Omnex Systems, LLC

Patent Trials and Appeals Board

Sep 18, 2020

13957947 - (D) (P.T.A.B. Sep. 18, 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.
13/957,947 08/02/2013 Chandran Kymal OEM0111PUS 6402
22045 7590 09/18/2020
Brooks Kushman
1000 Town Center
22nd Floor
Southfield, MI 48075
EXAMINER
NEAL, ALLISON MICHELLE
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
09/18/2020 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):
docketing@brookskushman.com
kdilucia@brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHANDRAN KYMAL and GREGORY FRANCIS GRUSKA

Appeal 2020-001657
Application 13/957,947
Technology Center 3600

Before HUBERT C. LORIN, MICHAEL C. ASTORINO, and
NINA L. MEDLOCK, Administrative Patent Judges.

LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s Final decision to reject claims 1, 2, 10, 11, and 16.1 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies Omnex Systems LLC, as the real party in
interest. Appeal Br. 1.
Appeal 2020-001657
Application 13/957,947

2
CLAIMED SUBJECT MATTER
The claimed subject matter relates “generally relates to methods and
systems for knowledge management throughout the entire life cycle of a
product for use in product and process optimization, problem solving, and
the development of other products and services” (Spec. para. 1). Claim 16,
reproduced below with emphasis added, is illustrative of the claimed subject
matter:
16. A method comprising:
initiating a problem solver analysis tool responsive to a
product failure input with respect to a manufactured product;
populating the problem solver analysis tool with
information from a first risk prevention document having a
defined association with the manufactured product;
determining a root-cause of the product failure using the
problem solver analysis tool;
determining a corrective action to correct the root-cause
of the product failure using the problem solver analysis tool;
populating the first risk prevention document, related to a
product for which the product problem was defined, with the
determined root-cause and corrective action based on a defined
association between the first risk prevention document and the
problem solver analysis tool; and
updating a sequence of predefined tasks to manufacture
the product and a process design verification plan and report for
the product to reflect the corrective action based on the
populated first risk prevention document, responsive to
populating the first risk prevention document; and
populating a second risk prevention document, designated
to a product or process having a defined parent or child
relationship with the product for which the product problem was
defined, with the determined root-cause and corrective action.

Appeal 2020-001657
Application 13/957,947

3
REJECTION
Claims 1, 2, 10, 11, and 16 are rejected under 35 U.S.C. § 101 as
being directed to judicially-excepted subject matter.
OPINION
The Appellant argues the claims as a group. See Appeal Br. 6–10. We
select claim 16 as the representative claim for this group, and the remaining
claims 1, 2, 10, 11, stand or fall with claim 16. See 37 C.F.R.
§ 41.37(c)(1)(iv).

Introduction
35 U.S.C. § 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.”
In that regard, claim 16 covers a “process” and is thus statutory
subject matter for which a patent may be obtained.2 This is not in dispute.
However, the 35 U.S.C. § 101 provision “contains an important
implicit exception: 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)).

2 This corresponds to Step 1 of the 2019 Revised 101 Guidance which
requires determining whether “the claim is to a statutory category.” 84 Fed.
Reg. at 53. See also id. at 53–54 (“consider[] whether the claimed subject
matter falls within the four statutory categories of patentable subject matter
identified by 35 U.S.C. 101.”).
Appeal 2020-001657
Application 13/957,947

4
In that regard, notwithstanding claim 16 covers statutory subject
matter, the Examiner has raised a question of patent eligibility on the ground
that claim 16 is directed to an abstract idea.
Alice identifies a two-step framework for determining whether
claimed subject matter is directed to an abstract idea. Alice, 573 U.S. at 217.
Alice step one — the “directed to” inquiry
According to Alice step one, “[w]e must first determine whether the
claims at issue are directed to a patent-ineligible concept.” Alice, 573 U.S.
at 218 (emphasis added).
The Examiner determined that claim 16 is directed to “managing
knowledge throughout the entire life cycle of a product.” Final Act. 8.
Appellant contends that the claimed subject matter provides an
improved technical solution which, inter alia, “improves overall resource
utilization.” Reply Br. 2.
Accordingly, a dispute over whether claim 16 is directed to an abstract
idea is present. Specifically, is claim 16 directed to “managing knowledge
throughout the entire life cycle of a product” (Final Act. 8) or an improved
technical solution?

Appeal 2020-001657
Application 13/957,947

5
Claim Construction3
We consider the claim as a whole giving it the broadest reasonable
construction as one of ordinary skill in the art would have interpreted it in
light of the Specification at the time of filing.4,5,6
Claim 16 recites 7 steps: the first four involve using a “problem
solver analysis tool”; the fifth populates a “first risk prevention document”
based on information determined by the “problem solver analysis tool” (i.e.,
“a root-cause of [a] product failure” for a product and “a corrective action to
correct the root-cause of the product failure”); the sixth updates a “sequence
of predefined tasks to manufacture the product and a process design
verification plan and report for the product to reflect” the populated “first
risk prevention document”; and, the seventh populates a “second risk

3 “[T]he important inquiry for a 35 U.S.C. § 101 analysis is to look to the
claim.” Accenture Glob. Servs., GmbH v. Guidewire Software, Inc., 728 F.3d
1336, 1345 (Fed. Cir. 2013). “In Bancorp Servs., L.L.C. v. Sun Life
Assurance Co. of Can., 687 F.3d 1266, 1273 (Fed. Cir. 2012), the court
observed that ‘claim construction is not an inviolable prerequisite to a
validity determination under § 101.’ However, the threshold of § 101 must
be crossed; an event often dependent on the scope and meaning of the
claims.” Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343,
1347–48 (Fed. Cir. 2015).
4 “In determining the eligibility of respondents’ claimed process for patent
protection under § 101, their claims must be considered as a whole.”
Diamond v. Diehr, 450 U.S. 175, 188 (1981).
5 “First, it is always important to look at the actual language of the claims.
. . . Second, in considering the roles played by individual limitations, it is
important to read the claims ‘in light of the specification.’” Smart Sys.
Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1378 (Fed. Cir.
2017) (J. Linn, dissenting in part and concurring in part) (citing Enfish, LLC
v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016)), among others.
6 See 2019 Revised 101 Guidance, 84 Fed. Reg. at 52 n.14 (“If a claim,
under its broadest reasonable interpretation.”).
Appeal 2020-001657
Application 13/957,947

6
prevention document” for a “product or process having a defined parent or
child relationship with the product”.
As reasonably broadly construed, claim 16 provides for a scheme for
determining a root-cause of a product failure and a corrective action to
correct the root-cause and using that information to effect its manufacture
and that of a related second product.
Notably, the first four steps are tied to a “problem solver analysis
tool” but the last three steps are not tied to any device. The claim leaves
open the type of device one can employ to practice the last three –
“populating” a “first risk prevention document,” “updating” tasks, and
“populating” a “second risk prevention document”. Accordingly, these steps
are reasonably broadly construed as covering, at best, the use of generic
computer functions. At the very least, these can be performed by hand.
As for the limitation “problem solver analysis tool,” it appears to
cover generic problem solving methodologies. This appears to be so because
the Specification states that “[t]he one or more problem solving analysis
tools may include, but it is not limited to, a global eight discipline (8D)
analysis, A3, 5 Why, team oriented problem solving, five phase analysis,
corrective and preventive action, and/or rapid problem resolution.” Spec.,
para. 45 (emphasis added), which are well–known problem–solving
methodologies. See also id. at para. 3 (“An eight discipline (8D) problem
solving method is an example of a structured approach to resolve problems
even those that may have an ill-defined solution path.”)
Thus, the first four steps involving a “problem solver analysis tool”
are not strictly–speaking tied to any particular device but to a generic
problem–solving methodology instead. Accordingly, the first four steps are
Appeal 2020-001657
Application 13/957,947

7
also reasonably broadly construed as covering, at best, the use of generic
computer functions. At the very least, these could be performed by hand
(e.g., through the use of “spreadsheets” (Spec., para. 21)).
As for the method claimed as a whole, it, too, is not couched in
computer–enabling terms. Be that as it may, the Specification makes clear
that a “system architecture” employing generic devices may be used to
practice the claimed method. See Spec., para 26.
Putting it together, the claimed method is reasonably broadly
construed as a scheme for determining a root-cause of a product failure and a
corrective action to correct the root-cause and using that information to
effect its manufacture and that of a related second product using, at best,
generic devices.
According to the Specification, the invention provides for, inter alia, a
“knowledge system [that] may continually collect data and transmit problem
solving analysis results to risk prevention documents to ensure quality of the
current product and future products.” Spec., para. 63.
Given the method as claimed as reasonably broadly construed above
and in light of the Specification’s description of an objective of the invention
to continually collect data and transmit problem solving analysis results to
risk prevention documents to ensure quality of the current product and future
products, we reasonably broadly construe claim 16 as being directed to a
scheme for determining a root-cause of a product failure and a corrective
action to correct the root-cause and using that information to effect its
manufacture and that of a related second product. Put more succinctly,
claim 16 is directed to a problem–solving scheme.

