Lorenzo Pasqualis et al.

Patent Trials and Appeals Board

Jun 23, 2020

2018006260 (P.T.A.B. Jun. 23, 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.
13/853,677 03/29/2013 Lorenzo Pasqualis 086882-8011.US01 4877
25096 7590 06/23/2020
PERKINS COIE LLP - SEA General
PATENT-SEA
P.O. BOX 1247
SEATTLE, WA 98111-1247
EXAMINER
SAINT-VIL, EDDY
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
06/23/2020 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):
patentprocurement@perkinscoie.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte LORENZO PASQUALIS, NIGEL GREEN, and
DANIEL KERNS
____________

Appeal 2018-006260
Application 13/853,677
Technology Center 3700
____________

Before JAMES P. CALVE, SUSAN L. C. MITCHELL, and
LISA M. GUIJT, Administrative Patent Judges.

GUIJT, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the rejection
of claims 1–30 under 35 U.S.C. § 101 as being directed to patent ineligible
subject matter. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies DreamBox Learning, Inc. as the real
party in interest. Appeal Br. 2.
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THE INVENTION
Appellant’s invention relates to “Calendar-driven Sequencing of
Academic Lessons.” Spec., Title. Claims 1 and 20 are the independent
claims on appeal. Claim 1, reproduced below with paragraph numbers
added for ease of reference, is illustrative of the subject matter on appeal;
claim 20 recites identical method steps in the body of the claim, however,
the preamble of claim 20, also reproduced below, differs from the preamble
of claim 1.
1. A computer-based method of delivering a sequence of
learning objectives to a student in accordance with a received
target date, the method comprising:
[(i)] maintaining a plurality of learning objectives, each
learning objective having a weight that represents a difficulty or
quantity of individual skills within the learning objecting, each
learning objective having prior learning objectives and
subsequent learning objectives connected together in a
hierarchical relationship of parent nodes and children nodes, at
least one of the parent nodes having two or more children nodes;
[(ii)] establishing a target learning object by associating
the target date with at least one of the learning objectives;
[(iii)] determining which of the plurality of learning
objectives are prerequisites to the target learning objective based
on the hierarchical relationship between the target learning
objective and the other learning objectives;
[(iv)] comparing learning objectives completed by the
student to the prerequisite learning objectives to determine a
remaining number of learning objectives for the student to
complete in order to achieve the target learning objective;
[(v)] summing the weights of the remaining number of
learning objectives to determine a total skill weight for the
student to acquire in order to being [sic] the target learning
objective;
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[(vi)] determining a rate of skill acquisition associated
with the student per unit of time, wherein the determined rate of
skill acquisition is based on measured interactions between the
student and questions presented to the student, the measured
interactions comprising one or more answer changes made by the
student or one or more mouseovers made by the student;
[(vii)] determining an estimated time of completion for the
prerequisite learning objectives for the student based on the
remaining number of learning objectives and the rate of skill
acquisition;
[(viii)]estimating a training time for the student, the
training time including an average time the student will spend
studying the learning objectives between a present time and the
target date;
[(ix)] comparing the estimated training time for the
student to the estimated time of completion of the prerequisite
learning objectives; and
[(x)] if the estimated time of completion of prerequisite
learning objectives is longer than the estimated learning time for
the student, notifying an administrator.

20. A non-transitory computer-readable medium having
instructions, which when executed by a processor of a computer
system, cause the computing system to execute a method of
delivering a sequence of learning objects to a student in
accordance with a received target date, the method comprising:
[steps (i) to (x) supra ] . . . .

OPINION
An invention is patent eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” See 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
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ideas” are not patentable. E.g., Alice Corp. Pty. Ltd. 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 Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Services 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 water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
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mathematical formula.” Diehr, 450 U.S. at 176, 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 Supreme 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.” Diehr, 450 U.S. 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.”), and id. at 191
(citing Benson and Flook).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a
patent-eligible application.” Alice, 573 U.S. at 221 (citation 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. (quoting Mayo, 566 U.S. at 77).
“[M]erely [requiring] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
The PTO published revised guidance on the application of 35 U.S.C.
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) (hereinafter “Revised 2019 Guidance, 84 Fed. Reg.”).
Under that guidance, we first look to whether the claim recites: (1) any
judicial exceptions, including certain groupings of abstract ideas (i.e.,
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mathematical concepts, certain methods of organizing human activity such
as a fundamental economic practice, or mental processes); and (2) additional
elements that integrate the judicial exception into a practical application (see
Manual of Patent Examining Procedure (“MPEP”) § 2106.05(a)–(c), (e)–(h)
(9th Ed., Rev. 08.2017 (Jan. 2018))). Only if a claim: (1) recites a judicial
exception and also (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 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 generally Revised
2019 Guidance, 84 Fed. Reg.; see also MPEP § 2106.05(d)).

The Examiner’s Prima Facie Case2
The Examiner finds that claims 1–30 recite a judicial exception to
patent eligibility, namely, an abstract idea, and more specifically, an idea of
itself that “educators” can perform the claimed method steps “using pen and
paper,” (i.e., mentally). Final Act. 5–6; see also id. at 2–18; Ans. 2–18. In
support, the Examiner describes many of the claim limitations of
independent claims 1 and 20 as data processing steps (i.e., a series of
operations on data, especially by a computer, to retrieve information from
storage, transform information through mathematical correlations, or classify

2 Although the Examiner’s Final Rejection (mailed January 26, 2017) and
the Examiner’s Answer (mailed March 30, 2018) are dated prior to the
publication of the Revised 2019 Guidance, the Examiner’s rejection of the
claims pursuant to 35 U.S.C. § 101 as stated in the Final Rejection and the
Examiner’s Answer is consistent with our application of Revised 2019
Guidance as set forth in this Decision.
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information), which the Examiner finds similar to claim limitations
determined by the Federal Circuit to be patent ineligible. Final Act. 4–5, 9–
10 (citing, e.g., Cyberfone Systems, LLC v. CNN Interactive Group, Inc., 558
F. App’x 988 (Fed. Cir. 2014) (nonprecedential) (identifying using
categories to organize, store, and transmit information as abstract)3; Cyber
Source v. Retail Decisions, Inc., 654 F.3d 1366 (Fed. Cir. 2011) (identifying
obtaining and comparing intangible data as abstract); Smartgene, Inc. v.
Advanced Biological Labs., S.A., 555 F. App’x 950 (Fed. Cir. 2014)
(nonprecedential) (identifying comparing new and stored data, and using
rules to identify medical options, as abstract); Digitech Image Techs. LLC v.
Elecs. for Imaging Inc., 758 F.3d 1344 (Fed. Cir. 2014) (identifying
organizing information into a new form as abstract). The Examiner also
finds that the claims, when analyzed individually and in combination, fail to
recite any limitations, in addition to the claim limitations reciting mental
steps, which amount to significantly more than the judicial exception itself.
Final Act. 7. For example, the Examiner finds that measuring a time period
associated with student interactions by analyzing mouseovers, as claimed, is
“a generic computer function,” which the Examiner also finds is “routine
and conventional in the art.” Id.
Appellant argues “the Examiner has failed to establish a prima facie
case of subject matter ineligibility,” because the Examiner did not
demonstrate that “the claimed concept . . . is similar to at least one concept

3 We are not persuaded by Appellant’s argument that because “Cyberfone is
directed to a telephone/transaction entry device and system for entering
transaction data into databases,” in comparison to Appellant’s claims
involving steps for delivering a sequence of learning objectives to a student,
Cyberfone is not instructive regarding whether data processing is abstract.
Appeal Br. 13
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that the courts have identified as an abstract idea.” Appeal Br. 11; Reply Br.
2–4.
We find that the Examiner established a prima facie case of subject
matter ineligibility under 35 U.S.C. § 101 by notifying Appellant that the
claims are directed to a judicial exception (i.e., an abstract idea) and
sufficiently articulating, in an informative manner, that the claimed method
steps may be performed using pen and paper (i.e., a mental process). See In
re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (holding that the USPTO
carries its procedural burden of establishing a prima facie case when its
rejection satisfies the notice requirements of 35 U.S.C. § 132 by notifying
the applicant of the reasons for the rejection, “together with such
information and references as may be useful in judging the propriety of
continuing [] prosecution”). In other words, we do not agree with Appellant
that the Examiner is further required to identify claims with similar concepts
adjudged patent ineligible to state a prima facie case under 35 U.S.C. § 101
for subject matter ineligibility. Moreover, as set forth supra, the Examiner
provides citations to cases deemed similar by the Examiner, with respect to
claiming steps for processing data—cases that we agree support the
Examiner’s prima facie case of subject matter ineligibility.

