Schindler, Sigram

Patent Trials and Appeals Board

Nov 13, 2020

2019002797 (P.T.A.B. Nov. 13, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/608,543 09/10/2012 Sigram Schindler 2654-0012US01 7234
137713 7590 11/13/2020
Potomac Law Group, PLLC
8229 Boone Boulevard
Suite 430
Vienna, VA 22182
EXAMINER
SMITH, PAULINHO E
ART UNIT PAPER NUMBER
2125
NOTIFICATION DATE DELIVERY MODE
11/13/2020 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):
eofficeaction@appcoll.com
patents@potomaclaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SIGRAM SCHINDLER

_____________

Appeal 2019-002797
Application 13/608,543
Technology Center 2100
____________

Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
ELENI MANTIS-MERCADER, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 28–45. Claims 1–27 are canceled. We have jurisdiction over the
pending claims 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(a) (2019). According to Appellant, the “real party in
interest in this application is the Assignee, Sigram Schindler
Beteiligungsgesellschaft MBH of Berlin, Germany.” See Appeal Br. 2.

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STATEMENT OF THE CASE2
Introduction
Appellant’s claimed invention relates to a “FSTP (FSTP=Facts-
Screening-and-Transforming-Processor) Expert System” that is capable of
analyzing an invention and the documents pertinent to it (e.g., a patent
application including the prior art, level of skill in the art, and the
prosecution and/or litigation documents) “of a national patent system and its
Highest Court’s precedents” for facts that indicate its nonobviousness and/or
novelty over the prior art. Spec. ¶ 1.

Independent Claim 28
[a] A computer-implemented method for enabling partial
automation of a computer-based Facts Screening And
Transforming Processor (“FSTP”) expert system, the method
performing an analysis of a claimed invention (CI) and its
respective technical teaching (TT.p) over a reference set (“RS”)
of prior art documents (“document.i”) and prior art inventions
and their respective technical teachings (“TT.i”) underlying the
prior art documents:

[b] whereby the claimed invention/technical teaching
comprises a plurality of underlying elements (“X.n”), referred
to as fundamental facts of the claimed invention/technical
teaching, the underlying elements being disclosed by a
disclosure document (“document.p”);

2 We herein refer to the Final Office Action, mailed November 30, 2017
(“Final Act.”); the Advisory Action, mailed July 19, 2018 (“Advisory Act.”),
the Appeal Brief, filed July 30, 2018 (“Appeal Br.”); the Examiner’s
Answer, mailed December 20, 2018 (“Ans.”); and the Reply Brief, filed
February 21, 2019.

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[c] whereby the prior art inventions/technical teachings
disclosed by the prior art documents are considered as peer to
the claimed invention/technical teaching;

[d] whereby the prior art inventions/technical teachings
comprise a plurality of underlying peer elements (“X.i”),
referred to as peer fundamental formal facts of the prior art
invention/technical teaching;

[e] whereby during the execution of the method, a user
interacts with the computer and a processor in the computer,
reading and writing to a database or a memory within the
computer;

[f] whereby the method comprises the steps of:

[g] automatically prompting the user step by step to input
into the FSTP expert system the comprising claimed
invention/technical teaching, said claimed invention/technical
teaching comprising at least one fundamental formal fact
described in a disclosure level (D-level) presentation, and the
reference set;

[h] automatically prompting the user to convert the at
least one fundamental formal fact from the disclosure level to a
binary-level (“B-level”) presentation and to input it into the
FSTP expert system, wherein the binary-level comprises a
presentation of all technical distinctions between fundamental
formal facts of the claimed invention’s technical teachings and
the reference set,

[i] automatically prompting the user to input into the
FSTP expert system an explanation why the fundamental
formal fact of the B-level is based on at least one independent
binary concept, wherein a concept comprises a universe of a set
of values and wherein a concept is binary if the universe
consists of true and false values;

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[j] automatically prompting the user to input into the
FSTP expert system a plurality of data entries, said plurality of
data entries comprising an Anticipates-Notanticipates-
Contradicts (“ANC”) matrix representative of the claimed
technical teaching in comparison with the reference set;

[k] automatically prompting the user to input into the
FSTP expert system an explanation for any of the entries of the
Anticipates-Notanticipates-Contradicts matrix;

[l] a computer-based on the FSTP expert system-
automatically deriving from the Anticipates-Notanticipates-
Contradicts matrix a line (“l”) wherein the plurality of elements
underlying the prior art technical teaching have minimal
anticipation deficit as to the plurality of elements underlying the
claimed technical teaching;

[m] automatically prompting the user to input into the
FSTP expert system an explanation of why the plurality of
elements underlying the prior art invention/technical teaching
has minimal anticipation deficit as to the plurality of elements
underlying the claimed invention/technical teaching, the
explanation comprising why the claimed invention's/technical
teaching’s semantic height over the reference set is the sum of
all minimal anticipation deficits of the plurality of elements
underlying the prior art invention/technical teaching as to the
plurality of elements underlying the claimed invention/technical
teaching;

[n] automatically prompting the user to input into the
FSTP expert system an indication/explanation as to which of
the anticipation deficiencies of the plurality of elements
underlying the prior art invention/technical teaching as to the
plurality of elements underlying the claimed invention/technical
teaching must not be counted due to patent monopoly grant
pragmatics, which represents in a patent system the underlying
socio/economic principles;

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[o] a computer-based on the FSTP expert system-
automatically deriving a pragmatic height of the claimed
invention/technical teaching over the reference set, the
pragmatic height comprising the minimum number of
independent ideas to be invested into creating it and patenting it
when starting from the reference set prior art documents, the
pragmatic height derived by subtracting from the claimed
invention/technical teaching’s semantic height over the
reference set the received input indicative of which of the
anticipation deficiencies of the plurality of elements underlying
the prior art invention/technical teaching as to the plurality of
elements underlying the claimed invention/technical teaching
must not be counted, thereby the pragmatic height of a claimed
invention accounting for two factors affecting the patentability
of the claimed invention, comprising both the non-obviousness
of the claimed invention over the prior art and the
socio/economic principles of a patent system;

[p] a computer-based on the FSTP expert system-storing
all received input and generated data into the database; and

[q] a computer-based on the FSTP expert system-
automatically retrieving the claimed invention’s automatically
computed semantic and pragmatic heights over the reference set
as well as the stored explanations and automatically conveying
it to a FSTP expert system user for facilitating making a
decision about the claimed invention’s/technical teaching’s
non-obviousness over the reference set.