Appeal 2020-001657
Application 13/957,947

8
The Abstract Idea7
Above, where we reproduce claim 16, we identify in italics the
limitations we believe recite an abstract idea.8 Based on our claim
construction analysis (above), we determine that the identified limitations
describe a scheme for determining a root-cause of a product failure and a
corrective action to correct the root-cause and using that information to
effect its manufacture and that of a related second product. Problem solving
in the field of product manufacture is a fundamental economic practice. It
falls within the enumerated “[c]ertain methods of organizing human
activity” grouping of abstract ideas set forth in the 2019 Revised 101
Guidance.9 2019 Revised 101 Guidance, 84 Fed. Reg. at 52.

7 This corresponds to Step 2A of the 2019 Revised 101 Guidance. Step 2A
determines “whether a claim is ‘directed to’ a judicial exception,” such as an
abstract idea. Step 2A is two prong inquiry.
8 This corresponds to Prong One (a) of Step 2A of the 2019 Revised 101
Guidance. “To determine whether a claim recites an abstract idea in Prong
One, examiners are now to: (a) Identify the specific limitation(s) in the
claim under examination (individually or in combination) that the examiner
believes recites an abstract idea.” 84 Fed. Reg. at 54.
9 This corresponds to Prong One [“Evaluate Whether the Claim Recites a
Judicial Exception”] (b) of Step 2A of the 2019 Revised 101 Guidance. “To
determine whether a claim recites an abstract idea in Prong One, examiners
are now to: . . . (b) determine whether the identified limitation(s) falls within
the subject matter groupings of abstract ideas enumerated in Section 1 of the
[2019 Revised 101 Guidance].” 84 Fed. Reg. at 54. This case implicates
subject matter grouping “(b):” “(b) Certain methods of organizing human
activity—fundamental economic principles or practices (including hedging,
insurance, mitigating risk); commercial or legal interactions (including
agreements in the form of contracts; legal obligations; advertising,
marketing or sales activities or behaviors; business relations); managing
personal behavior or relationships or interactions between people (including
social activities, teaching, and following rules or instructions).” Id. at 52.
Appeal 2020-001657
Application 13/957,947

9
Technical Improvement10 (Appellant’s Argument)
Our characterization of what the claim is directed to is similar to that
of the Examiner’s (“managing knowledge throughout the entire life cycle of
a product.”). The Examiner’s characterization is described at a somewhat
higher level of abstraction. Nevertheless, “[a]n abstract idea can generally be
described at different levels of abstraction.” Apple, Inc. v. Ameranth, Inc.,
842 F.3d 1229, 1240, 1240–41 (Fed. Cir. 2016) (“The Board’s slight
revision of its abstract idea analysis does not impact the patentability
analysis.”).
We have reviewed the record and are unpersuaded as to error in our or
the Examiner’s characterization of what claim 16 is directed to.
Appellant points to various alleged improvements. For example, on
page 6 of the Appeal Brief, Appellant argues:
In the instant claims, the system improves the maintaining and
updating of risk prevention analysis documents associated with
two disparate manufactured products, by automatically updating
an risk prevention analysis document associate with a second

10 This corresponds to Prong Two [“If the Claim Recites a Judicial
Exception, Evaluate Whether the Judicial Exception Is Integrated Into a
Practical Application”] of Step 2A of the 2019 Revised 101 Guidance. “A
claim that integrates a judicial exception into a practical application will
apply, rely on, or use the judicial exception in a manner that imposes a
meaningful limit on the judicial exception, such that the claim is more than a
drafting effort designed to monopolize the judicial exception.” 84 Fed. Reg.
at 54. One consideration, implicated here, that is “indicative that an
additional element (or combination of elements) may have integrated the
exception into a practical application” is if “[a]n additional element reflects
an improvement in the functioning of a computer, or an improvement to
other technology or technical field.” Id. at 55.

