HARRIS, ELBERT

Patent Trials and Appeals Board

Jun 2, 2020

14448974 - (D) (P.T.A.B. Jun. 2, 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.
14/448,974 07/31/2014 ELBERT HARRIS 155711-4.4 7907
97242 7590 06/02/2020
Kutak Rock LLP
2300 Main Street, Suite 800
Kansas City, MO 64108
EXAMINER
APPLE, KIRSTEN SACHWITZ
ART UNIT PAPER NUMBER
3697
NOTIFICATION DATE DELIVERY MODE
06/02/2020 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):
patents@kutakrock.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ELBERT HARRIS

Appeal 2019-004452
Application 14/448,974
Technology Center 3600

Before RICHARD M. LEBOVITZ, RYAN H. FLAX, and
CYNTHIA M. HARDMAN, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
The Examiner rejected the claims under the judicially-created doctrine
of obviousness-type double patenting, under 35 U.S.C. § 103 as obvious,
and under 35 U.S.C. § 101 as lacking patent-eligibility. Pursuant to
35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to
reject the claims. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM and set forth a NEW GROUND OF REJECTION.

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 Elbert Harris
Living Trust. Appeal Br. 2.
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STATEMENT OF THE CASE
The claims stand rejected by the Examiner as follows:
Claims 1–10 under the judicially-created doctrine of obviousness-type
double patenting over US 7,062,514 B2 (“the ’514 patent”). Final Act. 2.
As indicated by the Appellant, all the claims in US 7,062,514 were canceled
in an inter partes reexamination. Certificate issued Mar. 7, 2013 in US
7,062,514 C1 (stating that “Claims 1–23 are cancelled” as a result of
reexamination).
Claims 1–10 under 35 U.S.C. § 103(a) as obvious in view of
Thompson (US 6,393,410 B1, issued May 21, 2002), Cornelius (US Patent
Pub. 2003/0101127 A1, published May 29, 2003), and Lawrence (US Patent
Pub. 2004/0083165 A1, published Apr. 29, 2004). Final Act. 7.
Claims 1–10 under 35 U.S.C. § 101 because the claimed invention is
directed to non-statutory subject matter.
Claim 1, which is the only independent claim under review, is
reproduced below (bracketed numbering has been added for reference to the
specific limitations in the claim):
1. A method of planning a construction project including
the steps of:
[1] storing material specification information on a
component of a computer network, said component of said
computer network being controlled by a subscription service
provider;
[2] storing user information on said component of said
computer network, said user information including user
credentials;
[3] receiving design parameters for a construction
project;
[4] providing a list of materials capable of meeting said
design parameters for said construction project from said
computer network; and
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[5] providing a list of users with credentials necessary to
complete said construction project.

