Unify GmbH & Co. KG

Patent Trials and Appeals Board

Jun 16, 2020

2020000137 (P.T.A.B. Jun. 16, 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.
14/956,561 12/02/2015 Helmut Monz-Schneider 2010P0057US01-937 5299
88087 7590 06/16/2020
Fritzsche Patent
c/o Buchanan Ingersoll & Rooney PC (SEN)
P. O. Box 1404
Alexandria, VA 22313-1404
EXAMINER
ERB, NATHAN
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
06/16/2020 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):
ADIPDOC1@BIPC.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HELMUT MONZ-SCHNEIDER and CHRISTOPH EDER
Appeal 2020-000137
Application 14/956,561
Technology Center 3600
Before LARRY J. HUME, CATHERINE SHIANG, and
CARL L. SILVERMAN, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision rejecting claims 21–40, which are all claims pending in
the application. Appellant has canceled claims 1–20. See generally Br. 39
et seq. 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(a). Appellant identifies the real party in interest as Unify
GmbH & Co. KG. Br. 1.
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STATEMENT OF THE CASE2
The claims are directed to a method and apparatus for foreign trade
and export control. See Spec. (Title). In particular, Appellant’s disclosed
embodiments and claimed invention “relate[] to methods, devices and
systems utilized for ensuring parties are compliant with foreign trade and
export control regulations.” Spec. 1, ll. 3–4.
Exemplary Claims
Claim 21, reproduced below, is representative of the subject matter on
appeal (emphases added to contested prior-art limitations):
21. A method of providing export control comprising:
providing input for an order to a computer device having
non-transitory memory and a processor connected to the
memory, the order comprising a sale or potential sale of at least
one of goods and services;
the computer device identifying all receiver countries
associated with the order to account for an entire supply chain
associated with the order, the receiver countries comprising
intermediate receiving countries and final destination countries
for the order;
the computer device determining whether at least one of
a customer, location for receipt of goods, and location for
receipt of services is associated with an embargo state based on
the identified receiver countries;

2 Our decision relies upon Appellant’s Appeal Brief (“Br.,” filed
Apr. 24, 2019); Examiner’s Answer (“Ans.,” mailed July 1, 2019); Final
Office Action (“Final Act.,” mailed September 27, 2018); and the original
Specification (“Spec.,” filed December 2, 2015) (claiming benefit of US,
12/893,061 filed Sept. 29, 2010, now abandoned.). Appellant did not file a
Reply Brief in response to the factual findings and legal conclusions in the
Examiner’s Answer.
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the computer device blocking a first portion of the order
determined to be associated with an embargo state by removing
that first portion of the order associated with the embargo state;
the computer device determining whether the at least one
of goods and services requires at least one export license or
other permission for exporting the at least one of goods and
services;
the computer device automatically assigning permissions
or export licenses that are available;
the computer device communicating or identifying any
permission or export license that is needed to be requested to
initiate a permission or export license request for that export
license or permission; and
[a] the computer device blocking a second portion of the
order upon a determination that all necessary permissions and
necessary export licenses are not assigned to the second
portion of the order;
[b] wherein the blocking of the second portion of the
order upon the determination that all necessary permissions
and necessary export licenses are not assigned to the second
portion of the order comprises deleting or voiding the second
portion of the order that does not have all necessary
permissions and necessary export licenses and
[c] communicating information identifying all necessary
permissions and necessary export licenses needed for the
blocked second portion of the order based on results from a
root cause analysis of the order for communicating the
information to a user via at least one of a display device and a
printer.

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Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Name Reference Date
Le et al. (“Le”) US 2003/0069831 A1 Apr. 10, 2003
Chagoly et al. (“Chagoly”) US 2005/0251371 A1 Nov. 10, 2005
Ourega US 2008/0162304 A1 July 3, 2008
Taylor et al. (“Taylor”) US 2008/0294536 A1 Nov. 27, 2008
Chaisson, K., “US Transforming Export-Control Policy,” Journal
of Electronic Defense, Gainesville, June 23, 2000, 6, pp. 33–34
(hereinafter “Chaisson”).
Rejections on Appeal
R1. Claims 21–40 stand rejected under 35 U.S.C. § 101 as being
directed to a judicial exception (i.e., a law of nature, a natural phenomenon,
or abstract idea) without significantly more. Ans. 3.
R2. Claims 21, 25–27, and 37 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Taylor, Le, Ourega,
and Chagoly. Final Act. 23.
R3. Claims 22–24 and 38–40 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Taylor, Le, Ourega,
Chagoly, and Chaisson. Final Act. 27.
R4. Claims 28–36 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Taylor, Le, Chaisson, Ourega, and
Chagoly. Final Act. 29.
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CLAIM GROUPING
Based on Appellant’s arguments (Br. 12–37) and our discretion under
37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of patent-ineligible subject
matter Rejection R1 of claims 21–40 on the basis of representative claim 21;
and we decide the appeal of obviousness Rejection R2 of claims 21, 25–27,
and 37 on the basis of representative claim 21. Remaining claims 22–24,
28–36, and 38–40 in Rejections R3 and R4, not argued separately or
substantively, are addressed infra.3
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellant. 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).
We disagree with Appellant’s arguments with respect to claims 21–40
and, unless otherwise noted, we incorporate by reference herein and adopt as
our own: (1) the findings and reasons set forth by the Examiner in the action

3 Appellant’s arguments concerning independent claims 28 and 32 in
obviousness Rejection R4 are essentially the same as for independent
claim 21 in Rejection R2. We further note Appellant’s arguments appear to
group claims together without regard to the specific rejections that have been
applied. See Br. 22 (grouping claims 21–27, Rejections R2 and R3), 36
(grouping claims 37–40, Rejections R2 and R3). “Notwithstanding any other
provision of this paragraph, the failure of appellant to separately argue
claims which appellant has grouped together shall constitute a waiver of any
argument that the Board must consider the patentability of any grouped
claim separately.” 37 C.F.R. § 41.37(c)(1)(iv). In addition, when Appellant
does not separately argue the patentability of dependent claims, the claims
stand or fall with the claims from which they depend. In re King, 801 F.2d
1324, 1325 (Fed. Cir. 1986).
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from which this appeal is taken, and (2) the reasons and rebuttals set forth in
the Examiner’s Answer in response to Appellant’s arguments. We highlight
and address specific findings and arguments regarding claims 21 and 28 for
emphasis as follows.
1. § 101 Rejection R1 of Claims 21–40
Issue 1
Appellant argues (Br. 13–22) the Examiner’s rejection of claim 21
under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter is
in error. These contentions present us with the following issue:
Under the USPTO’s Revised Guidance, informed by our governing
case law concerning 35 U.S.C. § 101, is claim 1 patent-ineligible under
§ 101?
Principles of Law
A. 35 U.S.C. § 101
An invention is patent-eligible if it is a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.4
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 70 (2012) (brackets in original) (citing Diamond v. Diehr,
450 U.S. 175, 185 (1981)).

4 This threshold analysis of whether a claim is directed to one of the four
statutory categories of invention, i.e., a process, machine, manufacture, or
composition of matter, is referred to as “Step 1” in the USPTO’s patent-
eligibility analysis under § 101. MPEP § 2106.
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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. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014)
(citing Mayo, 566 U.S. at 75–77). 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” (Diehr, 450 U.S. at 191); “tanning,
dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores”
(id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267–68 (1853)));
and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v.
Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held “[a] claim drawn to subject matter otherwise 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
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products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, and this principle cannot be circumvented by attempting
to limit the use of the formula to a particular technological environment.”
Id. (citation omitted) (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.”).
Abstract ideas may include, but are not limited to, fundamental
economic practices, methods of organizing human activities, and
mathematical formulas or relationships. Alice, 573 U.S. at 217–21. Under
this guidance, we must therefore ensure at step one that we articulate what
the claims are directed to with enough specificity to ensure the step one
inquiry is meaningful. Id. at 217 (“[W]e tread carefully in construing this
exclusionary principle lest it swallow all of patent law.”).
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 (citation 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.
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B. USPTO Revised Guidance
The PTO published revised guidance in the Federal Register
concerning the application of § 101. 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50 (January 7, 2019) (hereinafter
“Revised Guidance”) (https://www.govinfo.gov/content/pkg/FR-2019-01-
07/pdf/2018-28282.pdf). All USPTO personnel are, as a matter of internal
agency management, expected to follow the guidance.” Id. at 51; see also
October 2019 Update at 1 (October 2019 Update: Subject Matter
Eligibility).
Under the Revised Guidance, we first look to whether the claim
recites:
(1) any judicial exceptions, including certain groupings
of abstract ideas (i.e., mathematical concepts, certain methods
of organizing human activity such as a fundamental economic
practice, or mental processes);5 and
(2) additional elements that integrate the judicial
exception into a practical application (see Manual for Patent
Examining Procedure (“MPEP”) §§ 2106.05(a)–(c), (e)–(h)).6
See Revised Guidance 52–53.
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:

5 Referred to as “Revised Step 2A, Prong 1” in the Revised Guidance
(hereinafter “Step 2A(i)”).
6 Referred to as “Revised Step 2A, Prong 2” in the Revised Guidance
(hereinafter “Step 2A(ii)”).
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(3) adds a specific limitation beyond the judicial
exception that is not “well-understood, routine, conventional”
in the field (see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine,
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial exception.7
See Revised Guidance 56.
Step 2A(i) – Abstract Idea
Informed by our judicial precedent, the Revised Guidance extracts and
synthesizes key concepts identified by the courts as abstract ideas to explain
that the abstract idea exception includes the following groupings of subject
matter, when recited as such in a claim limitation:
(a) Mathematical concepts—mathematical relationships,
mathematical formulas or equations, mathematical calculations;
(b) 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); and
(c) Mental processes—concepts performed in the human
mind (including an observation, evaluation, judgment, opinion).
Revised Guidance 52 (footnotes omitted).
Under the Revised Guidance, if the claim does not recite a judicial
exception (a law of nature, natural phenomenon, or subject matter within the

7 Items (3) and (4) continue to be collectively referred to as “Step 2B” of the
Supreme Court’s two-step framework, described in Mayo and Alice.
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enumerated groupings of abstract ideas above), then the claim is patent-
eligible at Step 2A(i). This determination concludes the eligibility analysis,
except in situations identified in the Revised Guidance.8
However, if the claim recites a judicial exception (i.e., an abstract idea
enumerated above, a law of nature, or a natural phenomenon), the claim
requires further analysis for a practical application of the judicial exception
in Step 2A(ii).
Step 2A(ii) – Practical Application
If a claim recites a judicial exception in Step 2A(i), we determine
whether the recited judicial exception is integrated into a practical
application of that exception in Step 2A(ii) by: (a) identifying whether there
are any additional elements recited in the claim beyond the judicial
exception(s); and (b) evaluating those additional elements individually and
in combination to determine whether they integrate the exception into a
practical application.
The seven identified “practical application” sections of the MPEP,9
cited in the Revised Guidance under Step 2A(ii), are:

8 In the rare circumstance in which an examiner believes a claim limitation
that does not fall within the enumerated groupings of abstract ideas should
nonetheless be treated as reciting an abstract idea, the procedure described in
of the Guidance for analyzing the claim should be followed. See Revised
Guidance, Section III.C.
9 See MPEP §§ 2106.05(a)–(c), (e)–(h). Citations to the MPEP herein refer
to revision [R-08.2017]. Sections 2106.05(a), (b), (c), and (e) are indicative
of integration into a practical application, while §§ 2106.05(f), (g), and (h)
relate to limitations that are not indicative of integration into a practical
application.
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(1) MPEP § 2106.05(a) Improvements to the Functioning of
a Computer or To Any Other Technology or Technical
Field
(2) MPEP § 2106.05(b) Particular Machine
(3) MPEP § 2106.05(c) Particular Transformation
(4) MPEP § 2106.05(e) Other Meaningful Limitations
(5) MPEP § 2106.05(f) Mere Instructions To Apply An
Exception
(6) MPEP § 2106.05(g) Insignificant Extra-Solution Activity
(7) MPEP § 2106.05(h) Field of Use and Technological
Environment
See Revised Guidance 55.
If the recited judicial exception is integrated into a practical
application as determined under one or more of the MPEP sections cited
above, then the claim is not directed to the judicial exception, and the patent-
eligibility inquiry ends. See Revised Guidance 54. If not, then analysis
proceeds to Step 2B.
Step 2B – “Inventive Concept” or “Significantly More”
Under our reviewing courts’ precedent, it is possible that a claim that
does not “integrate” a recited judicial exception under Step 2A(ii) is
nonetheless patent eligible. For example, the claim may recite additional
elements that render the claim patent eligible even though one or more claim
elements may recite a judicial exception.10 The Federal Circuit has held
claims eligible at the second step of the Alice/Mayo test (USPTO Step 2B)
because the additional elements recited in the claims provided “significantly
more” than the recited judicial exception (e.g., because the additional

10 See, e.g., Diehr, 450 U.S. at 187.
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elements were unconventional in combination).11 Therefore, if a claim has
been determined to be directed to a judicial exception under Revised Step
2A, we must also evaluate the additional elements individually and in
combination under Step 2B to determine whether they provide an inventive
concept (i.e., whether the additional elements amount to significantly more
than the exception itself).12
Under the Revised Guidance, we must consider in Step 2B whether an
additional element or combination of elements: (1) “Adds a specific
limitation or combination of limitations that are not well-understood,
routine, conventional activity in the field, which is indicative that an
inventive concept may be present;” or (2) “simply appends well-understood,
routine, conventional activities previously known to the industry, specified
at a high level of generality, to the judicial exception, which is indicative
that an inventive concept may not be present.” See Revised Guidance,
Section III.B.13

11 See, e.g., Amdocs, Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1300,
1304 (Fed. Cir. 2016); BASCOM Global Internet Services, Inc. v. AT&T
Mobility LLC, 827 F.3d 1341, 1349–52 (Fed. Cir. 2016); DDR Holdings v.
Hotels.com, L.P., 773 F.3d 1245, 1257–59 (Fed. Cir. 2014).
12 The patent eligibility inquiry may contain underlying issues of fact.
Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325
(Fed. Cir. 2016). In particular, “[t]he question of whether a claim element or
combination of elements is well-understood, routine and conventional to a
skilled artisan in the relevant field is a question of fact.” Berkheimer v. HP
Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018).
13 In accordance with existing Step 2B guidance, an Examiner’s finding that
an additional element (or combination of elements) is well understood,
routine, conventional activity must be supported with at least one of the four
specific types of evidence required by the USPTO Berkheimer
Memorandum, as shown, infra. For more information concerning evaluation
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In the Step 2B analysis, an additional element (or combination of
elements) is not well-understood, routine or conventional unless the
examiner finds an evidentiary basis, and expressly supports a rejection in
writing with, one or more of the following:
1. A citation to an express statement in the
specification or to a statement made by an applicant during
prosecution that demonstrates the well-understood, routine,
conventional nature of the additional element(s). . . .
2. A citation to one or more of the court decisions
discussed in MPEP § 2106.05(d)(II) as noting the well-
understood, routine, conventional nature of the additional
element(s).
3. A citation to a publication that demonstrates the
well-understood, routine, conventional nature of the additional
element(s). . . .
4. A statement that the examiner is taking official
notice of the well-understood, routine, conventional nature of
the additional element(s). . . .
See Berkheimer Memo 3–4.
If the Examiner or the Board determines under Step 2B that the
element (or combination of elements) amounts to significantly more than the
exception itself, the claim is eligible, thereby concluding the eligibility
analysis.

