INTERNATIONAL BUSINESS MACHINES CORPORATION

Patent Trials and Appeals Board

Mar 28, 2022

2021002670 (P.T.A.B. Mar. 28, 2022)

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. 14/945,471 11/19/2015 Minkyong Kim YOR920150836US1 2329 118492 7590 03/28/2022 Law Office of Jim Boice JAMES EDWARD BOICE 1816 Camas Drive Austin, TX 78728 EXAMINER WALL, VINCENT ART UNIT PAPER NUMBER 2822 NOTIFICATION DATE DELIVERY MODE 03/28/2022 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): jim@boiceip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MINKYONG KIM, JAMES R. KOZLOSKI, CLIFFORD A. PICKOVER, and MAJA VUKOVIC ____________ Appeal 2021-002670 Application 14/945,471 Technology Center 2800 ____________ Before CATHERINE Q. TIMM, MERRELL C. CASHION, JR., and SHELDON M. MCGEE, Administrative Patent Judges. CASHION, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s final decision to reject claims 1-20. We have jurisdiction under 35 U.S.C. § 6(a). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42 (2022). Appellant identifies International Business Machines Corporation as the real party in interest. Appeal Br. 2. Appeal 2021-002670 Application 14/945,471 2 The invention “relates to configuring manufacturing devices according to predicted rates of inflation.” Spec. ¶ 1. Claim 1 illustrates the invention and is reproduced below (formatting added): 1. A method for configuring a manufacturing device, the method comprising: generating, by one or more processors, a first inflation expectation value (IEV), wherein the first IEV incorporates a price of a first good; generating, by one or more processors, a second IEV that incorporates a price of a second good; comparing, by one or more processors, an accuracy of the first IEV to an accuracy of the second IEV in predicting a future inflation index; and in response to the first IEV more accurately predicting the future inflation index than the second IEV, configuring, by one or more component positioning devices, a manufacturing device that manufactures the first good based on an inflation expectation described by the first IEV. Independent claim 8 recites a computer program product for configuring a manufacturing device to perform a method of claim 1. Independent claim 15 recites a computer system (apparatus) that performs the method of claim 1. Appellant requests review of the following rejections from the Examiner’s Final Office Action (see generally Appeal Br.): I. Claims 1-20 rejected under 35 U.S.C. § 112(a) as failing to comply with the written description requirement; Appeal 2021-002670 Application 14/945,471 3 II. Claims 1-20 rejected under 35 U.S.C. § 112(b) as indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention; and III. Claims 1-20 rejected under 35 U.S.C. § 101 as directed to patent ineligible subject matter. For Rejections I and II, Appellant presents arguments only for exemplary (representative) claim 1 and relies on these arguments to address the rejections of the remaining claims under these grounds. Accordingly, we select claim 1 as representative of the subject matter claimed. For Rejections I and II, claims 2-20 stand or fall with claim 1. For Rejection III, Appellant presents arguments for independent claim 1, 4, 7, and 8, and relies on those arguments to address the rejection of the remaining claims under this ground. For Rejection III, claims 2, 3, 5, 6, and 15-20 stand or fall with claim 1. We address the additional arguments for claims 4, 7, and 8 separately. Claims 9-14 stand or fall with claim 8. OPINION REJECTIONS UNDER 35 U.S.C. § 112(a) AND (b) For these rejections, Appellant presents arguments only for exemplary (representative) claim 1 and relies on these arguments to address the rejections of the remaining claims under these grounds. See generally Appeal Br. 7-10, 11-12. We, therefore, limit our discussion to independent claim 1 with the understanding that this discussion applies to all claims rejected under these grounds. Appeal 2021-002670 Application 14/945,471 4 Rejection I (35 U.S.C. § 112(a), Lack of Written Description) After review of the respective positions provided by Appellant and the Examiner, we affirm the Examiner’s rejection of claims 1-20 under 35 U.S.C. § 112(a) for the reasons the Examiner presents, and add the following. The purpose of the written description requirement in 35 U.S.C. § 112(a) is to “clearly allow persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (quoting Vas- Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562-63 (Fed. Cir. 1991) (citation omitted)). In addition, the written description requirement of 35 U.S.C. § 112(a) applies to all claims including original claims that are part of the disclosure as filed. Ariad, 598 F.3d at 1349. As stated by the Federal Circuit, “[a]lthough many original claims will satisfy the written description requirement, certain claims may not.” Ariad, 598 F.3d at 1349; see also LizardTech, Inc. v. Earth Res. Mapping, Inc., 424 F.3d 1336, 1343-46 (Fed. Cir. 2005). The Examiner has the initial burden of presenting evidence or reasoning to explain why persons skilled in the art would not recognize in the original disclosure a description of the invention defined by the claims. See In re Wertheim, 541 F.2d 257, 263 (CCPA 1976). “[T]he test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad, 598 F.3d at 1351 (citations omitted). This test “requires an objective inquiry into the four corners of the specification from the perspective of a person of Appeal 2021-002670 Application 14/945,471 5 ordinary skill in the art.” Id. “Based on that inquiry, the specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed.” Id. The Examiner finds the original disclosure does not provide written descriptive support for the claim language describing the steps of generating a first and second inflation expectation value (IEV) and comparing the accuracy of the first IEV to the second IEV to predict a future inflation index. Final Act. 3. According to the Examiner, this claim language lacks adequate written descriptive support because it fails to comply with Manual of Patent Examining Procedure (“MPEP”) § 2161.01(I). Id. As the Examiner explains, MPEP § 2161.01(I) states Appellant must define a “finite sequence of steps for solving a logical or mathematical problem or performing a task” for a claim including an algorithm. Final Act. 2-3; Ans. 4. In the Answer, the Examiner finds claim 1 includes steps for generating or calculating first and second inflation expectation values (IEVs), for comparing the first and second IEVs to predict a future inflation index, and for predicting the first and second IEVs as well as the future inflation index. Ans. 5. The Examiner finds that algorithms are needed to arrive at the desired IEVs and future inflation index. Ans. 5, 9. The Examiner finds that the Specification and Application Figures, as originally filed, do not provide the necessary algorithms noted above. Ans. 6, 9. The Examiner finds the Specification paragraphs 44-53 and Application Figures 3 and 6 describe a relationship between the IEV and the Consumer Price Index (CPI), merely recite the claim language, or identify the initial inputs to perform the generation. Ans. 6-7. The Examiner determines, however, Appeal 2021-002670 Application 14/945,471 6 none of the disclosures Appellant relies on describe an algorithm to perform and generate/calculate an IEV or to perform the requisite comparison. Ans. 4-10. Thus, the Examiner finds that the Specification, as originally filed, fails to reasonably convey that Appellant had possession of the claimed subject matter within the meaning of the written description requirement under 35 U.S.C. § 112. Ans. 10. Appellant argues Application Figure 6 expressly tracks the algorithm described in independent claim 1. Appeal Br. 7. That is, Appellant argues Application Figure 6 provides the requisite descriptive support for the algorithm. Id. at 8-9. In addition, Appellant maintains that Application Figure 3 and its associated disclosures provide adequate written descriptive support for the finite steps for the algorithm used to calculate the IEV. Id. at 9-10. We have considered Appellant’s arguments for this rejection in full. Appeal Br. 7-10. However, we are unpersuaded of reversible error in the Examiner’s finding that the Specification, as originally filed, fails to provide adequate support for the claim language for the reasons the Examiner presents in the Answer, which we adopt as our own. Ans. 4-10. Appellant may “express [an] algorithm in any understandable terms including as a mathematical formula, in prose . . . or as a flow chart, or in any other manner that provides sufficient structure.” Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008) (internal citation omitted). However, it is not enough that one skilled in the art could write a program to achieve the claimed function because the specification must explain how the inventor intends to achieve the claimed function to satisfy the written description requirement. See, e.g., Vasudevan Software, Inc. v. Appeal 2021-002670 Application 14/945,471 7 MicroStrategy, Inc., 782 F.3d 671, 681-683 (Fed. Cir. 2015) (reversing and remanding the district court’s grant of summary judgment of invalidity for lack of adequate written description where there were genuine issues of material fact regarding “whether the specification show[ed] possession by the inventor of how accessing disparate databases is achieved”). In the first instance, Appellant misapprehends the issue the Examiner raises in the rejection. The Examiner has stated in clear terms that the Specification does not describe any algorithm that leads to the generation or calculation of the IEVs, the prediction of the IEVs/future inflation index, and the comparison of the IEVs. Ans. 4-10. The premise of Appellant’s arguments is that the portions of the Specification and Application Figures identify the sources of input useful in calculating the IEVs. However, as the Examiner explains (Ans. 10), at no point does Appellant direct us to any portion of the Specification that describes the algorithm into which the data is inputted to arrive at a particular IEV/future inflation index. Thus, Appellant’s arguments fail to address adequately the rejection the Examiner presents. After careful review of the record, we agree with the Examiner’s findings and analysis that the Specification lacks any expression of an algorithm “in any understandable terms including as a mathematical formula, in prose . . . or as a flow chart, or in any other manner that provides sufficient structure” so as to convey that Appellant had possession of the claimed subject matter within the meaning of the written description requirement under 35 U.S.C. § 112. Finisar Corp., 523 F.3d at 1340. Accordingly, we affirm the Examiner’s rejection of claims 1-20 under 35 U.S.C. § 112(a) for the reasons the Examiner presents and we give above. Appeal 2021-002670 Application 14/945,471 8 Rejection II (35 U.S.C. § 112(b), Indefiniteness) After review of the respective positions provided by Appellant and the Examiner, we affirm the Examiner’s rejection of claims 1-20 under 35 U.S.C. § 112(b) for the reasons the Examiner presents and add the following. The text of 35 U.S.C. § 112(b) requires that “[t]he specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.” “As the statutory language of ‘particular[ity]’ and ‘distinct[ness]’ indicates, claims are required to be cast in clear-as opposed to ambiguous, vague, indefinite-terms.” In re Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014). Claims comply with this requirement of 35 U.S.C. § 112 if “the claims, read in light of the specification, reasonably apprise those skilled in the art both of the utilization and scope of the invention, and if the language is as precise as the subject matter permits.” Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1385 (Fed. Cir. 1986) (citing Shatterproof Glass Corp. v. Libbey-Owens Ford Co., 758 F.2d 613, 624 (Fed. Cir. 1985)). Thus, the test for determining the question of indefiniteness may be formulated as whether the claims “set out and circumscribe a particular area with a reasonable degree of precision and particularity.” In re Moore, 439 F.2d 1232, 1235 (CCPA 1971). With regard to the reasonableness standard, one must consider the language in the context of the circumstances. Packard, 751 F.3d at 1313. Language is an imprecise method of drawing boundaries delineating patent rights, thus unreasonable precision cannot be demanded. Id. On the other hand, the Appeal 2021-002670 Application 14/945,471 9 claims must notify the public of what they are excluded from making and using. Id. For this reason, although exact precision is not required, an applicant is required to use language as precise as the subject matter reasonably permits. Id. We refer to the Examiner’s Answer for a complete statement of rejection under this ground. Ans. 10-11. For addressing this rejection, claim 1 is representative. The premise of the Examiner’s rejection is that the claims are indefinite because the Specification does not disclose an algorithm for performing the claimed functions of generating, predicting, and comparing. Ans. 10. Thus, the Examiner determines that one skilled in the art, when reading the claims in light of the Specification, would not understand the metes and bounds of the claims. Appellant relies on a line of argument similar to the one presented for Rejection I to address this ground of rejection. Appeal Br. 11-12. We have reconsidered Appellant’s arguments in full for this rejection. Appellant’s arguments fail to identify reversible error in the Examiner’s indefiniteness determination for the reasons the Examiner presents, which we adopt as our own. Ans. 10-11. As we indicate above, Appellant may “express [an] algorithm in any understandable terms including as a mathematical formula, in prose, or as a flow chart, or in any other manner that provides sufficient structure.” Finisar Corp., 523 F.3d at 1340. Appellant once more fails to direct us to any portion of the Specification that describes any expression of an algorithm “in any understandable terms including as a mathematical formula, in prose, or as a Appeal 2021-002670 Application 14/945,471 10 flow chart, or in any other manner that provides sufficient structure.” Finisar Corp., 523 F.3d at 1340. Absent this information, the ordinary artisan in the art cannot determine the metes and bounds of the claim. See Ans. 11; see also our previous discussion regarding Application Figures 3 and 6. Therefore, we agree with the Examiner that claim 1 is indefinite. Accordingly, we affirm the Examiner’s rejection of claims 1-20 under 35 U.S.C. § 112(b) for the reasons the Examiner presents and we give above. REJECTION UNDER 35 U.S.C. § 101 For this rejection, Appellant presents arguments for independent claims 1, 4, 7, and 8, and relies on those arguments to address the rejection of the remaining claims under this ground. Accordingly, we select claim 1 as representative of the subject matter claimed. We address the arguments for claims 4, 7, and 8 separately. Rejection III (35 U.S.C. § 101, Subject Matter Eligibility) After considering the argued claims relative to case law presented in this Appeal and each of Appellant’s arguments, we are not persuaded that Appellant identifies reversible error. Thus, we affirm the Examiner’s rejection under 35 U.S.C. § 101 for the reasons expressed in the Final Office Action and the Answer. We add the following primarily for emphasis. In January 2019, the U.S. Patent and Trademark Office (USPTO) published revised guidance on the application of § 101.2 We note the 2 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019 Revised Guidance”). In response to received public Appeal 2021-002670 Application 14/945,471 11 USPTO’s current eligibility guidance is found in the Ninth Edition, Revision 10.2019 (revised June 2020) of the Manual of Patent Examination Procedure and particularly within Sections 2103 through 2106.07(c). “Because the MPEP now incorporates the 2019 Revised Patent Subject Matter Eligibility Guidance (2019 PEG), October 2019 Patent Eligibility Guidance Update (October 2019 Update), and the Berkheimer Memo,3 all references to those materials should now be directed to the MPEP.” See https://www.uspto.gov/patent/laws-and-regulations/examination- policy/subject-matter-eligibility (emphasis added). We note that all references to the MPEP throughout this Decision are to the Ninth Edition, Revision 10.2019 (revised June 2020), unless otherwise indicated. We now follow the guidance the MPEP provides to analyze the claims. comments, the Office issued further guidance on October 17, 2019, clarifying the 2019 Revised Guidance. USPTO, October 2019 Update: Subject Matter Eligibility (the “October 2019 Update”). “All USPTO personnel are, as a matter of internal agency management, expected to follow the guidance.” 84 Fed. Reg. at 51; see also October 2019 Update at 1. 3 Referring to Berkheimer v. HP, Inc., 881 F.3d. 1360, 1369 (Fed. Cir. 2018). Appeal 2021-002670 Application 14/945,471 12 Claim 1 Step 1: Statutory category With respect to the first step under Alice, there is no dispute between Appellant and the Examiner that the subject matter of claim 1 falls under a statutory category, a “new and useful process, machine, manufacture, or composition of matter,” namely a process. 35 U.S.C. § 101; Final Act. 13; Appeal Br. 13; Ans. 13. Step 2A, Prong I - Does the claim recite an abstract idea (judicial exception)? Under MPEP § 2106, we next look to whether the claim recites: (1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, or mental processes) (“Step 2A, Prong One”); and (2) additional elements that integrate the judicial exception into a practical application (“Step 2A, Prong Two”).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) adds a specific limitation beyond the judicial exception that are 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 MPEP § 2106.05(d). 4 “Examiners evaluate integration into a practical application by (1) identifying whether there are any additional elements recited in the claim beyond the judicial exception(s); and (2) evaluating those additional elements individually and in combination to determine whether [the claim as a whole] integrate[s] the exception into a practical application.” MPEP § 2106.04(d). Appeal 2021-002670 Application 14/945,471 13 Appellant does not dispute the Examiner’s determination that the subject matter of claim 1 recites abstract ideas. Final Act. 7-9; Appeal Br. 13; Ans. 14. We, therefore, adopt the Examiner’s determination and analysis that claim 1 recites abstracts ideas with respect to Step 2A, Prong I as follows: 1) generating a first inflation expectation value (IEV) Based on the Specification, this step recites the abstract ideas of a mathematical concept and certain methods of organizing human activity to calculate fundamental economic activity (inflation). Ans. 14. 2) wherein the first IEV incorporates a price of a first good This step recites the abstract idea of a mathematical concept because the price of the first good is used to calculate fundamental economic activity (inflation). Id. 3) generating a second IEV that incorporates a price of a second good This step recites the abstract ideas of a mathematical concept and certain methods of organizing human activity to calculate fundamental economic activity (inflation). Id. 4) comparing an accuracy of the first IEV to an accuracy of the second IEV in predicting a future inflation index This step recites the abstract ideas of a mathematical concept, certain methods of organizing human activity, and a mental process to calculate fundamental economic activity (inflation). Id. at 15. 5) in response to the first IEV more accurately predicting the future inflation index than the second IEV, configuring, based on an inflation expectation described by the first IEV. Appeal 2021-002670 Application 14/945,471 14 This step recites the abstract idea of certain methods of organizing human activity to calculate fundamental economic activity (inflation). Id. Therefore, based on the Examiner’s uncontested analysis, we conclude that claim 1 recites abstract ideas. In this case, claim 1 recites the abstract ideas of a mathematical concept, certain methods of organizing human activity, and a mental process. Step 2A, Prong 2-Does the claim recite additional elements that integrate the abstract idea (judicial exception) into a practical application Having determined that the subject matter of claim 1 recites an abstract idea, we now consider whether the claim as a whole integrates the recited judicial exception into a practical application of the exception.5 MPEP § 2106.04(d)(2). We follow the MPEP to analyze independent claim 1 to determine if the claims recite additional elements that integrate the judicial exception into a practical application (Step 2A, prong 2). The Examiner finds claim 1 recites the following additional elements: (1) one or more processors, (2) one or more component positioning devices, and (3) a manufacturing device. Ans. 16. For Step 2A, Prong 2, the Examiner followed the guidance now in MPEP § 2106.04(d)(I) which identifies a number of considerations to evaluate and weigh with respect to the additional elements integrating the abstract idea into a practical application. Ans. 16-23. We address these 5 In accordance with caselaw and Office Guidance, we evaluate some of these considerations under Step 2 of Alice (Step 2B of Office Guidance) as well as under Step 1 of Alice (Step 2A of Office Guidance). Appeal 2021-002670 Application 14/945,471 15 considerations in the order the Examiner lists.6 1. An improvement in the functioning of a computer, or an improvement to other technology or technical field, as discussed in MPEP §§ 2106.04(d)(1) and 2106.05(a) (1) one or more processors The Supreme Court has held that “simply implementing [an abstract idea] on a physical machine, namely a computer, [is] not a patentable application of that principle.” Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 86 (2012). Put another way, “the mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention.” Alice, 573 U.S. at 222-23. The Specification describes the processors broadly as part of “a general purpose computer, special purpose computer, or other programmable data processing apparatus.” Spec. ¶ 18. The Examiner finds this element does not integrate the abstract idea into a practical application because “merely using a computer, e.g.[,] a processor, to perform the abstract idea is not sufficient to be a particular machine.” Ans. 17. In addition, there is no indication that this element improves other technology or technical field. 6 We do not address the consideration related to the application or use of a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition, as discussed in MPEP § 2106.04(d)(2). Both the Examiner and Appellant agree that this consideration is not relevant for the purposes of resolving the issue of patent eligibility for the claims of this Application. Final Act. 10; Appeal Br. 16. Appeal 2021-002670 Application 14/945,471 16 (2) one or more component positioning devices The Specification describes the positioning devices broadly as “positioning devices [to] configure the manufacturing device to produce the first good.” Spec. ¶ 3. Although the Specification recites a robotic arm as an example of a positioning device that “physically maneuvers, repositions, and otherwise adjusts the physical configuration of the physical components used by the robotic manufacturing device 251,” (id. ¶ 36), the Specification mostly refers to the position devices at a high level of generality (see for example id. ¶¶ 2, 3, 58, 60). There is no indication that this element improves the functioning of a computer or improves other technology or technical field. (3) a manufacturing device The Specification describes manufacturing devices broadly as devices that “are configurable under the control and direction of a computer.” Spec. ¶ 30. Although the Specification recites a robotic arm machine and a computer numerical control device as examples of a manufacturing devices, the Specification also discloses that “other manufacturing devices can also be configured accordingly.” Id. ¶ 30. Thus, the Specification mostly refers to manufacturing devices at a high level of generality. Although the Specification describes increases in production based on consumer expectations on inflation as improving the functionality of the manufacturing device, the increase in production is not due to some enhancement to the manufacturing device, but only to the speed at which it operates. Spec. ¶ 38. There is no persuasive evidence that the manufacturing device is operating outside of its conventional production speeds. Because this ability to increase production exists generally in manufacturing devices, there is no Appeal 2021-002670 Application 14/945,471 17 indication that this element improves the functioning of a computer or improves other technology or technical field. Appellant presents no arguments with respect to additional elements (1) and (2). See generally Appeal Br. Therefore, Appellant concedes that the processors and positioning devices do not integrate the abstract idea into a practical application. With respect to additional element (3) (manufacturing device), Appellant argues a manufacturing device is a particular machine that (1) manufactures the first good and (2) is configured based on the inflation expectation described by the first IEV. Appeal Br. 15. Thus, Appellant contends this is sufficient for exemplary Claim 1 to be statutory. Appellant’s arguments do not point to reversible error in the Examiner’s determination. We understand Appellant’s argument to be that the abstract idea provides an improvement to other technology or technical field. The claimed invention uses the abstract idea to generate a parameter, a first inflation expectation value (IEV), to direct a conventional and generic manufacturing device to perform the well-understood, routine, and conventional manufacturing functions to make a particular good. That is, the manufacturing device is merely a tool to perform an existing process regardless of whether production requirements are increased or decreased. See, e.g., Versata Development Group v. SAP Am. Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) (explaining that in order for a machine to add significantly more, it must “play a significant part in permitting the claimed method to be performed, rather than function solely as an obvious mechanism for permitting a solution to be achieved more quickly”). Appeal 2021-002670 Application 14/945,471 18 Appellant’s arguments fail to direct us to any portion of the Specification that identifies a technical problem and explains the details of an unconventional technical solution expressed in the claim, or identifies technical improvements realized by the claim over the prior art. See MPEP §§ 2106.04(d)(1), 2106.05(a). 2. Implementing a judicial exception with, or using a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim, as discussed in MPEP § 2106.05(b) “The particularity or generality of the elements of the machine or apparatus, i.e., the degree to which the machine in the claim can be specifically identified (not any and all machines).” MPEP § 2106.05(b)(I). Integral use of a machine to achieve performance of a method may integrate the recited judicial exception into a practical application or provide significantly more, in contrast to where the machine is merely an object on which the method operates, which does not integrate the exception into a practical application or provide significantly more. See CyberSource v. Retail Decisions, 654 F.3d 1366, 1370[] (Fed. Cir. 2011) (“We are not persuaded by the appellant’s argument that the claimed method is tied to a particular machine because it ‘would not be necessary or possible without the Internet.’ . . . Regardless of whether ‘the Internet’ can be viewed as a machine, it is clear that the Internet cannot perform the fraud detection steps of the claimed method.”). Id. § 2106.05(b)(II). The Examiner finds additional elements (1) and (3) are not particular machines because they are claimed at a high level of generality. Ans. 18 (“There are no specifics with either of the elements.”). Additional element (2) also lacks specificity. We refer to our discussion above in support of the Examiner’s assertion. Appeal 2021-002670 Application 14/945,471 19 Appellant presents no arguments with respect to additional elements (1) and (2). See generally Appeal Br. Therefore, Appellant again concedes that the processors and positioning devices do not integrate the abstract idea into a practical application. With respect to additional element (3) (manufacturing device), Appellant argues the claimed manufacturing device is a particular machine because, by the machine being limited to a manufacturing device, it is not any and all machines that are configured. Appeal Br. 16. Appellant further contends that the claimed manufacturing device is a particular machine because it manufactures the first good and is configured based on an inflation expectation. Id. Appellant’s arguments do not point to reversible error in the Examiner’s determination. As we note above, the Specification describes the manufacturing device broadly as devices that “are configurable under the control and direction of a computer.” Spec. ¶ 30. Although the Specification recites a robotic arm machine and a computer numerical control device as examples of a manufacturing devices, the Specification also discloses that “other manufacturing devices can also be configured accordingly.” Id. ¶ 30. Thus, contrary to Appellant’s arguments, the Specification mostly refers to the manufacturing devices at a high level of generality that encompasses any and all manufacturing devices without limiting it to the noted exemplary machines. Moreover, the machine is “merely an object on which the method operates, which does not integrate the exception into a practical application or provide significantly more.” See CyberSource, 654 F.3d at 1370. Appeal 2021-002670 Application 14/945,471 20 3. Effecting a transformation or reduction of a particular article to a different state or thing, as discussed in MPEP § 2106.05(c) The Supreme Court has held that inventions comprising processes of “‘tanning, dyeing, making waterproof cloth, vulcanizing India rubber [or] smelting ores’ . . . are instances . . . where the use of chemical substances or physical acts, such as temperature control, changes articles or materials [in such a manner that is] sufficiently definite to confine the patent monopoly within rather definite bounds.” Gottschalk v. Benson, 409 U.S. 63, 69 (1972) (discussing Corning v. Burden, 56 U.S. 252, 267-68 (1853)). Therefore, a more particular transformation would likely provide better evidence that the additional elements integrate the abstract idea (judicial exception) into a practical application. MPEP § 2106.05(c). The Examiner finds there is no particular transformation as no item is being reduced to a different state or thing by the abstract idea. Ans. 19. Appellant argues the manufacturing device expressly manufactures the first good by transforming a particular article (e.g., feedstock) into a different state (i.e., the first good). Appeal Br. 16. Appellant’s arguments lack persuasive merit. We first note that the particular transformation Appellant refers to (transforming feedstock to a good) is associated with an existing process of making a good. As we note above, the manufacturing device is merely a tool to perform an existing process regardless of whether production requirements are increased or decreased. See, e.g., Versata Development Group, 793 F.3d at 1306. That is, this transformation is a generic transformation “applied to a generically recited article or to any and all articles” made. MPEP § 2106.05(c). Appellant does not direct us to any Appeal 2021-002670 Application 14/945,471 21 portion of the Specification that discloses how the abstract idea itself effects a transformation or reduction of a particular article to a different state or thing. Appellant further fails to explain how the abstract idea itself impacts this generic transformation. We note that increasing or decreasing production is not a transformation because the process for making the good remains the same regardless of the production requirement. Thus, this generic transformation “contributes only nominally or insignificantly to the execution of the claimed method (e.g., in a data gathering step or in a field- of-use limitation).” Id. 4. Merely reciting 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 using a computer as a tool to perform an abstract idea, as discussed in MPEP § 2106.05(f) The Supreme Court held that the additional element or combination of elements must do “‘more than simply stat[e] the [judicial exception] while adding the words ‘apply it’”. Alice, 573 U.S. at 221 (quoting Mayo, 566 U.S. at 72). Moreover, the use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more. See Affinity Labs v. DirecTV, 838 F.3d 1253, 1262 (Fed. Cir. 2016) (cellular telephone); TLI Communications LLC v. AV Auto, LLC, 823 F.3d 607, 613 (Fed. Cir. 2016) (computer server and telephone unit). Similarly, “claiming the improved speed or efficiency inherent with applying the abstract idea on a computer” Appeal 2021-002670 Application 14/945,471 22 does not integrate a judicial exception into a practical application or provide an inventive concept. Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367 (Fed. Cir. 2015). The Examiner finds Appellant merely used the terms generating, comparing, and predicting when performing the method on the processor and does not claim how these functions are to be performed. Ans. 20. The Examiner also finds Appellant only uses the term “configuring” with respect to the manufacturing device that appears to be the use of other machinery in its ordinary capacity for economic or other tasks. Ans. 20. Appellant argues claim 1 does not merely implement an abstract idea on a computer but, instead, configures a specific type of manufacturing device. Appeal Br. 17. Appellant’s argument does not persuade us of reversible error. As the Examiner finds, the claimed invention uses a computer and manufacturing device in their ordinary capacity. Although Appellant contends that the claimed invention configures a manufacturing device, this step merely increases or decreases the production requirement of the manufacturing device. As we note above, manipulation of the production requirement is not sufficient to establish that the additional elements that integrate the abstract idea (judicial exception) into a practical application. 5. Adding insignificant extra-solution activity to the judicial exception, as discussed in MPEP § 2106.05(g) “The term ‘extra-solution activity’ can be understood as activities incidental to the primary process or product that are merely a nominal or tangential addition to the claim. Extra-solution activity includes both pre- solution and post-solution activity.” MPEP § 2106.05(g). Appeal 2021-002670 Application 14/945,471 23 The Examiner finds the manufacturing device is an insignificant extra solution activity because the manufacturing device appears to be an insufficient application of the abstract idea. Ans. 21. Appellant argues the invention is expressly directed to configuring a manufacturing device, based on the most accurate inflation predication (“in response to the first IEV more accurately predicting the future inflation index than the second IEV, configuring, by one or more component positioning devices, a manufacturing device that manufactures the first good based on an inflation expectation described by the first IEV”). Appeal Br. 18. Appellant contends that this improves the manufacturing device such that it is able to produce appropriate products in the future, rather than an insignificant application of inflation predictions. Id. Appellant’s arguments do not identify reversible error in the Examiner’s determination. The claimed method recites a number of steps that merely gather data for analysis to arrive at predicted IEVs and future inflation index. See Spec. ¶¶ 44-53; Application Figure 3. The resulting predicted IEVs and future inflation index is then used to configure the manufacturing device to increase or decrease the production requirement. According to the Specification, the manufacturing device is configurable under the control and direction of a computer. Spec. ¶ 30. The Specification discloses that this is accomplished through a “Manufacturing Device Configuration Logic” (MDCL) located in the computer, which includes code for implementing the processes described in the Specification with respect to the manufacturing device. Id. ¶ 28. Therefore, the predicted IEV/future inflation index resulting from the claimed method is an input for another equation (in the Appeal 2021-002670 Application 14/945,471 24 MDCL code). As a result, we agree the claim is directed to merely data gathering to obtain input for an equation and, thus, amount to no more than an insignificant extra solution activity. Cf. In re Grams, 888 F.2d 835, 839- 40 (Fed. Cir. 1989). Thus, we agree with the Examiner that the application of the resulting IEV to the manufacturing device is an insignificant extra-solution activity. 6. Generally linking the use of a judicial exception to a particular technological environment or field of use, as discussed in MPEP § 2106.05(h) 7. 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, as discussed in MPEP § 2106.05(e). The Examiner addresses these considerations together. Ans. 22. For consistency, we do so likewise but we enumerate them separately for clarity in our discussion. The Federal Circuit is clear that “[t]he abstract idea itself cannot supply the inventive concept, no matter how groundbreaking the advance.” Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1084, 1093 (Fed. Cir. 2019) (quotation omitted). Moreover, a patent-ineligible abstract idea of a mathematical formula is not transformed into a patent-eligible invention by “limiting the use of an abstract idea ‘to a particular technological environment.”’ Alice, 573 U.S. at 223, (quoting Bilski v. Kappos, 561 U.S. 593, 610-11 (2010)). With respect to consideration 6, the Examiner finds that “[t]he additional elements either generally link the use of abstract idea to a Appeal 2021-002670 Application 14/945,471 25 particular technology or they do not.” Ans. 22. The Examiner further finds that claim 1 “merely limit[s] the use of the abstract idea to a particular technological environment, manufacturing devices,” and not “to a particular type of processes such as the practical application of molding/vulcanizing rubber.” Ans 22 (citing to Intellectual Ventures, v. Capital One Bank (USA), 792 F.3d at 1367 and Diehr, 450 U.S. 175). Therefore, the Examiner determines that the additional elements link generally the use of a judicial exception to a particular technological environment or field of use (consideration 6) and, thus, claim 1 does not integrate the judicial exception into a practical application. Ans. 22; see MPEP § 2106.05(h). Regarding consideration 7, the Examiner finds claim 1 provides no meaningful limitation to the manufacturing device. Ans. 22. Therefore, the Examiner further determines that application of the judicial exception in claim 1 is not 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. Ans. 22. Thus, the Examiner concludes that the additional elements do not integrate the judicial exception into a practical application. Ans. 22. Appellant argues that the Examiner’s assertion regarding consideration 6 is an admission that claim 1 “limit[s] the use of the abstract idea to a particular technological environment, manufacturing devices.” Appeal Br. 16. Thus, Appellant contends that claim 1 is statutory under MPEP § 2106.05(e). Id. With respect to consideration 7, Appellant argues using calculations to determine how to operate a manufacturing device (e.g., a molding machine) is more than a mere general application to a field of use. Appeal Br. 19. Appellant asserts the calculations expressly controls the Appeal 2021-002670 Application 14/945,471 26 operation of a manufacturing device, based on inflation prediction calculations, in a manner similar to Diehr. Appeal Br. 19. Appellant’s arguments do not persuade us of reversible error in the Examiner’s determination. Appellant’s argument for consideration 6 misapprehends the Examiner’s analysis, which concludes that the claim only generally links the use of a judicial exception to a particular technological environment or field of use. Ans. 22. The argument does not address adequately the Examiner’s analysis. With respect to consideration 7, Appellant’s reliance on Diehr to support a determination that claim 1 recites statutory subject matter is misplaced. Diehr involved a modification of conventional rubber-molding processes to utilize a thermocouple inside the mold to constantly monitor the temperature and thus reduce under- and over-curing problems common in the art. Diamond v. Diehr, 450 U.S. 175, 191-92 (1981). In this case, the thermocouple measured a process operation parameter that directly impacted the quality of the good produced. Here, unlike Diehr, the claimed calculation of a predicted inflation (IEVs, future inflation index) is used to set a goods production requirement for a manufacturing device. Spec. ¶¶ 37-39. This parameter is not directly or indirectly tied to the actual process for making the goods or the quality of the goods produced. Nor do the inflation prediction calculations expressly control the operation of a manufacturing device. Therefore, Appellant’s arguments fail to explain adequately why the judicial exception is applied or used in some other meaningful way beyond Appeal 2021-002670 Application 14/945,471 27 generally linking the use of the judicial exception to a particular technological environment. Thus, after reviewing the relevant considerations identified above, we agree with the Examiner’s determination that the additional elements recited in claim 1 do not integrate the abstract idea (judicial exception) into a practical application. Step 2B - Does the claim recite additional elements that amount to significantly more than the judicial exception We now turn to Step 2B to consider if there is an inventive concept that is sufficient to ensure that the claimed subject matter amounts to significantly more than the patent-ineligible concept. MPEP § 2106.05. The Examiner finds there are two additional elements: (1) one or more processors; and (2) one or more component positioning devices, a manufacturing device that manufactures the first good. Ans. 24. With respect to the claimed one or more processors, the Examiner finds the courts have found that a generic computer, e.g., a generic processor, cannot be considered as a significantly more additional element. MPEP § 2106.05(citing Alice). Ans. 24. Appellant does not dispute that the claimed processors are well-understood, routine, and/or conventional. See generally Appeal Br. 24-25; see also Spec. ¶¶ 18, 101. Concerning the component positioning devices and the manufacturing device, the Examiner finds using machinery in its ordinary capacity for economic or other tasks does not provide significantly more. Ans. 24-25 (citing Affinity Labs, 838 F.3d at 1262 and TLI Communications LLC v. AV Auto, LLC, 823 F.3d 607, 613 (Fed. Cir. 2016)). Appellant argues the court cases the Examiner relies upon to establish Appeal 2021-002670 Application 14/945,471 28 that the additional elements recited in claim 1 do not amount to significantly more than the judicial exception fail to describe elements that are similar in concept to the present invention. Appeal Br. 23. Appellant contends that Affinity Labs claims streaming regional broadcast signals to cellular telephones located outside the region served by the regional broadcaster while TLI Communications claims a method for recording and transmitting digital images. Appeal Br. 24. Appellant asserts that neither case describes the types of additional elements claimed to meet the requirement of Step 2B of Mayo according to the Berkheimer Memo. Id. Appellant’s arguments do not identify error in the Examiner’s determination of obviousness. Appellant’s argument does not address the proposition for which the Examiner cites Affinity Labs and TLI Communications, i.e., for the proposition that “the use machinery in its ordinary capacity for economic or other tasks does not provide significantly more.” As stated in Affinity, “[i]n this case, the claims are directed not to an improvement in cellular telephones but simply to the use of cellular telephones as tools in the aid of a process focused on an abstract idea. That is not enough to constitute patentable subject matter.” Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1262 (Fed. Cir. 2016). Likewise, Appellant’s claims are directed not to an improvement in component positioning devices, but simply to the use of component positioning devices as tools in the aid of a process focused on an abstract idea, i.e., the abstract idea of basing the speed of a production run on an inflation expectation. Although the specific machinery may be different, the proposition still stands. Thus, Appellant has not identified a reversible error in the Examiner’s Appeal 2021-002670 Application 14/945,471 29 Step 2B analysis. In sum, whether the additional elements are considered individually or in ordered combination, claim 1 fails to recite an inventive concept beyond the abstract idea. Claim 4 Claim 4 depends from claim 1 and further requires a step of “adjusting, by the one or more component positioning devices, a feedstock supply mechanism to provide additional feedstock required to manufacture an increased quantity of the first good by the manufacturing device” that occurs “in response to the first IEV predicting an increase in inflation.” We refer to the Examiner’s Answer for the statement of the rejection of this claim. Ans. 27-28. Appellant contends that claim 4 recites statutory subject matter because, like claim 2 of Example 46 from Appendix 1 to the USPTO October 2019 Eligibility Guidelines, the invention adjusts feed/feedstock based on a determination. Appeal Br. 25-26. Appellant’s argument is unpersuasive. We agree with the Examiner that Example 46 is not controlling. Ans. 27. First, Office Guidance “cannot modify or supplant the Supreme Court's law regarding patent eligibility.” In re Rudy, 956 F.3d 1379, 1383 (Fed. Cir. 2020). Second, even the Office Guidance treats the examples as non-controlling. The Appendix incorporating this example includes a qualifying statement stating that [t]he examples below are hypothetical and only intended to be illustrative of the claim analysis under the 2019 PEG, and of the particular issues noted below in the Issue Spotting Chart. These examples should be interpreted based on the fact patterns set Appeal 2021-002670 Application 14/945,471 30 forth below as other fact patterns may have different eligibility outcomes. App. 1. Therefore, the Examples in the Appendix are merely illustrative of specific issues normally found in the evaluation of the patent eligibility of a claimed subject matter and not binding. Also, there are important differences between Example 46 and the facts of the present case. Particularly, here, the Examiner relies on evidence showing what is well- understood, routine, and conventional activities in the art. Ans. 27-28. Appellant also argues that the evidence the Examiner relies upon to show a feedstock supply as well-understood, routine, conventional is insufficient because the evidence is not related to providing additional feedstock required to manufacture an increased quantity of a good in response to a prediction of an increase in inflation. Appeal Br. 27. Additional element(s) are well-understood, routine, conventional activities previously known to the industry. MPEP § 2106.05(d). As the Examiner explains, and Appellant does not dispute, the evidence relied upon shows the feedstock supply is a well-understood, routine, conventional activity. Ans. 28. Also, unlike Example 46, the step of adjusting in response to the first IEV predicting an increase in inflation does not require that adjusting occur automatically by the computer, it could be done manually. Thus, the additional element recited in claim 4, considered individually or in an ordered combination with the other additional elements of claim 1, fails to recite an inventive concept beyond the abstract idea. Claim 7 Claim 7 depends from claim 1, requires the manufacturing device be a Appeal 2021-002670 Application 14/945,471 31 robotic manufacturing device that utilizes a molding device, and recites a step of “configuring, by the one or more component positioning devices, the molding device to produce an increased quantity of the first good” that occurs “in response to the first IEV predicting an increase in inflation.” We refer to the Examiner’s Answer for the statement of the rejection of this claim. Ans. 28-29. Appellant does not dispute that molding devices are well-understood, routine, conventional. Appeal Br. 28. Instead, Appellant again argues the use of a formula to modify a well-known device, such as a molding machine, would be unpatentable under 35 U.S.C. § 101 is contrary to the holding of Diehr. Id. Appellant’s argument does not identify reversible error in the Examiner’s determination. We refer to our previous discussion with respect to this argument. As we note above, unlike Diehr, the claimed calculation of a predicted inflation (IEVs, future inflation index) is used to set a goods production requirement for a manufacturing device. Spec. ¶¶ 37-39. This calculated parameter is not directly or indirectly tied to the actual process for making the goods or the quality of the goods produced, as in the case of Diehr. Thus, the additional element recited in claim 7, considered individually or in an ordered combination with the other additional elements of claim 1, fails to recite an inventive concept beyond the abstract idea. Appeal 2021-002670 Application 14/945,471 32 Claim 8 Claim 8 recites a computer program product for configuring a manufacturing device comprising a non-transitory computer readable storage medium having program code embodied therewith, the program code readable and executable by one or more processors to perform the method of claim 1. We refer to the Examiner’s Answer for a complete statement of the rejection of this claim. Ans. 29. Appellant argues claim 8 includes the express limitation of “configuring the manufacturing device adjusts a quantity of the first good being produced by the manufacturing device.” Appeal Br. 29. Appellant contends that the Examiner fails to consider the use of a best predicted future inflation index as a condition for configuring a manufacturing device as a feature that amounts to significantly more than the judicial exception. Id. Appellant’s argument lacks persuasive merit. As the Examiner notes, the argued limitation adds to the abstract idea. An inventive concept “cannot be furnished by the unpatentable law of nature (or natural phenomenon or abstract idea) itself.” Genetic Techs. v. Merial LLC, 818 F.3d 1369, 1376 (Fed. Cir. 2016). Thus, claim 8 fails to recite an inventive concept beyond the abstract idea. Accordingly, we affirm the Examiner’s rejection of claims 1-20 under 35 U.S.C. § 101 for the reasons the Examiner presents and we give above. Appeal 2021-002670 Application 14/945,471 33 CONCLUSION The Examiner’s rejections of claims 1-20 under 35 U.S.C. §§ 112(a), 112(b), and 101 are affirmed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-20 112 Written Description 1-20 1-20 112 Indefiniteness 1-20 1-20 101 Eligibility 1-20 Overall Outcome 1-20 TIME PERIOD FOR 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) (2022). See 37 C.F.R. § 1.136(a) (2022). AFFIRMED