Kaskoun, Kenneth et al.

Patent Trials and Appeals Board

Mar 6, 2020

12629383 - (D) (P.T.A.B. Mar. 6, 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.
12/629,383 12/02/2009 Kenneth Kaskoun QCOM-1775US (080909) 7726
112246 7590 03/06/2020
Loza & Loza, LLP/Qualcomm
305 N. Second Ave., #127
Upland, CA 91786
EXAMINER
WHITAKER, ANDREW B
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
03/06/2020 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):
ocpat_uspto@qualcomm.com
qualcomm-pto@lozaip.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KENNETH KASKOUN, BARRY MATSUMORI,
NICHOLAS YU and MATTHEW NOWAK
___________

Appeal 2019-000199
Application 12/629,383
Technology Center 3600
____________

Before CARL W. WHITEHEAD JR., JEFFREY S. SMITH, and
JAMES B. ARPIN, Administrative Patent Judges.

Opinion for the Board filed by
Administrative Patent Judge WHITEHEAD JR.

Opinion Concurring filed by Administrative Patent Judge ARPIN.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 is appealing the final rejection of claims 1–15, 24–29 and
31–37 under 35 U.S.C. § 134(a). Appeal Brief 2. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.
Introduction

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies QUALCOMM Incorporated, as the real party
in interest. Appeal Brief 2.
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According to Appellant, the invention is directed to “electronic
branding, and more specifically to a device located on a consumer product
that sends information regarding the product and/or the product user to a
remote receiver.” Specification ¶ 2.
Representative Claim
1. A system for wirelessly transmitting information
comprising:
a memory, separated into a plurality of memory portions,
wherein the memory is configured to establish separate writable
levels of access to each of the plurality of memory portions and
store different portions of information associated with a
consumer product to a respective memory portion according to
each writable level of access;
a controller coupled to the memory, wherein each of the
controller and the memory are located on the consumer product,
and wherein the controller is configured to selectively
determine, in accordance with different information levels of
access, which of the different portions of information associated
with the consumer product to transmit in response to an
interrogation received from a receiver separate from the
consumer product; and
a transmitter coupled to the controller and configured to
wirelessly transmit the selected portions of information to the
receiver, in accordance with each information level of access.

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References
Name2 References Date
Suila US 2002/0194303 A1 December 19, 2002
Katagishi US 2003/0120745 A1 June 26, 2003
Vock US 2003/0163287 A1 August 28, 2003
Winkler US 2008/0157931 A1 July 3, 2008
Rejections on Appeal
Claims 1–15, 24–29 and 31–37 stand rejected under 35 U.S.C. § 101
because the claimed invention is directed to patent-ineligible subject matter.
Final Action 4–6.
Claims 1–3, 5–7, 9–15, 22, 24–29, 31 and 35 stand rejected under pre-
AIA 35 U.S.C. § 103(a) as being unpatentable over Katagishi and Winkler.
Final Action 6–17.
Claims 4, 8, 36 and 37 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Katagishi, Winkler, and Suila. Final
Action 17–19.
Claims 32–34 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Katagishi, Winkler, and Vock. Final Action 19–20.
ANALYSIS
Rather than reiterate the arguments of Appellant and the Examiner,
we refer to the Appeal Brief (filed May 8, 2018), the Reply Brief (filed
October 4, 2018), the Final Action (mailed October 19, 2017) and the
Answer (mailed August 10, 2018), for the respective details.

2 All reference citations are to the first named inventor only.
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PRINCIPLES OF LAW
A. Section 101
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to
include implicit exceptions: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573
U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-part framework, described in Mayo and Alice.
Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 75–77 (2012)). In accordance with that framework, we first
determine what concept the claim is “directed to.” See Alice, 573 U.S. 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, 67 (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 waterproof cloth, vulcanizing India
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rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); 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
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 (“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 Court
also indicated that a claim “seeking patent protection for that formula in the
abstract . . . is not accorded the protection 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. (citation omitted)
(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 part
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 (quotation marks omitted). “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.
(alterations in original) (quoting Mayo, 566 U.S. at 77). “[M]erely
requir[ing] generic computer implementation[] fail[s] to transform that
abstract idea into a patent-eligible invention.” Id.
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B. USPTO Section 101 Guidance
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“2019 Revised Guidance”).3 “All USPTO personnel are, as a matter of
internal agency management, expected to follow the guidance.” Id. at 51;
see also October 2019 Update at 1.
Under the 2019 Revised Guidance and the October 2019 Update, we
first 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 (see MPEP § 2106.05(a)–(c), (e)–(h) (9th ed.
Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).4
2019 Revised Guidance, 84 Fed. Reg. at 52–55.

