ORACLE INTERNATIONAL CORPORATIONDownload PDFPatent Trials and Appeals BoardMay 21, 20202019006666 (P.T.A.B. May. 21, 2020) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 14/482,185 09/10/2014 Brian VOELZ ORA140740(O-325) 3399 51444 7590 05/21/2020 Kraguljac Law Group/Oracle 4700 Rockside Road Summit One, Suite 510 Independence, OH 44131 EXAMINER ROSEN, NICHOLAS D ART UNIT PAPER NUMBER 3625 NOTIFICATION DATE DELIVERY MODE 05/21/2020 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 BRIAN VOELZ, REBECCA MAIFELD, STEVEN GOOIJER, and NEETU SINGH ____________________ Appeal 2019-006666 Application 14/482,1851 Technology Center 3600 ____________________ Before JOHN A. EVANS, JOHN P. PINKERTON, and MICHAEL M. BARRY, Administrative Patent Judges. PINKERTON, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1–20, which constitute all of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Oracle International Corporation. Appeal Br. 2. Appeal 2019-006666 Application 14/482,185 2 STATEMENT OF THE CASE Introduction Appellant generally describes the disclosed and claimed invention as relating to tracking an order through the fulfilment process and handling order cancellations such that inventory is modified as necessary. See, e.g., Spec. ¶¶ 8–10. Claims 1, 8, and 15 are independent. Independent claim 1 is representative of the subject matter on appeal and reads as follows (with format changes and paragraph lettering added): 1. A method performed by a computer including at least a processor, the method comprising: [a] tracking, by at least the processor, a fulfillment process that is being performed to fulfill an order of one or more first items and one or more second items purchased through an electronic commerce source of a retail store location, wherein the tracking includes maintaining a status of the order, wherein the status at least indicates a physical location of each item of the order relative to an in-store inventory of the retail store location; [b] receiving, by at least the processor, a cancellation request to cancel selected items from the order, wherein the cancellation request is an electronic request from a customer to modify an ordered quantity of the one or more first items according to a cancelled quantity indicated in the cancellation request; [c] determining, by at least the processor, the status of the order in the fulfillment process by determining whether each item of the order has been picked based upon whether the physical location of each item corresponds to the item being located in the in-store inventory, the item being removed from the in-store inventory, or the item being shipped; and [d] in response to determining that the cancelled quantity exceeds a non-picked quantity of the one or more first items, updating, by at least the processor, the order by electronically Appeal 2019-006666 Application 14/482,185 3 generating and sending via a network communication a reverse pick order instructing a return of an excess quantity of the one or more first items to the in-store inventory on store shelves of the retail store location, wherein the excess quantity is a difference between the cancelled quantity and the non-picked quantity. Appeal Br. 36–37 (Claims App.). Rejection on Appeal The Examiner rejected claims 1–20 under 35 U.S.C. § 101 as being directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. Final Act. 4–21. ANALYSIS We have reviewed the Examiner’s rejections in light of Appellant’s arguments in the Appeal Brief (see Appeal Br. 7–35) and the Reply Brief (see Reply Br. 2–11), and are not persuaded the Examiner has erred. Unless otherwise noted, we adopt as our own the findings and reasons set forth by the Examiner in the Office Action from which this appeal is taken (Final Act. 4–21, 24–31), and in the Examiner’s Answer (Ans. 22–33), and we concur with the conclusions reached by the Examiner. For emphasis, we consider and highlight specific arguments as presented in the Briefs. I. REJECTION UNDER 35 U.S.C. § 101 A. Applicable Law 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: “[l]aws of nature, natural phenomena, and abstract ideas are not patentable.” Appeal 2019-006666 Application 14/482,185 4 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 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). In January 2019, the Patent Office issued guidance about this framework. See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Revised Guidance”).2 Under the Revised Guidance, to decide whether a claim is directed to an abstract idea, we evaluate whether the claim (1) recites one of the abstract ideas listed in the Revised Guidance (“Prong One”) and (2) fails to integrate the recited abstract idea into a practical application (“Prong Two”). See Revised Guidance, 84 Fed. Reg. at 51, 54. If the claim is directed to an abstract idea, 2 See also USPTO, October 2019 Patent Eligibility Guidance Update (Oct. 17, 2019), https://www.uspto.gov/sites/default/files/documents/ peg_oct_2019_update.pdf. Appeal 2019-006666 Application 14/482,185 5 as noted above, we then determine whether the claim has an inventive concept. The Revised Guidance explains 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. With these principles in mind, we first analyze whether claim 1 is directed to an abstract idea. B. Abstract Idea The Examiner determines that “claim 1 is directed to a judicial exception, viz., an abstract idea in the field of certain methods of organizing human activity, and specifically in commercial or legal interactions.” Ans. 22; see also Final Act. 4. According to the Examiner, “[t]he claimed method is directed to managing in-store inventory, and in particular to doing so by responding to orders that are followed by cancellation requests . . ., a cancellation request being a request to modify an ordered quantity of one or more items,” such that “a reverse pick order [is] generated and sent.” Ans. 22.3 The Examiner explains that [f]or example, a customer may have first placed an order for twenty chrome-plated widgets, which may have been picked from inventory. The customer then places a cancellation 3 See also Final Act. 5 (similarly explaining that the claim recites “tracking a fulfillment process and generating and sending a reverse pick order instructing a return of an excess quantity of items to an in-store inventory on store shelves of a retail store location, which is essentially an abstract idea”). Appeal 2019-006666 Application 14/482,185 6 request, saying that she only wants fifteen chrome-plated widgets, which results in the generation of a reverse pick order to take five of the chrome-plated widgets, and put them back in inventory. Id. at 22–23. Appellant contends claim 1 is not directed to an abstract idea such as a mental process, a fundamental economic practice, or the concept of transacting money, but instead “to a process that improves prior electronic processes by reciting a novel and specific combination of actions for generating reverse pick orders that control how electronically canceled quantities of items are modified in a system.” Appeal Br. 9. Appellant explains that the claims are directed to “processing electronic cancellation requests for items and controlling inventory quantities by ‘electronically generating and sending via a network communication a reverse pick order instructing a return of an excess quantity of the one or more first items to the in-store inventory on store shelves of the retail store location.’” Reply Br. 4. With respect to the “tracking,” “receiving,” and “electronically generating and sending” limitations, Appellant asserts that “[n]one of these limitations can be reasonably performed in the human mind since they require electronic actions and network communications.” Appeal Br. 10–11. Appellant further asserts that the claim does not recite a mental process because its broadest reasonable interpretation in view of the Specification does not cover performance in the mind. Id. at 11. Appellant also contends that “[t]he §101 rejection is not based on the claims ‘as a whole’” and “is replete with claim limitations being dissected and other limitations being ignored in every step of [the] analysis.” Reply Br. 3. Appeal 2019-006666 Application 14/482,185 7 1. USPTO Step 2A, Prong One Beginning with prong one of the first step of Alice, we must determine “whether the claims at issue are directed to one of those patent-ineligible concepts,” including the abstract ideas enumerated in the Revised Guidance. Alice, 573 U.S. at 217. One of the subject matter groupings identified as an abstract idea in the Revised Guidance is “[c]ertain methods of organizing human activity—fundamental economic principles or practices (including . . . mitigating risk); commercial . . . interactions (including agreements in the form of contracts; . . . sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including . . . following rules or instructions).” See Revised Guidance, 84 Fed. Reg. at 52. Here, apart from the recited method having “a computer including at least a processor,” a commerce source and request that are “electronic,” and “a network communication,” we determine claim 1 recites an abstract idea in the “certain methods of organizing human activity” grouping. See id. at 52, 