Sahrudine Apdalhaliem et al.Download PDFPatent Trials and Appeals BoardNov 29, 201914301686 - (D) (P.T.A.B. Nov. 29, 2019) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 14/301,686 06/11/2014 Sahrudine Apdalhaliem 13-1506-US- NP 800-0039US 2345 107112 7590 11/29/2019 The Small Patent Law Group LLC 225 S. Meramec, Suite 725 St. Louis, MO 63105 EXAMINER SMITH, MAURICE C ART UNIT PAPER NUMBER 2877 NOTIFICATION DATE DELIVERY MODE 11/29/2019 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): docket@splglaw.com patentadmin@boeing.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SAHRUDINE APDALHALIEM and KIMBERLY D. MEREDITH Appeal 2018-005205 Application 14/301,686 Technology Center 2800 BEFORE JAMES C. HOUSEL, DEBRA L. DENNETT, and MERRELL C. CASHION, JR., Administrative Patent Judges. HOUSEL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to finally reject claims 1–20 under 35 U.S.C. § 101 as directed to patent ineligible subject matter.2 We have jurisdiction under 35 U.S.C. § 6(b). 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as The Boeing Company. Appeal Brief (“Appeal Br.”) filed Sept. 28, 2017, p. 5. 2 The Examiner has withdrawn each of the obviousness rejections under 35 U.S.C. § 103 leaving the § 101 rejection as the sole rejection remaining Appeal 2018-005205 Application 14/301,686 2 We AFFIRM.3 CLAIMED SUBJECT MATTER The invention relates to methods and systems for determining optical properties for light transmitted mediums. Spec. ¶ 1. Appellant discloses that reflectance and transmittance are highly dependent on the transmitted medium, such as an aircraft window, and greatly influence the medium system’s end performance. Id. ¶ 2. Because of this spectral dependency, Appellant discloses that conducting light transmission system or window performance studies across various architectures is difficult and costly. Id. ¶ 3. The invention provides a method, a system, and a tangible, non- transitory computer readable medium (“CRM”) for determining optical properties, including reflectance and transmittance, for a material. Id. ¶¶ 5– 7. Claim 1, reproduced below from the Claims Appendix to the Appeal Brief, is illustrative of the claimed subject matter: 1. A method for determining optical properties, the method comprising: acquiring one or more measured values indicative of a reflectance for a material; acquiring one or more measured values indicative of a transmittance for the material; determining a set of calculated values for an index of refraction coefficient and an extinction coefficient from the one or more measured values indicative of reflectance and transmittance, respectively; against the pending claims. Examiner’s Answer (“Ans.”) dated Mar. 9, 2018, pp. 2–3. 3 Our Decision additionally refers to the Specification (“Spec.”) filed June 11, 2014, the Final Office Action (“Final Act.”) dated May 8, 2017, and Appellant’s Reply Brief (“Reply Br.”) filed Apr. 18, 2018. Appeal 2018-005205 Application 14/301,686 3 identifying a calculated value from the set of calculated values for the index of refraction coefficient and a calculated value from the set of calculated values for the extinction coefficient that are within a threshold determined by the difference between the one or more measured values indicative of the reflectance or transmittance and a predicted reflectance or transmittance, respectively; and determining a reflectance and transmittance for the material using the calculated values identified within the threshold. Claim 10 recites a system for determining optical properties for a material including a processor configured to perform steps corresponding to the final three steps of claim 1. Claim 14 recites a tangible, non-transitory CRM comprising software including instructions configured to direct a processor to perform a method corresponding to that of claim 1. OPINION The Examiner maintains the rejection of claims 1–20 under 35 U.S.C. § 101 as directed to patent ineligible subject matter. Final Act. 7–8. We review the appealed rejection for error based upon the issues identified by Appellant and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.”). After considering the argued claims relative to case law presented in this Appeal and each of Appellant’s arguments, we are not persuaded that Appellant identifies reversible error. Thus, we affirm the Examiner’s rejection for the reasons Appeal 2018-005205 Application 14/301,686 4 expressed in the Final Office Action and the Answer. We add the following primarily for emphasis. Appellant presents substantially the same arguments against the rejection of independent claims 1, 10, and 14, except where noted below. Compare Appeal Br. 10–15 and 15–19. Appellant does not argue the dependent claims except as indicated below. In accordance with 37 C.F.R. § 41.37(c)(1)(iv), dependent claims 2–9, 11–13, and 15–20 stand or fall with their respective independent claim, which we select as representative in our opinion below. The Examiner identifies the abstract idea of a mathematical relationship for calculating the reflectance and transmittance of a material as the judicial exception recited in claims 1, 10, and 14. Final Act. 7. The Examiner further finds that the additional steps of acquiring reflectance and transmittance values from the material does not add significantly more to this abstract idea because doing so is common in the spectroscopy field. Id. In addition, the Examiner finds that the claims implement the abstract idea on a generic processor or general purpose computer, which does not amount to significantly more than the abstract idea. Id., citing Parker v. Flook, 437 U.S. 584, 594–95 (1978). The Examiner also determines that the calculation of an index of reflectance and an extinction coefficient does not improve the optical analysis of the material or remove chromatic aberration. Id. Appellant raises a number of arguments with regard to this rejection. Appeal Br. 10–15. Appellant argues that the Examiner failed to establish a prima facie case of subject matter ineligibility because: 1) The rejection failed to specifically address the complete and full language of any of the pending claims (id. at 11); 2) The rejection merely vaguely identified the Appeal 2018-005205 Application 14/301,686 5 abstract idea as a mathematical relationship for calculating the reflectance and transmittance of a material (id.); 3) The rejection failed to provide a reasoned rationale or identify a judicial exception with respect to all of the limitations of any claim (id. at 11–12); 4) The rejection failed to explain why the limitations of each claim does not amount to significantly more than the judicial exception (id. at 12, 16–17, 18–19); 5) The Examiner seemingly acknowledged that at least certain dependent claims recite significantly more than the abstract idea by stating that these claims recite allowable subject matter (id.); 6) The rejection made no attempt to indicate how the abstract idea is similar to at least one concept identified by the courts as an abstract idea (id.); 7) The concept of calculating a value of reflectance and transmittance is not similar to one identified by the courts as an abstract idea (id. at 13); 8) Claims 1, 10, and 14 are not directed to a law of nature, a natural phenomenon, or an abstract idea (id. at 13, 15, 17); 9) Claims 1, 10, and 14 do not relate to, among other things, isolated mathematical relationships or formulas (id. at 13–14, 16, 18); and 10) Claims 1, 10, and 14 recite significantly more than the alleged abstract idea, because they do not merely calculate the reflectance and transmittance of a material (id. at 14– 15, 16, 18). Legal Framework 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). Appeal 2018-005205 Application 14/301,686 6 In determining whether a claim falls within an excluded category, our inquiry focuses on 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 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 (Flook, 437 U.S. at 594–95); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (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 (1854))); 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 mathematical formula.” Diehr, 450 U.S. at 176; see also id. at 191 (“We view respondents’ claims as nothing more than a process for molding rubber Appeal 2018-005205 Application 14/301,686 7 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 (quotation marks omitted). “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 Office recently published revised guidance on the application of § 101. USPTO’s January 7, 2019 Memorandum, 2019 Revised Patent Subject Matter Eligibility Guidance (“Memorandum”), 84 Fed. Reg. 50. Under that guidance, we first look to whether the claim recites: (1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing Appeal 2018-005205 Application 14/301,686 8 human activity such as a fundamental economic practice, or mental processes); and (2) additional elements that integrate the judicial exception into a practical application (see MPEP § 2106.05(a)–(c), (e)–(h)). Only if a claim recites a judicial exception and 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. See generally Memorandum. Analysis Applying the guidance set forth in the Memorandum, we conclude that claims 1–20 do not recite patent-eligible subject matter. Revised Step 2A, Prong One–Directed to a Judicial Exception The Memorandum instructs us first to determine whether each claim recites any judicial exception to patent eligibility. 84 Fed. Reg. at 54. The Memorandum identifies three judicially-excepted groupings: (1) mathematical concepts, (2) certain methods of organizing human activity such as fundamental economic practices, and (3) mental processes. Id. at 52. The Examiner finds claim 1 recites the abstract idea of a mathematical relationship for calculating the reflectance and transmittance values for a material. Final Act. 7. Therefore, we primarily focus here on the first grouping—mathematical concepts. Appeal 2018-005205 Application 14/301,686 9 Claim 1 recites a method for determining the reflectance and transmittance for a material using calculated values identified within a threshold determined by a difference between one or more measured values indicative of the material’s reflectance and transmittance and a predicted reflectance and transmittance. This method recites the abstract idea of mathematical concepts, wherein the acquiring steps merely present information, i.e., one or more measured values indicative of a reflectance and a transmittance for the material, that will be used in the determining and identifying steps to arrive at calculated values of the reflectance and transmittance for the material. Each of the acquiring steps is recited at a high level of generalization and merely provides information to be used in the process. Providing information is a step that can be performed in the human mind. As such, these acquiring steps, including the steps of (1) “acquiring one or more measured values indicative of a reflectance for a material,” and (2) “acquiring one or more measured values indicative of a transmittance for the material,” are mental steps directed to a mental process. The first determining step of claim 1 determines “a set of calculated values” for an index of refraction coefficient and an extinction coefficient from the information provided by the acquiring steps. By its very use of “calculated,” this step requires one or more mathematical operations to determine the set of values for the index of refraction and extinction coefficients. That this first determining step sets forth a mathematical concept is further reinforced by the Specification which teaches that these values are calculated using optical equations that are solved for the index of refraction, n, and the coefficient of extinction, κ. Spec. ¶¶ 40, 46–59. Appeal 2018-005205 Application 14/301,686 10 The identifying step of claim 1 identifies a calculated value for each of the index of refraction and extinction coefficients from the set of calculated values provided by the first determining step that is within a threshold determined by the difference between the acquired values indicative of the material’s reflectance and transmittance and a predicted reflectance and transmittance. This difference is the result of the mathematical operation of subtraction. According to the Specification, this step is performed by iteratively comparing calculated values to the difference until a calculated value is identified that is within this threshold. Spec. ¶¶ 60, 61, 66. The Specification teaches that this comparison is performed by comparing the absolute value of the difference and a calculated value to determine if the calculated value is less than or equal to the absolute value of the difference. Id. This comparison is performed iteratively until a calculated value is identified that is less than or equal to the absolute value of the difference. Id. Therefore, this identification step also performs and sets forth a mathematical process.4 The remaining step recited in claim 1, the step of “determining a reflectance and transmittance for the material using the calculated values identified within the threshold,” also recites a mathematical concept. Appellant discloses that the reflectance and transmittance are calculated using the calculated values of the two coefficients identified in the identification step. Spec. ¶ 61 (“These values are then used to generate and 4 Although the actual comparison step may be performed mentally and is therefore a mental process, the identification step is performed using a mathematical algorithm as disclosed in the Specification. Therefore, we continue to focus on mathematical concepts, as identified by the Examiner, in our analysis. Appeal 2018-005205 Application 14/301,686 11 output a calculation of the reflectance and transmittance for the substance of the particular material.”). As the Examiner indicates, Appellant’s method of claim 1 is analogous to that of Flook, which provided an original value for an alarm limit, e.g., an alarm base plus tolerance offset, and a process variable, and solved a mathematical equation to arrive at an updated alarm limit. Flook, 437 U.S. at 596–98. The Court held that Flook’s claims recited a mathematical concept. Id. at 595. We further note that these steps are similar to other concepts the courts have identified as abstract ideas, i.e., mathematical concepts and/or 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 (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, Appeal 2018-005205 Application 14/301,686 12 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., TLI Commc’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 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 (1978); Gottschalk v. Benson, 409 U.S. 63, 67 (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). Thus, contrary to Appellant’s arguments, the Examiner’s identification of the judicial exception which the claims recite—a mathematical relationship for calculating the reflectance and transmittance of a material—is supported by a preponderance of the evidence and is sufficiently identified as required by the Memorandum. Independent claim 10 recites a system comprising a spectrophotometer which is used to provide the one or more measured values indicative of the reflectance and transmittance for a material, a storage subsystem to store these values, and a processor configured to perform the determining and identifying steps of claim 1. Appeal Br. 32. Thus, claim 10 recites a spectrophotometer, a storage subsystem, and a Appeal 2018-005205 Application 14/301,686 13 process at a high level of generality. Fundamentally, this claim recites the same judicial exception, a mathematical concept for calculating the reflectance and transmittance for a material, for substantially the same reasons as provided above regarding claim 1. The Specification teaches that the spectrophotometer is any device capable of performing spectrophotometry, and may be simple or complex. Spec. ¶ 25. In addition, the Specification teaches that the storage subsystem may be any one or more of a wide variety of removable or integrated devices configured to store or hold data, including a CRM, optical memory devices, semiconductor memory devices, and magnetic memory devices, having one or more of the following operating characteristics: volatile, nonvolatile, dynamic, static, read/write, read-only, random access, sequential access, location addressable, file addressable, and content addressable. Id. ¶ 31. Moreover, the processor is disclosed to be any type of computing or processing system. Id. ¶ 29. These devices are merely configured so as to perform the method of claim 1, which recites a judicial exception, i.e., mathematical concept, and the system likewise also recites this judicial exception. Independent claim 14 recites a CRM comprising software instructions configured to direct one or more processors to perform a method corresponding to that of claim 1. As such, claim 14 recites the same judicial exception as claim 1—a mathematical concept for determining the reflectance and transmittance for a material. We note Appellant argues that the claims do not relate to, among other things, “isolated mathematical relationships or formulas.” Appeal Br. 14, 16, 18. This argument misapprehends the purpose of Step 2A, Prong One Appeal 2018-005205 Application 14/301,686 14 of the test set forth in the Memorandum which is to determine whether the claims at issue recite any judicial exception to patent eligibility. There is no requirement that the Examiner determine in this step of the analysis that the identified judicial exception is “isolated.” Accordingly, applying the guidance in the Memorandum, we conclude that claims 1, 10, and 14 each recite an abstract idea, i.e., a mathematical concept, and thus recite a judicial exception. Revised Step 2A, Prong Two – Practical Application Having determined that claims 1, 10, and 14 recite the abstract concept of a mathematical relationship for calculating the reflectance and transmittance values for a material, we next look to determine whether the claims recite “additional elements that integrate the judicial exception into a practical application.” MPEP § 2106.05(a)–(c), (e)–(h); Memorandum, 84 F.3d at 53–54. Integration into a practical application requires an additional element or a combination of additional elements in the claim to “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 exception.” Memorandum, 84 Fed. Reg. at 53– 54; see also id. at 55 (setting forth exemplary considerations indicative that an additional element or combination of elements may have integrated the judicial exception into a practical application). Here, we find none. We find that the additional elements claims 1, 10, and 14 recite do not integrate the judicial exception into a practical application. Notably, the claims do not recite, the Specification does not describe, and Appellant does not assert an improvement to the functioning of a computer. Nor are the additional elements directed to a particular machine Appeal 2018-005205 Application 14/301,686 15 or transformation. In addition, Appellant does not argue or otherwise demonstrate that the claims provide an improvement to a technology or technical field. To the contrary, the Examiner determined that the claimed method does not improve the optical analysis for characterizing the material, such as increasing the spectral resolution or removing chromatic aberrations. Final Act. 7. The claims merely produce two numbers, albeit numbers which represent natural properties of a material. Indeed, the method does not require any step of applying or using these numbers for any purpose or to solve any problem. As we indicated above, the acquiring steps are merely data gathering steps that do not integrate the claimed method into a practical application and the remaining determining and identifying steps are directed to the abstract idea. With regard to the system of claim 10 comprising a spectrophotometer, a storage subsystem, and a processor, as indicated above, none of these devices is directed to a particular machine or transformation, nor does Appellant argue otherwise. Moreover, none of these devices improve the functioning of a computer or to another technology or technical field, nor does Appellant argue otherwise. We note that Appellant discloses these devices broadly encompassing any device capable of performing the stated function at a high level of generality.5 But such disclosure does not integrate the mathematical concepts recited in the claims into a practical application. See Memorandum, 84 Fed. Reg. at 55 (setting forth examples in 5 Although some of these considerations also may be properly evaluated under Step 2 of Alice (Step 2B of Office guidance), consistent with the Memorandum, we evaluate them under Step 1 of Alice (Step 2A of Office guidance). See Memorandum, 84 Fed. Reg. at 55. Appeal 2018-005205 Application 14/301,686 16 which a judicial exception has not been integrated into a practical application). With regard to Appellant’s argument that the Examiner’s indication that claims 2, 5, 12, 15, and 18 recite allowable subject matter is an acknowledgement that these claims recite significantly more than the abstract idea, we disagree. Initially, we note that the Examiner actually stated that these claims would be allowable if rewritten to overcome the § 101 rejection and to include all of the limitations of the base claim and any intervening claims. Final Act. 19. Thus, the Examiner is merely stating that these claims recite subject matter which, when combined with the limitations of the base and any intervening claims, is free of the prior art, i.e., is novel and non-obvious. At the same time, the Examiner clearly stated that any such amended claims must be rewritten to also overcome the § 101 rejection, thereby indicating that these claims are not in compliance with § 101. Appellant’s argument thus mischaracterizes what the Examiner stated. Moreover, to the extent Appellant asserts the claims are distinguishable from the claims of other cases, such as Alice, due to a lack of applied prior art (see Reply Br. 2), we note that the mere fact an abstract idea is novel or non-obvious does not render the subject matter eligible under § 101. In response to an argument that a claim contained an inventive concept because it was not shown to be anticipated under § 102 or obvious under § 103, the Federal Circuit has stated: [t]hat position misstates the law. It is true that “the § 101 patent- eligibility inquiry and, say, the § 102 novelty inquiry might sometimes overlap.” Mayo, 132 S. Ct. at 1304. But, a claim for a new abstract idea is still an abstract idea. The search for a § 101 inventive concept is thus distinct from demonstrating § 102 novelty. Appeal 2018-005205 Application 14/301,686 17 Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016). Accordingly, we conclude, as did the Examiner, that the claims recite a judicial exception, i.e., the abstract idea of a mathematical relationship for calculating the transmittance and reflectance values of a material, and do not integrate this judicial exception into a practical application. Step 2 B–Inventive Concept Because we determine that claims 1, 10, and 14 recite an abstract idea and they do not include additional elements that integrate the abstract idea into a practical application, we look to whether each claim provides an inventive concept, i.e., adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field. Memorandum, 84 Fed. Reg. at 56. Again, we find none. Although claim 10 recites a spectrophotometer, a storage subsystem, and a processor, Appellant neither argues nor otherwise establishes that these devices were not well- understood, routine, and conventional. To the contrary, Appellant discloses these devices encompass any device capable of performing the recited function, thus recognizing the well- understood, routine, and conventional nature of the spectrophotometers, storage subsystems, and processors that may implement claim 1’s mathematical concepts. See TLI Commc’ns LLC v. AV Auto. LLC, 823 F.3d 607 (Fed. Cir. 2016). As noted above, the Specification teaches that the spectrophotometer is any device capable of performing spectrophotometry, and may be simple or complex. Spec. ¶ 25. In addition, the Specification teaches that the storage subsystem may be any one or more of a wide variety of removable or integrated devices configured to store or hold data, Appeal 2018-005205 Application 14/301,686 18 including a CRM, optical memory devices, semiconductor memory devices, and magnetic memory devices, having one or more of the following operating characteristics: volatile, nonvolatile, dynamic, static, read/write, read-only, random access, sequential access, location addressable, file addressable, and content addressable. Id. ¶ 31. Moreover, the processor is disclosed to be any type of computing or processing system. Id. ¶ 29. These devices are merely configured so as to perform the method of claim 1, and clearly encompass well-understood, routine, and conventional devices. Accordingly, we conclude that method claims 1–9, system claims 10– 13, and CRM claims 14 and 15 are directed to patent ineligible subject matter under 35 U.S.C. § 101. They ensnare the abstract idea of a mathematical relationship for calculating the transmittance and reflectance values of a material and do not recite additional elements that integrate this mathematical relationship or concept into a practical application. Further, implementing the abstract idea on a system comprising a generic spectrophotometer, generic storage subsystem, and generic processor does not transform it into a patentable apparatus; the idea remains a pre- empted mathematical concept. Alice, 573 U.S. 208, 216 (2014) (“We have described the concern that drives this exclusionary principle as one of pre- emption.”) (citing Bilski, 561 U.S. at 612 (“[U]pholding the patent ‘would pre-empt use of this approach in all fields, and would effectively grant a monopoly over an abstract idea.’”)). Here, the calculation of reflectance and transmittance values for a material of the claims is an abstract idea, and the use of a general computer does not transform the nature of the abstract mathematical relationship into something that is patent eligible. Appeal 2018-005205 Application 14/301,686 19 CONCLUSION Upon consideration of the record, and for the reasons given above and in the Final Office Action and the Examiner’s Answer, the decision of the Examiner rejecting claims 1–20 under 35 U.S.C. § 101 as directed to patent ineligible subject matter is affirmed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Basis Affirmed Reversed 1–20 101 Ineligible subject matter 1–20 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation