ARM Limited

Patent Trials and Appeals Board

Jun 23, 2020

14619881 - (D) (P.T.A.B. Jun. 23, 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.
14/619,881 02/11/2015 Robert James CATHERALL JRL-550-1848 1001
73459 7590 06/23/2020
NIXON & VANDERHYE, P.C.
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
JOHNSON, CEDRIC D
ART UNIT PAPER NUMBER
2129
NOTIFICATION DATE DELIVERY MODE
06/23/2020 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):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ROBERT JAMES CATHERALL,
ANTHONY NEIL BERENT, RHYS DAVID COPELAND,
MARK EDGEWORTH, and JONATHAN STEPHEN BLACK

Appeal 2019-002160
Application 14/619,881
Technology Center 2100
____________

Before JENNIFER S. BISK, AMEE A. SHAH, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

SILVERMAN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision rejecting claims 1–23. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

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 ARM
LIMITED. Appeal Br. 3.
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CLAIMED SUBJECT MATTER
The Specification states that computing hardware — such as a
“graphics processing unit,” for example — “may take several years to
develop” and that there is a need to have “application software, driver
software and associated complementary hardware all available and tested
[and] ready to be used with the graphics processing unit,” “when the
graphics processing unit hardware becomes available.” Spec. 2, ll. 13–16.
Accordingly, “there is an increasing need for simulation of target hardware
before the real hardware becomes available for testing,” because “[s]uch
simulation can permit software associated with the target hardware, and
complementary hardware intended to operate with the target hardware, to be
developed in advance of the target hardware itself being available.” Id. at 2,
ll. 9–13.
The Specification describes an approach to simulating the
performance of a target hardware device being developed:
The present technique recognises that in some
circumstances the simulation of a target hardware device may
be provided using a primary partial simulation and a
complementary partial simulation running in parallel with
inputs taken from different levels of abstraction and executing
the same processing workload to generate respective first partial
result state data and second partial result state data. The
technique recognises that there is no need to simulate the
operation of the target hardware device from end-to-end but
rather that multiple partial simulations may be provided
operating in parallel at different levels of abstraction from the
target hardware so as to generate respective partial result state
data appropriate to their respective levels of abstraction. This
can permit other systems to interact with the simulation of the
target hardware device so as to verify their own proper
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behaviour with a reduced engineering burden associated with
the provision of the simulation of the target hardware device.
Id. at 4, ll. 2–12.
Independent claim 1, presented below, is representative of the
subject matter at issue in this Appeal:
1. A method of simulating execution of a processing
workload by a target hardware device including generating
result state data, said method comprising the steps of:
providing workload data specifying said processing
workload;
passing said workload data both to a primary partial
simulation and to a complementary partial simulation running
in parallel, the primary partial simulation acquiring input data
from a first level of abstraction of said target hardware, the
complementary partial simulation acquiring input data from a
second level of abstraction of said target hardware, and the first
level of abstraction and the second level of abstraction being
different from each other;
simulating execution of said processing workload using
said primary partial simulation to generate primary partial result
state data representing at least part of said result state data; and
simulating execution of said processing workload using
said complementary partial simulation to generate
complementary partial result state data representing at least part
of said result state data.
REJECTION
Claims 1–23 are rejected under 35 U.S.C. § 101 as ineligible subject
matter.
FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.
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ANALYSIS
Legal Principles
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. Yet, subject matter belonging to any of the statutory
categories may, nevertheless, be ineligible for patenting. The Supreme
Court has interpreted § 101 to exclude laws of nature, natural phenomena,
and abstract ideas, because they are regarded as the basic tools of scientific
and technological work, such that including them within the domain of
patent protection would risk inhibiting future innovation premised upon
them. Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 589 (2013).
Of course, “[a]t some level, ‘all inventions . . . embody, use, reflect,
rest upon, or apply’” these basic tools of scientific and technological work.
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014). Accordingly,
evaluating ineligible subject matter, under these judicial exclusions, involves
a two-step framework for “distinguish[ing] between patents that claim the
buildin[g] block[s] of human ingenuity and those that integrate the building
blocks into something more, thereby transform[ing] them into a patent-
eligible invention.” Id. (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 88–89 (2012)) (internal quotation marks omitted).
The first step determines whether the claim is directed to judicially excluded
subject matter (such as a so-called “abstract idea”); the second step
determines whether there are any “additional elements” recited in the claim
that (either individually or as an “ordered combination”) amount to
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“significantly more” than the identified judicially excepted subject matter
itself. Id. at 217–18.
