an abstract idea. See id.
at 1379–80.
We, therefore, agree with the Examiner that claim 1 is directed to an
abstract idea.

Claim 1: Alice/Mayo Step Two
Turning to Alice/Mayo step two, claim 1’s additional recited element,
namely the recited “information handling system,” does not provide an
inventive concept such that this additional element amounts to significantly
more than the abstract idea when reading claim 1 as a whole. See Alice, 573
U.S. at 221; see also Guidance, 84 Fed. Reg. at 56. As noted above, the
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claimed invention merely uses generic computing components to implement
the recited abstract idea.
To the extent Appellant contends that the recited limitations, including
those detailed above in connection with Alice step one, add significantly
more than the abstract idea to provide an inventive concept under
Alice/Mayo step two (see Appeal Br. 19–20; Reply Br. 16–17), these
limitations are not additional elements beyond the abstract idea, but rather
are directed to the abstract idea as noted previously. See BSG, 899 F.3d at
1290 (explaining that the Supreme Court in Alice “only assessed whether the
claim limitations other than the invention’s use of the ineligible concept to
which it was directed were well-understood, routine and conventional”)
(emphasis added); see also Guidance, 84 Fed. Reg. at 56 (instructing that
additional recited elements should be evaluated in Alice/Mayo step two to
determine whether they (1) add specific limitations that are not well-
understood, routine, and conventional in the field, or (2) simply append
well-understood, routine, and conventional activities previously known to
the industry (citing MPEP § 2106.05(d)).
Rather, the recited “information handling system” is the only
additional recited element whose generic computing functionality is well-
understood, routine, and conventional. See Spec. ¶¶ 2, 55–67 (describing
exemplary information handling systems that use generic computing
components); see also FairWarning, 839 F.3d at 1096 (noting that using
generic computing components like a microprocessor or user interface does
not transform an otherwise abstract idea into eligible subject matter);
Mortgage Grader Inc. v. First Choice Loan Services, Inc., 811 F.3d 1314,
1324–25 (Fed. Cir. 2016) (noting that components such as an “interface,”
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“network,” and “database” are generic computer components that do not
satisfy the inventive concept requirement); accord Final Act. 7 (concluding
that the recited functions merely provide a conventional computer
implementation of the identified abstract idea).
Our emphasis on “conventional” underscores that the Examiner’s
rejection was apparently premised on the notion that the computer
implementation of the recited abstract idea was well-understood, routine, and
conventional. See id.9 As noted above, this record is replete with evidence
that such a computer implementation, namely an information handling
system, was well-understood, routine, and conventional. Therefore,
Appellant’s contention that there is no evidence that the additional elements
are well-understood, routine, and conventional (Appeal Br. 19, 20; Reply Br.
16, 17) is unavailing, for there is ample evidence on this record that the sole
additional element—the information handling system—was well-
understood, routine, and conventional.
In conclusion, the additional recited element—considered individually
and as an ordered combination—does not add significantly more than the
abstract idea to provide an inventive concept under Alice/Mayo step two

9 Although the Examiner indicates that such a rationale was allegedly not
used in the rejection, the Examiner nonetheless indicates in the Final
Rejection that the recited functions merely provide a conventional computer
implementation of the identified abstract idea. Compare Ans. 13 with Final
Act. 7. Given this explicit finding of conventional computer implementation
in the Final Rejection from which this appeal was taken, we treat the
Examiner’s apparent contradictory statement in the Answer as harmless
error.

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when the claim is read as a whole. See Alice, 573 U.S. at 221; see also
Guidance, 84 Fed. Reg. at 56.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 1, and claims 2–20 not argued separately with particularity.

THE ANTICIPATION REJECTION
The Examiner finds that Thorup discloses every recited element of
claim 1 including an information handling system that places REs into
parent/child relationships, where a “first RE,” namely the expression “b” in
Figure 4A, is set as a child of a “second RE,” namely expression “a,” based
on obtaining information about whether the first RE matches a first string
from matching the second RE against that string. Final Act. 7–8.
Appellant argues that Thorup does not show setting a first RE as a
child of a second RE based on obtaining information about whether the first
RE matches a first string from matching the second RE against the first
string. Appeal Br. 6–8; Reply Br. 3–6. According to Appellant, not only
does Thorup match substrings by their order of occurrence in the RE
containing those substrings—not by information gained by matching
separate REs against the same string—but Thorup also does not describe
how the parent/child relationships in the graph of Figure 4A were generated,
let alone that they are based on the particular relationships claimed. Id.
Appellant adds that Thorup’s REs that are said to correspond to the recited
third and fourth REs are not matched to the same string as claimed, but are
rather matched to different strings. Appeal Br. 8–9; Reply Br. 7.

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ISSUE
Under § 102, has the Examiner erred in rejecting claim 1 by finding
that Thorup’s information handling system sets a first RE as a child of a
second RE based on obtaining information about whether the first RE
matches a first string from matching the second RE against the first string?

ANALYSIS
As noted above, claim 1 recites, in pertinent part, placing REs into
parent/child relationships, where a first RE is set as a child of a second RE
based on the recited obtained information. Our emphasis underscores that a
key aspect of the claimed invention is the very creation of a hierarchy of
REs based on their matching the same string.
The Examiner’s reliance on Thorup’s Figure 4A is unavailing in this
regard. As Appellant indicates (Appeal Br. 7), Thorup’s Figure 4A shows a
graph depicting the order in which RE subexpressions “a” and “b”10 are
checked for matches against a string. See Thorup ¶ 48. As shown by the
arrows in that graph, Thorup’s system checks for “a” in a string before
checking for “b” as Appellant indicates. See Thorup ¶¶ 48, 114 (noting that
the end of an occurrence of substring in a multi-string matching process can
lead to another substring start state); see also Appeal Br. 7. Once
subexpression “a” is found in a string, the next part of the string is checked
for subexpression “b.” See Thorup ¶¶ 48, 114; Appeal Br. 7.
The clear import of this functionality is the order of matching
illustrated in Thorup’s Figure 4A is consistent with the subexpressions’

10 As noted previously, the Examiner maps subexpressions “a” and “b” to
the recited second and first REs, respectively. See Final Act. 8; Ans. 5, 6.
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order of occurrence in the RE as Appellant indicates. Appeal Br. 7; Reply
Br. 6. A similar multi-string matching scheme based on order of occurrence
is described in Thorup’s paragraph 115, where the output or accept state
from one substring can create the input for another. For example, when
matching the RE “(woman|man)kind” to the string “woman-kind,” the
system cannot start matching the substring “kind” until it accepts one of the
substrings “woman” or “man.” Thorup ¶ 117. Thus, like the sequence
illustrated in Thorup’s Figure 4A, the order of matching in Thorup’s
example in paragraph 117 is by order of occurrence in the RE. Accord
Appeal Br. 7 (noting this point).
Although the functionality associated with Thorup’s graph in Figure
4A dictates the order of matching RE-based substrings, and, in that sense,
reflects a hierarchy of REs based on that order, Thorup nonetheless says
nothing about how that hierarchy was created in the first instance, let alone
that it was created based on information obtained about whether the first RE
matches a first string from matching the second RE against that string as
claimed. Accord Reply Br. 6 (noting this point). As Appellant indicates, the
subexpression “a” is a parent of “b” in Thorup’s Figure 4A because “a”
appears before “b” in the RE—not because of the particular first-string RE
matching relationship recited in claim 1. See id.
The Examiner’s findings are problematic on this record. According to
the Examiner, information on which Thorup’s parent/child relationship in
Figure 4A is based is obtained when “a” is found in a string—information
that is also said to be about whether “b” could possibly match the first string.
See Ans. 6. Even if we were to accept this premise, it still says nothing
about how the parent/child relationships in Thorup’s Figure 4A were created
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in the first instance, including setting a first RE as a child of a second RE
based on the recited obtained information as claimed.
Therefore, we are persuaded that the Examiner erred in rejecting (1)
independent claim 1, and (2) dependent claims 2, 7, 10, and 11 for similar
reasons. Because this issue is dispositive regarding our reversing the
Examiner’s rejection of these claims, we need not address Appellant’s other
associated arguments.

THE OBVIOUSNESS REJECTIONS
Because the Examiner has not shown that the additional cited prior art
cures the foregoing deficiencies regarding the rejection of independent claim
1, and because the rejection of independent claims 12 and 17 contains
similar deficiencies, we will not sustain the obviousness rejections of claims
3–6, 8, 9, and 12–20 (Final Act. 10–21) for similar reasons.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed
1–20 101 Eligibility 1–20
1, 2, 7, 10, 11 102(a)(1) Thorup 1, 2, 7, 10, 11
3, 4 103 Thorup, Gutierrez 3, 4
8 103 Thorup, Duxbury 8
9 103 Thorup, Duxbury,
Gutierrez
9
5, 6, 12, 14–20 103 Thorup, Becchi 5, 6, 12, 14–20
13 103 Thorup, Becchi,
Duxbury
13
Overall
Outcome
1–20

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TIME PERIOD FOR RESPONSE
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).

AFFIRMED