Robert A. Porter

Patent Trials and Appeals Board

Sep 19, 2019

13476796 - (D) (P.T.A.B. Sep. 19, 2019)

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.
13/476,796 05/21/2012 Robert A. Porter GCAM.P001C1 4197
30554 7590 09/19/2019
MAHAMEDI IP LAW LLP
910 Campisi Way, Suite 1E
Suite 600
Campbell, CA 95008
EXAMINER
SAINT-VIL, EDDY
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
09/19/2019 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):
uspto@m-iplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ROBERT A. PORTER
____________

Appeal 2017-0042481
Application 13/476,7962
Technology Center 3700
____________

Before BRADLEY B. BAYAT, FREDERICK C. LANEY, and
PAUL J. KORNICZKY, Administrative Patent Judges.

BAYAT, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 4, 5, 7, and 10–12, which are all the claims pending in
the Application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 Throughout this Decision, we refer to Appellant’s Appeal Brief (“Appeal
Br.”) filed June 8, 2016 and Reply Brief (“Reply Br.”) filed January 4, 2017,
the Final Office Action (“Final Act.”) mailed July 8, 2015, and the
Examiner’s Answer (“Ans.”) mailed November 4, 2016.
2 According to Appellant, the real party in interest is “GradeCam
Corporation.” Appeal Br. 3.
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CLAIMED INVENTION
Appellant’s invention “pertains generally to electronic gradebooks,
and more particularly to a computer-implemented method for inputting
grades to electronic gradebooks.” Spec. ¶ 6.
Claim 1, the sole independent claim on appeal, is reproduced below
with added formatting and bracketed matter:
1. A system for inputting data into an electronic gradebook, the
system comprising:
[(a)] a sheet;
[(b)] a data rectangle with a pre-determined geometry located on the
sheet and that contains a set of answer bubbles;
[(c)] a digital camera oriented to capture an image of the sheet and
data rectangle on the sheet;
[(d)] a computer processor coupled to the digital camera and
configured in an operating mode to perform the following operations
according to a software program in a non-transitory computer readable
medium, and without specification to an orientation of the sheet or data
rectangle in the image:
[(i)] locate and identify a rectangle on the sheet as
being the data rectangle by identifying for multiple rectangles
in the image and, for each said rectangle, determining a
geometry for the rectangle, comparing the geometry against the
pre-determined geometry of the data rectangle, designating the
rectangle as the data rectangle if the geometry matches the pre-
determined geometry, and eliminating the rectangle from
consideration as the data rectangle if the geometry does not
match the pre-determined geometry;
[(ii)] calculate a location of the set of answer bubbles
based on the pre-determined geometry of the data rectangle;
[(iii)] determine, from hand-markings in the data
rectangle, which bubbles in the set of answer bubbles are to be
considered marked answers by detecting for multiple said hand-
markings in the set of answer bubbles, calculating an intensity
of each said hand-marking in each said answer bubble, and
designating individual bubbles in the set of answer bubbles as
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marked answers when the intensity of the hand-marking in the
respective bubble exceeds a predetermined intensity threshold;
[(iv)] identify a score or result based upon the marked
answers;
[(v)] provide an output of the score or result; and
[(e)] wherein the sheet with the data rectangle containing the set of
answer bubbles, digital camera, and processor thus cooperate to transform
the multiple hand-markings within the set of answer bubbles into the
designated marked answers and the output score or result, and further such
that other rectangles on the sheet with geometries not matching the pre-
determined geometry for the data rectangle, and other hand-marked answer
bubbles not exceeding the intensity threshold for a designated marked
answer, are excluded from consideration in the output score or result by the
transformation.

Appeal Br. 35–36, Claims App.
REJECTIONS
Claims 1, 4, 5, 7, and 10–12 stand rejected under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement.
Claims 1, 4, 5, 7, and 10–12 stand rejected under 35 U.S.C. § 101 as
directed to non-statutory subject matter.
Claims 1, 4, 5, and 11 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Knowles et al. (U.S. 6,810,232 B2, iss. Oct. 26, 2004)
(“Knowles”), Kacandes et al. (U.S. 5,524,068, iss. Jun. 4, 1996)
(“Kacandes”), and Grundy, Jr. (U.S. 5,711,673, iss. Jan. 27, 1998)
(“Grundy”).
Claim 7 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Knowles, Kacandes, Grundy, and Milligan, Jr. et al. (U.S. 6,853,751 B1, iss.
Feb. 8, 2005) (“Milligan”).
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Claim 10 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Knowles, Kacandes, Grundy, and Chi et al. (U.S. 2002/0085755 A1,
pub. July 4, 2002) (“Chi”).
Claim 12 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Knowles, Kacandes, Grundy, and Loiacono (U.S. 6,042,384, iss. Mar.
28, 2000).

ANALYSIS
35 U.S.C. § 112, first paragraph
In rejecting claims 1, 4, 5, 7, and 10–12 as failing to comply with the
written description requirement, the Examiner finds the Specification fails to
disclose (1) the limitation “without specification to an orientation of the
sheet or data rectangle in the image,” and (2) the limitation “transform
the multiple hand-markings within the set of answer bubbles into the
designated marked answers and the output score or result.” Final Act.
2–3.
Whether a specification complies with the written description
requirement of 35 U.S.C. § 112, first paragraph, is a question of fact and is
assessed on a case-by-case basis. See, e.g., Purdue Pharma L.P. v.
Faulding, Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000) (citing Vas-Cath, Inc.
v. Mahurkar, 935 F.2d 1555, 1561 (Fed. Cir. 1991)). The disclosure, as
originally filed, need not literally describe the claimed subject matter
(i.e., using the same terms or in haec verba) in order to satisfy the written
description requirement. But the Specification must convey with reasonable
clarity to those skilled in the art that, as of the filing date, Appellant was in
possession of the claimed invention. See id.
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Regarding limitation (1), Appellant argues that the “Specification is
actually replete with disclosure to identify and process the rotation angle of
‘variably positionable data rectangles’ in such captured images and in order
to determine the data rectangle geometry regardless of such variable
orientation of the rectangle (FIGS. 5-15, paragraphs [0053]-[0098]; Claims
1-3).” Appeal Br. 8; Reply Br. 5 (“[T]his disclosure specifically addresses
accommodating the document and its data rectangle through variable
orientations in the image by processing the variable positionable document,
including for example through variable rotation angles.”).
In response to Appellant’s argument, the Examiner acknowledges that
the disclosure supports “‘reading an image of the document’ for finding the
data rectangle and finding completed input bubbles within the data
rectangle” but contends “[t]here is no reference to how a sheet is placed
under the camera apparatus.” Ans. 25.
We are persuaded by Appellant’s arguments because although the
Specification does not explicitly refer to the phrase “without specification to
an orientation of the sheet or data rectangle in the image,” a person of
ordinary skill in the art reviewing Appellant’s disclosure, in particular
paragraphs 54, 61, and original claim 3, would have known that Appellant
was in possession of the claimed subject matter as of the filing date.
Throughout the Specification, a data rectangle is described as being a part of
and on the surface of a document. Spec. ¶¶ 12, 16, 17. The Specification
also specifically addresses accommodating the data rectangle through
variable orientations and rotation angels with respect to a set coordinate
system by imaging the variably positionable data rectangle. Id. ¶ 54, orig.
claim 3. The Examiner acknowledges that “[a]ny object inherently remains
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the same regardless of how it is placed on a surface. The difference is in
how information written onto the object is viewed. As the object is placed
differently that information will inherently be displayed differently.” Ans.
26. As such, the Examiner ostensibly concedes and agrees with Appellants
that “geometry of the data rectangle” as recited in claim 1 and described
“throughout the Specification - is inherently orientation-agnostic, in that the
geometry of a rectangle remains the same regardless of, i.e. without
specification to, its orientation in a field of view.” Appeal Br. 9. Thus, we
agree that the claimed geometry recognition-based approach to data
rectangle recognition and related locating operations is agnostic and without
specification to the orientation of that rectangle and the document (sheet) it
is placed on. Reply Br. 5.
Accordingly, we do not sustain the written description rejection
regarding limitation (1).
We also do not sustain the written description rejection as to
limitation (2) because we disagree with the Examiner that “not all hand-
markings are considered ‘marked’ and as such the disclosure as originally
filed fails to provide sufficient support for the limitation” (Ans. 3), and that
the claim language “is broad enough to cover transforming the answer sheet
into a different answer sheet with the designated marked answers and
scoring that transformed answer sheet and output score or result.” Ans. 27.
Instead, we agree with Appellants that when limitation (e) is read in
conjunction with limitation (d)(iii) as described in paragraph 103 of the
Specification, the claimed transformation “actually occurs by deriving the
marked answers from only some of the hand markings (e.g. based on the
output score representing the intensity of pixel darkness for each bubble that
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has been marked.” Appeal Br. 11 (quoting ¶ 103). We also agree that the
Examiner appears to be misinterpreting the claim because the transformation
recited in limitation (e) “relates to the functional inter-cooperation of all
elements in the claim.” Reply Br. 6.

35 U.S.C. § 101
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step 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)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See id. 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. “A claim that recites an
abstract idea must include ‘additional features’ to ensure ‘that the [claim] is
more than a drafting effort designed to monopolize the [abstract idea].’” Id.
(alterations in original) (quoting Mayo, 566 U.S. at 77). “[M]erely
requir[ing] generic computer implementation[] fail[s] to transform that
abstract idea into a patent-eligible invention.” Id.
Recently, the PTO published revised guidance on the application of
§ 101. See 2019 Revised Patent Subject Matter Eligibility Guidance, 84
Fed. Reg. 50 (USPTO Jan. 7, 2019) (“Guidance”). Revised Step 2A, Prong
One, is an evaluation of whether the claim recites (1) any judicial
exceptions, including certain groupings of abstract ideas (i.e., (a)
mathematical concepts, (b) certain methods of organizing human activity,
and (c) mental processes). If so, Revised Step 2A, Prong Two, is an
evaluation of whether (2) the judicial exception is integrated 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, we look to 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 Step 2B, 84 Fed. Reg. at
56.
The Examiner determined that claim 1 is directed to a judicial
exception, an abstract idea. Ans. 6. In particular, the Examiner determined
that limitations (d)(i) through (d)(v) recite a mental process because
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[a] human may collect data (answer sheet information), locate
and identify a rectangle on a bubble sheet as claimed. The
human can then use the location of the rectangle to visually
determine acceptable and unacceptable hand-markings and
score the answer sheet based on the acceptable hand-markings.
It is worth noting that the locating and identifying rectangle and
hand-markings implies recognizing certain data and storing the
recognized data. In this process the human scores marked
answers by only taking into consideration the rectangle
designated to receive answers and also only consider hand-
markings meeting acceptance criteria base on the human's
visual observation. It should further be noted that reviewing
answer sheets, recognizing relevant data such as marked
answers and storing that information is similar to CET3 where
the claims have been found to be abstract by the courts.
Id. at 7.
Does claim 1 recite a judicial exception?
The Examiner determines that claim 1 is “directed to a system which
is a statutory category of invention.” Ans. 4. As such, we first consider
whether the claim recites a judicial exception. Guidance, 84 Fed. Reg. at 51.
The Guidance synthesizes key concepts identified by the courts as abstract
ideas into three primary subject-matter groupings: mathematical concepts,
certain methods of organizing human activity, and mental processes.
Id. at 52. The Guidance provides that “[m]ental processes–concepts
performed in the human mind (including an observation, evaluation,
judgment, opinion)” are abstract ideas. Id. We determine that the operations
of the processor in steps (d)(i)–(d)(iv) of claim 1 recite a mental process,
and, therefore, an abstract idea.

