Robin Wallace. Glover

Patent Trials and Appeals Board

Apr 24, 2020

13306798 - (D) (P.T.A.B. Apr. 24, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/306,798 11/29/2011 Robin Wallace Glover 15262.0003-00000 4986
22852 7590 04/24/2020
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK AVENUE, NW
WASHINGTON, DC 20001-4413
EXAMINER
VO, CECILE H
ART UNIT PAPER NUMBER
2153
NOTIFICATION DATE DELIVERY MODE
04/24/2020 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):
regional-desk@finnegan.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ROBIN WALLACE GLOVER
____________________

Appeal 2018-008932
Application 13/306,798
Technology Center 2100
____________________

Before JOHN A. JEFFERY, MARC S. HOFF, and CARL L. SILVERMAN,
Administrative Patent Judges.

SILVERMAN, Administrative Patent Judge.

DECISION ON APPEAL

Appellant1 seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s rejection of claims 2–10, 12–36, and 46–57, which constitute all
pending claims. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
Appellant’s invention relates to presenting changes identified between
two versions of a document. Abstract; Spec. ¶¶ 6–9; Fig. 5B.

1 Throughout this Decision, we use the word “Appellant” to refer to
“applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies
Workshare Technology, Inc. as the real party in interest. Appeal Br. 2.
Appeal 2018-008932
Application 13/306,798

2
Claims 2, 13, 22, and 31 are the independent claims on appeal. Claim
2, reproduced below, is representative2 of the subject matter on appeal
(emphasis added):
2. A computer system for generating a view of document
changes, comprising:
a processor coupled to a data storage device, wherein the
processor is configured to execute a software program, the
software program comprising:
a comparison module operable to compare a first
and second document files stored on a data storage device
to identify at least one document changes between the two
document files by comparing at least one first
alphanumeric data item extracted by the module from the
first document with at least one second alphanumeric data
item extracted by the module from the second document
and to generate and store a resulting output comparison
document data file comprised of data representing the
determined document changes in the data storage device;
a categorization module operable to assign one of
at least one predetermined document change category
values to each of the determined document changes
whereby each of the document change category values
correspond to a type of document change, the type being
one of spelling repair, a text insertion, a text deletion, a
text replacement, a punctuation change, a numbering
change, a change in header or footer, a change in a
footnote, a string replacement made in multiple places, a
deletion made in multiple places, or an insertion made in
multiple places; and
wherein the processor is further operable to
generate and store a data structure representing a display
of a first view of a portion of a list of the determined
document changes, said portion grouped by their
corresponding document change type.

2 Appellant argues claims 2, 13, 22, and 31 as a group. Appeal Br. 11, 15.
We select claim 2 as representative, and the remainder of the claims will
stand or fall with claim 2. See 37 C.F.R. § 41.37(c)(1)(iv).
Appeal 2018-008932
Application 13/306,798

3
Appeal Br. 23–24 (Claims App’x).

REFERENCES
Name Reference Date
Ching US 6,560,620 B1 May 6, 2003
Orofino, II US 8,839,100 B1 Sept. 16, 2014
Thompson et al. US 2007/0220068 Al Sept. 20, 2007

REJECTIONS
Claims 2–10, 12–36, and 46–57 are rejected under 35 U.S.C. § 101 as
being directed to patent-ineligible subject matter. Final Act. 3–6.
Claims 2, 4, 9, 10, 13, 19–22, 28–31, 33, 46, 47, 50, 51, and 54–57 are
rejected under 35 U.S.C. § 103(a) as being unpatentable over Ching and
Orofino II. Final Act. 6–19.
Claims 3, 5–8, 12, 14–18, 23–25, 27, 32, 34–36, 48, 49, 52, and 53 are
rejected under 35 U.S.C. § 103(a) as being unpatentable over Ching, Orofino
II, and Thompson. Final Act. 20–30.

ANALYSIS
The § 101 rejection
PRINCIPLES OF LAW
Patent-eligible subject matter is defined in 35 U.S.C. § 101 of the
Patent Act, which recites:
Whoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new and
useful improvement thereof, may obtain a patent therefor, subject
to the conditions and requirements of this title.
There are, however, three judicially created exceptions to the broad
categories of patent-eligible subject matter in 35 U.S.C. § 101: “[l]aws of
Appeal 2018-008932
Application 13/306,798

4
nature, natural phenomena, and abstract ideas.” Alice Corp. v. CLS Bank
Int’l, 573 U.S. 208, 216 (2014) (quotation marks and citation omitted); Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012).
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. See Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S. at 75–77).
In accordance with that framework, we first determine what concept the
claim is “directed to.” See Alice, 573 U.S. at 219 (“On their face, the claims
before us are drawn to the concept of intermediated settlement, i.e., the use
of a third party to mitigate settlement risk.”); see also Bilski v. Kappos, 561
U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’ application explain the
basic concept of hedging, or protecting against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “a claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
Appeal 2018-008932
Application 13/306,798

5
mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, and this principle cannot be circumvented by attempting
to limit the use of the formula to a particular technological environment.”
Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace
that an application of a law of nature or mathematical formula to a known
structure or process may well be deserving of patent protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
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-eligible application.” Alice, 573 U.S. at 221 (quoting Mayo, 566 U.S.
at 72). “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. (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.
The United States Patent and Trademark Office (“USPTO”) has
published revised guidance on the application of § 101. USPTO, 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) (“Guidance”). “All USPTO personnel are, as a matter of internal
agency management, expected to follow the guidance.” Id. at 51; see also
Appeal 2018-008932
Application 13/306,798

6
October 2019 Update at 1 (October 2019 Update: Subject Matter
Eligibility).3
Under that guidance, we first determine whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes) (Step 2A, Prong 1); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a)–(c), (e)–(h)
(Step 2A, Prong 2).
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:
(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 (Step 2B).
See Guidance, 84 Fed. Reg. at 52–56.
A claim that integrates a judicial exception into a practical application
applies, relies on, or uses 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. See Guidance,
84 Fed. Reg. at 54. When the judicial exception is so integrated, then the

3 USPTO, October 2019 Update: Subject Matter Eligibility (the “October
2019 Update”) (available at https://www.uspto.gov/sites/default/files/
documents/peg_oct_2019_update.pdf).

Appeal 2018-008932
Application 13/306,798

7
claim is not directed to a judicial exception and is patent eligible under
§ 101. Id.
The § 101 Rejection of claims 2–10, 12–36, and 46–57
The Examiner determines claim 2 corresponds to concepts identified
as abstract ideas by the courts. Final Act. 3–4 (citing Digitech Image Tech.,
LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014)). The
Examiner further determines:
the claim does not include additional elements that are sufficient
to amount to significantly more than the judicial exception
because the additional computer elements, e.g. a processor, a
comparison module, a categorization module, which are recited
at a high level of generality, provide conventional computer
functions that do not add meaningful limits to practicing the
abstract idea. Generic computer components recited as
performing generic computer functions that are well-understood,
routine and conventional activities amount to no more than
implementing the abstract idea with a computerized system.
Further, the claim does not include additional elements that are
sufficient to amount to significantly more than the judicial
exception because merely providing a result and executing the
algorithm by a computer is akin to adding the words “apply it”
with a computer in conjunction with the abstract idea.
Accordingly, claim 2 is ineligible.

Id. at 4 (emphasis omitted).
Appellant argues the Examiner errs by paraphrasing the claims, the
claims do not monopolize the abstract idea cited by the Examiner of using a
computer to compare document files, and the Digitech finding of ineligible
subject matter is applicable. Appeal Br. 11–13. Appellant argues the
Examiner overlooks applicable case law that supports patent-eligibility. Id.
at 13–15 (citing McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d
1299, 1314 (Fed. Cir. 2016); Enfish, LLC v. Microsoft Corp., 822 F.3d 1327,
Appeal 2018-008932
Application 13/306,798

8
1335 (Fed. Cir. 2016). According to Appellant, like McRO, the claims recite
specific components that are not abstractions. Id. at 13–14. Appellant
argues, like Enfish, the claims are an improvement to the computer
functionality itself, and the claims recite how the processing output is
organized to improve its usability. Id. at 14–15.
In the Answer, the Examiner asserts McRO is inapplicable because
unlike McRO, the claim does not set forth “limited rules” used in a process
specifically designed to achieve an improved technological result in
conventional industry practice. Ans. 4. The Examiner asserts that, unlike
Enfish, in which the claims are directed to the steps of configuring a
computer memory in accordance with a self-referential table, the claims are
clearly directed to “organizing and manipulating information through
mathematical correlations.” Id. at 6 (citing Digitech.)
In the Reply Brief, Appellant reiterates arguments and argues the
claims also have a type of “rules that render information into a specific
format . . . to create desired results,” as in McRO. Reply Br. 2–3.
According to Appellant, in the claims,
the “rule” is to group the document changes by change type in
order to “create the desired result” of a “data structure
representing a display of a first view of a portion of a list of the
document changes.” The specification explains why that is
desired—the grouping by change type makes it far easier for
users to utilize the document comparison list of changes.
Specification 0020-0022.