Analysis under the Revised 2019 Guidance
Step 1: Do the claims fall within a statutory category of § 101?
We examine whether the claims recite one of the enumerated statutory
classes of subject matter, i.e., process, machine, manufacture, or
composition of matter, eligible for patenting under 35 U.S.C. § 101. Claims
1–15 and 29 recite a method of delivering a sequence of learning objectives
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to a student in accordance with a target date, and claims 20–28 and 30 recite
a non-transitory computer-readable medium having instructions which,
when executed by a processor of a computing system, cause the computing
system to execute a method of delivering a sequence of learning objectives
to a student in accordance with a received target date. Appeal Br. 22–29
(Claims App.). Therefore, the claims each recite a statutory class: a process
or a manufacture under 35 U.S.C. § 101.

Step 2A, Prong One: Do the claims recite a judicial exception?
Next, we determine whether the claims recite subject matter falling
within a judicial exception, for example, an abstract idea, wherein a
grouping of subject matter within the category of abstract ideas is a mental
process (i.e., “concepts performed in the human mind[] (including an
observation, evaluation, judgment, opinion)”). See Revised 2019 Guidance,
84 Fed. Reg. at 50–52.
The bodies of independent claims 1 and 20 both include method steps
(i) to (x) for delivering a sequence of learning objectives to a student
according to a target date for completing the objectives. In particular, step
(i) requires, in relevant part, maintaining learning objectives that each have a
weight representing a difficulty or quantity of individual skills, and also
prior and subsequent learning objectives connected together in a hierarchical
relationship of parent nodes and two or more children nodes. We find that
this step is capable of being done in the human mind, in a practical manner,
for example, by a teacher using judgment to organize a library of learning
objectives, which are weighted and hierarchical, as claimed.
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Step (ii) requires, in relevant part, establishing a target learning
objective associated with at least one of the learning objectives, which we
also find is capable of being done in the human mind, in a practical manner,
for example, by a teacher using judgment to identify a learning objective
from the learning objective library supra.
Steps (iii), (iv), and (v) require, in relevant part, determining which of
the learning objectives are prerequisites to the target learning objective
based on the hierarchical relationship between the target learning objective
and the other learning objectives, comparing learning objectives completed
by the student to the prerequisite learning objectives to determine a
remaining number of learning objectives for the student to complete in order
to achieve the target learning objective, and summing the weights of the
learning objectives to be completed (or remaining) to determine a total skill
weight for the student to acquire to begin the target learning objective. We
find these steps can be done in the human mind, in a practical manner, for
example, by a teacher evaluating the data and performing the required
calculation of summing the weights to mentally, or with pen and paper,
arrive at a total skill weight for the remaining objectives.
Step (vi) requires, in relevant part, determining a rate of skill
acquisition associated with the student per unit of time based on measured
interactions between the student and questions presented to the student, the
measured interactions comprising one or more answer changes made by the
student. We find this step can be done in the human mind, in a practical
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manner, for example, by a teacher evaluating the answer change data for a
student and using judgment to arrive at a rate of skill for the student.4
Steps (vii), (viii), (ix), and (x) require, in relevant part, determining an
estimated time of completion for the prerequisite learning objectives for the
student, which is based on the remaining number of learning objectives and
the rate of skill acquisition for the student, and an estimated training time for
the student, which includes an average time the student will spend studying
the learning objectives between a present time and the target date, and next,
comparing the estimated training time to the estimated time of completion,
and if the estimated time of completion is longer than the estimated learning
time, notifying an administrator. We find that these time-based analyses of
the learning objective and rate of skill acquisition data are capable of being
done in the human mind, in a practical manner, for example, by a teacher
evaluating the relevant data and using judgment to mentally, or by using pen
and paper, determine and inform an administrator as to whether the student
will complete the learning objectives within the allotted training time.
In sum, steps (i) to (x) of claims 1 and 20, when considered
individually and as a combination, involve mentally, or with pen and paper,
the use of observation, evaluation, judgment, or opinion to perform a series
of steps for determining a sequence of learning objectives for a student
relative to a target date for their completion. Thus, we find that steps (i) to
(x) recite a mental process for delivering a sequence of learning objectives
to a student in accordance with a received target date, which is a grouping
under the judicial exception of an abstract idea.

4 Notably, claims 1 and 20 do not recite a step for measuring student-
question interactions, but only require determining a rate of skill acquisition
based on such information.
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The bodies of claims 2–4, which depend from independent claim 1,
and claims 21–23, which depend from independent claim 20, recite, in
relevant part, limitations for determining an optimal path between the
learning objectives completed by the student and the target learning
objective, for example, a path that has the fewest number of learning
objectives or with the lowest total weight, and that does not include all of the
remaining number of learning objectives. Appeal Br. 23, 27–28 (Claims
App.). We find, consistent with the Examiner’s rejection, that optimizing
the path as recited in these dependent claims are steps capable of being done
in the human mind, in a practical manner, for example, by a teacher
analyzing learning path options and using judgment to determine an optimal
path for a student. Final Act. 12–13, 15–18; Ans. 12–13, 15–18. Thus, we
find that dependent claims 2–4 and 21–23 recite a mental process, which is a
grouping under the judicial exception of an abstract idea.
The bodies of claims 5 and 6, which depend from independent
claim 1, and claim 24, which depends from independent claim 20, recite, in
relevant part, that “the one or more target dates” marks a single day on
which the target learning objective begins or is completed, or a range of
calendar dates defining a time frame within which the student is scheduled
to work on the target learning objective. Appeal Br. 23–24, 28 (Claims
App.). Notably, the claim language “the one or more target dates” lacks
antecedent basis with respect to claiming more than one target date, as
independent claims 1 and 20 recite only a singular target date (i.e, “a
received target date”) in the preamble of the claims, and only refer to the
singular target date (i.e., “the target date”) in the bodies of the claims. Id. at
22–23, 26–27. Notwithstanding, we find, consistent with the Examiner’s
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rejection, that such further definitions of the claimed target date are steps
capable of being done in the human mind, in a practical manner, for
example, by a teacher, using pen and paper, to use judgment to identify such
date(s) on a calendar for planning the beginning, duration, and completion of
student learning objectives. Final Act. 13, 16–18; Ans. 13, 16–18. Thus, we
find that dependent claims 5, 6, and 24 recite a mental process, which is a
grouping under the judicial exception of an abstract idea.
The bodies of claims 7–11, which depend from independent claim 1,
and claims 25 and 26, which depend from independent claim 20, recite, in
relevant part, limitations for further determining and/or updating the rate of
skill acquisition for a student, by initially using an average rate of skill
acquisition of students from the same classroom or in the same grade at the
same school, state, or country, or by periodically updating the rate of skill
acquisition for a student upon completion of each skill, lesson, or standard,
or based on a predetermined period of time. Appeal Br. 24, 28 (Claims
App.). We find, consistent with the Examiner’s rejection, that these further
instructions for calculating the claimed rate of skill acquisition for a student
are steps capable of being done in the human mind, in a practical manner,
for example, by a teacher, using pen and paper. Final Act. 13–14, 16–18;
Ans. 13–14, 16–18. Thus, we find that dependent claims 7–11, 25, and 26
recite a mental process, which is a grouping under the judicial exception of
an abstract idea.
The bodies of claim 12, which depends from independent claim 1, and
claim 27, which depends from independent claim 20, recite, in relevant part,
limitations for periodically updating values of the weights based on observed
effort exerted by a group of students to complete the learning objectives.
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Appeal Br. 24, 28 (Claims App.). We find, consistent with the Examiner’s
rejection, that these further instructions for calculating the claimed weight
representing a difficulty or quantity of individual skills within the learning
objective are steps capable of being done in the human mind, in a practical
manner, for example, by a teacher observing the ease or difficulty with
which the students complete learning objectives, and making a judgment
about the effort exerted by the students. Final Act. 14, 16–18; Ans. 14, 16–
18. The Specification indicates student efforts can be measured by the time
it takes to complete a learning objective as weight values. See Spec. ¶ 31.
Thus, we find that dependent claims 12 and 27 recite a mental process,
which is a grouping under the judicial exception of an abstract idea.
The bodies of claims 13, 14, 17, and 18, which depend from
independent claim 1, recite, in relevant part, further instructions for
estimating a student’s training time based on the student’s past performance
and also instructions for adjusting the estimated training time to account for
holidays and vacation breaks from school, and additionally, scheduling
fewer or additional lesson objectives depending on a comparison of the
estimated training time to the estimated time of completion. Appeal Br. 25
(Claims App.). We find, consistent with the Examiner’s rejection, that these
limitations are steps capable of being done in the human mind, in a practical
manner, for example, by a teacher, using pen and paper, to evaluate a
student’s past performance and to use judgment to factor breaks from
learning into the estimated training time, and to further use judgment to
optimize the number of lesson objectives based on a comparison between the
estimated training time to the estimated time of completion. Final Act. 14–
15, 17–18; Ans. 14–15, 17–18. Thus, we find that dependent claims 13, 14,
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17, and 18 recite a mental process, which is a grouping under the judicial
exception of an abstract idea.
The bodies of claims 15, 16, and 19, which depend from independent
claim 1, and claim 28, which depends from independent claim 20, recite, in
relevant part, further instructions for notifying the administrator, including
identifying a portion of a learning objective on which the student performs
poorly or a decrease of the rate of skill acquisition, and also displaying both
a comparison of the rate of skill acquisition of the student with an average
rate of skill acquisition of classmates of the student and also suggestions for
remedial actions, wherein the administrator may further be a parent or
teacher of the student who responds by providing supplemental lessons to
the student. Appeal Br. 25, 26, 29 (Claims App.). We find, consistent with
the Examiner’s rejection, that identifying information regarding a student’s
performance and displaying a qualification of the information and suggested
remedial actions for notification to an administrator (i.e., a parent or teacher)
who may follow the suggestions by providing supplemental lessons are steps
capable of being done in the human mind, in a practical manner, for
example, by a teacher, using pen and paper. Final Act. 13, 16–18; Ans. 13,
16–18. Thus, we find that dependent claims 15, 16, 19, and 28 recite a
mental process, which is a grouping under the judicial exception of an
abstract idea.
Finally, the bodies of claim 29, which depends from claim 1, and
claim 30, which depends from claim 20, recite, in relevant part, a definition
for the measured interactions as comprising a number of responses made by
the student before a correct answer to a question is selected. Appeal Br. 29
(Claims App.). We find, consistent with the Examiner’s rejection, that this
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definition may be applied in the human mind, in a practical manner, for
example, by a teacher, using pen and paper, to evaluate (or calculate) the
measured interactions as claimed. Final Act. 13, 16–18; Ans. 13, 16–18.
Thus, we find that dependent claims 15, 16, 19, and 28 recite a mental
process, which is a grouping under the judicial exception of an abstract idea.
Appellant argues that, unlike the cases cited by the Examiner supra,
which identify aspects of data processing as abstract ideas, the present
claims “recite the generation of a new type of information—i.e., a rate of
skill acquisition associated with a student per unit of time—that is created
anew based on questions presented to the student and measured interactions
between the student and questions presented to the student,” wherein “the
measured interactions comprise one or more changes made by the student or
one or more mouseovers made by the student.” Appeal Br. 13–14.
Appellant submits “the creation of a new rate of skill acquisition . . . goes
beyond the obtaining, comparing, and organizing steps in the cited cases on
which the Examiner relies” (id. at 14), and thus, the claims “are not directed
to an abstract concept” (id. at 15).
We are not persuaded by Appellant, however, that inventing and
claiming a purportedly new metric (i.e., new information for providing a
standard of measurement) results in the claimed steps, individually and in
combination, no longer reciting a mental process. In other words, the
claimed steps still recite steps capable of being done in the human mind, or
by using pen and paper, regardless of whether the claimed steps use
information that is known or newly created. Further, Appellant’s argument
that the Examiner errs by finding that the claimed basis for determining the
purportedly new metric (i.e., by measuring student-question interactions, and
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in particular, answer changes or mouseovers made by the student presented
with questions) is gathering and tabulating data, lacks sufficient support.
Rather, we agree with the Examiner’s finding.
Appellant also argues that “unlike the ‘fundamental building block[s]
of human ingenuity’ at issue in claims of Alice, Bilski, Flook, and Benson,”
the present claims are not preemptive, because, similar to Diehr, “the
claimed system is so specific that it cannot be said to preempt a
fundamental, abstract concept.” Appeal Br. 15. We are not persuaded by
Appellant’s argument. As the Examiner correctly explains, although the
Supreme Court has described “the concern that drives [the exclusion of
abstract ideas from patent-eligible subject matter] as one of pre-emption”
(Alice Corp., 573 U.S. at 216), “the absence of complete preemption does
not demonstrate patent eligibility” (Ariosa Diagnostics, Inc. v. Sequenom,
Inc., 788 F.3d 1371 (Fed. Cir. 2015) (citing Alice Corp., 573 U.S. at 216).
Ans. 23. Moreover, “where a patent’s claims are deemed only to disclose
patent ineligible subject matter under the Alice framework, as they are in this
case, preemption concerns are fully addressed and made moot.” Two-Way
Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1339 (Fed.
Cir. 2017). Here, as discussed infra, the claims are directed to a mental
process without reciting significantly more than the mental process itself,
and therefore, are deemed only to recite patent ineligible subject matter. Nor
can we find any basis in support of Appellant’s argument that the narrow
scope of the claims provides patent eligibility where the claims recite only
abstract ideas. See BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1291
(Fed. Cir. 2018) (“As a matter of law, narrowing or reformulating an abstract
idea does not add ‘significantly more’ to it.”); Synopsys, Inc. v. Mentor
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Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (“But, a claim for a
new abstract idea is still an abstract idea.”).
Appellant further argues that “the facts of Appellant’s claimed subject
matter do not ‘uniquely match’ the facts at issue in Cyberfone,” because the
present claims “recite[] a method of delivering a sequence of learning
objectives to a student in accordance with a received target date . . . ,” as
compared to Cyberfone’s claims, which are “directed to a
telephone/transaction entry device and system for entering transaction data
into databases.” Appeal Br. 13. However, the distinguishable contexts of
the mental process steps (which involve data processing) as set forth in the
present claims and compared to the claims of Cyberfone does not remove
Cyberfone from being instructive with respect to whether data processing
steps are abstract ideas. See also id. at 14 (arguing that “Appellant’s claims
are not directed to any idea that can reasonably be considered abstract,”
because Appellant’s claimed invention does not recite the same abstract idea
as identified by the Supreme Court in Alice, Bilski, Flook, and Benson).
Indeed, Cyberfone makes clear that “methods that can be performed in the
human mind alone are not eligible for patent protection.” Cyberfone, 558 F.
App’x at 992.
Appellant further argues that “the complexity of Appellant’s claims . .
. involve a level of inherent complexity that is not conducive to being
performed mentally.” Appeal Br. 15–16. Again, we are not persuaded by
Appellant’s arguments. Appellant lists the limitations of claim 1, but fails to
otherwise identify any claim limitations that could not be practically
performed in the human mind, or by using pen and paper. Rather, we find
that the steps discussed supra are not so complex as to prevent their
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performance in the human mind, or by using pen and paper, in a practical
manner.5
Accordingly, we find that the claims recite a mental process: a
method for delivering a sequence of learning objectives to a student in
accordance with a received target date.

Step 2A, Prong Two: Do the claims recite additional elements that integrate
the judicial exceptions into a “practical application”?
Following our Office guidance, having found that the claims recite a
judicial exception, we next determine whether the claim recites “additional
elements that integrate the exception into a practical application” (see MPEP
§§ 2106.05(a)-(c), (e)-(h)). See Revised 2019 Guidance, 84 Fed. Reg. at 54.
As an initial matter, we consider whether the recitations of computer
devices in the preambles of claims 1 and 20 are limiting. For example, the
preamble of independent claim 1 recites “[a] computer-based method of
delivering a sequence of learning objectives to a student with a received
target date” (emphasis added), and the preamble of independent claim 20
recites “[a] non-transitory computer-readable medium having instructions
which, when executed by a processor of a computing system, cause the
computing system to execute a method of delivering a sequence of learning
objectives to a student with a received target date” (emphasis added).

5 Notably, to the extent there are claim limitations in addition to the claim
limitations discussed pursuant to Step 2A, Prong One, which may not be
practically performed in the human mind, such claim limitations would not
negate our findings relative to the claim limitations discussed pursuant to
Step 2A, Prong One, but would be relevant to our analysis under Step 2A,
Prong Two.
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We interpret Appellant’s claims, during examination, according to
their broadest reasonable interpretation consistent with the Specification. In
re ICON Health & Fitness, 496 F.3d 1374, 1379 (Fed. Cir. 2007).
“Generally, the preamble does not limit the claims.” Georgetown Rail
Equip. Co. v. Holland L.P., 867 F.3d 1229, 1236 (Fed. Cir. 2017) (quoting
Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1346 (Fed. Cir.
2002)). In determining whether a preamble is limiting, our reviewing court
instructs us to consider whether the preamble is “necessary to give life,
meaning and vitality” to the claim. C.W. Zumbiel Co. v. Kappos, 702 F.3d
1371, 1385 (Fed. Cir. 2012) (citation omitted).
Thus, we consider the limitations in the bodies of claims 1 and 20 to
determine whether the method steps require a computer platform, or put
another way, whether a computer platform is necessary to give meaning to
the method steps recited in the bodies of the claims. The only reference to
computer devices recited in the method steps of the bodies of claims 1 and
20 is the reference to mouseovers in step (vi): “determining a rate of skill
acquisition associated with the student per unit of time, wherein the
determined rate of skill acquisition is based on measured interactions
between the student and questions presented to the student, the measured
interactions comprising . . . one or more mouseovers made by the student.”
The Specification discloses that “interactions monitored by the student
assessment engine 118 may include, among other things, . . . mouse overs,
and other indications of hesitation or uncertainty” (Spec. ¶ 24), and also that
“hardware 900 may include one or more user input device 906 (e.g., . . . a
mouse . . . )” (id. ¶ 70). However, step (vi) does not require using a mouse,
but rather, only requires determining a rate of skill acquisition based on data
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that may be generated, ultimately, by a student using a mouse. Thus, we
find that the recitation of mouseovers does not make a computer platform, as
recited in the preambles of claims 1 and 20, limiting to the claimed
inventions, as a computer platform is not required to give meaning to (or to
perform the method steps recited in) the bodies of claims 1 and 20.
Notwithstanding the non-limiting nature of the preambles of claims 1
and 20, simply reciting generic computer components that perform in
generic manners does not integrate an abstract idea into a practical
application. See, e.g., Alice, 573 U.S. at 223 (“[T]he mere recitation of a
generic computer cannot transform a patent-ineligible abstract idea into a
patent-eligible invention.”); see also 2019 Eligibility Guidance (identifying
“merely us[ing] a computer as a tool to perform an abstract idea” as an
example of when an abstract idea has not been integrated into a practical
application). Here, the recitations in the preambles of claims 1 and 20 of
computer devices are generic with respect to the functioning of the
computer-based method and non-transitory computer-readable medium. In
other words, even giving the preambles patentable weight, the recitation of a
computer-based method or non-transitory computer-readable medium does
not integrate the mental process recited in the bodies of the claims into a
practical application of the mental process.
Notably, claim 19, which depends from independent claim 1, recites,
in relevant part, “receiving a supplemental instruction request . . . via a user
interface.” Appeal Br. 26. The Specification discloses that “[f]or interface
with a user or operator, the hardware 900 may include one or more user
input devices 906 (e.g., a keyboard, a mouse, a scanner etc.).” Spec. ¶ 70.
Thus, we find that claim 19 requires a computer platform (i.e., a “computer-
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based method,” as set forth in the preamble), and also a user interface that is
a computer device. However, because the claimed user interface is a generic
computer component that performs in a generic manner, similar to the
recited computer-based method, recitation of the user interface in claim 19
does not integrate the mental process into a practical application.
With the exception of dependent claim 19, we do not find any further
limitations recited in the dependent claims analyzed supra, which are in
addition to the mental process itself, and which may be considered to
determine whether such additional limitations integrate the mental process
into a practical application. For example, regarding the claim term
“displaying” in dependent claims 16 and 28, we find that because
information may be displayed by using pen and paper, in addition to a
computer display device, the claim term “displaying” does not require a
computer platform. Appeal Br. 25, 29 (claims 16, 28); cf. Spec. ¶ 15 (“I/O
devices 108 may include output devices such as a display”); ¶ 70 (“display
908 (e.g., a Liquid Crystal Display (LCDE) panel)”). In other words, a
preamble reciting performance of the claimed method on a computer
platform is not necessary to give meaning to the claim. See Univ. of Florida
Research Found., Inc. v. General Electric Co., 916 F.3d 1363, 1367 (Fed.
Cir. 2019) (holding that automation of “pen and paper methodologies” is a
quintessential “do it on a computer” patent that recites an abstract idea).
Accordingly, we find the claims are directed to the judicial exception
of an abstract idea, and more particularly, a mental process for delivering a
sequence of learning objectives to a student in accordance with a received
target date.