3 Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat. Ass’n,
776 F.3d 1343 (Fed. Cir. 2014).
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Claim 1 recites, in part, “[a] system for inputting data into an
electronic gradebook, the system comprising:” (d)(i) “locat[ing] and
identify[ing] a rectangle on the sheet as being the data rectangle by
identifying for multiple rectangles in the image and, for each said rectangle,
determining a geometry for the rectangle, comparing the geometry against
the pre-determined geometry of the data rectangle, designating the rectangle
as the data rectangle if the geometry matches the pre-determined geometry,
and eliminating the rectangle from consideration as the data rectangle if the
geometry does not match the pre-determined geometry;” (d)(ii)
“calculat[ing] a location of the set of answer bubbles based on the pre-
determined geometry of the data rectangle;” (d)(iii) “determin[ing], from
hand-markings in the data rectangle, which bubbles in the set of answer
bubbles are to be considered marked answers by detecting for multiple said
hand-markings in the set of answer bubbles, calculating an intensity of each
said hand-marking in each said answer bubble, and designating individual
bubbles in the set of answer bubbles as marked answers when the intensity
of the hand-marking in the respective bubble exceeds a predetermined
intensity threshold;” (d)(iv) “identify[ing] a score or result based upon the
marked answers.” See Claim 1 supra.
Under the broadest reasonable interpretation, steps (d)(i)–(d)(iv) of
claim 1 describe activities that can be practically performed in the human
mind. For example, locating and identifying a rectangle on a sheet of paper
by comparing the shape of the rectangle to a pre-determined shape to
identify a match (step (d)(i)) may be performed in the human mind by
simple observation. Determining a location of the answer bubbles based on
the pre-determined shape of the rectangle in step (d)(ii) may also be
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performed by observation. Determining which answer bubbles are to be
considered marked answers based on the intensity of the hand-marking in
each answer as recited in step (d)(iii) is performed by simply observing each
answer bubble to determine which bubbles are answered or filled in. In step
(d)(iv), a human can simply observe and identify a score based upon the
marked answers. All together, limitations (d)(i) through (d)(iv) encompass
mental steps for identifying a score or grade from a sheet. These limitations
recite steps that, for example, a teacher would perform to ascertain grades
from a student test. See Spec. ¶¶ 43–44.
Courts have used the phrase an idea of itself to describe an idea
standing alone such as an uninstantiated concept, plan or scheme, as well as
a mental process (thinking) that “can be performed in the human mind, or by
a human using a pen and paper.” CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011) (noting that a recited step that
utilized a map of credit card numbers to determine the validity of a credit
card transaction could be performed entirely mentally by merely
using logical reasoning to identify a likely instance of fraud by
merely observing that numerous transactions using different credit cards all
originated from the same IP address). As the Federal Circuit explained,
“methods which can be performed mentally, or which are the equivalent of
human mental work, are unpatentable abstract ideas–the ‘basic tools of
scientific and technological work’ that are open to all.’” Id. at 1371
(citing Gottschalk v. Benson, 409 U.S. 63 (1972)). “Courts have examined
claims that required the use of a computer and still found that the
underlying, patent-ineligible invention could be performed via pen and paper
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or in a person’s mind.” Versata Dev. Grp., v. SAP Am., Inc., 793 F.3d 1306,
1335 (Fed. Cir. 2015).
We further note that these steps are similar to other concepts the
courts have identified as abstract mental processes. See Synopsys, Inc. v.
Mentor Graphics Corp., 839 F.3d 1138 (Fed. Cir. 2016) (methods of logic
circuit design, comprising converting a functional description of a level
sensitive latch into a hardware component description of the latch); Digitech
Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344 (Fed. Cir.
2014) (organizing information through mathematical correlations).
In Electric Power Group, our reviewing court explained that concepts of
collecting and analyzing information, when broadly claimed, fall within the
“realm of abstract ideas”:
Information as such is an intangible. See Microsoft Corp. v. AT
& T Corp., 550 U.S. 437, 451 n.12, 127 S. Ct. 1746, 167
L.Ed.2d 737 (2007); Bayer AG v. Housey Pharm., Inc., 340
F.3d 1367, 1372 (Fed. Cir. 2003). Accordingly, we have
treated collecting information, including when limited to
particular content (which does not change its character as
information), as within the realm of abstract ideas. See,
e.g., Internet Patents, 790 F.3d at 1349; OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir.
2015); Content Extraction & Transmission LLC v. Wells Fargo
Bank, Nat'l Ass'n, 776 F.3d 1343, 1347 (Fed. Cir. 2014);
Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758
F.3d 1344, 1351 (Fed. Cir. 2014); CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011). In a
similar vein, we have treated analyzing information by steps
people go through in their minds, or by mathematical
algorithms, without more, as
essentially mental processes within the abstract-idea
category. See, e.g., TLICommc'ns, 823 F.3d at 613; Digitech,
758 F.3d at 1351; SmartGene, Inc. v. Advanced Biological
Labs., SA, 555 F. App'x 950, 955 (Fed. Cir. 2014); Bancorp
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Servs., L.L.C. v. Sun Life Assurance Co. of Canada (U.S.), 687
F.3d 1266, 1278 (Fed. Cir. 2012); CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011); SiRF
Tech., Inc. v. Int'l Trade Comm'n, 601 F.3d 1319, 1333 (Fed.
Cir. 2010); see also Mayo, 132 S. Ct. at 1301; Parker v. Flook,
437 U.S. 584, 589-90, 98 S. Ct. 2522, 57 L.Ed. 2d 451
(1978); Gottschalk v. Benson, 409 U.S. 63, 67, 93 S.Ct. 253, 34
L.Ed. 273 (1972). And we have recognized that merely
presenting the results of abstract processes of collecting and
analyzing information, without more (such as identifying a
particular tool for presentation), is abstract as an ancillary part
of such collection and analysis. See, e.g., Content Extraction,
776 F.3d at 1347; Ultramercial, Inc. v. Hulu, LLC, 772 F.3d
709, 715 (Fed. Cir. 2014).

Electric Power Group, LLC v. Alstom, S.A., 830 F.3d 1350, 1353–54 (Fed.
Cir. 2016).
For all the above reasons, claim 1 recites an abstract idea.

Is claim 1“directed to” the recited judicial exception?
Having determined that claim 1 recites a mental process, we next look
to whether the claim recites “additional elements that integrate the judicial
exception into a practical application.” Guidance, 84 Fed. Reg. at 53–54. A
claim may integrate the judicial exception when, for example, it reflects an
improvement to technology or a technical field. Id. at 55. When a claim
recites a judicial exception and fails to integrate the exception into a
practical application, the claim is “directed to” the judicial exception. Id. at
51.
We find the additional elements which claim 1 recites do not integrate
the judicial exception into a practical application. Notably, the claim does
not recite, and the Specification does not describe, an improvement to the
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functioning of a computer, or to any other technology or technical field. Nor
are the additional elements directed to a particular machine or
transformation. Appellant argues:
Similar to the facts in McRO, the present Claims provide rules
for determining where answers are located in an electronic test
document image. One such claimed rule requires a rectangle on
the test document to be identified as a data rectangle by
determining that its geometry meets a pre-determined geometry
for the data rectangle, and by distinguishing from other
rectangles that may be in the document image but whose
geometry does not meet that rule requirement. Another claimed
rule requires using the rectangle's predetermined geometry in
order to locate the answer bubbles within it.

Reply Br. 10. This argument is unpersuasive because, in essence,
Appellant’s invention automates the inputting of grades into an electronic
gradebook because “the mundane, time consuming task of entering the
grades into the electronic gradebook is not much different from a paper
gradebook.” Spec. ¶ 10.
Where teachers once hand logged grades and scores for each
piece of paper completed by students into a paper gradebook,
they must now manually enter those grades and scores into an
electronic gradebook using an input device such as a computer
keyboard. Since most teachers need to track approximately two
hundred (200) to six hundred (600) assignments per week, this
task consumes a significant amount of time that could otherwise
be spent on lesson plan preparation, etc.

Id. In order to solve this non-technical problem, claim 1 uses a document
(sheet) with an image (data rectangle), a computer processor coupled to a
digital camera and configured to perform operations stored on a non-
transitory computer readable medium to automatically identify grades from
the document. Cf. Spec. ¶ 11 (“[T]he present invention recognizes the need
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for a system and method for automatically inputting grades to an electronic
gradebook.”). Although the Specification provides much detail as to how
the operations recited in claim 1 are performed, claim 1 as recited, however,
does not reflect a technological improvement, but rather, is “directed to a
result or effect that itself is the abstract idea and merely invoke[s] generic
processes and machinery.” McRO, Inc. v. Bandai Namco Games Am. Inc.,
837 F.3d 1299, 1314 (Fed. Cir. 2016). Appellant has not offered any
evidence or technical reasoning that the computer implementation improves
the functioning of the computing system itself. In Enfish, for example, the
court noted that “[s]oftware can make non-abstract improvements to
computer technology just as hardware improvements can.” Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). The court put the
question as “whether the focus of the claims is on [a] specific asserted
improvement in computer capabilities . . . or, instead, on a process that
qualifies as an ‘abstract idea’ for which computers are invoked merely as a
tool.” Id. at 1335–36. The court found that the “plain focus of the claims”
there was on “an improvement to computer functionality itself, not on
economic or other tasks for which a computer is used in its ordinary
capacity.” Id. at 1336. We find the focus of the claim as a whole here is on
an administrative task, because the claimed system is merely invoked as a
tool to automate the process of identifying and inputting student grades from
a document.
We use the term “additional elements” for “claim features, limitations,
and/or steps that are recited in the claim beyond the identified judicial
exception.” See Guidance, 84 Fed. Reg. at 55 n.24. Here, limitations (a),
(b), (c), (d), (d)(v), and (e) are the additional elements. The presence of a
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generic processor (see Spec., Fig. 1) does not necessarily indicate a technical
solution. Using a digital camera in its ordinary capacity, without more, does
not integrate the abstract idea. Spec. ¶ 42 (“In a preferred embodiment, the
camera 12 utilizes complementary metal-oxide semiconductor (CMOS)
technology, charge-coupled device (CCD) technology, or any other type of
similar technology well known in the art.”). The claimed system, which
includes a document, processor, computer readable medium, and digital
camera, merely executes the mental process described above. Particularly,
the invention may be implemented on virtually any type of computer
regardless of the platform being used. See Spec. ¶¶ 42–44, 50–51. And,
“provid[ing] an output of the score or result” is an insignificant application
that adds insignificant extra-solution activity to the judicial exception. See
Ameranth, 842 F.3d at 1241–42.
Although a processor may perform comparison and calculations faster
than a human could mentally, using a computer to achieve a solution more
quickly may not be sufficient to show an improvement to computer
technology. See Versata, 793 F.3d at 1335; see also MPEP § 2106.05(a)(II)
(instructing examiners that a “commonplace business method being applied
on a general purpose computer” may not be sufficient to show an
improvement). Here, claim 1 broadly recites identifying a rectangle on a
document, calculating a location of answer bubbles, and determining which
bubbles are marked answer, and identifying a score without any particular
technical improvement to how the system carries out these operations. Cf.
Spec. ¶ 8 (“[S]ince computers have become ubiquitous, electronic
gradebooks have also become extremely popular and the time-intensive task
of calculating and tracking grades has been automated.”). In other words,
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the recited processor is merely used in its ordinary capacity to perform
activities (i.e., observations, evaluations, calculations) that can practically be
performed in the mind.
Thus, the claimed system does not use the recited operations in a way
that indicates that the judicial exception has been integrated into a practical
application.

Does claim 1 provide an inventive concept?
To determine whether a claim provides an inventive concept, the
additional elements are considered—individually and in combination—to
determine whether they (1) add a specific limitation beyond the judicial
exception that is not “well-understood, routine, conventional” in the field or
(2) simply append well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception. Guidance, 84 Fed. Reg. at 56.
The Examiner found:
There is no "inventive concept" in the use of a generic
digitizing device and computer to perform well-understood,
routine, and conventional activities commonly used in industry.
See Alice, 134 S. Ct. at 2359. At most, the claims attempt to
limit the abstract idea of collecting, recognizing and storing
information from answer sheet documents using a digitizing
device and a computer to a particular technological
environment. Such a limitation has been held insufficient to
save a claim in this context. See Alice, 134 S. Ct. at 2358;
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715-16
(Fed Cir. 2014); buySAFE, 765 F.3d at 1355.
When viewed either as individual limitations or as a
combination, the claim as a whole does not add significantly
more to the abstract idea. Moreover, the claim does not purport
to improve the functioning of the computer itself, or to improve
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any other technology or technical field. Use of an unspecified,
generic computer does not transform an abstract idea into a
patent-eligible invention. Thus, the claim does not amount to
significantly more than the abstract idea itself (Step 2B: NO).

Final Act. 6–7.

Appellants argue:

Claim 1 recites a computer processor and software program in
non-transitory computer-readable media form, it also relate[s]
to document imaging modalities and related processing, and
also offer significantly more than mere computer
implementation of an abstract idea. The system of Claim 1
compares the geometries of multiple rectangles in a document
image against a pre-determined geometry in order to distinguish
a data rectangle matching that pre-determined geometry from
those rectangles which do not, to then appropriately and
automatically direct the processing to only the contents
contained within that data rectangle. This feature ties the use of
a computer processor to a data sheet providing the data
rectangle, both inter-cooperating via the aid of a camera, to
ultimately improve the technical field of test document image
processing and electronic grade books.

Appeal Br. 20.
Appellant’s argument is not persuasive because “a claimed
invention’s use of the ineligible concept to which it is directed cannot supply
the inventive concept that renders the invention ‘significantly more’ than
that ineligible concept.” BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281,
1290 (Fed. Cir. 2018). The limitations on the mental process do not make
claim 1 any less abstract. None of these limitations provide an inventive
concept in the non-abstract application realm. Indeed, this type of activity
has been found to be well-understood, routine, conventional activity when
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they are claimed in a merely generic manner (e.g., at a high level of
generality). Cf. OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362–
63 (Fed. Cir. 2015) (Determining an estimated outcome and setting a price).
Finally, Appellant’s argument as to the lack of preemption (Appeal
Br. 21) is also unpersuasive. See OIP Techs., 788 F.3d at 1362–63 (“[T]hat
the claims do not preempt all price optimization or may be limited to price
optimization in the e-commerce setting do not make them any less
abstract.”). Although “preemption may signal patent ineligible subject
matter, the absence of complete preemption does not demonstrate patent
eligibility.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1379 (Fed. Cir. 2015); Ans. 12. “Where a patent’s claims are deemed only
to disclose patent ineligible subject matter” under the Alice framework,
“preemption concerns are fully addressed and made moot.” Id.
Accordingly, we sustain the rejection of independent claim 1 under 35
U.S.C. § 101, including dependent claims 4, 5, 7, and 10–12, which are not
argued separately.

35 U.S.C. § 103(a)
We are persuaded of error in the rejection of independent claim 1
because Knowles, on which the Examiner relies, fails to disclose
“calculat[ing] a location of the set of answer bubbles based on the pre-
determined geometry of the data rectangle,” as recited in limitation (d)(ii).
In rejecting this disputed limitation, the Examiner finds Knowles’s
“client computers can also ‘clip’ areas of interest (implies size/dimension)
from the electronic image. Clipping involves electronically removing,
typically in software, a portion of the response item or scanned image.
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These clipped areas may comprise any portion of a response item: e.g., a
handwritten essay or selected response positions (area of interest analogous
to data rectangle).” Final Act. 9. “[I]t is the Examiner’s position that
putting back the test together from clipped areas of interest according to a
test template based on position coordinates and form identification requires
or at least suggests a determination of a predetermined geometry
(size/dimension) and location/position of response as claimed.” Ans. 16.
Even if we accept the Examiner’s initial position, the remainder of limitation
(d)(ii) requires that such calculation is “based on the pre-determined
geometry of the data rectangle.” But there is “no teaching [in Knowles] for
determining the geometry of a rectangle on a sheet, at all, for any purpose -
much less for a data rectangle for purpose of locating it or for purpose of
locating answer bubbles within it.” Appeal Br. 26. We agree with the
Appellant that the Examiner’s
interpretations of the Knowles disclosure erroneously
analogized rectangular 'areas' and clipping 'any portion of a
response item' to the specific use of a data rectangle of pre-
determined geometry on a test form as Applicant has claimed.
It is similarly erroneous to leap from an implied exclusion of
areas that are not of interest to clip, per the Knowles disclosure,
to the specifically claimed exclusion of rectangles from
processing of an image due to their geometry not meeting the
specific pre-determined geometry rule as claimed. It is even
still a more remarkable leap to analogize a reassembly of a
clipped document, according to the erroneous interpretation of
Knowles, to Applicant's "determination of pre-determined
geometry (size/dimension) and location/position of response as
claimed.

Reply Br. 21–22.
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Accordingly, we do not sustain the rejection of independent claim 1
under 35 U.S.C. § 103(a), including dependent claims 4, 5, 7, and 10–12.
DECISION
The rejection under 35 U.S.C. § 112, first paragraph, is reversed.
The rejection under 35 U.S.C. § 101 is affirmed.
The rejections under 35 U.S.C. § 103(a) are reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED