Kouno, Yoshihiro et al.

Patent Trials and Appeals Board

Apr 13, 2020

13578901 - (D) (P.T.A.B. Apr. 13, 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.
13/578,901 10/09/2012 Yoshihiro Kouno Q141876 3053
65565 7590 04/13/2020
SUGHRUE-265550
2000 PENNSYLVANIA AVE. NW
SUITE 900
WASHINGTON, DC 20006
EXAMINER
NIMOX, RAYMOND LONDALE
ART UNIT PAPER NUMBER
2864
NOTIFICATION DATE DELIVERY MODE
04/13/2020 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):
PPROCESSING@SUGHRUE.COM
SUGHRUE265550@SUGHRUE.COM
USPTO@sughrue.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YOSHIHIRO KOUNO, KIMIHIRO SATOU,
SUMIO HORI, and KOHTA OHISHI
Appeal 2019-000702
Application 13/578,901
Technology Center 2800
Before JEAN R. HOMERE, CARL W. WHITEHEAD JR., and
MICHAEL J. STRAUSS, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–6. See Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).

1 We refer to the Specification, filed August 14, 2012; Final Office Action,
mailed January 11, 2018 (“Final Act.”); Appeal Brief, filed July 5, 2018
(“Appeal Br.”); and Examiner’s Answer, August 28, 2018 (“Ans.”); and the
Reply Brief, filed October 26, 2018. Oral argument was held on March 24,
2020. A copy of the transcript will be added to the record in due course.
2 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Yazaki Corporation.
Appeal Br. 2.
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We AFFIRM.
CLAIMED SUBJECT MATTER
The claims are directed to a wire harness continuity inspection method
and program. Spec., Title. Claim 1, reproduced below with claim element
labels added in brackets and additional elements beyond the judicial
exceptions emphasized in italics, is illustrative of the claimed subject matter:
1. A wire harness continuity inspection method comprising:
[(i)] retrieving from a memory by a processor a first
specification allocated to a first partitioned area partitioning a
vehicle space, a second specification allocated to a second
partitioned area partitioning the vehicle space and a third
specification allocated to a third partitioned area partitioning the
vehicle space, wherein the first, the second and the third
specifications respectively indicate different systems of the
vehicle, the different systems of the vehicle including at least one
of a head lamp system, an airbag system, an air-conditioning
system, an engine control system, or an antilock brake system
and;
[(ii)] comparing by the processor the first specification
with the second specification and determining a presence or
absence of a shared specification, wherein the determination of
the presence of a shared specification indicates that there is at
least one electric wire that connects electrical components
disposed in the first partitioned area partitioning the vehicle
space and the second partitioned area partitioning the vehicle
space;
[(iii)] comparing by the processor the second specification
with the third specification and determining a presence or
absence of a shared specification, wherein the determination of
the presence of a shared specification indicates that there is at
least one electric wire that connects electrical components
disposed in the second partitioned area partitioning the vehicle
space and the third partitioned area partitioning the vehicle
space;
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[(iv)] determining by the processor the presence of one or
more shared specifications between a first wire harness from one
of the different system of the vehicle arrangeable in the first
partitioned area partitioning the vehicle space and a second wire
harness from one of the different systems of the vehicle
arrangeable in the second partitioned area partitioning the vehicle
space, wherein the determination of the presence of one or more
shared specifications between the first wire harness and the
second wire harness indicates that there is at least one electric
wire that connects electrical components disposed in the first
partitioned area partitioning the vehicle space and electrical
components disposed in the second partitioned area partitioning
the vehicle space, and creating a first region-based connector-
wiring information for only the one or more shared specifications
between the first wire harness and the second wire harness;
[(v)] determining by the processor the presence of one or
more shared specifications between a second wire harness from
one of the different system of the vehicle arrangeable in the
second partitioned area partitioning the vehicle space and a third
wire harness from one of the different system of the vehicle
arrangeable in the third partitioned area partitioning the vehicle
space, wherein the determination of the presence of one or more
shared specifications between the second wire harness and the
third wire harness indicates that there is at least one electric wire
that connects electrical components disposed in the second
partitioned area partitioning the vehicle space and electrical
components disposed in the third partitioned area partitioning the
vehicle space, and creating a second region-based connector-
wiring information for only the one or more shared specifications
between the second wire harness and the third wire harness,
[(vi)] automatically determining by the processor the
presence or absence of an error in a connection of electric wires
in only the created first region-based connector-wiring
information, which only includes the one or more shared
specifications of the different systems of the vehicle identified as
having a shared specification between the first partitioned area
partitioning the vehicle space and the second partitioned area
partitioning the vehicle space and the created second region-
based connector-wiring information, which only includes the one
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or more shared specifications of the different systems of the
vehicle identified as having a shared specification between the
second partitioned area partitioning the vehicle space and the
third partitioned area partitioning the vehicle space,
[(vii)] in response to determining that an error is present in
the connection of electric wires in only the created first region-
based connector-wiring information and only the created second
region-based connector-wiring information, indicating that a
starting point and a terminating point of a circuit line connecting
electrical components in only the created first region-based
connector-wiring information and only the created second
region-based connector-wiring information are not in
correspondence;
[(viii)] in response to determining that an error is absent in
the connection of electric wires in only the created first region-
based connector-wiring information and only the created second
region-based connector-wiring information, generating a wiring
diagram.
REJECTIONS
Claim 5 stands rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement. Final Act. 8.
Claims 1–4 and 6 stand are rejected under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter. Id. at 8–16.