Appeal 2020-001657
Application 13/957,947

10
product, that has a defined parent or child relationship with a first
product for which risk prevention analysis was performed. Thus,
it only updates a specific document under specific circumstances,
. . . . The improvements reflected in the claims are multi–fold,
the claims serve to limit network traffic utilized by the computer
in updating documents, by constraining when updates occur, the
claims avoid the time required to manually determine, and then
update, any related product document related to family members
of the product for which FMEA [“failure mode and effect
analysis”] analysis was performed, and the claims ensure that
family member documents of the analyzed product are accurately
and completely updated with the most up-to-date information,
which adds a degree of utility to the analysis for a given product
(applying it also to all family members) and prevents failures to
update documents as well as need for duplicative analysis on a
family member when that problem was already analyzed and
solved for another family member.
See also Reply Br. 4 (“There can literally be thousands, or hundreds of
thousands, of pages of documentation saved with respect to highly complex
processes for manufacturing highly complex products, which all share
complicated interrelationships and associations. By using the technical
solution of mapping defined root causes and corrective actions to those
products or processes sharing the defined relationships, the entire technical
system is made better . . . ”).
The principal difficulty with such arguments are that they are not
commensurate in scope with what is claimed. For example, for the “claims
[to] serve to limit network traffic utilized by the computer in updating
documents” as Appellant contends, the claims must at least mention a
computer and a network. Claim 16, for example, does not. The same holds
true for Appellant’s contentions that the claims deal with “two disparate
manufactured products,” “automatically updating a[ ] risk prevention
Appeal 2020-001657
Application 13/957,947

11
analysis document associate[d] with a second product,” and “highly complex
processes for manufacturing highly complex products,” among other
contentions.
Another difficulty is that we do not find that the claim adequately
reflects an improved technical solution to the problem of, inter alia,
“ensur[ing] that family member documents of the analyzed product are
accurately and completely updated with the most up-to-date information.”
App. Br. 6.
The method as claimed describes, in very general terms, providing
(via “initiating,” “populating,” “determining,” “determining,” “populating,”
“updating,” and “populating” steps) a root-cause of a product failure and a
corrective action to correct the root-cause and using that information to
effect the product’s manufacture and that of a related second product. The
method as claimed is not focused on improving technology. Cf. Trading
Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1378, 1384 (Fed. Cir. 2019) (“The
claims are focused on providing information to traders in a way that helps
them process information more quickly, ’556 patent at 2:26–39, not on
improving computers or technology.”).
We have carefully reviewed the claim. Per our previous claim
construction analysis, claim 16 is reasonably broadly construed as covering a
scheme for determining a root-cause of a product failure and a corrective
action to correct the root-cause and using that information to effect its
manufacture and that of a related second product. We see no specific
asserted improvement in, for example, computer capabilities recited in the
claim. Rather than being directed to any specific asserted improvement in
technology, the claim supports the opposite view — that the claimed subject
Appeal 2020-001657
Application 13/957,947

12
matter is directed to a scheme for determining a root-cause of a product
failure and a corrective action to correct the root-cause and using that
information to effect its manufacture and that of a related second product
using, at best, generic devices. See Spec., e.g., para. 26.
The claim provides no additional structural details that would
distinguish any device required to be employed to practice the method as
claimed, that is, the recited “problem solver analysis tool,” from generic
counterparts.11
With respect to the “initiating,” “populating,” “determining,”
“determining,” “populating,” “updating,” and “populating” steps, the
Specification attributes no special meaning to any of these operations,
individually or in the combination, as claimed. In our view, albeit the claim
does not specifically require a computer, these are common computer
processing functions that one of ordinary skill in the art at the time of the
invention would have known generic computers were capable of performing
and would have associated with generic computers. Cf. OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015)
Beyond the abstract idea of offer-based price optimization, the
claims merely recite “well-understood, routine conventional
activit[ies],” either by requiring conventional computer activities
or routine data-gathering steps. Alice, 134 S. Ct. at 2359 (quoting
Mayo, 132 S. Ct. at 1294) . . . . For example, claim 1 recites
“sending a first set of electronic messages over a network to
devices,” the devices being “programmed to communicate,”

11 Cf. Move, Inc. v. Real Estate Alliance Ltd., 721 F. App’x 950, 954 (Fed.
Cir. 2018) (non-precedential) (“Claim 1 is aspirational in nature and devoid
of any implementation details or technical description that would permit us
to conclude that the claim as a whole is directed to something other than the
abstract idea identified by the district court.”).
Appeal 2020-001657
Application 13/957,947

13
storing test results in a “machine-readable medium,” and “using
a computerized system . . . to automatically determine” an
estimated outcome and setting a price. Just as in Alice, “all of
these computer functions are ‘well-understood, routine,
conventional activit[ies]’ previously known to the industry.”
Alice, 134 S. Ct. at 2359 (quoting Mayo, 132 S. Ct. at 1294)
(alterations in original); see also buySAFE[, Inc. v. Google, Inc.],
765 F.3d [1350,] 1355 [(Fed. Cir. 2014)] (“That a computer
receives and sends the information over a network—with no
further specification—is not even arguably inventive.”).
We find the Appellant’s contentions that the claim presents a technical
improvement unpersuasive as to error in the Examiner’s or our
characterization of what the claim is directed to because the method as
claimed fails to adequately support it. We are unable to point to any claim
language suggestive of an improvement in technology. An argument that
such an improvement exists is alone insufficient. See generally In re Glass,
474 F.2d 1015, 1019 (CCPA 1973); In re Pearson, 494 F.2d 1399, 1405
(CCPA 1974); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); and, In
re Schulze, 346 F.2d 600, 602 (CCPA 1965).
Accordingly, within the meaning of the 2019 Revised 101 Guidance,
we find there is no integration of the abstract idea into a practical
application.
Appellant also argues that
the present claims are directed to a particular, recited
methodology performed based on defined data, defined actions,
with a defined result, in a defined manner to achieve the result of
fault-cause and corrective-action identification and population
throughout parent and child documents. None of this is generic,
none of this is abstract, and none of this is routine.
Appeal 2020-001657
Application 13/957,947

14
App. Br. 9–10. According to Appellant, “[t]o understand this line of
reasoning . . . one need look no further than the recent decision in Core
Wireless.” Id at. 8. We disagree that Core Wireless supports Appellant’s
view that the “recited methodology” cannot be an abstract idea because it is
“performed based on defined data, defined actions, with a defined result, in a
defined manner to achieve the result of fault-cause and corrective-action
identification and population throughout parent and child documents.”
Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc., 880 F.3d 1356,
1359–63 (Fed. Cir. 2018) held patent eligible claims reciting an improved
user interface for electronic devices that improved the efficiency of the
electronic device, “particularly those with small screens.” See Customedia
Technologies, LLC v. Dish Network Corporation, 951 F.3d 1359, 1364 (Fed.
Cir. 2020). No such technical improvement is shown in the record before
us. What the record shows is that what is claimed is a way to determine a
root-cause of a product failure and a corrective action to correct the root-
cause and using that information to effect a product’s manufacture and that
of a related second product. What is claimed is arguably an improved way of
problem solving in the field of product manufacture not “an improvement in
the functioning of computers, particularly those with small screens” (Core
Wireless, 880 F.2d at 1363).
Applicant further points out that the whole set of limitations
serves to improve the field of fault management analysis by
allowing for a management system that allows for cross–product,
cross-component and cross-team analysis to eliminate redundant
work and improve the quality of current and future products
(through cross-update/population of identified root-causes and
corrective actions, at least).
App. Br. 10.
Appeal 2020-001657
Application 13/957,947

15
The difficulty with such an argument is that it points to the recited
steps (“initiating,” “populating,” “determining,” “determining,”
“populating,” “updating,” and “populating”) themselves, the very subject
matter that we, and the Examiner, have characterized as being an abstract
idea. Rather than showing that these steps describe a technical improvement,
Appellant points to result-based functional language that is without any
means for achieving any purported technological improvement. The “whole
set of limitations” Appellant points to – that is, determining a root-cause of a
product failure and a corrective action to correct the root-cause and using
that information to effect its manufacture and that of a related second
product via “initiating,” “populating,” “determining,” “determining,”
“populating,” “updating,” and “populating” steps – is unmoored in technical
details. By so broadly defining the inventive method, that is, by setting out
what it is aspiring to accomplish without any means for achieving it, let
alone any purported technological improvement, the claim is in effect
presenting the invention in purely result-based functional language,
strengthening our determination under Alice step one that the claim is
directed to an abstract idea. Cf. Two-Way Media Ltd. v. Comcast Cable
Commc’ns, LLC, 874 F.3d 1329, 1337 (Fed. Cir. 2017) (“Claim 1 recites a
method for routing information using result-based functional language. The
claim requires the functional results of ‘converting,’ ‘routing,’ ‘controlling,’
‘monitoring,’ and ‘accumulating records,’ but does not sufficiently describe
how to achieve these results in a non-abstract way.”). See also Uniloc USA
v. LG Elecs. USA, 957 F.3d 1303, 1308 (Fed. Cir. 2020):
The claims we held ineligible in Two-Way Media similarly failed
to concretely capture any improvement in computer
functionality. In Two-Way Media, the claims recited a method of
Appeal 2020-001657
Application 13/957,947

16
transmitting packets of information over a communications
network comprising: converting information into streams of
digital packets; routing the streams to users; controlling the
routing; and monitoring the reception of packets by the users.
874 F.3d at 1334. Two-Way Media argued that the claims solved
data transmission problems, including load management and
bottlenecking, but the claimed method was not directed to those
improvements. Id. at 1336–37. We therefore held the claims
ineligible because they merely recited a series of abstract steps
(“converting,” “routing,” “controlling,” “monitoring,” and
“accumulating records”) using “result-based functional
language” without the means for achieving any purported
technological improvement. Id. at 1337.
We have considered Appellant’s other arguments challenging the
Examiner’s determination under step one of the Alice framework and find
them unpersuasive. For the foregoing reasons, the record supports the
Examiner’s determination that claim 16 is directed to an abstract idea.

Alice step two — Does the Claim Provide an Inventive Concept?12
Step two is “a search for an ‘inventive concept’—i.e., 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 (quoting Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 73 (2012)).
In that regard, the Examiner determined, inter alia, that

12 This corresponds to Step 2B, of the 2019 Revised 101 Guidance, 84 Fed.
Reg. at 56 “if a claim has been determined to be directed to a judicial
exception under revised Step 2A, examiners should then evaluate the
additional elements individually and in combination under Step 2B to
determine whether they provide an inventive concept (i.e., whether the
additional elements amount to significantly more than the exception itself).”
Appeal 2020-001657
Application 13/957,947

17
the subject matter encompassed by the claims fails to amount to
significantly more than the abstract idea. In addition, when taken
as an ordered combination, the ordered combination adds
nothing that is not already present as when the elements are taken
individually. There is no indication that the combination of
elements improves the functioning of a computer or improves
any other technology. Their collective functions merely provide
conventional computer implementation. As evidence of routine
and conventional implementation, Applicant's disclosure
discloses a "web-based software system 100 may include a
management method that integrates PPAP and/or APQP
documents while allowing one or more analysis tools to be
implemented while enabling data sharing between documents.
Final Act. 9–10. We agree.
We addressed the matter of whether the claim presented any purported
specific asserted technical improvements in our analysis above under
step one of the Alice framework. This is consistent with the case law. See
Ancora Techs., Inc. v. HTC Am., Inc., 908 F.3d 1343, 1347 (Fed. Cir. 2018)
(“We have several times held claims to pass muster under Alice step one
when sufficiently focused on such improvements.”). Such an argument, as
the Appellant has made here, can also challenge a determination under step
two of the Alice framework. See buySAFE, 765 F.3d at 1354–55. “[R]ecent
Federal Circuit jurisprudence has indicated that eligible subject matter can
often be identified either at the first or the second step of the Alice/Mayo
[framework].” 2019 Revised 101 Guidance, 84 Fed. Reg. at 53.
Appellant’s arguments discussed above are also raised in the context
of Alice step two. See App. Br. 7 (“these arguments are presented as ‘in the
alternative’ arguments, and presentation of Step 2B analysis does not
constitute acquiescence to Step 2A, for example”). We have addressed them,
finding them unpersuasive in showing a technical improvement.
Appeal 2020-001657
Application 13/957,947

18
Particularly relevant here is Appellant’s argument that “all of the
language describing what is populated, what data is used, where the data is
drawn from, what is updated, what is included in the update, etc. are all
instances of additional elements that must be shown to be routine, or the
Step 2B analysis fails.” App. Br. 8.
In that regard, such an argument relies on the claim’s result-based
functional language as the basis for contending that the claim provides an
inventive concept. Rather than being based on any technical details, the
argument looks to the very scheme (“initiating,” “populating,”
“determining,” “determining,” “populating,” “updating,” and “populating”)
to provide a root-cause of a product failure and a corrective action to correct
the root-cause and using that information to effect its manufacture and that
of a related second product that we have characterized as being an abstract
idea. In effect, the Appellant is arguing that the abstract idea is not “routine.”
But “[g]roundbreaking, innovative, or even brilliant discovery does not by
itself satisfy the § 101 inquiry.” Ass’n for Molecular Pathology, 569 U.S.
at 591. Cf. Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307,
1315 (Fed. Cir. 2016).
Indeed, “[t]he ‘novelty’ of any element or steps in a process, or
even of the process itself, is of no relevance in determining
whether the subject matter of a claim falls within the § 101
categories of possibly patentable subject matter.” Diamond v.
Diehr, 450 U.S. 175, 188–89 (1981) (emphasis added); see also
Mayo, 132 S. Ct. at 1303–04 (rejecting “the Government’s
invitation to substitute §§ 102, 103, and 112 inquiries for the
better established inquiry under § 101”). Here, the jury’s general
finding that Symantec did not prove by clear and convincing
evidence that three particular prior art references do not disclose
all the limitations of or render obvious the asserted claims does
Appeal 2020-001657
Application 13/957,947

19
not resolve the question of whether the claims embody an
inventive concept at the second step of Mayo/Alice.
The abstract idea itself cannot amount to “‘significantly more than a patent
upon the [ineligible concept] itself.’” Alice, 573 U.S. at 218 (quoting Mayo,
566 U.S. at 73), whether or not it is routine.
We are unpersuaded that claim 16 presents an element or combination
of elements indicative of a specific asserted technical improvement, thereby
rendering the claimed subject matter sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon a scheme for
determining a root-cause of a product failure and a corrective action to
correct the root-cause and using that information to effect its manufacture
and that of a related second product.
We have reviewed the claim in light of the Specification and, as
explained above, we find the claimed subject matter insufficiently expresses
a technical improvement as a result of performing the functions as broadly
as they are recited.
We cited the Specification in our earlier discussion. It is intrinsic
evidence that the claimed “problem solver analysis tool” is conventional. In
doing so, we have followed “Changes in Examination Procedure Pertaining
to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision
(Berkheimer v. HP Inc.[, 881 F.3d 1360 (Fed. Cir. 2018)],” USPTO
Memorandum, Robert W. Bahr, Deputy Commissioner For Patent
Examination Policy, April 19, 2018 (the “Berkheimer Memo”)).
Here, the Specification indisputably shows the recited “problem
solver analysis tool” individually and in the context of the problem solving
methodology as claimed was conventional at the time of filing. Accordingly,
Appeal 2020-001657
Application 13/957,947

20
there is sufficient factual support for the well-understood, routine, or
conventional nature of the claimed “problem solver analysis tool”
individually or in the combination as claimed.
No other persuasive arguments having been presented, we conclude
that no error has been committed in the determination under Alice step two
that claim 16 does not include an element or combination of elements
circumscribing the patent-ineligible concept it is directed to so as to
transform the concept into a patent–eligible application.
We have considered all of the Appellant’s arguments (including those
made in the Reply Brief) and find them unpersuasive.
Accordingly, because we are not persuaded as to error in the
determinations that representative claim 16, and claims 1, 2, 10 and 11
which stand or fall with claim 16, are directed to an abstract idea and do not
present an “inventive concept,” we sustain the Examiner’s conclusion that
they are directed to patent-ineligible subject matter for being judicially-
excepted from 35 U.S.C. § 101. Cf. LendingTree, LLC v. Zillow, Inc.,
656 F. App’x 991, 997 (Fed. Cir. 2016) (“We have considered all of
LendingTree’s remaining arguments and have found them unpersuasive.
Accordingly, because the asserted claims of the patents in suit are directed to
an abstract idea and do not present an ‘inventive concept,’ we hold that they
are directed to ineligible subject matter under 35 U.S.C. § 101.”); see, e.g.,
OIP Techs., 788 F.3d at 1364; FairWarning IP, LLC v. Iatric Sys., Inc.,
839 F.3d 1089, 1098 (Fed. Cir. 2016).
CONCLUSION
The decision of the Examiner to reject claims 1, 2, 10, 11, and 16 is
affirmed.
Appeal 2020-001657
Application 13/957,947

21
More specifically:
The rejection of claims 1, 2, 10, 11, and 16 under 35 U.S.C. § 101 as
being directed to judicially-excepted subject matter is affirmed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 10,
11, 16
101 Eligibility 1, 2, 10, 11,
16

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).
AFFIRMED