Dell Products L.P.

Patent Trials and Appeals Board

Jun 23, 2020

2019006908 (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.
14/525,900 10/28/2014 Dinesh Kunnathur Ragupathi DC-103745.01 9850
160816 7590 06/23/2020
Terrile, Cannatti & Chambers, LLP - Dell
P.O. Box 203518
Austin, TX 78720
EXAMINER
BUCHANAN, CHRISTOPHER R
ART UNIT PAPER NUMBER
3627
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):
USPTO@dockettrak.com
tmunoz@tcciplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DINESH KUNNATHUR RAGUPATHI and
AKKIAH CHOUDARY MADDUKURI
_____________

Appeal 2019-006908
Application 14/525,900
Technology Center 3600
____________

Before ST. JOHN COURTENAY III, ERIC S. FRAHM, and
JOHNNY A. KUMAR, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a Final rejection of
claims 1–21. We have jurisdiction over the pending claims under 35 U.S.C.
§ 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). According to Appellant, the real party in interest is Dell
Products L.P. See Appeal Br. 1.

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STATEMENT OF THE CASE 2
Introduction
Appellant’s claimed invention relates generally to identifying “excess
equipment inventory within a particular information handling system located
within an enterprise environment.” (Spec. ¶ 4).

Evidence
The prior art relied upon by the Examiner as evidence is:
Name Reference Date
Ferreri et al.
(“Ferreri”)
US 2006/0259376 A1 Nov. 16, 2006

Rejections
Rej Claims
Rejected
35 U.S.C. § Reference(s)/Basis
A 1–21 101 Eligibility
B 1–21 103 Ferreri, Official Notice

2 We herein refer to the Final Office Action, mailed Oct. 10, 2018 (“Final
Act.”); Appeal Brief, filed Mar. 11, 2019 (“Appeal Br.”); the Examiner’s
Answer, mailed July 26, 2019 (“Ans.”), and the Reply Brief, filed Sept. 25,
2019 (“Reply Br.”).
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Rejection A of Claims 1–21 under § 101
USPTO § 101 Guidance
The U.S. Patent and Trademark Office (USPTO) has published
revised guidance on the application of 35 U.S.C. § 101. See USPTO
January 7, 2019 Memorandum, 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50 (“2019 Memorandum”).3 Under that
guidance, we first look to whether the claim recites:
(1) (see 2019 Memorandum Step 2A – Prong One) 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); and
(2) (see 2019 Memorandum Step 2A – Prong Two) additional
elements that integrate the judicial exception into a practical
application (see MPEP § 2106.05(a)–(c), (e)–(h)).4
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:

3 The Office issued a further memorandum on October 17, 2019 (the
“October 2019 Memorandum”) clarifying guidance of the January 2019
Memorandum in response to received public comments. See https://
www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.pdf.
Moreover, “[a]ll USPTO personnel are, as a matter of internal agency
management, expected to follow the guidance.” 2019 Memorandum at 51;
see also October 2019 Memorandum at 1.

4 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See 2019 Memorandum — Section III(A)(2).
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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.
See 2019 Memorandum Step 2B.
Because there is no single definition of an “abstract idea” under Alice
Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014) Step 1, the 2019
Memorandum synthesizes, for purposes of clarity, predictability, and
consistency, key concepts identified by the courts as abstract ideas to explain
that the “abstract idea” exception includes the following three groupings:
1. Mathematical concepts—mathematical relationships,
mathematical formulas or equations, mathematical
calculations;
2. Mental processes—concepts performed in the human mind
(including an observation, evaluation, judgment, opinion);
and
3. Certain methods of organizing human activity—fundamental
economic principles or practices (including hedging,
insurance, mitigating risk); commercial or legal interactions
(including agreements in the form of contracts; legal
obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior
or relationships or interactions between people (including
social activities, teaching, and following rules or
instructions).
See 2019 Memorandum, 84 Fed. Reg. at 52.
According to the 2019 Memorandum, “[c]laims that do not recite
[subject] matter that falls within these enumerated groupings of abstract
ideas should not be treated as reciting abstract ideas,” except in rare
circumstances. Even if the claims recite any one of these three groupings of
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abstract ideas, these claims are still not “directed to” a judicial exception
(abstract idea), and thus are patent eligible, if “the claim as a whole
integrates the recited judicial exception into a practical application of that
exception.” See 2019 Memorandum, 84 Fed. Reg. at 53.
For example, limitations that are indicative of integration into a
practical application include:
1. Improvements to the functioning of a computer, or to any
other technology or technical field — see MPEP
§ 2106.05(a);
2. Applying the judicial exception with, or by use of, a
particular machine — see MPEP § 2106.05(b);
3. Effecting a transformation or reduction of a particular article
to a different state or thing — see MPEP § 2106.05(c); and
4. Applying or using the judicial exception in some other
meaningful way beyond generally linking the use of the
judicial exception to a particular technological environment,
such that the claim as a whole is more than a drafting effort
designed to monopolize the exception — see MPEP
§ 2106.05(e).
In contrast, limitations that are not indicative of integration into a
practical application include:
1. Adding the words “apply it” (or an equivalent) with the
judicial exception, or merely including instructions to
implement an abstract idea on a computer, or merely uses a
computer as a tool to perform an abstract idea — see MPEP
§ 2106.05(f);
2. Adding insignificant extra-solution activity to the judicial
exception — see MPEP § 2106.05(g); and
3. Generally linking the use of the judicial exception to a
particular technological environment or field of use — see
MPEP § 2106.05(h).
See 2019 Memorandum, 84 Fed. Reg. at 54–55 (“Prong Two”).
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ANALYSIS
2019 Memorandum, Step 2A, Prong One
The Judicial Exception
We reproduce infra independent claim 1 in Table One. We have
considered all of Appellant’s arguments and any evidence presented. We
highlight and address specific findings and arguments for emphasis in our
analysis below.5
Rejection A of Claims 1–21 under § 101
The Examiner concludes independent claims 1, 7, and 13 recite an
abstract idea that “is considered to be a fundamental economic practice or an
idea of itself.” Final Act. 3. Under the 2019 Memorandum, we begin our
analysis by first considering whether the claims recite any judicial
exceptions, including certain groupings of abstract ideas, in particular: (a)
mathematical concepts, (b) mental steps, and (c) certain methods of
organizing human activities.
Appellant contends:
It is respectfully submitted that the claims do not recite
matter that falls within one of the enumerated groupings of
abstract ideas set forth in the Revised Patent Subject Matter
Eligibility Guidance effective January 7, 2019. Specifically, the
claims do not per se recite mathematical concepts, methods of
organizing human activity or mental processes . . .
Accordingly, the claims should not be treated as reciting
an abstract idea and are patent eligible.

5 Throughout this opinion, we give the claim limitations the broadest
reasonable interpretation (BRI) consistent with the Specification. See In re
Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).

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Appeal Br. 3–4.
Independent Claim 1
In Table One below, we identify in italics the specific claim
limitations that we conclude recite an abstract idea. We also identify in bold
the additional (non-abstract) claim elements that we find are generic
computer components:
TABLE ONE 6

Independent Claim 1 2019 Memorandum
[a]A computer-implemented
method for identifying excess
equipment inventory within
an enterprise environment,
the enterprise environment
comprising a monolithic
server type information
handling system and a
modular server type
information handling
system,
comprising: 7

[b] analyzing components
within at least one of the
monolithic server type
Abstract Idea: analyzing
components within at least one of the
monolithic server type information

6 We apply the Director’s 2019 Memorandum de novo.

7 A method falls under the statutory subject matter class of a process. See
35 U.S.C. § 101 (“Whoever invents or discovers any new and useful
process, machine, manufacture, or composition of matter, or any new and
useful improvement thereof, may obtain a patent therefor, subject to the
conditions and requirements of this title.”).

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Independent Claim 1 2019 Memorandum
information handling
system, the components of
the monolithic server type
information handling
system comprising a first fan
and a power supply unit,
and the modular server type
information handling
system, the components of
the modular server type
information handling
system comprising a first
fan and a power supply
unit, the at least one of the
monolithic server type
information handling
system and the module
server type information
handling system being
contained in the enterprise
environment to perform an
excess equipment
identification, the
components comprising at
least one of a second fan
and a redundant power
supply unit, the excess
equipment identification
determining whether any of
the components comprise
excess equipment, the
components comprising
excess equipment
corresponding to at least
one of the second fan and
the redundant power
supply unit;
handling system, the components of
the monolithic server type
information handling system . . . to
perform an excess equipment
identification can be performed
alternatively by a person as a mental
process. See 2019 Memorandum, 84
Fed. Reg. at 52.

Abstract Idea: identifying excess
equipment can be performed
alternatively by a person as a mental
process. See 2019 Memorandum, 84
Fed. Reg. at 52.

Abstract Idea: determining whether
any of the components comprise
excess equipment can be performed
alternatively by a person as a mental
process. See 2019 Memorandum, 84
Fed. Reg. at 52.

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Independent Claim 1 2019 Memorandum
[c] storing information
regarding whether any of the
components are excess
equipment within an excess
equipment inventory record;
Storing information regarding
whether any of the components are
excess equipment within an excess
equipment inventory record is
insignificant extra-solution activity
(i.e., data gathering). See 2019
Memorandum, 84 Fed. Reg. at 55
n.31; see also MPEP § 2106.05(g).

[d] informing a user of
identified excess equipment
via the excess equipment
inventory record, the
informing comprising
presenting the excess
equipment inventory record
via an excess equipment
inventor report screen
presentation.
Informing a user of identified excess
equipment via the excess equipment
inventory record is insignificant
post-solution activity. See 2019
Memorandum, 84 Fed. Reg. at 55
n.31; see also MPEP § 2106.05(g).

Abstract Idea
As identified above in Table One, we conclude step “b” of claim 1
recites the sub-steps of analyzing, identifying, and determining that can be
performed alternatively as a mental process: “analyzing components within
at least one of the monolithic server type information handling system . . . to
perform an excess equipment identification . . . [and] determining whether
any of the components comprise excess equipment.” Claim 1 (emphasis
added).
If a method can be performed by human thought alone, or by a human
using pen and paper, it is merely an abstract idea and is not patent eligible
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under § 101. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d
1366, 1372–73 (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.” CyberSource, 654
F.3d at 1375. See also Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d
1138, 1146–47 (Fed. Cir. 2016). Moreover, “[u]sing a computer to
accelerate an ineligible mental process does not make that process patent-
eligible.” Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can. (U.S.),
687 F.3d 1266, 1279 (Fed. Cir. 2012); see also OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (“[R]elying on a
computer to perform routine tasks more quickly or more accurately is
insufficient to render a claim patent eligible.”).
Because claim 1 considered as a whole recites an abstract idea, as
identified in Table One, supra, and because remaining independent claims 7
and 13 recite similar language of commensurate scope, we conclude all
claims 1–21 recite an abstract idea, as identified above, under Step 2A,
Prong One. Therefore, we proceed to Step 2A, Prong Two.

2019 Memorandum, Step 2A, Prong Two
Integration of the Judicial Exception into a Practical Application
Pursuant to the 2019 Memorandum, we consider whether there are
additional elements set forth in the claims that integrate the judicial
exception into a practical application. See 2019 Memorandum, 84 Fed. Reg.
at 54–55.
The Examiner finds the additional elements:
do not provide meaningful limitation(s) to transform the abstract
idea into a patent eligible application of the abstract idea such
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that the claim(s) amounts to significantly more than the abstract
idea itself. The additional limitations do not constitute
improvements to another technology, another technical field, or
to the computer itself and are not considered to be meaningful
limitations beyond generally linking the use of the abstract idea
to a particular technological environment.
Final Act. 3–4.
Additional Generic Computer Limitations
As emphasized in bold in Table One, supra, we note the additional
generic computer components recited in claim 1, for example:
[a] A computer-implemented method for identifying excess
equipment inventory within an enterprise environment, the
enterprise environment comprising a monolithic server type
information handling system and a modular server type
information handling system, comprising:
[b] analyzing components within at least one of the monolithic
server type information handling system, the components of the
monolithic server type information handling system comprising
a first fan and a power supply unit, and the modular server type
information handling system, the components of the modular
server type information handling system comprising a first fan
and a power supply unit, the at least one of the monolithic
server type information handling system and the module server
type information handling system being contained in the
enterprise environment to perform an excess equipment
identification, the components comprising at least one of a
second fan and a redundant power supply unit, the excess
equipment identification determining whether any of the
components comprise excess equipment, the components
comprising excess equipment corresponding to at least one of
the second fan and the redundant power supply unit;

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We further note the supporting exemplary, non-limiting descriptions
of generic computer components in the Specification, for example, at
paragraph 26:
Referring to Figure 4, an example of a server type information
handling system 400 on which the excess equipment inventory
system performs an analysis is shown. This example
server type information handling system is one example of an
information handling system 100 and is also an example of a
chassis server which is included within the example enterprise
environment 200. The example server type information handling
system 400 may be configured with an extra fan 410. This fan
410 is included within to server type information handling
system 400 when a redundant power supply 420 is included
whether or not a second processor module is included within the
server type information handing system 400.
Spec. ¶ 26 (emphasis added).
We emphasize that McRO, Inc. v. Bandai Namco Games America
Inc., 837 F.3d 1299 (Fed. Cir. 2016), guides: “The abstract idea exception
prevents patenting a result where ‘it matters not by what process or
machinery the result is accomplished.’” 837 F.3d at 1312 (quoting O’Reilly
v. Morse, 56 U.S. 62, 113 (1854)) (emphasis added). See supra, Table One.
MPEP § 2106.05(a)
Improvements to the Functioning of a Computer or
to Any Other Technology or Technical Field

Appellant contends “the claims are directed to a practical application.
More specifically, the claims are generally directed to the practical
application of identifying excess equipment inventory within an enterprise
environment. Accordingly, the claims should not be treated as reciting an
abstract idea and are patent eligible.” Appeal Br. 4 (emphasis added).
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To the extent Appellant urges that “the claims are directed to a
practical application” because “the claims are generally directed to the
practical application of identifying excess equipment inventory within an
enterprise environment” (Appeal Br. 4), Appellant has not specifically and
substantively addressed how specific claim limitations are indicative of
integration into a practical application under the 2019 Memorandum by
addressing the following sections of the MPEP:
1. Improvements to the functioning of a computer, or to any
other technology or technical field — see MPEP
§ 2106.05(a);
2. Applying the judicial exception with, or by use of, a
particular machine — see MPEP § 2106.05(b);
3. Effecting a transformation or reduction of a particular article
to a different state or thing — see MPEP § 2106.05(c); and
4. Applying or using the judicial exception in some other
meaningful way beyond generally linking the use of the
judicial exception to a particular technological environment,
such that the claim as a whole is more than a drafting effort
designed to monopolize the exception — see MPEP
§ 2106.05(e).

Regarding independent claims 1, 7, and 13, our reviewing court
guides that the “‘mere automation of manual processes using generic
computers’ . . . ‘does not constitute a patentable improvement in computer
technology.’” Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1378, 1384
(Fed. Cir. 2019) (quoting Credit Acceptance Corp. v. Westlake Servs., 859
F.3d 1044, 1055 (Fed. Cir. 2017)). Simply adding generic hardware and
computer components to perform abstract ideas does not integrate those
ideas into a practical application, because the “mere recitation of a generic
computer cannot transform a patent-ineligible abstract idea into a patent-
eligible invention.” Alice, 573 U.S. at 223; see 2019 Memorandum, 84 Fed.
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Reg. at 55 n.30. See also 2019 Memorandum, 84 Fed. Reg. at 55 (“merely
includ[ing] instructions to implement an abstract idea on a computer” is an
example of when an abstract idea has not been integrated into a practical
application).
We emphasize that an improved abstract idea is still an abstract
idea. See Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66,
90 (2012) (holding that a novel and nonobvious claim directed to a purely
abstract idea is, nonetheless, patent ineligible). See also Synopsys, 839 F.3d
at 1151 (“[A] claim for a new abstract idea is still an abstract idea.”
(Emphasis omitted)).
As set forth in MPEP § 2106.05(a):
To show that the involvement of a computer assists in improving
the technology, the claims must recite the details regarding how
a computer aids the method, the extent to which the computer
aids the method, or the significance of a computer to the
performance of the method . . . . Merely adding generic computer
components to perform the method is not sufficient. Thus, the
claim must include more than mere instructions to perform the
method on a generic component or machinery to qualify as an
improvement to an existing technology.
(Emphasis added).
Here, we find Appellant has not persuasively shown how the claims
“recite the details regarding how a computer aids the method, the extent to
which the computer aids the method, or the significance of a computer to the
performance of the method.” Id. (emphasis added).
Accordingly, on this record, we conclude independent claim 1, and
independent claims 7 and 13, which recite similar limitations of
commensurate scope, do not recite an improvement to the functionality of a
computer or other technology or technical field. See MPEP § 2106.05(a).
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MPEP § 2106.05(b), 2106.05(c)
Appellant advances no arguments that any of the method claims on
appeal are tied to a particular machine, or transform an article to a different
state or thing. See MPEP § 2106.05(c).

MPEP § 2106.05(e) Meaningful Claim Limitations
Appellant advances no arguments that the claims on appeal recite
certain “meaningful” claim limitations, such as those of the types addressed
under MPEP § 2106.05(e), that impose meaningful limits on the judicial
exception.8
MPEP § 2106.05(f)
Merely including instructions to implement
an abstract idea on a computer, or
merely using a computer as a tool
to perform an abstract idea
We conclude Appellant’s claimed invention merely implements the
abstract idea using instructions executed on generic computer components,
as depicted in bold type in Table One (above), and as supported in
Appellant’s Specification, for example, at paragraph 26, as discussed above.
Therefore, we conclude Appellant’s claims merely use a generic
programmed computer as a tool to perform an abstract idea.

8 See 2019 Memorandum, 84 Fed. Reg. at 55, citing MPEP § 2106.05(e):
“[A]ppl[ying] or us[ing] the judicial exception in some other meaningful
way beyond generally linking the use of the judicial exception to a particular
technological environment, such that the claim as a whole is more than a
drafting effort designed to monopolize the exception.” (Emphasis added).
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MPEP § 2106.05(g)
Adding insignificant extra-solution activity
to the judicial exception
As mapped in the right column of Table One, supra, we conclude that
independent claim 1 recites extra or post-solution activities that courts have
determined to be insufficient to transform judicially excepted subject matter
into a patent-eligible application. See MPEP § 2106.05(g); 2019
Memorandum, 84 Fed. Reg. at 55 n.31.
For example, see Claim 1, Table One, supra, step c (“storing
information regarding whether any of the components are excess equipment
within an excess equipment inventory record”), and step d (“informing a
user of identified excess equipment via the excess equipment inventory
record, the informing comprising presenting the excess equipment inventory
record via an excess equipment inventor report screen presentation”), which
we conclude are recitations of insignificant extra and post-solution activity,
respectively. See 2019 Memorandum, 84 Fed. Reg. at 55 n.31; see also
MPEP § 2106.05(g). See buySAFE, Inc. v. Google, Inc., 765 F.3d 1350,
1355 (Fed. Cir. 2014) (“That a computer receives and sends the information
over a network—with no further specification—is not even arguably
inventive.”). These extra or post-solution limitations use a generic computer
component that performs a generic computer function as a tool to perform an
abstract idea. Thus, these limitations do not integrate the abstract idea into a
practical application. See Alice, 573 U.S. at 223–24. Instead, these
limitations merely perform insignificant extra-solution activities. Cf. Apple,
Inc. v. Ameranth, Inc., 842 F.3d 1229, 1242 (Fed. Cir. 2016) (agreeing with
the Board that printing and downloading generated menus are insignificant
post-solution activities). See also Two-Way Media Ltd. v. Comcast Cable
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Commc’ns, LLC, 874 F.3d 1329, 1341 (Fed. Cir. 2017) (Streaming
audio/visual data over a communications system like the Internet held patent
ineligible.).

MPEP § 2106.05(h)
Generally linking the use of the judicial exception to a particular
technological environment or field of use

The Supreme Court guides: “[T]he prohibition against patenting
abstract ideas ‘cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment’ or [by] adding
‘insignificant postsolution activity.’” Bilski v. Kappos, 561 U.S. 593, 610–
12 (2010) (quoting Diamond v. Diehr, 450 U.S. 175, 191–92 (1981)).
We note Appellant advances no arguments regarding a lack of
preemption in the Appeal Brief.
Nor do claims 1–21 on appeal present any other issues as set forth in
the 2019 Memorandum regarding a determination of whether the additional
generic computer elements integrate the judicial exception into a practical
application. See 2019 Memorandum, 84 Fed. Reg. at 55.
Thus, under Step 2A, Prong Two (MPEP § 2106.05(a)–(c) and (e)–
(h)), we conclude claims 1–21 do not integrate the judicial exception into a
practical application. Therefore, we proceed to Step 2B, The Inventive
Concept.
The Inventive Concept – Step 2B
Under the 2019 Memorandum, 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 adds a specific limitation
beyond the judicial exception that is not “well-understood, routine,
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conventional” in the field (see MPEP § 2106.05(d)); or, simply appends
well-understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception.

Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018)
Berkheimer was decided by the Federal Circuit on February 8, 2018.
On April 19, 2018, the PTO issued the Memorandum titled: “Changes in
Examination Procedure Pertaining to Subject Matter Eligibility, Recent
Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.)” (hereinafter
“Berkheimer Memorandum”).9 The Berkheimer Memorandum provided
specific requirements for an Examiner to support with evidence any finding
that claim elements (or a combination of elements) are well-understood,
routine, or conventional.
The Examiner finds, under Step 2B of the 2019 Memorandum:
Regarding independent claims 1, 7, and [13], the additional
element(s) or combination of elements in the claim(s) other
than the abstract idea per se (i.e., creating an inventory record
and presenting the inventory record on a report screen) amount(s)
to no more than: mere instructions to implement the idea on a
computer functioning in a standard mode of operation or
matters that are routine and conventional in the field. The
[E]xaminer gives official notice that it is conventional and well-
known to create inventory records and present them on a
screen.
Final Act. 3 (emphasis added).

9 Available at https://www.uspto.gov/sites/default/files/documents/memo-
berkheimer-20180419.PDF.
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Appellant responds:
Applicants have not disputed the contention that it is well
known to include a fan and a power supply within an information
handling system. Rather, it is the position of the Applicants
that it is not well known that an excess equipment identification
operation determines whether any of the components comprise
excess equipment, the components comprising excess equipment
corresponding to at least one of a second fan and a redundant
power supply unit.
Reply Br. 3.
Thus, Appellant traverses the Examiner’s taking of Official Notice
under section 101 (Final Act. 3), by asserting that “it is not well known that
an excess equipment identification operation determines whether any of the
components comprise excess equipment, the components comprising excess
equipment corresponding to at least one of a second fan and a redundant
power supply unit.” Reply Br. 3. Appellant urges: “It is believed that this
argument, which was presented in response to the office notice, presents a
proper challenge to the official notice as it presents a reasoned statement
explaining how the office notice is in error.” Reply Br. 4.
Even though the Reply Brief was filed more than 18 months after the
Federal Circuit decision in Berkheimer, Appellant does not invoke
Berkheimer in the Appeal Brief, or in the Reply Brief. Nor does Appellant
make a seasonable challenge to the Examiner in the form of a demand for
objective evidence to support the taking of Official Notice. Arguments not
made are waived. See 37 C.F.R. § 41.37(c)(1)(iv).
Moreover, any analysis based upon obviousness is not relevant to our
analysis for patent eligibility under 35 U.S.C. § 101. See Return Mail, Inc.
v. U.S. Postal Service, 868 F.3d 1350, 1370 (Fed. Cir. 2017).
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“Groundbreaking, innovative, or even brilliant discovery does not by itself
satisfy the § 101 inquiry.” Ass’n for Molecular Pathology v. Myriad
Genetics, Inc., 569 U.S. 576, 591 (2013); see also Diamond v. Diehr, 450
U.S. 175, 188–89 (1981) (“The ‘novelty’ of any element or steps in a
process, or even of the process itself, is of no relevance in determining
whether the subject matter of a claim falls within the § 101 categories of
possibly patentable subject matter.”); Affinity Labs of Texas, LLC v.
DIRECTV, LLC, 838 F.3d 1253, 1263 n.3 (Fed. Cir. 2016) (noting that an
eligibility finding does not turn on the novelty of using a user-downloadable
application for the particular purpose recited in the claims).
In light of the foregoing, and under the 2019 Memorandum, we
conclude that each of Appellant’s claims 1–21, considered as a whole, is
directed to a patent-ineligible abstract idea that is not integrated into a
practical application, and does not include an inventive concept. Therefore,
we sustain the Examiner’s Rejection A under 35 U.S.C. § 101 of claims
1–21.10

10 Regarding Rejection A under 35 U.S.C. § 101, grouped claims 2–21 (not
argued separately) fall with representative independent claim 1. See
37 C.F.R. § 41.37(c)(1)(iv).

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Rejection B of Claims 1–21 under § 103
Claim Grouping under Rejection B
Appellant argues that the Examiner’s Rejection B of independent
claims 1, 7, and 13 under 35 U.S.C. § 103 as being obvious over the
combination of Ferreri and Official Notice is in error. See Appeal Br. 4–5;
Reply Br. 3–4. Regarding Rejection B, and based upon Appellant’s
arguments, and our procedural rule, we group claims 2–21 with
representative independent claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).

Issues: Under 35 U.S.C. § 103, we focus our analysis on the
following issues raised by Appellant regarding Rejection B of independent
claim 1, and dependent claim 3:
1. Did the Examiner err by finding that Ferreri and Official Notice
collectively teach or suggest the disputed limitation L1:

[L1] analyzing components within at least one of the monolithic
server type information handling system, … and the modular
server type information handling system, … the at least one of
the monolithic server type information handling system and the
module server type information handling system being contained
in the enterprise environment to perform an excess equipment
identification,
within the meaning of representative independent claim 1?11 (Emphasis
added). See Final Act. 4–6.

11 We give the contested claim limitations the broadest reasonable
interpretation consistent with the Specification. See Morris, 127 F.3d at
1054.

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2. Did the Examiner err by relying upon “common knowledge” or
“well known” principles or “Official Notice” or other information within the
Examiner’s personal knowledge to support the rejection? See Appeal Br. 4–
5.
3. Did the Examiner err by finding that Ferreri and Official Notice
collectively teach or suggest the disputed limitation L2:
[L2] the excess equipment inventory identification uses key
configuration factors to determine whether a component
comprises excess equipment, the key configuration factors
comprising at least one of cable detection and link status,
within the meaning of dependent claim 3?12 (Emphasis added). See Final
Act. 6.
1. Do Ferreri and Official Notice collectively teach or suggest
limitation L1 as recited in independent claim 1?
Appellant disputes that limitation L1 is taught or suggested by Ferreri.
In support, Appellant contends:
[T]he inventory balancing process of Ferreri focuses on
information handling systems contained within a manufacturing
environment and balancing inventory within the manufacturing
environment. Nowhere within Ferrer is there any disclosure or
suggestion of excess equipment as disclosed and claimed, much
less analyzing components within the monolithic server type
information handling system and the modular server type
information handling system contained in an enterprise
environment to perform an excess equipment identification.
Appeal Br. 4 (emphasis added).

12 See Morris, 127 F.3d at 1054.
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We note the Examiner relies upon Ferreri to teach or suggest:
analyzing components within at least one … information
handling system … contained in the enterprise environment to
perform an excess equipment identification,
as recited in independent claim 1 (see Final Act. 4–5).
The Examiner took Official Notice that:
both monolithic and modular information handling systems
and various equipment components, such as fans and power
supplies, are well-known in the field.

Final Act. 5 (emphasis added).

Claim Construction
As an initial matter of claim construction, we turn to the Specification
for context, and find no explicit definition for the recited claim 1 term
“information handling system.” Instead, we find only descriptions of non-
limiting, exemplary embodiments, e.g., describing that an information
handling system can include “a processor (e.g., central processor unit or
‘CPU’) 102, input/output (I/O) devices 104, such as a display, a keyboard, a
mouse, and associated controllers, memory 106, and various other
subsystems 108.” Spec. ¶ 16. See also Spec. ¶ 26, as discussed above under
our analysis of Rejection A. Accordingly, under BRI, we interpret the claim
term “information handling system” to mean a general-purpose computer or
computing environment.
Turning to the portions of Ferreri relied upon by the Examiner,
paragraph 25 describes:
The inventory balancing application 112 calculates excess
inventory where supply exceeds forecasted demand over a
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variable time horizon. The time horizon may be specified by a
user.
(Emphasis added) (see Final Act. 5 and Ferreri Fig. 2, showing step 202 of
“determine excess inventory”).
Additionally, the Examiner points to Figure 4 of Ferreri to show
excess inventory “comprise[s] various computer system components,” such
as a “hard drive, disk drive, [and] memory unit.” Final Act. 5 (emphasis
added).
Based upon our review of the record, we find Ferreri’s description of
determining excess inventory in which the excess inventory includes
components such as hard drives, disk drives, and memory units teaches or
suggests “analyzing components within at least one … information handling
system . . . contained in the enterprise environment to perform an excess
equipment identification.” Claim 1.
Considering Ferreri in combination with the Examiner’s officially-
noticed fact that both monolithic and modular information handling systems
and fans and power supplies were well-known in the art, we find the cited
combination of Ferreri and Official Notice teaches or suggests the disputed
limitation “L1” within the meaning of independent claim 1.
Accordingly, we are not persuaded that the Examiner erred by finding
that Ferreri and Official Notice collectively teach or suggest the disputed
limitation L1.
2. Did the Examiner err by relying upon “Official Notice” or other
information within the Examiner’s personal knowledge?
Appellant disputes Examiner’s reliance on Official Notice for the fact
that “both monolithic and modular information handling systems and
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various equipment components, such as fans and power supplies, are well-
known in the field.” See Final Act. 5 (emphasis added).
In so doing, Appellant contends:
[W]hether or not it is well known to include a fan and a power
supply within an information handling system, it is not well
known that an excess equipment identification determines
whether any of the components comprise excess equipment, the
components comprising excess equipment corresponding to at
least one of a second fan and a redundant power supply unit.
Appeal Br. 5 (emphasis added).
In the Reply Brief, Appellant restates “it is not well known that an
excess equipment identification operation determines whether any of the
components comprise excess equipment . . . corresponding to at least one of
a second fan and a redundant power supply unit.” Reply Br. 3 (emphasis
original).
To traverse the Examiner’s taking of Official Notice, Appellant “must
specifically point out the supposed errors in the examiner’s action, which
would include stating why the noticed fact is not considered to be common
knowledge or well-known in the art.” See MPEP § 2144.03 (emphasis
added). An adequate rebuttal of the Examiner’s taking of Official Notice
must contain sufficient information or argument to create on its face a
reasonable doubt regarding the circumstances justifying the Examiner’s
notice of what is well known to one of ordinary skill in the art. In re Boon,
439 F.2d 724, 728 (CCPA 1971).
Here, in our review of the record, we find the Examiner relies upon
Official Notice only for the fact that monolithic and modular information
handling systems and various equipment components, such as fans and
power supplies, are well-known in the field.
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In traversing the Examiner’s taking of Official Notice, Appellant does
not offer any explanation of why monolithic and modular information
handling systems and various common computer components, such as fans
and power supplies, are not considered to be common knowledge or well-
known in the art.
Accordingly, we do not find Appellant’s arguments to be sufficient to
adequately rebut the Examiner’s taking of Official Notice. See MPEP
§ 2144.03.

3. Do Ferreri and Official Notice collectively teach or suggest
limitation L2, as recited in dependent claim 3?
Regarding dependent claim 3, Appellant disputes that limitation L2 is
taught or suggested by Ferreri by arguing that:
[N]owhere within Ferreri is there any disclosure or suggestion of
the excess equipment inventory identification uses key
configuration factors as disclosed and claimed to determine
whether a component comprises excess equipment, as required
by claims 3, 9, and 15.
Appeal Br. 6 (emphasis added).
In the Final Action (6), the Examiner finds Ferreri (Figs. 2, 4, ¶¶ 4,
25) teaches or suggests “the excess equipment inventory identification uses
key configuration factors to determine whether a component comprises
excess equipment,” as recited in claim 3.
The Examiner finds the particular “configuration factors” recited in
claim 3 (i.e., “the key configuration factors comprising at least one of cable
detection and link status”) constitute a “design choice.” Final Act. 6
(emphasis added).
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On this issue, our case law guides that minor differences between the
prior art and a claimed device may be a matter of design choice absent
evidence to the contrary. See e.g., In re Rice, 341 F.2d 309, 314 (CCPA
1965). Additionally, design choices that do not “result in a difference in
function or give unexpected results . . . are no more than obvious variations
consistent with the principles known in the art.” In re Rice, 341 F.2d 309,
314 (CCPA 1965) (emphasis added). Thus, a claimed modification to the
prior art may be obvious if the claimed structure performs the same function
as in the prior art and it presents no novel or unexpected result over the prior
art. See In re Kuhle, 526 F.2d 553, 555 (CCPA 1975) (use of claimed
feature solves no stated problem and presents no unexpected result and
“would be an obvious matter of design choice within the skill of the art”).
Here, the Examiner finds that the particular “configuration factors” of
“at least one of cable detection and link status” are mere design choices.
Final Act. 6. We are not persuaded of error regarding the Examiner’s
findings.
We find the incorporation of these particular “configuration factors”
into Ferreri’s excess equipment identification method would have been an
obvious design choice within the level of ordinary skill in the art, as such
design choice would have presented no novel or unexpected results over the
prior art. See Rice, 341 F.2d at 314; see also Kuhle, 526 F.2d at 555. For
example, “configuration factors comprising at least one of cable detection
and link status” would encompass the connectivity of a network cable.
Claim 3.
On this record, we find the Appellant has not sufficiently established
nor specifically argued that the configuration factors (which determine
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whether the equipment is “in use”) would give unexpected results when
compared with the prior art, including Ferreri. Accordingly, on this record,
we are not persuaded that the Examiner erred in finding that the
“configuration factors” recited in dependent claim 3 are obvious design
choices that would have merely yielded predictable results.
Therefore, based upon a preponderance of the evidence, we are not
persuaded of error regarding the Examiner’s underlying factual findings and
ultimate legal conclusion of obviousness regarding the Examiner’s rejection
of independent representative claim 1 and dependent claim 3.
Accordingly, we sustain the Examiner’s obviousness Rejection B of
independent representative claim 1, and also independent claims 7 and 13,
which recite similar limitations of commensurate scope. See Final Act. 4–6.
We also sustain the Examiner’s obviousness Rejection B of dependent claim
3, and also dependent claims 9 and 15, which recite similar limitations of
commensurate scope. See Final Act. 6.
The remaining grouped dependent claims also rejected under
Rejection B (and not argued separately) fall with representative independent
claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). Accordingly, we sustain the
Examiner’s obviousness Rejection B of claims 1–21.
CONCLUSIONS
Under the Director’s 2019 Memorandum, as governed by relevant
case law, we conclude that claims 1–21, rejected under 35 U.S.C. § 101, are
directed to patent-ineligible subject matter.
The Examiner did not err in rejecting claims 1–21 as being obvious
under 35 U.S.C. § 103, over the cited prior art.

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DECISION SUMMARY
Rej Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
A 1–21 101 Eligibility 1–21
B 1–21 103 Ferreri, Official
Notice
1–21

Overall
Outcome
1–21
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