OBVIOUSNESS-TYPE DOUBLE-PATENTING REJECTION
The Examiner rejected the pending claims under the judicially-created
doctrine of obviousness-type double patenting as obvious over the claims of
the ’514 patent. Final Act. 2. The 14/448,974 application (“the ’974
application”) in this appeal claims, through a chain of application, priority to
the same application on which the ’514 patent is based.
The ’514 patent was filed as application 10/694,590 on October 24,
2003, claiming priority to Provisional Application 60/469,678, filed April
28, 2003. It issued as a patent on June 13, 2006. An inter partes
reexamination certificate was issued March 7, 2013 in which claim 1–23, all
the claims of the ’514 patent, were cancelled. Inter partes Reexamination
95/001,478. The claims were canceled before their statutory expiration date.
Appellant argues that the obviousness-type double patenting rejection
is improper because all the claims of the ’514 patent were cancelled in the
inter partes reexamination. Appeal Br. 5. The Examiner acknowledged that
claims in the patent had been cancelled, but maintained the rejection. Ans. 3.
This issue is one not seen very often. However, we found that related
issues had been decided in In re Fischel, 136 F.2d 254 (CCPA 1943) and Ex
Parte Personalized Media Communications, LLC, 2009 WL 1689317 (Bd.
Pat. App. & Interf. 2009). Based on these cases, as explained in more detail
below, we conclude that the Examiner properly maintained the obviousness-
type double-patenting rejection over the canceled claims of the ’514 patent.
We begin the discussion with In re Fischel, where an applicant
appealed a decision of the Board affirming a double-patenting rejection of
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pending claims over cancelled claims in a reissued patent. Fischel, 136 F.2d
at 255. The patent originally had claims 7 and 8, which were identical to
pending claims 27 and 28 in the application. An application for reissue of
the patent was filed in which claims 7 and 8 were omitted because these
claims were said by the appellant to be invalid. Id. The claims in the
application were rejected on the ground of double-patenting over the claims
in the patent, which were found to be “generic” to the rejected claims. Id.
The examiner had found that it would be extending the “‘monopoly beyond
the statutory period provided by the law’” to grant claims in the application
of similar scope to claims 7 and 8 in the patent. Id. at 255–256. The
appellant argued that the rejection should be reversed because “claims 7 and
8 of the . . . patent were void ab initio and were surrendered and therefore
not in a patent at the time of rejection of the instant claims.” Id. at 258. The
appellant also argued it was a mistake to have inserted claims 7 and 8 into
the patent. Id.
The CCPA held that the appellant is bound by the assignee’s election
to claim the invention broadly in the patent. Fischel, 136 F.2d at 258. The
court further held “that to allow the instant claims would be to extend the
monopoly which the assignee has enjoyed in the subject-matter embraced in
said claims 7 and 8 in the Fischel and Thiry patent, regardless of the said
admitted invalidity.” Id. The court concluded that “appellants’ assignee
enjoyed, for about fifteen months, a prima facie monopoly of the subject-
matter involved in said broad claims 7 and 8, and that to allow the instant
claims would be an extension of monopoly.” Id. at 259. Consequently, the
double-patenting rejection was affirmed.
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In the second relevant case, Ex Parte Personalized Media
Communications, LLC, the Board had affirmed an obviousness-type double-
patenting rejection over two expired patents. Appellant argued, in a Request
for Rehearing, that the Board had failed to consider that certain claims had
been canceled in reexamination of the two patents and thus the claims were
“void ab initio.” Id. The Board stated that the claims had issued and received
17 years of protection. Id. In reaching the conclusion that the double-
patenting rejection was proper, the Board reasoned “[i]f the obviousness-
type double patenting rejection could be overcome by canceling the earlier
patent claims, the term of protection would be unjustifiably extended. Thus,
canceling the claims of the earlier patents [in a reexamination] does not
overcome the double patenting rejection.” Id.
In this appeal, the claims of the ’514 patent were canceled in a
reexamination prior to the expiration of the patent. The patent in Fischel had
also not expired prior to the cancelation of the claims, and therefore the
claims had not enjoyed their full statutory term. Fischel, 136 F.2d at 258.
Yet, the court affirmed the double patenting rejection in the application over
the canceled patent claims. Id. Canceling claims in an earlier filed patent
cannot overcome a double-patenting rejection in a later filed patent
application because the claims already enjoyed patent term, and granting
claims to obvious variants in a later patent application is inconsistent with
cancellation of the claims in the earlier patent. See supra Fischel;
Personalized Media Commc’ns. To grant the claims in the ’974 application
ignores the benefit already received by the patent owner for the ’514 patent
for similar claims. The ’514 claims were canceled in a reexamination
proceeding and therefore Appellant should not receive an additional,
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unjustified extension of the right to exclude based on claims that are not
patentably distinct from claims in the ’514 patent.
Appellant attempted to file a terminal disclaimer to overcome the
obviousness type double-patenting rejection. The terminal disclaimer was
not entered by the U.S.P.T.O. for procedural reasons because it was found
that the terminal disclaimer was not signed by an authorized party. Terminal
disclaimer review (entered May 2, 2017). Even if the disclaimer is properly
executed, it is it not sufficient to overcome the rejection. According to
M.P.E.P. § 804.02 (Ninth Edition, Revision 08.2017, last revised Jan. 2018),
“a terminal disclaimer filed after the expiration of the reference patent is not
effective to obviate a nonstatutory double patenting rejection. See
Boehringer Ingelheim Int’l v. Barr Laboratories, 592 F.3d 1340, 93
USPQ2d 1417 (Fed. Cir. 2010).” Similarly, In re Lonardo, 119 F.3d 960
(Fed. Cir. 2007), the court stated:
Obviousness-type double patenting . . . is judicially created and
prohibits an inventor from obtaining a second patent for claims
that are not patentably distinct from the claims of the first
patent. . . . With obviousness-type double patenting, however, a
terminal disclaimer may overcome that basis for
unpatentability, assuming that the first patent has not expired.
In this case, the ’762 patent, over which the claims have been
rejected, has expired, so a terminal disclaimer cannot cure these
rejections.
Lonardo, 119 F.3d at 965 (citation omitted).
For the foregoing reason, the obviousness-type double-patenting
rejection over the claims in the ’514 patent is affirmed. Appellant did not
argue the claims separately and therefore all the claims fall together.
37 C.F.R. § 41.37(c)(1)(iv).

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OBVIOUSNESS REJECTION
The Examiner found that Thompson describes substantially steps [1]–
[5] of claim 1. Final Act. 7. The Examiner stated that it is inherent that there
is a “subscription service” as recited in step [1] of the claim 1. Id. However,
the Examiner additionally cited Cornelius and Lawrence for disclosing
computer networks controlled by a subscription service provider. Id. The
Examiner stated that it would have been obvious to have used subscription
services in Thompson’s method. Id. at 8. The Examiner also found that all
three of the cited publications “relate to same subject area of managing
construction projects.” Id.
Appellant argues that “nothing in Thompson Figures 2, 9, or 6,” cited
by the Examiner, teaches step [5] of claim 1 of “providing a list of users
with credentials necessary to complete said construction project.” Appeal
Br. 8.
In response, the Examiner directed Appellant to Figure 2, items 140–
170, of Thompson which the Examiner stated show “each discipline” which
“inherently would have the ‘credentials necessary to complete a construction
project.’” Ans. 5. The Examiner cited the disclosure in Thompson of various
users: “subcontractor=80, architects=40, engineers=70, general
contractors=50, suppliers=30, builders=95 or customers=80” as evidence.
Id. The Examiner also cited disclosures in Lawrence and Cornelius as
disclosing users of their systems. Id. at 5–6.
The Examiner did not fully address the limitation recited in step [5] of
“providing a list of users with credentials necessary to complete said
construction project.” The Examiner only identified the disclosure of “users”
in the cited references, but did not establish that any of the three cited
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references describe or suggest “providing a list of users” with the
“credentials necessary to complete said construction project,” as required by
all rejected claims. Consequently, as the Examiner did not meet the burden
to establish that all the limitations of claim 1 are described or suggested by
the combination of Thompson, Cornelius, and Lawrence,2 we are compelled
to reverse the obviousness rejection of claims 1–10.

New Ground of Rejection
The Examiner did not identify disclosure in Cornelius where step [5]
of claim 1 is taught. However, upon review of Cornelius’s complete
disclosure, we identified the following pertinent disclosure: “For example,
an end user can enter data related to his state and local licenses and bonding
status, his MBEWBE certifications, and his area of work.” Cornelius ¶ 32.
Based on the ordinary meaning of “credentials,”3 we consider licenses and
certifications to meet the claimed “user credentials.”

2 An examiner bears the initial burden of presenting a prima facie case of
obviousness and only then does the burden shift to applicant to rebut the
case. In re Huai-Hung Kao, 639 F.3d 1057, 1066 (Fed. Cir. 2011).
3 The Specification does not provide a definition of “credentials.” We
therefore consult a general purpose dictionary for its meaning. The
dictionary defines “credentials” as “something that gives a title to credit or
confidence” and “testimonials or certified documents showing that a person
is entitled to credit or has a right to exercise official power.”
https://www.merriam-webster.com/dictionary/credential (last accessed Feb.
23, 2020).
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Cornelius also teaches displaying a list “of those end users who have
expressed an intent to bid on projects.” Cornelius ¶ 26. Cornelius expressly
teaches:
This listing of the pool of intended bidders can include
information regarding each intended bidder, such as the name,
date and time of the intent to bid posting, a work description,
contact information, and an active icon or hyperlink leading to
more detailed information.
Cornelius ¶ 42.
It would have been obvious to one of ordinary skill in the art to have
used a list of bidders as disclosed by Cornelius in Thompson’s system, and
to include the credential information for the bidders as described by
Cornelius (¶ 32), so the project owners would know the bidder and the
bidder’s ability to complete the project based on the bidder’s credentials.
Accordingly, claim 1 is rejected as obvious in view of Thompson, Cornelius,
and Lawrence. This a new ground of rejection pursuant to 37 C.F.R.
§ 41.50(b).
With respect to claims 2–10, we leave it to the Examiner to determine
whether these claims are obvious in view of the cited, or any additional,
prior art (e.g., based on the same reasoning that these dependent claims were
originally rejected as obvious in view of Thompson, Cornelius, and
Lawrence).
§ 101 REJECTION
Principles of Law
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.”
However, not every discovery is eligible for patent protection. Diamond v.
Diehr, 450 U.S. 175, 185 (1981). “Excluded from such patent protection are
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laws of nature, natural phenomena, and abstract ideas.” Id. The Supreme
Court articulated a two-step analysis to determine whether a claim falls
within an excluded category of invention. Alice Corp. Pty. Ltd. v. CLS Bank
Int’l, 573 U.S. 208, 216 (2014); Mayo Collaborative Servs. v. Prometheus
Labs, Inc., 566 U.S. 66, 75–77 (2012).
In the first step, it is determined “whether the claims at issue are
directed to one of those patent-ineligible concepts.” Alice, 573 U.S. at 217.
If it is determined that the claims are directed to an ineligible concept, then
the second step of the two-part analysis is applied in which it is asked
“[w]hat else is there in the claims before us?” Id. The Court explained that
this step involves:
a search for an ‘inventive concept’ — i.e., an element or
combination of elements that is ‘sufficient to ensure that the
patent in practice amounts to significantly more than a patent
upon the [ineligible concept] itself.’
Alice, 573 U.S. at 217–18 (citing from Mayo, 566 U.S. at 75–77).
Alice, relying on the analysis in Mayo of a claim directed to a law of
nature, stated that in the second part of the analysis, “the elements of each
claim both individually and ‘as an ordered combination’” must be
considered “to determine whether the additional elements ‘transform the
nature of the claim’ into a patent-eligible application.” Alice, 573 U.S. at
217.
The PTO published revised guidance on the application of 35 U.S.C.
§ 101. USPTO’s January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 51–57 (2019)
(“Eligibility Guidance”). This guidance provides additional direction on how
to implement the two-part analysis of Mayo and Alice.
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Step 2A, Prong One, of the Eligibility Guidance, looks at the specific
limitations in the claim to determine whether the claim recites a judicial
exception to patent eligibility. In Step 2A, Prong Two, the claims are
examined to identify whether there are additional elements in the claims that
integrate the exception into a practical application, namely, is there a
“meaningful limit on the judicial exception, such that the claim is more than
a drafting effort designed to monopolize the judicial exception.” 84 Fed.
Reg. 54 (2. Prong Two).
If the claim recites a judicial exception that is not integrated into a
practical application, then as in the Mayo/Alice framework, Step 2B of the
Eligibility Guidance instructs us to determine whether there is a claimed
inventive concept to ensure that the claims define an invention that is
significantly more than the ineligible concept, itself. 84 Fed. Reg. 56. In
making this determination, we must consider whether there are specific
limitations or elements recited in the claim “that are not well-understood,
routine, conventional activity in the field, which is indicative that an
inventive concept may be present” or whether the claim “simply appends
well-understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception,
indicative that an inventive concept may not be present.” 84 Fed. Reg. 56
(footnote omitted).
With these guiding principles in mind, we proceed to determine
whether the claimed subject matter in this appeal is eligible for patent
protection under 35 U.S.C. § 101.
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Discussion
Claim 1 recites a “method of planning a construction project.”
Following the first step of the Alice/Mayo analysis, we find that the claim is
directed to a “process,” and therefore falls into one of the broad statutory
categories of patent-eligible subject matter under 35 U.S.C. § 101. We thus
proceed to Step 2A, Prong One, of the Eligibility Guidance.

Step 2A, Prong One
In Step 2A, Prong One, per the Eligibility Guidance, the specific
limitations in the claim are examined to determine whether the claim recites
a judicial exception to patent eligibility, namely whether the claim recites an
abstract idea, law of nature, or natural phenomenon.
The Examiner found, inter alia, that the claims are directed to
“Concepts Related [to] Processes of Organizing Information that can be
Performed Mentally.” Final Act. 6. “Mental processes” is one of the three
categories of abstract ideas enumerated in the Eligibility Guidance. 84 Fed.
Reg. 52. The Examiner stated that mental processes “remain unpatentable
even when automated to reduce the burden on the user of what once could
have been done with pen and paper.” Ans. 4. The Examiner explained that
the claims “could have been performed by a human doing the normal[]
business processes of manageing [sic managing] a construction project.”
Final Act. 4.
The Examiner’s determination is reasonable. The information on
materials and users that are stored on the computer network (steps [1] and
[2] of claim 1) can just as well be recorded on paper with a pen or, for that
matter, merely remembered in the human mind. The design parameters of
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step [3] can also be written down. The list of materials and users with
credentials (steps [4] and [5]) can also be written down based on the
information in steps [1] and [2]. The claim does not recite anything about
how these steps are carried out that would exclude them from being
performed in the human mind with the aid of pen and paper.4 Therefore, the
claim was properly characterized by the Examiner as reciting a mental
process.
Appellant contends that the Examiner did not meet the burden of
establishing that the claims are patent ineligible and did not address the
dependent claims. Appeal Br. 6. Appellant makes the same assertions in the
Reply Brief, further stating that the analysis lacks clarity. Reply Br. 3.
This argument is not persuasive because the Examiner expressly
identified a category of abstract ideas that rendered the claim ineligible,
providing Appellant with sufficient notice of the basis of the rejection. Final
Act. 4–5; Ans. 4. Further, the Examiner explained that the certain steps of
the claim can be performed with the aid of pen and paper and therefore are
mental processes. Ans. 4. Accordingly, we conclude that the Examiner met
the burden of establishing that claim 1 recites an abstract idea.
Appellant criticizes the Examiner for not addressing each of the
dependent claims. Appeal Br. 6. However, Appellant did not identify any
limitation in the dependent claims that would move the ineligible abstract

4 “The use of a physical aid (i.e., the pen and paper) to help perform a mental
step (e.g., a mathematical calculation) does not negate the mental nature of
this limitation.” October 2019 Update to Subject Matter Eligibility at 9.
Available at
https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p
df (last accessed May 25, 2020) (“PEG Update”).
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idea recited in claim 1 into eligibility territory. Therefore, we do not
consider this argument to be a separate argument for patentability.
37 C.F.R. § 41.37(c)(1)(iv) (“[T]he failure of appellant to separately argue
claims which appellant has grouped together shall constitute a waiver of any
argument that the Board must consider the patentability of any grouped
claim separately.”).
Step 2A, Prong Two
Prong Two of Step 2A per the Eligibility Guidance requires us to ask
whether there are additional elements that integrate the exception into a
practical application. As discussed in the Eligibility Guidance, “[a] claim
that integrates a judicial exception into a practical application will apply,
rely on, or use the judicial exception in a manner that places a meaningful
limit on the judicial exception, such that the claim is more than a drafting
effort designed to monopolize the judicial exception.” Eligibility Guidance,
84 Fed. Reg. 54. Integration into a practical application is evaluated by
identifying whether there are additional elements individually, and in
combination, which go beyond the judicial exception. Id. at 54–55.
Appellant argues that “the claims recite specific, discrete
implementations of such abstract idea. As such, the claims cannot possibly
preempt all ways of performing the alleged abstract idea.” Appeal Br. 6.
We do not agree with Appellant that that steps are recited with
sufficient specificity to avoid encompassing a mental process. We compare
the facts here with those of McRO, Inc. v. Bandai Namco Games America
Inc., 837 F.3d 1299 (Fed. Cir. 2016), because the steps in the McRO claims
were determined by the court to be recited with sufficient specificity to
avoid the judicial restrictions on patent eligibility under § 101.
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In McRO, the claim was directed to a “method for automatically
animating lip synchronization and facial expression of three-dimensional
characters.” Id. at 1307–08. The claim recited a series of steps that
“produce[d] lip synchronization and facial expression control of said
animated characters.” Id. The court found that the claimed “automation goes
beyond merely ‘organizing [existing] information into a new form’ or
carrying out a fundamental economic practice.” Id. at 1315 (citation
omitted). Instead, the court found that the “claimed process uses a combined
order of specific rules that renders information into a specific format that is
then used and applied to create desired results: a sequence of synchronized,
animated characters.” Id. In McRO, the Federal Circuit found that the
recited rules “are limiting in that they define morph weight sets as a function
of the timing of phoneme sub-sequences.” Id. at 1313. The claims were
found to be directed to a “technological improvement over the existing,
manual 3-D animation techniques.” Id. at 1316.
In finding the claim patent-eligible, the McRO court noted that the
“abstract idea exception has been applied to prevent patenting of claims that
abstractly cover results where ‘it matters not by what process or machinery
the result is accomplished.’ [O’Reilly v. Morse, 56 U.S. (15 How.) 62, 113];
see also Mayo, 132 S. Ct. at 1301.” McRO, 837 F.3d at 1314. The McRO
court stated that therefore, a court must “look to whether the claims in these
patents 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.” Id. at
1314.
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Here, none of the steps recited in the claim on appeal describe the
“specific means” by which the step is accomplished. For example, claimed
steps [1] and [2] refer to “storing” information, but do not specifically
disclose the method by which the information is stored. Step [3] recites
“receiving design parameters,” but does not state the means by which the
parameters are received. Steps [4] and [5] recite the desired result of
“providing” lists of materials and users, but do not describe how the result is
achieved.
In McRO, the court held that the “limitations in claim 1 prevent
preemption of all processes for achieving automated lip-synchronization of
3–D characters.” McRO, 837 F.3d at 1315. The court explained that “[t]he
specific structure of the claimed rules would prevent broad preemption of all
rules-based means of automating lip synchronization.” Id. In contrast, the
steps of rejected claim 1 are recited in general terms, namely, “storing,”
“receiving,” and “providing.” Unlike McRO, none of these steps recite how
the desired result is accomplished or implemented.
In sum, we have not been guided to an additional element in the
claim, beyond the abstract idea, that integrates the judicial exception into
practical application.
Step 2B
Because we determined that the judicial exception is not integrated
into a practical application, we proceed to Step 2B per the Eligibility
Guidelines, which instruct us to ask whether there is an inventive concept in
the claimed invention. In making this Step 2B determination, we must
consider whether there are specific limitations or elements recited in the
claim “that are not well-understood, routine, conventional activity in the
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field, which is indicative that an inventive concept may be present” or
whether the claim “simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high level of
generality, to the judicial exception, indicative that an inventive concept may
not be present.” Eligibility Guidance, 84 Fed. Reg. 56 (footnote omitted).
We must also consider whether the combination of steps perform “in an
unconventional way and therefore include an ‘inventive step,’ rendering the
claim eligible at Step 2B.” Id. In this part of the analysis, we consider “the
elements of each claim both individually and ‘as an ordered combination’”
to determine “whether the additional elements ‘transform the nature of the
claim’ into a patent-eligible application.” Alice, 573 U.S. at 217.
Appellant has not established that the claims, when considered as an
ordered combination, provide “inventive” step. Appellant states that the
claims “recite unconventional limitations” (Reply Br. 3), but fails to identify
the “unconventional” limitation in the claim. To the contrary, as indicated in
the cited Thompson, Cornelius, and Lawrence references, each of the steps
in the claim appear to be conventional. Appellant did not explain how the
steps, when considered as an ordered combination, constitute an
unconventional and inventive process.
Accordingly, we conclude that claim 1 does not provide an inventive
step. Claims 2–10 were not argued separately and therefore fall with
claim 1.
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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed New
Ground
1–10 103 Thompson,
Cornelius,
Lawrence
1–10
1 103 Thompson,
Cornelius,
Lawrence
1
1–10 101 Obviousness-
type double
patenting
1–10
1–10 101 Eligibility 1–10
Overall
Outcome
1–10 1

TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
Appeal 2019-004452
Application 14/448,974

19
designated in the decision. Should the examiner reject the claims,
appellant may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under §41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.

Further guidance on responding to a new ground of rejection can be
found in the MPEP § 1214.01.
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). See 37 C.F.R.
§§ 41.50(f), 41.52(b).

AFFIRMED; 37 C.F.R. § 41.50(b)