of well-understood, routine, conventional activity, see MPEP § 2106.05(d),
as modified by the USPTO Berkheimer Memorandum (USPTO
Commissioner for Patents Memorandum dated Apr. 19, 2018, “Changes in
Examination Procedure Pertaining to Subject Matter Eligibility, Recent
Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.)” (hereinafter
“Berkheimer Memo”).
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However, if a determination is made that the element and combination
of elements do not amount to significantly more than the exception itself, the
claim is ineligible under Step 2B, and the claim should be rejected for lack of
subject matter eligibility.
Analysis
Step 1 – Statutory Category
Claim 1, as a method (process) claim, recites one of the enumerated
categories of eligible subject matter in 35 U.S.C. § 101. Therefore, the issue
before us is whether it is directed to a judicial exception without
significantly more.
Step 2A(i): Does the Claim Recite a Judicial Exception?
The Examiner determined that claim 21 is directed to “the abstract-
idea category of ‘Certain methods of organizing human activity’. . .
[including] commercial or legal interactions . . . [and/or] managing personal
behavior or relationships or interactions between people.” Ans. 4.
We conclude claim 21 does not recite the judicial exceptions of either
natural phenomena or laws of nature. We evaluate, de novo, whether
claim 1 recites an abstract idea based upon the Revised Guidance.
First, we look to the Specification to provide context as to what the
claimed invention is directed to. In this case, the Specification discloses that
the invention “relates to methods, devices and systems utilized for ensuring
parties are compliant with foreign trade and export control regulations. Such
systems and methods may be utilized in applications that are stored in
memory and run by one or more processors or microcontrollers of electronic
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devices such as desktop computers, workstations, or other computer devices
or a networked computer device that has access to databases and other data
structures stored or maintained on other devices via at least one network
connection and/or at least one direct connection.” Spec. 1, ll. 39 (“Field of
the Invention”).
Appellant’s Abstract describes the invention:
A method and apparatus for export control includes
providing input for an invoice to a computer device. The
invoice is for a sale or potential sale of at least one of goods and
services. A computer device determines whether at least one of
a customer, location for receipt of goods, and location for
receipt of services is associated with an embargo state. The
computer device blocks any portion of the invoice determined
to be associated with an embargo state. The computer device
determines if the at least one of goods and services requires at
least one export license or other permission for exporting the at
least one of goods and services. The computer device assigns
permissions that are available. The computer device also
communicates or identifies any permission or export license
that is needed to be requested to initiate a permission or export
license request for that export license or permission.
Spec. 27 (Abstract).
In TABLE I below, we identify in italics the specific claim limitations
in claim 1 that we conclude recite an abstract idea. We additionally identify
in bold the additional (non-abstract) claim limitations that are generic
computer components and techniques, and underline limitations representing
extra or post-solution activity:
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TABLE I
Independent Claim 21 Revised Guidance
A method of providing export
control comprising:
A process (method) is a statutory subject
matter class. See 35 U.S.C. § 101.
[L1] providing input for an
order to

[L2] a computer device
having non-transitory
memory and a processor
connected to the memory,
the order comprising a sale or
potential sale of at least one of
goods and services;
Receiving information, i.e., data
gathering or “providing input for an
order,” is merely insignificant extra-
solution activity that does not add
significantly more to the abstract idea
to render the claimed invention patent-
eligible. Revised Guidance 55, n.31;
see In re Bilski, 545 F.3d 943, 962
(Fed. Cir. 2008) (en banc), aff’d on
other grounds, 561 U.S. 593 (2010)
(“[T]he involvement of the machine or
transformation in the claimed process
must not merely be insignificant extra-
solution activity”).
A memory and processor are generic
computer components.
the computer device
[L3] identifying all receiver
countries associated with the
order to account for an entire
supply chain associated with
the order,
the receiver countries
comprising intermediate
receiving countries and final

“[I]dentifying” information such as “all
receiver countries associated with the
order” is an abstract idea, i.e., an
observation, evaluation, judgment,
opinion” which could be performed as a
mental process. See Revised Guidance
52.
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Independent Claim 21 Revised Guidance
destination countries for the
order;
the computer device
[L4] determining whether at
least one of a customer,
location for receipt of goods,
and location for receipt of
services is associated with an
embargo state based on the
identified receiver countries;

“[D]etermining” information, as
claimed, is an abstract idea, i.e., an
observation, evaluation, judgment,
opinion” which could be performed as a
mental process. See Revised Guidance
52.
the computer device
[L5] blocking a first portion of
the order determined to be
associated with an embargo
state by removing that first
portion of the order associated
with the embargo state;

“[B]locking a first portion of the order”
by “removing” that first portion from
the order is an abstract idea, i.e., a
certain method of organizing human
activity in the form of commercial or
legal interactions to carry out a legal
obligation. See Revised Guidance 52.
the computer device
[L6] determining whether the
at least one of goods and
services requires at least one
export license or other
permission for exporting the at
least one of goods and
services;

“[D]etermining” information such as
whether an export license or other
permission is required is an abstract
idea, i.e., an observation, evaluation,
judgment, opinion” which could be
performed as a mental process. See
Revised Guidance 52.
the computer device
automatically
[L7] assigning permissions or
export licenses that are
available;

“[A]ssigning” permissions or export
licenses is an abstract idea, i.e., a
certain method of organizing human
activity in the form of commercial or
legal interactions to carry out a legal
obligation. See Revised Guidance 52.
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Independent Claim 21 Revised Guidance
the computer device
[L8] communicating or
identifying any permission or
export license that is needed to
be requested to initiate a
permission or export license
request for that export license
or permission; and

Transmitting or communicating
information is insignificant extra-
solution activity. Revised Guidance 55,
n.31; see buySAFE, Inc. v. Google, Inc.,
765 F.3d 1350, 1355 (Fed. Cir. 2014)
(computer receives and sends
information over a network).
the computer device
[L9] blocking a second portion
of the order upon a
determination that all
necessary permissions and
necessary export licenses are
not assigned to the second
portion of the order;

“[B]locking a . . . portion of the order”
is an abstract idea, i.e., a certain method
of organizing human activity in the
form of commercial or legal
interactions to carry out a legal
obligation. See Revised Guidance 52.
wherein the blocking of the
second portion of the order
upon the determination that
all necessary permissions and
necessary export licenses are
not assigned to the second
portion of the order comprises
[L10] deleting or voiding the
second portion of the order
that does not have all
necessary permissions and
necessary export licenses and

“[D]eleting or voiding the . . . portion
of the order” is an abstract idea, i.e., a
certain method of organizing human
activity in the form of commercial or
legal interactions to carry out a legal
obligation. See Revised Guidance 52.
[L11] communicating
information identifying all
necessary permissions and
necessary export licenses
needed for the blocked second
portion of the order based on
Transmitting information for display is
insignificant extra-solution activity. See
Revised Guidance 55, n.31.

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Independent Claim 21 Revised Guidance
results from a root cause
analysis of the order for
communicating the
information to a user
[L12] via at least one of a
display device and a printer.

A display and printer are generic
computer components.
Br. 39–40 (Claims App.).
Under the broadest reasonable interpretation standard,14 we conclude
limitations L1 through L12, overall, under their broadest reasonable
interpretation, recite steps that would be used to carry out certain methods of
organizing human activity, including commercial or legal interactions
because the limitations recite operations that would ordinarily take place
when monitoring or providing export controls, whether initiated in the mind,
person-to-person, on paper, or using a computer.
We determine that claim 1, overall, recites a certain method of
organizing human activity in the form of commercial or legal interactions
that may also be performed by pen and paper or in the mind. This type of
activity, i.e., provision of export control, as recited in limitations L1 through

14 During prosecution, claims must be given their broadest reasonable
interpretation when reading claim language in light of the specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard,
we interpret claim terms using “the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant’s specification.” In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997).
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L12, for example, and aside from any computer-related aspects, includes
longstanding conduct that existed well before the advent of computers and
the Internet, and could be carried out by a human with pen and paper. See
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
Gottschalk v. Benson.”).15
Thus, under Step 2A(i), we agree with the Examiner that claim 21’s
“method of providing export control” recites a judicial exception. We
conclude claim 21, under our Revised Guidance, recites a judicial exception
of a certain method of organizing human activity in the form of commercial
or legal interactions, i.e., managing or providing export control, and thus
recites an abstract idea.
Step 2A(ii): Judicial Exception Integrated into a Practical Application?
If the claims recite a judicial exception, as we conclude above, we
proceed to the “practical application” Step 2A(ii) in which we determine

15 Our reviewing court recognizes that “[a]n abstract idea can generally be
described at different levels of abstraction.” Apple, Inc. v. Ameranth, Inc.,
842 F.3d 1229, 1240 (Fed. Cir. 2016). That need not and, in this case does
not, “impact the patentability analysis.” Id. at 1241. Further, “[t]he Board’s
slight revision of its abstract idea analysis does not impact the patentability
analysis.” Id. Moreover, merely combining several abstract ideas does not
render the combination any less abstract. RecogniCorp, LLC v. Nintendo
Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017) (“Adding one abstract idea (math)
to another abstract idea . . . does not render the claim non-abstract.”); see
also FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94 (Fed.
Cir. 2016) (determining the pending claims were directed to a combination
of abstract ideas).
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whether the recited judicial exception is integrated into a practical
application of that exception by: (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception(s); and
(b) evaluating those additional elements individually and in combination to
determine whether they integrate the exception into a practical application.
As to the specific limitations, we find limitation L1 recites
insignificant data gathering. See MPEP § 2106.05(g). Data gathering, as
performed by the step or function in Appellant’s claims, is a classic example
of insignificant extra-solution activity. See, e.g., In re Bilski, 545 F.3d 943,
963 (Fed. Cir. 2008) (en banc), aff’d sub nom, Bilski v. Kappos, 561 U.S.
593 (2010). We also find “communicating” limitations L8 and L11 recite
insignificant postsolution activity.16 The Supreme Court guides that the
“prohibition against patenting abstract ideas ‘cannot be circumvented by’ . . .
adding ‘insignificant postsolution activity.’” Bilski, 561 U.S. at 610–11
(quoting Diehr, 450 U.S. at 191–92). On this record, we are of the view that
Appellant’s claims do not operate the recited generic computer components
(limitations L2 and L12) in an unconventional manner to achieve an
improvement in computer functionality. See MPEP § 2106.05(a).
Furthermore, we conclude limitations L3 through L7, L9, and L10 recite
various types of abstract ideas, as identified in Step 2A(i), supra.
We find none of the limitations integrate the judicial exception of
providing export control into a practical application as determined under one
or more of the MPEP sections cited above, and discussed below. The claim

16 We also note the “determining” steps L4 and L6 can be carried out by a
human in the mind or by use of pen and paper. See CyberSource, 654 F.3d
at 1375.
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as a whole merely uses instructions to implement the abstract idea on a
computer or, alternatively, merely uses a computer as a tool to perform the
abstract idea.
Under analogous circumstances, the Federal Circuit has held that
“[t]his is a quintessential ‘do it on a computer’ patent: it acknowledges that
[such] data . . . was previously collected, analyzed, manipulated, and
displayed manually, and it simply proposes doing so with a computer. We
have held such claims are directed to abstract ideas.” Univ. of Fla. Research
Found., Inc. v. Gen. Elec. Co., 916 F.3d 1363, 1367 (Fed. Cir. 2019); see
also Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1351 (Fed. Cir.
2016) (“Though lengthy and numerous, the claims do not go beyond
requiring the collection, analysis, and display of available information in a
particular field, stating those functions in general terms, without limiting
them to technical means for performing the functions that are arguably an
advance over conventional computer and network technology.”).
Therefore, the claim as a whole merely uses instructions to implement
the abstract idea on a computer or, alternatively, merely uses a computer as a
tool to perform the abstract idea. Thus, on this record, Appellant has not
shown an improvement or practical application under the guidance of MPEP
section 2106.05(a) (“Improvements to the Functioning of a Computer or to
Any Other Technology or Technical Field”) or section 2106.05(e)(“Other
Meaningful Limitations”). Nor does Appellant advance any arguments in
the Brief(s) that are directed to the Bilski machine-or-transformation test,
which would only be applicable to the method (process) claims on appeal.
See MPEP §§ 2106.05(b) (Particular Machine) and 2106.05(c) (Particular
Transformation).
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Therefore, we conclude the abstract idea is not integrated into a
practical application, and thus the claim is directed to the judicial exception.
Step 2B – “Inventive Concept” or “Significantly More”
If the claims are directed to a judicial exception, and not integrated
into a practical application, as we conclude above, we proceed to the
“inventive concept” step. For Step 2B we must “look with more specificity
at what the claim elements add, in order to determine ‘whether they identify
an “inventive concept” in the application of the ineligible subject matter’ to
which the claim is directed.” Affinity Labs, 838 F.3d at 1258.
In applying step two of the Alice analysis, our reviewing court guides
we must “determine whether the claims do significantly more than simply
describe [the] abstract method” and thus transform the abstract idea into
patentable subject matter. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709,
715 (Fed. Cir. 2014). We look to see whether there are any “additional
features” in the claims that constitute an “inventive concept,” thereby
rendering the claims eligible for patenting even if they are directed to an
abstract idea. Alice, 573 U.S. at 221. Those “additional features” must be
more than “well-understood, routine, conventional activity.” Mayo, 566
U.S. at 79.
Limitations referenced in Alice that are not enough to qualify as
“significantly more” when recited in a claim with an abstract idea include, as
non-limiting or non-exclusive examples: adding the words “apply it” (or an
equivalent) with an abstract idea17; mere instructions to implement an

17 Alice, 573 U.S. at 221–23.
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abstract idea on a computer18; or requiring no more than a generic computer
to perform generic computer functions that are well-understood, routine and
conventional activities previously known to the industry.19
Evaluating representative claim 21 under step 2 of the Alice analysis,
we conclude it lacks an inventive concept that transforms the abstract idea of
providing export control into a patent-eligible application of that abstract
idea.
The patent eligibility inquiry may contain underlying issues of fact.
Mortg. Grader, 811 F.3d at 1325. In particular, “[t]he question of whether a
claim element or combination of elements is well-understood, routine and
conventional to a skilled artisan in the relevant field is a question of fact.”
Berkheimer, 881 F.3d at 1368.
As evidence of the conventional nature of the recited “computer
device having non-transitory memory,” and “display device and a printer” in
method claim 21, and similar limitations in system claims 28 and 32, and
apparatus claim 37, the Specification discloses:
Referring to Figure 1, a computer device 1 may include a
processor 2, memory 3 connected or interconnected to that
processor, a display device 4, a printer 5, and one or more input
devices. The input devices may be a keyboard 6a, a mouse 66, a
barcode scanner, a RFID tag scanner, a combination of such
devices or other input devices. The display device 4 may be a
monitor, liquid crystal display or other type of display unit. The
processor 2 may be only one processor or microprocessor or

18 Alice, 573 U.S. at 222–23, e.g., simply implementing a mathematical
principle on a physical machine, namely a computer.
19 Alice, 573 U.S. at 225 (explaining using a computer to obtain data, adjust
account balances, and issue automated instructions involves computer
functions that are well-understood, routine, conventional activities).
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may include a plurality of interconnected processors. Similarly,
the memory 3 may be only one memory unit or may be a
plurality of memory units connected to the processor 2. The
memory 3 could also be a plurality of interconnected memory
units. Preferably, the memory 3 is non-transitory memory.
The computer device 1 may be connected to a database
or other service maintained by another computer device such as
a dedicated computer or a dedicated server via a network
connection. Alternatively, the computer device may have one or
more databases stored in the memory 3 of the computer device
to eliminate the use of such computer devices or to reduce the
use of such dedicated computer devices.
The memory 3 may have a software application stored
therein. The software application may be run by the processor
2. The software application may include code that defines a
method that the processor may implement or run. For example,
a computer device that has the software application may be
configured to process a method defined by the code of the
software application.
Spec. 5:2–20.20
Thus, because the Specification describes the additional elements in
general terms, without describing the particulars, we conclude the claim
limitations may be broadly but reasonably construed as reciting conventional
computer components and techniques, particularly in light of Appellants’
Specification, as quoted above.
Appellant does not provide a response with respect to this step of the
analysis.
We conclude the claims fail the Step 2B analysis because claim 21, in
essence, merely recites various computer-based elements along with no

20 The Examiner provides evidentiary findings required by the Berkheimer
Memorandum. See Ans. 6–9.
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more than mere instructions to implement the identified abstract idea using
the computer-based elements.
Therefore, in light of the foregoing, we conclude, under the Revised
Guidance, that each of Appellant’s claims 21–40, 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.
Accordingly, we sustain the Examiner’s § 101 rejection of independent
claim 21, and grouped claims 22–40, which fall therewith. See Claim
Grouping, supra.
2. § 103(a) Rejection R2 of Claims 21, 25–27, and 37
Issue 2
Appellant argues (Br. 22–31) the Examiner’s rejection of claim 21
under 35 U.S.C. § 103(a) as being obvious over the combination of Taylor,
Le, Ourega, and Chagoly is in error. These contentions present us with the
following issues:
(1) Did the Examiner err in finding the cited prior art combination
teaches or suggests “[a] method of providing export control,” that uses “a
computer device” wherein, inter alia, (a) “the computer device block[s] a
second portion of the order upon a determination that all necessary
permissions and necessary export licenses are not assigned to the second
portion of the order;” (b) “wherein the blocking of the second portion of the
order upon the determination that all necessary permissions and necessary
export licenses are not assigned to the second portion of the order comprises
deleting or voiding the second portion of the order that does not have all
necessary permissions and necessary export licenses;” and
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(c) “communicating information identifying all necessary permissions and
necessary export licenses needed for the blocked second portion of the order
based on results from a root cause analysis of the order for communicating
the information to a user via at least one of a display device and a printer,”
as recited in claim 21?
(2) Did the Examiner err in rejecting claim 21 because the
Examiner did not provide a sufficient rationale to combine the references in
the manner suggested, allegedly because Le teaches away from deletion or
voiding of any portion of an order?
Principles of Law
“[O]ne cannot show non-obviousness by attacking references
individually where . . . the rejections are based on combinations of
references.” In re Keller, 642 F.2d 413, 426 (CCPA 1981). “The test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference. . . . Rather,
the test is what the combined teachings of those references would have
suggested to those of ordinary skill in the art.” Id. at 425.
In KSR, the Court stated “[t]he combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398,
416 (2007).
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
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skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill. . . . [A] court
must ask whether the improvement is more than the predictable
use of prior art elements according to their established
functions.
Id. at 417.
Further, the relevant inquiry is whether the Examiner has set forth
“some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006) (cited with approval in KSR, 550 U.S. at 418).
Analysis
(1) All Limitations are Taught or Suggested
Limitation (a): Blocking a Second Portion of the Order
The Examiner finds Taylor teaches “the computer device blocking a
second portion of the order because the second portion f the order may not
be shipped” limitation. Final Act. 23 (citing Taylor ¶¶ 2, 95, 106–109).
Furthermore, we note Taylor also teaches or suggests:
Once sufficient information has been received regarding
the item(s) 35 for which export services are requested, the
method may include determining if the item(s) 35 are eligible
for export, as in 830. In some embodiments, this determination
may include searching for the item(s) 35 on one or more
governmental lists used in regulating exports, such as the
Commerce Control List (CCL) and/or the U.S. Munitions List
(USML). These and other lists may provide information
indicating that one or more items 35 for which the merchant has
requested export services may not be exported at all or may not
be exported to particular countries, entities, or persons (e.g.,
those included on a denied persons lists, unverified persons list,
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entity list, specially designated nations list, debarred list, or
non-proliferation sanctions list).
Taylor ¶ 83; see also Final Act. 23 (cited by the Examiner with respect to the
limitation “the computer device blocking the first portion of the order
determined to be associated with an embargo start.”).
In light of the above-quoted teachings and the Examiner’s findings,
we find Appellant’s argument (Br. 25) that “Taylor does not teach or suggest
. . . any computer device blocking at least a portion of the order if all
necessary permissions and necessary export licenses are not assigned to the
at least a portion of the order” is incorrect. Appellant further argues,
unresponsive to the Examiner’s specific findings identified above, that Le
“fails to teach or suggest any blocking of the at least a portion of the order
upon the determination that all necessary permissions and necessary export
licenses are not assigned to the at least a portion of the order.” Id. We
disagree with Appellant’s contentions, which we find are not commensurate
with the Examiner’s specific findings.
Limitation (b): Deleting or Voiding the Second Portion of the Order
The Examiner finds paragraphs 2, 95, and 106 through 110 of Taylor
teaches or suggests “the computing device blocking a second portion of the
order because the second portion of the order may not be shipped.” Final
Act. 23.
For example:
If it is determined that one or more items 35 of the order
are not eligible for export to the specified destination, indicated
as the negative exit from 1020, the method may include
providing an indication that the item or items 35 cannot be
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exported by the fulfillment services provider to the specified
destination, as in 1025.
Taylor ¶ 109.
The Examiner further finds, “Taylor fails to disclose deleting or
voiding or removing a portion of the order that may not be shipped” (Final
Act. 24), but then cites Ourega in paragraph 152 as teaching or suggesting
“deleting or voiding or removing a portion of the order that may not be
shipped.” Id. “[T]he packaging manager will automatically remove an
unavailable goods from the original order, and then include these items
within a new order.” Ourega ¶ 152.
Appellant responds that Ourega teaches splitting an order into two
separate parts, but that “[t]here is no voiding or deletion of any order due to
certain items not having all necessary permissions and necessary export
licenses. . . . [and] there is no voiding or deletion of any such order as the
ordered items are still provided to the buyer.” Br. 26.
In response, the Examiner finds “[w]hile Taylor discloses blocking
part of an order from shipping, it is not clear that the blocked item in Taylor
is deleted, voided, or removed. Therefore, Examiner turns to Ourega to fill
this gap.” Ans. 19. “One option in this situation [described in paragraph
152 of Ourega] is for the currently unavailable item(s) to be canceled from
the order, with a refund being issued for the canceled item(s) if they have
already been paid for. This partial cancellation of the order comprises
‘deleting or voiding or removing a portion of the order that may not be
shipped.’” Ans. 20.
Under the broadest reasonable interpretation, and whether or not
Ourega teaches that a canceled order may ultimately be fulfilled, we agree
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with the Examiner’s findings, and further note that Appellant does not rebut
the Examiner’s specific findings, clarifications, and legal conclusions.
Limitation (c): Communicating Information Identifying Permissions and
Licenses Needed Based Upon Root Cause Analysis
The Examiner finds Taylor teaches communicating information to a
user via a display device (Final Act. 23 (citing Taylor ¶ 75)), but relies upon
Chagoly as teaching or suggesting that the information identifying all
necessary permissions and necessary export licenses needed is based on
results from a root cause analysis of the order. Final Act. 24 (citing Chagoly
¶¶ 4, 42, 54, 60, and 85). In particular, we find Chagoly teaches that “[t]his
mechanism permits any ordering of the child nodes that is deemed to be
most helpful in identifying the root cause of errors or problems with
transaction processing.” Chagoly ¶ 85.
Appellant contends “[t]here is no disclosure of any root cause analysis
being performed that identifies all missing permissions and export licenses
in the cited art.” Br. 28. “There is no evaluation of any order nor any
communication of elements of an actual order that are determined to be
missing from such testing.” Br. 29. With respect to the Examiner’s citation
(Final Act. 24) to Chagoly at paragraph 85 for this particular disputed aspect
of claim 21, Appellant contends “[t]here are no actual orders being evaluated
nor is there any root cause error analysis being performed on any item of an
order.” Br. 29. “The root cause analysis being mentioned by Chagoly
relates to functions of different nodes supporting certain aspects of a web
service. There is no disclosure or suggestion of any use of a root cause
analysis to identify missing permissions and/or export licenses needed for a
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portion of an order. Chagoly is silent with respect to any such root cause
analysis being performed.” Br. 30.
We disagree with Appellant’s contentions because Appellant is
arguing the references separately, when the rejection is for what the
reference combination would have suggested to a person with skill in the art.
See Keller, 642 F.2d at 425. The Examiner relies upon the combination of
Taylor, Le, Ourega, and Chagoly in rejecting claim 2121 and, particularly,
relies upon Chagoly for the “root cause” portion of the disputed limitation.22
(2) The Examiner Provided Sufficient Rationale to Combine the References
Appellant contends “[t]he Examiner failed to provide any rationale
that supports the modification of Taylor [ ] to be made by the combination of
Ourega and Le [ ]. The conclusory rationale provided in the Final Office
Action is insufficient. This conclusory rationale merely shows that
impermissible hindsight reasoning based only on Applicant's application has
been utilized to reject claims 21–27.” Br. 27. Appellant further alleges “[a]
person of skill in the art would not modify Taylor[’s] system so that an order
could be submitted to deliver a product to an embargo state to then delete
that portion of an order. This would be contrary to Taylor et al.’s principle
of operation. Further, such a modification would not be suggested by Taylor
as a person of skill in the art would merely use the solution disclosed by
Taylor and not deviate from such a solution as contended in the Final Office

21 Appellant generally discusses each of the Taylor, Le, and Ourega
references in connection with this “communicating” limitation. See Br. 28–
29.
22 The Examiner provides motivation to combine the references in the
manner suggested in the rejection, as discussed, infra. Final Act. 23–24.
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Action.” Br. 30–31. “The Final Office Action therefore relies on
impermissibly hindsight reasoning to find a suggestion for such a
modification of Taylor et al. from paragraphs 2, 83, and 106–109 of Taylor.”
Br. 31.
Here, we see the hindsight question before us as a balance, i.e.,
whether the Examiner’s proffered combination of references is merely:
(1) “the predictable use of prior art elements according to their established
functions” (KSR, 550 U.S. at 417), consistent with common sense; or,
(2) would an artisan reasonably have combined the cited references in the
manner proffered by the Examiner but for having the benefit of the claim to
use as a guide (i.e., impermissible hindsight)?
We find the Examiner provided articulated reasoning with rational
underpinning as to the motivation to combine Taylor with Le (Final Act. 23–
24), Taylor with Ourega (Final Act. 24), and Taylor with Chagoly. Id. In
this case, the Examiner’s conclusions of obviousness are clearly articulated
and are based on detailed factual findings that are supported by the
references of record, and which Appellant does not rebut by filing a Reply
Brief. See Ans. 16–31. Thus, we agree with the Examiner’s findings and
legal conclusions.
Moreover, Appellant has not demonstrated that the Examiner’s
proffered combination of references would have been “uniquely challenging
or difficult for one of ordinary skill in the art.” See Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550
U.S. at 418). Nor has Appellant provided objective evidence of secondary
considerations which our reviewing court guides “operates as a beneficial
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check on hindsight.” Cheese Sys., Inc. v. Tetra Pak Cheese and Powder
Sys., 725 F.3d 1341, 1352 (Fed. Cir. 2013).
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner’s reliance on the cited prior art
combination to teach or suggest the disputed limitations of claim 21, nor do
we find error in the Examiner’s resulting legal conclusion of obviousness.
Accordingly, we sustain the Examiner’s obviousness rejection of
independent claim 21, and grouped claims 25–27, and 37 which fall
therewith. See Claim Grouping, supra.23
3. § 103 Rejections R3 and R4 of Claims 22–24, 28–36, and 38–40
In view of the lack of any substantive or separate arguments directed
to obviousness Rejection R3 of claims 22–24 and 38–40 under § 103 (see
generally Br. 24–31 and 36–37), we sustain the Examiner’s rejection of
these claims. Arguments not made are waived.24
In addition, in view of the lack of any substantive or separate
arguments directed to obviousness Rejection R4 of claims 28–36 under

23 While Appellant sets forth what might first appear as a separate argument
for patentability of claim 27 (Br. 31), the argument turns on points of
contention raised in connection with the rejection of claim 21. “As noted
above, the cited art fails to suggest any voiding of a portion of an order. It
also fails to disclose any removal of items so that the order has the necessary
permissions and export licenses. Thus, claim 27 is independently allowable.”
Id.
24 With respect to Rejection R3 of claims 22–24 and 38–40, Appellant
merely argues the patentability of independent claims 21 and 37 from which
these claims depend. Br. 24–31 and 36–37.
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§ 103 (see generally Br. 24–31 and 36–37), we sustain the Examiner’s
rejection of these claims. Arguments not made are waived.25
CONCLUSIONS
(1) Under our Revised Guidance, governed by relevant case law,
claims 21–40 are patent-ineligible under 35 U.S.C. § 101, and we sustain the
rejection.
(2) The Examiner did not err with respect to obviousness
Rejections R2 through R4 of claims 21–40 under 35 U.S.C. § 103(a) over
the cited prior art combinations of record, and we sustain the rejections.

25 With respect to Rejection R4 of claims 28–36, Appellant’s arguments are
essentially the same as presented for independent claim 21 in Rejection R2.
See Br. 31–36.
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DECISION SUMMARY
Claims
Rejected
35 U.S.C.
§
Basis /
References Affirmed Reversed
21–40 101
Subject
Matter
Eligibility
21–40
21, 25–27, 37 103(a)
Obviousness
Taylor, Le,
Ourega,
Chagoly
21, 25–27, 37
22–24, 38–40 103(a)
Obviousness
Taylor, Le,
Ourega,
Chagoly,
Chaisson
22–24, 38–40
28–36 103(a)
Obviousness
Taylor, Le,
Chaisson
Ourega,
Chagoly,
28–36
Overall
Outcome 21–40
FINALITY AND 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