NIPPON STEEL & SUMITOMO METAL CORPORATION

Patent Trials and Appeals Board

Dec 24, 2021

2021004918 (P.T.A.B. Dec. 24, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/318,836 12/14/2016 Toshiya SUZUKI 6827-0115PUS1 1046
2292 7590 12/24/2021
BIRCH STEWART KOLASCH & BIRCH, LLP
8110 Gatehouse Road
Suite 100 East
Falls Church, VA 22042-1248
EXAMINER
COCCHI, MICHAEL EDWARD
ART UNIT PAPER NUMBER
2147
NOTIFICATION DATE DELIVERY MODE
12/24/2021 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
mailroom@bskb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte TOSHIYA SUZUKI and YOSHIAKI NAKAZAWA
____________________

Appeal 2021-004918
Application 15/318,836
Technology Center 2100
____________________

Before ALLEN R. MacDONALD, CARL W. WHITEHEAD JR., and
DAVID J. CUTITTA II, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 8–12, and 24–27. Appeal Br. 5. We
have jurisdiction under 35 U.S.C. § 6(b). Oral arguments were heard on
December 13, 2021. A transcript of that hearing will be added to the record
once available.
We reverse, and we enter a new ground of rejection.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest is NIPPON STEEL
CORPORATION. Appeal Br. 1.
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THE PRESENT INVENTION
Appellant discloses:
[B]y modeling the forming tool as an imaginary two-layer
structure including a surface layer that contacts the metal plate
and a base body that supports the surface layer, and imparting the
characteristics of the elastic body or the elasto-plastic body to the
surface layer, and imparting the characteristics of the rigid body
to the base body, and thus the present invention has been created.
Spec. ¶ 10 (emphasis added).2
CLAIMED SUBJECT MATTER
Claims 1 and 12 are illustrative of the claimed subject matter
(emphasis, formatting, and bracketed material added):
1. A forming simulation method for simulating forming of a metal
plate by a forming tool by using a finite element method, the
forming simulation method comprising:
[A.] a metal plate model setting step for setting a metal plate
model representing the metal plate;
[B.] a forming tool model setting step for setting a forming
tool model that represents the forming tool; and
[C.] an analysis step for simulating forming of the metal plate
by the forming tool, by using the metal plate model and
the forming tool model,
[D.] wherein the forming tool model setting step includes a
first setting step for setting a first forming tool model by
using a model setting method for setting a finite element
model for use in simulating forming of the metal plate by
the forming tool by using the finite element method, by a
processor included in a computer, the model setting
method including:

2 Appellant repeatedly uses the term “imaginary” in describing the invention.
Spec. ¶¶ 12, 26, 33, 36, 45 (six times), 47, 49, 54, 81–86.
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[E.] modeling the forming tool including a punch and a die as
a two-layer structure including a surface layer and a base
body by[:]
[i.] [a.] setting at least a part of a metal plate contacting
surface that contacts the metal plate, in the
forming tool model, as the surface layer and
[b.] modeling the surface layer with characteristics of
an elastic body or an elasto-plastic body;
[ii.][a.] setting a part that supports the surface layer in the
forming tool model, as the base body and
[b.] modeling the base body with characteristics of a
rigid body; and
[iii.] providing the surface layer model and base body
model as the finite element model in a memory in
the computer, the finite element model reflecting an
elastic deformation of the forming tool surface, and
[F.] wherein a thickness of the surface layer is 1.0 to 10 mm.
12. A production method of a forming tool for designing and
producing the forming tool by using the forming simulation
method according to claim 1.
REFERENCES3
The Examiner relies on the following references:
Name Reference Date
Zhu US 2015/0039273 A1 Feb. 5, 2015
Akinobu JP 2011-251318 Dec. 15, 2011
Keum Simulation of Stamping Process of
Automotive Panel Considering Die
Deformation; AIP Conference
Proceedings 778, 90 (2005).
Aug. 9, 2005

