Rosemarie E. Yagoda

Patent Trials and Appeals Board

Sep 25, 2019

13662137 - (D) (P.T.A.B. Sep. 25, 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.
13/662,137 10/26/2012 Rosemarie E. Yagoda 101,676 7317
38092 7590 09/25/2019
OFFICE OF PATENT COUNSEL, CODE 00L
NSWC - CARDEROCK DIVISION
9500 MACARTHUR BLVD.
BLDG 42, SUITE 204
WEST BETHESDA, MD 20817-5700
EXAMINER
JEANTY, ROMAIN
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
09/25/2019 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):
dave.ghatt@navy.mil
dawn.c.russell@navy.mil
howard.kaiser@navy.mil
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ROSEMARIE E. YAGODA
__________

Appeal 2017-009802
Application 13/662,1371
Technology Center 3600
____________

Before HUBERT C. LORIN, BIBHU R. MOHANTY, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Rosemarie E. Yagoda (Appellant) seeks our review under 35 U.S.C.
§ 134(a) of the Final Rejection of claims 1, 3–7, 9, 10, and 19–24. We have
jurisdiction under 35 U.S.C. § 6(b).

SUMMARY OF DECISION
We AFFIRM but denominate the affirmance as a New Ground of
Rejection pursuant to 37 C.F.R. § 41.50(b).

1 The Appellant identifies the United States of America as represented by the
Secretary of the Navy as the real party in interest. App. Br. 2.
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THE INVENTION
Claim 1, reproduced below with emphasis, is illustrative of the subject
matter on appeal.
1. A method for evaluating the performance of an unmanned
vehicle in an unmanned vehicle system, the method comprising:
identifying plural modes of operation of an unmanned vehicle
system, said plural modes of operation including pre-launch, launch,
transit, mission, recovery, and post-recovery;
identifying plural capability-based performance objectives
relating to said plural modes of operation of said unmanned vehicle
system;
identifying plural functional requirements relating to said
plural modes of operation of said unmanned vehicle system;
identifying plural levels of autonomy characterizing an
unmanned vehicle, wherein said plural levels of autonomy include
remote control, tele-operation, human directed, human aided, and
autonomous;
providing a first said unmanned vehicle, the first said
unmanned vehicle characterized by a first said level of autonomy;
providing a second said unmanned vehicle, the second said
unmanned vehicle characterized by a second said level of autonomy,
the second said level of autonomy differing from the first said level of
autonomy;
obtaining a first set of empirical data, said first set of empirical
data associated with a first embodiment of said unmanned vehicle
system and pertaining to said plural modes of operation of said first
embodiment of said unmanned vehicle system, said first embodiment
of said unmanned vehicle system including the first said unmanned
vehicle, said obtaining of said first set of empirical data including
conducting testing of said first embodiment of said unmanned vehicle
system, said testing of said first embodiment of said unmanned vehicle
system including operating the first said unmanned vehicle in each of
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said plural modes of operation of said first embodiment of said
unmanned vehicle system;
obtaining a second set of empirical data, said second set of
empirical data associated with a second embodiment of said mission
unmanned vehicle system and pertaining to said plural modes of
operation of said second embodiment of said unmanned vehicle
system, said second embodiment of said unmanned vehicle system
including the second said unmanned vehicle, said obtaining of said
second set of empirical data including conducting testing of said
second embodiment of said unmanned vehicle mission system, said
testing of said second embodiment of said unmanned vehicle system
including operating the second said unmanned vehicle in each of said
plural modes of operation of said second embodiment of said
unmanned vehicle system;
analyzing said first set of empirical data;
analyzing said second set of empirical data;
wherein if, in accordance with said analyzing of said first set of
empirical data and said analyzing of said second set of empirical
data, said plural capability-based performance objectives and said
plural functional requirements are not met by at least one of said first
embodiment of said unmanned vehicle system and said second
embodiment of said unmanned vehicle system, then the method for
evaluating the performance of an unmanned vehicle in an unmanned
vehicle system further comprises repeating, at least once:
said providing of the first said unmanned vehicle;
said providing of the second said unmanned vehicle;
said obtaining of said first set of empirical data;
said obtaining of said second set of empirical data;
said analyzing of said first set of empirical data;
said analyzing of said second set of empirical data.

