ORACLE INTERNATIONAL CORPORATION

Patent Trials and Appeals Board

May 8, 2020

2019002616 (P.T.A.B. May. 8, 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.
14/837,584 08/27/2015 Anadi UPADHYAYA ORA150961 (O-371) 4305
51444 7590 05/08/2020
Kraguljac Law Group/Oracle
4700 Rockside Road
Summit One, Suite 510
Independence, OH 44131
EXAMINER
WILDER, ANDREW H
ART UNIT PAPER NUMBER
3627
NOTIFICATION DATE DELIVERY MODE
05/08/2020 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 ANADI UPADHYAYA
Appeal 2019-002616
Application 14/837,584
Technology Center 3600
Before MICHAEL J. STRAUSS, MIRIAM L. QUINN, and
DAVID J. CUTITTA II, Administrative Patent Judges.
QUINN, 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 1−20. See Final Act. 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. Appellant identifies the real party in interest as Oracle International
Corporation. Appeal Br. 1.
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CLAIMED SUBJECT MATTER
The claims are directed to a computerized system and method for
controlling electronic distribution of compensation. The Specification
explains that providing compensation to employees in a corporation with
global reach is a complex task. Spec. ¶ 1. Because different countries have
different norms for distributing compensation and laws, a single rule that
governs the whole corporation is not flexible enough. Id. Further, the
Specification explains the complexity of tiers of management hierarchies
where upper level management may prefer blanket policies affecting
employees in different localities. Id. ¶ 2. Thus, the Specification describes a
holistic view of maintaining compensation that incorporates a global
approval rule, but allows local rules affecting compensation for local groups
to provide flexibility. Id. ¶ 10.
Claim 15, identified by the Examiner as exemplary (Final Act. 4),
recites as follows:
15. A computer-implemented method performed by a
computing device including at least a processor that executes
instructions from a memory, the method comprising:
generating, in an electronic database, an electronic data
structure that defines a compensation group comprised of a
subset of employee records that represent a employees of a
business;
creating, in the electronic database, a local approval rule
that (a) defines criteria that are to be satisfied for approving
distribution of compensation to the compensation group and (b)
modifies compensation approval for the compensation group
from a global approval rule that defines conditions for
approving the electronic distribution of compensation and that
controls electronic distribution of compensation to all
employees of the business;
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replacing the global approval rule with the local approval
rule to change the conditions for the electronic distribution of
compensation by applying the local approval rule to the
employee records of the compensation group in place of the
global approval rule; and
applying the local approval rule to the compensation
group, in place of the global approval rule, to determine
whether the criteria are satisfied for approving the electronic
distribution of compensation to the compensation group; and
in response to determining that the local approval rule
has been satisfied, electronically distributing the compensation
to the compensation group by transmitting an electronic
communication indicating approval of the compensation to
cause the compensation to be transferred to the subset of the
employee records.
Appeal Br. 36−37 (Claim Appendix).
REJECTION
Claims 1−20 stand rejected under 35 U.S.C. § 101 for claiming
unpatentable subject matter. Final Act. 4−10.
OPINION
We review the appealed rejection for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
To the extent Appellant has not advanced separate, substantive arguments
for particular claims, or other issues, such arguments are waived. 37 C.F.R.
§ 41.37(c)(1)(iv) (2017).
For example, here Appellant argues claim 1 separately and states that
claims 10 and 15 recite similar limitations. Appeal Br. 22−24. As for the
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dependent claims, Appellant does not present argument for any dependent
claim except for generically arguing that claim 9 recites additional
combination of elements not analyzed by the Examiner as well-understood,
routine or conventional. Id. at 25−26. We, therefore, decide the appeal
based on the arguments presented for claim 1, and further address
Appellant’s contention regarding dependent claim 9 separately. See 37
C.F.R. § 41.37(c)(1)(iv).
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101. But the
Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit
exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are not
patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 216
(2014). To determine whether a claim falls within an excluded category, the
Court has set out a two-part framework, described in Mayo and Alice. Id. at
217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566
U.S. 66, 75–77 (2012)). That framework requires to first consider 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.”). If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
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eligible application.” Alice, 573 U.S. at 221 (citation and quotation marks
omitted).
The PTO has published revised guidance on the application of § 101.
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (“Guidance”). Under the Guidance, we first look to whether
the claim recites (1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes); and (2) additional elements that integrate the judicial exception
into a practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th Ed.,
Rev. 08.2017 (Jan. 2018))).
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim recites an inventive concept, by determining whether the
claim:
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, conventional” in the field (see
MPEP § 2106.05(d)); or

(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.

See Guidance. With these principles in mind, we turn to the
Examiner’s § 101 rejection.
Discussion of Claim 1
(a) The Judicial Exception—Step 2A, Prong 1 of the Guidance
The Guidance breaks the Alice/Mayo test for identifying claims
directed to judicial exceptions into two prongs. Guidance, 84 Fed. Reg. at
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53. Step 2A, Prong 1 asks whether the claims recite a judicial exception.
The Examiner identified various claim limitations that recite certain methods
of organizing human activity as abstract ideas. Final Act. 6−7 (citing, for
example, Accenture Global Svcs., Gmbh, v. Guidewire Software, Inc., 728
F.3d 1336 (Fed. Cir. 2013), which states that claims that generate tasks
based on rules to be completed upon the occurrence of an event are an
“abstract concept”). The Examiner also found that the claim recites “an idea
of itself.” Id. at 8 (citing, for example, Cybersource Corp., v. Retail
Decisions, Inc., 654 F.3d 1366 (Fed. Cir. 2011), which states that claims
directed to verifying the validity of a credit card transaction over the Internet
constitute mental processes, and, therefore, the claim recites an abstract
idea). Under the Guidance, looking to the specific limitations in claim 1, as
the representative claim, we agree with the Examiner that claim 1 recites an
abstract idea.
Under Supreme Court precedent, claims directed purely to an abstract
idea are patent ineligible. As set forth in the Guidance, which extracts and
synthesizes key concepts identified by the courts, abstract ideas include (1)
mathematical concepts, (2) certain methods of organizing human activity,
and (3) mental processes. As stated above, the Examiner finds that the claim
recites two distinct categories of abstract ideas: certain methods of
organizing human activity and mental processes. Final Act. 6−8. We agree
with the Examiner.
The following are enumerated limitations recited in claim 1, with the
italicized portions denoting the limitations the Examiner finds are abstract
ideas:
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(A) generate, in an electronic database, an electronic
data structure that defines a compensation group
comprised of a subset of employee records that
represent a sub-set of all employees of a business;
(B) create, in the electronic database, a local
approval rule that (a) defines criteria that are to
be satisfied for approving an electronic
distribution of compensation to the compensation
group and (b) modifies compensation approval for
the compensation group from a global approval
rule that defines conditions for approving the
electronic distribution of compensation and that
controls electronic distribution of compensation to
all employees of the business;
(C) replace the global approval rule with the local
approval rule to change the criteria for the
electronic distribution of compensation by
applying the local approval rule to the employee
records of the compensation group in place of the
global approval rule; and
(D) in response to determining that the local
approval rule has been satisfied for the
compensation group, electronically distribute
compensation to the compensation group by
transmitting an electronic communication
indicating approval of the compensation to cause
the compensation to be transferred to the subset of
the employee records.
Apart from additional limitations discussed separately below,
limitations A through D recite certain methods of organizing human activity,
and, in particular commercial or legal interactions. See October 2019 Patent
Eligibility Guidance Update, 5 (stating that “commercial interactions” or
“legal interactions” include subject matter relating to agreements in the form
of contracts, legal obligations, advertising, marketing or sales activities or
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behaviors, and business relations.”).2 The business relation recited in the
claim is the relationship between the employer and employee as it pertains to
the employer’s activity of issuing paychecks. Limitation A recites the
concept of a business defining a particular group of employees. Limitation
B recites the concept of creating an exception to the default rule for the
business to approve the paychecks for the identified employees. Limitation
C recites the concept of using the exception, rather than the default rule, as
the criteria for processing the paychecks for the identified employees. And
finally, limitation D recites the concept of issuing paycheck instructions in
accordance with the exception, after checking that the exception applies to
the identified employees.
As stated above, the Specification describes that a business may have
a global approval rule that applies to all employees of a business. Spec.
¶¶ 17, 20. The Specification offers an example of the global approval rule as
specifying that the compensation requires certification by managers at each
managerial level, up to the CEO, and that the paychecks will not be
distributed before the 15th of each month. Id. ¶ 23. The Specification then
provides an example of a local approval rule (or the “exception” in our
summary) such as the local laws in a specific location in India that dictate
that compensation must be provided on the 1st of each month. Id. The
approval process for the local approval rule could also change to allow for
local management approval, rather than requiring approval up to the CEO.
Id. ¶ 24. Therefore, the claim’s recited compensation group or group of
employees includes the employees that work in the specific location in India.

2 84 Fed. Reg. 55,942 (notifying the public of updated guidance available
from the USPTO website at https://www.uspto.gov/PatentEligibility).
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Id. It is therefore clear that the claims recite how a business entity sets up
rules for authorizing and processing compensation to take into account
different legal requirements of locations in which employees work.
Accordingly, we agree with the Examiner that the claim recites certain
methods of organizing human activity, and more particularly, commercial or
legal interactions.
We determine that limitations A through D also recite mental
processes. For instance, limitation A may be performed practically by the
human mind or with the aid of pen and paper by gathering the employee’s
files from a particular group (such as those employees working in a
particular city in India) or by merely listing those employees known to work
in that location. Limitation B may be performed practically by the human
mind or with the aid of pen and paper by specifying the rule that (1)
employees in the Indian city must be paid by the 1st of the month, rather than
processing the payment after the 15th of the month, and (2) the local manager
may certify the compensation. Limitation C may be performed practically
by the human mind or with the aid of pen and paper by applying these
compensation exceptions of limitation B to the particular group of
employees identified in limitation A. And limitation D may be performed
practically by the human mind or with the aid of pen and paper by sending a
message to the company’s accountant to issue paychecks to the particular
employees after verifying that compensation was approved by a local
manager and that the employees qualify for the exception (i.e., that they do
live in the relevant Indian city).
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In sum, we are persuaded that under the Guidance, claim 1 recites
certain methods of organizing human activity (commercial or legal
interactions) and mental processes.

(b) Integration into a Practical Idea—Step 2A, Prong 2 of the Guidance
Step 2A, Prong 2 asks whether the claims are “directed to” a judicial
exception or whether the claims integrate the judicial exception into a
practical application. Guidance, 84 Fed. Reg. at 53 (explaining the practical
application test responds to “a growing body of decisions . . .
distinguish[ing] between claims that are ‘directed to’ a judicial exception . . .
and those that are not”). A practical application is one where the claim “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.” Id. at 54.
For example, limitations that are indicative of “integration into a practical
application” include:
1) Improvements to the functioning of a computer, or to any
other technology or technical field —see MPEP
§ 2106.05(a);

2) Applying the judicial exception with, or by use of, a
particular machine —see MPEP § 2106.05(b);

3) Effecting a transformation or reduction of a particular article
to a different state or thing —see MPEP § 2106.05(c); and

4) Applying or using the judicial exception in some other
meaningful way beyond generally linking the use of the
judicial exception to a particular technological environment,
such that the claim as a whole is more than a drafting effort
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designed to monopolize the exception —see MPEP
§ 2106.05(e).

In contrast, limitations that are not indicative of “integration into a
practical application” include:
1) Adding the words “apply it” (or an equivalent) with the
judicial exception, or mere instructions to implement an
abstract idea on a computer, or merely uses a computer as a
tool to perform an abstract idea —see MPEP § 2106.05(f);

2) Adding insignificant extra-solution activity to the judicial
exception —see MPEP § 2106.05(g); and

3) Generally linking the use of the judicial exception to a
particular technological environment or field of use —see
MPEP § 2106.05(h).

Appellant argues that the claims are directed to an improvement to
existing technological processes. Reply 2 (stating that the “improvements of
the claims and present specification are explicit and clear and referring to the
arguments made in the Appeal Brief at pages 8−10). For instance, Appellant
argues that the improvement includes changing a “global approval rule” that
“controls electronic distribution of compensation to all employees of the
business” with a “local approval rule” that has different approval conditions
and replaces the global rule. Appeal Br. 9; see also Reply 7 (arguing that
“the present system is directed to an improvement that provides a
mechanism to adapt and modify such global rules with local rules (having
different criteria) specifically applied to a particular group of data records.”)
Thus, Appellant argues, the improvement “provides a mechanism to adapt
and modify such global rules with local rules (having different criteria)
specifically applied to a particular group of records.” Appeal Br. 9. We are
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not persuaded that the alleged “improvements” integrate the abstract idea
into a practical application.
The “global approval rule” and “local approval rule,” Appellant
argues, allegedly improve the process of electronic distribution and
approval. Id.; Reply 6 (arguing that “the claim also determines and controls
the electronic distribution process including when to electronically distribute
compensation when a local approval rule is satisfied, which also improves
accuracy of the electronic process.”). The alleged improved process,
however, is part of the abstract idea discussed above. That is, modifying the
“global approval rule” that dictates when the company distributes
paychecks, with a “local approval rule” that, for example, changes the
default paycheck date for a particular group of employees, is still a certain
method of organizing human activity and a mental process, i.e., an abstract
idea. And any improvement to render more accurate the process of issuing
compensation does not make the improvement a technological improvement.
Any alleged improvement lies in the abstract idea itself, not to any
technological improvement. See BSG Tech LLC v. BuySeasons, Inc., 899
F.3d 1281, 1287–88 (Fed. Cir. 2018).
Furthermore, the Specification confirms that any improvement alleged
by Appellant is an improvement in the business process, not a technological
improvement. According to the Specification, the “local approval rule
defines criteria that are to be satisfied for approving distribution of
compensation to the compensation group.” Spec. ¶ 35. The Specification
describes that this criteria consists of, for example, a managerial level of the
reporting hierarchy that is to certify the compensation prior to distribution.
Id. ¶ 36. Another criteria may be timeframes, completions rates,
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performance indicators or other criteria that may be tracked and used to
gauge whether compensation should be approved for the compensation
group. Id. The claim broadly recites the “local approval rule” consistent
with this general description in the Specification: it defines criteria that are
to be satisfied for approving an electronic distribution of compensation and
modifies compensation approval for the compensation group from a global
approval rule. Appeal Br. 28 (Claim Appendix). Applying this local
approval rule, therefore, merely changes the default manner in which a
business processes compensation distribution, not because the technology is
improved, but because the business process is changed: to apply one set of
criteria instead of another. In sum, we find no evidence that the technology
itself is improved.
Appellant further argues that the claim here is analogous to the
“improved process” recited in claims in Diamond v. Diehr, 450 U.S. 175
(1981), and, therefore, the claim here is patent-eligible. Appeal Br. 10.
According to Appellant, the Diehr claim and the present claim both recite
“physical actions performed based on previous conditions determined by a
computer for controlling when to perform the final action.” Id. Further,
Appellant argues Diehr’s alleged improvement of “timing conditions” as
being comparable to the claimed local approval rules, which, according to
Appellant, change the timing conditions for when the electronic distribution
is triggered. Reply 7−8.
We are not persuaded by these arguments. Diehr explained that the
claimed contribution to the art was the step of “constantly measuring the
actual temperature inside the mold” for the synthetic rubber products. 450
U.S. at 178, 179 n.5. Diehr improved the curing process for producing
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synthetic rubber. Id. The claim limitation here, argued by Appellant to be
analogous to Diehr, recites “transmitting an electronic communication . . . to
cause the compensation to be transferred to the subset of the employee
records.” Appeal Br. 10. These two “actions” are not analogous. Unlike in
Diehr, the claim here involves a generic computer implementation of
transmitting a message that states that the compensation is approved. The
claim here does not recite any technology for effecting the actual transfer of
compensation or otherwise making a tangible change in a product or the
product’s manufacture, like the claims in Diehr perform. As drafted, the
claim merely requires the sending of a message, which, as stated previously
in our analysis of the claim’s recited mental process, can be effected by a
human being sending a message, to the accounting department, informing
that it is approved to send paychecks to the selected employees. Thus, no
improvement of technology is involved. See Final Act. 2 (Examiner
concluding that “the focus of the claims is not on such an improvement in
computers as tools, but on certain independently abstract ideas that use
computers as tools.”). Rather, by “transmitting an electronic communication
indicating approval of the compensation” the claim points to post-solution
activity—the electronic message is the result of applying the new rule.
Diehr, 450 U.S. 191−192 (“[I]nsignificant post-solution activity will not
transform an unpatentable principle into a patentable process.”).
Appellant also argues that the claims are directed to a machine
implemented with special functions such that a generic computer cannot
perform the claimed functions. Appeal Br. 21−22. Appellant presents this
argument in connection with the factual inquiry regarding generic or well-
understood, routine, and conventional activity. Id. Although such a
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discussion falls under a different analysis under the Guidance, we address
here only the portions of Appellant’s argument that imply that the claim
applies the recited abstract ideas with or by the use of a special machine.
See supra, citing MPEP § 2106.05(b). We do not agree with Appellant that
the claim involves the application of the abstract ideas in a special machine.
The claim does not recite any special machine. Nor does Appellant point to
any special machine in the Specification.
Rather, we find that the Specification describes the computing
environment in which the functions are performed in a very generic manner.
For example, the Specification describes the computing device as a
computer that includes a processor, a memory, and input/output ports
operably connected by a bus. Spec. ¶ 45. The computer includes an
approval logic, which the Specification describes as a “means (e.g.,
structure: hardware, non-transitory computer-readable medium, firmware)
for performing the actions described.” Id. ¶ 46. These means, according to
the Specification may be implemented as stored computer executable
instructions that are presented to the computer as data that are temporarily
stored in memory and then executed by the processor. Id. ¶ 47. And the
processor, the Specification states, “may be a variety of various processors
including dual microprocessor and other multi-processor architectures.” Id.
¶ 49.
By describing the computing device, processor, and the approval logic
(instructions) in this manner, the Specification conveys that the claimed
functions are performed in a standard computer environment—without the
use or application of a special machine. Indeed, the Specification confirms
that the claim uses a computer as a tool to perform the abstract idea. And to
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the extent Appellant’s argument places the claim in a particular field of
electronic distribution of compensation,3 such an argument merely links the
use of the judicial exception to a particular technological environment or
field of use, such that the claim as a whole is no more than a drafting effort
designed to monopolize the exception. See Diehr, 450 U.S. at 191 (stating
that the prohibition against patenting an abstract principle “cannot be
circumvented by attempting to limit the use of the [principle] to a particular
technological environment” (citing Parker v. Flook, 437 U.S. 584, 584
(1978))); Final Act. 3 (Examiner concluding that “[a]t most, the computer
implementation involved in the claims at issue here is an attempt to limit use
of the abstract concept to a particular technological environment.”).
Finally, we address the recitation of additional elements, such as “a
computer” in the preamble, “an electronic database” in limitations A and B,
and “an electronic data structure” in limitation A.4 In particular, the claim
recites generating “in an electronic database” an “electronic structure” that
defines a compensation group comprised of a subset of employee records
that represent a sub-set of all employees of a business. And the claim recites
creating “in the electronic database,” a local approval rule. These additional
elements, alone or in combination with the remainder of the limitations

3 See Appeal Br. 9 (arguing that “Claim 1 is directed to a non-transitory
computer-readable medium that improves an existing technological process
of processing employee records, and determining and controlling an
electronic distribution process including when to electronically distribute
compensation (which is an electronic process).”).
4 We have addressed above the “electronic communication” as being post-
solution activity and the “electronic distribution of compensation” as an
attempt to link the use of the judicial exception to a particular technological
environment or field or use.
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addressed above do not add any meaningful limitations to the claims that
would indicate a practical application of the abstract ideas.
First, as stated earlier, the Specification describes the computer as a
generic computer. Spec. ¶¶ 46−49. Claim 10 also recites a “remote
computer” to which the electronic communication is transmitted. Appeal
Br. 34 (“transmitting an electronic communication to a remote computer
indicating approval of the compensation to cause the compensation to be
transferred to the subset of the employee records”). Other than receiving the
electronic communication, the “remote computer” of claim 10 performs no
other function. There is no indication that this “remote computer” is any
different from the generic computer recited generally, in claim 1. Thus, we
are persuaded that the remote computer of claim 10 is a generic computer
functioning as a generic computer component that merely receives data.
Second, the Specification describes the database and database
structure elements as generic computer components. For instance, the
database is an employee database (Spec. ¶ 13) that stores the reporting
hierarchy, or more plainly, the managerial structure of business. Id. ¶ 14.
The database also stores the employee records, which maintain information
concerning the employee such as age, position, location, and salary. Id.
¶ 18. Also, the local approval rule is created in the database. Id. ¶ 34. To
do so, one must create a data structure in the database to store the criteria for
the local approval rule and populate the data structure with the criteria. Id.
Notably, the Specification describes the “data structure” and the “database”
in functional, non-generic terms:
A “data structure,” as used herein, is an organization of
data in a computing system that is stored in a memory, a
storage device, or other computerized system. A data
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structure may be any one of, for example, a data field, a data
file, a data array, a data record, a database, a data table, a
graph, a tree, a linked list, and so on. A data structure may be
formed from and contain many other data structures (e.g., a
database includes many data records). Other examples of data
structures are possible as well, in accordance with other
embodiments.
Spec. ¶ 59. These passages convey that the database and data structure are
merely tools used in the implementation of the recited functions. There is no
identification of particular technology that is improved in either the database
or the data structure. Indeed, the database is being used for the very purpose
it is designed: to store, organize, and find data. And the data structure is
generically described, devoid of ties to any particular database technology or
structure because the Specification provides for the “data structure” to
comprise simply a data field or a data file, among other options. Id. In sum,
consistent with the descriptions of the Specification, the claim’s recited
computer elements are nothing more than the use of generic computer
components as tools to implement the combined recited abstract ideas.
We conclude, based on our analysis above, that the additional
elements, alone or in combination, do not apply the abstract idea in a
meaningful way such that the claim as a whole is more than a drafting effort
designed to monopolize the exception. For these reasons, we conclude that
claim 1 does not integrate the recited abstract idea into a practical
application, and, therefore, is directed to an abstract idea.
(c) Inventive Concept—Step 2B of the Guidance
Because we agree with the Examiner that claim 1 is “directed to” an
abstract idea, we consider whether an additional element (or combination of
elements) adds a limitation that is not well-understood, routine, conventional
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activity in the field or whether the additional elements simply append
WURC activities previously known to the industry, specified at a high level
of generality, to the judicial exception. Guidance, 84 Fed. Reg. at 23. The
Examiner’s finding that an additional element (or combination of the
additional elements) is a WURC activity must be supported with a factual
determination. Id. (citing MPEP § 2106.05(d), as modified by the
Berkheimer Memorandum5).
The Examiner finds that consistent with what the courts have
recognized, the claimed computer functions of the additional elements (such
as processor, memory, electronic database, non-transitory computer readable
medium, and remote computer) and their associated functions are well-
understood, routine, and conventional. Final Act. 9−10 (citing In re TLI
Commc’ns LLC Patent Litigation, 823 F.3d 607 (Fed. Cir. 2016); Ans. 4−5
(relying on TLI to reiterate that the combination of additional elements of at
least one processor, at least one memory, an electronic database, a non-
transitory computer readable medium, and a remote computer are well-
understood, routing and conventional and, therefore, do not amount to
significantly more than the abstract idea.)
Appellant argues that the Examiner failed to provide the fact-finding
necessary to conclude that the additional elements in the independent claims
are well-understood, conventional, and routine. Appeal Br. 12−13.
Appellant’s arguments on this point attempt to cast the Berkheimer findings
as deficient because the Examiner discussed the additional elements and not

5 “Changes in Examination Procedure Pertaining to Subject Matter
Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP,
Inc.),” April 19, 2018 (hereinafter “Berkheimer Memorandum”).
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the combination of all the recited elements. See id. (stating there is no
statement in the Specification, no court decision, no publication, and no
other fact in the record, discussing the conventional nature “of the individual
or combination of elements”). Indeed, Appellant takes the position that in
the analysis of the additional elements, the Examiner ignores all other claim
limitations, and that the Examiner’s conclusions are, therefore, improper. Id.
at 15−16; Reply 9−10. Appellant then argues that if one considers the
recited functions, not just the functions performed by the additional
components found to be generic computer components, the conclusion is
that the claim does not recite any “generic computer functions.” Id. at
16−19.
First, we agree with the Examiner that the additional limitations,
individually and as an ordered combination, consistent with our discussion
of genericness in Section 2A, prong 2 of the analysis, are well-understood,
routine, and conventional. The preamble of claim 1 is directed to non-
transitory computer-readable medium storing computer-executable
instructions that when executed by a computer cause the computer to
perform the recited functions. Although the computer is recited in the
preamble, we nonetheless inspect its role in the claim and find that it is
claimed generically, with no particular hardware, structure, or programming
that makes the computer non-conventional. Spec. ¶¶ 46−49. The “remote
computer” recited in claim 10 is also a generic computer that alone or in
combination with other elements performs well-known functions of
receiving data. The Examiner recognized as much when finding that a
processor and a memory (which independent claim 10 recites in place of a
computer executing instructions) are generically recited, where the memory
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stores instructions and the processor executes them. Appeal Br. 33 (Claim
Appendix); see also Spec. ¶ 49 (describing the processor as being a variety
of various processor and the memory includes volatile and/or non-volatile
memory); Ans. 5−6 (stating that processor and memory independently or
together with database, non-transitory computer readable medium, and
remote computer are conventional relying on TLI). The TLI court
recognized that a “server” fails to add an inventive concept because it is
simply a generic computer that performed known functions of receiving
data, extracting information from the received data, and storing digital
images in accordance with the data. TLI, 823 F.3d at 614. The Examiner
relies on TLI to make findings regarding the genericness of the recited
computer (or processor and memory), and, therefore, there is sufficient fact-
finding in the record to support the Examiner’s rejections.6
The Examiner also found the recited database is well-understood,
routine and conventional and does not add significantly more. Ans. 5−6;
TLI, 823 F.3d at 614 (relying on cases that hold reciting a generic computer
component such as a “database” fails to satisfy the inventive concept
requirement). The claim confirms that the database and its corresponding
database structure, either independently or in combination with the computer
(or processor and memory of claim 10) are conventional components. Claim
1 recites the database and the database structure as means to store and
organize the employee records and for creating the “local approval rule” in

6 Consistent with the Berkheimer Memorandum, the Examiner relied on a
citation to the TLI decision, which notes the well-understood, routine, and
conventional nature of additional elements of claim 1 (e.g., “computer,”
“database”).
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said database. There is neither functionality nor structure of the database
that alone or in combination with the other recited elements goes beyond the
generic functionality of a database. It may be that the computer needs to be
programmed and that the database needs to be set up with the particular
fields to store data in, but these are not functions that are beyond what is
required to use a generic computer and a database in the course of executing
programmed instructions and basic database functions of storing and
organizing data. Therefore, it is not persuasive for Appellant to argue that
the computer must be implemented with “special functions based on the
specific present invention to be able to perform the specifically defined
functions.” Appeal Br. 21.
It is likewise not persuasive to argue that by merely reciting the
“replacing” function, in combination with the other elements, the claim
specifies how to implement a specific computer function, and is not a
generalized use of a computer. Id. at 22. The computer functionality that
the claim recites, as stated previously, involves the use of the computer as a
tool to implement the abstract idea: i.e., a mental process or certain method
of organizing human activity consisting of following an exception to the
default mode of issuing paychecks for a particular group of employees. The
claim recites no technical detail as to how the computer implements the use
of one rule over another, such that reciting “replacing” one rule with another
becomes an inventive concept. Again, the claim does not recite any
particular software instruction, algorithm, unique data structure, or hardware
that places the function of replacing one rule with another outside the realm
of well-understood, routine, or conventional computer activity.
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Finally, we note that Appellant’s argument regarding the Examiner’s
alleged failure to analyze all claim limitations under Berkheimer is
unpersuasive. Berkheimer does not require the Examiner make a factual
finding that all claim elements in combination are well-understood, routine,
and conventional. Rather, a Berkheimer factual finding is required
for additional elements or a combination of additional elements outside of
the identified abstract idea. See Berkheimer Memorandum, 2
(“the Berkheimer decision . . . does provide clarification as to the inquiry
into whether an additional element (or combination of additional elements)
represents well-understood, routine, conventional activity”). Accordingly,
we do not find error in the Examiner’s evaluation of the additional elements
in accordance with the Office’s Berkheimer guidance.
We therefore conclude that claim 1, considered as a whole, does not
include an inventive concept. The additional limitations of claim 1 are also
recited in claims 10 and 15 (except as noted in our analysis above
concerning the processor, memory, and remote computer), and therefore, we
are not persuaded that the Examiner erred in finding that claims 10 and 15 as
a whole, do not include an inventive concept.
Discussion of Claim 9
Appellant argues that claim 9 was not analyzed by the Examiner and
that the claim recites an “additional combination of elements and
arrangement of elements that is not well-understood, routine and
conventional.” Appeal Br. 25−26. The Examiner responds that the
additional limitations of the dependent claims has been analyzed consistent
with the Berkheimer Memorandum because the Examiner identified the
additional limitations and cited court cases that recognized the computer
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functions to be well-understood, routine, and conventional. Ans. 3, 4, 6.
We do not find Examiner error.
Claim 9 recites additional limitations of receiving an electronic
communication over “a communication network,” and “a hardware
processor” (for scanning). Appeal Br. 31 (“receiving an electronic
communication over a communication network”); 32 (“monitoring . . . by
scanning, using at least a hardware processor, the subset of employee
records . . . to identify whether the criteria for the local approval rule have
been satisfied” and “wherein [the] scanning includes electronically
traversing the subset of employee records in the electronic database to
identify changes in the subset of employee records associated with the
criteria specified by the local approval rule”). The Examiner identified that
receiving, processing, and storing data, electronically scanning or extracting
data from a physical document, electronic recordkeeping, automating mental
tasks, and receiving or transmitting data over a network are recognized by
courts as functions that are well-understood, routine, and conventional.
Ans. 3 (citing the Office’s July 2015 Update on Subject Matter Eligibility
(“the 2015 Update”7)). The Examiner noted TLI and various other cases that
discuss the generic computer technology recited as additional elements of
claim 9. Id. at 3−5. For instance, we note that receiving data over a
communication network is discussed in BuySafe v. Google, Inc., 765 F.3d
1350, 1355 (Fed. Cir. 2014). Ans. 5. We also note that the scanning is
generally discussed in Content Extraction and Transmission LLC v. Wells

7 Available from the USPTO website at
https://www.uspto.gov/sites/default/files/documents/ieg-july-2015-
update.pdf.
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Fargo Bank, N.A., 776 F.3d 1343, 1358 (Fed. Cir. 2014) (discussing optical
character recognition). And we note that the further function of scanning, in
the context of monitoring changes in the employee record, using a hardware
processor, involves merely using a generic computer processor (discussed
above with respect to claim 1) to automate a mental task of reviewing
documents to identify changes in the information. The Examiner noted that
automating mental tasks is also a recognized well-understood, routine,
conventional activity identified in Gottschalk v. Benson (409 U.S. 63, 65−67
(1972)), Bancorp Services v. Sun Life (687 F.3d 1266, 1275 (Fed. Cir.
2012)), and Cybersource Corp. v. Retail Decisions, Inc., (654 F.3d 1366,
1375 (Fed. Cir. 2011)). Ans. 3−4 (citing again the 2015 Update). Viewing
these additional limitations as an ordered combination, also is well-
understood, routine, and conventional activity because the recited
components perform their expected functions: using a communication
network to receive data and using a hardware processor programmed to
analyze information in data records selected according to the received data.
Thus, we are persuaded that the record provides sufficient fact-finding
by the Examiner that the additional limitations recited in dependent claim 9,
independently, or as an ordered combination, are well-understood, routine,
and conventional computer components that do not add to the claim
anything beyond the abstract ideas. Therefore, we are not persuaded that the
Examiner erred.
CONCLUSION
For the reasons explained above, we conclude that claim 1 is directed
to an abstract idea that is not integrated into a practical application, and does
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not recite an inventive concept. We also conclude that none of the
additional limitations recited in independent claims 10 and 15 evidence that
the claims integrate the abstract idea into a practical application and that the
claims recite an inventive concept. Finally, we conclude that the Examiner
did not err in finding that the additional limitations of claim 9, independently
or as an ordered combination, constitute well-understood, routine, and
conventional components, and, therefore, claim 9 does not recite an
inventive concept.
Accordingly, we sustain the Examiner’s rejection of claim 1 under 35
U.S.C. § 101 and claims 2–20.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–20 101 Eligibility 1–20

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).
AFFIRMED