3 In response to received public 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”) (available at https://www.uspto.gov/sites/default/files/
documents/peg_oct_2019_update.pdf).
4 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See 2019 Revised Guidance –Section III(A)(2), 84
Fed. Reg. 54–55.
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Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
Step 2B, 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.
2019 Revised Guidance, 84 Fed. Reg. at 52–56.
35 U.S.C. § 101 Rejection
Alice/Mayo—Step 1 (Abstract Idea)
Step 2A–Prongs 1 and 2 identified in the 2019 Revised Guidance
Step 2A, Prong One (Recitation of an Abstract Idea)
The Examiner determines the claims are patent ineligible under
35 U.S.C. § 101. See Final Action 4–5. The Examiner finds:
Claims 1, 24, 27, and 28 recite, in part, a system, method, and
computer program product for establishing separate writable
levels of access, selectively determine in accordance with the
levels of access, different portions of information associated with
a consumer product to be transmitted to a separate receiver.
These steps describe the concept of an abstract idea ‘of itself,’
which corresponds to concepts identified as abstract ideas by the
courts, such as processes of collecting data, recognizing certain
data within the collected data set, and storing that recognized
data in a memory (Content Extraction) wherein “an idea ‘of
itself”’ is used to describe an idea standing alone such as an
uninstantiated [sic] concept, plan or scheme, as well as a mental
process (thinking) that “can be performed in the human mind, or
by a human using a pen and paper” [please refer to the USPTO’s
July 2015 Update to Subject Matter Eligibility, section III (C)].
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Final Action 5.
The claims employ a memory, a controller and a transmitter to
transmit consumer product information to a receiver separate from the
consumer product. See claim 1. We do not agree with the Examiner’s
determination because the claims do not recite an abstract idea exception
within the groupings of subject matter ((a) mathematical concepts, (b)
certain methods of organizing human activity, (c) mental processes)
identified in the 2019 Revised Guidance. See 2019 Revised Guidance at 52.
Therefore, we conclude the claims do not recite an abstract idea
pursuant to Step 2A, Prong One of the guidance. See Revised Guidance,
Section III(A)(1) (Prong One: Evaluate Whether the Claim Recites a
Judicial Exception). We do not sustain the Examiner’s 35 U.S.C. § 101
rejection of independent claims 1, 24, 27 and 28, all commensurate in scope,
as well as, dependent claims 2–15, 25, 26, 29, and 31–37.
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35 U.S.C. § 103 Rejection
Katagishi’s Figure 11 is reproduced below:

Figure 11 shows “the overall structure of an information receiving system
according to a fourth embodiment of the present invention.” Katagishi ¶ 46.
“A feature of Embodiment 4 is applying access control to information that
cellular phone 20 reads from RFID 10.” Katagishi ¶ 84. “In the memory 13
of RFID 10, personal information (D4) is stored in lieu of the product ID,
and access control information (D5) has been stored beforehand. Controller
14 causes the RFID to send cellular phone 20 only the items of personal
information that have been approved for transmission, based on the access
control information.” Katagishi ¶ 86.
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Katagishi’s Figure 13 is reproduced below:

