Donna K. Byron et al.

Patent Trials and Appeals Board

Nov 25, 2019

15212216 - (D) (P.T.A.B. Nov. 25, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/212,216 07/16/2016 Donna K. Byron AUS920130138US2 8187
40412 7590 11/25/2019
IBM CORPORATION- AUSTIN (JVL)
C/O LESLIE A. VAN LEEUWEN
6123 PEBBLE GARDEN CT.
AUSTIN, TX 78739
EXAMINER
TRAN, MAI T
ART UNIT PAPER NUMBER
2124
NOTIFICATION DATE DELIVERY MODE
11/25/2019 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):
leslie@vl-patents.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DONNA K. BYRON and JASON D. LAVOIE
____________

Appeal 2018-006437
Application 15/212,216
Technology Center 2100
____________

Before, CARL L. SILVERMAN, JOHN D. HAMANN, and
STEVEN M. AMUNDSON, Administrative Patent Judges.

SILVERMAN, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1–20, which constitute all pending claims. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 Throughout this Decision, we use the word “Appellant” to refer to
“applicant” as defined in 37 C.F.R. § 1.42 (2018). Appellant identifies
International Business Machines Corporation as the real party in interest.
Appeal Br. 2.

Appeal 2018-006437
Application 15/212,216
2
STATEMENT OF THE CASE
The invention relates to mining threaded online discussions. Abstract;
Spec. ¶ 3, Figs. 3, 4. Claim 1, reproduced below, is exemplary of the subject
matter on appeal (emphasis added):

1. A method, in an information handling system comprising a
processor and a memory, of mining threaded online discussions, the
method comprising:
performing, by the information handling system, a natural
language processing (NLP) analysis of one or more threaded
discussions pertaining to a given topic, wherein the analysis is
performed across one or more web sites with each of the web sites
including one or more of the threaded discussions, wherein the
analysis results in a plurality of harvested discussions;
identifying a question from the harvested discussions;
adding one or more of the harvested discussions to a corpus
that is utilized in a Question/Answer (QA) system, wherein the added
harvested discussions correlate with the identified question, the
adding resulting in an updated corpus;
answering a question posed to the QA system, wherein the
answering comprises:
comparing a plurality of questions found in the added harvested
discussions to the posed question, wherein the identified question
correlates to the posed question;
identifying a plurality of candidate answers from the added
harvested discussions, wherein each of the plurality of candidate
answers pertain to the identified question;
aggregating and merging a selected plurality of the added
harvested discussions corresponding to each of the candidate answers,
wherein the selected plurality of added harvested discussions are
supporting evidence corresponding to the respective candidate
answer;
generating a supporting evidence score based on one or more
factors of the supporting evidence for each of the candidate answers;
scoring each of the plurality of candidate answers, wherein the
scoring calculates an overall score corresponding to each of the
Appeal 2018-006437
Application 15/212,216
3
candidate answers, wherein the overall score is based upon at least the
supporting evidence score; and
selecting an answer to the posed question based on the scoring.

Appeal Br. 18–19 (Claims Appendix).

THE REJECTIONS
Claims 1–20 are rejected under 35 U.S.C. § 101 because the claimed
invention is directed to patent-ineligible subject matter. Final Act. 2–8.
Claims 14–20 are additionally rejected under 35 U.S.C. § 101 because
the claims cover transitory propagating signals. Final Act. 4–5.

ANALYSIS
PRINCIPLES OF LAW
Patent-eligible subject matter is defined in 35 U.S.C. § 101 of the
Patent Act, which recites:
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.
There are, however, three judicially created exceptions to the broad
categories of patent-eligible subject matter in 35 U.S.C. § 101: “‘[l]aws of
nature, natural phenomena, and abstract ideas.’” Alice Corp. Pty. Ltd. v.
CLS Bank Int’l, 573 U.S. 208, 216 (2014) (quotation marks and citation
omitted); Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66,
70 (2012) (brackets in original).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
Appeal 2018-006437
Application 15/212,216
4
and Alice. See Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S. at 75–77).
In accordance with that framework, we first determine what concept the
claim is “directed to.” See id. 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, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1854))); 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 that “[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 191–92 (“We
view respondents’ claims as nothing more than a process for molding rubber
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
Appeal 2018-006437
Application 15/212,216
5
of our patent laws, . . . and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a
patent-eligible application.” Alice, 573 U.S. at 221 (citation). “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. (quoting Mayo, 566 U.S. at 77 (alteration in original)).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
In January 2019, the United States Patent and Trademark Office
(“USPTO”) published revised guidance on the application of § 101.
USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) (“Guidance”). Under that guidance, we first
determine 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); and
(2) additional elements that integrate the judicial
exception into a practical application (see MPEP
§ 2106.05(a)–(c), (e)–(h)).
Appeal 2018-006437
Application 15/212,216
6
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception
that is not “well-understood, routine, 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 Guidance, 84 Fed. Reg. at 54–56.
A claim that integrates a judicial exception into a practical application
applies, relies on, or uses 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. See Guidance,
84 Fed. Reg. at 54. When the judicial exception is so integrated, then the
claim is not directed to a judicial exception and is patent eligible under
§ 101. Id.
The § 101 Rejection of claims 1–20
The Examiner determines claim 1 is directed to:
“performing a natural language processing analysis ... , identifying a
question from the harvested discussions, adding one or more of the
harvested discussions ... , answering a question posed to the QA system
... , comparing a plurality of questions found ... , identifying a plurality
of candidate answers ... , aggregating and merging a selected plurality
of the added harvested discussions ... , generating a supporting
evidence score ... , scoring each of the plurality of candidate answers
... , and selecting an answer to the posed question based on the scoring”
which recite an abstract idea.
Final Act. 6.
The Examiner determines these steps describe the abstract idea of
collecting information and comparing known information similar to the
concepts that have been identified as abstract by the courts in Classen, and
Appeal 2018-006437
Application 15/212,216
7
also similar to the abstract idea of obtaining and comparing intangible data
in CyberSource. Id. (citing Classen Immunotherapies, Inc. v. Biogen IDEC,
659 F.3d 1057, 1067 (Fed. Cir. 2011); CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366 (Fed. Cir. 2011). The Examiner determines
that the steps of “comparing ... , aggregating and merging ... , scoring ... ,
and selecting an answer to the posed question based on the scoring”
describe the abstract idea of creating an index and using that index to search
for and retrieve data similar to the concepts that have been identified as
abstract by the courts in Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d
1315, 1327 (Fed. Cir. 2017), or customizing information presenting it to
users based on particular characteristic similar to the concepts that have been
identified as abstract by the courts in Intellectual Ventures I LLC v. Capital
One Bank (USA), 792 F.3d 1363 (Fed. Cir. 2015). Id.
The Examiner determines dependent claims 2–7 further recite
“‘wherein the identified question matches the posed question’, ‘wherein the
overall score ... candidate answers’, ‘performing at least one sentiment
analysis ... candidate answers’, ‘identifying a plurality ... conversational
moves’, ‘pruning one or more of the follow-up ... pruning criteria’, ‘wherein
at least one of the factors is selected ... was correct’,” and determines that
“these additional recited elements taken individually or as a combination fail
to establish that the claims are not directed to an abstract idea for the same
reason already recited in independent claim 1.” Id. at 7.
The Examiner determines the claims do not include additional
elements that are sufficient to amount to significantly more than the abstract
idea because the additional computer elements, e.g., “a processor and a
memory” recited in claim 1, which are recited at a high level of generality,
Appeal 2018-006437
Application 15/212,216
8
provide conventional computer functions that do not add meaningful limits
to practicing the abstract idea. Id. at 7. According to the Examiner:
[t]here is no indication that the combination of elements
improves the functioning of a computer or improves any other
technology. Their collective functions merely provide
conventional computer implementation. Merely adding a
generic computer, generic computer components, or a
programmed computer to perform generic computer functions
does not automatically overcome an eligibility rejection.
Id.
The Examiner applies the same reasoning to the rejection of claims
8–20. Id. at 8.
Appellant argues the claims2 are not directed to an abstract idea and
the claims include limitations that are significantly more than an abstract
idea. Appeal Br. 9. According to Appellant, the claims are necessarily
rooted in computer technology ((the field of Question/Answer (QA)
computer technology)). In particular:
Appellant claims specific improvements in the technical field of
QA computer systems. For example, harvested discussions are
added “to a corpus that is utilized in a Question/Answer (QA)
system.” The added harvested discussions result in “an updated
corpus” that is used by the QA computer system to answer a
posed question. The use of the added harvested discussions
results in better answers being provided by the QA computer
system because the QA computer system uses the updated
corpus, with the added harvested discussions, to better identify
candidate answers, aggregate and merge supporting evidence,
generate supporting evidence scores for each of the candidate
answers, score each of the candidate answers, and select an
answer.
Id. at 9.

2 Appellant groups claims 1–20 together for argument, and we choose
claim 1 as representative. 37 C.F.R. § 41.37(c)(iv).
Appeal 2018-006437
Application 15/212,216
9
Appellant argues the cases cited by the Examiner are inapplicable
because the “claims include specific, concrete steps such as adding harvested
discussions to a corpus utilized by a QA computer system, such that the
corpus is changed by such additions, i.e., “the adding resulting in an updated
corpus.” Id. at 11–12. According to Appellant, the “claims clearly deal with
a machine, i.e. a QA computer system, and clearly transform a corpus
utilized by the QA system into an updated corpus.” Id. at 12.
Appellant argues the claims are “directed to a specific
implementation of a solution to a problem in the software arts,” i.e.,
improving the field of QA computer systems so that such systems provide
better and more accurate answers to posed questions” similar to Enfish. Id.
at 12–13.
Appellant argues, contrary to the Examiner’s assertion, that QA
computer systems are computer technology. Id. at 13. Appellant argues
when viewed as a whole and in light of the Specification, it is clear that
Appellant’s claimed invention improves the capabilities of the QA computer
system, such that the QA computer system provides more accurate and
relevant answers to posed questions. Id. at 14–16 (citing Spec. ¶¶ 26, 27).
In the Answer:
Examiner notes that Question/Answer (QA)
computer systems is not a computer technology. It is more
of an abstract concept formulated in one’s mind i.e. a
person formulates/poses a question, and another will give
an answer. The computer systems are recited at a high
level of generality, provide conventional computer
functions that do not add meaningful limits to practicing
the abstract idea. There is no indication that the
combination of elements improves the functioning of a
computer or improves any other technology. Their
collective functions merely provide conventional
Appeal 2018-006437
Application 15/212,216
10
computer implementation. Merely adding a generic
computer, generic computer components, or a
programmed computer to perform generic computer
functions does not automatically overcome an eligibility
rejection.
Ans. 5.
The Examiner notes that the Machine-or-Transformation test is a clue,
not a stand-alone test, and the machine components in claims 1–20 do not
impose any meaningful limitations on the abstract idea as they amount to
applying the idea with a computer. Id. at 6–7. According to the Examiner,
Appellant’s end result is an “updated corpus” that is used by the QA
computer system to answer posed questions and the claims simply require
obtaining and comparing intangible data (i.e. data pertinent to questions and
answers). The updated corpus of added harvested discussions may be an
improvement, but the improvement lies in the abstract idea rather than in a
computer technology. Id. at 7.
The Examiner determines Enfish is not applicable because the claims
simply require collecting information and comparing known information
pertinent to questions and answers. Id. at 8. Regarding Appellant’s
argument that the claimed invention is an updated corpus, the Examiner
determines Appellant does not disclose and claim sufficient features in
regards to the advantages of an updated corpus that would amount to
significantly more than the abstract idea. Id. at 8.
In the Reply Brief, Appellant reiterates that the claims are directed to
concrete and specific improvements to QA computer systems. Reply Br. 3.
According to Appellant, the limitations “adding one or more of the harvested
discussions to a corpus that is utilized in a Question/Answer (QA) system[”],
[“]the adding resulting in an updated corpus[”], and answering a question
Appeal 2018-006437
Application 15/212,216
11
posed to the QA system” could not be performed in the human mind. Id.
at 4.
Below, pursuant to the Guidelines, claim 1 is reviewed with regard to
reciting the abstract ideas of mental processes and organizing human
activity. The claim 1 limitations may be parsed as set forth below wherein
elements that reflect recitation of these abstract ideas are italicized:
1. A method, in an information handling system comprising a
processor and a memory, of mining threaded online discussions, the method
comprising:
performing, by the information handling system, a natural language
processing (NLP) analysis of one or more threaded discussions pertaining to
a given topic, wherein the analysis is performed across one or more web
sites with each of the web sites including one or more of the threaded
discussions, wherein the analysis results in a plurality of harvested
discussions;
identifying a question from the harvested discussions;
adding one or more of the harvested discussions to a corpus that is
utilized in a Question/Answer (QA) system, wherein the added harvested
discussions correlate with the identified question, the adding resulting in an
updated corpus;
answering a question posed to the QA system, wherein the answering
comprises:
comparing a plurality of questions found in the added harvested
discussions to the posed question, wherein the identified question
correlates to the posed question;
identifying a plurality of candidate answers from the added
harvested discussions, wherein each of the plurality of candidate
answers pertain to the identified question;
aggregating and merging a selected plurality of the added
harvested discussions corresponding to each of the candidate
answers, wherein the selected plurality of added harvested
discussions are supporting evidence corresponding to the respective
candidate answer;
generating a supporting evidence score based on one or more
factors of the supporting evidence for each of the candidate answers;
Appeal 2018-006437
Application 15/212,216
12
scoring each of the plurality of candidate answers, wherein the
scoring calculates an overall score corresponding to each of the
candidate answers, wherein the overall score is based upon at least
the supporting evidence score; and
selecting an answer to the posed question based on the scoring.

Each of the italicized limitations can be performed as mental
processes. If a method can be performed by human thought alone, or by a
human using pen and paper, it is merely an abstract idea and is not patent
eligible under § 101. 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).
Here, the claim is broadly written and recites determining questions
and answers presented by one or more discussions pertaining to a given
topic. In particular, performing analysis of one or more discussions
pertaining to a given topic wherein the analysis results in a plurality of
harvested discussions can be performed by a listener, or reader, of a
discussion between two humans mentally and can be performed by a human
using pen and paper. Identifying a question from the harvested discussions
can be done similarly. Similarly, adding one or more of the harvested
discussions to a corpus that is utilized in a Question/Answer (QA) system,
wherein the added harvested discussions correlate with the identified
question, the adding resulting in an updated corpus, is a mental process that
can be done mentally and by pen and paper. Regarding answering a
question posed to the QA system, this is a mental process that can be done
Appeal 2018-006437
Application 15/212,216
13
mentally and by pen and paper. Likewise, the limitations further describing
the answering can be done mentally and by a human with pen and paper:
comparing a plurality of questions found in the added harvested
discussions to the posed question, wherein the identified question
correlates to the posed question;
identifying a plurality of candidate answers from the added
harvested discussions, wherein each of the plurality of candidate
answers pertain to the identified question;
aggregating and merging a selected plurality of the added
harvested discussions corresponding to each of the candidate
answers, wherein the selected plurality of added harvested
discussions are supporting evidence corresponding to the respective
candidate answer;
generating a supporting evidence score based on one or more
factors of the supporting evidence for each of the candidate answers;
scoring each of the plurality of candidate answers, wherein the
scoring calculates an overall score corresponding to each of the
candidate answers, wherein the overall score is based upon at least
the supporting evidence score; and
selecting an answer to the posed question based on the scoring.

In view of the above, we determine that claim 1 recites mental
processes, and thus an abstract idea. Additionally, we note that the italicized
limitations also recite the abstract idea of organizing human activity, such as
“managing personal behavior or relationships or interactions between
people,” such as “social activities, teaching, and following rules or
instructions.” 84 Fed. Reg. at 51–52.
Even if claim 1 recites an abstract idea, the Federal Circuit explains
the “directed to” inquiry is not simply asking whether the claims involve a
patent-ineligible concept:
The “directed to” inquiry . . . cannot simply ask whether
the claims involve a patent-ineligible concept, because
essentially every routinely patent-eligible claim involving
Appeal 2018-006437
Application 15/212,216
14
physical products and actions involves a law of nature
and/or natural phenomenon—after all, they take place in
the physical world. See Mayo, 132 S. Ct. at 1293 (“For all
inventions at some level embody, use, reflect, rest upon,
or apply laws of nature, natural phenomena, or abstract
ideas.”). Rather, the “directed to” inquiry applies a stage-
one filter to claims, considered in light of the specification,
based on whether “their character as a whole is directed to
excluded subject matter.”
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016); see
also Diehr, 450 U.S. at 188 (“In determining the eligibility of respondents’
claimed process for patent protection under § 101, their claims must be
considered as a whole.”); McRO, Inc. v. Bandai Namco Games Am. Inc.,
837 F.3d 1299, 1314 (Fed. Cir. 2016) (the question is whether the claims as
a whole “focus on a specific means or method that improves the relevant
technology or are instead directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery.”).
Therefore, we proceed to Step 2A, Prong 2, of the Guidance to
determine whether additional elements recited in the claims beyond the
judicial exception of claim 1 integrate the abstract idea into a practical
application. Such additional elements may reflect an improvement to a
technology or technical field. See Guidance, 84 Fed. Reg. at 55.
As discussed below, there are no additional elements recited beyond
the judicial exception itself that integrate the exception into a practical
application. More particularly, the claims do not recite: (i) an improvement
to the functionality of a computer or other technology or technical field (see
MPEP § 2106.05(a)); (ii) a “particular machine” to apply or use the judicial
exception (see MPEP § 2106.05(b)); (iii) a particular transformation of an
article to a different thing or state (see MPEP § 2106.05(c)); or (iv) any other
Appeal 2018-006437
Application 15/212,216
15
meaningful limitation (see MPEP § 2106.05(e)). See also 84 Fed. Reg.
at 55.
We determine the additional elements of claim 1 do not integrate the
abstract idea into a practical application. We refer to the additional elements
in the claim 1 preamble, in an information handling system comprising a
processor and a memory and the additional elements “a natural language
processing (NLP) analysis, Question/Answer (QA) system, and corpus.”
The claim is broadly written and the improvement, if any, of the claim
is in the abstract idea itself, not in the functionality of a computer or other
technology or technical field. A natural language processing (NLP) analysis
can certainly be performed by an individual performing listening to an oral
discussion or reading a written discussion. A Question/Answer (QA) system
can similarly be performed mentally by a human or with pen and paper.
The corpus is merely a summary of the data and analysis performed, and can
be done mentally or by pen and paper. The claim does not recite a particular
machine, a physical or chemical transformation, or other meaningful
limitation. The claim limitations do not use the alleged abstract idea in a
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).
Because the additional elements of claim 1 do not integrate the
abstract idea into a practical application, we determine claim 1, and
independent claims 8 and 14 which are commensurate in scope with claim 1,
are directed to an abstract idea. See Guidance, Step 2A, Prong 2. For
similar reasons, dependent claims 2–10, 12, 15–17, and 19–21 do not
Appeal 2018-006437
Application 15/212,216
16
integrate the abstract idea into a practical application, and are directed to an
abstract idea.
Because we determine the claims are directed to an abstract idea, we
analyze the claims under step two of Alice to determine whether there are
additional limitations that individually, or as an ordered combination, ensure
the claims amount to “significantly more” than the abstract idea. Alice, 573
U.S. at 217–18 (citing Mayo, 566 U.S. at 72–73, 77–79). As stated in the
Guidance, many of the considerations to determine whether the claims
amount to “significantly more” under step two of the Alice framework are
already considered as part of determining whether the judicial exception has
been integrated into a practical application. 84 Fed. Reg. at 56. Thus, at this
point of our analysis, we determine if the claims add a specific limitation, or
combination of limitations, that is not well-understood, routine, conventional
activity in the field, or simply append well-understood, routine, conventional
activities at a high level of generality. 84 Fed. Reg. at 56.
As with the integration into a practical application analysis discussed
above, an inventive concept “cannot be furnished by the unpatentable law of
nature (or natural phenomenon or abstract idea) itself.” Genetic Techs. Ltd.
v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016); see also 84 Fed.
Reg. at 56; Alice, 573 U.S. at 217 (explaining that, after determining a claim
is directed to a judicial exception, “we then ask, ‘[w]hat else is there in the
claims before us?’” (emphasis added, brackets in original)
(quoting Mayo, 566 U.S. at 78)). Instead, an “inventive concept” is
furnished by an element or combination of elements that is recited in the
claim in addition to the judicial exception and sufficient to ensure the claim
as a whole amounts to significantly more than the judicial exception
Appeal 2018-006437
Application 15/212,216
17
itself. Alice, 573 U.S. at 218–19 (citing Mayo, 566 U.S. at 72–73); see BSG
Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018)
(explaining that the Supreme Court in Alice “only assessed whether the
claim limitations other than the invention’s use of the ineligible concept to
which it was directed were well-understood, routine and conventional,”
(emphasis added)).
Appellant’s claims fail to recite specific limitations (or a combination
of limitations) that are not well-understood, routine, and conventional.
Rather, the only additional elements (i.e., in an information handling system
comprising a processor and a memory, a natural language processing
(NLP) analysis, Question/Answer (QA) system, and corpus are generic
computer components recited at a high level of generality or a basic
computer function, none of which Appellant argues is beyond what was well
understood, routine, and conventional in the art. See Spec. ¶¶ 6–13; see also
Mortgage Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314,
1324–25 (Fed. Cir. 2016) (generic computer components such as an
“interface,” “network,” and “database” fail to satisfy the inventive concept
requirement).
To the extent Appellant argues creating and utilizing a corpus adds
significantly more, we note that these steps are part of the ineligible abstract
idea. “If a claim’s only ‘inventive concept’ is the application of an abstract
idea using conventional and well-understood techniques, the claim has not
been transformed into a patent-eligible application of an abstract idea.” BSG
Tech, 899 F.3d at 1290–91 (citing Berkheimer v. HP Inc., 881 F.3d 1360,
1370 (Fed. Cir. 2018)). “[I]t is irrelevant whether [the claimed abstract idea]
may have been non-routine or unconventional as a factual matter . . .
Appeal 2018-006437
Application 15/212,216
18
narrowing or reformulating an abstract idea does not add ‘significantly
more’ to it.” BSG Tech, 899 F.3d at 1291.
Regarding case law cited by the Examiner and Appellant, we are not
persuaded by Appellant’s arguments. The claims here are unlike Enfish and
DDR as the claims before us are broadly written and do not recite an
improvement to a computer. As discussed supra, the claims at best recite an
improvement to an abstract idea.
For the above reasons, Appellant has not persuaded us of Examiner
error, and we sustain the Examiner’s rejection of claims 1–20 under
35 U.S.C. § 101.
§ 101 rejection of claims 14–20 (transitory propagating signals)
The Examiner determines that independent claim 14 recites “[a]
computer program product stored in a computer readable storage medium,”
and interprets this phrase, in view of the Specification, to include patent-
ineligible transitory signals. (Emphasis added). Final Act. 4–5; Ans. 3–5;
Spec. ¶¶ 26, 27). According to the Examiner, the inclusion of “optical and
electromagnetic in the definition of both storage and signal medium makes
the separation ineffective.” Ans. 4. The Examiner finds that the term
“tangible” in the Specification does not on its own define statutory subject
matter. Id.
Appellant argues, in view of the Specification and ordinary skill in the
art, the phrase excludes transitory signals. App. Br. 8–9; Reply Br. 2
(citing Spec. ¶¶ 7, 8). According to Appellant, the Specification defines a
computer readable storage medium to be a tangible medium for storing
computer programs and a tangible medium is a material, physical medium,
and thus is not to be construed as applying to a transitory signal. App. Br. 8
Appeal 2018-006437
Application 15/212,216
19
We do not agree that the disputed term is limited by the Specification
as argued by Appellant because the Specification uses nonlimiting language
to describe the disputed term: “may be, for example, but not limited to . . . (a
non-exhaustive list).” Spec. ¶ 7. We are not persuaded of error and instead
agree with the Examiner’s findings because neither the claims nor the
Specification defines “computer readable storage medium” so as to exclude
transitory media. Consequently, the claimed medium encompasses
transitory media, which is not patent eligible. See Ex parte Mewherter,
107 USPQ2d 1857 (PTAB 2013) (precedential); see also In re Nuijten,
500 F.3d 1346, 1356–57 (Fed. Cir. 2007); and U.S. Patent & Trademark
Office, Subject Matter Eligibility of Computer Readable Media, 1351 Off.
Gaz. Pat. Office 212 (Feb. 23, 2010).
In view of the above, we sustain the rejection of claim 14, and
dependent claims 15–20 as these claims are not argued separately by
Appellant.

CONCLUSION
Claims Rejected Basis Affirmed Reversed
1–20

35 U.S.C. § 101

1–20

14–20 35 U.S.C. § 101 14–20
Overall Outcome 1–20

Appeal 2018-006437
Application 15/212,216
20
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED