NETSUITE INC.

Patent Trials and Appeals Board

Nov 3, 2020

2020000949 (P.T.A.B. Nov. 3, 2020)

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.
15/089,110 04/01/2016 GAVIN DAVIDSON ORA180206-
CIP-1 (NS-167)
3795
51444 7590 11/03/2020
Kraguljac Law Group/Oracle
P.O. Box 507
Cleveland, OH 44017
EXAMINER
HENRY, MATTHEW D
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
11/03/2020 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):
DDay@KragLaw.com
MPusti@KragLaw.com
PTOMail@KragLaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GAVIN DAVIDSON and SUHAS ROHIT MEHTA
Appeal 2020-000949
Application 15/089,110
Technology Center 3600
Before JOSEPH L. DIXON, LINZY T. McCARTNEY, and
MATTHEW J. McNEILL, Administrative Patent Judges.
McCARTNEY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 seeks review under 35 U.S.C. § 134(a) of the Examiner’s
final rejection of claims 1–21. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 Appellant identifies the real party in interest as Oracle International
Corporation. Appeal Brief 2, filed August 16, 2019 (Appeal Br.). This
appeal is related to Appeal 2020-001665.
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BACKGROUND
This patent application concerns “more effective visual
representations of the factors and parameters involved in executing an
overall process.” Specification ¶ 24, filed April 1, 2016 (Spec.). Claim 1
illustrates the claimed subject matter:
1. A computer-implemented method for an improved use of
process data, the method comprising:
generating and displaying a graphical user interface for
assembling a timeline for a process, the timeline including a
plurality of time periods;
assembling a list of items for the process, each item
including at least one first time attribute corresponding to one of
the plurality of time periods for the process and at least one
second time attribute corresponding to a real time value;
generating, via the graphical user interface, a visual image
of the timeline having each of the plurality of time periods and
having a body that is internal to the timeline;
receiving, via the graphical user interface, selected items
from the list of items where the selected items are part of the
process;
displaying each of the selected items below the timeline
and below one of the plurality of time periods according to the
first time attribute of the respective selected item;
automatically determining a trigger for changing the
display of the visual image of the timeline comprising:
determining that the real time value for at least one
item of the selected items in the timeline has changed in
value;
changing the display of the visual image of the
timeline including changing the at least one item if the real
time value corresponding to the at least one item meets or
exceeds a threshold.
Appeal Br. 35–36.
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REJECTION2
Claims 35 U.S.C. § References/Basis
1–21 101 Eligibility
DISCUSSION
We have reviewed the Examiner’s rejection and Appellant’s
arguments, and Appellant has not persuaded us that the Examiner erred. As
consistent with the discussion below, we adopt the Examiner’s reasoning,
findings, and conclusions on pages 3–15 of the Final Office Action mailed
February 15, 2019 (Final Act.) and pages 3–17 of the Examiner’s Answer
mailed September 17, 2019 (Ans.).
Section 101 of the Patent Act provides that “any new and useful
process, machine, manufacture, or composition of matter, or any new and
useful improvement thereof” is patent eligible. 35 U.S.C. § 101. But the
Supreme Court has long recognized an implicit exception to this section:
“Laws of nature, natural phenomena, and abstract ideas are not patentable.”
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (quoting Ass’n for
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
To determine whether a claim falls within one of these excluded categories,
the Court has set out a two-part framework. The framework requires us first
to consider whether the claim is “directed to one of those patent-ineligible
concepts.” Alice, 573 U.S. at 217. If so, we then examine “the elements of
[the] claim both individually and ‘as an ordered combination’ to determine
whether the additional elements ‘transform the nature of the claim’ into a
patent-eligible application.” Alice, 573 U.S. at 217 (quoting Mayo

2 The Examiner withdrew a non-statutory obviousness-type double patenting
rejection of claims 1–21. Examiner’s Answer 3, filed September 17, 2019.
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Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78, 79 (2012)).
That is, we examine the claim for an “inventive concept,” “an element or
combination of elements that is ‘sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [ineligible
concept] itself.’” Alice, 573 U.S. at 217–18 (alteration in original) (quoting
Mayo, 566 U.S. at 72–73).
The Patent Office has revised its guidance about this framework. See
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (Revised Guidance). Under the Revised Guidance, to decide
whether a claim is directed to an abstract idea, we evaluate (1) whether the
claim recites subject matter that falls within one of the abstract idea
categories listed in the Revised Guidance, and if so, (2) whether the claim
fails to integrate the recited abstract idea into a practical application. See
Revised Guidance, 84 Fed. Reg. at 51, 54; see also USPTO, October 2019
Update: Subject Matter Eligibility at 1–2, 10–15, https://www.uspto.gov
/sites/default/files/documents/peg_oct_2019_update.pdf (October SME
Update) (providing additional guidance on determining whether a claim
recites a judicial exception and integrates a judicial exception into a practical
application). If the claim is directed to an abstract idea, as noted above, we
then determine whether the claim has an inventive concept. The Revised
Guidance clarifies that when making this determination, we should consider
whether the additional claim elements add “a specific limitation or
combination of limitations that are not well-understood, routine,
conventional activity in the field” or “simply append[] well-understood,
routine, conventional activities previously known to the industry, specified
at a high level of generality.” Revised Guidance, 84 Fed. Reg. at 56.
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With this framework in mind, we turn to the Examiner’s rejection of
claims 1–21 under § 101. Appellant argues these claims together, so as
permitted by 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal for this
ground of rejection based on claim 1.
Directed To
The Revised Guidance explains that the abstract idea exception
includes mathematical concepts, mental processes, and certain methods of
organizing human activity. Revised Guidance, 84 Fed. Reg. at 52. The
Examiner determined that claim 1 recites subject matter that falls into the
category of mental processes, among others. Final Act. 11.
We agree. Mental processes include acts that people can perform in
their minds or using pen and paper. See CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011); Revised Guidance, 84
Fed. Reg. at 52 & nn.14–15. Several of the steps recited in claim 1
encompass such acts. For example, claim 1 recites “assembling a list of
items for the process, each item including at least one first time attribute
corresponding to one of the plurality of time periods for the process and at
least one second time attribute corresponding to a real time value.” Appeal
Br. 35. People can assemble the recited list by simply thinking of the recited
items or writing them down. See, e.g., CyberSource, 654 F.3d at 1373
(determining that a claim step “is so broadly worded that it encompasses
literally any method for” performing the step, including “logical reasoning
that can be performed entirely in the human mind”). Claim 1 also recites
“generating . . . a visual image of the timeline having each of the plurality of
time periods and having a body that is internal to the timeline” and
“displaying each of the selected items below the timeline and below one of
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the plurality of time periods according to the first time attribute of the
respective selected item.” Appeal Br. 35. People can perform these steps by
drawing the recited timeline and arranging the selected items in the claimed
manner. Cf. Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1148
(Fed. Cir. 2016) (“[T]he limited, straightforward nature of the steps involved
in the claimed method make evident that a skilled artisan could perform the
steps mentally.”).
Claim 1 next recites “receiving . . . selected items from the list of
items where the selected items are part of the process.” Appeal Br. 35.
People can receive this information by, for example, reading it from a
database or a computer screen or being told what items were selected. See,
e.g., CyberSource, 654 F.3d at 1372 (determining that a claim step that
“requires ‘obtaining information about other transactions that have utilized
an Internet address that is identified with the [ ] credit card transaction’—can
be performed by a human who simply reads records of Internet credit card
transactions from a preexisting database.”). Even if this step did not
encompass a mental process, the step alone would not make claim 1 patent
eligible because it simply gathers data. See, e.g., CyberSource, 654 F.3d at
1372 (“[E]ven if some physical steps are required to obtain information from
the database (e.g., entering a query via a keyboard, clicking a mouse), such
data-gathering steps cannot alone confer patentability.”).
Claim 1 then recites “determining a trigger for changing the display of
the visual image of the timeline,” including “determining that the real time
value for at least one item of the selected items in the timeline has changed
in value” and “changing the display of the visual image of the timeline
including changing the at least one item if the real time value corresponding
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to the at least one item meets or exceeds a threshold.” Appeal Br. 35–36.
People can determine that the real time value has changed by, for example,
counting the number of items in inventory or determining the lead time for
producing an item and mentally evaluating whether the number or lead time
has changed. See, e.g., Spec. ¶¶ 81 (disclosing that “[t]he real time value
corresponding to a time attribute of an item may be a value corresponding to
rate of consumption during a process, a number of items in an inventory, a
lead time for producing the item, a lead time for purchasing the item, and a
lag time for waiting on a related item”), 87 (disclosing that “[t]he real time
value may be that actual inventory level”); Electric Power Group, LLC v.
Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016) (“[W]e have treated
analyzing information by steps people go through in their minds, or by
mathematical algorithms, without more, as essentially mental processes
within the abstract-idea category.”). And people can change the display in
the recited manner by simply erasing the recited at least one item and
redrawing it on the appropriate part of the timeline when the real-time value
exceeds a threshold. See, e.g., CyberSource, 654 F.3d at 1373; Synopsys, 839
F.3d at 1148.
Because at least these steps encompass acts that people can perform in
their minds or using pen and paper, claim 1 recites mental processes. See,
e.g., CyberSource, 654 F.3d at 1372; see also October SME Update at 9 (“If
a claim recites a limitation that can practically be performed in the human
mind, the limitation falls within the mental processes grouping, and the
claim recites an abstract idea. The use of a physical aid (i.e., the pen and
paper) to help perform a mental step . . . does not negate the mental nature of
this limitation.” (footnote call numbers omitted)).
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Appellant contends that claim 1 “does not recite a mental process
because the claim, under its broadest reasonable interpretation consistent
with the specification, does not cover performance in the mind.” Appeal Br.
11 (emphasis and citation omitted). According to Appellant, “[t]he human
mind cannot generate and display a graphical user interface and cannot
generate a visual image of a timeline in the graphical user interface.” Appeal
Br. 11.
We disagree. If a claim recites steps that people can perform in their
minds or using pen and paper except for generic computer elements and
functions, the claim recites mental processes. See, e.g., Intellectual Ventures
I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016)
(determining that the claims at issue are directed to an abstract idea when
“with the exception of generic computer-implemented steps, there is nothing
in the claims themselves that foreclose them from being performed by a
human, mentally or with pen and paper”); see also Revised Guidance, 84
Fed. Reg. at 52 n.14 (“If a claim, under its broadest reasonable
interpretation, covers performance in the mind but for the recitation of
generic computer components, then it is still in the mental processes
category unless the claim cannot practically be performed in the mind.”).
That is the case here. The written description indicates that the disclosed
invention uses generic computer elements and functions to execute the
claimed method. See, e.g., Spec. ¶¶ 43 (“In general, an embodiment may be
applied to any set of software instructions embodied in one or more non-
transitory, computer-readable media that are designed to be executed by a
suitably programmed processing element (such as a CPU, microprocessor,
processor, controller, computing device, and the like).”), 44 (describing
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exemplary graphical user interfaces), 45–46 (disclosing that an application
module used to generate a user interface “may include any suitable
computer-executable code or set of instructions . . . such as computer-
executable code corresponding to a programming language”), 74 (disclosing
that, in at least one embodiment, “the system, apparatus, methods, processes,
functions, and/or operations for enabling efficient configuration and
presentation of a user interface to a user based on the user’s previous
behavior may be wholly or partially implemented in the form of a set of
instructions executed by one or more programmed computer processors such
as a central processing unit (CPU) or microprocessor”). And other than this
generic computer implementation, each of the steps discussed above
encompasses an act that people can perform in their minds or using pen and
paper. Claim 1 thus recites mental processes. See, e.g., CyberSource, 654
F.3d at 1375 (“That purely mental processes can be unpatentable, even when
performed by a computer, was precisely the holding of the Supreme Court in
Gottschalk v. Benson.”).
The Federal Circuit’s Trading Technologies I3 and Trading
Technologies II4 decisions confirm that claim 1 recites an abstract idea. In
Trading Technologies I, the Federal Circuit determined that claims reciting
methods of graphing bids and offers to assist traders in making orders were
directed to an abstract idea. See Trading Technologies I, 921 F.3d at 1087–
95. The court explained that the claimed steps of displaying information on a
graph axis, receiving information, and displaying information relevant to an
order along the axis each fell within the realm of abstract ideas. See Trading

3 Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1084 (Fed. Cir. 2019).
4 Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1378 (Fed. Cir. 2019).
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Technologies I, 921 F.3d at 1092. These steps are analogous to the steps of
assembling a list of items for a process, generating a visual image of a
timeline, receiving selected items, and displaying information on (or relative
to) the timeline recited in claim 1. The Trading Technologies I court also
explained that steps involving selecting and moving an order icon did “not
change [the] determination that the claims are directed to an abstract idea.”
Trading Technologies I, 921 F.3d at 1092. The court reasoned that “[t]he
fact that the claims add a degree of particularity as to how an order is placed
in this case does not impact our analysis at step one.” Trading Technologies
I, 921 F.3d at 1092. The same is true of the changing the display step recited
in claim 1. Even if this step narrows the claimed method, that does not
change that the claim 1 recites an abstract idea.
In Trading Technologies II, the court determined that the written
description at issue made “clear that ‘the focus of the claimed advance over
the prior art’ is providing a trader with additional financial information to
facilitate market trades, an abstract idea.” Trading Technologies II, 921 F.3d
at 1384 (quoting Intellectual Ventures I LLC v. Capital One Fin. Corp., 850
F.3d 1332, 1338 (Fed. Cir. 2017)). Similarly, the written description here
makes clear that the focus of the claimed advance is arranging information
so that issues are easier to see and understand. See, e.g., Spec. ¶¶ 24 (“By
way of overview, various embodiments as discussed herein are directed to
systems, apparatuses, and methods for more effective visual representations
of the factors and parameters involved in executing an overall process.”), 55
(explaining that “[b]y re-orienting a traditional bill of material/work order
view with the finished goods on the right side and the materials and
operations aligned based on time” the disclosed invention makes “possible
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conflicts and effects of late orders . . . easier to identify”), 60 (“This aspect
of how and what to display makes it easier for the user to understand which
materials could be constraints on the overall timeline and a critical path for
the process.” (reference number omitted)), 62 (“The graphical way that [the
timeline] is represented in an easy to read left-to-right orientation is an
aspect that will make the process easier to understand as it is built.”), 75
(“With a real time visual bill of materials, a manufacturing administrator can
proactively predict various shortages and create vendor/supplier POs to
ensure that the parts/resources are available for the manufacturing process in
real time.”). Arranging information to make issues easier to see and
understand falls into the category of abstract ideas. See Trading
Technologies II, 921 F.3d at 1385 (explaining that the claims before them
were directed to an abstract idea because,“[l]ike Electric Power, the
purported advance ‘is a process of gathering and analyzing information of a
specified content, then displaying the results, and not any particular
assertedly inventive technology for performing those functions’”); Interval
Licensing LLC v. AOL, Inc., 896 F.3d 1335, 1345 (Fed. Cir. 2018) (“[T]he
collection, organization, and display of two sets of information on a generic
display device is abstract absent a ‘specific improvement to the way
computers [or other technologies] operate.’” (alteration in original)).
Because we determine that claim 1 recites an abstract idea, we next
consider whether claim 1 integrates the abstract idea into a practical
application. See Revised Guidance, 84 Fed. Reg. at 51. In doing so, we
evaluate the claim as a whole to determine whether the claim “integrate[s]
the [abstract idea] into a practical application, using one or more of the
considerations laid out by the Supreme Court and the Federal Circuit.”
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Revised Guidance, 84 Fed. Reg. at 55; see also October SME Update at 12
(discussing the practical application analysis). That is, we consider any
additional elements recited in the claim along with the limitations that recite
an abstract idea to determine whether the claim integrates the abstract idea
into a practical application. See October SME Update at 12.
The Examiner determined that the additional elements recited in claim
1 do not integrate the recited abstract idea in a practical application. See
Final Act. 12–15. The Examiner determined that, when considered with the
limitations that recite an abstract idea, the additional elements amount to
simply adding the words “apply it” to the abstract idea and generally link the
abstract idea to a particular technological environment. See Final Act. 13.
We agree. The additional elements recited in claim 1 include the steps
of “generating and displaying a graphical user interface,” determining a
trigger for changing the display of the visual image of the timeline
“automatically,” as well as the “graphical user interface” itself. The written
description indicates that the claimed method uses generic computer
technology to perform the steps of generating and displaying a graphical
user interface and automatically determining a trigger for changing the
display of the visual image of the timeline. See, e.g., Spec. ¶¶ 43 (“In
general, an embodiment may be applied to any set of software instructions
embodied in one or more non-transitory, computer-readable media that are
designed to be executed by a suitably programmed processing element (such
as a CPU, microprocessor, processor, controller, computing device, and the
like).”), 46 (disclosing that an application module used to generate a user
interface “may include any suitable computer-executable code or set of
instructions . . . such as computer-executable code corresponding to a
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programming language”), 74 (disclosing that, in at least one embodiment,
“the system, apparatus, methods, processes, functions, and/or operations for
enabling efficient configuration and presentation of a user interface to a user
based on the user’s previous behavior may be wholly or partially
implemented in the form of a set of instructions executed by one or more
programmed computer processors such as a central processing unit (CPU) or
microprocessor”). And as noted above, the written description makes clear
that the graphical user interface encompasses a generic computer
component. See, e.g., Spec. ¶ 44 (describing exemplary graphical user
interfaces).
The method recited in claim 1 uses this generic computer technology
as a tool to perform the recited abstract idea. See Appeal Br. 35–36. Using
generic computer technology in this way does not integrate the abstract idea
into a practical application. See, e.g., Alice, 573 U.S. at 223–24 (“[W]holly
generic computer implementation is not generally the sort of ‘additional
featur[e]’ that provides any ‘practical assurance that the process is more than
a drafting effort designed to monopolize the [abstract idea] itself.’” (second
and third alterations in original) (quoting Mayo, 566 U.S. at 77)); Credit
Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017)
(“Our prior cases have made clear that mere automation of manual processes
using generic computers does not constitute a patentable improvement in
computer technology.”); Intellectual Ventures I LLC v. Capital One Bank
(USA), 792 F.3d 1363, 1370 (Fed. Cir. 2015) (“Steps that do nothing more
than spell out what it means to ‘apply it on a computer’ cannot confer
patent-eligibility.”).
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Appellant argues that claim 1 integrates the abstract idea into a
practical application because the claimed invention recites “limitations for
changing the display of a visual image of a timeline when the real time value
of an item changes.’” Appeal Br. 12. According to Appellant, the claimed
invention reflects a technological improvement because it “implements a
real time view of how changing inventory levels may impact an actual
manufacturing process.” Appeal Br. 14. Appellant contends that, in light of
Core Wireless Licensing S.A.R.L. v. LG Electronics., Inc., 880 F.3d 1356
(Fed. Cir. 2018), “[a] computer process that is made to generate more
accurate real-time changes in a visual timeline of a process is a practical
application and improves the capabilities of a computer.” Appeal Br. 14.
We disagree. In Core Wireless, the claimed invention was “directed to
an improvement in the functioning of computers, particularly those with
small screens.” Core Wireless, 880 F.3d at 1363. By contrast, here the
recited method uses generic computer technology to arrange items so that
users can more easily identify problems. See Appeal Br. 35–36; Spec. ¶¶ 24,
55, 60, 62, 75. This is, at best, an improvement to an abstract idea, not how a
computer functions. See, e.g., Trading Technologies I, 921 F.3d at 1093
(distinguishing Core Wireless because the claims at issue “recite a
purportedly new arrangement of generic information that assists traders in
processing information more quickly,” which does “not improve the
functioning of the computer, make it operate more efficiently, or solve any
technological problem”). We thus disagree that the clamed method
represents a technical improvement or uses the abstract idea in a meaningful
way beyond linking the abstract idea to a particular technological
environment.
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Appellant raises two additional arguments for the first time in the
Reply Brief. First, Appellant contends that claim 1 is patent eligible because
the claim allegedly effects a transformation or reduction of a particular
article to a different state or thing. See Reply Brief 7, filed November 18,
2019 (“Reply Br.”). Second, Appellant argues that, like the claims in
Diamond v. Diehr, 450 U.S. 175 (1981), claim 1 is “directed to a portion of
a manufacturing process” and is therefore patent eligible. Reply Br. 7.
Appellant did not raise these arguments in the Appeal Brief, despite
having the opportunity to do so. And Appellant has not shown good cause
for raising these arguments for the first time in the Reply Brief. Appellant
has therefore forfeited these arguments. See 37 C.F.R. §§ 41.37(c)(1)(iv),
41.41(b)(2). For the reasons discussed above, considering the additional
elements recited in claim 1 along with the limitations that recite an abstract
idea, both individually and combination, we determine that claim 1 does not
integrate the recited abstract idea into a practical application. Because claim
1 recites an abstract idea and does not integrate the abstract idea into a
practical application, claim 1 is directed to an abstract idea.
Inventive Concept
Finally, we consider whether claim 1 has an inventive concept, that is,
whether the claim has additional elements that “‘transform the nature of the
claim’ into a patent-eligible application.” Alice, 573 U.S. at 217 (quoting
Mayo, 566 U.S. at 78, 79). This requires us to evaluate whether the
additional claim elements add “a specific limitation or combination of
limitations that are not well-understood, routine, conventional activity in the
field” or “simply append[] well-understood, routine, conventional activities
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previously known to the industry, specified at a high level of generality.”
Revised Guidance, 84 Fed. Reg. at 56.
The Examiner determined that claim 1 lacks an inventive concept, as
the claim “merely amounts to . . . instructions to apply the abstract idea on a
computer.” Final Act. 13. In connection with this determination, the
Examiner found that the additional elements recited in claim 1 “perform
conventional functions.” Final Act. 14.
We agree. As discussed above, the additional elements include the
steps of “generating and displaying a graphical user interface” and
determining a trigger for changing the display of the visual image of the
timeline “automatically” and the “graphical user interface” itself. The
written description describes the recited graphical user interface and the step
of generating and displaying it in a manner that makes clear that these
additional elements are conventional. See, e.g., Spec. ¶¶45–46, 74, Fig. 6.
And the way the written description describes the automatically determining
step indicates that this step involves conventional computer implementation.
See, e.g., Spec. ¶¶ 86–90; see also Bancorp Services v. Sun Life, 687 F.3d
1266, 1278, (Fed. Cir. 2012) (“The computer required by some of Bancorp’s
claims is employed only for its most basic function, the performance of
repetitive calculations, and as such does not impose meaningful limits on the
scope of those claims.”); Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716
(Fed. Cir. 2014) (determining that “[a]dding routine additional steps such as
updating an activity log . . . does not transform an otherwise abstract idea
into patent-eligible subject matter.”); Hybritech Inc. v. Monoclonal
Antibodies, Inc., 802 F.2d 1367, 1384 (Fed. Cir. 1986) (“[A] patent need not
teach, and preferably omits, what is well known in the art.”); USPTO,
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Memorandum on Changes in Examination Procedure Pertaining to Subject
Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v.
HP, Inc.) at 3 (Apr. 19, 2018), available at https://www.uspto.gov/sites
/default/files/documents/memo-berkheimer-20180419.pdf (explaining that a
specification that describes additional elements “in a manner that indicates
that the additional elements are sufficiently well-known that the
specification does not need to describe the particulars of such additional
elements to satisfy 35 U.S.C. § 112(a)” can show that the elements are well
understood, routine, and conventional).
Considered individually or in combination, these additional elements
do not provide the necessary inventive concept. Claim 1 simply uses these
well-understood, routine, and conventional computer elements to implement
the recited abstract idea, which is not enough to provide an inventive
concept. See, e.g., Alice, 573 U.S. at 223–24 (“[W]holly generic computer
implementation is not generally the sort of ‘additional featur[e]’ that
provides any ‘practical assurance that the process is more than a drafting
effort designed to monopolize the [abstract idea] itself.’” (second and third
alterations in original) (quoting Mayo, 566 U.S. at 77)); Customedia Techs.,
LLC v. Dish Network Corp., 951 F.3d 1359, 1366 (Fed. Cir. 2020)
(explaining that “the invocation of ‘already-available computers that are not
themselves plausibly asserted to be an advance . . . amounts to a recitation of
what is well-understood, routine, and conventional’” and determining that
invoking a conventional component “is insufficient to supply the required
inventive concept” (quoting SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161,
1170 (Fed. Cir. 2018))).
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Appellant contends that the Examiner did not consider whether the
combination of certain steps recited in claim 1 are well understood, routine,
and conventional. See Appeal Br. 17. But most of these steps form part of
the identified abstract idea, and the Examiner did not need to determine
whether these steps are well understood, routine, and conventional. See, e.g.,
Bridge & Post, Inc. v. Verizon Commc’ns, Inc., 778 F. App’x 882, 892 (Fed.
Cir. 2019) (“At Alice step two we assess ‘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.’” (quoting BSG Tech LLC
v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018))); BSG Tech, 899
F.3d at 1290 (“[T]he relevant inquiry is not whether the claimed invention as
a whole is unconventional or non-routine. . . . 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.” (first emphasis added)). And for the
reasons discussed above, the written description indicates that the additional
elements recited claim 1 are well understood, routine, and conventional.
Appellant’s argument therefore does not persuade us that the Examiner
erred.
Summary
For at least the reasons discussed above, Appellant has not shown that
the Examiner erroneously rejected representative claim 1 under § 101. We
thus sustain this rejection.
Appeal 2020-000949
Application 15/089,110

19
CONCLUSION
Claims
Rejected 35 U.S.C. § References/Basis Affirmed Reversed
1–21 101 Eligibility 1–21 #

No 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.
§ 1.136(a)(1)(iv).

AFFIRMED