52 n.13. The functions performed in steps [a]–[d] of claim 1 are a method of organizing human activity relating to order fulfilment and inventory management. Step [a] (“tracking . . . ”) recites the concept of tracking an order fulfilment process by maintaining the status of purchase orders including the in-store location of each item in the order; step [b] (“receiving . . .”) recites the concept of receiving a customer’s request to cancel selected items from the order; step [c] (“determining . . .”) recites the concept of determining the order’s status by determining the pick status of each item in the order as either located in the in-store inventory, removed therefrom, or Appeal 2019-006666 Application 14/482,185 8 shipped; and step [d] (“updating . . . by . . . generating and sending . . .”) recites the concept of determining that one or more items has been picked for the order and instructing a return of those items back to the in-store inventory. We agree with the Examiner that steps [a]–[d] recite an abstract idea—tracking an order fulfillment process (including order status) and managing in-store inventory in response to order cancellation requests— which is in the certain methods of organizing human activity grouping. See Revised Guidance, 84 Fed. Reg. at 52 n.13. The claimed invention is similar to court-identified abstract ideas such as “monitoring locations, movements, and load status of shipping containers within a container-receiving yard, and storing, reporting and communicating this information in various forms,”4 and the ‘“intermediated booking and tracing of shipping containers.”’5 The Federal Circuit also affirmed a PTAB decision that determined methods and systems for electronic, network-based, inventory management and tracking, including the restocking of items, recited patent-ineligible subject matter. Life Techs. Corp. v. Unisone Strategic IP, Inc., CBM2016-00025, 2017 WL 2713466, at *10 (PTAB June 23, 2017), aff’d sub nom, Unisone Strategic IP, Inc. v. Life Techs. Corp., 745 F. App’x 166, 167 (Fed. Cir. 2018). And, to the extent claim 1 recites the concepts of receiving and sending data, these are common examples of inconsequential steps the courts have determined insufficient to render an otherwise ineligible claim patent- eligible. See MPEP § 2106.05(g); Revised Guidance, 84 Fed. Reg. at 55 4 Wireless Media Innovations, LLC v. Maher Terminals, LLC, 100 F. Supp. 3d 405, 413 (D.N.J. 2015), aff’d, 636 F. App’x 1014 (Fed. Cir. 2016). 5 GT Nexus, Inc. v. Inttra, Inc., No. C 11-02145-SBA, 2015 WL 6747142, at *4 (N.D. Cal. 2015), aff’d, 669 F. App’x 562 (Fed. Cir. 2016). Appeal 2019-006666 Application 14/482,185 9 n.31; see also Bancorp Servs, L.L.C. v. Sun Life Assur. Co. of Can., 771 F. Supp. 2d 1054, 1066 (E.D. Mo. 2011), aff’d, 687 F.3d at 1266 (explaining that “storing, retrieving, and providing data . . . are inconsequential data gathering and insignificant post solution activity”). Contrary to Appellant’s arguments, we find the Examiner’s § 101 analysis was adequate—it was based on the claims as a whole and did not improperly dissect or ignore any limitations. See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011). Our review of the Examiner’s Step 2A analysis indicates that the Examiner considered the underlying steps of claim 1 as a basis for describing and explaining the recited abstract idea. See, e.g., Final 4–5, Ans. 22–23. The Examiner’s approach is consistent with USPTO guidance and case law precedent, which support reasonably synthesizing the claim language when identifying a recited abstract idea. See, e.g., Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in [P]etitioners’ application explain the basic concept of hedging, or protecting against risk,” which “is an unpatentable abstract idea.”). In addition, the Examiner specifically explains in the Answer why those limitations that were allegedly ignored were in fact considered. See Ans. 24–25, 26–27; see also discussion for Step 2A, Prong Two, infra. Although Appellant is correct that the claim recites computing elements for performing various functions electronically, this is not the focus of the claim. Rather, as the Examiner explains, the claim is merely “using a computer as a tool to perform an abstract idea.” Id. at 24. Likewise, the Specification casts the invention not as an improvement to electronic or networking technology itself, but rather as a way to improve inventory management by efficiently and accurately managing in-store Appeal 2019-006666 Application 14/482,185 10 inventories in response to order cancellation requests (see, e.g., Spec. ¶¶ 3, 9) that uses generic computing elements as tools. See, e.g., id. ¶¶ 1, 2, 8, 11, 12, 20, 21, 37, 50, 60–70, 74–76, Figs. 1, 3. As is the case here, the mere nominal recitation of generic computing element(s) does not take the claim out of the certain methods of organizing human activity grouping. See Revised Guidance, 84 Fed. Reg. at 52 n.14. Appellant asserts that claim 1 is patent-eligible because it recites a novel and specific combination of actions. Appeal Br. 9. But “‘novelty’ . . . is of no relevance in determining . . . patentable subject matter.” Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1315 (Fed. Cir. 2016) (emphasis omitted) (quoting Diehr, 450 U.S. at 188–89). And even though the limitations of claim 1 may be specific, limiting an abstract idea to a particular field of use in this manner does not convert an otherwise ineligible concept into an inventive one. See Revised Guidance, 84 Fed. Reg. at 55nn. 31–32. In other words, that the claimed invention may perform a specific set of rules that provides a novel or non-obvious result does not necessarily render the claim non-abstract. See, e.g., Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014) (determining for a specific method of advertising and content distribution, that although “some of the eleven steps were not previously employed in this art,” that was “not enough—standing alone—to confer patent eligibility upon the claims at issue.”); accord Netflix, Inc. v. Rovi Corp., 114 F. Supp. 3d 927, 942 (N.D. Cal. 2015), aff’d, 670 F. App’x 704 (Fed. Cir. 2016). 2. USPTO Step 2A, Prong Two Because we determine that claim 1 recites an abstract idea, we turn to prong two of the first step of the Alice analysis. See Revised Guidance, 84 Appeal 2019-006666 Application 14/482,185 11 Fed. Reg. at 51. In doing so, we consider whether there are any additional elements beyond the recited abstract idea(s) that, individually or in combination, “integrate the [abstract idea(s)] into a practical application, using one or more of the considerations laid out by the Supreme Court and the Federal Circuit.”6 Id. at 54–55. Claim 1 recites additional elements for performing the recited steps, including “a computer including at least a processor,” a commerce source and request that are “electronic,” and “a network communication.” The Examiner determines that the claims do not recite any additional elements that integrate the abstract idea into a practical application. Ans. 23–28; see Final Act. 4–5 (for Step 2A, determining that the claims were directed to an abstract idea), see also id. at 5–7 (for Step 2B, explaining how additional claim limitations are not technological advances or improvements, or merely generic computing elements). Appellant argues that claim 1 “integrates any alleged judicial exception into a practical application” because [a] system that receives an electronic cancellation request for selected items and determines “whether the physical location of each item corresponds to the item being located in the in-store inventory, the item being removed from the in-store inventory, or the item being shipped” is a practical application that allows the system to electronically determine the status of the order and the physical location of the items. 6 We acknowledge that some of these considerations may be properly evaluated under Step 2 of Alice (Step 2B of the Revised Guidance). Solely for purposes of maintaining consistent treatment within the Office, we evaluate it under Step 1 of Alice (Step 2A, Prong Two, of the Revised Guidance). See Revised Guidance, 84 Fed. Reg. at 54–55. Appeal 2019-006666 Application 14/482,185 12 Appeal Br. 12. Appellant adds that “updating the order ‘by electronically generating and sending via a network communication a reverse pick order instructing a return of an excess quantity . . .’ is also a practical application for controlling an inventory of items and item orders.” Id. at 13. Appellant’s arguments are not persuasive. Rather, we agree with the Examiner’s finding that the recited computing elements and functionality are “merely us[ing] a computer as a tool to perform an abstract idea”—they are neither the focus of the claim, nor do they provide a technological advance or improvement or require no more than generic computing elements performing generic computing functions. See Ans. 23–24; Final Act. 5–7; see also Revised Guidance, 84 Fed. Reg. at 55. The Examiner’s determinations are amply supported by Appellant’s Specification, which describes embodiments of the recited computing elements and functionality in no more than generic terms. See, e.g., Spec. ¶¶ 1, 2, 8, 11, 12, 20, 21, 37, 50, 60–70, 74–76, Figs. 1, 3. Accordingly, we determine that claim 1 does not integrate the judicial exception into a practical application, and, thus, is directed to the judicial exception. In particular, we determine claim 1 does not recite: (i) an improvement to the functioning of a computer or to any other technology or technical field; (ii) an application of the abstract idea with, or by use of, a particular machine; (iii) a transformation or reduction of a particular article to a different state or thing; (iv) other meaningful limitations beyond generally linking the use of the abstract idea to a particular technological environment; or (v) additional elements amounting to more than mere instructions to apply an exception. See MPEP §§ 2106.05(a)–(c), (e)–(h). Appeal 2019-006666 Application 14/482,185 13 Appellant further argues that the Examiner erred because the § 101 rejection (1) fails to consider whether the claim is directed to an improvement; (2) disregards or ignores the explicit limitations of the claim, including processing on-line orders as electronic requests; and (3) bases the reasoning on elements allegedly being “well-known, routine, and conventional,” which the Revised Guidance states is a consideration under Step 2B, not Step 2A. Appeal Br. 12–14, 15–16. We are not persuaded by Appellant’s arguments. Even though the Final Office Action’s § 101 analysis does not expressly state that claim 1 is not “directed to an improvement,” e.g., in computers or another technology, it does so implicitly because, for each step of claim 1, it explains that the step can be performed either mentally, with pen or paper, or by a generic processor, or that it is not a technological advance or improvement. See Final Act. 5–7. In the Answer, the Examiner also addresses whether the claims are directed to an improvement by analogizing them to those in TLI Communications,7 which were “not directed to a specific improvement to computer functionality,” but instead “to the use of conventional or generic technology in a nascent but well-known environment.” Ans. 26. The “Examiner submits, therefore, that using at least one processor, and generating and sending a reverse pick order via a network communication, should also not be taken to make otherwise abstract activity eligible for a patent.” Id. The Examiner’s Answer further explains that any recited improvements in Appellant’s invention “are not technological in nature,” and that the “specification does not disclose, nor do 7 TLI Communications LLC v. AV Automotive LLC, 823 F.3d 607, 612 (Fed. Cir. 2016). Appeal 2019-006666 Application 14/482,185 14 the claims recite, technological means improving upon the prior art.” Id. at 25. And while Appellant is correct that the “well-understood, routine, and conventional” analysis should be considered under Step 2B, not Step 2A, this is precisely what the Examiner did. See Final Act. 5–7 (“well-known, routine, and conventional” determinations fall under the Examiner’s identification of “Mayo test, Step.2B”); see also Ans. 28–33. In view of the foregoing, the Final Office Action and Examiner’s Answer make clear that the Examiner has not disregarded or ignored any claim limitations. For example, contrary to Appellant’s arguments, the Examiner expressly considers the recited concept of processing on-line orders. See Final Act. 4–7. In particular, the Examiner states the relevant claim elements8 are not a technological advance or improvement and takes Official notice that “placing orders via websites or other electronic commerce means (e.g., email) was well-known, routine, and conventional well before inventors’ filing date.” Id. at 5–6. The Examiner also explains in the Answer that “having the cancellation request be an electronic request is at most generally linking the use of the judicial exception to a particular technological environment or field of use, which is not indicative of integration into a practical application.” Ans. 25. Appellant next argues that “the Examiner simply considers each claim element individually and concludes it is ‘not a technological advance’, which is a clear error in the rejection.” Appeal Br. 13. According to Appellant, “the rejection is based on dissecting and considering individual 8 See, e.g., “items purchased through an electronic commerce source” and “the cancellation request is an electronic request,” as recited in claim 1. Appeal 2019-006666 Application 14/482,185 15 claim elements at a high level and concluding that only a routine and generic computer is used.” Id. at 14 (citing Final Act. 5–7). We have a different understanding of the Examiner’s rejection. We understand the rejection as considering each claim element not only individually, but also in combination, as well as the claim as a whole. This is evident, for example, from the Examiner’s statement after addressing each claim element that “[h]ence, the limitations of claim 1, whether considered separately or in combination with each other, do not raise the claimed method to significantly more than the abstract idea.” Final Act. 7 (emphasis added). The Examiner further explains that “[e]ven when considered as an ordered combination, the minimal components of applicant’s method add nothing that is not already present when they are considered individually,” and “[v]iewed as a whole, the claims simply convey the idea itself facilitated by generic computing components.” Id. at 20. These statements are more than adequate to show that the Examiner considered the claim elements in combination, as well as the claim as a whole. Nor are we persuaded that the Examiner analyzed any claim elements at an improperly “high level.” If anything, the Examiner’s analysis reflects the breadth of the claim language and its lack of specific technological components. Appellant does not present any persuasive evidence otherwise. Appellant additionally argues that “[s]ince the invention is processing on-line orders as electronic requests (e.g., ‘the cancellation request is an electronic request’, etc), the electronic system and method provides a technical mechanism for performing these multiple electronic actions in multiple different sequences that did not exist with manual transactions.” Appeal Br. 15. According to Appellant, “[t]he present electronic system is Appeal 2019-006666 Application 14/482,185 16 dependent on coordinating the sequence of transactions and the timing of those electronic transactions to ensure the system is accurate”—a problem that “does not occur in a manual transaction of a human physically buying and returning products at a store” or “with the Examiner’s interpretation of ‘lower-tech’ ways including ‘a message by a carrier pigeon.’” Id. (citing Final Act. 25–26). Claim 1’s processing of online orders as electronic requests may be a technical mechanism, but we are not convinced that it is “an unconventional technical solution to a technological problem.” Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1300–01 (Fed. Cir. 2016). Appellant points to the Specification to show that the invention solves the problem of coordinating the sequence and timing of electronic transactions received from different sources. Appeal Br. 14 (citing Spec. ¶¶ 16–17, 21–22). But the problem described in the Specification— coordinating inventory when orders are received from different sources at or around the same time—is not unique to or rooted in electronic commerce systems. See Spec. ¶¶ 16–17, 21–22. In fact, this problem existed long before the advent of computers or the internet, for merchants receiving mail or phone orders in addition to in-store orders. And while it is true that Appellant’s invention may solve this problem more quickly or accurately using computing technology as compared to a manual system, “relying on a computer to perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible.” OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015). Appeal 2019-006666 Application 14/482,185 17 3. USPTO Step 2B – Inventive Concept We now consider whether claim 1 has an inventive concept, that is, whether any additional claim elements “‘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.” Revised Guidance, 84 Fed. Reg. at 56. The Examiner determines the additional limitations of claim 1, whether considered individually or in combination,9 simply append “well- understood, routine, conventional” activities at a high level of generality and, thus, do not recite an inventive concept because: (1) “[t]here is nothing in the claim to indicate that the computer and processor are, from a technological standpoint, more than well-known, routine, and conventional,” as evidenced by Roslak,10 which “teaches, ‘[i]n general, components such as processors, memories, and interfaces are well-known’” (Final Act. 5 (citing Roslak ¶ 15)); (2) “a routine, generic, and conventional processor could 9 See Final Act. 7 (“[T]he limitations of claim 1, whether considered separately or in combination with each other, do not raise the claimed method to significantly more than the abstract idea.”) (emphasis added), see also id. at 20 (“Even when considered as an ordered combination, the minimal components of applicant’s method add nothing that is not already present when they are considered individually. Viewed as a whole, the claims simply convey the idea itself facilitated by generic computing components.”) (emphases added). 10 U.S. Patent Application Publication 2011/0320322 A1 (filed June 25, 2010, “Roslak”). Appeal 2019-006666 Application 14/482,185 18 readily be programmed to perform the step” of “tracking a fulfillment process” (id.); for “purchased through an electronic commerce source of a retail store location,” “Official notice is taken that placing orders via websites or other electronic commerce means (e.g., email) was well-known, routine, and conventional well before inventors’ filing date” (id. at 5–6); (3) the “receiving” step of claim 1 “could be performed by a well-known, routine, and conventional processor of a computer with a modem or other means for electronic communication” (id. at 6); (4) “a well-known, routine, generic, and conventional processor could readily be programmed to perform the determining” step of claim 1 (id.); (5) the final limitation of claim 1 (“in response to determining . . . , updating, by at least the processor, . . . by electronically generating and sending via a network communication a reverse pick order . . .”) is “merely a use of a well-known, routine, and conventional technology to send a particular message, official notice being taken that generating and sending messages via a network communication (webpage interaction, email, instant message, etc.) was well known,” as evidenced by Stark,11 which “teaches ‘network connections and communication of information to/from [a] computer system by way of a communication network’[] and refers to ‘well-known network interfaces’” (id. at 6–7 (citing Stark ¶ 103)); and (6) the pending claims recite functions comparable to those discussed in MPEP 2106(d)(II), which states that “[t]he courts have recognized the following 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) . . . [r]eceiving or transmitting data over a network, . . . [e]lectronic recordkeeping, . . . [and] [s]toring and retrieving information in memory” (id. at 27–28 (citing MPEP 2106(d)(II))). 11 U.S. Patent Application Publication 2013/0123978 A1 (filed May 3, 2012, “Stark”). Appeal 2019-006666 Application 14/482,185 19 Appellant asserts “[t]he combination of elements recited in the present independent claims are not well-understood, routine and conventional” and that “[p]roper evidence (as required by Berkheimer and the USPTO Berkheimer Memo of April 19, 2018) has not been provided in the record to refute this fact.” Appeal Br. 18 (citing Berkheimer v. HP Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018); Robert W. Bahr, Changes in Examination Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.), USPTO 3 (2018) (“Berkheimer Memo”)), see also id. at 18–20. Appellant contests, in particular, the Examiner’s taking of Official Notice that certain claim limitations were “well-understood, routine, and conventional” because these elements were allegedly “dissected from their entire claim limitations” and the Examiner “fails to consider the actual claim language. . . . As such, the Appellant expressly challenges the validity of such official notice” and asserts that the Examiner is required to provide other evidence according to the Berkheimer memo. Id. at 20. Appellant further argues that the Examiner’s Step 2B analysis improperly focuses only on the individual elements of claim 1 and does not provide evidence that the combination of elements is well-known, routine, and conventional. Id. at 20–24. We are not persuaded by Appellant’s arguments. As an initial matter, Appellant’s Berkheimer arguments are misplaced because Appellant has not established that the instant patent eligibility inquiry contains an underlying issue of fact. The court in Berkheimer held, among other things, that “[w]hen there is no genuine issue of material fact regarding whether the claim element or claimed combination is well- understood, routine, [and] conventional to a skilled artisan in the relevant Appeal 2019-006666 Application 14/482,185 20 field, this issue can be decided on summary judgment as a matter of law.” Berkheimer, 881 F.3d at 1368 (emphasis added). Here, although Appellant asserts that certain limitations have not been shown as well-understood, routine, and conventional, Appellant does not adequately explain why these limitations are not well-understood, routine, and conventional, nor does Appellant identify any passages from the Specification that support its assertions. See Appeal Br. 17–27; Reply Br. 8–10. In particular, Appellant asserts that “[a] generic computer (off the shelf) does not perform the recited” functions, and “[a] computer must be implemented with special functions based on the specific invention to be able to perform the specifically defined functions.” Appeal Br. 24–27. But Appellant does not provide any persuasive evidence to support these assertions. In other words, Appellant has not shown that programming a general-purpose computer to perform the recited functions of claim 1 would require any unconventional hardware or software techniques. Lawyer’s arguments and conclusory statements, which are unsupported by factual evidence, are entitled to little probative value. See, e.g., In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). Moreover, contrary to Appellant’s arguments, the record includes adequate evidence to show that the additional claim elements simply append “well-understood, routine, conventional” activities. As discussed above, the Examiner has taken Official Notice, and cited prior art and court decisions, to show the “well-understood, routine, and conventional” nature of the additional limitations of claim 1. The Examiner’s determinations are amply supported by, and fully consistent with, the Specification, which describes Appellant’s invention in a manner that requires no more than a Appeal 2019-006666 Application 14/482,185 21 general-purpose computer with generic computing elements. See, e.g., Spec. ¶¶ 1, 2, 8, 11, 12, 20, 21, 37, 50, 60–70, 74–76, Figs. 1, 3. That Appellant has challenged the Examiner’s taking of Official Notice does not compel a different result. With respect to the final limitation of claim 1 (“electronically generating and sending via a network communication”), the Examiner has also cited prior art evidence (e.g., Stark), as well as “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).” And with respect to the use of an electronic commerce source, the Background of Appellant’s own Specification, which discusses the prevalence of electronic commerce (Spec. ¶¶ 1–2), supports the Examiner’s taking of Official Notice for this long-standing economic practice. Appellant bases its arguments for Step 2B on the assertion that the Examiner must provide evidence that the combination of elements is “well-known, routine, and conventional.” However, the “appropriate question is not whether the entire claim as a whole was ‘well-understood, routine [and] conventional’ to a skilled artisan (i.e., whether it lacks novelty).” Chamberlain Grp., Inc. v. Techtronic Indus. Co., 935 F.3d 1341, 1348–49 (Fed. Cir. 2019). The determination of whether the additional elements recited in the claim are well-understood, routine, and conventional is an analysis conducted apart from the abstract idea recited in the claim. Id. Appellant’s arguments incorrectly focus on the novelty or obviousness of the abstract idea, rather than the additionally recited elements, which we consider separately from the abstract idea. Appellant does not direct our attention to anything in the Specification that indicates the claimed components, as an ordered combination, perform anything other than Appeal 2019-006666 Application 14/482,185 22 well-understood, routine, and conventional processing functions, such as tracking, receiving, determining, manipulating, generating, and sending data. See Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017). In view of the foregoing, considering claim 1 as a whole, we determine that the additional claim elements do not provide “a specific limitation or combination of limitations that are not well-understood, routine, conventional activity in the field.” Revised Guidance, 84 Fed. Reg. at 56. Rather, these elements do no more than “simply append[] well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality.” Id. Accordingly, we agree with the Examiner that claim 1 does not have an inventive concept. 4. Conclusion Because we determine that claim 1 is directed to an abstract idea and does not contain an inventive concept, we sustain the Examiner’s rejection of claim 1 under 35 U.S.C. § 101. For the same reasons, we sustain the Examiner’s rejection under 35 U.S.C. § 101 of independent claims 8 and 15, for which Appellant does not present arguments beyond those advanced for claim 1, as well as dependent claims 2–7, 9–14, and 16–20, which were not argued separately with particularity. See Appeal Br. 7–35; Reply Br. 2–11. CONCLUSION We affirm the Examiner’s rejection of claims 1–20 under 35 U.S.C. § 101. No period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37 C.F.R. § 41.50(f). Appeal 2019-006666 Application 14/482,185 23 DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–20 101 Eligibility 1–20 AFFIRMED Copy with citationCopy as parenthetical citation