Telefonaktiebolaget LM Ericsson (publ)

Patent Trials and Appeals Board

Apr 1, 2021

2020000231 (P.T.A.B. Apr. 1, 2021)

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.
15/941,566 03/30/2018 Volodya Grancharov 1009-2608 / P33275 US4 2073
102721 7590 04/01/2021
Murphy, Bilak & Homiller/Ericsson
1255 Crescent Green
Suite 200
Cary, NC 27518
EXAMINER
SAINT CYR, LEONARD
ART UNIT PAPER NUMBER
2658
NOTIFICATION DATE DELIVERY MODE
04/01/2021 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):
official@mbhiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte VOLODYA GRANCHAROV, SEBASTIAN NÄSLUND, and
SIGURDUR SVERRISSON
____________

Appeal 2020-000231
Application 15/941,566
Technology Center 2600
____________

Before JOHN A. JEFFERY, JAMES R. HUGHES, and JUSTIN BUSCH,
Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Under 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s
decision to reject claims 1–13. 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
Telefonaktiebolaget LM Ericsson (publ). Appeal Br. 2.
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STATEMENT OF THE CASE
Appellant’s invention uses a “spectrum fill” technique that fills a
transform coded audio signal’s non-coded residual sub-vectors with
coefficients from virtual codebooks. This technique improves the signal’s
perception upon decoding. See Spec. ¶¶ 26, 65.
Claim 1 is illustrative:
1. An apparatus for filling non-coded residual sub-vectors
of a transform coded audio signal, the apparatus comprising a
processor and associated memory configured to:

compress coded residual sub-vectors;

reject compressed residual sub-vectors that do not fulfill
a predetermined criterion;

concatenate the remaining compressed residual sub-
vectors to form a first virtual codebook;

combine pairs of coefficients of the first virtual codebook
to form a second virtual codebook; and

fill non-coded residual sub-vectors below a
predetermined frequency with coefficients from the first virtual
codebook, and fill non-coded residual sub-vectors above the
predetermined frequency with coefficients from the second
virtual codebook;

wherein the processor and associated memory are further
configured to compress components 𝑋𝑋�(k) of the coded residual
sub-vectors in accordance with:
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where Y(k) are the components of the compressed
residual sub-vectors and T is a small positive number that
controls the amount of compression.

THE REJECTION
The Examiner rejected claims 1–13 under 35 U.S.C. § 101 as
ineligible. Final Act. 3–4; Ans. 3–4.2

FINDINGS, CONCLUSION, AND CONTENTIONS
The Examiner determines that the claimed invention is directed to
an abstract idea, namely a sequence of mathematical operations that are not
integrated into a practical application. See Final Act. 3–4; Ans. 3–6.
According to the Examiner, the additional recited computer elements,
namely the recited processor and memory, perform generic computer

2 Throughout this opinion, we refer to (1) the Final Rejection mailed Dec.
10, 2018 (“Final Act.”); (2) the Appeal Brief filed April 8, 2019 (“Appeal
Br.”); (3) the Examiner’s Answer mailed August 6, 2019 (“Ans.”); and (4)
the Reply Brief filed October 7, 2019 (“Reply Br.”).
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functions that do not add significantly more to the abstract idea. See Final
Act. 3–4; Ans. 6.
Appellant argues that the claims are eligible because, among other
things, the claims are not stand-alone recitations of mathematical operations,
but instead are integrated into detailed processing steps or configurations
through which the claimed spectrum filling improvement is realized. Appeal
Br. 10–14. According to Appellant, the recited mechanism for filling in the
non-coded residual sub-vectors is a practical improvement for processing
transform coded audio signals by filling in its missing parts using
coefficients, thus yielding perceptual improvements in any later decoded
audio signal obtained from the transform coded audio signal. Reply Br. 1–5.
Appellant adds that the Examiner fails to provide evidence that the recited
limitations represent well-understood, routine, conventional activity. Appeal
Br. 11, 16.