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THE REJECTION
The following rejection is before us for review:
Claims 1, 3–7, 9, 10, and 19–24 are rejected under 35 U.S.C. § 101
for claiming patent-ineligible subject matter.

ISSUE
Did the Examiner err in rejecting claims 1, 3–7, 9, 10, and 19–24
under 35 U.S.C. § 101 for claiming patent-ineligible subject matter?

ANALYSIS
The rejection of claims 1, 3–7, 9, 10, and 19–24 under 35 U.S.C. § 101 for
claiming patent-ineligible subject matter.
Representative claim
The Appellant argued these claims as a group. App. Br. 8–17. We
select claim 1 (reproduced above) as the representative claim for this group,
and the remaining claims 3–7, 9, 10, and 19–24 stand or fall with claim 1.
37 C.F.R. § 41.37(c)(1)(iv) (2016).
Preliminary comment
The Examiner cites prior USPTO Guidance. See e.g., Ans. 15
(“USPTO’s SME guideline”). However, said guidance has been superseded
by the 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) (hereinafter “2019 Revised 101 Guidance”). 2019
Revised 101 Guidance, 84 Fed. Reg. at 51 (“Eligibility-related guidance
issued prior to the Ninth Edition, R–08.2017, of the MPEP (published Jan.
2018) should not be relied upon.”). Accordingly, our analysis will not
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address the sufficiency of the Examiner’s rejection against prior guidance.
Rather, our analysis will comport with the 2019 Revised 101 Guidance.
Introduction
35 U.S.C. § 101 provides that “[w]hoever invents or discovers any
new and useful process, machine, manufacture, or composition of matter, or
any new and useful improvement thereof, may obtain a patent therefor.”
In that regard, claim 1 covers a “process” and is, thus, statutory
subject matter for which a patent may be obtained.2 This is not in dispute.
Nevertheless, the § 101 provision “‘. . . contains an important implicit
exception: Laws of nature, natural phenomena, and abstract ideas are not
patentable.’” Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 216
(2014) (quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc.,
569 U.S. 576, 589 (2013)).
In that regard, notwithstanding claim 1 covers statutory subject
matter, the Examiner has raised a question of patent-eligibility on the ground
that claim 1 is directed to an abstract idea. Eligibility is a question of law
based on underlying facts. SAP Am., Inc. v. Investpic, LLC, 890 F.3d 1016,
1020 (Fed. Cir. 2018).
Alice identifies a two-step framework for determining whether
claimed subject matter is directed to an abstract idea. Alice, 573 U.S. at 217.

2 This corresponds to Step 1 of the 2019 Revised 101 Guidance which
requires determining whether a “claim is to a statutory category.” 2019
Revised 101 Guidance, 84 Fed. Reg. at 53; see also id. at 53–54
(“[C]onsider[] whether the claimed subject matter falls within the four
statutory categories of patentable subject matter identified by 35 U.S.C.
[§] 101 . . . .”).
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Alice step one – the “directed to” inquiry
According to Alice step one, “[w]e must first determine whether the
claims at issue are directed to a patent-ineligible concept.” Id. at 218
(emphasis added).
The Examiner determined that claim 1 is “directed to the abstract idea
of configuring the allocation of functions between humans and robots in
their interactions.” Final Act. 3. The Examiner also indicates that the claim
includes “additional computer elements, which are recited at a high level
of generality, provid[ing] conventional computer functions that do not add
meaningful limits to practicing the abstract idea.” Id.
The Appellant contends that
Applicant’s claimed invention is directed to a specific regime of
performance and empirical analysis of physical acts to attain
technological benefits.
Applicant’s claimed invention defines testing of
unmanned vehicles.
App. Br. 9.
Accordingly, there is a dispute over what claim 1 is directed to. Is it
directed to “configuring the allocation of functions between humans and
robots in their interactions” (Final Act. 3) or “testing of unmanned vehicles”
(App. Br. 9)?
Claim Construction3

3 “[T]he important inquiry for a § 101 analysis is to look to the claim.”
Accenture Glob. Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336,
1345 (Fed. Cir. 2013). “In Bancorp Servs., L.L.C. v. Sun Life Assurance Co.
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We consider the claim as a whole4 giving it the broadest reasonable
construction5 as one of ordinary skill in the art would have interpreted it in
light of the Specification6 at the time of filing.
Claim 1 calls for a “method for evaluating the performance of an
unmanned vehicle in an unmanned vehicle system.”
1. A method for evaluating the performance of an
unmanned vehicle in an unmanned vehicle system, the method
comprising:
identifying [X0];
identifying [information A];
identifying [information B];
identifying [information C];
providing [X1] . . . characterized by [information C1];
providing [X2] … characterized by [information C2],
[information C2] differing from [information C1];

of Can., 687 F.3d 1266, 1273 (Fed.Cir.2012), the court observed that ‘claim
construction is not an inviolable prerequisite to a validity determination
under § 101.’ However, the threshold of § 101 must be crossed; an event
often dependent on the scope and meaning of the claims.” Internet Patents
Corp. v. Active Network, Inc., 790 F.3d 1343, 1347–48 (Fed. Cir. 2015).
4 “In determining the eligibility of respondents’ claimed process for patent
protection under § 101, their claims must be considered as a whole.”
Diamond v. Diehr, 450 U.S. 175, 188 (1981).
5 2019 Revised 101 Guidance, 84 Fed. Reg. at 52 n.14 (If a claim, “under its
broadest reasonable interpretation . . . .” (emphasis added)).
6 “First, it is always important to look at the actual language of the claims
. . . . Second, in considering the roles played by individual limitations, it is
important to read the claims ‘in light of the specification.’” Smart Sys.
Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1378 (Fed. Cir.
2017) (J. Linn, dissenting-in-part and concurring-in-part), citing Enfish, LLC
v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016), among others.
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obtaining [information D1], said [information D1]
associated with a first embodiment of said unmanned vehicle
system and pertaining to said [X0] of said first embodiment of
said unmanned vehicle system, said first embodiment of said
unmanned vehicle system including [X1], said obtaining of
[information D1] including conducting testing of said first
embodiment of said unmanned vehicle system, said testing of
said first embodiment of said unmanned vehicle system
including operating [X1] in each of said [X0] of said first
embodiment of said unmanned vehicle system;
obtaining [information D2], said [information D2]
associated with a second embodiment of said mission
unmanned vehicle system and pertaining to said [X0] said
second embodiment of said unmanned vehicle system, said
second embodiment of said unmanned vehicle system including
[X2], said obtaining of [information D2] including conducting
testing of said second embodiment of said unmanned vehicle
mission system, said testing of said second embodiment of said
unmanned vehicle system including operating [X2] in each of
said [X0] of said second embodiment of said unmanned vehicle
system;
analyzing [information D1];
analyzing [information D2];
wherein if, in accordance with said analyzing of
[information D1] and said analyzing of [information D2], said
[information A] and said [information B] are not met by at least
one of said first embodiment of said unmanned vehicle system
and said second embodiment of said unmanned vehicle system,
then the method for evaluating the performance of an
unmanned vehicle in an unmanned vehicle system further
comprises repeating, at least once:
said providing of [X1];
said providing of [X2];
said obtaining of said [information D1];
said obtaining of said [information D2];
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said analyzing of said [information D1];
said analyzing of said [information D2].
Claim 1, where
X0 is “plural modes of operation of an unmanned vehicle
system, said plural modes of operation including pre-launch,
launch, transit, mission, recovery, and post-recovery”;
X1 = “a first said unmanned vehicle”
X2 = “a second unmanned vehicle”
Information A is “plural capability-based performance
objectives relating to said plural modes of operation of said
unmanned vehicle system”;
Information B is “plural functional requirements relating to said
plural modes of operation of said unmanned vehicle system”;
Information C is “plural levels of autonomy characterizing an
unmanned vehicle, wherein said plural levels of autonomy
include remote control, tele-operation, human directed, human
aided, and autonomous”;
Information C1 is “a first said level of autonomy” taken from
those listed in C;
Information C2 is “a second said level of autonomy” taken
from those listed in C;
Information D1 is “a first set of empirical data”; and,
Information D2 is “a second set of empirical data.”
Claim 1 recites four “identifying” steps, two “providing” steps, two
“obtaining” steps, and two “analyzing steps,” followed by at least one repeat
of the two “providing” steps, two “obtaining” steps, and two “analyzing”
steps — if a certain condition occurs.
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Notably, the “identifying” and “analyzing” steps are not tied to any
device. They could be performed purely mentally.
Regarding the “providing” steps, they call for “providing” first and
second unmanned vehicles having differing levels of autonomy, e.g., from
among “remote control, tele-operation, human directed, human aided, and
autonomous” (claim 1). The vehicles themselves are known. See Spec.
para. 2. The claim gives no further details about how these vehicles are to
be “provid[ed].” Since “providing” a vehicle could be accomplished by
hand, the claim reasonably broadly covers doing it that way.
The “obtaining” steps gather certain types of information about
embodiments of systems of the first and second unmanned vehicles. The
“obtaining” steps include “conducting testing” and the “testing” “includ[es]
operating” the vehicles “in each of [a] plural modes of operation” (i.e.,
“including pre-launch, launch, transit, mission, recovery, and post-
recovery”).
Finally, if based on the obtained information,
plural capability-based performance objectives[, i.e.,
Information A,] and . . . plural functional requirements[, i.e.,
Information B,] are not met by at least one of said first
embodiment of said unmanned vehicle system and said second
embodiment of said unmanned vehicle system, then the method
for evaluating the performance of an unmanned vehicle in an
unmanned vehicle system [is repeated].
This last step is a comparing step.
Putting it together, the claimed method describes obtaining certain
empirical data about two embodiments of unmanned vehicle systems and if
the data does not satisfy certain objectives and requirements, obtain the data
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again. This is what we reasonably broadly construe claim 1 as being
directed to.
The Abstract Idea7
Above, where we reproduce claim 1, we identify in italics the
limitations we believe recite an abstract idea.8 Based on our claim
construction analysis (above), we determine that said claim limitations are
directed to obtaining certain empirical data about two embodiments of
unmanned vehicle systems and if the data does not satisfy certain objectives
and requirements, obtain the data again.
In our view “obtaining” is a concept that can be performed in the
human mind. We are cognizant of the fact that the claim recites that said
“obtaining” “includ[es] conducting testing,” and that the testing “includ[es]
operating . . . [an] unmanned vehicle in each of said plural modes of
operation of [the respective embodiment].” Emphasis added. But the claim
does not expressly tie the obtaining of the empirical data to operating of the
unmanned vehicle. As long as operating of the unmanned vehicle through
each of the plural modes of operation is included, the “obtaining” of

7 This corresponds to Step 2A of the 2019 Revised 101 Guidance. Step 2A
determines “whether a claim is ‘directed to’ a judicial exception,” such as an
abstract idea. 2019 Revised 101 Guidance, 84 Fed. Reg. at 53. Step 2A is
two prong inquiry.
8 This corresponds to Prong One (a) of Step 2A of the 2019 Revised 101
Guidance. “To determine whether a claim recites an abstract idea in Prong
One, examiners are now to: (a) Identify the specific limitation(s) in the
claim under examination (individually or in combination) that the examiner
believes recites an abstract idea . . . .” 2019 Revised 101 Guidance, 84 Fed.
Reg. at 54.

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empirical data can still be performed purely mentally. The operating of the
unmanned vehicle through each of the plural modes of operation does not
affect the character of the “obtaining” of data as a mental process. Both
individually and in combination with the “identifying,” “providing,” and
“analyzing,” steps, followed by at least one repeat of two “providing,” two
“obtaining,” and two “analyzing” steps — if a certain condition occurs, the
subject matter to which the claim is directed to falls within the enumerated
“Mental processes” grouping of abstract ideas set forth in the 2019 Revised
101 Guidance.
Improvement to other technology or technical field 9 (Appellant’s
Argument)
The Examiner’s characterization of what the claim is directed to
(“configuring the allocation of functions between humans and robots in their
interactions” (Final Act. 3)) is incorrect. There is nothing in the claim about
configuring the allocation of functions between humans and robots in their
interactions. The Examiner’s further point about “additional computer

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

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elements, which are recited at a high level of generality” (id.) is also
incorrect. There is no computer mentioned in the claim.
The Appellant argues that the claimed subject matter “defines testing
of unmanned vehicles.” App. Br. 9. That is somewhat true. But testing
alone is not patent-eligible.
Appellant further argues that “Applicant’s claimed invention is
directed to a specific regime of performance and empirical analysis of
physical acts to attain technological benefits.” Id. (emphasis added). But
we see no technological benefits recited in or suggested by the claim. The
regime as it is currently worded in the claim simply sets forth a combination
of identifying, providing, obtaining, and analyzing steps that are unattached
to any device for performing them. The individual steps and their
combination as claimed could be performed purely mentally.
It is true that specific asserted improvements in technology, when
claimed, can render claimed subject matter not directed to an abstract idea.
Cf. McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1316
(Fed. Cir. 2016) (“When looked at as a whole, claim 1 is directed to a
patentable, technological improvement over the existing, manual 3–D
animation techniques.”). However, there is insufficient evidence in the
record before us that the claimed subject matter reflects any specific asserted
improvement in technology.
“The ‘abstract idea’ step of the inquiry calls upon us to look at the
‘focus of the claimed advance over the prior art’ to determine if the claim’s
‘character as a whole’ is directed to excluded subject matter.’” Affinity Labs
of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257–58 (Fed. Cir. 2016)
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(quoting Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed.
Cir. 2016)); see also Enfish, 822 F.3d at 1335; see also Ancora Techs., Inc.
v. HTC Am., Inc., 908 F.3d 1343, 1347 (Fed. Cir. 2018) (“We examine the
patent’s ‘claimed advance’ to determine whether the claims are directed to
an abstract idea.”) (quoting Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d
1299, 1303 (Fed. Cir. 2018)). “‘In cases involving software innovations,
this inquiry often turns on whether the claims focus on ‘the 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. (quoting Finjan, 879 F.3d at 1303); see BSG Tech LLC v.
BuySeasons, Inc., 899 F.3d 1281, 1285–86 (Fed. Cir. 2018). Computers are
improved not only through changes in hardware; “[s]oftware can make non-
abstract improvements to computer technology . . . .” Enfish, 822 F.3d at
1335; see Finjan, 879 F.3d at 1304 (“We have several times held claims to
pass muster under Alice step one when sufficiently focused on such
improvements.”)
The Specification’s description of the problem and solution shows the
advance over the prior art by the claimed invention is in “provid[ing] an
improved methodology for allocating functions between human beings and
robotic platforms in unmanned systems.” Spec. para. 7. “[T]here is a need
for a systematic approach to determining appropriate levels of autonomy in
unmanned systems. Of great benefit would be a process designed to guide
the development, configuration, and implementation of human-robot
systems.” Id. at para. 6. But the claim is not so limited. Nothing in the
claim calls for, for example, human-robot systems. While application of the
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claimed process to human-robot systems may be an improvement in the
technical field and thereby integrate the claimed process into a practical
application, the claim does not presently reflect that improvement.
Accordingly, within the meaning of the 2019 Revised 101
Guidance, we find there is no integration into a practical application.
We have considered all of the Appellant’s arguments challenging the
Examiner’s determination under step one of the Alice framework and find
them unpersuasive. For the foregoing reasons, the record supports the
Examiner’s determination that claim 1 is directed to an abstract idea; that is,
the mental process of obtaining certain empirical data about two
embodiments of unmanned vehicle systems and if the data does not satisfy
certain objectives and requirements, obtain the data again.

Alice step two – Does the Claim Provide an Inventive Concept?10
Step two is “a search for an ‘inventive concept’—i.e., an element or
combination of elements that is ‘sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [ineligible
concept] itself.’” Alice, 573 U.S. at 217–18 (quoting Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72–73 (2012)).

10 This corresponds to Step 2B of the 2019 Revised 101 Guidance page 56
(“[I]f a claim has been determined to be directed to a judicial exception
under revised Step 2A, examiners should then evaluate the additional
elements individually and in combination under Step 2B to determine
whether they provide an inventive concept (i.e., whether the additional
elements amount to significantly more than the exception itself).”).
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In that regard, the Examiner determined that the “claims do not
include additional elements that are sufficient to amount to significantly
more than the judicial exception because the additional computer elements,
which are recited at a high level of generality, provide conventional
computer functions that do not add meaningful limits to practicing the
abstract idea.” Final Act. 3. As we stated, there is no computer recited in
the claim. Accordingly, the Examiner’s determination under step two of the
Alice analysis is flawed.
The Appellant argues that
According to the traditional machine-or-transformation
test, a claimed method/process is patent-eligible if it: (i) is
implemented by a particular machine in a non-conventional and
non-trivial manner; or, (ii) transforms an article from one state
to another. The Alice decision instructs that, while the machine-
or-transformation test is not dispositive of a patent-eligibility
question, it is nonetheless an important factor to be considered.
Applicant’s claimed [subject matter] recites two unmanned
vehicles respectively characterized by two different levels of
autonomy. The two unmanned vehicles implementation [sic,
implement] the rules and steps of the inventive method in a
non-conventional and non-trivial manner. Furthermore, the
difference in terms of autonomy level between Applicant’s two
unmanned vehicles represents a transformation of an article
from one state to another.
App. Br. 13.
We are unpersuaded by this argument. We do not see any particular
machine implemented in a nonconventional manner. Nor do we
see any transformation. The unmanned vehicles themselves are known
— including at different levels of autonomy, as the Specification discloses.
The method as claimed does not transform them. They are simply provided.
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The method seeks to obtain certain data about them. Presently, the claim
does not reflect what happens to the system of the unmanned vehicles once
the data has been obtained. Cf. In re TLI Commc’ns LLC Patent Litig., 823
F.3d 607, 612 (Fed. Cir. 2016) (“Put differently, the telephone unit itself is
merely a conduit for the abstract idea of classifying an image and storing the
image based on its classification. Indeed, the specification notes that it ‘is
known’ that ‘cellular telephones may be utilized for image transmission,’ id.
at col. 1 ll. 31–34, and existing telephone systems could transmit pictures,
audio, and motion pictures and also had ‘graphical annotation capability,’ id.
at col. 1 ll. 52–59.”).
The Appellant also argues that
Applicant’s claimed invention is directed to the testing of
differently configured unmanned vehicles while applying
enumerated technical standards and criteria. Applicant’s
claimed invention is patent-eligible because it represents
significantly more than mental steps, as it combines rules with
test operation of alternative configurations, in terms of level
of autonomy, of an unmanned vehicle.
App. Br. 14. The difficulty with this argument is that it is not commensurate
in scope with what is claimed. The method does not “apply[ ] enumerated
technical standards and criteria.” According to the claim, empirical data
is obtained and compared to “plural capability-based performance
objectives[, i.e., Information B,] and . . . plural functional requirements[, i.e.,
Information C].” No technical standard/criteria is applied. The claim
simply obtains data, compares to unspecified objectives and requirements,
and if the data does not meet them, more data is obtained.
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The Appellant cites various Board decisions (App. Br. 10–12) but we
do not address them as they are not binding.
The Appellant also cites McRO. App. Br. 12–15. We have already
acknowledged that McRO indicates that specific asserted improvements in
technology, when claimed, can render claimed subject matter not directed to
an abstract idea. See McRO, 837 F.3d at 1313 (“[T]he claimed improvement
here is allowing computers to produce ‘accurate and realistic lip
synchronization and facial expressions in animated characters’ that
previously could only be produced by human animators.”) (emphasis added).
See also BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827
F.3d 1341, 1351 (Fed. Cir. 2016) (“[T]he claims may be read to ‘improve[ ]
an existing technological process.’”) (emphasis added; citation omitted).
Here, however, there is insufficient evidence in the record before us that the
claimed subject matter reflects any specific asserted improvement in
technology. Rather than being directed to any specific asserted
improvement in technology, the record supports the view that the claimed
subject matter is directed to a mental process; that is, obtaining certain
empirical data about two embodiments of unmanned vehicle systems and if
the data does not satisfy certain objectives and requirements, obtain the data
again. The difficulty here is that, notwithstanding certain improvements in
technology set forth in the record, the subject matter as claimed does not
reflect them.
Above, we noted that specific asserted improvements in technology
can turn claimed subject matter away from being directed to an abstract
under step one of the Alice framework. This is consistent with the case law.
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See Ancora, 908 F.3d at 1347 (“We have several times held claims to pass
muster under Alice step one when sufficiently focused on such
improvements.”). Such an argument, as the Appellant has done here, can
also challenge a determination under step two of the Alice framework. See
buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1354–55 (Fed. Cir. 2014).
“[R]ecent Federal Circuit jurisprudence has indicated that eligible subject
matter can often be identified either at the first or the second step of the
Alice/Mayo [framework].” 2019 Revised 101 Guidance, 84 Fed. Reg. at 53;
see also id. at n.17.
Be that as it may, we are unpersuaded that claim 1 as currently drafted
presents an element or combination of elements indicative of a specific
asserted improvement in technology, thereby rendering the claimed subject
matter sufficient to ensure that the patent in practice amounts to significantly
more than a patent upon the abstract idea itself.
Finally, as to the question of preemption, the Appellant argues that
“[t]he Court [in McRO] noted that it was concerned with preemption rather
than tangibility, and suggested that an invention may be patent-eligible
regardless of whether it passes the machine-or-transformation test.” App.
Br. 16.
The difficulty with this argument is that it confuses the preemption
concern with the level of abstraction describing the abstract idea. With
respect to the pre-emption concern, “[w]hat matters is whether a claim
threatens to subsume the full scope of a fundamental concept, and when
those concerns arise, we must look for meaningful limitations that prevent
the claim as a whole from covering the concept’s every practical
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application.” CLS Bank Int’l v. Alice Corp. Pty. Ltd., 717 F.3d 1269, 1281
(Fed. Cir. 2013) (Lourie, J., concurring). Pre-emption is not a separate test.
To be clear, the proper focus is not preemption per se, for some
measure of preemption is intrinsic in the statutory right granted
with every patent to exclude competitors, for a limited time,
from practicing the claimed invention. See 35 U.S.C. § 154.
Rather, the animating concern is that claims should not be
coextensive with a natural law, natural phenomenon, or abstract
idea; a patent-eligible claim must include one or more
substantive limitations that, in the words of the Supreme Court,
add “significantly more” to the basic principle, with the result
that the claim covers significantly less. See Mayo 132 S. Ct. at
1294. Thus, broad claims do not necessarily raise § 101
preemption concerns, and seemingly narrower claims are not
necessarily exempt.
Id. See also Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1379 (Fed. Cir. 2015) (“[w]hile preemption may signal patent ineligible
subject matter, the absence of complete preemption does not demonstrate
patent eligibility.”). Because we find the claimed subject matter covers
patent-ineligible subject matter, the pre-emption concern is necessarily
addressed. “Where 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.”
No other persuasive arguments having been presented, we conclude
that no error has been committed in the determination under Alice step two
that claim 1 does not include an element or combination of elements
circumscribing the patent-ineligible concept it is directed to so as to
transform the concept into an inventive application.
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We have considered all of the Appellant’s remaining arguments
(including those made in the Reply Brief) and find them unpersuasive.
Accordingly, because we are not persuaded as to error in the
determination that representative claim 1, and claims 3–7, 9, 10, and 19–24,
which stand or fall with claim 1, are directed to an abstract idea and do not
present an “inventive concept,” we sustain the Examiner’s conclusion that
they are directed to patent-ineligible subject matter for being judicially-
excepted from 35 U.S.C. § 101. Cf. LendingTree, LLC v. Zillow, Inc., 656
F. App’x 991, 997 (Fed. Cir. 2016) (“We have considered all of
LendingTree’s remaining arguments and have found them unpersuasive.
Accordingly, because the asserted claims of the patents in suit are directed to
an abstract idea and do not present an ‘inventive concept,’ we hold that they
are directed to ineligible subject matter under 35 U.S.C. § 101.”); see, e.g.,
OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1364 (Fed. Cir. 2015);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1098 (Fed. Cir.
2016).
Given our characterization of the abstract idea to which claim 1 is
directed and that it is substantially different from the one the Examiner
articulated, we denominate our affirmance as a new ground of rejection.

DECISION
The decision of the Examiner to reject claims 1, 3–7, 9, 10, and 19–24
is affirmed. We denominate the affirmance as a new ground of rejection.
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NEW GROUNDS
This Decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION:
must exercise one of the following two options with respect to
the new ground of rejection to avoid termination of the appeal
as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner . . . .
(2) Request rehearing. Request that the proceeding be
reheard under §41.52 by the Board upon the same Record . . . .
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED; 37 C.F.R. § 41.50(b)