Figure 13 “illustrates an example of a display shown when entering personal
information items to be stored in the RFID, some of which are set for access
control. Katagishi ¶ 48. Figure 13 “is an example of a display shown when
using RFID reader/writer 24 to enter personal information items stored in
RFID 10 of business card 1A that require access information.” Katagishi
¶ 89. “The user can set each item of personal information as accessible or
not accessible (not for sending). When the user selects Write button G8, the
personal information with access control information is stored in memory 13
of RFID 10 through RFID reader/writer 24. When the user selects Cancel
button G9, the entered information is canceled.” Katagishi ¶ 90.
Appellant contends:
Appellant notes that the disclosure in Katagashi does not
teach “a memory, separated into a plurality of memory portions,
wherein the memory is configured to establish separate
writable levels of access to each of the plurality of memory
portions and store different portions of information associated
with a consumer product to a respective memory portion
according to each writable level of access.” [ ] Katagashi
discloses that the data (product ID, personal information) is
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provided by a single entity, and thus would not use separate
writable levels of access to each of the memory portions.
Appeal Brief 23.
Appellant’s contention is echoed in the Examiner’s findings:
While Katagishi discloses the use of the controller and
access levels of information provided (Katagishi ¶26-¶27 and
¶57); Katagishi does not expressly disclose wherein the memory
is configured to establish separate writable levels of access to
each of the plurality of memory portions and store different
portions of information associated with a consumer product to a
respective memory portion according to each writable level of
access.
Final Action 8.
However, the Examiner finds Winkler addresses Katagishi’s noted
deficiency:
Winkler teaches wherein the memory is configured to
establish separate writable levels of access to each of the
plurality of memory portions and store different portions of
information associated with a consumer product to a respective
memory portion according to each writable level of access
(RFID data access, Winkler ¶10-¶12; read/write tags, ¶8;
granting access for a subset of information, ¶52; authorization
levels, ¶71-¶73; see also ¶41 and ¶46).
Final Action 8.
Appellant further contends:
Winkler does not solve the deficiencies of Katagashi, discussed
above. Appellant notes that the Final Office Action does not
explain the relevance of any of the citations, and leaves the
Appellant guessing as to which disclosure is relevant to the
presently claimed features. The Office Action first cites ¶¶0008
and 0010-12, but this portion of Winkler merely describes the
generic workings of RFID systems, using read/write tags. Next,
the Office Action cites ¶0052, which describes an access
application for the enterprise portion (i.e., the server side) of an
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Electronic Product Code Information Service (EPCIS). Again,
the relevance of this citation is lost on the Appellant. Going
further, the Office Action then cites ¶¶007l-73, which describes
how individual enterprises (e.g., supplier, distributor, retailer,
etc.) can be authorized so that their servers/computers may
access already-collected RFID data that resides in network
storage. Finally, the Office Action cites ¶¶0041 and 0046, which
describe the process of a reader reading data from an RFID tag
(¶004l), and arranging a EPCIS network interface for different
network framework levels (¶0046). None of these citations bear
any relevance whatsoever to the presently claimed features or the
disclosure in Katagashi.
Appeal Brief 24.
The Examiner further finds that Katagishi discloses, “the ability to
prestore product summary information D3 (hereinafter product summary)
in RFID 10 separately from the product information and the ability to
present the product summary to the user when the cellular phone is waiting
to obtain product information from the server.” See Answer 7 (“Katagishi
also discusses in ¶82 how the product summary can be stored differently
from product information.” (citing Katagishi ¶ 82 (3rd embodiment))).
Winkler discloses:
What EPCIS [electronic product code information service]
provides is a technical specification for a data communication
interface in a model that allows different applications to leverage
EPC-related data both within and across enterprises. In
particular, the EPCIS enables the capturing and querying of EPC-
related data using a defined set of service operations and
associated EPC-related data standards, all combined with
appropriate security mechanisms that satisfy the needs of user
enterprises. In other words, the EPCIS places no restrictions on
the different enterprises’ underlying database, underlying
operating system, underlying programming language, or
underlying information system integration.
Winkler ¶ 37 (emphasis added).
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Claim 1 simply requires a memory separated into portions wherein the
portions are configured with separate writable levels of access and a
controller configured to determine which portions, in response to a received
interrogation, to transmit. We agree with the Examiner that Katagishi
discloses in the 3rd embodiment, separating types of information and
presenting one type of information to the user while the cellular phone waits
to obtain another type of information from the server. See Answer 7 (citing
Katagishi ¶ 82). However, we do not find that this alone establishes
different writable levels of access as required by the claims.
Winkler does not address Katagishi’s deficiency because Winkler
indicates that the EPCIS does not restrict the database or underlying
information system. See Winkler ¶ 37. Furthermore, none of Winkler’s
paragraphs cited by the Examiner address Katagishi’s noted deficiency. See
Final Action 8.
Nevertheless, Katagishi discloses that the, “Controller 14 causes the
RFID to send cellular phone 20 only the items of personal information that
have been approved for transmission, based on the access control
information.” Katagishi ¶ 86 (4th embodiment). Katagishi further discloses:
The user can set each item of personal information as accessible
or not accessible (not for sending). When the user selects Write
button G8, the personal information with access control
information is stored in memory 13 of RFID 10 through RFID
reader/writer 24. When the user selects Cancel button G9, the
entered information is canceled.
Katagishi ¶ 90.
Katagishi also discloses:
Although it is possible to store only the information items set as
“accessible” in memory 13 of RFID 10, all personal information
items are stored in RFID 10 in Embodiment 4 so that the personal
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information can be provided to the person who has preset
information that unlocks the access control.
Katagishi ¶ 90.
Accordingly, we find that Katagishi discloses “wherein the memory is
configured to establish separate writable levels of access” as recited in claim
1. Further, Katagishi discloses that “In the memory 13 of RFID 10, personal
information (D4) is stored in lieu of the product ID, and access control
information (D5) has been stored beforehand.” Katagishi ¶ 86. We find that
the type of information stored in the memory is inconsequential because it
does not alter the physical structure of the memory itself and would be
considered obvious to one of ordinary skill in the art. “As our precedents
make clear, however, the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR Int’l v. Teleflex Inc., 550 U.S.
398, 418 (2007). Therefore as long as Katagishi discloses that there are
separate writable levels of access, the claim limitation reads upon
Katagishi’s teachings. Further, Appellant’s argument that, “Katagashi
discloses that the data (product ID, personal information) is provided by a
single entity, and thus would not use separate writable levels of access to
each of the memory portions” is not commensurate with the scope of claim 1
because claim 1 does not stipulate the type of entity required to establish the
claimed writable levels of access. See Appeal Brief 23.
Consequently, we find Katagishi discloses the invention recited in
claim 1 with the exception of the type of information stored to the memory
portions which we determined would have been an obvious modification to
one of ordinary skill in the technology. Accordingly, we sustain the
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Examiner’s obviousness rejection of independent claims 1, 19, 24 and 28, as
well, as dependent claims 2, 3, 6, 7, 9–15, 25, 26, 29, 31 and 35 argued
together. See Appeal Brief 25.
Appellant argues that, “Katagishi fails to disclose at least ‘wherein the
controller is configured to transmit a requested portion of the information
associated with the consumer product in response to a query from the
receiver,’ (emphasis added) as recited in dependent claim 5.” Appeal
Brief 25–26. As we stated above, Katagishi discloses that the, “Controller
14 causes the RFID to send cellular phone 20 only the items of personal
information that have been approved for transmission, based on the access
control information.” Katagishi ¶ 86 (4th embodiment). Also, as we have
determined above, the type of information is inconsequential because it does
not alter the physical structure of the memory itself and would be considered
an obvious modification to one of ordinary skill in the art. We sustain the
Examiner’s obviousness rejection of dependent claim 5.
We also sustain the Examiner’s obviousness rejections of dependent
claims 4, 8, 36 and 37 as well as, claims 32–34 because Appellant argues
that neither Suila nor Vock overcome the deficiencies of the
Katagishi/Winkler combination with respect to independent claim 1, as well
as, independent claim 32. See Appeal Brief 26. We did not find the
Katagishi/Winkler combination to be deficient.

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CONCLUSION

Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–15, 24–
29, 31–37
101 Eligibility 1–15, 24–
29, 31–37
1–3, 5–7, 9–
15, 22, 24–
29, 31, 35
103 Katagishi, Winkler 1–3, 5–7,
9–15, 22,
24–29,
31, 35

4, 8, 36, 37 103 Katagishi, Winkler,
Suila
4, 8, 36,
37

32–34 103 Katagishi, Winkler,
Vock
32–34
Overall
Outcome
1–15, 24–
29, 31–37

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.
§ 1.136(a)(1)(v).

AFFIRMED

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ARPIN, Administrative Patent Judge, concurring.
I agree with the panel’s affirmance of the obviousness rejections of
the pending claims. However, I am persuaded that the pending claims are
directed to judicial exception, i.e., a mental process, without significantly
more and, therefore, are patent ineligible. Consequently, I respectfully
disagree with the reversal of the Examiner’s patent eligibility rejection of the
pending claims, and I would also affirm the Examiner’s rejection of claims
1–15, 24–29 and 31–37 under 35 U.S.C. § 101.
1. Claim 1 recites an abstract idea.
Claim 1 is representative and broadly recites (1) storage of
information associated with a consumer product in different portions of a
memory (“a memory, separated into a plurality of memory portions, wherein
the memory is configured to establish separate writable levels of access to
each of the plurality of memory portions and store different portions of
information associated with a consumer product to a respective memory
portion according to each writable level of access”); (2) identification of a
portion of the stored information for transmission in accordance with its
access level and responsive to a received inquiry (“a controller coupled to
the memory, wherein each of the controller and the memory are located on
the consumer product, and wherein the controller is configured to selectively
determine, in accordance with different information levels of access, which
of the different portions of information associated with the consumer
product to transmit in response to an interrogation received from a receiver
separate from the consumer product”); and (3) transmission of the identified
information (“a transmitter coupled to the controller and configured to
wirelessly transmit the selected portions of information to the receiver, in
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accordance with each information level of access”). See Appeal Brief 28
(Claims App.). The Examiner finds claim 1 is “directed to the abstract idea
of establishing separate writable levels of access within a memory and
transmitting selected portions of information in accordance with the
information level of access,” and “[t]hese steps describe the concept of an
abstract idea ‘of itself,’ which corresponds to concepts identified as abstract
ideas by the courts, such as processes of collecting data, recognizing certain
data within the collected data set, and storing that recognized data in a
memory (Content Extraction).” Final Action 5. I agree.
Appellant contends that the recited system can receive information
from different sources, e.g., a user or a manufacturer; store the information
separately; and identify and selectively transmit the information based, in
part, on the storing entity. Appeal Br. 17–18. However, separate receipt,
storage, and release of information are basic to the handling and analysis of
information whether accomplished by categorizing and filing information
separately in file folder in a file cabinet or in a computer’s memory. The
Examiner found, “[u]sing a computer to deliver and receive data, and create
some output that might be characterized as being dependent on a level of
access amounts to electronic data query and retrieval – one of the most basic
functions of a computer.” Answer 5. I agree with the Examiner.
The Office explains, “claims do recite a mental process when they
contain limitations that can practically be performed in the human mind,
including for example, observations, evaluations, judgments, and opinions.”
October 2019 Update at 7. For example, the Office notes “a claim to
‘collecting information, analyzing it, and displaying certain results of the
collection and analysis,’ where the data analysis steps are recited at a high
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level of generality such that they could practically be performed in the
human mind.” Id. (quoting Electric Power Group, LLC v. Alstom, S.A., 830
F.3d 1350, 1356 (Fed. Cir. 2016)); see Final Action 2 (“Merely requiring the
selection and manipulation of information-to provide a ‘humanly
comprehensible’ amount of information useful for users, by itself does not
transform the otherwise-abstract processes of information collection and
analysis.”); see also Content Extraction & Transmission LLC v. Wells Fargo
Bank, Nat. Ass’n; 116 F.3d 1343, 1347 (Fed. Cir. 2014) (“collecting data,
. . . recognizing certain data within the collected data set, and . . . storing that
recognized data in a memory”). Further, as the Office explains:
Claims can recite a mental process even if they are claimed as
being performed on a computer. . . . The courts have found claims
requiring a generic computer or nominally reciting a generic
computer may still recite a mental process even though the claim
limitations are not performed entirely in the human mind.
October 2019 Update at 8. Therefore, I am persuaded that claim 1 recites a
mental process.
2. Claim 1 does not integrate the abstract idea into a practical
application.
I also am persuaded that claim 1 does not integrate the abstract idea
into a practical application. Claim 1 recites four components: a memory, a
controller coupled to the memory, a receiver for receiving inquiries and
providing them to the controller, and a transmitter for transmitting
information identified by the controller. Appeal Brief 28 (Claims App.).
The Specification makes clear that these are generic components performing
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known functions.5 E.g., Specification ¶¶ 26 (describing the “transmitter”),
27 (describing the “memory”), 36 (“The receiver may be a handheld device
that is capable of reading the broadcasted information. For example, the
handheld device may be a cellular telephone, a smart phone, a handheld
personal communication systems (PCS) unit, a portable data unit such as
personal data assistant, a portable music player (such as an mp3 player), a
portable game device, a point of sale device, a room monitor, GPS/position
location device, asset tracking device, meter reading device, etc.”), 63
(generally describing the “controller” and “memory”), 64 (“Examples of the
processor readable medium include an electronic circuit, a semiconductor
memory device, a ROM, a flash memory, an erasable ROM (EROM), a
floppy diskette, a compact disk CD-ROM, an optical disk, a hard disk, a
fiber optic medium, etc. The code segments may be downloaded via
computer networks such as the Internet, Intranet, etc.”).
The components, considered individually, do not link the abstract idea
to a particular machine or technology or describe an improvement to the
functioning of a computer. Final Action 3–4, 6; Answer 3–4.
Viewed as a whole, Applicant[’s] claims simply recite the
concept of data collection as performed by a generic computer.
The claims do not, for example, purport to improve the
functioning of the computer itself. Nor do they effect an
improvement in any other technology or technical field. Instead,

5 I acknowledge that some of the considerations at Step 2A, Prong Two,
properly may be evaluated under the second part of the Alice/Mayo analysis
(Step 2B of the Office guidance). See Final Action 5–6; Answer 3–4. For
purposes of maintaining consistent treatment within the Office, I evaluate
those considerations under first part of the Alice/Mayo analysis (Step 2A of
the Office guidance). See 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. at 55 nn.25, 27–32.
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the claims at issue amount to nothing significantly more than an
instruction to apply the abstract idea of collecting data using
some unspecified, generic computer.
Final Act. 3–4; see Answer 4. Thus, in view of Appellant’s claim recitations
and Specification and consistent with the Examiner’s determinations, I am
persuaded the rejected claim does not recite:
(i) an improvement to the functioning of a computer;
(ii) an improvement to another technology or technical field;
(iii) an application of the abstract idea with, or by use of, a
particular machine;
(iv) a transformation or reduction of a particular article to a
different state or thing; or
(v) other meaningful limitations beyond generally linking the
use of the abstract idea to a particular technological
environment.

See MPEP § 2106.05(a)–(c), (e)–(h); see also Final Action 3–4 (quoted
above); Answer 3–4 (“The claims do not, for example, purport to improve
the functioning of the computer itself. Nor do they effect an improvement in
any other technology or technical field.”). Thus, I conclude that the pending
claim 1 does not integrate the judicial exception into a practical application
and that the claims are directed to an abstract idea.
3. Claim 1 does not add significantly more than the abstract idea.
Because I find that claim 1 recites an abstract idea and does not
integrate that abstract idea into a practical application, I now consider
whether claim 1 includes additional limitations, such that the claim amounts
to significantly more than the abstract idea. As noted above, applying
second part of the Alice/Mayo test, the Examiner concludes:
The claim does not include additional elements that are
sufficient to amount to significantly more than the judicial
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exception because the additional elements when considered both
individually and as an ordered combination do not amount to
significantly more than the abstract idea. The claims recite the
additional limitations of a “a memory configured to,” “storing
means,” and “code” for storing or maintaining the product data,
“a controller coupled to the memory,” “means for selectively
determining” and “code” programmed to selectively determine
which of the product information to transmit, "a transmitter
coupled to the controller,” “means for wirelessly transmitting”
and “code” configured to transmit the information in accordance
with the level of access and a “receiver” separate from the
consumer product are recited at a high level of generality and are
recited as performing generic computer functions routinely used
in computer applications. Generic computer components recited
as performing generic computer functions that are well-
understood, routine and conventional activities amount to no
more than implementing the abstract idea with a computerized
system. The use of generic computer components to transmit
information through an unspecified interface such as a receiver
does not impose any meaningful limit on the computer
implementation of the abstract idea. Thus, taken alone, the
additional elements do not amount to significantly more than the
above-identified judicial exception (the abstract idea). Looking
at the limitations as an ordered combination adds nothing that is
not already present when looking at the elements taken
individually.
Final Action 5–6.
Appellant contends that the Examiner fails to demonstrate that the
additional components recited in the claims are well-understood, routine,
and conventional, as required by in Berkheimer v. HP Inc., 881 F.3d 1360
(Fed. Cir. 2018). Nevertheless, as noted above, the Specification shows the
components are well-understood, routine and conventional. Specification
¶¶ 26, 27, 36, 63, 64; see Changes in Examination Procedure Pertaining to
Subject Matter Eligibility, Recent Subject Matter Eligibility Decision
(Berkheimer v. HP., Inc.), 3–4 (Apr. 19, 2018) (The specification may
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evidence that components are well-understood, routine, and conventional.);
see also In re TLI Communications LLC Patent Litigation, 823 F.3d 607,
614 (Fed. Cir. 2016) (As specification shows, server that receives data,
extracts classification information from the received data, and stores the
digital images is insufficient to add an inventive concept.). On this record, I
agree with the Examiner that claim 1 recites generic computer components
performing generic computer functions, which, considered individually or as
an ordered combination, are well-understood, routine, and conventional; and
claim 1 does not recite “significantly more” than the identified abstract idea.
Final Action 5–6.
Appellant does not contest the patent eligibility rejection of the
remaining claims separately from claim 1. Consequently, I am not
persuaded that the Examiner erred in determining that the pending claims are
patent ineligible, and I would sustain that rejection.