WRITTEN DESCRIPTION REJECTION UNDER
35 U.S.C. § 112, FIRST PARAGRAPH
Claim 5, added by the Amendment filed June 26, 2017, reads as
follows:
5. The wire harness continuity inspection method according to
claim 1, wherein the method further comprises manufacturing a
tangible wire harness arrangeable in the vehicle based on the
generated wiring diagram.
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The Examiner finds the Specification as originally filed, including
portions specifically referenced by Appellant in response to the rejection,3
fails to describe a manufacturing step commensurate in scope with the claim.
Final Act. 8. In particular, the Examiner finds “[t]he claim contains subject
matter which was not described in the specification in such a way as to
reasonably convey to one skilled in the relevant art that the inventor, at the
time the application was filed, had possession of the claimed invention.” Id.
Appellant contends “while the present application does not explicitly
use the word ‘manufacturing’ [as recited by claim 5], Applicant respectfully
submits that a person of ordinary skill in the art would readily appreciate that
the ‘manufacturing of a tangible wire harness’ was contemplated.” Appeal
Br. 15. Appellant argues
the specification as filed explicitly discloses that the “the wire
harness continuity inspection method” is for the design of a wire
harness arrangeable in a vehicle, [such that] one of ordinary skill
in the relevant art would readily understand that the claim 5
feature of “manufacturing [the] tangible wire harness” is
necessarily inherently disclosed in the specification.
Id. (citing Spec. ¶¶ 1, 2) (first bracketed text added, second bracketing in
original).
The Examiner responds, finding “[t]he specification and claims are
directed to a method and program to inspect the continuity of a wire harness
and generating an output (diagram) based on the analyzed data” without any
disclosure of manufacturing a tangible wire harness. Ans. 18.
Appellant’s argument is unpersuasive of reversible Examiner error.
Compliance with the written description requirement is a question of fact

3 Spec. ¶¶ 1, 2 (Appeal Br. 14–15).
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that is context-sensitive. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d
1336, 1351 (Fed. Cir. 2010) (en banc) (“[T]he level of detail required to
satisfy the written description requirement varies depending on the nature
and scope of the claims and on the complexity and predictability of the
relevant technology.”). To fulfill the written description requirement, the
application as filed “must clearly allow persons of ordinary skill in the art to
recognize that [the inventor] invented what is claimed.” Gentry Gallery,
Inc. v. Berkline Corp., 134 F.3d 1473, 1479 (Fed. Cir. 1998) (internal
citation and quotation omitted). A description that merely renders the
invention obvious does not satisfy the written description requirement.
Ariad, 598 F.3d at 1352. When an applicant amends a claim “in such a way
as to justify an assertion that it is directed to a different invention than was
the original claim, it is proper to inquire whether the newly claimed subject
matter was described in the patent application when filed as the invention of
the applicant.” In re Wright, 866 F.2d 422, 424 (Fed. Cir. 1989).
Appellant’s Specification is silent with respect to manufacturing a
tangible wire harness, neither mentioning manufacturing nor providing any
details about how such a wire harness would be fabricated. Although
describing design of a wire harness, design activities discussed in the
Specification are distinct from actually manufacturing the designed product
and vice versa. Spec. ¶¶ 2–3. In particular, Appellant fails to provide
persuasive evidence that designing a wire harness expressly, implicitly, or
inherently involves the manufacturing of the wire harness. Mere attorney
argument and conclusory statements, which are unsupported by factual
evidence, and are entitled to little probative value. In re Geisler, 116 F.3d
1465, 1470 (Fed. Cir. 1997); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir.
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1984). Attorney argument is not evidence. In re Pearson, 494 F.2d 1399,
1405 (CCPA 1974). Nor can such argument take the place of evidence
lacking in the record.
Although design and manufacturing activities are related to the extent
that both are directed to producing the same ultimate product, the mere
relationship is insufficient to show, with the requisite clarity, the inventors
were in possession of the method of manufacturing recited by claim 5.
Gentry Gallery, 134 F.3d at 1479. Accordingly, we sustain the written
description rejection of claim 5.

PATENT-INELIGIBLE SUBJECT MATTER
REJECTION UNDER 35 U.S.C. § 101
Principles of Law
To constitute patent-eligible subject matter, an invention must be a
“new and useful process, machine, manufacture, or composition of matter,
or [a] new and useful improvement thereof.” 35 U.S.C. § 101. There are
implicit exceptions to the categories of patentable subject matter identified
in 35 U.S.C. § 101, including: (1) laws of nature; (2) natural phenomena;
and (3) abstract ideas. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014). The U.S. Supreme Court has set forth a framework for
distinguishing patents with claims directed to these implicit exceptions
“from those that claim patent-eligible applications of those concepts.” Id. at
217 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S.
66 (2012)). The evaluation follows a two-part analysis: (1) determine
whether the claim is directed to a patent-ineligible concept, e.g., an abstract
idea; and (2) if so, then determine whether any element, or combination of
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elements, in the claim is sufficient to ensure that the claim amounts to
significantly more than the patent-ineligible concept itself. See id. at 217–
18.
“[A]ll inventions at some level embody, use, reflect, rest upon, or
apply laws of nature, natural phenomena, or abstract ideas.” Mayo, 566 U.S.
at 71. We “‘must be careful to avoid oversimplifying the claims’ by looking
at them generally and failing to account for the specific requirements of the
claims.” McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299,
1313 (Fed. Cir. 2016) (quoting In re TLI Commc’ns LLC Patent Litigation,
823 F.3d 607, 611 (Fed. Cir. 2016)).
Last year the U.S. Patent and Trademark Office (“USPTO”) published
guidance on the application of the two-part analysis. USPTO, 2019 Revised
Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (January 7,
2019) (“2019 Revised Guidance”); see also USPTO, October 2019 Update:
Subject Matter Eligibility, available at https://www.uspto.gov/sites/default/
files/documents/peg_oct_2019_update.pdf (Oct. 17, 2019). Under that
guidance, 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) (see id. at 54 (Step 2A, prong
one)); and
(2) additional elements that integrate the judicial
exception into a practical application (see id. at 54–55 (Step 2A,
prong two); MPEP §§ 2106.05(a)–(c), (e)–(h)).
See 2019 Revised Guidance, 84 Fed. Reg. 52–55.
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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 to
whether the claim:
(3) adds a specific limitation beyond the judicial
exception that is not “well-understood, routine, conventional”
in the field (see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine,
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial exception.
See 2019 Revised Guidance, 84 Fed. Reg. 56.
Step 2A, prong 1
In rejecting claim 1 as being directed to patent-ineligible subject
matter, the Examiner determines that the claim is “directed to the abstract
idea of using a mathematical function, idea of itself[4], and data

4 Although the previously recognized category of “an idea of itself” is not
one of the currently recognized categories, it is sufficient for the purposes of
the present appeal that the claimed concepts reasonably can be characterized
as falling within the still-recognized category of mental processes. See, e.g.,
MPEP § 2106.04(a)(2)(III):
The courts have used the phrase ‘an idea ‘of itself’” to describe
an idea standing alone such as an uninstantiated 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.” CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d
1366, 1372 (Fed. Cir. 2011).
Characterizing the abstract idea as a mental process instead of an idea of
itself does not constitute a change to the thrust in the Examiner’s rejection.
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manipulation, similar to identified abstract ideas of the May 2017 Update.”5
Final Act. 9.
Claim element (i) recites, in part, retrieving first, second, and third
specifications allocated to corresponding partitioned areas of a vehicle
space, each specification indicating different systems of the vehicle.
Appellant does not direct attention to and we do not find a definition for the
recited specification. In the absence of such a definition, we interpret the
specification to include region-based connector/wiring information. See,
e.g., Spec. ¶ 1. Obtaining such information reasonably is characterized as an
observation considered to be a concept performed in the human mind, i.e., a
mental process.6 The 2019 Revised Guidance recognizes mental
observations as constituting abstract ideas. 2019 Revised Guidance, 84 Fed.
Reg. at 52. As such, limitation (i) recites a mental process that the 2019
Revised Guidance recognizes as an abstract idea.
Claim element (ii) recites, in part, comparing the first and second
specifications to determine a shared specification indicating an electric wire
connecting electrical components is disposed in both corresponding
partitioned areas of the vehicle space. Comparing information reasonably is
characterized as an observation or evaluation considered to be a concept

5 Although it is unclear if the Examiner is referring to the May 2016 Subject
Matter Update” (May 4, 2016 Memorandum) at https://www.uspto.gov
/patent/laws-and-regulations/examination-policy/subject-matter-eligibility,
we note this and similar earlier guidance has been superseded. “Eligibility-
related guidance issued prior to the Ninth Edition, R–08.2017, of the MPEP
(published Jan. 2018) should not be relied upon.” 2019 Revised Guidance,
84 Fed. Reg. at 51.
6 Additionally, as further discussed below under Prong 2 of our analysis,
retrieving information from memory constitutes insignificant extra-solution
activity to the judicial exception.
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performed in the human mind and, as such, a mental process recognized as
an abstract idea.
Claim element (iii) recites comparing the second and third
specifications but is otherwise similar to claims element (ii) and is
characterized as a mental process recognized as an abstract idea for the same
reasons.
Claim element (iv) recites, in part, determining the presence of shared
specifications between first and second wire harnesses and, as a result,
creating first region-based connector-wiring information for only one of the
wiring harnesses. The step of determining reasonably is characterized as an
observation or evaluation performed in the human mind and, accordingly, a
mental process. The step of creating second region-based connector-wiring
information is the selection of information based on the step of determining
and is likewise an observation or evaluation performed in the human mind
and, accordingly, a mental process.
Claim element (v) recites, in part, determining the presence of shared
specifications between second and third wire harnesses and, as a result,
creating second region-based connector-wiring information for only one of
the wiring harnesses. This element is considered to recite a mental process
for the reasons discussed in connection with claim element (iv) above.
Claim element (vi) recites, in part, determining the presence or
absence of an error in a connection of electric wires in only the created first
and second region-based connector-wiring information. Appellant directs
attention to paragraphs 44–54 of the Specification and Figures 2–4 of the
drawings. The cited portion of the Specification describes comparing
information to identify errors. The comparison of information reasonably is
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characterized as an observation and/or evaluation performed in the human
mind and, therefore, is reasonably characterized as a mental process.
Claim element (vii) recites, in response to determining that an error is
present in the connection of electric wires in only the created first region-
based connector-wiring information and only the created second region-
based connector-wiring information, indicating that a starting point and a
terminating point of a circuit line connecting electrical components in only
the created first region-based connector-wiring information and only the
created second region-based connector-wiring information are not in
correspondence. Indicating a result of the prior determining steps can be
performed in the human mind and/or with pen and paper. Accordingly,
claim element (vii) recites a mental process.7
Claim element (viii) recites, in the absence of an error, generating a
wiring diagram. Wiring diagrams can be created using the human mind
and/or using pen and paper. Accordingly, claim element (vii) recites a
mental process.
Our determination the claims recite mental processes is consistent
with Appellant’s characterization of the claims, as follows:
[Applicant notes that the] claims are directed toward, inter alia,
. . . inspecting the presence/absence of shared specification (i.e.,
a common electrical connection) between different electrical
systems of a vehicle, generating connector-wiring information
regarding these shared specification, determining the
presence/absence of an error in the connector-wiring
information, and provide for a tangible and practical application

7 See also Prong 2 analysis below characterizing claim element (vii) as the
provision of information considered to be an insignificant extra-solution
activity.
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of (1) indicating that an error is present when an error is detected,
and (2) generating a wiring diagram when an error is not present.
Appeal Br. 7–8, cf. Supplemental Appeal Br. 2. These steps are similar to
other concepts the courts have identified as abstract mental processes. See
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138 (Fed. Cir. 2016)
(methods of logic circuit design, comprising converting a functional
description of a level sensitive latch into a hardware component description
of the latch); Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758
F.3d 1344 (Fed. Cir. 2014) (organizing information through mathematical
correlations). In Electric Power Group, our reviewing court explained that
concepts of collecting and analyzing information, when broadly claimed, fall
within the “realm of abstract ideas”:
Information as such is an intangible. See Microsoft Corp. v. AT
& T Corp., 550 U.S. 437, 451 n.12 (2007); Bayer AG v. Housey
Pharm., Inc., 340 F.3d 1367, 1372 (Fed. Cir. 2003).
Accordingly, we have treated collecting information, including
when limited to particular content (which does not change its
character as information), as within the realm of abstract ideas.
See, e.g., Internet Patents, 790 F.3d at 1349; OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015);
Content Extraction & Transmission LLC v. Wells Fargo Bank,
Nat’l Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014); Digitech
Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344,
1351 (Fed. Cir. 2014); CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011). In a similar vein,
we have treated analyzing information by steps people go
through in their minds, or by mathematical algorithms, without
more, as essentially mental processes within the abstract-idea
category. See, e.g., TLI Commc’ns, 823 F.3d at 613; Digitech,
758 F.3d at 1351; SmartGene, Inc. v. Advanced Biological
Labs., SA, 555 F. App’x 950, 955 (Fed. Cir. 2014); v Servs.,
L.L.C. v. Sun Life Assurance Co. of Canada (U.S.), 687 F.3d
1266, 1278 (Fed. Cir. 2012); CyberSource Corp. v. Retail
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Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011); SiRF
Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319, 1333 (Fed.
Cir. 2010); see also Mayo, 132 S. Ct. at 1301; Parker v. Flook,
437 U.S. 584, 589–90 (1978); Gottschalk v. Benson, 409 U.S.
63, 67 (1972). And we have recognized that merely presenting
the results of abstract processes of collecting and analyzing
information, without more (such as identifying a particular tool
for presentation), is abstract as an ancillary part of such
collection and analysis. See, e.g., Content Extraction, 776 F.3d
at 1347; Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715
(Fed. Cir. 2014).
Electric Power Group, LLC v. Alstom, S.A., 830 F.3d 1350, 1353–54 (Fed.
Cir. 2016).
In the absence of evidence to the contrary, the actions ascribed to the
invention as described by Appellant are directed to mental processes that can
be performed in the human mind and/or using pen and paper. The
2019 Revised Guidance recognizes concepts performed in the human mind
(i.e., mental processes) as constituting abstract ideas. 2019 Revised
Guidance, 84 Fed. Reg. at 52.
For these reasons, we determine all eight elements of claim 1 recite a
judicial exception to patent-eligible subject matter under Step 2A, Prong 1,
of the 2019 Revised Guidance.
Step 2A, Prong 2
Under Step 2A, Prong 2, of the 2019 Revised Guidance, we determine
whether any of the additional elements beyond the abstract idea integrate the
abstract ideas into a practical application. 2019 Revised Guidance, 84 Fed.
Reg. at 54. The 2019 Revised Guidance provides exemplary considerations
that are indicative of an additional element or combination of elements
integrating the judicial exception into a practical application, such as an
additional element reflecting an improvement in the functioning of a
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computer or an improvement to other technology or technical field. Id. at
55; MPEP § 2106.05(a).
In addition to the actions required by claim elements (i) through (viii)
which we determine recite mental processes identified by the 2019 Revised
Guidance as abstract ideas, one or more elements of claim 1 also constitute
insignificant extra-solution activity to the judicial exception. In particular,
claim element (i) recites “retrieving from a memory by a processor [first,
second, and third] specification[s].” This limitation reasonably can be
characterized as merely constituting the insignificant pre-solution activity of
data gathering.
An example of pre-solution activity is a step of gathering data for
use in a claimed process, e.g., a step of obtaining information
about credit card transactions, which is recited as part of a
claimed process of analyzing and manipulating the gathered
information by a series of steps in order to detect whether the
transactions were fraudulent.
MPEP § 2106.05(g).
Element (vii) recites:
[(vii)] in response to determining that an error is present in
the connection of electric wires . . . , indicating [an error
condition exits];
Claim element (vii) does not add any meaningful limitations to the
noted abstract ideas because it reasonably may be characterized as merely
being directed to the insignificant post-solution activity of transmitting data.
E.g., Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1241–42 (Fed. Cir. 2016)
(holding that printing or downloading generated menus constituted
insignificant extra-solution activity).
Thus, limitations (i) and (vii) recite the type of extra-solution activity
(i.e., in addition to the judicial exception) the courts have determined
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insufficient to transform judicially excepted subject matter into a patent-
eligible application. See MPEP § 2106.05(g); 2019 Revised Guidance, 84
Fed. Reg. at 55 n.31; Bancorp Servs, L.L.C. v. Sun Life Assur. Co. of Can.,
771 F. Supp. 2d 1054, 1066 (E.D. Mo. 2011) aff'd, 687 F.3d at 1266 (Fed.
Cir. 2012) (explaining that “storing, retrieving, and providing data . . . are
inconsequential data gathering and insignificant post solution activity”);
Bilski v. Kappos, 561 U.S. 593, 612 (2010) (holding the use of well-known
techniques to establish inputs to the abstract idea as extra-solution activity
that fails to make the underlying concept patent eligible); Elec. Power Grp.,
830 F.3d at 1355 (explaining that “selecting information, by content or
source, for collection, analysis, and display does nothing significant to
differentiate a process from ordinary mental processes”).
In addition to the claim elements identified under Prong 1 of our
analysis as constituting mental processes, claim 1 requires the recited steps
be performed by a processor.8 The Examiner finds the processor and steps
performed by the processor
are recited at a high level of generality in order to facilitate the
application of the abstract idea, allow the claim as a whole to
substantially monopolize the abstract idea itself, rather than
being a particular narrow application of the abstract idea, and are
recited as performing generic computer functions routinely used
in computer applications. Well understood, routine,
conventional activities previously engaged in by those in the
relevant art [are] not seen as significantly more than the abstract
idea. Generic computer components recited as performing
generic computer functions that are well-understood, routine and
conventional activities amount to no more than implementing the

8 Claim element (vi) additionally recites the step is performed automatically
by the processor. The addition of automatic performance by an automated
system (i.e., a processor) does not affect our analysis.
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abstract idea with a computerized system. Looking at the
limitations as an ordered combination adds nothing that is not
already present when looking at the elements taken individually,
There is no indication that the combination of elements improves
the functioning of a computer or improves any other technology,
Their collective functions merely provide conventional computer
implementation.
Final Act. 11–12.
Appellant discloses an embodiment wherein “the wire harness
continuity inspection device of the present invention is configured by a
general-purpose [personal computer (PC)].” Spec. ¶ 65. Furthermore, the
Specification only discloses the recited functionality at a high level of
generality without providing implementation details. Accordingly, we agree
the recited steps involve only conventional computer functionalities.
Consistent with the 2019 Revised Guidance, these additional elements
are not practical applications of a judicial exception as they are included
among an additional element that merely recites “apply it” or similar
language, or that merely includes instructions to implement an abstract idea
on a computer, or that merely uses a computer as a tool to perform an
abstract idea. 2019 Revised Guidance, 84 Fed. Reg. at 54. See also Alice,
573 U.S. at 221 (“[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention.”);
MPEP § 2106.05(f)(2) (“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 provide significantly more.”).
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Appellant contends “the claims are patent eligible at least because
they recite features, that when considered as an ordered combination
demonstrate a technologically rooted solution to the problem of reducing the
time for error inspection in a wire harness diagram.” Appeal Br. 8.
According to Appellant “as the number of candidates for the wire harness
arrangeable in the partitioned area increases, the number of patterns to be
created in the region-based connector/wiring information also increases” so
that significant time is required to identify errors for large wire harnesses
using traditional error inspection methods. Id. Appellant argues
“mathematical models that improve computer-related technology by
allowing computer performance of a function not previously performable by
a computer are directed to patent eligible subject matter.” Id. at 9.
Appellant’s argument is unpersuasive of reversible Examiner error.
Appellant has not shown the claim includes additional elements that improve
the underlying computer, or other technology. See Intellectual Ventures I
LLC v. Capital One Bank (USA), 792 F.3d 1363, 1370 (Fed. Cir. 2015)
(“[M]erely adding computer functionality to increase the speed or efficiency
of the process does not confer patent eligibility on an otherwise abstract
idea.”); cf. Trading Techs. Int'l, Inc. v. IBG LLC, No. 2017-2257, 2019 WL
1716242, at *3 (Fed. Cir. 2019) (“This invention makes the trader faster and
more efficient, not the computer. This is not a technical solution to a
technical problem.”).
Rather than provide an improvement to the functioning of a computer,
the claim merely uses the ordinary capabilities of a computer to automate an
error inspection process that “considers errors in only a relatively small
number of wiring information[s], which is different than considering all of
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the possible patterns per traditional methods.” See Reply Br. 8. Thus, any
improvement is to the underlying method of identifying errors in a wiring
harness design, not to the operation of the computer, functioning of a wire
harness, or to some other technology. This is not enough to integrate the
underlying abstract idea into a practical application under the 2019 Revised
Guidance, as “relying on a computer to perform routine tasks more quickly
or more accurately is insufficient to render a claim patent eligible.” OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015); see
also ChargePoint, 920 F.3d at 771 (“[T]he fact that the electricity flow is
modified based on demand response principles does nothing to make this
claim directed to something other than the abstract idea.”). Thus, the recited
“additional element[s] merely recite[] the words ‘apply it’ (or an equivalent)
with the judicial exception, or merely includes instructions to implement an
abstract idea on a computer, or merely uses a computer as a tool to perform
an abstract idea.” 2019 Revised Guidance, 84 Fed. Reg. at 55. Appellant’s
purportedly improved abstract concept is still an abstract concept under the
2019 Revised Guidance. See Synopsys, 839 F.3d at 1151 (“[A] claim for a
new abstract idea is still an abstract idea.”) (emphasis omitted).
We also are not persuaded that the claims are patent-eligible based on
any similarity with the subject matter determined to be patent-eligible in
Thales,9 Core Wireless,10 Finjan,11 or McRO as argued. See Appeal Br. 17–
18. As found by the Examiner (Ans. 9), Thales “utilize[d] mathematical
equations to determine the orientation of [an] object relative to the moving

9 Thales Visionix Inc. v. United States, 850 F.3d 1343 (Fed. Cir. 2017).
10 Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc., 880 F.3d 1356
(Fed. Cir. 2018).
11 Finjan Inc. v. Blue Coat Systems, Inc., 879 F.3d 1299 (Fed. Cir. 2018).
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reference frame,” including “claims [that sought] to protect only the
application of physics to the unconventional configuration of sensors.”
Thales, 850 F.3d 1348–49 (emphasis added). We find no corresponding
technical improvement provided by Appellant’s claims other than to the
underlying abstract concept of processing information to detect errors in the
design of a wire harness.
We are also unpersuaded by Appellant’s argument analogizing the
claims to those found patent eligible in Core Wireless, contending that its
claim is similarly “directed to a computer-implemented method in which the
improvement in the ‘functioning of the computer’ is the ability of a
computer configured for wire harness continuity inspection to better inspect
and to better identify errors.” Appeal Br. 10. As explained by the Examiner
(Ans. 10), the claim in Core Wireless was directed to “an improved user
interface for electronic devices, particularly those with small screens” where
the improvement was in “the efficiency of using the electronic device by
bringing together ‘a limited list of common functions and commonly
accessed stored data,’ which can be accessed directly from the main menu.”
Core Wireless, 880 F.3d at 1363. The Specification in that case confirmed
these improvements were over “the prior art interfaces [that] had many
deficits relating to the efficient functioning of the computer, requiring a user
‘to scroll around and switch views many times to find the right
data/functionality.’” Id. The court found that the disclosure in the
Specification regarding the improved speed of a user’s navigation through
various views and windows “clearly indicates that the claims are directed to
an improvement in the functioning of computers, particularly those with
small screens.” Id. In contrast, Appellant does not demonstrate the claimed
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method of providing an improved ability to inspect wire harness continuity
to better identify errors is related to an identified improvement in the
functioning of computers.
In Finjan, the court found the claimed behavior-based virus scan
constituted an improvement in computer functionality over the “traditional,
‘code-matching’ virus scans.” Finjan, 879 F.3d at 1304. The court
determined that the Finjan claimed method employed a new kind of file that
allowed access to be tailored for different users, and allowed the system to
accumulate and use newly available, behavior-based information regarding
potential threats. Id. at 1305. The court ultimately held that the Finjan
claims were “directed to a non-abstract improvement in computer
functionality, rather than the abstract idea of computer security,” and
“recite[d] specific steps-- generating a security profile that identifies
suspicious code and linking it to a downloadable--that accomplish the
desired result.” Id. The court specifically distinguished claims found to be
patent ineligible when “there was nothing in the claim ‘directed to how to
implement [the idea]”’ nor to “‘a particular way of programming or
designing the software.”’ Id. The rejected claims are deficient for the same
reason because the steps in rejected claim 1 are recited generically as a series
of desired results without reciting any particular programming or
implementation to achieve those results.
We also agree with the Examiner that the reasons claim 1 in McRO
was found patent-eligible do not apply to Appellant’s claims. Ans. 10–11.
“The claimed improvement [in McRO] was to how the physical display
operated (to produce better quality images), unlike (what is present here) a
claimed improvement in [an associating] technique with no improved
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display mechanism.” SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167
(Fed. Cir. 2018). In other words, in McRO, data was used to improve the
technology, i.e., the display mechanism. Here, although claim 1 recites, e.g.,
“retrieving”, “comparing”, “determining”, and “indicating”, it merely recites
the functional results to be achieved. For example, claim 1 does not recite
technical implementation details of how the claimed method determines the
presence of a shared specification indicating that there is at least one electric
wire that connects electrical components disposed in the first and second
partitioned areas of the vehicle space. “Indeed, the claim language here
provides only a result-oriented solution, with insufficient detail for how a
computer accomplishes it. Our law demands more.” Intellectual Ventures I
LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1342 (Fed. Cir. 2017).
We are also unpersuaded by Appellant’s argument that the claims
pose no risk of preempting all rules for a wire harness continuity inspection.
Appeal Br. 12. As explained by the Examiner, preemption is not a stand-
alone test for eligibility. Ans. 9. Although preemption “‘might tend to
impede innovation more than it would tend to promote it,’ thereby thwarting
the primary object of the patent laws” (Alice, 573 U.S. at 216 (quoting
Mayo, 566 U.S. at 71)), “the absence of complete preemption does not
demonstrate patent eligibility” (Ariosa Diagnostics, Inc. v. Sequenom, Inc.,
788 F.3d 1371, 1379 (Fed. Cir. 2015); see also OIP Techs., 788 F.3d at
1362–63 (“[T]hat the claims do not preempt all price optimization or may be
limited to price optimization in the e-commerce setting do not make them
any less abstract.”).

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For the reasons discussed, we agree with the Examiner that the claims
do not include additional elements that are sufficient to amount to
significantly more than the judicial exception because the additional
elements do not effect an improvement to another technology, technical
field, or to the functioning of a computer itself. See MPEP § 2106.05(a).
We further determine claim 1 does not recite:
(i) an application of the abstract idea with, or by use of, a
particular machine;
(ii) a transformation or reduction of a particular article to a
different state or thing; or
(iii) other meaningful limitations beyond generally linking the
use of the abstract idea to a particular technological
environment.
See id. § 2106.05(b), (c), (e)–(h). Instead, the record reasonably indicates
that any claimed improvement is to the underlying abstract idea of verifying
the design of a wire harness. Thus, claim 1 does not integrate the judicial
exception into a practical application.
Appellant further argues claim 6 recites additional features providing
a technical advantage. Appeal Br. 13. According to Appellant, “claim 6
clarifies that the ‘creating . . . region-based connector-wiring information’
steps are implemented ‘so as to not create unnecessary region-based
connector-wiring information’. Since unnecessary region-based
connector-wiring information is not created or analyzed, ‘the time required
for the success/failure determination step’ is reduced.” Appeal Br. 13.
Appellant’s argument directed to claim 6 is unpersuasive because, as
explained in connection with claim 1, any improvement attributable to the
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argued features of claim 6 is to the underlying abstract concept of processing
information to detect errors in the design of a wire harness. There is
insufficient evidence to demonstrate, and we do not find, the additional
elements recited by claim 6 effect an improvement to another technology,
technical field, or to the functioning of a computer itself.
Step 2B
As noted above, the only claim element beyond the recited abstract
idea is a processor performing each of the steps of claim 1. The Examiner
finds “[g]eneric 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.” Final Act. 12.
Appellant contends “the Examiner does not cite to any specific
teaching as to why certain elements are well-understood.” Reply Br. 10
(citing April 19, 2018 Memo on Subject Matter Eligibility12; Berkheimer v.
HP Inc., 881 F.3d 1360 (Fed. Cir. 2018)).
Appellant’s contention is unpersuasive of reversible Examiner error.
The Examiner determines “[c]laim 1 is directed to the abstract idea of using
a mathematical function, idea of itself, and data manipulation, similar to
identified abstract ideas of the May 2017 Update: Interim Eligibility
Guidance.” Final Act. 9. As explained above, an idea of itself corresponds
to a mental process. Note 4, supra. The Examiner explains the additional
computer elements (i.e., processor and requisite processor/computer

12 Memorandum on Changes in Examination Procedure Pertaining to Subject
Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v.
HP, Inc.) (Apr. 19, 2018) available at: https://www.uspto.gov/sites/default/
files/documents/memo-berkheimer-20180419.PDF
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functionalities) “are recited at a high level of generality in order to facilitate
the application of the abstract idea . . . and are recited as performing generic
computer functions routinely used in computer applications.” Final Act. 11–
12. The Examiner determines these “[w]ell understood, routine,
conventional activities . . . [are] not seen as significantly more than the
abstract idea [itself].” Id. at 12.
We agree with the Examiner that all claim elements, with the
exception of the recited processor, correspond to concepts determined to be
abstract ideas for the reasons discussed above in connection with Prongs 1
and 2 of our analysis. These abstract concepts need not be shown to be well-
understood, routine, and convention. In particular, Berkheimer does not
require the Examiner to make a factual finding that all claim elements are
well-understood, routine and conventional. Rather, a Berkheimer factual
finding is required for additional elements or a combination of additional
elements outside of the identified abstract idea. See Berkheimer Memo, 7 p.
2 (“the Berkheimer decision . . . does provide clarification as to the inquiry
into whether an additional element (or combination of additional elements)
represents well-understood, routine, conventional activity” (emphasis
added)).
In contrast, other than naked allegations, Appellant provides
insufficient evidence that the computer components and functions required
to execute the claimed steps are anything other than well-understood,
routine, and conventional. Instead, Appellant’s disclosure of using a
general-purpose PC and the lack of details describing implementation of the
recited functions (such as might have been evidences by inclusion of a flow
chart depicting computer operations for performing each of the claimed
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steps), persuades us that the omitted details are well-understood, routine, and
conventional.
Consistent with the Berkheimer Memorandum, the claims merely
recite generic computer components (e.g., a processor) performing generic
computing functions that are well-understood, routine, and conventional
(e.g., retrieving and comparing information, determining specified
relationships between data exist, identifying and indicating the existence of
an error condition error, and providing a diagram based on the information
(e.g., transmitting data in a particular form)). See Alice, 573 U.S. at 225 (the
“use of a computer to obtain data, adjust account balances, and issue
automated instructions; all of these computer functions are ‘well-understood,
routine, conventional activit[ies]’ previously known to the industry”)
(quoting Mayo 566 U.S. 66, 71–73 (2012)); see also Gottschalk v. Benson,
409 U.S. 63, 65 (1972) (noting that a “computer operates then upon both
new and previously stored data. The general-purpose computer is designed
to perform operations under many different programs.”); Fair Warning IP,
LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1096 (Fed. Cir. 2016) (noting that
using generic computing components like a microprocessor or user interface
do not transform an otherwise abstract idea into eligible subject matter);
Mortgage. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314,
1324–25 (Fed. Cir. 2016) (indicating components such as an “interface” are
generic computer components that do not satisfy the inventive concept
requirement); MPEP § 2106.05(d)(II) (citing Alice and Mayo). Accord
Berkheimer Memo. 3–4.
For these reasons, we determine that claim 1 does not recite additional
elements that, either individually or as an ordered combination, amount to
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significantly more than the judicial exception within the meaning of the
2019 Guidance. 84 Fed. Reg. at 52–55; MPEP § 2106.05(d).
Conclusion
Appellant has not adequately demonstrated that the Examiner erred in
determining that claims 1 and 6 recite one or more abstract ideas, that the
claims fail to integrate the abstract idea into a practical application, or that
the additional claim elements add significantly more to the abstract idea.
Accordingly, Appellant does not persuade us of that the Examiner erred in
concluding that claims 1 and 6 are directed to patent-ineligible subject
matter.
Accordingly, we sustain the § 101 rejection of independent claims 1
and 6. We also affirm this rejection of claims 2–4, which Appellant does not
argue separately.
DECISION SUMMARY
In summary:

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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
5 112, first paragraph
Written
Description 5
1–4, 6 101 Eligibility 1–4, 6
Overall
Outcome 1–6