Claim 28, Claims Appendix 27–29 (bracketed letters added to claimed steps
for ease of reference).

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Evidence
The prior art relied upon by the Examiner as evidence is:
Name Reference Date
Szygenda et al.
(“Szygenda”)
US 2008/0086507 A1 Apr. 10, 2008
USPTO Manual of Patent
Examining Procedure,
Eighth Edition,
Revision 1 (“MPEP”)
Feb. 2003

Rejections 3
Rejection Claims
Rejected
35 U.S.C. § References/Basis
A 28–45 112, first
paragraph
Enablement
B 28–45 112, second
paragraph
Indefiniteness
C 28–45 101 Eligibility
D 28–45 103(a) Szygenda, MPEP

3 We note the Examiner withdrew the written description rejection under 35
U.S.C. § 112, first paragraph, on page 4 of the Advisory Action mailed July
19, 2018: “3. The rejection is withdrawn.” — referring to the third-listed
rejection on page 2 of the Advisory Action. Responsive to this notice of the
withdrawal of the written description rejection in the Advisory Action,
Appellant does not further address it in the Briefs. To the extent the
Examiner again (apparently erroneously) refers to the written description
rejection in the Answer (3), as being “applicable to the appealed claims” we
note that once the written description rejection was withdrawn, the Examiner
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Claim Grouping
We address Rejections A and B of claims 28–45 under 35 U.S.C.
§ 112, separately, infra. Based on Appellant’s arguments, and our discretion
under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of Rejection C of
claims 28–45 under 35 U.S.C. § 101 on the basis of representative claim 28.
Similarly, based on Appellant’s arguments, we decide the appeal of
Rejection D of claims 28–45 under pre-AIA 35 U.S.C. § 103(a) on the basis
of representative claim 28.
Because Appellant refers in the Appeal Brief to paragraphs in the
Specification, we refer throughout this Decision to Appellant’s
Specification, as published on January 3, 2013 as US Patent Application
Publication No. 2013/0006908 Al. We refer to paragraphs of the

cannot revive the rejection without reopening prosecution as a new ground
of rejection, because procedural due process requires notice and a fair
opportunity for Appellant to respond. See e.g., Mathews v. Eldridge, 424
U.S. 319, 348-49 (1976) (“The essence of due process is the requirement
that ‘a person in jeopardy of serious loss (be given) notice of the case against
him and opportunity to meet it.’”) (internal citation omitted). Therefore, after
being withdrawn in the Advisory Action, any reinstatement of the written
description in the Answer would constitute a new ground of rejection.
Based upon our review of the record, we presume the Examiner’s statement
in the Answer regarding the written description rejection is an oversight by
the Examiner. We leave it to the Examiner to clarify the record, and if
necessary, reopen prosecution, but only if the Examiner still finds any reason
to set forth a written description rejection. On this record, we consider the
written description rejection under 35 U.S.C. § 112, first paragraph (Final
Act. 3), as being withdrawn by the Examiner in the Advisory Action.
Therefore, the withdrawn written description rejection is not before us on
appeal.

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corresponding patent application publication merely for convenience,
because the Specification, as originally filed, has no numbered paragraphs.
To the extent Appellant has not advanced separate, substantive
arguments for particular claims, or other issues, such arguments are waived.
37 C.F.R. § 41.37(c)(1)(iv).

Prior Related Decision
See related PTAB Appeal 2019-003733, Application No. 14/294,825,
decided October 9, 2020 (Examiner affirmed).

Analysis
In reaching this Decision, we consider all evidence presented and all
arguments actually made by Appellant. Throughout this opinion, we give
the claim limitations the broadest reasonable interpretation (BRI) consistent
with the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
1997).
Rejection A of claims 28–45 under
Pre-AIA 35 U.S.C. § 112, first paragraph, enablement

The Examiner concludes that limitation “o” of independent claim 28
does not comply with the enablement requirement under pre-AIA 35 U.S.C.
§ 112, first paragraph. We reproduce limitation “o” of claim 28 below:

[o] a computer -based on the FSTP expert system-
automatically deriving a pragmatic height of the claimed
invention/technical teaching over the reference set, the
pragmatic height comprising the minimum number of
independent ideas to be invested into creating it and patenting it
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when starting from the reference set prior art documents, the
pragmatic height derived by subtracting from the claimed
invention/technical teaching’s semantic height over the
reference set the received input indicative of which of the
anticipation deficiencies of the plurality of elements underlying
the prior art invention/technical teaching as to the plurality of
elements underlying the claimed invention/technical teaching
must not be counted, thereby the pragmatic height of a claimed
invention accounting for two factors affecting the patentability
of the claimed invention, comprising both the non-obviousness
of the claimed invention over the prior art and the
socio/economic principles of a patent system;

Claim 28.

The Examiner finds:

There is no disclosure on how a computer is capable of
computing a numerical pragmatic height, wherein pragmatic
height is defined in the instant specification as “a measure of
creative thought”. In addition as there is no directions given to
how a person or user would determiners what a “creative
thought”, “independent thought” or “a measure of creative
thought” there is a lack of enablement. In addition the claim cites
it “socio/economic principles of a patent system”, which is not
explained in the specification or claims how this is encompassed
by the pragmatic height and accounted for the by the user or
system. The specification also fails to disclose what is meant or
include in socio/economic principles of a patent system. With
this in the mind the claims and specification fail[] [to] give
adequate detail, instructions and working examples to enable a
user to create and/or use the claimed invention without undue
experimentation.
Final Act. 2–3.

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Appellant disagrees, and points to enabling support in the
Specification:
As disclosed in paragraph [0602] of the Specification as
published, a numerical pragmatic height of a respective technical
teaching (TT.p) over the reference set (RS) is computed and
displayed. Similarly, the specification, at paragraph [0313],
discloses that an FSTP “determines for an innovation--
independently of its subject area--what its ‘creative height’ is
over its prior art at the time of its invention. Thereby the creative
height of an innovation alias invention is defined to be the
minimal number of independent ideas to be invested into creating
it when starting from prior art, i.e. from any combination of
pieces of prior art.” In paragraph [0125] it is explained that
“pmgp represents in any NPS the national socio/economic
principles underlying the idea of “patent monopoly granting” to
inventions/TTp’s -here assumed to be known. By recognizing
pmgp, the resulting Qpmgp may become smaller than, equal to, or
larger than the Qplcs.”, whereby Qplcs is defined in [0125] as
“patent-law-carrying-semantic height” or in short “semantic
height”. Explanations for national socio/economic principles
underlying the idea of “patent monopoly granting” are made in
detail the following paragraphs. As noted in paragraph [0602],
the terms “creative height” and “pragmatic height” are
interchangeable. See also paragraph [0032] “creative- alias
pmgp-height”, [0314] “creative height -- measured in
independent thought” and [0315] “creative height, Qpmgp.”
Appeal Br. 20.
Given the aforementioned support, Appellant contends “the
specification describes how to make and use the invention to one of ordinary
skill in the art. In particular, the specification provides adequate disclosure
of the pragmatic height such that one of ordinary skill in the art could make
and use the invention.” Appeal Br. 20–21.
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The Examiner disagrees with Appellant, and further explains the basis
for the enablement rejection, e.g., finding,
[t]here is no disclosure on how a computer is capable of
computing a numerical pragmatic height, wherein pragmatic
height is defined in the instant specification as “a measure of
creative thought”. In addition as there is no directions given to
how a person or user would determine what a “creative
thought” or “a measure of creative thought” [is,] there is a lack
of enablement.
Ans. 19.
We note that Enablement is a question of law involving underlying
factual inquiries. See Genentech, Inc. v. Novo Nordisk A/S, 108 F.3d 1361,
1365 (Fed.Cir.1997). “To be enabling, the specification of a patent
[application] must teach those skilled in the art how to make and use the full
scope of the claimed invention without ‘undue experimentation.’”
Genentech, Inc. v. Novo Nordisk, A/S, 108 F.3d 1361, 1365 (Fed. Cir. 1997)
(quoting In re Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993)). Determining
the need for “undue experimentation” is not “a single, simple factual
determination, but rather is a conclusion reached by weighing many” factors.
In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). Those factors (the Wands
factors) include:
(1) the quantity of experimentation necessary, (2) the amount of
direction or guidance presented, (3) the presence or absence of
working examples, (4) the nature of the invention, (5) the state
of the prior art, (6) the relative skill of those in the art, (7) the
predictability or unpredictability of the art, and (8) the breadth
of the claims.
Id. (citing In re Forman, 230 USPQ 546, 547 (BPAI 1986)).
Here, we find a preponderance of the evidence supports Appellant’s
arguments regarding the rejection of all claims 28–45 under enablement
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Rejection A. For example, we note that the claim term “pragmatic height”
is defined as a formula at paragraphs 22–24 of the Specification. Cf. Claim
28, step (“o”), in pertinent part:
the pragmatic height derived by subtracting from the claimed
invention/technical teaching’s semantic height over the
reference set the received input indicative of which of the
anticipation deficiencies of the plurality of elements underlying
the prior art invention/technical teaching as to the plurality of
elements underlying the claimed invention/technical teaching
must not be counted . . . .
Therefore, for essentially the same reasons argued by Appellant in the
Briefs, as further discussed above, we are constrained on this record to
reverse the Examiner’s Rejection A of claims 28–45 under pre-AIA
35 U.S.C. § 112, first paragraph (enablement).

Rejection B of Claims 28–45 under
Pre-AIA 35 U.S.C. § 112, second paragraph

The Examiner rejects all claims 28–45 as being indefinite, because the
Examiner concludes the claim terms: (1) “pragmatic height” (2) “peer
fundamental fact,” and (3) the related phrases “binary-presentation level,”
“B-level,” and “binary concept” are indefinite. Final Act. 5.
Appellant disagrees. Appellant contends these claim terms are
adequately defined or described in the Specification. Appeal Br. 21–22;
Reply Br. Br. 21. Appellant points to pages 12 and 13 of the Specification,
including paragraph 313, as providing supporting descriptions of (1)
“pragmatic height.” Appellant further points to pages 1–5 of the
Specification as providing supporting descriptions of (2), “a peer
fundamental fact.” Appellant also points to paragraphs 38 and 48 as
providing supporting descriptions of: (3) the related phrases “binary-
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presentation level” and “B-level” and “binary concept.”
At the outset, we note that “[i]ndefiniteness under 35 U.S.C. § 112 ¶ 2
is an issue of claim construction and a question of law.” Cordis Corp. v.
Boston Scientific Corp., 561 F.3d 1319, 1331 (Fed. Cir. 2009) (citing
Praxair, Inc. v. ATMI, Inc., 543 F.3d 1306, 1319 (Fed. Cir. 2008)).
But “[b]readth is not indefiniteness.” SmithKline Beecham Corp. v. Apotex
Corp., 403 F.3d 1331, 1341 (Fed. Cir. 2005) (citing In re Gardner, 427 F.2d
786, 788 (CCPA 1970). See MPEP § 2173.04 (“Breadth Is Not
Indefiniteness”). Nevertheless, “[w]here an inventor chooses to be his own
lexicographer and to give terms uncommon meanings, he must set out his
uncommon definition in some manner within the patent disclosure” so as to
give one of ordinary skill in the art notice of the change. In re Paulsen, 30
F.3d 1475, 1480 (Fed. Cir. 1994) (quoting Intellicall, Inc. v. Phonometrics,
Inc., 952 F.2d 1384, 1387-88 (Fed. Cir. 1992)).
Here, based upon our review of the supporting portions of the
Specification, we find Appellant’s arguments are persuasive regarding the
rejection of all claims 28–45 under Rejection B. As previously noted, the
claim term “pragmatic height” is defined as a formula at paragraphs 22–24
of the Specification. Cf. Claim 28, step (“o”).
We find the claim term “peer fundamental formal fact” is described in
paragraph 603 of the Specification: “In a specific enhancement the
generating of the at least one AC [(Anticipation Combination e.g., see
Abstract)] comprises creating combination of at least one peer fundamental
fact of the TT.i potentially anticipating a fundamental fact of the TT.p.” Cf.
Claim 28, step (“d”): “whereby the prior art inventions/technical teachings
comprise a plurality of underlying peer elements (“X.i”), referred to as peer
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fundamental formal facts of the prior art invention/technical teaching.”
(emphasis added). Thus, we understand the recited “peer fundamental
formal fact” to be essentially the pertinent specific teachings of the closest
prior art. See Claim 28.
Regarding the claimed “binary” or “B-level” terms we note paragraph
38 describes and defines the claim term “binary:” “A concept anytime has
resp. evaluates to an ‘instantiation’ alias ‘value’, has a set of values called its
‘universe’, and is called ‘binary’ if this universe consists of T and F.”
“B-level” and “B-concept” are further described in paragraph 48 of
the Specification. Cf. Claim 28, step (i): “B-level is based on at least one
independent binary concept, wherein a concept comprises a universe of a set
of values and wherein a concept is binary if the universe consists of true and
false values.”
We recognize that during prosecution of an application before the
USPTO, the threshold standard of ambiguity for indefiniteness is lower than
it might be during litigation of an issued patent. See Ex parte Miyazaki, 89
USPQ2d 1207, 1212 (BPAI 2008) (precedential). Thus, “if a claim is
amenable to two or more plausible claim constructions, the USPTO is
justified in requiring the applicant to more precisely define the metes and
bounds of the claimed invention by holding the claim . . . indefinite.”
Miyazaki, 89 USPQ2d at 1211. Moreover, because “applicants may amend
claims to narrow their scope, a broad construction during prosecution creates
no unfairness to the applicant or patentee.” In re ICON Health and Fitness,
Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (citation omitted).
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Here, we note the Examiner has not relied upon Miyazaki as a basis to
support the rejection for indefiniteness.4 Further, the Examiner has not fully
considered the aforementioned portions of the Specification that provide
definitions and/or context regarding the intended meaning of the disputed
claim terms as a matter of claim construction.
Accordingly, for essentially the same reasons argued by Appellant in
the Briefs, as further discussed above, we are constrained on this record to
reverse the Examiner’s Rejection B of claims 28–45, under pre-AIA
35 U.S.C. § 112, second paragraph.

Rejection C of Claims 28–45 under 35 U.S.C. § 101
We note the Reply Brief was filed on February 21, 2019, after the
Director’s 2019 Revised Guidance was published in the Federal Register,
Vol. 84, No. 4, on Monday, January 7, 2019. Because of the intervening
change in USPTO policy occurring after the filing of the Appeal Brief on
July 30, 2018, Appellant’s arguments in the Reply Brief traversing the §101
rejection under the Director’s 2019 Revised Guidance are considered timely.

4 See Miyazaki, 89 USPQ2d at 1212; Ex parte McAward, Appeal 2015-
006416, 2017 WL 3669566, at *5 (PTAB Aug. 25, 2017) (precedential); see
also In re Packard, 751 F.3d 1307, 1310, 1314 (Fed. Cir. 2014).

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USPTO § 101 Guidance
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101.5 The Manual of
Patent Examining Procedure (“MPEP”) now incorporates this revised
guidance and subsequent updates at Section 2106 (9th ed. Rev. 10.2019, rev.
June 2020).6
Under MPEP § 2106, 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
human activity such as a fundamental economic practice, or
mental processes) (“Step 2A, Prong One”); and

(2) additional elements that integrate the judicial exception into a
practical application (“Step 2A, Prong Two”).7

5 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (“2019 Revised Guidance”). In response to received public
comments, the Office issued further guidance on October 17, 2019,
clarifying the 2019 Revised Guidance. USPTO, October 2019 Update:
Subject Matter Eligibility (the “October 2019 Update”). “All USPTO
personnel are, as a matter of internal agency management, expected to
follow the guidance.” 84 Fed. Reg. at 51; see also October 2019 Update at
1.
6 All references to the MPEP are to the Ninth Edition, Revision 10.2019
(Last Revised June 2020), unless otherwise indicated.
7 “Examiners evaluate integration into a practical application by (a)
identifying whether there are any additional elements recited in the claim
beyond the judicial exception, and (b) evaluating those additional elements
individually and in combination to determine whether the claim as a whole
integrates the exception into a practical application.” MPEP § 2106.04(d)II.
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MPEP § 2106, Step 2A, Prong One
The Judicial Exception
Under MPEP 2106.04(a), the enumerated groupings of abstract ideas
are defined as follows:
1) Mathematical concepts – mathematical relationships,
mathematical formulas or equations, mathematical calculations
(see MPEP §2106.04(a)(2), subsection I);

2) Certain methods of organizing human activity– fundamental
economic principles or practices(including hedging, insurance,
mitigating risk);commercial or legal interactions (including
agreements in the form of contracts; legal obligations;
advertising, marketing or sales activities or behaviors; business
relations); managing personal behavior or relationships or
interactions between people (including social activities,
teaching, and following rules or instructions) (see MPEP
§2106.04(a)(2), subsection II); and

3) Mental processes – concepts performed in the human mind
(including an observation, evaluation, judgment, opinion) (see
MPEP § 2106.04(a)(2),subsection III).

MPEP 2106.04(a) guides that “[i]f the identified limitation(s) falls
within at least one of the groupings of abstract ideas, it is reasonable to
conclude that the claim recites an abstract idea in Step 2A Prong One.” In
such case, “[t]he claim then requires further analysis in Step 2A Prong Two,
to determine whether any additional elements in the claim integrate the
abstract idea into a practical application, see MPEP§ 2106.04(d).” MPEP
2106.04(a).
Here, we agree with the Examiner that under MPEP § 2106, Step 2A,
Prong One, that independent claim 28 recites an abstract idea — a mental
process. See Final Act. 6. In particular, we conclude that at least the last
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recited step (q) of “facilitating making a decision about the claimed
invention’s/technical teaching’s non-obviousness over the reference set”
could be performed alternatively as a mental process. (emphasis added). We
emphasize that remaining independent claims 34 and 40 also recite in similar
form “facilitating making a decision.” (emphasis added).
Appellant urges that the Examiner’s “analysis ignores many features
recited in the present claims. For example, claim 28 recites, in part, ‘A
computer-implemented method for enabling partial automation of a
computer-based Facts Screening And Transforming Processor (“FSTP”)
expert system.’” Reply Br. Br. 2–3 (emphasis omitted). Appellant similarly
emphasizes the “computer” limitation recited in independent claims 34 and
40. Reply Br. 3.
Although independent claim 28 requires the recited steps to be
“computer-implemented,” this generic computer implementation of a mental
process is insufficient to take the invention out of the realm of abstract ideas.
“That purely mental processes can be unpatentable, even when performed by
a computer, was precisely the holding of the Supreme Court in Gottschalk v.
Benson.” CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375
(Fed. Cir. 2011). If a method can be performed by human thought alone, or
by a human using pen and paper, it is merely an abstract idea and is not
patent eligible under § 101. See id. at 1372–73; see also Versata Dev. Grp.
v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) (“Courts have
examined claims that required the use of a computer and still found that the
underlying, patent-ineligible invention could be performed via pen and paper
or in a person’s mind.”); Alice, 573 U.S. at 223 (“Stating an abstract idea
while adding the words ‘apply it with a computer’” is insufficient to confer
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eligibility.).
Moreover, “[u]sing a computer to accelerate an ineligible mental
process does not make that process patent-eligible.” Bancorp Servs., L.L.C.
v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1279 (Fed. Cir.
2012); see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363
(Fed. Cir. 2015) (“[R]elying on a computer to perform routine tasks more
quickly or more accurately is insufficient to render a claim patent eligible.”).
Because claim 28 considered as a whole recites an abstract idea, as
identified above (i.e., last step “q” — “making a decision”), as do remaining
independent claims 34 and 40, we conclude all claims 28–45 recite an
abstract idea, as identified above, under Step 2A, Prong One. Therefore, we
proceed to Step 2A, Prong Two, in which we apply the guidance set forth in
MPEP § 2106.04(d).

Step 2A, Prong Two under MPEP § 2106.04(d),
Integration of the Judicial Exception into a Practical Application
For example, limitations that are indicative of integration into a
practical application under MPEP § 2106.04(d) include:
1. Improvements to the functioning of a computer, or to any
other technology or technical field — see MPEP
§ 2106.05(a);
2. Applying the judicial exception with, or by use of, a
particular machine — see MPEP § 2106.05(b);
3. Effecting a transformation or reduction of a particular article
to a different state or thing — see MPEP § 2106.05(c); and
4. Applying or using the judicial exception in some other
meaningful way beyond generally linking the use of the
judicial exception to a particular technological environment,
such that the claim as a whole is more than a drafting effort
designed to monopolize the exception — see MPEP
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§ 2106.05(e).

In contrast, limitations that are not indicative of integration into a
practical application include:
1. Adding the words “apply it” (or an equivalent) with the
judicial exception, or merely including instructions to
implement an abstract idea on a computer, or merely uses a
computer as a tool to perform an abstract idea — see MPEP
§ 2106.05(f);
2. Adding insignificant extra-solution activity to the judicial
exception — see MPEP § 2106.05(g); and
3. Generally linking the use of the judicial exception to a
particular technological environment or field of use — see
MPEP § 2106.05(h).
See MPEP § 2106.04(d)(I)(Describing Step 2A, Prong Two).

Additional Limitations
Applying the Director’s guidance under MPEP § 2106.04(d), we
consider whether there are additional elements set forth in the claims that
integrate the judicial exception into a practical application.
We noted above the additional generic computer element recited in
“computer-implemented” method claim 28 (emphasis added). We further
note the supporting exemplary, non-limiting descriptions of generic
computer components found in the Specification, for example: “These
computer program instructions may also be stored in a computer readable
medium or more specifically a computer readable storage medium that can
direct a computer, or other programmable data processing apparatus, or
other devices to function in a particular manner, . . . .” Spec. ¶ 614
(emphasis added).
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We emphasize that McRO, Inc. v. Bandai Namco Games America
Inc., 837 F.3d 1299 (Fed. Cir. 2016), guides: “The abstract idea exception
prevents patenting a result where ‘it matters not by what process or
machinery the result is accomplished.’” 837 F.3d at 1312 (quoting O’Reilly
v. Morse, 56 U.S. 62, 113 (1854)) (emphasis added). See supra Table One.
Thus, we conclude Appellant’s claimed invention merely implements
the abstract idea using instructions executed on generic computer
components, as supported in Appellant’s Specification, for example, at
paragraph 614. Therefore, we conclude Appellant’s claims merely use a
generic programmed computer as a tool to perform an abstract idea. See
MPEP § 2106.05(f).
We note “the prohibition against patenting abstract ideas ‘cannot be
circumvented by attempting to limit the use of the formula to a particular
technological environment’ or [by] adding ‘insignificant post-solution
activity.’” Bilski v. Kappos, 561 U.S. 593, 610–12 (2010) (quoting
Diamond v. Diehr, 450 U.S. 175, 191–92 (1981)). See MPEP § 2106.05(h).
Moreover, we conclude that independent claim 28 recites several
additional limitations that are extra-solution activities the courts have
determined to be insufficient to transform judicially excepted subject matter
into a patent-eligible application. See MPEP § 2106.05(g); January 2019
Memorandum, 84 Fed. Reg. at 55 n.31.
For example, we conclude that each step of claim 28 that includes the
language “automatically prompting the user to input” recites an insignificant
extra-solution activity (data gathering). See buySAFE v. Google, Inc, 765
F.3d 1350, 1355 (Fed. Circ. 2014) (“That a computer receives and sends the
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information over a network—with no further specification—is not even
arguably inventive.”).
These extra-solution limitations use a generic computer component
that performs a generic computer function as a tool to perform an abstract
idea. Thus, these limitations do not integrate the abstract idea into a
practical application. See Alice, 573 U.S. at 223–24. Instead, these
limitations merely perform insignificant extra-solution activities. Cf. Apple,
Inc. v. Ameranth, Inc., 842 F.3d 1229, 1242 (Fed. Cir. 2016) (agreeing with
the Board that limitations for printing and downloading generated menus are
insignificant post-solution activities).
We consider next the question of whether there are any claimed
improvements to the functioning of a computer or to any other technology or
technical field, applying the Director’s patent eligibility guidance, as set
forth under MPEP § 2106.05(a).
Appellant notes that “claims that improve technology are patent
eligible.” Appeal Br. 18. In support, Appellant contends:
With regard to the present claims, the claims are necessarily
rooted in technology, being performed as a computer-
implemented method for manipulating a database for improving
the computer system. These are not claims that contain mere
token references to a computer or its use; instead, these claims
are inherently tied to the computing environment.
Id. (emphasis added).
As set forth in MPEP § 2106.05(a) (emphasis added):
To show that the involvement of a computer assists in
improving the technology, the claims must recite the details
regarding how a computer aids the method, the extent to which
the computer aids the method, or the significance of a computer
to the performance of the method. Merely adding generic
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computer components to perform the method is not sufficient.
Thus, the claim must include more than mere instructions to
perform the method on a generic component or machinery to
qualify as an improvement to an existing technology.

In reviewing the Briefs, we find Appellant does not advance any
specific, substantive arguments explaining how the claimed generic
computer components aid the method, the extent to which the computer aids
the method, or the significance of a computer to the performance of the
method to improve the recited computer components. See MPEP
§ 2106.05(a). Merely reciting the claim language and asserting that it
provides an improvement to the technology is insufficient. See e.g., Reply
Br. 2–3.
Accordingly, on this record, we conclude independent claim 28, and
claims 29–45 do not recite an improvement to the functionality of a
computer or other technology or technical field. See MPEP § 2106.05(a).

MPEP § 2106.05(b), 2106.05(c)
The Examiner finds: “The claims also do not transform any article
into a different form; rather, they only manipulate abstract data elements
input [by the] user using some mathematical formulas.” Final Act. 6. See
MPEP §2106.05(c).
Appellant advances no arguments in response that any of the method
claims on appeal are tied to a particular machine (MPEP § 2106.05(b)), or
transform an article to a different state or thing (MPEP §2106.05(c)).
Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(iv).

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MPEP § 2106.05(e) Meaningful Claim Limitations
Appellant does not argue that claim 28 (or any other claim) recites
certain “meaningful” claim limitations, such as those of the types addressed
under MPEP § 2106.05(e), that impose meaningful limits on the judicial
exception. Appellant urges that the computer “features add to the claim and
underscore that the claims are directed to a practical application of the ideas
recited in the claim, and not merely the ‘mental steps’ alleged in the
Examiner’s answer.” (Reply Br. 3). However, Appellant does not present
substantive arguments explaining how the judicial exceptions are applied or
used in some meaningful way as set forth under the guidance of MPEP §
2106.05(e).8
Simply adding generic hardware and computer components to
perform abstract ideas does not integrate those ideas into a practical
application, because the “mere recitation of a generic computer cannot
transform a patent-ineligible abstract idea into a patent-eligible invention.”
Alice, 573 U.S. at 223; see also MPEP § 2106.05(d): (“The courts have also
identified limitations that did not integrate a judicial exception into a
practical application: • Merely reciting the words ‘apply it’ (or an
equivalent) with the judicial exception, or merely including instructions to

8 See MPEP § 2106.05(e) (stating that one exemplary consideration
indicative that an additional element may have integrated the exception into
a practical application is that the additional element “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,
such that the claim as a whole is more than a drafting effort designed to
monopolize the exception”) (emphasis added).
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implement an abstract idea on a computer, or merely using a computer as a
tool to perform an abstract idea, as discussed in MPEP § 2106.05(f));”).
Appellant additionally argues that “[i]ndependent claims 28, 34 and
40 do not pre-empt any underlying idea” because “claims 28, 34 and 40 are
not directed towards all methods of for enabling automation, or even all
methods of (partially) automating an FSTP expert system.” Appeal Br. 17.
However, our reviewing court provides applicable guidance: “[w]hile
preemption may signal patent ineligible subject matter, the absence of
complete preemption does not demonstrate patent eligibility.” Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015);
see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362–63
(Fed. Cir. 2015) (“that the claims do not preempt all price optimization or
may be limited to price optimization in the e-commerce setting do not make
them any less abstract”).
Moreover, the “‘mere automation of manual processes using generic
computers’ . . . ‘does not constitute a patentable improvement in computer
technology.’” Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1378, 1384
(Fed. Cir. 2019) (quoting Credit Acceptance Corp. v. Westlake Servs., 859
F.3d 1044, 1055 (Fed. Cir. 2017)).
Accordingly, under Step 2A, Prong Two (MPEP § 2106.05(a)–(c) and
(e)–(h)), we conclude that claims 28–45 do not integrate the judicial
exception into a practical application.

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The Inventive Concept – Step 2B
Under the Director’s 2019 Revised Guidance, as set forth under
MPEP § 2106.05(d)), only if a claim (1) recites a judicial exception, and
(2) does not integrate that exception into a practical application,9 do we then
look, under Step 2B, to whether the claim: (3) adds a specific limitation
beyond the judicial exception that is not “well-understood, routine,
conventional activity” in the field; 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.10 See MPEP
§ 2106.05(d).
But Appellant advances no arguments in either Brief pertaining to the
guidance of MPEP § 2106.05(d), i.e., the inventive concept — Step 2B.
Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(iv).
Moreover, because Appellant does not advance substantive,
persuasive arguments regarding any claimed nonconventional and non-
generic arrangement of known computer components, we find no inventive
concept in any purported ordered combination of these limitations.
Thus, we find Appellant’s claims are unlike the claims considered by
the court in BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827

9 This corresponds to Alice part one where it is determined whether the claim
is “directed to” an abstract idea. See Alice, 573 U.S. at 219. If a claim is
“not directed to an abstract idea under part one of the Alice framework, we
do not need to proceed to step two.” (Enfish, LLC v. Microsoft Corp., 822
F.3d 1327, 1339 (Fed. Cir. 2016).).
10 This corresponds to Alice part two where it is determined whether the
claim “contains an ‘inventive concept’ sufficient to ‘transform’ the claimed
abstract idea into a patent-eligible application.” Alice, 573 U.S. at 221.
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F.3d 1341 (Fed. Cir. 2016)), in which the court found “an inventive concept
. . . in the non-conventional and non-generic arrangement of known,
conventional pieces.” 827 F.3d at 1350 (emphases added).
In light of the foregoing, we conclude that each of Appellant’s claims
28–45, considered as a whole, is directed to a patent-ineligible abstract idea
that is not integrated into a practical application, and does not include an
inventive concept. Therefore, we sustain the Examiner’s Rejection C under
35 U.S.C. § 101 of claims 28–45.11

Rejection D of Claims 28–45 under Pre-AIA 35 U.S.C. § 103(a)
Regarding Rejection D, we have considered all of Appellant’s
arguments and any evidence presented. We highlight and address specific
findings and arguments for emphasis in our analysis below.

Regarding Rejection D, Appellant contends:
[i]n essence, Szygenda simply automates a part of a prior art
search. .The end result of Szygenda is simply a list of prior art
document search results based on a keyword search from words
and phrases in a patent document. Szygenda fails to disclose
the limitations of the claimed invention.
Appeal Br. 23.

11 Regarding Rejection C under 35 U.S.C. § 101, grouped claims 29–45 (not
argued separately) fall with representative independent claim 28. See
37 C.F.R. § 41.37(c)(1)(iv). See supra, “Claim Grouping.”

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In support, Appellant urges that Szygenda fails to disclose the
following listed elements:
• elements’ properties and their presentations as attributes,
showing these elements’ compound semantics/pragmatics;
• the disaggregation of these elements’ compound
semantics/pragmatics into conjunctions of these elements’
elementary semantics/pragmatics;
• the “independence” of elementary semantics/pragmatics
• the fine (semantical) level of converting a disclosure-level (D-
level)
fundamental formal fact to a binary-level (B- level) fundamental
formal fact representation - Szygenda stays in the most favorable
case on the (lexical/syntactic) D-level.
•the notion of “D-concepts” and “B-concepts” (i.e. semantic
units) as analyzing terms;
• the notion of semantical anticipation/ non-anticipation/
contradiction;
• the quantification of the semantic distance/height between the
properties of an element of the technical teaching TT.p of the
claimed invention to be analyzed and the peer properties of the
peer elements in different documents of technical teachings
TT.i’s;
•the quantification of the impact of pragmatics on the determined
quantification of the semantic distance/height
Appeal Br. 24.
Appellant notes that the MPEP secondary reference “is cited as
disclosing instruction to enable a user to input/access a set of legal argument
chains of the given claimed invention to show that the claimed invention
satisfies substantive patent law.” Appeal Br. 24.
Appellant explains:
MPEP [§] 2103 discloses the patent application examining
process, including determining what the Appellant seeks to
patent, conducting a search of the prior art, determining whether
the claimed invention represents patent-eligible subject matter,
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determining whether the claims of the application adequately set
forth the invention, determining whether the claims comply with
novelty and non-obviousness requirements, and communicating
the findings to the Appellant. However, MPEP fails to remedy
the deficiencies of Szygenda.
Appeal Br. 24.
The Examiner disagrees with Appellant, and further explains the basis
for the rejection:
The Appellant’s interpretation of Szygenda is narrow and
incorrect. While the Szygenda reference deal[s] with prior art
searching[,] it also deals with mapping claims limitations to prior
which discloses anticipations in the form of 102 and 103
rejections. See figures 13-15 of Szygenda that disclose an
Anticipation combination matrix and paragraph [0037] cites “the
interim report(s) 155 may indicate when a key parameter of a
given claim has no occurrences in the target search domain
(perhaps indicating a lack of antecedent basis in the specification
or a potential deficiency in a reference). The interim report(s)
155 may indicate when a single reference in the target search
domain contains all key parameters of a given claim (perhaps
indicating an anticipating reference). The interim report(s) 155
may indicate when a combination of references in the target
search domain contains all key parameters of a given claim
(perhaps indicating a combination of references that constitute
prima facie obviousness). The interim report(s) 155 may be
printed on paper, as shown, or displayed on a display device
coupled to the general-purpose data processing and storage
device 100.” This show[s] that Szygenda does consider the
anticipation of claimed invention in view of single reference,
102, and in view of combination, which a 103. In addition in
paragraph [0036] cites “the target search domain 145 may be the
specification or prosecution history of the target letters patent
(useful for determining definitions, antecedent basis, equivalents
or prosecution history estoppel) or one or more local or online
databases (useful for determining patentability, validity,
equivalents or enforceability), which are structured or
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unstructured repositories for storing data.” This would indicate
that Szygenda consider[s] 112 issues (determining definitions
(indefiniteness) and antecedent basis, 102 and 103 issues (in
determining patentability combined with the single reference and
multiple reference anticipation in paragraph [0037]), and 101
issues (validity and enforceability).
Ans. 26–27.
Based upon our review of the evidence and the record, we find a
preponderance of the evidence supports the Examiner’s ultimate legal
conclusion of obviousness, because Appellant does not present any
persuasive, substantive arguments to distinguish the limitations of
representative claim 28 from the combined teachings and suggestions of
Szygenda and the MPEP, as cited in support of the Examiner’s Rejection D
of representative claim 28. See Final Act. 8–16.
Regarding Appellant’s argued bulleted list of features of the invention
(Appeal Br. 24), we note that Appellant is arguing limitations that are not
expressly claimed. To the extent that Appellant is, in part, reciting claimed
features (or descriptions or characterizations of claimed features), under our
procedural rule, “[a] statement which merely points out what a claim recites
will not be considered an argument for separate patentability of the claim.”
37 C.F.R. § 41.37(c)(1)(iv).12 We further find that Appellant is arguing the
references separately. See Appeal Br. 23–24.

12 See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that
the Board reasonably interpreted Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art.”).
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Appellant also is arguing limitations recited in the Specification that
are not expressly claimed. For example, referring to bulleted point 2 on
page 24 of the Appeal Brief, the argued “disaggregation” is not expressly
claimed. Our reviewing court guides “[t]hough understanding the claim
language may be aided by the explanations contained in the written
description, it is important not to import into a claim limitations that are not
a part of the claim.” SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d
870, 875 (Fed. Cir. 2004).
Because Appellants attack the cited teachings of the references in
isolation (App. Br. 23–24), we find Appellant fails to rebut the Examiner’s
specific underlying factual findings, and ultimate legal conclusion of
obviousness, which are based on the combined teachings and suggestions of
Szygenda and the MPEP. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986). One cannot show nonobviousness by attacking references
individually where the rejections are based on combinations of references.
Id.
We additionally emphasize that “‘the question under 35 USC 103 is
not merely what the references expressly teach but what they would have
suggested to one of ordinary skill in the art at the time the invention was
made.’” Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir.
1989) (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)).
(Emphasis added); see also MPEP § 2123.

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Motivation To Combine — Rejection D under 35 U.S.C. § 103(a)
Appellant further contends that one of skill in the art would not seek
to combine the references as suggested by the Examiner. Appeal Br. 25. In
particular, Appellant contends that the Examiner has relied upon
impermissible hindsight because:
incorporating the process of MPEP 2103 into Szygenda would
significantly alter the principle of operation of Szygenda. That
is Szygenda is intended to narrowly determine a prior art list, not
a full patentability determination. Accordingly, one of skill in
the art would not seek to alter Szygenda by incorporating features
such as determining whether the claimed invention represents
patent-eligible subject matter, determining whether the claims of
the application adequately set forth the invention, determining
whether the claims comply with novelty and non-obviousness
requirements, and communicating the findings to the Appellant.
Incorporating these features represents a clear hindsight bias.
Appeal Br. 25.
But Appellant has not identified knowledge gleaned only from the
present application that was not within the level of ordinary skill at the time
the claimed invention was made. See In re McLaughlin, 443 F.2d 1392,
1395 (CCPA 1971). Moreover, Appellant has not provided any objective
evidence of secondary considerations (e.g., unexpected results), which our
reviewing court guides “operates as a beneficial check on hindsight.”
Cheese Sys., Inc. v. Tetra Pak Cheese & Powder Sys., Inc., 725 F.3d 1341,
1352 (Fed. Cir. 2013).
Nor does Appellant point to any evidence of record that shows
combining the teachings of Szygenda and the MPEP in the manner found by
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the Examiner (Final Act. 1613) would have been “uniquely challenging or
difficult for one of ordinary skill in the art” or would have “represented an
unobvious step over the prior art.” Leapfrog Enters., Inc. v. Fisher-Price,
Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418).
Therefore, on this record, we find the Examiner has provided a
sufficient “rational underpinning to support the legal conclusion of
obviousness.” KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006). Based upon a preponderance of the evidence, we are not
persuaded of error regarding the Examiner’s underlying factual findings and
ultimate legal conclusion of obviousness regarding Rejection D of
independent representative claim 28.
Accordingly, we sustain the Examiner’s Rejection D of representative
claim 28 under 35 U.S.C. §103(a). For the same reasons, we also sustain the
Examiner’s Rejection D of grouped dependent claims 29–45 (not argued
separately), which fall with representative claim 28. See 37 C.F.R.
§ 41.37(c)(1)(iv).

13 The Examiner finds an artisan would have been motivated to modify
Szygenda with the teachings and suggestions of the MPEP because “it would
make the Szygenda et al. system more efficient as it [would] make sure the
outcome of the system is in line with patent procedures and requirements.”
Final Act. 16.
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CONCLUSIONS
The Examiner erred in rejecting claims 28–45 under pre-AIA
35 U.S.C. § 112, first paragraph (enablement).
The Examiner erred in rejecting claims 28–45 under pre-AIA
35 U.S.C. § 112, second paragraph (indefiniteness).
By applying the Director’s 2019 Revised Guidance and October 2019
Update, as set forth under MPEP § 2106, we conclude that all claims 28–45,
rejected under 35 U.S.C. § 101, are not directed to patent-eligible subject
matter.
The Examiner did not err in rejecting claims 28–45 as being obvious
under pre-AIA 35 U.S.C. § 103(a), over the cited combination of Szygenda
and the MPEP.

DECISION SUMMARY

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
28–45 112, first
paragraph
Enablement 28–45
28–45 112,
second
paragraph
Indefiniteness 28–45
28–45 101 Eligibility 28–45
28–45 103(a) Szygenda, MPEP 28–45
Overall
Outcome
28–45

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FINALITY AND RESPONSE
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed. See 37
C.F.R. § 41.50(a)(1).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See
37 C.F.R. § 41.50(f).
AFFIRMED