ISSUE
Under § 101, has the Examiner erred in rejecting claims 1–13 as
directed to ineligible subject matter? This issue turns on whether the claims
are directed to an abstract idea and, if so, whether the recited elements—
considered individually and as an ordered combination—transform the
nature of the claims into a patent-eligible application of that abstract idea.

PRINCIPLES OF LAW
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
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implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. See, e.g., Alice Corp. v. CLS Bank Int’l, 573 U.S.
208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See Alice, 573
U.S. at 219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
(15 How.) 252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S.
at 67 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “a claim drawn to subject matter otherwise
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statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). That
said, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, . . . and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is
now commonplace that an application of a law of nature or mathematical
formula to a known structure or process may well be deserving of patent
protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted). “A
claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo,
566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention.” Id.
Under the subject matter eligibility guidance in the Manual of Patent
Examining Procedure (MPEP) (9th ed. Rev. 10.2019, June 2020), we first
look to whether the claim recites:
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(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) (see MPEP § 2106.04); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP §§ 2106.04, 2106.04(d),
2106.05(a)–(c), (e)–(h)).
Only if a claim (1) recites a judicial exception, and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not well-understood, routine, and conventional in the field
(see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, and conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See MPEP § 2106.05.

ANALYSIS
Claims 1–13: Alice/Mayo Step One
Representative independent claim 1 recites an apparatus for filling
non-coded residual sub-vectors of a transform coded audio signal, the
apparatus comprising a processor and associated memory configured to (1)
compress coded residual sub-vectors; (2) reject compressed residual sub-
vectors that do not fulfill a predetermined criterion; (3) concatenate the
remaining compressed residual sub-vectors to form a first virtual codebook;
(4) combine pairs of coefficients of the first virtual codebook to form a
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second virtual codebook; (5) fill non-coded residual sub-vectors below a
predetermined frequency with coefficients from the first virtual codebook;
(6) fill non-coded residual sub-vectors above the predetermined frequency
with coefficients from the second virtual codebook; and (7) compress
components of the coded residual sub-vectors according to the recited
mathematical expressions.
As the Specification explains, conventional transform coding
techniques filled zero-bit residual sub-vectors with noise at the decoder. See
Spec. ¶¶ 3–12. This noise-fill scheme, however, creates audible distortion in
the reconstructed audio signal. Spec. ¶¶ 14, 54.
The present invention overcomes these drawbacks by using a
“spectrum fill” technique that fills a transform coded audio signal’s non-
coded residual sub-vectors with coefficients from virtual codebooks.
According to the Specification, this technique improves the signal’s
perception upon decoding—an improvement consistent with the results of
listening tests, where listeners preferred the spectrum fill procedure of the
disclosed invention in 83% of the tests, but the noise-fill procedure was
preferred in only 17% of the tests. See Spec. ¶¶ 26, 65.
Turning to claim 1, we first note that the claim recites an apparatus
and, therefore, falls within the machine category of § 101. But despite
falling within this statutory category, we must still determine whether the
claim is directed to a judicial exception, namely an abstract idea. See Alice,
573 U.S. at 217. To this end, we must determine whether the claim (1)
recites a judicial exception, and (2) fails to integrate the exception into a
practical application. See MPEP § 2106.04(II). If both elements are
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satisfied, the claim is directed to a judicial exception under the first step of
the Alice/Mayo test. See id.
The Examiner determines that claim 1 is directed to an abstract idea,
namely a sequence of mathematical operations that are said to lack
integration into a practical application. See Final Act. 3–4; Ans. 3–6. To
determine whether a claim recites an abstract idea, we (1) identify the
claim’s specific limitations that recite an abstract idea, and (2) determine
whether the identified limitations fall within certain subject matter
groupings, namely, (a) mathematical concepts3; (b) certain methods of
organizing human activity4; or (c) mental processes.5
Here, apart from the recited processor and memory, all of claim 1’s
recited limitations fit squarely within at least one of the above categories of
the USPTO’s eligibility guidelines. When read as a whole, the recited
limitations are directed to filling a transform coded audio signal’s non-coded
residual sub-vectors with coefficients from virtual codebooks.

3 Mathematical concepts include mathematical relationships, mathematical
formulas or equations, and mathematical calculations. See MPEP
§§ 2106.04(a), 2106.04(a)(2)(I).
4 Certain methods of organizing human activity include 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),
2106.04(a)(2)(II).
5 Mental processes are concepts performed in the human mind including an
observation, evaluation, judgment, or opinion. See MPEP §§ 2106.04(a),
2106.04(a)(2)(III).
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That is, apart from the recited processor and memory, the claimed
limitations recite mental processes and mathematical concepts. See MPEP
§§ 2106.04(I)–(III).
That is, the limitations calling for (1) compressing coded residual sub-
vectors; (2) rejecting compressed residual sub-vectors that do not fulfill a
predetermined criterion; (3) concatenating the remaining compressed
residual sub-vectors to form a first virtual codebook; (4) combining pairs of
coefficients of the first virtual codebook to form a second virtual codebook;
(5) filling non-coded residual sub-vectors below a predetermined frequency
with coefficients from the first virtual codebook; (6) filling non-coded
residual sub-vectors above the predetermined frequency with coefficients
from the second virtual codebook; and (7) compressing components of the
coded residual sub-vectors according to the recited mathematical
expressions can not only be done entirely mentally by merely thinking about
these vector-based operations or writing them down, but these vector-based
operations also involve mathematical relationships, formulas, or equations
associated with the recited operations. See In re Grams, 888 F.2d 835, 837
n.1 (Fed. Cir. 1989) (“Words used in a claim operating on data to solve a
problem can serve the same purpose as a formula.”); Elec. Power Grp., LLC
v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016) (noting that analyzing
information by steps people go through in their minds, or by mathematical
algorithms, without more, are essentially mental processes within the
abstract idea category); Digitech Image Tech., LLC v. Electronics for
Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014) (“Without additional
limitations, a process that employs mathematical algorithms to manipulate
existing information to generate additional information is not patent
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eligible.”); Benson, 409 U.S. at 63 (holding ineligible claims involving a
mathematical algorithm and directed to converting binary-coded-decimal
(BCD) numerals into pure binary numerals for use with a computer); accord
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir.
2011) (“That purely mental processes can be unpatentable, even when
performed by a computer, was precisely the holding of the Supreme Court in
[Benson].”).
In short, the recited vector operations, including the recited
concatenation, are effectively mathematical operations on a mathematical
representation of an audio signal. Cf. Burnett v. Panasonic Corp., 741
F. App’x 777, 778–81 (Fed. Cir. 2018) (non-precedential) (noting that a
recited concatenation limitation merely joined a string of numbers together
and converted coordinate data into a new form of data); Coffelt v. NVIDIA
Corp., 680 F. App’x 1010, 1010–11 (Fed. Cir. 2017) (non-precedential)
(holding ineligible claim directed to abstract idea of calculating and
comparing regions in space).
We reach this conclusion noting that it is well settled that not only is
standard encoding and decoding an abstract concept long utilized to transmit
information, encoding and decoding can also be performed entirely
mentally. See RecogniCorp, LLC v. Nintendo Co., Ltd., 855 F.3d 1322,
1326 (Fed. Cir. 2017) (“Morse code, ordering food at a fast food restaurant
via a numbering system, and Paul Revere’s ‘one if by land, two if by sea’
signaling system all exemplify encoding at one end and decoding at the
other end.”); see also Return Mail, Inc. v. U.S. Postal Service, 868 F.3d
1350, 1368 (Fed. Cir. 2017) (noting encoding and decoding information are
processes that can—and have been—performed in the human mind); cf.
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CyberSource, 654 F.3d at 1372–73 (noting that a recited step that
constructed a map of credit card numbers could be performed by merely
writing down a list of credit card transactions made from a particular IP
address).
That the recited coded sub-vectors and coefficients partially represent
an audio signal does not change our conclusion. First, the claim does not
specify how or by what means the recited functions are performed, let alone
via a particular machine or devices arranged in a particular way to realize
that functionality. Rather, the recited operations are merely recited
functionally at a high level of generality.
Therefore, given the mathematical operations and mental processes
associated with the recited limitations noted above, these limitations fall
squarely within the mental processes and mathematical concepts categories
of the USPTO’s eligibility guidelines and, therefore, recite an abstract idea.
See MPEP §§ 2106.04(a), 2106.04(a)(2)(I), (III).
Therefore, apart from the recited processor and memory, all of claim
1’s recited limitations fit squarely within at least one of the above categories
of the USPTO’s eligibility guidelines and, therefore, recite an abstract idea.
See MPEP §§ 2106.04(I)–(III).
Notably, the processor and memory are the only recited elements
beyond the abstract idea, but these additional elements, considered
individually and in combination, do not integrate the abstract idea into a
practical application when reading claim 1 as a whole.
First, we are not persuaded that the claimed invention improves a
computer or its components’ functionality or efficiency, or otherwise
changes the way those devices function, at least in the sense contemplated
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by the Federal Circuit in Enfish LLC v. Microsoft Corporation, 822 F.3d
1327 (Fed. Cir. 2016), despite Appellant’s arguments to the contrary
(Appeal Br. 11–12; Reply Br. 8). The claimed self-referential table in Enfish
was a specific type of data structure designed to improve the way a computer
stores and retrieves data in memory. Enfish, 822 F.3d at 1339. To the extent
Appellant contends that the claimed invention uses such a data structure to
improve a computer’s functionality or efficiency, or otherwise change the
way that device functions, there is no persuasive evidence on this record to
substantiate such a contention.
To the extent that Appellant contends that the claimed invention is
rooted in technology because it is ostensibly directed to a technical solution
(see Appeal Br. 9–16; Reply Br. 2–8), we disagree. Even assuming, without
deciding, that the claimed invention can fill a transform coded audio signal’s
non-coded residual sub-vectors with coefficients from virtual codebooks
faster or more efficiently than doing so manually, any speed or efficiency
increase comes from the capabilities of the generic computer components—
not the recited process itself. See FairWarning IP, LLC v. Iatric Systems,
Inc., 839 F.3d 1089, 1095 (Fed. Cir. 2016) (citing Bancorp Services, LLC v.
Sun Life Assurance Co., 687 F.3d 1266, 1278 (Fed. Cir. 2012) (“[T]he fact
that the required calculations could be performed more efficiently via a
computer does not materially alter the patent eligibility of the claimed
subject matter.”)); see also Intellectual Ventures I LLC v. Erie Indemnity
Co., 711 F. App’x 1012, 1017 (Fed. Cir. 2017) (non-precedential) (“Though
the claims purport to accelerate the process of finding errant files and to
reduce error, we have held that speed and accuracy increases stemming from
the ordinary capabilities of a general-purpose computer ‘do not materially
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alter the patent eligibility of the claimed subject matter.’” (citation omitted)).
Like the claims in FairWarning, the focus of claim 1 is not on an
improvement in computer processors as tools, but on certain independently
abstract ideas that use generic computing components as tools. See
FairWarning, 839 F.3d at 1095.
Nor is this invention analogous to that which the court held eligible in
McRO, Inc. v. Bandai Namco Games America, Inc., 837 F.3d 1299 (Fed.
Cir. 2016), despite Appellant’s arguments to the contrary (Appeal Br. 12;
Reply Br. 8). There, the claimed process used a combined order of specific
rules that rendered information in a specific format that was applied to create
a sequence of synchronized, animated characters. McRO, 837 F.3d at 1315.
Notably, the recited process automatically animated characters using
particular information and techniques—an improvement over manual three-
dimensional animation techniques that was not directed to an abstract idea.
Id. at 1316.
But unlike the claimed invention in McRO that improved how the
physical display operated to produce better quality images, the claimed
invention here fills a transform coded audio signal’s non-coded residual sub-
vectors with coefficients from virtual codebooks. This generic computer
implementation is not only directed to mental processes and mathematical
concepts, but also does not improve a display mechanism as was the case in
McRO. See SAP Am. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir.
2018) (distinguishing McRO).
Nor is this a case involving eligible subject matter as in DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014), despite
Appellant’s arguments to the contrary (Appeal Br. 13). There, instead of a
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computer network operating in its normal, expected manner by sending a
website visitor to a third-party website apparently connected with a clicked
advertisement, the claimed invention in DDR generated and directed the
visitor to a hybrid page that presented (1) product information from the third
party, and (2) visual “look and feel” elements from the host website. DDR,
773 F.3d at 1258–59. Given this particular Internet-based solution, the court
held that the claimed invention did not merely use the Internet to perform a
business practice known from the pre-Internet world, but rather was
necessarily rooted in computer technology to overcome a problem
specifically arising in computer networks. Id. at 1257.
That is not the case here. As noted previously, Appellant’s claimed
invention, in essence, is directed to filling a transform coded audio signal’s
non-coded residual sub-vectors with coefficients from virtual codebooks—
albeit using computer-based components to achieve that end. The claimed
invention here is not necessarily rooted in computer technology in the sense
contemplated by DDR where the claimed invention solved a challenge
particular to the Internet. Although Appellant’s invention uses various
computer-based components as noted previously, the claimed invention does
not solve a challenge particular to the computing components used to
implement this functionality.
In short, where, as here, the recited functionality (1) starts with data;
(2) applies an algorithm; and (3) ends with a new form of data, such
functionality is directed to an abstract idea. See Burnett, 741 F. App’x at
781.
On this record, then, the claimed invention does not recite additional
elements that (1) improve a computer itself; (2) improve another technology
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or technical field; (3) implement the abstract idea in conjunction with a
particular machine or manufacture that is integral to the claim; (4) transform
or reduce a particular article to a different state or thing; or (5) apply or use
the abstract idea in some other meaningful way beyond generally linking the
abstract idea’s use to a particular technological environment, such that the
claim as a whole is more than a drafting effort designed to monopolize the
exception. See MPEP §§ 2106.04(d)(I), 2106.05(a)–(c), (e). In short, the
claim’s additional elements do not integrate the abstract idea into a practical
application when reading claim 1 as a whole.
In conclusion, although the recited functions may be beneficial by
filling a transform coded audio signal’s non-coded residual sub-vectors with
coefficients from virtual codebooks, a claim for a useful or beneficial
abstract idea is still an abstract idea. See Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379–80 (Fed. Cir. 2015).
We, therefore, agree with the Examiner that claim 1 is directed to an
abstract idea.

Claims 1–13: Alice/Mayo Step Two
Turning to Alice/Mayo step two, claim 1’s additional recited elements,
namely the recited processor and memory—considered individually and as
an ordered combination—do not provide an inventive concept that amounts
to significantly more than the abstract idea when reading claim 1 as a whole.
See Alice, 573 U.S. at 221; see also MPEP § 2106.05. As noted above, the
claimed invention merely uses generic computing components to implement
the recited abstract idea.
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Here, the claimed processor and memory are the additional recited
elements whose generic computing functionality is well-understood, routine,
and conventional. See Fair Warning, 839 F.3d at 1096 (noting that using
generic computing components like a microprocessor or user interface do
not transform an otherwise abstract idea into eligible subject matter); accord
Spec. ¶¶ 74–77 (disclosing various general-purpose computer components
used to implement the invention); Ans. 4, 6 (citing this disclosure).
To the extent that Appellant contends that the recited limitations other
than the processor and memory, namely those detailed above in connection
with Alice step one, add significantly more than the abstract idea to provide
an inventive concept under Alice/Mayo step two (see Appeal Br. 11, 16),
these limitations are not additional elements beyond the abstract idea, but
rather are directed to the abstract idea as noted previously. See BSG Tech
LLC v. Buyseasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) (explaining
that the Supreme Court in Alice “only assessed whether the claim limitations
other than the invention’s use of the ineligible concept to which it was
directed were well-understood, routine and conventional” (emphasis
added)); see also MPEP §§ 2106.05(II), 2106.05(d) (instructing that
additional recited elements should be evaluated in Alice/Mayo step two to
determine whether they (1) add specific limitations that are not well-
understood, routine, and conventional in the field, or (2) simply append
well-understood, routine, and conventional activities previously known to
the industry).
Rather, the claimed processor and memory are additional recited
elements whose generic computing functionality is well-understood, routine,
and conventional. See Mortgage Grader, Inc. v. First Choice Loan Servs.
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Inc., 811 F.3d 1314, 1324–25 (Fed. Cir. 2016) (noting that components such
an “interface,” “network,” and “database” are generic computer components
that do not satisfy the inventive concept requirement); accord Spec. ¶¶ 74–
77 (describing generic computer components used to implement the
invention); Ans. 3–4 (determining that the recited processor and memory are
additional elements that, as generic computing components, do not add
significantly more than the abstract idea).
Appellant’s contention that the Examiner allegedly did not comply
with the USPTO’s evidentiary requirements for ineligibility rejections after
Berkheimer v. HP, Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018) (Appeal Br.
11, 16) is unavailing. To be sure, the Examiner must show—with
supporting facts—that certain claim elements are well-understood, routine,
and conventional where such a finding is made. See Berkheimer, 881 F.3d
at 1369 (noting that whether something is well-understood, routine, and
conventional to a skilled artisan at the time of the invention is a factual
determination). In light of this factual determination, the USPTO requires
that Examiners support a finding that an additional element, or combination
of additional elements, is well-understood, routine, and conventional. See
MPEP § 2106.05(d)(I)(2).
As noted previously, the recited processor and memory are additional
recited elements whose generic computing functionality is well-understood,
routine, and conventional. Therefore, to the extent that Appellant contends
that the Examiner failed to provide evidence that all recited elements—
including the recited compression, rejection, concatenation, coefficient
combination, and filling functions—are well-understood, routine, and
conventional (see Appeal Br. 11, 16), such an argument is not commensurate
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with the more limited scope of the Examiner’s finding in this regard.
Rather, the Examiner’s finding is that the elements other than the abstract
idea, namely the additional computer-based elements, provide generic
computing functionality that is well-understood, routine, and conventional.
See Ans. 3–4, 6 (noting that the recited additional elements are conventional
generic computing components and, therefore, do not add significantly more
than the abstract idea).
As noted previously, there is ample evidence of this generic
computing functionality in not only the cited case law, but also Appellant’s
own Specification. See, e.g., FairWarning, 839 F.3d at 1096 (noting that
using generic computing components like a microprocessor or user interface
do not transform an otherwise abstract idea into eligible subject matter);
Spec. ¶¶ 74–77 (disclosing various general-purpose computer components
used to implement the invention); Ans. 4, 6 (citing this disclosure).
In conclusion, the additional recited elements—considered
individually and as an ordered combination—do not add significantly more
to the abstract idea to provide an inventive concept under Alice/Mayo step
two when reading claim 1 as a whole. See Alice, 573 U.S. at 221; see also
MPEP § 2106.05.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 1, and claims 2–13 not argued separately with particularity.

CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
1–13 101 Eligibility 1–13

Appeal 2020-000231
Application 15/941,566

20

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37
C.F.R. § 41.50(f).

AFFIRMED