In 2019, the USPTO published revised guidance on the application of
§ 101, in accordance with judicial precedent. See 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 52 (Jan. 7, 2019)
(“2019 Revised Guidance”). Under the 2019 Revised Guidance, a claim is
“directed to” an abstract idea, only if the claim recites any of
(1) mathematical concepts, (2) certain methods of organizing human
activity, and (3) mental processes — without integrating such abstract idea
into a “practical application,” i.e., without “apply[ing], rely[ing] on, or
us[ing] the judicial exception in a manner that imposes a meaningful limit on
the judicial exception, such that the claim is more than a drafting effort
designed to monopolize the judicial exception.” Id. at 52–55. The
considerations articulated in MPEP § 2106.05(a)–(c) and (e)–(h) bear upon
whether a claim element (or combination of elements) integrates an abstract
idea into a practical application. Id. at 55. A claim that is “directed to” an
abstract idea constitutes ineligible subject matter, unless the claim recites an
additional element (or combination of elements) amounting to significantly
more than the abstract idea. Id. at 56.
The 2019 Revised Guidance stands “[i]n accordance with judicial
precedent” (id. at 52), but enumerates the analytical steps somewhat
differently than the Supreme Court’s Alice opinion. Step 1 of the 2019
Revised Guidance addresses whether the claimed subject matter falls within
any of the statutory categories of § 101. Id. at 53–54. Step 2A, Prong One,
concerns whether the claim at issue recites ineligible subject matter and, if
an abstract idea is recited; Step 2A, Prong Two, addresses whether the
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recited abstract idea is integrated into a practical application. Id. at 54–55.
Unless such integration exists, the analysis proceeds to Step 2B, in order to
determine whether any additional element (or combination of elements)
amounts to significantly more than the identified abstract idea. Id. at 56.
Claim Construction
Although “claim construction is not an inviolable prerequisite” to an
analysis under § 101, “a full understanding of the basic character of the
claimed subject matter” is, nevertheless, needed to evaluate questions of
subject-matter eligibility. Bancorp Servs., LLC v. Sun Life Assur. Co. of
Canada (U.S.), 687 F.3d 1266, 1273–74 (Fed. Cir. 2012). See also McRO,
Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1311 (Fed. Cir. 2016)
(“As an initial matter, we note that, in this case, claim construction is helpful
to resolve the question of patentability under § 101.”)
In order to assist our analysis, in the present Appeal, we address the
construction of certain terms in the phrase (of exemplary independent
claim 1) “a primary partial simulation and . . . a complementary partial
simulation running in parallel.” (The other independent claims — claims 22
and 23 — employ essentially similar language.)
We understand the claimed “simulation[s]” to refer to the operation of
computer hardware and software, so as to imitate the behavior — in regard
to the data provided to, and generated by, the respective “simulation” — of
the recited “target hardware device.” This understanding follows from the
claim language itself, because the term “simulation” is well-understood in
computer science to mean the “[i]mitation of the behavior of some existing
or intended system, or some aspect of that behavior.” John Daintith et al., A
Dictionary of Computing (6th ed. 2008) (hereinafter, “Daintith, Dictionary
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of Computing”) (definition of “simulation”). Further, the Specification
describes the computer hardware and software components and processes of
a “simulation system for simulating the interaction of the application
program 2, the operating system 4 and the driver program 6 with the
hardware elements [of the central processing unit] 8, [the graphics
processing unit] 10, [and the memory] 12 of Figure 1” — e.g., the elements
of claim 1’s “target hardware device” being simulated. Spec. 9, ll. 20–22.
Thus, claim 1’s “primary partial simulation” and “complementary partial
simulation” together comprise the operation of hardware and software, in a
manner that imitates the “execution of a processing workload by [the] target
hardware device including generating result state data.” These operations
are accomplished by the claimed “primary partial simulation” and
“complementary partial simulation” operating on different portions of the
“workload data.” See id. at 9, l. 20 – 11, l. 10. For example, as explained in
the Specification:
The primary partial simulation 22 operates in parallel
with the complementary partial simulation 14, but acquires its
input data from a different level of abstraction. More
particularly, the driver program 6 outputs commands to the
primary partial simulation 22 corresponding to those which
would be output from the driver program 6 to the graphics
processing unit 10 in Figure 1. The driver program 6 and the
operating system 4 also interact with each other and with the
primary partial simulation 22 to provide input data to the
primary partial simulation 22, such as data indicating memory
regions which have been allocated for use by the simulated
target hardware device, servicing interrupt behaviour such as
processing software interrupts and interrupts indicating
progress through the workload as may be generated by the
primary partial simulation 22 to coordinate action with the
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complementary partial simulation 14 and to correspond to the
behaviour of the real graphics processing unit 10.
Id. at 10, ll. 4–14.
Next, we understand the phrase “running in parallel” to refer to the
simultaneous operation of the respective hardware and software of the
“primary partial simulation” and the “complementary partial simulation,”
with regard to respective “input data from a first level of abstraction of said
target hardware” and “input data from a second level of abstraction of said
target hardware,” so as to “generate” the respective “primary partial result
state data” and “complementary partial result state data representing.” This
understanding follows from the claim language itself, because the term
“parallel” is well-understood in computer science to “[i]nvolv[e] the
simultaneous transfer or processing of the individual parts of a whole.”
Daintith, Dictionary of Computing (definition of “parallel”). The
Specification lends further support to our understanding, by describing the
role of “marker data” that “correspond[s] to positions within the processing
of the workload data reached at particular points so that the parallel
execution of the complementary partial simulation 14 and the primary partial
simulation 22 may be kept in sufficient synchronism.” Spec. 11, ll. 4–8.
This reference to “synchronism” speaks to the temporal simultaneity
involved in the claimed “primary partial simulation” and “complementary
partial simulation” “running in parallel.”
Finally, we note that the independent claims in the Appeal employ the
word “abstraction,” for example, in claim 1’s recitation of “the primary
partial simulation acquiring input data from a first level of abstraction of
said target hardware, the complementary partial simulation acquiring input
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data from a second level of abstraction of said target hardware.” Although
the expression “abstract idea,” along with related words, have acquired
specialized meaning in patent law, in regard to issues of subject-matter
eligibility, the use of the term “abstraction,” in the present claims, does not
color our analysis of the rejection under consideration. The term
“abstraction” of the claims relates to a familiar practice in computer science:
The principle of ignoring those aspects of a subject that
are not relevant to the current purpose in order to concentrate
solely on those that are. The application of this principle is
essential in the development and understanding of all forms of
computer system.
Daintith, Dictionary of Computing (definition of “abstraction”). Thus, the
claimed “abstraction[s]” concern the different types of “input data,” of the
“workload data,” that are provided to the respective “primary partial
simulation” and “complementary partial simulation.” This understanding
aligns with the use of the word “abstraction” (and variants thereof) in the
Specification. See Spec. 4, ll. 20–23 (“It is becoming increasingly common
for processing workloads to be specified in a way abstracted from the
hardware which will execute those processing workloads in order to make
the processing workloads more portable between different hardware
implementations.”) See also id. at 6, ll. 25–28 (“The increasing use of
abstraction in specifying processing workloads has the result that in many
instances, an existing host processing device that is able to execute at least
part of the processing workload as a native workload will already exist and
can be used efficiently to provide at least part of the complementary partial
simulation.”)
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Accordingly, the appearance of the word “abstraction,” in the claims,
does not bear upon the patent-eligibility of the claimed subject matter, or
whether any portion of it constitutes an “abstract idea.” Law is not so
formalistic that the usage of a word, in one context, would mandate a
particular outcome, in another. See Yates v. U.S., 574 U.S. 528, 537 (2015)
(“In law as in life, . . . the same words, placed in different contexts,
sometimes mean different things.”); Secure Axcess, LLC v. PNC Bank Nat’l
Ass’n, 848 F.3d 1370, 1381 (Fed. Cir. 2017) (“To be clear: the phrasing of a
qualifying claim[, for PTAB review of a Covered Business Method (CBM),]
does not require particular talismanic words. When properly construed in
light of the written description, the claim need only require one of a ‘wide
range of finance-related activities,’ examples of which can be found in the
cases which we have held to be within the CBM provision.”) (citations
omitted); In re Gelnovatch, 595 F.2d 32, 46 (CCPA 1979) (Markey, C.J.,
dissenting) (“Each so-called ‘computer program’ case, like all cases turning
on the nature of an invention, must be decided not on a rubric but on its own
facts. In reviewing a rejection under § 101, the controlling facts must be
developed from careful and detailed analysis of the invention as described
and claimed. The Supreme Court and this court have made just such
analyses in the ‘computer program’ cases thus far presented. It is just such
analysis that the PTO must make in each such case. That analysis includes a
determination of the meaning of computer-world terms, and the role and
effect of the elements or steps for which they stand, in the context of the
invention as a whole. Justice requires that employment of labels, rubrics,
and talismans, be eschewed.”) (footnotes omitted).
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Subject-Matter Eligibility
Regarding Step 1 of the 2019 Revised Guidance, the Examiner does
not determine that any claim in the Appeal lies outside the statutory
categories of § 101. The foregoing claim constructions confirm the
Examiner’s position. Independent claim 1 provides “[a] method of
simulating execution of a processing workload by a target hardware device,”
performed through the operation of hardware and software. Thus, claim 1 is
drawn to a “process,” per 35 U.S.C. § 101. Independent claim 22 provides
an “[a]pparatus for executing a processing workload specified by workload
data to generate result state data in place of a target hardware device” — i.e.,
a combination of particularly configured hardware and software elements.
In the terminology of § 101, claim 22 is drawn to a “machine.” The
remaining independent claim (claim 23) recites “[a] non-transitory
computer-readable storage medium, having computer-executable
instructions stored thereon” — a “manufacture,” in the language of § 101,
that explicitly avoids the defect addressed in In re Nuijten, 500 F.3d 1346
(Fed. Cir. 2007) (holding that a transitory propagating signal is outside the
statutory invention categories of § 101).
The Examiner’s analysis corresponding to Step 2A, Prong One, of the
2019 Revised Guidance identifies the following limitations of independent
claim 1: “providing workload data specifying said processing workload”;
“passing said workload data both to a primary partial simulation and to a
complementary partial simulation running in parallel, the primary partial
simulation acquiring input data from a first level of abstraction of said target
hardware, the complementary partial simulation acquiring input data from a
second level of abstraction of said target hardware, and the first level of
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abstraction and the second level of abstraction being different from each
other”; “simulating execution of said processing workload using said
primary partial simulation to generate primary partial result state data
representing at least part of said result state data”; and “simulating execution
of said processing workload using said complementary partial simulation to
generate complementary partial result state data representing at least part of
said result state data.” Final Action 4–5. According to the Examiner, these
limitations are “similar to the abstract idea of collecting information,
analyzing it, and displaying certain results of the collection and analysis.”
Id. at 5 (citing Elec. Power Grp., LLC v. Alstom, S.A., 830 F.3d 1350 (Fed.
Cir. 2016)).
More specifically, in comparing the identified claim limitations to the
abstract idea characterization of Electric Power Group, the Examiner states:
“[t]he recitation of ‘providing workload data . . .’ and passing workload data
to run simulations in parallel are similar to information being collected”;
“the recitation of the input data acquired from different levels of abstraction
describing the location of where the data is collected, while simulating the
workload using both the primary and complimentary simulations are steps of
analysis performed regarding the workload data”; and “the results of the
simulations are steps of displaying the certain results of the collection and
analysis.” Id.
Viewed through the lens of the 2019 Revised Guidance, we
understand the Examiner’s characterization of the abstract idea —
“collecting information, analyzing it, and displaying certain results of the
collection and analysis” (Final Action 5) — to be a form of mental process,
i.e., “concepts performed in the human mind (including an observation,
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evaluation, judgment, opinion).” 2019 Revised Guidance, 84 Fed. Reg.
at 52 (footnotes omitted). The USPTO also presented this same
determination, in the October 2019 Update: Subject Matter Eligibility, 7
(Oct. 17, 2019)2 (Electric Power Group’s recitation of “‘collecting
information, analyzing it, and displaying certain results of the collection and
analysis,’ where the data analysis steps are recited at a high level of
generality such that they could practically be performed in the human mind”
describes an abstract idea in the mental process category). Indeed, the
Federal Circuit, in Electric Power Group, describes the activities of
collecting, analyzing, and displaying data, as recited in the claims before the
court, as a type of mental process:
Information as such is an intangible. Accordingly, we
have treated collecting information, including when limited to
particular content (which does not change its character as
information), as within the realm of abstract ideas. In a similar
vein, we have treated analyzing information by steps people go
through in their minds, or by mathematical algorithms, without
more, as essentially mental processes within the abstract-idea
category. And we have recognized that merely presenting the
results of abstract processes of collecting and analyzing
information, without more (such as identifying a particular tool
for presentation), is abstract as an ancillary part of such
collection and analysis.
Elec. Power Grp., 830 F.3d at 1353–54 (citations omitted).3

2 Available at https://www.uspto.gov/sites/default/files/documents/
peg_oct_2019_update.pdf.
3 Although the Federal Circuit explicitly states that it has “treated analyzing
information by steps people go through in their minds, or by mathematical
algorithms, without more, as essentially mental processes within the
abstract-idea category,” Elec. Power Grp., 830 F.3d at 1354, the Court’s
terse discussion might appear to suggest that the claimed “collecting” and
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However, the Examiner’s analysis of claim 1 in the present Appeal
(Final Action 5) does not fit well into the abstract-idea model that is
provided in Electric Power Group.
Notably, the claims at issue in Electric Power Group are remarkable
for their lack of detail — particularly as to what constitutes the claimed
“analyzing” and “displaying.” Elec. Power Grp., 830 F.3d at 1352. The
Federal Circuit points out that the Electric Power Group claims fail to recite
what type of “analy[sis]” would be performed and how this might be
accomplished, nor did the claims delineate any particular technique or
instrumentality for “displaying” the results:
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.
Id. at 1351. See also id. at 1355 (“The claims in this case do not even
require a new source or type of information, or new techniques for analyzing
it.”) (citations omitted). Additionally, our reviewing court explains:

“displaying” steps — whether individually or in combination with the
“analyzing” step — could involve something other than mental processes.
Yet, the Federal Circuit (id. at 1353–1354) relies upon case law that
describes mental-process abstract ideas, in characterizing the features of
“collecting” (citing Content Extraction & Transmission LLC v. Wells Fargo
Bank, Nat’l Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) and CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011)) and
“displaying” (i.e., “presenting the results of abstract processes”) (citing
Content Extraction, 776 F.3d at 1347). Moreover, the Federal Circuit
characterizes the aggregate of collecting/analyzing/displaying (at issue in the
claims before the court) as being among “ordinary mental processes.” Elec.
Power Grp., 830 F.3d at 1355.
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a large portion of the lengthy claims is devoted to enumerating
types of information and information sources available within
the power-grid environment. But merely selecting information,
by content or source, for collection, analysis, and display does
nothing significant to differentiate a process from ordinary
mental processes, whose implicit exclusion from § 101
undergirds the information-based category of abstract ideas.
Id. at 1355. Accordingly, the court in Electric Power Group, in describing
the shortcomings of the claims at issue in that case, repeatedly invokes the
caveat “without more,” in order to emphasize the unusually spare nature of
the claims before the court — in regard to the very features that would need
to be more fulsome, in order to avoid the pitfall of subject-matter
ineligibility. Id. at 1354 (“[W]e have treated analyzing information by steps
people go through in their minds, or by mathematical algorithms, without
more, as essentially mental processes within the abstract-idea category”;
“[W]e have recognized that merely presenting the results of abstract
processes of collecting and analyzing information, without more (such as
identifying a particular tool for presentation), is abstract as an ancillary part
of such collection and analysis”; “Most obviously, limiting the claims to the
particular technological environment of power-grid monitoring is, without
more, insufficient to transform them into patent-eligible applications of the
abstract idea at their core.”) (emphasis added).
In contrast to the claims in Electric Power Group, the portions of the
Appellant’s claims that the Examiner characterizes as corresponding to mere
“collecting,” “analyzing,” and “displaying” (see Final Action 5) involve
significant complexity — reciting, for example, in claim 1:
a primary partial simulation and to a complementary partial
simulation running in parallel, the primary partial simulation
acquiring input data from a first level of abstraction of said
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target hardware, the complementary partial simulation
acquiring input data from a second level of abstraction of said
target hardware, and the first level of abstraction and the second
level of abstraction being different from each other;
simulating execution of said processing workload using
said primary partial simulation to generate primary partial result
state data representing at least part of said result state data; and
simulating execution of said processing workload using
said complementary partial simulation to generate
complementary partial result state data representing at least part
of said result state data.
Contrary to the Examiner’s position (see Final Action 5), these steps involve
far more than the unspecified “collecting information, analyzing it, and
displaying certain results of the collection and analysis” of the claims in
Electric Power Group, 830 F.3d at 1353. Claim 1 recites, for example, two
“partial simulation[s]” “running in parallel,” with each employing “input
data” from different “level[s] of abstraction of [the] target hardware,”
thereby generating corresponding “primary partial result state data” and
“complementary partial result state data.” In equating the identified claim
language to no more than “collecting information, analyzing it, and
displaying certain results of the collection and analysis,” the Examiner
contravenes the Federal Circuit’s admonition to “‘avoid oversimplifying the
claims’ by looking at them generally and failing to account for the specific
requirements of the claims.” McRO, 837 F.3d at 1313 (citing In re TLI
Commc’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016) and
Diamond v. Diehr, 450 U.S. 175, 189 n.12 (1981)).4

4 In addition, and contrary to the Examiner’s determination, there is no
recitation in claim 1 that corresponds to the “displaying” feature in Electric
Power Group. The Examiner states that “the results of the simulations are
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More fundamentally than the dissimilarity between the claims in the
instant Appeal and those in Electric Power Group, there is inadequate
support for a determination that the identified features of the claims could
“be performed in the human mind, or by a human using a pen and paper”
(CyberSource, 654 F.3d at 1372) — the sine qua non of mental processes
judicially excepted from patent eligibility:
Methods which can be performed entirely in the human mind
are unpatentable not because there is anything wrong with
claiming mental method steps as part of a process containing
non-mental steps, but rather because computational methods
which can be performed entirely in the human mind are the
types of methods that embody the “basic tools of scientific and
technological work” that are free to all men and reserved
exclusively to none.
Id. at 1373 (quoting Gottschalk v. Benson, 409 U.S. 63, 67 (1972)) (footnote
omitted). See also In re Comiskey, 554 F.3d 967, 980 (Fed. Cir. 2009)
(“[T]he patent statute does not allow patents on particular systems that
depend for their operation on human intelligence alone, a field of endeavor
that both the framers and Congress intended to be beyond the reach of
patentable subject matter. Thus, it is established that the application of
human intelligence to the solution of practical problems is not in and of itself
patentable.”)

steps of displaying the certain results of the collection and analysis.” Final
Action 5. Although the claimed simulations are performed, so as to
“generate” “primary partial result state data representing at least part of said
result state data” and “complementary partial result state data representing at
least part of said result state data,” claim 1 the claim does not recite any
displaying activity separate from what the Examiner equates to “analyzing”
in Electric Power Group. See Final Action 5.
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The Federal Circuit’s mental-process inquiry focuses on whether
subject matter could, “as a practical matter, be performed entirely in a
human’s mind.” CyberSource, 654 F.3d at 1376. Likewise, the 2019
Revised Guidance emphasizes whether “the claim cannot practically be
performed in the mind.” 2019 Revised Guidance, 84 Fed. Reg. at 52 n.14.
The Office has endeavored to clarify the proper role of the pen-and-paper
analogy, in particular, explaining that “[t]he use of pen and paper to help
perform a mental step simply accounts for variations in memory capacity
from one person to another and should not be used to expand the scope of
the mental processes grouping.” October 2019 Update: Subject Matter
Eligibility, 20 n.58.
In order to evaluate whether particular claimed subject matter could
be performed mentally, courts have relied upon evidence and/or reasoning,
in various forms.
For example, the claim language itself might be capable of a
construction that encompasses mental performance. See SmartGene, Inc. v.
Advanced Biological Labs., SA, 555 F. App’x 950, 955 (Fed. Cir. 2014)
(nonprecedential) (“The claim does not purport . . . to identify any steps
beyond those which doctors routinely and consciously perform. Our ruling
is limited to the circumstances presented here, in which every step is a
familiar part of the conscious process that doctors can and do perform in
their heads.”) See also CyberSource, 654 F.3d at 1373 (discussing claim
language “so broadly worded that it encompasses literally any method for
detecting fraud based on the gathered transaction and Internet address data.
This necessarily includes even logical reasoning that can be performed
entirely in the human mind.”) (citation omitted).
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The Specification may reveal that claimed subject matter can be
accomplished mentally. See In re Meyer, 688 F.2d 789, 795 (CCPA 1982)
(“Appellants’ specification and arguments indicate that their invention is
concerned with replacing, in part, the thinking processes of a neurologist
with a computer.”)
Additionally, the Appellant’s arguments may disclose that claimed
subject matter can be accomplished mentally. See In re Rudy, 956 F.3d
1379, 1384 (Fed. Cir. 2020) (“Indeed, Mr. Rudy concedes in his brief that
‘all that is required of the angler is observation, measuring, and comparison
with a predetermined chart.’ As Mr. Rudy continued, ‘even a fish can
distinguish and select colors . . . the fisherman can do this too.’”) (citations
omitted); In re Meyer, 688 F.2d at 795 (“Counsel for appellants
acknowledged in oral argument that the claims recite a mathematical
algorithm, which represents a mental process that a neurologist should
follow.”) (footnote omitted).
Further, courts have relied upon evidence of actual mental
performance of the claimed subject matter. See Synopsys, Inc. v. Mentor
Graphics Corp., 839 F.3d 1138, 1148 (Fed. Cir. 2016) (“Although an
understanding of logic circuit design is certainly required to perform the
steps, the limited, straightforward nature of the steps involved in the claimed
method make evident that a skilled artisan could perform the steps mentally.
The inventors of the Gregory Patents confirmed this point when they
admitted to performing the steps mentally themselves. . . . Representative
claim 1 is directed to generating a representation of a single specific
hardware component and can be — and was — performed mentally or with
pencil and paper.”) (citation omitted); CyberSource, 654 F.3d at 1373
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(“CyberSource’s CEO admitted that, before CyberSource created a computer
implemented fraud detection system, ‘[w]e could see just by looking that
more than half of our orders were fraudulent.’”) (citation omitted).
Expert testimony may also illuminate the issue. Judge Bryson of the
Federal Circuit, presiding in a district court litigation, determined that such
expert testimony was sufficient to defeat a motion for summary judgment:
The question whether a pseudo-random number generator can
be devised that relies on an algorithm that can be performed
mentally, or readily with pencil and paper, is one such factual
question that would have to be resolved before the Court could
grant summary judgment of invalidity in this case. While the
defendants assert that the encryption and decryption process can
be performed in the human mind or with pencil and paper, TQP
has offered evidence to the contrary, in the form of an expert’s
declaration stating that a person of skill in the art would
understand that the claimed method could not be performed in
the mind but would require the use of a machine. That factual
dispute by itself is enough to foreclose the entry of summary
judgment in the defendants’ favor on the present record.
TQP Dev., LLC v. Intuit Inc., No. 2:12-cv-180-WCB, 2014 WL 651935, at
*5 (E.D. Tex. Feb. 19, 2014) (Bryson, J., sitting by designation).
By contrast, lacking evidence of mental performance, the Federal
Circuit has upheld the validity of claims challenged, as ineligible subject
matter. See SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319, 1333
(Fed. Cir. 2010) (“[T]here is no evidence here that the calculations here can
be performed entirely in the human mind.”)
Although stated in simple terms, ascertaining whether a human being
can perform a particular task mentally (including with the aid of pen and
paper) can be remain difficult to assess. See Cal. Inst. of Tech. v. Hughes
Commc’ns Inc., 59 F. Supp. 3d 974, 995 (C.D. Cal. 2014) (“The problems of
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pencil-and-paper analysis are heightened in the context of software, which
necessarily uses algorithms to achieve its goals. Pencil-and-paper analysis
can mislead courts into ignoring a key fact: although a computer performs
the same math as a human, a human cannot always achieve the same results
as a computer.”)
However, courts have provided various examples of the types of
activities, deemed judicially excepted subject matter, that can be performed
mentally — notwithstanding whether such activities might also be
characterized as another type of abstract idea.
The act of comparing one thing to another, including the comparison
of an observed item to a predetermined standard, has been regarded as a
mental process. See In re Rudy, 956 F.3d at 1384 (comparing measured or
observed features, of a body of water, to descriptions in a chart provided in
the claim, for identifying a corresponding fish hook color, constituted a
mental process); In re BRCA1- and BRCA2-Based Hereditary Cancer Test
Patent Litig., 774 F.3d 755, 763 (Fed. Cir. 2014) (comparing one sequence
of nucleotides to another and identifying differences between them, regarded
as a mental process) (citation omitted); PerkinElmer, Inc. v. Intema Ltd., 496
F. App’x 65, 70 (Fed. Cir. 2012) (nonprecedential) (“The claims . . . recite
the mental process of comparing data to determine a risk level: data are
gathered in the first trimester of pregnancy; data are gathered in the second
trimester of pregnancy; those data are compared to known statistical
information.”)
Creating and using classifications (i.e., for organization or retrieval)
has been regarded as an abstract idea. See Intellectual Ventures I LLC v.
Erie Indemnity Co., 850 F.3d 1315, 1327 (Fed. Cir. 2017) (“[T]he invention
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is drawn to the abstract idea of ‘creating an index and using that index to
search for and retrieve data.’”) (citation omitted); In re TLI Commc’ns, 823
F.3d at 611–12 (“[R]epresentative claim 17 is drawn to the concept of
classifying an image and storing the image based on its classification.”)
The process of “encoding and decoding” has also been treated as “an
abstract concept long utilized to transmit information.” 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.”) (citations omitted).
Additionally, some mathematical calculations may be amenable to
such mental performance. See Parker v. Flook, 437 U.S. 584, 595 (1978)
(“[I]f a claim is directed essentially to a method of calculating, using a
mathematical formula, even if the solution is for a specific purpose, the
claimed method is nonstatutory.”) (citing In re Richman, 563 F.2d 1026,
1030 (CCPA 1977)); Benson, 409 U.S. at 67 (“The conversion of [binary
coded decimal] numerals to pure binary numerals can be done mentally.”);
Coffelt v. NVIDIA Corp., 680 F. App’x 1010, 1011 (Fed. Cir. 2017)
(nonprecedential) (“‘[C]alculating a . . . steradian region of space,’ as
recited in claim 1, is a purely arithmetic exercise. The claims thus recite
nothing more than a mathematical algorithm that could be implemented
using a pen and paper.”) (citation omitted).
Even claims explicitly reciting the use of a computer may,
nevertheless, include an abstract concept that can be performed mentally.
See Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d. 1314,
1324 (Fed. Cir. 2016) (holding that a computer-implemented method for
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“anonymous loan shopping” was an abstract idea, because the claimed steps
of applying for a loan, calculating credit grading, and providing pricing
information “could all be performed by humans without a computer”)
(citations omitted); Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306,
1335 (Fed. Cir. 2015) (“Courts have examined claims that required the use
of a computer and still found that the underlying, patent-ineligible invention
could be performed via pen and paper or in a person’s mind.”) (citations
omitted).
With regard to the present Appeal, the Appellant argues that the
limitations of claim 1, which the Examiner identifies as describing an
abstract idea, cannot be performed mentally. Appeal Br. 14–15.
Specifically, according to the Appellant, “a human being cannot run a
primary partial simulation and a complementary partial simulation in parallel
to simulate execution of a processing workload by a target hardware
device.” Id.
Although the Appellant’s assertion is presented in the form of attorney
argument, the Examiner does not show that those claim limitations, which
are said to identify an abstract idea (see, e.g., Final Action 4–5), describe a
mental process. The Examiner neither contradicts nor rebuts the Appellant’s
position (see Appeal Br. 14–15) that running a “primary partial simulation”
and a “complementary partial simulation” “in parallel” (i.e., simultaneously,
as explained above), as per claim 1, is beyond human mental capacity
(without the aid of the claimed computer functionality, as the claims are
construed herein). Instead, the Examiner counters that these limitations are
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not described, in the Specification, as reducing an engineering burden.
Answer5 23 (citing Spec. 4, ll. 1–12).
The Examiner’s position, here, might be related to whether or not
these claimed features effect a technological improvement, which may be
considered under Step 2A, Prong Two, of the analytical approach presented
in the 2019 Revised Guidance. Yet, the Examiner does not address (in the
Answer or elsewhere) the more basic question of whether the claimed
features at issue could be practiced mentally, such that they may be
characterized as an abstract idea in the form of a mental process — an
inquiry corresponding to Step 2A, Prong One, of the 2019 Revised
Guidance. Therefore, the Examiner does not adequately explain why the
identified features of independent claim 1 would recite an abstract idea.
Furthermore, neither the language of claim 1, nor the Specification,
indicates that a human (even with the aid of pen and paper) might be able to
perform both “a primary partial simulation” and a “complementary partial
simulation,” based upon respective “input data” (which are “different from
each other”), “in parallel.” Even if conducting the recited individual
“simulation[s]” were treated as activities that could be performed in the
human mind, the claimed requirement that they be performed “in parallel”
(i.e., simultaneously) differs fundamentally from the types of behaviors
(such as those discussed above) that have been regarded as human mental
processes. Consequently, contrary to the rejection in this Appeal,
independent claim 1 does not recite an abstract idea in the form of a mental
process, according to Step 2A, Prong One, of the 2019 Revised Guidance.

5 We refer to the Examiner’s Answer dated November 29, 2018. (An earlier
version of this paper is dated November 15, 2018.)
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Although not raised by the Examiner, claim 1 does not recite subject
matter belonging to other categories of abstract ideas identified in the 2019
Revised Guidance. Claim 1 does not recite an abstract idea belonging to the
category of “[m]athematical concepts,” because the claim does not recite
“mathematical relationships, mathematical formulas or equations, [or]
mathematical calculations.” 2019 Revised Guidance, 84 Fed. Reg. at 52.
Nor does claim 1 recite subject matter corresponding to any of the ineligible
“[c]ertain methods of organizing human activity.” Id. (referring to
“fundamental economic principles or practices,” “commercial or legal
interactions,” and “managing personal behavior or relationships or
interactions between people”).
The foregoing analysis applies equally to the other independent claims
(claims 22 and 23), which recite essentially similar limitations to those of
claim 1 discussed herein. Therefore, without any need to address the other
steps in the 2019 Revised Guidance, we do not sustain the rejection of
claims 1–23 under 35 U.S.C. § 101.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–23 101 Eligibility 1–23

REVERSED