3 All citations herein to references are by reference to the first named
inventor only.
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Firat A finite element modeling and
prediction of stamping formability of a
dual-phase steel in cup drawing;
Materials and Design 34 (2012) 32–39.
Aug. 3, 2011

This Panel cites the following additional reference:
Name Reference Date
Lee Interactive visualization of elasto-plastic
behavior through stress paths and yield surfaces
in finite element analysis; Finite Elements in
Analysis and Design 47 (2011) 496–510
2011
REJECTIONS
The Examiner rejects claims 1, 8–12, and 24–27, under 35 U.S.C.
§ 103 as being unpatentable over the combination of Akinobu, Keum, Zhu,
and Firat. Final Act. 3–15.
The contentions discussed herein as to claim 1 are dispositive as to the
§ 103 rejection. Therefore, except for our ultimate decision, we do not
address the merits of the § 103 rejection of claims 8–12 and 24–27 further
herein.
OPINION
We have reviewed the Examiner’s rejections in light of Appellant’s
Appeal Brief and Reply Brief arguments.
A.
The Examiner finds:
Regarding claim 1, Akinobu teaches . . .
modeling the forming tool model including a punch and a
die, ([0025], [0042], The punch and die, which are forming tools,
are analyzed)
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as a two-layer structure including a surface layer and a
base body by ([0018], [0024], [0025], the surface of the die is
elastic and the center of the die is rigid)
setting at least a part of a metal plate contacting surface
that contacts the metal plate, in the forming tool model, as the
surface layer and modeling the surface layer with characteristics
of an elastic body or an elasto-plastic body; ([0018], [0024],
[0025], The mold, die or punch surface is defined as an elastic
body)
setting a part that supports the surface layer in the forming
tool model, as the base body and modeling the base body with
characteristics of a rigid body; and ([0018], [0024], [0025], The
center of the mold, die or punch surface is defined as a rigid
body).
Final Act. 4–5 (emphasis omitted).
B.
Appellant raises the following argument in contending that the
Examiner erred in rejecting claim 1 under 35 U.S.C. § 103.
The Examiner has made clear error in maintaining that the
cited art teaches “setting at least a part of a metal plate contacting
surface that contacts the metal plate, in the forming tool model,
as the surface layer and modeling the surface layer with
characteristics of an elastic body or an elasto-plastic body; and
setting a part that supports the surface layer in the forming tool
model, as the base body and modeling the base body with
characteristics of a rigid body,” as recited in Appellant’s claim 1.
Appeal Br. 8 (emphasis omitted). Particularly, Appellant argues:
[I]n paragraph [0018], Akinobu does not state the base body has
the characteristics of the rigid body. Instead, Akinobu discloses
the mold is defined as an elastic body.
In paragraph [0024], Akinobu shows a conventional
example (FIG. 1 (e)) and examples (FIG. 1 (e) to (d)). Akinobu
describes a model in which all of one mold constituting the mold
model has the characteristics of an elastic body or a rigid body
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(i.e. the shell rigid body model). However, Akinobu does not
describe one mold having all of the characteristics of the above
features A), C) and E), constituting the mold model, where the
surface layer has the characteristics of the elastic body or the
elasto-plastic body and the base body has the characteristics of
the rigid body.
Appeal Br. 10 (emphasis added).
Akinobu does not disclose a mold such that only the
surface vicinity of the mold is modeled as the elastic body.
Appeal Br. 11.
C.
Also, Appellant raises the following argument in contending that the
Examiner erred in rejecting claim 1 under 35 U.S.C. § 103.
[From] Fig. 1 of Akinobu, the Examiner interprets the
center portion of die 2 [at Fig. 1(c) and (d)] to have characteristics
of a rigid body, while relying on the contacting surface of die 2
to have characteristics of an elastic body. However, this
interpretation is wholly inconsistent with the clear teachings of
Akinobu.
. . .
As can be seen from [paragraphs 18, 24, and 25], Akinobu
describes 5 different examples of mold models, corresponding to
Figs. l(a)-l(e), each including a die 2, holder 3, and punch 4.
However, nowhere does Akinobu describes a center portion, i.e.,
the center of die 2 identified by the Examiner in the annotated
Figs. l(c) and l(d) of Akinobu, having different characteristics
than a contacting surface, i.e., the contacting surface of die 2.
Reply Br. 3–4.
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D.
As articulated by the Federal Circuit, the Examiner’s burden of
proving non-patentability is by a preponderance of the evidence. See In re
Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985) (“preponderance of the
evidence is the standard that must be met by the PTO in making rejections”).
“A rejection based on section 103 clearly must rest on a factual basis[.]” In
re Warner, 379 F.2d 1011, 1017 (CCPA 1967). “The Patent Office has the
initial duty of supplying the factual basis for its rejection. It may not . . .
resort to speculation, unfounded assumptions or hindsight reconstruction to
supply deficiencies in its factual basis.” Id. We conclude the Examiner’s
analysis fails to meet this standard because the rejection does not adequately
explain the Examiner’s findings of fact.
E.
We agree with Appellant that the Examiner’s articulated rational
does not reasonably support an obviousness conclusion that Akinobu
describes one mold “where the surface layer has the characteristics of the
elastic body or the elasto-plastic body and the base body has the
characteristics of the rigid body.” We determine that the Examiner’s
reliance on Akinobu is insufficient to show it would have been obvious to
provide a mold, “where the surface layer has the characteristics of the elastic
body or the elasto-plastic body and the base body has the characteristics of
the rigid body,” in the manner claimed.
We conclude, consistent with Appellant’s argument, that there is
currently insufficient articulated reasoning to support the Examiner’s finding
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that the references teach, suggest, or otherwise render obvious part E.i.a.–
E.ii.b., as required by claim 1.
Therefore, we conclude that there is insufficient articulated reasoning
to support the Examiner’s final conclusion that claim 1 would have been
obvious to one of ordinary skill in the art at the time of Appellant’s
invention in view of the cited combination of references.
F. NEW GROUNDS OF REJECTION
The prosecution of the application on appeal before us included a
rejection under 35 U.S.C. § 101, but that rejection was withdrawn by the
Examiner. Final Act. 2. We review this issue de novo and conclude that the
Examiner is mistaken in concluding that claims 1, 8–12, and 24–27 are
directed to eligible subject matter.
Pursuant to our authority under 37 C.F.R. § 41.50(b), we reject claims
1, 8–12, and 24–27 under 35 U.S.C. § 101 because the claimed invention is
directed to patent-ineligible subject matter.
F.1. Section 101
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 U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to
include implicit exceptions: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573
U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-part framework, described in Mayo and Alice.
Alice, 573 U.S. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
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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,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making waterproof 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))).
In Diehr, the claim at issue recited a mathematical formula, but the
Court held that “a claim drawn to subject matter otherwise statutory does not
become nonstatutory simply because it uses a mathematical formula.”
Diehr, 450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as
nothing more than a process for molding rubber products and not as an
attempt to patent a mathematical formula.”). Having said that, the Court
also indicated that a claim “seeking patent protection for that formula in the
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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. (citation omitted)
(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 part
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 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.
F.2. USPTO § 101 Guidance
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101.4 The Manual of

4 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (“2019 Revised Guidance”). In response to received public
comments, the Office issued further guidance on October 17, 2019,
clarifying the 2019 Revised Guidance. USPTO, October 2019 Update:
Subject Matter Eligibility (the “October 2019 Update”). “All USPTO
personnel are, as a matter of internal agency management, expected to
follow the guidance.” 2019 Revised Guidance, 84 Fed. Reg. at 51; see also
October 2019 Update at 1.
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Patent Examining Procedure (“MPEP”) now incorporates this revised
guidance and subsequent updates at § 2106 (9th ed. Rev. 10.2019, rev. June
2020).5
Under MPEP § 2106, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into a
practical application (“Step 2A, Prong Two”).6
MPEP § 2106.04(a) and § 2106.04(d).
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
Step 2B, to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional activity” in the field; 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.

5 All references to the MPEP are to the Ninth Edition, Revision 10.2019
(Last Revised June 2020), unless otherwise indicated.
6 “Examiners evaluate integration into a practical application by:
(1) identifying whether there are any additional elements recited in
the claim beyond the judicial exception(s); and (2) evaluating those
additional elements individually and in combination to determine
whether they integrate the exception into a practical application . . . .”
MPEP § 2106.04(d)II.
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MPEP § 2106.05(d).
F.3. Panel’s Analysis
F.3.a. 2019 Revised Guidance Step 2A, Prong 1
F.3.a.i. Claim 1
Our review determines that claim 1 recites a forming simulation
method for simulating forming of a metal plate by using a finite element
method:
A forming simulation method comprising:
[1.A.] a metal plate model setting step for setting a metal plate
model representing the metal plate;
[1.B.] a forming tool model setting step for setting a forming
tool model that represents the forming tool; and
[1.C.] an analysis step for simulating forming of the metal
plate by the forming tool, by using the metal plate model
and the forming tool model,
[1.D.] wherein the forming tool model setting step includes a
first setting step for setting a first forming tool model by
using a model setting method for setting a finite element
model for use in simulating forming of the metal plate by
the forming tool by using the finite element
method . . . the model setting method including:
[1.E.] modeling the forming tool including a punch and a die
as a two-layer structure including a surface layer and a
base body by[:]
[i.] [a.] setting at least a part of a metal plate contacting
surface that contacts the metal plate, in the
forming tool model, as the surface layer and
[b.] modeling the surface layer with characteristics of
an elastic body or an elasto-plastic body;
[ii.][a.] setting a part that supports the surface layer in the
forming tool model, as the base body and
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[b.] modeling the base body with characteristics of a
rigid body; and
[iii.] providing the surface layer model and base body
model as the finite element model . . ., the finite
element model reflecting an elastic deformation of
the forming tool surface, and
[1.F.] wherein a thickness of the surface layer is 1.0 to 10 mm.
Claim 1 (emphasis, formatting, and bracketed material added).
F.3.a.ii. Step 2A, Prong 1 Conclusion
We determine that claim 1 relates to a process for analyzing by
performing a calculation by modeling an analysis target (i.e., “the forming
tool is modeled as the imaginary two-layer structure including the surface
layer that contacts the metal plate and the base body that supports the surface
layer,” Spec. ¶ 36), and presenting the results of the analysis (“In general,
the forming simulation of a metal plate by the finite element method
performs calculation by modeling an analysis target as a shell element . . . .”
Spec. ¶ 3 (emphasis added)). Like the “system for developing simulation
models” in Simio, we determine that such calculation is a series of abstract
process steps. See Simio, LLC v. FlexSim Software Prods., Inc., 983 F.3d
1353 (Fed. Cir. 2020) (making simulation models by graphical modeling
rather than programming is an abstract idea).
At page 5 of the April 6, 2020, Non-Final Action, the Examiner
concludes:
The claim includes the additional elements of a punch, die,
computer, memory, metal plate, forming tool, finite element
model, forming tool surface.
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We disagree except for “by a forming tool” of the preamble of claim 1
(discussed infra). The body of claim 1 recites these limitations only as
abstract elements. This is consistent with Appellant’s Specification. For
example:
In the forming tool model 10B illustrated in FIG. 3, the die model
12, the punch model 13, and the blank holder model 14 are each
modeled as an imaginary two-layer structure including a surface
layer and a base body.
Spec. ¶ 33 (emphasis added).
Claim 1 is a process that, under its broadest reasonable interpretation,
covers performance of the process in the mind or with the aid of pencil and
paper. There is nothing, beyond using the memory in a computer (discussed
infra), in the claim elements that preclude the process steps from being
performed in the mind or with a pencil and paper, and a concept performed
in the human mind is identified in the 2019 Revised Guidance as an
abstract idea in the form of a mental process. MPEP § 2106.04(a). We,
therefore, conclude that claim 1 recites an abstract idea.
F.3.b. 2019 Revised Guidance Step 2A, Prong 2
Having determined that claim 1 recites an abstract idea, we now turn
to whether claim 1 is directed to that abstract idea, or instead integrates the
judicial exception into a practical application.
F.3.b.i. Claim 1
Beyond the abstract ideas discussed above, claim 1 recites additional
limitations of (a) simulating forming of a metal plate “by a forming tool”
(emphasis added), (b) “by a processor included in a computer,” and (c) “in a
memory in the computer.”
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As to limitation (a), “by a forming tool” in the preamble of claim 1,
this limitation merely sets forth the field of use or intended environment in
which to apply the judicial exception. As explained by the Supreme Court, a
claim directed to a judicial exception cannot be made eligible “simply by
having the applicant acquiesce to limiting the reach of the patent for the
formula to a particular technological use.” Diehr, 450 U.S. at 192 n.14.
Beyond claiming a field of use or intended environment, we do not find
where Appellant discloses any particular non-abstract steps for producing an
actual physical forming tool to be used during forming an actual metal plate.
Spec. ¶ 4. Nor do we find where Appellant discloses how such an actual
physical forming tool or metal plate would structurally differ from the prior
art forming tools or metal plates.
As to limitations (b) and (c), we determine that claim 1 does not
“focus on a specific means or method that improves the relevant
technology,” but is “directed to a result or effect that itself is the abstract
idea and merely invoke[s] generic processes and machinery.” McRO, Inc. v.
Bandai Namco Games America Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016).
This is not enough to transform an abstract idea into patent-eligible subject
matter. See, e.g., Alice, 573 U.S. at 225–26 (explaining that claims that
“amount to ‘nothing significantly more’ than an instruction to apply the
abstract idea . . . using some unspecified, generic computer” “is not ‘enough’
to transform an abstract idea into a patent-eligible invention” (quoting Mayo,
566 U.S. at 77, 79)); Intellectual Ventures I LLC v. Capital One Fin. Corp.,
850 F.3d 1332, 1342 (Fed. Cir. 2017) (“[T]he claim language here provides
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only a result-oriented solution, with insufficient detail for how a computer
accomplishes it.”).
At the hearing on December 13, 2021, when informed of this potential
new ground of rejection, Appellant argued that the present claim was
directed to a practical application in the field of simulation. We disagree.
Rather, we determine that the invention is directed to an abstract application
within the field of simulation. Such an abstract idea itself, “cannot supply
the inventive concept that renders the invention ‘significantly more’ than
that abstract idea.” Simio, 983 F.3d at 1364. Also, we cite Lee at Figures 3–
24 as exemplary in the simulation art of the abstract nature of “various
possibilities of graphically visualizing elasto-plastic behavior simulated by
finite element analysis.”
F.3.b.ii. Step 2A, Prong 2 Conclusion
We determine that as to claim 1, the claimed invention does not
improve the functioning of the computer itself, or improve any other
technology or technical field. We conclude that claim 1 does not integrate
the judicial exception into a practical application. We determine claim 1
does not recite:
(i) an improvement to the functioning of a computer;
(ii) an improvement to another technology or technical field;
(iii) an application of the abstract idea with, or by use of, a
particular machine;
(iv) a transformation or reduction of a particular article to a
different state or thing; or
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(v) other meaningful limitations beyond generally linking the
use of the abstract idea to a particular technological
environment.
See MPEP §§ 2106.05(a)–(c), (e)–(h). We determine that claim 1 is directed
to a judicial exception, and does not integrate the judicial exception into a
practical application.
F.3.c. 2019 Revised Guidance Step 2B
For Part Two of the Alice and Mayo framework, we consider whether
the claims have an inventive concept, that is, whether the claims have
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 previously known to the
industry, specified at a high level of generality.” MPEP § 2106.05(I)(A).
F.3.c.i. Claim 1
In addition to the abstract idea, claim 1 recites additional elements of
(a) “by a processor included in a computer” and (b) “in a memory in the
computer.”
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The Office’s Berkheimer Memorandum7 requires that, when
performing an analysis to determine whether “an additional element (or
combination of elements) represents well-understood, routine or
conventional activity,” an Examiner must support such a rejection with a
written finding of one or more of the following:
2. A citation to one or more of the court decisions
discussed in MPEP § 2106.05(d)(II) as noting the well-
understood, routine, conventional nature of the additional
element(s). . . .
Berkheimer Memorandum at 4.
F.3.c.ii. Step 2B Conclusion
The additional elements recited in claim 1 add well-understood,
routine, and conventional activities. See MPEP § 2106.05(d)(II) discussing:
The courts have recognized [certain] computer functions
as well understood, routine, and conventional functions when
they are claimed in a merely generic manner (e.g., at a high level
of generality) or as insignificant extra-solution activity.
MPEP § 2106.05(d)(II) particularly notes that “performing repetitive
calculations” is a well understood, routine, and conventional function citing
Flook, 437 U.S. at 594, and similarly “storing and retrieving information in
memory” citing Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306,
1334 (Fed. Cir. 2015).
Whether we consider these additional elements individually or as an
ordered combination, these elements do not transform the nature of claim 1

7 USPTO memorandum issued on April 19, 2018, titled “Changes in
Examination Procedure Pertaining to Subject Matter Eligibility, Recent
Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.).”
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into a patent-eligible application. These elements are recited at a high level
of generality, and there is no indication that these elements override the
conventional use of known features or involve an unconventional
arrangement or combination of elements.
We determine that beyond the abstract idea, claim does not recite:
a specific limitation other than what is well-understood, routine
and conventional in the field, for instance because it is an
unconventional step that confines the claim to a particular useful
application of the judicial exception.
See MPEP § 2106.05(d).
F.3.d. Claims 8–11 and 24–27
As to claim 10, we conclude that it is directed to patent-ineligible
subject matter for the same reasons discussed supra as to claim 1.
As to claims 12 and 27, we conclude that they merely restate the field
of use or intended environment (“for designing and producing the forming
tool by using the forming simulation method”) in which to apply the judicial
exception.
As to claims 8, 9, 11, and 24–26, we conclude that they merely recite
further details of the judicial exception.
We do not find that these claims recite additional elements which
integrate the identified abstract idea into a practical application or amount to
significantly more than the identified abstract idea.

Appeal 2021-004918
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20
CONCLUSION
Appellant has demonstrated the Examiner erred in rejecting claims 1,
8–12, and 24–27 as being unpatentable under 35 U.S.C. § 103.
The Examiner’s rejection of claims 1, 8–12, and 24–27 as being
unpatentable under 35 U.S.C. § 103 is reversed.
We newly reject claims 1, 8–12, and 24–27 under 35 U.S.C. § 101 as
directed to patent ineligible subject matter without significantly more.
DECISION SUMMARY
In summary:
Claims
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed New
Ground
1, 8–12,
24–27
103 Akinobu, Keum,
Zhu, Firat
1, 8–12,
24–27

1, 8–12,
24–27
101 Eligibility 1, 8–12,
24–27
Overall
Outcome
1, 8–12,
24–27
1, 8–12,
24–27
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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
Appeal 2021-004918
Application 15/318,836

21
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. . . .

Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.

REVERSED; 37 C.F.R. § 41.50(b)