Samsung Electronics Co., Ltd.

Patent Trials and Appeals Board

May 19, 2020

2019002297 (P.T.A.B. May. 19, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/479,902 09/08/2014 Hee-bum AHN 784-196 (SH-47028-
US-DMC)
1114
66547 7590 05/19/2020
THE FARRELL LAW FIRM, P.C.
Paul J Farrell
290 Broadhollow Road
Suite 210E
Melville, NY 11747
EXAMINER
SIRJANI, FARIBA
ART UNIT PAPER NUMBER
2659
NOTIFICATION DATE DELIVERY MODE
05/19/2020 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):
pto@farrelliplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HEE-BUM AHN, DO-HYEON KIM, HO-YOUNG JUNG, and
SEONG-TAEK HWANG
Appeal 2019-002297
Application 14/479,902
Technology Center 2600
Before JAMES B. ARPIN, GREGG I. ANDERSON, and
AMBER L. HAGY, Administrative Patent Judges.
HAGY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–4, 8–14, and 18–23, which are all of
the pending claims.2 See Final Act. 1. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Samsung Electronics
Co., Ltd. Appeal Br. 1.
2 Claims 5–7 and 15–17 have been canceled. Appeal Br. 17, 20 (Claims
App.).
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CLAIMED SUBJECT MATTER
According to Appellant, “[t]he present invention generally relates to a
method of and electronic device for converting user handwriting into text
information.” Spec. ¶ 1.3 By way of background, Appellant’s Specification
describes known uses of an input device, such as “an electronic pen or a
stylus,” to write text information on a touch screen of an electronic device.
Id. ¶ 2. The Specification also describes known use of “handwriting
recognition” for converting the handwritten input into text information,
which may then be “freely corrected and stored in an electronic device.” Id.
The Specification describes a purported drawback in the art in which “a
handwriting input is converted into text information,” but the system “is
unable to analyze an input sentence and paragraph, determine what layout
form an input sentence and paragraph are arranged in, and provide such a
determination.” Id.
Claims 1, 10, and 11 are independent. Claim 1, reproduced below
with disputed limitations italicized, illustrates the claimed subject matter:
1. A method of converting user handwriting into text
information by reflecting a paragraph form of the user
handwriting in an electronic device, the method comprising:
receiving, by a user handwriting input receiving receiver,
a handwriting input to a touch screen of the electronic device
from a user;
determining, by at least one processor, a font size of a
letter included in the handwriting input based on an average
size of all letters included in the handwriting input;

3 Citations to the Specification are to the document filed on September 8,
2014.
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determining, by the at least one processor, handwriting
coordinates of the letter included in the handwriting input based
on the font size of the letter;
converting the handwriting input into text information
based on the handwriting coordinates;
recognizing, by the at least one processor, a paragraph
form of the received handwriting input based on a size of the
handwriting coordinates and a distance between a plurality of
handwriting coordinates;
applying, by the at least one processor, the recognized
paragraph form to the converted text information based on
recognizing the paragraph form;
recognizing, by the at least one processor, an entity
included in the received handwriting input; and
applying information, by the at least one processor,
which is predetermined in correspondence with the recognized
entity to the converted text information.
REFERENCES4
The Examiner relies on the following references:
Name Reference Date
Altman
Chen
Wecker
Brelig
US 2002/0064308 A1
US 2005/0063591 A1
US 2005/0135678 A1
US 2013/0204754 A1
May 30, 2002
Mar. 24, 2005
June 23, 2005
Aug. 8, 2013

4 All references are identified by the first-named inventor.
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REJECTIONS5
Claims 1–4, 8–14, and 18–23 stand rejected under 35 U.S.C. § 101 as
directed to patent-ineligible subject matter (abstract idea) without
significantly more. Final Act. 13–22.
Claims 1–4, 8–14, 18–20, and 22 stand rejected under 35 U.S.C. § 103
as unpatentable over the combined teachings of Wecker and Altman. Final
Act. 22–38.
Claim 21 stands rejected under 35 U.S.C. § 103 as unpatentable over
the combined teachings of Wecker, Altman, and Brelig. Final Act. 39–41.
Claim 23 stands rejected under 35 U.S.C. § 103 as unpatentable over
the combined teachings of Wecker, Altman, and Chen. Final Act. 41–43.
OPINION
I. SECTION 101 REJECTION
The Examiner rejects all of the pending claims under 35 U.S.C. § 101
as patent ineligible because they are directed to a judicial exception without
significantly more. Final Act. 2–6, 13–22; Ans. 15–29. Appellant argues
that the claims are not directed to an abstract idea, are directed to patent-
eligible subject matter, and the Examiner’s rejection should be reversed.
Appeal Br. 11–14; Reply Br. 4–10. For the reasons explained below, we are
not persuaded of Examiner error in the § 101 rejection, and we, therefore,
sustain that rejection.

5 All rejections are under the provisions of Title 35 of the United States
Code in effect after the effective date of the Leahy-Smith America Invents
Act of 2011.
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A. PRINCIPLES OF LAW
Under 35 U.S.C. § 101, an invention is patent eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. The U.S. Supreme Court, however, has interpreted § 101
to include an implicit exception: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S.
208, 216 (2014).
The Court, in Alice, reiterated the two-part framework previously set
forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc.,
566 U.S. 66, 75–77 (2012), “for distinguishing patents that claim laws of
nature, natural phenomena, and abstract ideas from those that claim patent-
eligible applications of those concepts.” Alice, 573 U.S. at 217. The first
part in the analysis is to “determine whether the claims at issue are directed
to one of those patent-ineligible concepts.” Id. For example, abstract ideas
include, but are not limited to, fundamental economic practices, methods of
organizing human activities, an idea of itself, and mathematical formulas or
relationships. Id. at 218–20. The “directed to” inquiry asks not whether
“the claims involve a patent-ineligible concept,” but instead whether,
“considered in light of the specification, . . . ‘their character as a whole is
directed to excluded subject matter.’” Enfish, LLC v. Microsoft Corp.,
822 F.3d 1327, 1335 (Fed. Cir. 2016). In that regard, we determine whether
the claims “focus on a specific means or method that improves the relevant
technology” or are “directed to a result or effect that itself is the abstract idea
and merely invoke generic processes and machinery.” McRO, Inc. v. Bandai
Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016).
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If, in the first part of the Alice/Mayo analysis, we conclude that the
claims are not directed to a patent-ineligible concept, we consider them
patent eligible under § 101, and our inquiry ends. Rapid Litig. Mgmt. Ltd. v.
CellzDirect, Inc., 827 F.3d 1042, 1047 (Fed. Cir. 2016).
If the claims are directed to a patent-ineligible concept, the second
part in the Alice/Mayo analysis is to consider the elements of the claims
“individually and ‘as an ordered combination’” to determine whether there
are additional elements that “‘transform the nature of the claim’ into a
patent-eligible application.” Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S.
at 79, 78). In other words, the second part is to “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.’” Id. at 217–18 (alteration in original)
(internal citation marks omitted) (quoting Mayo, 566 U.S. at 72–73). The
prohibition against patenting an abstract idea “‘cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment’ or adding ‘insignificant postsolution activity.’” Bilski v.
Kappos, 561 U.S. 593, 610–11 (2010).
The U.S. Patent and Trademark Office (the “Office”) has published
revised guidance on the application of 35 U.S.C. § 101. 2019 Revised
Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50–57 (Jan. 7,
2019) (“2019 Guidance,” or “2019 Guidance, 84 Fed. Reg.”). Under the
2019 Guidance, the Office first looks to whether the claim recites: (1) any
judicial exceptions, including certain groupings of abstract ideas (i.e.,
mathematical concepts, certain methods of organizing human activity such
as commercial or legal interactions, including advertising and marketing, or
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mental processes); and (2) additional elements that integrate the judicial
exception into a practical application. See 2019 Guidance, 84 Fed. Reg. at
52, 54–55; see also MPEP §§ 2106.05(a)–(c), (e)–(h).6
Only if a claim (1) recites a judicial exception, and (2) does not
integrate that exception into a practical application, does the Office then
look to whether the claim: (a) adds a specific limitation beyond the judicial
exception that are not “well-understood, routine, conventional” in the field
(see MPEP § 2106.05(d)); or (b) simply appends well-understood, routine,
conventional activities previously known to the industry, specified at a high
level of generality, to the judicial exception. See 2019 Guidance, 84 Fed.
Reg. at 56. We follow this guidance here.7
In reviewing the Examiner’s rejection under § 101, we group all the
claims together and select claim 1 as representative of the group, as
Appellant has done. See 37 C.F.R. § 31.47(c)(1)(iv); Appeal Br. 14.
Accordingly, all claims stand or fall with claim 1. We address the claims
generally where possible, but when it is helpful to refer to explicit claim
language, we refer to claim 1.

6 Unless otherwise specified herein, all references to the MPEP are to Rev.
08.2017 (Jan. 2018).
7 “All USPTO personnel are, as a matter of internal agency management,
expected to follow the guidance.” 2019 Guidance, 84 Fed. Reg. at 51; see
also October 2019 Update: Subject Matter Eligibility, 1 (Oct. 17, 2019)
(“October 2019 Update”) (“Note, the feedback received was primarily
directed to examination procedures and, accordingly, this update focuses on
clarifying practice for patent examiners. However, all USPTO personnel are
expected to follow the guidance.”), available at https://www.uspto.gov/sites/
default/files/documents/peg_oct_2019_update.pdf.
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B. APPLICATION OF LEGAL PRINCIPLES
1. Step 2A of 2019 Guidance
Prong 1: Claims Recite an Abstract Idea
As an initial matter, Appellant argues “the Examiner fails to show
why neither the user handwriting input receiving receiver nor the processor
of Claim 1 falls within one of the ‘process, machine, manufacture, or
composition of matter’ that §101 expressly recognizes as being proper to
‘obtain a patent therefor.’” Appeal Br. 13. We disagree. The Examiner’s
analysis under the framework set out in Alice/Mayo presumes that the claims
recite statutory subject matter, and evaluates the claims to determine whether
they recite a judicial exception to patent eligibility. See Final Act. 13 (citing
§ 101 and characterizing the rejection as based on the claims being “directed
to a judicial exception” (emphasis omitted)); see also Ans. 19.
Appellant also argues “the Examiner fails to perform each of the
required steps of the Alice/Mayo test, and fails to recognize the instruction in
the Interim Guidance on Patent Subject Matter Eligibility that ‘the Supreme
Court did not create a per se excluded category of subject matter, such as
software or business methods, nor imposes any special requirements for
eligibility of software or business methods.’” Appeal Br. 12 (citing 79 Fed.
Reg. 74618, 74629). We disagree. Contrary to Appellant’s characterization,
the Examiner does not apply a “per se” rejection of Appellant’s claimed
invention as implemented in software. Rather, the Examiner expressly
applies the framework set out in Alice/Mayo. See Final Act. 3, 14, 16; see
also Ans. 18–19.
As the first part of Alice/Mayo analysis, the Examiner determines the
claims recite abstract ideas in terms of actions that could be performed by a
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human mentally. See Final Act. 14, 16. In particular, the Examiner finds
each step could be performed by a human, such as “Person A” receiving a
handwritten note from “[P]erson B,” and then, exercising mental processes
by “eyeball[ing]” handwriting, determining an appropriate font, font size,
text placement, and paragraph formatting, followed by manually typing the
note and applying the determined font and formatting. Id. at 15–16. The
Examiner then finds:
Therefore, the method consists of a series of operations that
may be handled by a person: “a method that can be performed
by human thought alone is merely an abstract idea and is not
patent-eligible under Section 101.” Some limitations require
hands and the other limitations may be done in the mind of the
Person based on data collected by the eye. The critical
limitations are normally performed by thought and the Claim
does not provide any specificity that would make these
limitation suitable for a machine. . . . As is they are directed to
a general process of scaling. Additionally, the process may be
categorized as a process of collecting and organizing data such
that the handwritten text data is organized in paragraphs.
Id. at 16.
Appellant does not present any arguments specific to the Examiner’s
determination that the claims recite an abstract idea, but instead challenges
other aspects of the Examiner’s rejection, including compliance with the
“Berkheimer Memo,”8 which we address in subsequent sections below. See
Appeal Br. 11–14; Reply Br. 4–10.

8 USPTO Memorandum of April 19, 2018, “Changes in Examination
Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter
Eligibility Decision (Berkheimer v. HP, Inc.)” (Apr. 19, 2018), available at
https://www.uspto.gov/sites/default/files/documents/memo-berkheimer-
20180419.PDF.
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As stated herein, we agree generally with the Examiner’s rejection
under § 101. We clarify and expand the Examiner’s reasoning below,
applying the 2019 Guidance.
The 2019 Guidance uses enumerated groupings of abstract ideas that
are rooted in U.S. Supreme Court precedent, as well as Federal Circuit
decisions interpreting that precedent. See 2019 Guidance, 84 Fed. Reg. at
51–52. By grouping the abstract ideas, the 2019 Guidance synthesizes the
holdings of various court decisions to facilitate examination. The 2019
Guidance describes one category of abstract ideas as including “[m]ental
processes”; that is, “concepts performed in the human mind (including an
observation, evaluation, judgment, opinion).” Id. (footnote omitted).
Claim 1 recites at least the following limitations: “receiving . . . a
handwriting input”; “determining . . . a font size of a letter included in the
handwriting input based on an average size of all letters included in the
handwriting input”; “determining . . . handwriting coordinates of the letter
included in the handwriting input based on the font size of the letter”;
“converting the handwriting input into text information based on the
handwriting coordinates”; “recognizing . . . a paragraph form of the received
handwriting input based on a size of the handwriting coordinates and a
distance between a plurality of handwriting coordinates”; and “applying . . .
the recognized paragraph form to the converted text information based on
recognizing the paragraph form.” These limitations, under their broadest
reasonable interpretation, recite converting handwritten text into typed text
while preserving font size and paragraph formatting.
As the 2019 Guidance states, “[i]f a claim, under its broadest
reasonable interpretation, covers performance in the mind but for the
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recitation of generic computer components, then it is still in the mental
processes category unless the claim cannot practically be performed in the
mind.” See 2019 Guidance, 84 Fed. Reg. at 52 n.14. Here, with the
exception of generic computer implemented functions or steps, there is
nothing in the claims themselves that forecloses them from being performed
by a human, mentally or with pen and paper. See Intellectual Ventures I
LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016) (holding that
claims to screening messages in the context of electronic communications
were directed to an abstract idea because they could, but for the recitation of
generic computer-implemented steps, be done by a human with the aid of
pen and paper); see also October 2019 Update at 8 (“The courts have found
claims requiring a generic computer or nominally reciting a generic
computer may still recite a mental process even though the claim limitations
are not performed entirely in the human mind.”).
In particular, as the Examiner finds, and we agree, each of the steps of
receiving handwritten input, and determining font, font size, and paragraph
formatting, could be performed by a human, by viewing a handwriting input.
See Final Act. 15–16; Ans. 15–16. A human could also convert the
handwritten input into text, including font and formatting, by employing the
mental conversion steps and typing the converted input on a typewriter or
using a standard word processor program on a generic computer. See id.
Claim 1 also recites steps of “recognizing . . . an entity included in the
received handwriting input” and “applying information . . . which is
predetermined in correspondence with the recognized entity to the converted
text information.” These limitations, under their broadest reasonable
interpretation, recite collecting and comparing known information to
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determine a result. We determine, on this record, that they amount to mental
processes in that they could be performed in a human mind. For example,
the Specification explains an “entity” can be a date. Spec. ¶ 2. As the
Examiner finds, and we agree, a human viewing a handwritten input could
see that “the note has 6/16/16” (an entity) and could apply known
conventions regarding date representations to instead type “June 16, 2016”
(converted text information). See Final Act. 16. We agree that such a step is
a mental process because it is the type of function that a person could
practically perform mentally. See, e.g., October 2019 Update at 8 (giving as
an example of a claim reciting a “mental process” a “claim to collecting and
comparing known information . . . , which are steps that can be practically
performed in the human mind”).
Thus, under Prong 1 of Step 2A and in accordance with the 2019
Guidance, we agree with the Examiner’s determination that the claims recite
a judicial exception to patentability. In particular, we determine that the
claims recite a mental process, and we, therefore, agree with the Examiner’s
conclusion that the claims recite an abstract idea.
Prong 2: Claims Do Not Integrate the Abstract
Idea Into a Practical Application9
In accordance with Prong 2 of Step 2A of the 2019 Guidance, we
evaluate the claims to determine whether they recite additional elements

9 We acknowledge that some of these considerations may be properly
evaluated under the second part of the Alice/Mayo framework (Step 2B of
the 2019 Guidance). For purposes of maintaining consistent treatment
within the Office, we evaluate them under the first part of the Alice/Mayo
framework (Step 2A of the 2019 Guidance). See 2019 Guidance, 84 Fed.
Reg. at 54–55.
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beyond the abstract idea, and, if so, we evaluate the additional elements to
determine whether they integrate the abstract idea into a practical
application. 2019 Guidance, 84 Fed. Reg. at 54. The 2019 Guidance, 84
Fed. Reg. at 55, provides exemplary considerations, including whether an
additional element:
 “reflects an improvement in the functioning of a computer, or
an improvement to other technology or technical field”;
 “implements a judicial exception with, or uses a judicial
exception in conjunction with, a particular machine or
manufacture that is integral to the claim”;
 “effects a transformation or reduction of a particular article [or
thing] to a different state or thing”; or
 “applies or uses the judicial exception in some other meaningful
way beyond generally linking the use of the judicial exception
to a particular technological environment.”
The 2019 Guidance also highlights certain examples in which courts
have held that “a judicial exception has not been integrated into a practical
application,” such as where the claimed invention “merely uses a computer
as a tool to perform an abstract idea” or the additional element adds
“insignificant extra-solution activity” to the abstract idea. 2019 Guidance,
84 Fed. Reg. at 55 (emphasis added); see also October 2019 Update at 11–
15.
Beyond the recited abstract ideas discussed above, claim 1 also recites
“a touch screen of [an] electronic device” and a “processor.” The Examiner
finds the additional recited components are “generic computer components
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engaged in performing their generic and well-known functions and not
sufficient to overcome the rejection.” Final Act. 17.
Although Appellant argues that the claims “provide[] a claimed
solution that is necessarily rooted in computer technology in order to
overcome a problem specifically arising in the realm of computer networks”
(Appeal Br. 13), Appellant’s argument is conclusory and lacks any citation
to the record in support of this contention. In that regard, Appellant’s
reliance on DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed.
Cir. 2014) is unavailing. In DDR Holdings, the Federal Circuit determined
that, although the patent claims at issue involved conventional computers
and the Internet, the claims nevertheless addressed the problem of retaining
website visitors who, if adhering to the routine, conventional functioning of
the Internet hyperlink protocol, would be transported instantly away from a
host’s website after “clicking” on an advertisement and activating a
hyperlink. DDR Holdings, 773 F.3d at 1257. The court determined that
those claims were directed to patent-eligible subject matter because they
claimed a solution “necessarily rooted in computer technology in order to
overcome a problem specifically arising in the realm of computer networks.”
Id.
Appellant does not point to any such technological advance here nor
is one evident from the Specification or claims. Unlike DDR Holdings,
Appellant does not identify any problem particular to computer technology
that claim 1 allegedly overcomes. In fact, the court in DDR Holdings
cautioned “that not all claims purporting to address Internet-centric
challenges are eligible for patent.” DDR Holdings, 773 F.3d at 1258. For
example, the court distinguished the patent-eligible claims at issue from
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claims held patent-ineligible in Ultramercial. See id. at 1258–59 (citing
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715–16 (Fed. Cir. 2014)).
As noted there, the Ultramercial claims were “directed to a specific method
of advertising and content distribution that was previously unknown and
never employed on the Internet before.” Id. at 1258 (quoting Ultramercial,
772 F.3d at 714). Nevertheless, those claims were patent ineligible because
they “merely recite[d] the abstract idea of ‘offering media content in
exchange for viewing an advertisement,’ along with ‘routine additional steps
such as updating an activity log, requiring a request from the consumer to
view the ad, restrictions on public access, and use of the Internet.”’ Id.
Here, contrary to Appellant’s argument, converting handwritten text
to typed text, while maintaining font size and paragraph formatting, is not a
technical solution akin to DDR Holdings because it fails to overcome any
problem specifically arising in the realm of computer networks. Converting
handwriting to typed or printed text preceded computer technology—
including use of printing presses and typewriters. Appellant’s claims are
broadly drafted to read on processes in which standard computer technology
is used as a tool in its ordinary capacity to automate converting handwriting
to appropriately formatted printed text, including steps that could otherwise
be carried out in the human mind.
We determine that the additional recited elements, considered
individually or in combination, do not integrate the recited abstract idea into
a practical application. The additional elements are recited without
sufficient detail or specific implementation structure so as to limit the
abstract idea to a specific technical solution. Indeed, Appellant’s
Specification states that the embodiments of the invention “may be written
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as computer programs and may be implemented in general-use digital
computers.” Spec. ¶ 90. The Specification provides no details on a
“processor,” nor does the Specification provide any technical information on
the recited “electronic device” having a “touch screen,” but instead refers to
them generically throughout the Specification, using the same terminology
in the description of the prior art as in the description of the invention. See
id. ¶ 2.
In short, nothing in Appellant’s claims or Specification indicates any
components that represent a technological improvement. Rather, at best, the
recitations of an “electronic device” having a “touch screen” and a
“processor” limit the invention to a technological environment (e.g., a tablet
or other electronic device having a touch screen) in which the underlying
abstract concept (recognizing handwritten text and converting it to typed text
while preserving font size and formatting) is applied. But, as our reviewing
court has recognized, such limitations to a technological environment “do[]
not render the claims any less abstract.” Intellectual Ventures I LLC v.
Capital One Bank (USA), 792 F.3d 1363, 1367 (Fed. Cir. 2015). The claims
do not sufficiently recite how preserving font size and paragraph formatting
in typed text converted from handwritten text leads to an improvement in the
underlying technology. Rather than reciting any technological innovation in
the mechanics of the conversion process, the limitations broadly recite
routine computer functions, such as receiving a handwriting input to a touch
screen of an electronic device, and using a processor to run software that
allows a computer to automate steps that we have determined above may be
performed mentally by a human. In other words, these additional elements
in the claim do “no more than generally link the use of a judicial exception
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to a particular technological environment or field of use.” See 2019
Guidance, 84 Fed. Reg. at 55. The mere application of a mental process in a
particular field is not sufficient to integrate the judicial exception into a
practical application. See id.
Neither the Specification nor Appellant describes the operations
recited in claim 1 as invoking any inventive programming, or requiring any
specialized computer hardware or other inventive computer components,
i.e., a particular machine, or that the claimed invention is implemented using
other than generic computer components to perform generic computer
functions. See DDR Holdings, 773 F.3d at 1256 (“[A]fter Alice, there can
remain no doubt: recitation of generic computer limitations does not make
an otherwise ineligible claim patent-eligible.”). Rather, as noted above, the
Specification broadly describes the programming as “implemented in
general-use digital computers that execute the programs using a non-
transitory computer-readable recording medium.” Spec. ¶ 90.
We also find no indication in the Specification that the claimed
invention effects a transformation or reduction of a particular article to a
different state or thing. Nor do we find anything of record that otherwise
indicates that the claimed invention integrates the abstract idea into a
“practical application,” as that phrase is used in the 2019 Guidance.
Appellant argues in the Reply Brief that the claims are similar to a
claim addressed by the Federal Circuit in Data Engine Technologies LLC v.
Google LLC, 906 F.3d 999, 1012 (Fed. Cir. 2018). Reply Br. 8–9. In
particular, Appellant compares claim 1 of the present application to claim 26
of U.S. Patent No. 5,303,146, as addressed in Data Engine. Id. at 9. This
comparison does not, however, benefit Appellant, as the Federal Circuit
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concluded in Data Engine that claim 26 is patent ineligible under § 101:
“Beginning at Alice step one, we agree with the district court that [this claim
is] directed to the abstract idea of collecting spreadsheet data, recognizing
changes to spreadsheet data, and storing information about the changes.”
Data Engine, 906 F.3d at 1012. The court further concluded that this claim
did not recite an inventive concept under Alice step two, but instead recited
“generic steps of creating a base version of a spreadsheet, creating a new
version of the spreadsheet, and determining changes made to the original
version” and were implemented by a generic computer. Id. at 1013. In
contrast, claims found to be patent eligible in Data Engine were claims from
a different patent, which recited a technical improvement to building
spreadsheets that “allowed computers, for the first time, to provide rapid
access to and processing of information in different spreadsheets, as well as
easy navigation in three-dimensional spreadsheets,” requiring “a specific
interface and implementation for navigating complex three-dimensional
spreadsheets using techniques unique to computers.” Id. at 1008–09.
Appellant’s claims are not analogous to such claims.
We determine, for the reasons outlined above, that claim 1 recites a
mental process under the 2019 Guidance, i.e., an abstract idea, and that the
additional elements recited in the claim are no more than generic
components used as tools to perform the recited abstract idea. As such, they
do not integrate the abstract idea into a practical application. See Alice, 573
U.S. at 223–24 (“[W]holly generic computer implementation is not generally
the sort of ‘additional featur[e]’ that provides any ‘practical assurance that
the process is more than a drafting effort designed to monopolize the
[abstract idea] itself.’”) (second and third alterations in original) (quoting
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Mayo, 566 U.S. at 77). Accordingly, in the first part of the Alice/Mayo
framework, we conclude the claims are directed to an abstract idea.
2. Step 2B of 2019 Guidance
Regarding the second part of the Alice/Mayo framework, the
Examiner finds
[t]here are no elements or combination of elements in [claim 1]
that are sufficient to ensure that the [c]laim amounts to
significantly more than the abstract idea of reading a note and
typing it by applying proper paragraph formatting and font by
considering the size of the letters and their organization in the
handwritten note. The touchscreen, processor and handwriting
input receiving receiver refer to generic computer components
engaged in performing their generic and well-known functions
and not sufficient to overcome the rejection. Accordingly, the
limitations alone or considered as an ordered whole do not add
up to significantly more than the underlying abstract idea.
Final Act. 16–17. We agree.
In particular, as also noted above, the claim elements beyond the
abstract idea recite only generic computer functions and components that are
well-understood, routine, and conventional—that is, receiving, storing,
manipulating, and displaying data; such generic computer functions and
components do not convey an inventive concept. See Alice, 573 U.S. at 217.
As also noted above, there is nothing in the Specification to indicate that the
operations recited in claim 1 require any specialized hardware or inventive
computer components or that the claimed invention is implemented using
other than generic computer components to perform generic computer
functions, e.g., sending and displaying information. Rather, the
Specification confirms the opposite is true. See, e.g., Spec. ¶ 2 (describing a
touch screen, input device, and electronic device (terms used throughout the
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Specification) as part of the prior art); see also id. ¶¶ 90, 91 (describing
computer components generically).
Appellant argues the application should be remanded for further
consideration in light of the Federal Circuit’s decision in Berkheimer v. HP
Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018), and the Berkheimer Memo
issued April 19, 2018. Appeal Br. 11–12. In particular, Appellant argues
“[t]he pending rejection is based on an assertion that the claims are directed
to ‘well-understood, routine and conventional activities previously known to
the industry,’” but “[t]he Examiner’s assertion is incorrect and is contrary to
the Berkheimer Memo.” Id. at 12. We disagree.
As the Office has explained,
A citation to an express statement in the specification . . . that
demonstrates the well-understood, routine, conventional nature
of the additional element(s). A specification demonstrates the
well-understood, routine, conventional nature of additional
elements when it describes the additional elements as well-
understood or routine or conventional (or an equivalent term),
as a commercially available product, or in a manner that
indicates that the additional elements are sufficiently well-
known that the specification does not need to describe the
particulars of such additional elements to satisfy 35 U.S.C.
§ 112(a).
Berkheimer Memo at 3–4. In the cited portion of the Final Action, the
Examiner finds that “[t]he touchscreen, processor and handwriting input
receiving receiver refer to generic computer components engaged in
performing their generic and well-known functions.” Final Act. 17. Here,
we are persuaded that the Specification adequately demonstrates that the
touchscreen, processor and handwriting input receiving receiver of the
claimed inventions are well-known, conventional, and routine. Spec. ¶¶ 2,
51, 77, 90–92. Thus, the Examiner does not find that the process steps
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themselves are well-understood, routine, or conventional, but instead finds
the claims require a generic computer and generic computer components to
perform generic computer functions in implementing the abstract idea, a
finding with which we agree for the reasons noted above.
The Federal Circuit, in accordance with Alice, has “repeatedly
recognized the absence of a genuine dispute as to eligibility” where claims
have been defended as involving an inventive concept based “merely on the
idea of using existing computers or the Internet to carry out conventional
processes, with no alteration of computer functionality.” Berkheimer v. HP
Inc., 890 F.3d 1369, 1373 (Fed. Cir. 2018) (Moore, J., concurring); see also
BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1291 (Fed. Cir. 2018)
(“BSG Tech does not argue that other, non-abstract features of the claimed
inventions, alone or in combination, are not well-understood, routine and
conventional database structures and activities. Accordingly, the district
court did not err in determining that the asserted claims lack an inventive
concept.”) (emphasis added).
Moreover, to the extent Appellant relies on the process steps,
including “recognizing of a paragraph form of the received handwriting
input based on the receiving the handwriting input from the user,” as
indicative of an inventive concept (Appeal Br. 13 (emphasis omitted)), we
have determined above that such functionality is part of the recited abstract
idea. Appellant is reminded that “the ‘inventive concept’ [under the second
part of the Mayo/Alice framework] cannot be the abstract idea itself” and
“Berkheimer . . . leave[s] untouched the numerous cases from this court
which have held claims ineligible because the only alleged ‘inventive
concept’ is the abstract idea.” Berkheimer, 890 F.3d at 1374 (Moore, J.,
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concurring). “It has been clear since Alice that a claimed invention’s use of
the ineligible concept to which it is directed cannot supply the inventive
concept that renders the invention ‘significantly more’ than that ineligible
concept.” BSG Tech LLC, 899 F.3d at 1290.
For the reasons discussed above, we determine that the elements of
the claims, when considered individually or as an ordered combination, do
not recite significantly more than the abstract idea.
Accordingly, we sustain the Examiner’s rejection of claim 1 under 35
U.S.C. § 101 as patent-ineligible. We also sustain the rejection of claims 2–
4, 8–14, and 18–23, which are not separately argued. See Appeal Br. 11, 14.
II. SECTION 103 REJECTIONS
We have reviewed the Examiner’s rejections of claims 1–4, 8–14, and
18–23 under 35 U.S.C. § 103 in light of Appellant’s arguments the Examiner
has erred. We disagree with Appellant’s arguments, and we adopt as our
own the findings and reasons set forth by the Examiner in the Final Action
and the Examiner’s Answer. We concur with the conclusions reached by the
Examiner, and we highlight the following for emphasis.
The Examiner finds Wecker teaches most of the limitations of claim 1
(Final Act. 22–30), but finds Wecker does not expressly disclose “inter-
character spacing,” for which the Examiner additionally relies on Altman
(id. at 30–31).
Appellant focuses its challenge on the Examiner’s finding that
Wecker teaches or suggests the steps of “recognizing, by the at least one
processor, an entity included in the received handwriting input,” and
“applying information, by the at least one processor, which is predetermined
in correspondence with the recognized entity to the converted text
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information.” Appeal Br. 6–8 (emphasis omitted). Appellant’s contentions,
however, amount to no more than terse statements of what Wecker
purportedly discloses, followed by a conclusory statement that “Wecker
fail[s] to disclose or fairly suggest recognizing, by the at least one processor,
an entity included in the received handwriting input; and applying
information . . . which is predetermined in correspondence with the
recognized entity to the converted text information, as recited in [c]laim 1.”
Appeal Br. 8–9. Such conclusory attorney assertions have little or no value
in identifying the Examiner’s alleged error, and, consequently, have little
persuasive value. See 37 C.F.R. § 41.37(c)(iv) (“A statement which merely
points out what a claim recites will not be considered an argument for
separate patentability of the claim.”); see also In re Lovin, 652 F.3d 1349,
1357 (Fed. Cir. 2011).
Despite the conclusory nature of these contentions, the Examiner
provides a full response in the Answer. Ans. 6–13. The Examiner first finds
that “[c]laim 1 does not define what an ‘entity’ is or what type of
‘information’ regarding this ‘entity’ is applied to the text or what the
‘applying’ does to the text.” Ans. 7. The Examiner then concludes, by
reference to the Specification, that an “entity” includes, inter alia, “an
abbreviation.” Ans. 8 (emphasis omitted) (citing Spec. ¶ 79).10 The
Examiner finds Wecker’s abbreviations—e.g., “symbols” and “scientific
symbols”—as types of “objects.” Id. at 9. The Examiner then notes that
“[t]he Office [A]ction mapped the ‘information . . . which is predetermined
in correspondence with the recognized entity’ . . . to the ‘location’ in the

10 The Examiner cites to paragraph 82 of the published version of the
application, which corresponds to paragraph 79 of the Specification.
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‘format’ of the paragraph of Wecker” and also mapped “applying
information . . . to . . . converted text” as recited in the claim to “placing an
‘entity’ / ‘object’ in the same location in the format of the converted
paragraph.” Id. at 9 (some alterations in original). In other words, the
Examiner reads the disputed limitations on Wecker’s disclosure of
recognizing an entity (e.g., a symbol) in the received handwriting, and
applying information predetermined in correspondence with the recognized
entity (e.g., paragraph formatting of that entity) to the converted text
information, by applying the same formatting to the printed text. See id.
Appellant’s arguments in the Reply Brief are equally conclusory to
those in the Appeal Brief and, hence, are unpersuasive of Examiner error.
See Reply Br. 2–3. Nevertheless, we have considered the Examiner’s
findings, and we determine that they are supported by the broadest
reasonable interpretation of the claim language, read in light of the
Specification, and are also supported by the cited teachings of Wecker. In
particular, we agree with the Examiner that “information predetermined in
correspondence with the recognized entity” is broadly written and, as such,
is not limited to text, but includes formatting information. This reading is
supported by the language of the claim reciting “applying information . . . to
. . . converted text,” as formatting is a type of information that is applied to
text.
We further note that, although the claims are not limited to text
substitution, Wecker also teaches substitution. In particular, Wecker
discloses that the system may “display machine-generated alternative objects
corresponding to the selected original ink input (e.g., one or more alternative
words in a listing, akin to a conventional spell-check listing or handwriting
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recognizer listing of possible alternatives).” Wecker ¶ 27; see also id. ¶ 56
(“[W]henever the recognizer sees a specific combination of letters or
strokes, it could select a specific word.”).
In sum, we have considered all of Appellant’s arguments challenging
the Examiner’s findings underlying the Examiner’s rejection of claim 1
under 35 U.S.C. § 103 over the combined teachings of Wecker and Altman,
and we are not persuaded of Examiner error. We, therefore, sustain that
rejection.
Appellant has not presented separate, substantive, persuasive
arguments with respect to claims 2–4, 8–14, 18–20, and 22, which are
rejected on the same basis as claim 1. Appellant merely asserts patentability
of these claims based on their dependency from claim 1. See App. Br. 10–
11. Without independent arguments, however, such contentions fail to
constitute a separate issue of patentability. We, therefore, are also not
persuaded the Examiner erred in rejecting these claims. See In re Lovin, 652
F.3d at 1356 (“We conclude that the Board has reasonably interpreted Rule
41.37 to require applicants to articulate more substantive arguments if they
wish for individual claims to be treated separately.”). Accordingly, we
sustain the Examiner’s rejection of these claims under 35 U.S.C. § 103. See
37 C.F.R. § 41.37(c)(1)(iv).
We likewise sustain the Examiner’s obviousness rejections of
dependent claims 21 and 23 over the combined teachings of Wecker and
Altman and the teachings of an additionally cited reference listed above.
Appellant has not particularly pointed out errors in the Examiner’s reasoning
regarding the teachings of the additionally cited reference, but merely asserts
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patentability based upon these claims’ dependency from independent claim
1. Appeal Br. 11.
CONCLUSION
The Examiner’s decision rejecting claims 1–4, 8–14, and 18–23 under
35 U.S.C. § 101 as directed to patent-ineligible subject matter without
significantly more is affirmed.
The Examiner’s decision rejecting claims 1–4, 8–14, and 18–23 as
unpatentable under 35 U.S.C. § 103 is affirmed.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis  Affirmed Reversed
1–4, 8–14,
18–23
101 Eligibility 1–4, 8–14,
18–23

1–4, 8–14,
18–20, 22
103 Wecker, Altman 1–4, 8–14,
18–20, 22

21 103 Wecker, Altman,
Brelig
21
23 103 Wecker, Altman, Chen 23
Overall Outcome  1–4, 8–14,
18–23

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