Id. at 3.
According to Appellant:
It is clear from Applicant’s claims and specification in this case
that the claimed invention is not “directed to” an “abstract idea.”
Appeal 2018-008932
Application 13/306,798

9
It is directed toward a data processing system that “generates” a
“data structure” for presenting on a display the potentially
thousands of changes made to versions of documents so that they
are “grouped by their corresponding document change type.”
That is, the data structure is an improvement that creates a
display output that is easily viewable by the user. Specification,
0020, 0021. The Federal Circuit in Enfish ultimately held that “a
specific type of data structure designed to improve the way a
computer stores and retrieves data in memory” is not directed to
an abstract idea and is patentable subject matter. Enfish at 1339.
Applicant’s claims, like those in Enfish, are centered around a
“data structure.” Similarly they are not directed to an abstract
idea: the systems and processes recited in the claims are directed
to an improvement in displaying document comparison data
output. Improvements in computer visualization are no less
patentable than other improvements in computer technology.
The Examiner has not presented any evidence or law that one
type of computer technology improvement has a higher bar than
another. Therefore, at the first step of the Alice test, Applicant’s
claims are statutory subject matter.

Id. at 4–5.
Pursuant to the Guidance, we first determine, under Step 2A, Prong 1,
whether the claim recites a judicial exception. For the reasons set forth
below, we determine claim 2 recites a mental process and certain methods of
organizing human activity. Here, the claim is broadly written and recites
generating a view of document changes. In particular claim 2 recites:
. . . compare a first and second document files stored on .
. . to identify at least one document changes between the two
document files by comparing at least one first alphanumeric data
item extracted . . . from the first document with at least one
second alphanumeric data item extracted . . . from the second
document and to generate and store a resulting output
comparison document data file comprised of data representing
the determined document changes in the data storage device;
Appeal 2018-008932
Application 13/306,798

10
a categorization . . . operable to assign one of at least one
predetermined document change category values to each of the
determined document changes whereby each of the document
change category values correspond to a type of document
change, the type being one of spelling repair, a text insertion, a
text deletion, a text replacement, a punctuation change, a
numbering change, a change in header or footer, a change in a
footnote, a string replacement made in multiple places, a
deletion made in multiple places, or an insertion made in
multiple places; and
wherein the . . . is further operable to generate and store
. . . representing a display of a first view of a portion of a list of
the determined document changes, said portion grouped by their
corresponding document change type.

In addition to the Examiner’s finding that the claim limitations are
directed to the abstract idea of “organizing and manipulating information
through mathematical correlations” (Ans. 6; citing Digitech Image Tech.,
LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344), each of the italicized
limitations can be performed as mental processes. If a method can be
performed by human thought alone, or by a human using pen and paper, it is
merely an abstract idea and is not patent eligible under § 101. CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372–73 (Fed. Cir. 2011).
“That purely mental processes can be unpatentable, even when performed by
a computer, was precisely the holding of the Supreme Court in Gottschalk v.
Benson.” Id. at 1375. See also Synopsys, Inc. v. Mentor Graphics Corp.,
839 F.3d 1138, 1146–47 (Fed. Cir. 2016).
In view of the above, we determine that claim 2 recites the abstract
idea of mental processes, and is analogous to Electric Power Group, LLC, v.
Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016) (“[W]e have treated
analyzing information by steps people go through in their minds, or by
Appeal 2018-008932
Application 13/306,798

11
mathematical algorithms, without more, as essentially mental processes
within the abstract-idea category.”). Additionally, we note that the
italicized limitations also recite the abstract idea of organizing human
activity, such as “managing personal behavior or relationships or
interactions between people,” such as “social activities, teaching, and
following rules or instructions.” See Guidance, 84 Fed. Reg. at 52.
The Federal Circuit explains the “directed to” inquiry is not simply
asking whether the claims involve a patent-ineligible concept:
The “directed to” inquiry . . . cannot simply ask whether the
claims involve a patent-ineligible concept, because essentially
every routinely patent-eligible claim involving physical products
and actions involves a law of nature and/or natural
phenomenon—after all, they take place in the physical world.
See Mayo, 132 S.Ct. at 1293 (“For all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural
phenomena, or abstract ideas.”). Rather, the “directed to”
inquiry applies a stage-one filter to claims, considered in light of
the specification, based on whether “their character as a whole is
directed to excluded subject matter.”
Enfish, 822 F.3d at 1335; see also Diehr, 450 U.S. at 188 (“In determining
the eligibility of respondents’ claimed process for patent protection under §
101, their claims must be considered as a whole.”); McRO, 837 F.3d at 1314
(noting that the question is whether the claims as a whole “focus on a
specific means or method that improves the relevant technology or are
instead directed to a result or effect that itself is the abstract idea and merely
invoke generic processes and machinery”).
Therefore, we proceed to Step 2A, Prong 2, of the Guidance to
determine whether additional elements recited in the claims beyond the
judicial exception of claim 1 integrate the abstract idea into a practical
Appeal 2018-008932
Application 13/306,798

12
application. Such additional elements may reflect an improvement to a
technology or technical field. See Guidance, 84 Fed. Reg. at 55.
As discussed below, there are no additional limitations recited beyond
the judicial exception itself that integrate the exception into a practical
application. More particularly, the claims do not recite: (i) an improvement
to the functionality of a computer or other technology or technical field (see
MPEP § 2106.05(a)); (ii) a “particular machine” to apply or use the judicial
exception (see MPEP § 2106.05(b)); (iii) a particular transformation of an
article to a different thing or state (see MPEP § 2106.05(c)); or (iv) any other
meaningful limitation (see MPEP § 2106.05(e)). See also Guidance, 84 Fed.
Reg. at 55.
We determine that the additional elements of claim 2 do not integrate
the abstract idea into a practical application. Claim 2 includes the additional
elements: “computer system,” “processor,” “software program,”
“comparison module,” “data storage device,” “data storage device,” and “a
data structure.”
The claim is broadly written, and we determined that the
improvement, if any, of the claim is in the abstract idea itself, not in the
functionality of a computer or other technology or technical field. No
particular machine, no transformation, no other meaningful limitation is
persuasively argued by Appellant. Additionally, the additional elements
do not use the alleged abstract idea in a 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 designed to monopolize the exception. See MPEP §
2106.05(e).
Appeal 2018-008932
Application 13/306,798

13
Rather, the additional elements merely implement an abstract idea
using broadly claimed elements “computer system,” “processor,”
“software program,” “comparison module,” “data storage device,” “data
storage device,” and “a data structure,” to perform the abstract idea. See
MPEP § 2106.05(f). The limitations merely use the abstract idea by linking
it to a particular technological environment. See MPEP § 2106.05(e).
Because the additional elements of claim 2 do not integrate the
abstract idea into a practical application, we determine representative claim
2 is directed to an abstract idea. See Guidance, Step 2A, Prong 2.
Because we determine the claims are directed to an abstract idea, we
next analyze the claims under step two of Alice to determine whether there
are additional limitations that individually, or as an ordered combination,
ensure the claims amount to “significantly more” than the abstract idea.
Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S. at 72–73, 77–79). As
stated in the Guidance, many of the considerations to determine whether the
claims amount to “significantly more” under step two of the Alice
framework are already considered as part of determining whether the
judicial exception has been integrated into a practical application. Guidance,
84 Fed. Reg. at 56. Thus, at this point of our analysis, we determine, under
Step 2B of the Guidance, if the claims add a specific limitation, or
combination of limitations, that is not well-understood, routine, conventional
activity in the field, or simply appends well-understood, routine,
conventional activities at a high level of generality. Id.
As with the integration into a practical application analysis discussed
above, an inventive concept “cannot be furnished by the unpatentable law of
nature (or natural phenomenon or abstract idea) itself.” Genetic Techs. Ltd.
Appeal 2018-008932
Application 13/306,798

14
v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016); see also Guidance,
84 Fed. Reg. at 56; Alice, 573 U.S. at 217 (explaining that, after determining
a claim is directed to a judicial exception, “we then ask, ‘[w]hat else is there
in the claims before us?’” (emphasis added, brackets in original)
(quoting Mayo, 566 U.S. at 78)). Instead, an “inventive concept” is
furnished by an element or combination of elements that is recited in the
claim in addition to the judicial exception and sufficient to ensure the claim
as a whole amounts to significantly more than the judicial exception
itself. Alice, 573 U.S. at 218–19 (citing Mayo, 566 U.S. at 72–73); see BSG
Tech LLC v. Buyseasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018)
(explaining that the Supreme Court in Alice “only assessed whether the
claim limitations other than the invention’s use of the ineligible concept to
which it was directed were well-understood, routine and conventional,”
(emphasis added)).
On the record before us, the claims fail to recite specific limitations
(or a combination of limitations) that are not well-understood, routine, and
conventional. Rather, the additional elements (i.e., “computer system,”
“processor,” “software program,” “comparison module,” “data storage
device,” “data storage device,” and “a data structure”) are generic computer
components recited at a high level of generality or basic computer functions.
Appellant does not persuasively argue, or point to any description in the
Specification, that these components are anything other than what was well-
understood, routine, and conventional in the art. See Mortg. Grader, Inc. v.
First Choice Loan Servs. Inc., 811 F.3d 1314, 1324–25 (Fed. Cir. 2016)
(generic computer components such as an “interface,” “network,” and
Appeal 2018-008932
Application 13/306,798

15
“database” fail to satisfy the inventive concept requirement); see also Spec.
¶¶ 18, 24–27, 30, 31, 36, and 37.
To the extent Appellant argues the claims recite a solution to a
problem in computer technology that adds significantly more, we note that
these steps are part of the ineligible abstract idea. “If a claim’s only
‘inventive concept’ is the application of an abstract idea using conventional
and well-understood techniques, the claim has not been transformed into a
patent-eligible application of an abstract idea.” BSG Tech, 899 F.3d at
1290–91 (citing Berkheimer v. HP Inc., 881 F.3d 1360, 1370 (Fed. Cir.
2018)). “[I]t is irrelevant whether [the claimed abstract idea] may have been
non-routine or unconventional as a factual matter . . . narrowing or
reformulating an abstract idea does not add ‘significantly more’ to it.” BSG
Tech, 899 F.3d at 1291.
Regarding case law cited by the Examiner and Appellant, we are not
persuaded by Appellant’s arguments. The claims here are unlike Enfish and
McRO, as the claims before us are broadly written and do not recite an
improvement to a computer. As discussed supra, if the claims recite any
improvement, this improvement is to an abstract idea. Because the claim
does not solve a problem in the software arts, claim 2 is unlike the
technology-based integrations cited by Appellant. For example, in Enfish,
the patent-eligible claim was directed to a self-referential table to improve
computer databases. Enfish, 822 F.3d at 1337. Likewise, in McRO, the
patent-eligible claim focused on a specific asserted improvement in
computer animation. By contrast, the claims are, at best, an improvement to
performing a comparison between two documents. Abstract; Spec. ¶¶ 6–9;
Fig. 5B. Thus, we conclude, under Step 2B of the Guidance, that the claim
Appeal 2018-008932
Application 13/306,798

16
limitations, considered individually and as an ordered combination, simply
append well-understood, routine, conventional activities previously known
to the industry.
Additionally, “the absence of complete preemption does not
demonstrate patent eligibility.” Ariosa Diagnostics, Inc. v. Sequenom, Inc.,
788 F.3d 1371, 1379 (Fed. Cir. 2015). We are not persuaded of error by
Appellant’s preemption argument because preemption concerns are
addressed by the Supreme Court’s eligibility framework, which, as applied
here, has resulted in a finding of patent ineligible subject matter, infra.
Ariosa, 788 F.3d at 1379 (stating “[w]here a patent’s claims are deemed only
to disclose patent ineligible subject matter under the Mayo framework, . . .
preemption concerns are fully addressed and made moot”). A lack of
complete preemption does not make the claims any less abstract. See OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362–63 (Fed. Cir. 2015)
(“[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.”).
For the above reasons, Appellant has not persuaded us of Examiner
error, and we sustain the Examiner’s rejection of representative claim 2, and
claims 3–10, 12–36, and 46–57 under 35 U.S.C. § 101.
Appeal 2018-008932
Application 13/306,798

17
The § 103 Rejections
Claims 2, 4, 9, 10, 13, 19–22, 28–31, 33, 46, 47, 50, 51, and
54–57 over Ching and Orofino II
Appellant argues the Examiner errs in finding that the combination of
Ching and Orofino II teaches the claim 2 limitation (also referred to as
“disputed limitation”)
a categorization module operable to assign one of at least
one predetermined document change category values to each of
the determined document changes whereby each of the document
change category values correspond to a type of document
change, the type being one of spelling repair, a text insertion, a
text deletion, a text replacement, a punctuation change, a
numbering change, a change in header or footer, a change in a
footnote, a string replacement made in multiple places, a
deletion made in multiple places, or an insertion made in
multiple places.

Appellant further argues the Examiner’s combination of Ching and Orofino
II is improper because it is not “a ‘predictable use of prior art elements
according to their established function.’” Appeal Br. 16–21; Reply Br. 7–
11.
The Examiner finds the combination of Ching and Orofino II teaches
the disputed limitation. Final Act. 6–10. The Examiner finds Ching teaches
“different color, font, type size, intensity, contrast, and the like is assigned to
types of document change as change category values to be displayed.” Id. at
8–9 (citing Ching 14:42–44). The Examiner finds Orofino II teaches “the
type being one of spelling repair, a text insertion, a text deletion, a text
replacement, a punctuation change, a numbering change, a change in header
or footer, a change in a footnote, a string replacement made in multiple
places, a deletion made in multiple places, or an insertion made in multiple
Appeal 2018-008932
Application 13/306,798

18
places.” Id. at 9–10 (citing Orofino II, 9:25–55). The Examiner refers to the
Orofino II Environment 165 which supplies the change type as
predetermined category values that “identifies characteristics related to a
change (e.g., a text change, a numeric change, a style change, a parameter
change, a change related to a write operation, etc.)” Id. at 10 (citing Orofino
II, 9:20–55).
The Examiner determines “it would have been obvious to a person of
ordinary skill in the art at the time the invention was made to modify a
hierarchical document comparison system as disclose[d] by Ching to include
a method of updating a revision value related to data set as taught by
Orofino II to provide identifying whether a change associated with the data
qualifies as a revision event in the data set.” Final Act. 10.
Appellant argues, regarding Ching, that a “document change category
value” is not the same as the document change itself. Appeal Br. 16 (citing
Ching, 14:42–44; Final Act. 15). According to Appellant, the “document
type” of Ching is not equivalent to types of changes made to the document
between versions. Id. at 16–18 (citing Ching, 14:42–44, 7:13–24, 29).
Appellant argues nothing in Ching teaches that different colors or fonts are
assigned based on the type of change. Id. at 18. Appellant argues the
Examiner errs in finding that different versions of each document are
interpreted as data representing a type of change. Id. at 18–19 (citing Final
Act. 8; Ching, Fig. 7). According to Appellant, the Examiner provides no
basis for the interpretation, and it is inconsistent with the Specification. Id.
(citing Spec. ¶ 20).
Appellant argues the Examiner errs in combining Ching and Orofino
II because Orofino II monitors a document that is in memory as each
Appeal 2018-008932
Application 13/306,798

19
revision occurs, “not as a result of running a comparison on two different
document files stored on a disk, as claimed by Applicant.” Appeal Br. 19–
20 (citing Orofino II, 8:11–12, 8:35–36, 9:18, 20). Appellant argues the
Orofino II principle of operation is entirely distinct from Appellant’s
claimed invention which
compares “a first and second document files stored” on disk, and
further, “generates and stores a data structure representing a
display ... grouped by ... change type.” In contrast, Orofino II
increments a list of revisions made to an “in memory” document
“each time a revision occurs” and creates a sequential list that log
the changes in sequence. See Fig. 8. One is not interchangeable
with the other.

Id. at 20.
Appellant further argues the Examiner’s conclusion for obviousness
does not support obviousness because the claim limitation does not recite
“provide identifying whether a change associated with the data qualifies as
[a] revision event in the data set.” Appeal Br. 20–21.
In the Answer, the Examiner finds Orofino II teaches “document
change category values [that] correspond to a type of document change.”
Ans. 7 (citing Orofino II, Fig. 3B) (emphasis omitted). The Examiner finds
the Orofino II Menu 360 includes options 362, 364, and 366 and this is
interpreted as “document change category values [that] correspond to a type
of document change.” Id. (emphasis omitted). The Examiner reiterates that
it is the combination of Ching and Orofino II that teaches the disputed
limitation. Id. at 8–9. In particular, Ching teaches versions of each
Appeal 2018-008932
Application 13/306,798

20
document represent a type of change and Orofino II teaches numerous
change types. Id.
In the Reply Brief, Appellant reiterates arguments and argues the
Examiner errs in finding Ching and Orofino II are in the same field of
endeavor, and is mistaken about the field of Orofino II. Reply Br. 7–11.
According to Appellant, Orofino II is a selective revision list made to a
single data set and this is entirely distinct principle of operation of the
claimed invention which “detects all of the changes between two versions of
a document and then assigns each its change type value.” Id. at 9.
Appellant argues neither Ching nor Orofino II discloses a “‘data structure’
that is a representation of a view of the document changes ‘grouped by their
corresponding change type.’” Id. at 10. Appellant argues combining
Orofino II and Ching would make Ching unworkable. Id. at 10–11.
We are not persuaded by Appellant’s arguments and agree, instead,
with the findings and conclusion of the Examiner that the combination of the
teachings of Ching and Orofino II teaches the disputed limitation. Ching
teaches comparing first and second documents and generating changes in the
document between versions illustrated in a side-by-side display. Ching,
14:42–44, 19:35–52, Figs. 7, 8. Orofino II teaches Environment 165 which
supplies the change type as predetermined category values that “identifies
characteristics related to a change (e.g., a text change, a numeric change, a
style change, a parameter change, a change related to a write operation,
etc.).” Orofino II, 9:20–55, Fig. 3B.
Regarding the combination, Appellant’s comments regarding
principle of operation are inapplicable because we find that Ching and
Appeal 2018-008932
Application 13/306,798

21
Orofino II are directed to tracking changes in documents. Ching, Abstract,
1:7–11; Orofino II, 1:6–2:44.
Appellant’s argument that the Examiner errs by including the
statement regarding modification of Ching to include “updating a revision
value related to data set as taught by Orofino II to provide identifying
whether a change associated with the data qualifies as a revision event in the
data set” rather than the recited claim language, is unpersuasive because the
Examiner is referring to a reason for one of ordinary skill in the art to
combine the teachings of Ching and Orofino II. More particularly, the
teaching of Orofino II regarding numerous specific predetermined category
values.
During prosecution, claims must be given their broadest reasonable
interpretation when reading claim language in light of the Specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Although we interpret
claims broadly but reasonably in light of the Specification, we nonetheless
must not import limitations from the Specification into the claims. See In re
Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Our reviewing court
states that “the words of a claim ‘are generally given their ordinary and
customary meaning.’” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed.
Cir. 2005) (en banc) (citations omitted). However, the broadest reasonable
interpretation differs from the broadest possible interpretation. In re Smith
Int’l, Inc., 871 F.3d 1375, 1383 (Fed. Cir. 2017). The correct inquiry in
giving a claim term its broadest reasonable interpretation in light of the
specification is “an interpretation that corresponds with what and how the
inventor describes his invention in the specification, i.e., an interpretation
Appeal 2018-008932
Application 13/306,798

22
that is ‘consistent with the specification.’” Id. at 1382–83 (quoting In re
Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997)).
We note that much of Appellant’s arguments are unsupported by
factual evidence. Mere attorney arguments and conclusory statements that
are unsupported by factual evidence are entitled to little probative value. See
In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); In re De Blauwe, 736
F.2d 699, 705 (Fed. Cir. 1984); Ex parte Belinne, Appeal No. 2009-004693,
2009 WL 2477843, at *3–4 (BPAI Aug. 10, 2009) (informative).
Along with the unreasonably narrow claim interpretations, Appellant
also argues unreasonably narrow teachings of Ching and Orofino II to
attempt to limit the teachings to the express disclosures, and asserts an
overly demanding standard of obviousness. However, we note:
[t]he test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill in
the art.
In re Keller, 642 F.2d 413, 425 (CCPA 1981).
As stated by the Supreme Court, the Examiner’s obviousness
rejection must be based on:
[S]ome articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness . . . . [H]owever, the
analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can
take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006)).
Appeal 2018-008932
Application 13/306,798

23
In view of the above, we sustain the rejection of representative claim
2, and claims 4, 9, 10, 13, 19–22, 28–31, 33, 46, 47, 50, 51, and 54–57.
Claims 3, 5–8, 12, 14–18, 23–25, 27, 32, 34–36, 48, 49, 52, and
53 over Ching and Orofino, and Thompson
The Examiner additionally relies on Thompson to teach the
limitations of dependent claim 3. Final Act. 20–21 (citing Thompson ¶¶ 42,
43, 47, 48). Claim 3 is set forth below (emphasis added):
3. The system of claim 2, wherein the system is further
comprised of a review state module operable to assign a data
value representing a review state to each of the determined
document change values, to store the review state values, and to
alter the review state for at least one of the determined document
change values and to store the altered review state values of the-
determined document change values in the data storage device,
wherein the review states encode at least one state of an approval
status corresponding to at least one of the determined document
change values.
Appellant argues the Examiner errs because Thompson’s review
approval status is defined for the entire document, not on a text change by
text change basis. Appeal Br. 21 (citing Thompson ¶ 42). According to
Appellant, Thompson refers to “‘those changes’ in plural, not each of the
changes individually as claimed by Appellant.” Id. Therefore, Thompson
does not teach “‘assign[ing] a data value representing a corresponding
review state to each of the determined document changes . . .’ as claimed by
Appellant.” Id. at 21–22. Appellant argues the Examiner ignores the claim
3 limitation “a data value representing a review state to each of the
determined document change values.” Id. at 22.
In the Answer, the Examiner finds Thompson teaches the limitation:
Appeal 2018-008932
Application 13/306,798

24
Once the changes/edits to the file (interpreted as the document
changes) are completed, a request for approval of those changes
is made. This is done by going into the UnderRevision directory,
right clicking on the file, and selecting a “request approval”
option from a menu (interpreted as to assign a review state to the
document changes). The file control system will then change the
state of the file (interpreted as update the review state of the
document changes), Thompson: [0042]. Wherein, tracking
programs may be utilized to compare the original file with the
edited/ underrevision file to identify what has actually changed
in a file for which an approval is requested, Thompson: [0048]).
Id. at 9–10.
In the Reply Brief, Appellant argues the Examiner provides no basis
as to how Thompson’s “edits to the file . . . are completed’, which implies all
of the changes in the document, [and the Examiner provides no basis] that
this is the same as ‘change by change’ basis” as claimed by Applicant.”
Reply Br. 11. Appellant further argues that the Examiner errs in interpreting
“change the state of the file” in Thompson as “update the review state of the
document changes.” Id. (emphasis omitted).
We are not persuaded by Appellant’s arguments because the
limitation does not recite “change by change basis” or “each of the changes
individually.” The claim recites “to each of the determined document
change values.” Appellant does not dispute that Thompson teaches all of the
changes in the document and, to one of ordinary skill in the art, that would
include each of the changes, as recited in the claim. Appellant does not
persuasively refer to evidence to the contrary nor refer to the Specification.
Additionally, Appellant’s arguments regarding the Thompson teaching of
“change the state of the file” are conclusory and without sufficient
supporting evidence.
Appeal 2018-008932
Application 13/306,798

25
In view of the above, we sustain the rejection of claim 3, and claims
5–8, 12, 14–18, 23–25, 27, 32, 34–36, 48, 49, 52, and 53 as these claims are
not argued separately by Appellant and the Examiner’s findings are
reasonable.
CONCLUSION
We affirm the Examiner’s decision rejecting claims 2, 4, 9, 10, 13,
19–22, 28–31, 33, 46, 47, 50, 51, and 54–57 under 35 U.S.C. § 103(a).
We affirm the Examiner’s decision rejecting claims 3, 5–8, 12, 14–18,
23–25, 27, 32, 34–36, 48, 49, 52, and 53 under 35 U.S.C. § 103(a).

DECISION

Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
2–10, 12–36,
46–57
101 Eligibility 2–10, 12–36,
46–57

2, 4, 9, 10,
13, 19–22,
28–31, 33,
46, 47, 50,
51, 54–57
103(a) Ching, Orofino II 2, 4, 9, 10,
13, 19–22,
28–31, 33,
46, 47, 50,
51, 54–57

3, 5–8, 12,
14–18, 23–
25, 27, 32,
34–36, 48,
49, 52, 53
103(a) Ching, Orofino II,
Thompson
3, 5–8, 12,
14–18, 23–
25, 27, 32,
34–36, 48,
49, 52, 53

Overall
Outcome
2–10, 12–36,
46–57

Appeal 2018-008932
Application 13/306,798

26
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).
See 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED