Neil Burgess et al.

Patent Trials and Appeals Board

Aug 8, 2019

14606217 - (D) (P.T.A.B. Aug. 8, 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.
14/606,217 01/27/2015 Neil BURGESS JRL-550-1845 7678
73459 7590 08/08/2019
NIXON & VANDERHYE, P.C.
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
LAROCQUE, EMILY E
ART UNIT PAPER NUMBER
2182
NOTIFICATION DATE DELIVERY MODE
08/08/2019 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):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte NEIL BURGESS and DAVID RAYMOND LUTZ
____________________

Appeal 2018-007477
Application 14/606,2171
Technology Center 2100
____________________
Before MICHAEL J. STRAUSS, JEREMY J. CURCURI, and
DAVID J. CUTITTA II, Administrative Patent Judges.
CUTITTA, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1–4, 6, 7, and 9–15, all of the claims pending in the application.2 We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 ARM Limited (“Appellant”) is the Applicant, as provided for under
37 C.F.R. § 1.46, and is also identified in the Brief as the real party in
interest. See Appeal Br. 3.
2 Claims 5, 8, and 16 have been cancelled. See Appeal Br. 19, 20, and 22.
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STATEMENT OF THE CASE
Invention
According to Appellant, the claims are directed to comparing a
number of adjacent bits having a common value and extending from a
starting bit position within an input number with a runlength specified by a
(N+1)-bit variable number. See Spec. 2:1–3.3
Representative Claim
Claims 1 and 15 are independent. Claim 1, reproduced below, is
representative of the claimed subject matter:
1. Apparatus for comparing a number of adjacent bits having a
common value and extending from a starting bit position within
an input number with a runlength specified by a (N+1)-bit
variable number, where N is a positive integer, said apparatus
comprising:
a mask generator configured to generate a 2(N+l)-bit mask
value in dependence upon said (N+1)-bit variable number;
combination circuitry configured to perform a logical
combination operation upon respective bits within said input
number starting from said starting bit position and
corresponding bits within said 2(N+l)-bit mask value to generate
a 2(N+l)-bit intermediate value; and
result circuitry configured to generate a result indicative
of whether or not said number of adjacent bits is less than or
equal to said runlength in dependence upon a determination if

3 This Decision refers to: (1) Appellant’s Specification filed January 27,
2015 (Spec.); (2) the Non-Final Office Action (Non-Final Act.) mailed
February 9, 2017; (3) the Final Office Action (Final Act.) mailed July 19,
2017; (4) the Interview Summary (Int. Summary) mailed January 16, 2018;
(5) the Appeal Brief (Appeal Br.) filed February 20, 2018; (6) the
Examiner’s Answer (Ans.) mailed May 18, 2018; and (7) the Reply Brief
(Reply Br.) filed July 18, 2018.
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any bits within said 2(N+l)-bit intermediate value have a
predetermined value, wherein
said starting bit position is a most significant bit
within said input number;
said (N+ 1)-bit variable number comprises bit
values n[i], where i is a value between N and 0; and
said mask generator comprises combinatorial logic
configured to generate said 2N+1-bit mask value in
accordance with:
said 2(N+l)-bit mask value comprises bit values
mN[j], where j is a value between 2(N+l)-1 and 0;
m0[l]=l and m0[O] is given by said (N+ 1)-bit
variable number when N=0;
mN[p]=n[N] OR mN-1[p-2N], where p is a value
between 2N and 2(N+l)-l; and
mN[p]=n[N] AND mN-1 [p], where p is a value
between 0 and 2N -l.
Appeal Br. 18–19.
REJECTION
Claims 1–4 and 6–15 stand rejected under 35 U.S.C. § 101 as directed
to patent-ineligible subject matter. See Final Act. 2–6.
Our review in this appeal is limited to the above rejection and the
issues raised by Appellant. Arguments not made are waived. See MPEP
§ 1205.02; 37 C.F.R. § 41.37(c)(1)(iv).

ANALYSIS
I. 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.
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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. Pty. Ltd. 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 id. 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, 67–68 (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. 252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).

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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.”). 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. “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 recently published revised guidance on the application of
§ 101. See 2019 Revised Patent Subject Matter Eligibility Guidance, 84
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Fed. Reg. 50 (USPTO 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 activities 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) (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, 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 Guidance, 84 Fed. Reg. at 56.

II. The Examiner’s § 101 Rejection
The Examiner determines that representative4 claim 1 is directed to a
judicial exception: an abstract idea. See Final Act. 2–6; Ans. 3–4.

4 Appellant argues the claims as a group, holding out claim 1 as
representative. See Appeal Br. 8, n. 2. (“Although the independent claims
use different language and have different emphasis, claim 1 is representative
for purposes of patent eligibility under 35 U.S.C. § 101.”). We, thus, select
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According to the Examiner, claim 1 is “directed to ‘mathematics,’ i.e., an
abstract idea of performing logical combinations of numbers using an
‘AND’ and/or ‘OR’ function that are mathematical calculations that can be
performed [with] pen and paper.” Non-Final Act. 6–7. The Examiner also
determines “the claims, considered individually and as an ordered
combination, do not include additional elements that are sufficient to amount
to significantly more than the judicial exception because they merely apply,
or implement the mathematical calculations in a circuit in a manner that is
similar [to] Gottschalk v. Benson.” Non-Final Act. 7.
We analyze the claims and the Examiner’s rejection in view of the
Guidance and we adopt the nomenclature for the steps used in the Guidance.

III. Step 1 in the Guidance
Section 101 provides that “[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. Independent
claim 1 recites an apparatus. As such, claim 1 is directed to a statutory class
of invention within 35 U.S.C. § 101, i.e., a machine.

IV. Guidance Step 2A–Prong 1, (Alice/Mayo—Step 1)
Analyzing the Examiner’s rejection in view of the Guidance, we first
determine whether the claim, being directed to a statutory class of invention,
nonetheless falls within a judicial exception. See Guidance, 84 Fed. Reg.

independent claim 1 as representative of claims 1–4, 6, 7, and 9–15. See 37
C.F.R. § 41.37(c)(1)(iv).
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at 51. The USPTO has synthesized the key concepts identified by the courts
as abstract ideas into three primary subject-matter groupings: mathematical
concepts, certain methods of organizing human activities (e.g., a
fundamental economic practice), and mental processes. Id. at 52. For the
reasons discussed in section IV. A–E below, claim 1 recites abstract ideas
that fall within the Guidance’s mental-processes and mathematical concepts
groupings.
A. Overview of Claim 1
Claim 1 recites an apparatus “for comparing a number of adjacent bits
having a common value and extending from a starting bit position within an
input number.” Appeal Br. 18. We agree with the Examiner that claim 1,
under the broadest reasonable interpretation, recites limitations that can be
practically performed in the mind, or with pen and paper. See Non-Final
Act. 6–7 (“mathematical calculations that can be performed by pen and
paper”) (internal quotations marks omitted). We also agree with the
Examiner that claim 1 also recites “mathematical logic operations [that]
correspond to and are not meaningfully different from concepts identified by
the courts as abstract ideas of mathematics.” Non-Final Act. 7. Appellant, in
turn, does not dispute the Examiner’s determination that the claim recites an
abstract idea. See generally Appeal Br. 8–17.

B. “generate a 2(N+l)-bit mask value”
Apart from a mask generator, which is an additional element
discussed in Step 2B below, claim 1 recites “generate a 2(N+l)-bit mask value
in dependence upon said (N+ 1)-bit variable number.” Appellant refers to
pages 7–8 of the Specification to explain the subject matter of this limitation.
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See Appeal Br. 3. The cited portion discloses that “the mask value may, for
example, comprise (V+ 1) consecutive ‘1’ bit values followed by the
remainder of the mask value being ‘0’ bit values.” See Spec. 7:11–21, 7:23–
8:14. Where the disclosed variables are small numbers such as 0, the mask
generating merely requires generating data comprised of two or three
consecutive bits. Spec. 7:5–9. The example in the Specification, therefore,
demonstrates only a small amount of data needs to be analyzed to generate
the bit mask value. See id. Thus, this limitation is a mental process that can
practically be performed in the mind or with the assistance of pen and paper.
C. “perform a logical combination operation upon respective bits”
Apart from the combination circuitry, which is an additional element
discussed in Step 2B below, claim 1 recites “combination circuitry
configured to perform a logical combination operation upon respective bits
within said input number starting from said starting bit position and
corresponding bits within said 2(N+l)-bit mask value to generate a 2(N+l)-bit
intermediate value.” Appellant refers to pages 7–8 of the Specification to
explain the subject matter of this limitation. See Appeal Br. 3. The cited
portion discloses that the logical combination operation entails
“perform[ing] an AND operation on corresponding bits within the input
number and the mask value.” See Spec. 7:11–21, 7:23–8:14. Generating an
intermediate value by conjunctively linking two or three consecutive bits
demonstrates only a small amount of data needs to be analyzed and therefore
this limitation is a mental process that can practically be performed in the
mind.
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D. determining whether number of adjacent bits is less than a runlength
Apart from the result circuitry, which is an additional element
discussed in Step 2B below, claim 1 recites “generate a result indicative of
whether or not said number of adjacent bits is less than or equal to said
runlength in dependence upon a determination if any bits within said 2(N+l)-
bit intermediate value have a predetermined value.” Appellant refers to
pages 7–8 of the Specification to explain the subject matter of this limitation.
See Appeal Br. 3–4 (citing Spec. 7:23–8:14). The cited portion discloses
that “[t]he result circuitry generates a result value in dependence upon the
intermediate value which indicates whether or not the number of adjacent
bits having a common value (e.g. number of leading zeros) is less than a
runlength specified by the variable input number V.” See Spec. 7:11–21,
7:23–8:14. Comparing two bit strings to determine whether a number of
leading zeros is less than or equal to a runlength is a mental process that can
practically be performed in the mind.
E. “remaining limitations”
The remaining limitations of claim 1 recite:
said starting bit position is a most significant bit
within said input number;
said (N+ 1)-bit variable number comprises bit
values n[i], where i is a value between N and 0; and
said mask generator comprises combinatorial logic
configured to generate said 2N+1-bit mask value in
accordance with:
said 2(N+l)-bit mask value comprises bit values
mN[j], where j is a value between 2(N+l)-1 and 0;
m0[l]=l and m0[O] is given by said (N+ 1)-bit
variable number when N=0;
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mN[p]=n[N] OR mN-1[p-2N], where p is a value
between 2N and 2(N+l)-l; and
mN[p]=n[N] AND mN-1 [p], where p is a value between 0
and 2N -l.
Appeal Br. 18–19.
Apart from the limitation “said mask generator comprises
combinatorial logic,” which is an additional element discussed in Step 2B
below, each of the remaining elements of claim 1 recite a mathematical
relationship. For example, defining a starting bit position as a most
significant bit or setting a variable range between two values such as
between N and 0 or between 2N and 2(N+l)-l is merely reciting a
mathematical relationship. See SAP America, Inc. v. InvestPic, LLC, 898
F.3d 1161, 1163 (Fed. Cir. 2018) (holding that claims to a “series of
mathematical calculations based on selected information” are directed to
abstract ideas).
We agree with the Examiner that claim 1 recites a judicial exception
comprising the abstract ideas of a mental process and mathematical
concepts. See Guidance, 84 Fed. Reg. at 50. A claim need not be addressed
to a single abstract idea to be patent ineligible. As our reviewing court has
held, combining several abstract ideas does not render the combination any
less abstract. See, e.g., 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). Claim 1,
therefore, recites a judicial exception.

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V. Guidance Step 2A, Prong Two (Integration into a Practical Application)
Because claim 1 recites at least one abstract idea, we now determine
whether the claim is directed to the abstract concept itself or whether it is
instead directed to some technological implementation or application of, or
improvement to, this concept, i.e., integrated into a practical application.
See, e.g., Alice, 573 U.S. at 223, discussing Diehr, 450 U.S. at 175.
The Examiner determines “the claims most resembled Benson,
reciting a better way to implement mathematical operations within
conventional processing hardware, and that any improvement in technology
flowed as a natural consequence of the math and not as a result of a
technological improvement.” Int. Summary.
Appellant argues claim 1 is “directed to improving the operation of a
computer that counts a common value, e.g., leading zeros, within a binary
number (called a ‘runlength’) and then compares the runlength to a variable
number to determine whether the runlength of the common value, e.g.,
leading zeros, exceeds the variable number.” Appeal Br. 8. Appellant
argues claim 1 recites a “technical breakthrough” because “[c]omputers
traditionally have been forced to use two stages of data processing operation
to accomplish this task” and claim 1 combines operations to perform the
operation “in fewer computer cycles of operation.” Id.
Considering the claim as a whole, Appellant’s invention lacks a
technical solution to a technical problem. The mere presence of circuitry
here does not necessarily indicate a technical solution. Essentially,
Appellant argues that, because the claim uses circuitry, it is not directed to a
mental process. See Appeal Br. 8–10. This argument is unpersuasive
because “[c]ourts have examined claims that required the use of a computer
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and still found that the underlying, patent-ineligible invention could be
performed via pen and paper or in a person’s mind.” Versata Dev. Grp. v.
SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015), quoted in Guidance,
84 Fed. Reg. at 52 n.14. So, although claim 1 recites circuitry, this does not
preclude the claim from being directed to the recited abstract ideas.
Appellant argues a “real world example application of the claimed
technology is to floating point type calculations used in computer machines-
not by people.” Appeal Br. 9. The argued practical application, however, is
not recited in the claim. That is, claim 1 does not recite a practical
application of performing floating point-type calculations but is instead
directed to any operation that “compar[es] a number of adjacent bits having
a common value and extending from a starting bit position within an input
number with a runlength specified by a (N+ 1 )-bit variable number.”
Spec. 2:12–14. Furthermore, we note in passing and without reliance in
arriving at our decision, that Appellant fails to provide sufficient evidence or
explanation in support of a determination that floating-point operations are
not mathematical concepts. We, therefore, agree with the Examiner that
claim 1 is similar to Benson (see Int. Summary) in that performance of a
claim limitation using generic hardware does not necessarily preclude the
claim limitation from being in the mental process or mathematical concepts
grouping. See Benson, 409 U.S. at 67.
As an additional example, we contrast Appellant’s claim 1 with
claims found to be patentable in Diehr. The last limitation of representative
claim 1 of Diehr recites: “repetitively comparing in the computer at said
frequent intervals during the cure each said calculation of the total required
cure time calculated with the Arrhenius equation and said elapsed time, and
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opening the press automatically when a said comparison indicates
equivalence.” In re Diehr, 602 F.2d 982, 984 (CCPA 1979) (Rich, J.), aff’d,
450 U.S. 175, 101 S. Ct. 1048 (1981) (emphasis added). By opening the
rubber-molding press in accordance with a series of calculations, Diehr’s
claim 1 recites a practical application. In contrast, Appellant’s claim 1 is
limited to performing calculations without the practical application, by
merely reciting functions such as generating a bit mask value, performing a
logical combination operation, and generating a comparison result, without
further claiming specific structure or limiting the functions to a specific
practical application. Thus, we agree with the Examiner that what is missing
from the claim is the practical application of the formula or calculations.
See Final Act. 11 (“The claimed invention lacks specific, narrowing detail
for . . . how the results of the algorithm are used.”).
Claim 1 is not directed to a specific asserted improvement in
technology or otherwise integrated into a practical application and, thus, is
directed to a judicial exception.

VI. Guidance Step 2B, Alice/Mayo—Step 2 (Inventive Concept)
To determine whether the claim provides an inventive concept, we
consider the additional elements—individually and in combination—to
determine whether they (1) add a specific limitation beyond the judicial
exception that is not “well-understood, routine, conventional” in the field or
(2) simply append well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception. Guidance, 84 Fed. Reg. at 56. We use the term
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“additional elements” to refer to features, limitations, or steps that the claim
recites beyond the abstract idea itself. Guidance, 84 Fed. Reg. at 55 n.24.
Claim limitations reciting the excluded subject matter (judicial
exception) cannot satisfy the second step of the Alice analysis. See Mayo,
566 U.S. at 72–73 (requiring “a process that focuses upon the use of a
natural law also contain other elements or a combination of elements,
sometimes referred to as an ‘inventive concept,’ sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
natural law itself” (emphasis added)); BSG Tech. LLC v. BuySeasons, Inc.,
899 F.3d 1281, 1290 (Fed. Cir. 2018) (“It has been clear since Alice that a
claimed invention’s use of the ineligible concept to which it is directed
cannot supply the inventive concept that renders the invention ‘significantly
more’ than that ineligible concept.”); Berkheimer v. HP Inc., 890 F.3d 1369,
1374 (Fed. Cir. 2018) (Moore, J., concurring) (“[A]nd Berkheimer . . .
leave[s] untouched the numerous cases from [the Federal Circuit] which
have held claims ineligible because the only alleged ‘inventive concept’ is
the abstract idea.).”
Appellant argues “[t]he claimed technology allows a computer to
perform floating point operations more efficiently.” Appeal Br. 9.
Appellant’s argument is not persuasive, however, because it improperly
relies upon the excluded subject matter, which are abstract ideas involved in
creating an operation “that performs the count and performs the comparison
as a combined operation which may be achieved more rapidly,” as discussed
above. Spec. 4:12–14. Appellant does not demonstrate how the additional
elements provide alleged improvements beyond the abstract ideas recited in
claim 1.
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In claim 1, the additional limitations include a mask generator
comprising combinatorial logic, combination circuitry, and result circuitry.
The Examiner determines “[t]hese [additional] limitations are recited at a
high level of generality and in a manner that merely generally links the
mathematical logic to logic circuitry that directly implements the
mathematical Boolean AND and/or OR functions.” Ans. 4; see also Non-
Final Act. 7–8.
Appellant argues “[t]he final office action improperly characterizes
the specific hardware limitations in the claims as generic circuitry.” Appeal
Br. 12. Specifically, Appellant argues the “factual evidence [required by
Berkheimer] that combination of the claimed mask generator, combination
circuitry, and result circuitry as particularly configured in claim 1 is well-
understood, routine, and conventional is entirely missing in the final office
action.” Appeal Br. 14 (citing Berkheimer, 890 F.3d at 1376).
Whether the additional elements identified above are well-understood,
routine, and conventional is a question of fact. See Berkheimer, 881 F.3d at
1369 (“Whether something is well-understood, routine, and conventional to
a skilled artisan . . . is a factual determination.”). Thus, the Examiner’s
finding that the additional elements are well-understood, routine, and
conventional must be supported with a factual determination including
evidence. Id. (citing MPEP § 2106.05(d), as modified by the Berkheimer
Memorandum5).

5 “Changes in Examination Procedure Pertaining to Subject Matter
Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP,
Inc.),” April 19, 2018 (hereinafter “Berkheimer Memorandum”).
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On the record before us, Appellant has not shown that claim 1 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 that the Examiner failed to support his factual findings with evidence.
For example, in finding the additional limitations in claim 1 to be well-
understood, routine, and conventional, the Examiner finds:
the mask generator which forms the combinatorial logic and
result circuitry is formed generally from derivation of a
Boolean mathematical relationship. These additional elements,
mask generator, combination circuitry, and result circuitry, are
therefore not specific structural elements, but rather generally
linked Boolean logic derived from and that flow naturally from
the mathematical relationship.
Ans. 5. The Examiner additionally finds:
The specification discloses that “it is known to provide
data processing systems with circuitry to perform operations
such as a count of leading zeros within a binary number”, and
that “[s]uch a count of leading zeros once determined may then
be subject to a comparison operation against a variable number
to determine whether or not the runlength of leading zeros does
or does not exceed the variable number.” (Specification p. 2).
The specification further discloses that “[i]t will be appreciated
by those in this field that specific logical operations may be
transformed into other logical operations having the same
combined effect and accordingly a variety of different bitwise
logical combinations may be applied. One particular form of
logical combination which may be used is a bitwise AND
operation. The result circuitry may determine the result from
the intermediate value in a variety of different ways. One such
way is to perform a OR operation upon the bits of the
intermediate value” (emphasis added) (Specification p. 4).
In accordance with Appellants Specification, it is
admitted that a variety of logical combination circuitry to
perform a count of leading zeros and a comparison against a
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number is known by those in this field. The claimed innovative
concept asserted is that this is performed as a one-step process
vs a two-step process. The assertion that this operation is
performed in a one-step process flows from the abstract idea,
the more general combinatorial Boolean formula that is derived
iteratively according to the Specification, p. 8, and as claimed
for forming the mask generator. This formula drives the
selection of bitwise logical combinations from a variety of
different combinations, the choice of specific circuitry to
implement this formula being known as disclosed by Appellant
in the Specification.
Ans. 8–9.
We agree with the Examiner and adopt the Examiner’s findings as our
own. See id. Broadly reciting a mask generator or circuitry here to perform
the claimed abstract ideas is no different than using a generic processor
implementing code to perform those abstract ideas. Accordingly, the
Examiner satisfies the evidentiary requirement imposed by Berkheimer by
citing to specific portions of the Specification to support the Examiner’s
reasoning. Ans. 4–8 (citing Spec. 2, 4, 8, Fig. 3).
Appellant’s argument that “the circuitries recited in claim 1 are in fact
structural elements” (Reply Br. 6) fails to persuasively address the Examiner
finding that the circuitry is structural but nonetheless well-understood,
routine, and conventional logic “that flow[s] naturally from the
mathematical relationship.” Ans. 5. Appellant’s claim 1 “simply appends
well-understood, routine, 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.
We, therefore agree with the Examiner that “Claim 1 does not include
additional elements that are sufficient to amount to significantly more than
Appeal 2018-007477
Application 14/606,217

19
the judicial exception” i.e., the abstract idea because the additional elements
“merely apply, or implement the mathematical calculations in a circuit in a
manner that is similar Gottschalk v. Benson.” Non-Final Act. 7.
Appellant further argues “Appellant’s claims do not preempt all ways
of determining a runlength” because “claim 1 is quite specific and limited to
a particular technical breakthrough that uses a specific combination of
electronic circuitries to accomplish determination of a runlength of a binary
number and comparison [of] the runlength to a variable number in a
combined operation in fewer computer cycles of operation.” Br. 8. We are
unpersuaded because, as noted by the Examiner, (see Ans. 6), “[w]hile
preemption may signal patent ineligible subject matter, the absence of
complete preemption does not demonstrate patent eligibility.” Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
Where claims are deemed to recite only patent-ineligible subject matter
under the Alice analysis, as they are here, “preemption concerns are fully
addressed and made moot.” Id.
We, thus, conclude that claim 1 does not provide an inventive concept
because the additional elements recited in claim 1 do not provide
significantly more than the recited judicial exception. Accordingly, claim 1
does not recite patent-eligible subject matter. Because claim 1 is argued as
representative of the other claims, we also conclude that independent claim
15 and dependent claims 2–4, 6, 7, and 9–14 do not recite patent-eligible
subject matter. Therefore, we sustain the rejection of claims 1–4, 6, 7, and
9–15 under 35 U.S.C. § 101 as being directed to patent-ineligible subject
matter.

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Application 14/606,217

20
DECISION
For the reasons above, we affirm the Examiner’s decision rejecting
claims 1–4, 6, 7, and 9–15.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).
AFFIRMED