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Step 2B: Does claim 1 recite an “inventive concept” or “significantly
more”?
We next consider whether the claims recite any elements, individually
or as an ordered combination, that transform the abstract idea into a patent
eligible application, e.g., by providing an inventive concept. Alice, 573 U.S.
at 217–18. The guidance similarly states, under Step 2B, “examiners should
. . . evaluate the additional elements individually and in combination . . . to
determine whether they provide an inventive concept (i.e., whether the
additional elements amount to significantly more than the exception itself).”
2019 Revised Guidance, 84 Fed. Reg. at 56 (emphasis added).
Appellant argues that “[the] claimed steps are not familiar mental
steps that humans have previously performed, and that are now implemented
on a computer.” Appeal Br. 15. In other words, Appellant argues that the
claims “recite a novel combination of features beyond the abstract idea.” Id.
at 17; see also id. at 18–19 (reciting the methods steps of claims 1 and 20).
Appellant also argues that “[t]he claims recite features that are meaningful”
and that “the detailed technical features describing various instructions for
delivering a sequence of learning objects to a student in accordance with a
received target date strongly indicate that the claims recite concrete practical
applications that are significantly more than claiming an idea itself.” Reply
Br. 4. Appellant also submits that the Examiner fails to provide factual
support for any finding that a claim limitation recites conventional routine,
or well-understood activities. Id. at 5.
To the extent Appellant argues that the claims necessarily contain an
“inventive concept” based on their alleged novelty and non-obviousness
over the prior art, this argument is unpersuasive. Although the second step
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in the Alice/Mayo framework is termed a search for an “inventive concept,”
the analysis is not an evaluation of novelty or non-obviousness, but rather, a
search for “an element or combination of elements that is ‘sufficient to
ensure that the patent in practice amounts to significantly more than a patent
upon the [ineligible concept] itself.”’ Alice, 134 S. Ct. at 2355. A novel and
nonobvious claim directed to a purely abstract idea is, nonetheless, patent-
ineligible. See Mayo, 566 U.S. at 90. Thus, Appellant’s argument is not
persuasive.
Further, simply implementing the recited mental process on a
computer is insufficient to transform the claimed mental process into a
patent eligible application, because, as discussed supra, the additional
elements referring to a computer platform in the preambles of the claims (if
given patentable weight), and also the recitation of a user interface in
dependent claim 19, involve only the conventional use of computing
components. See, e.g., MPEP § 2106.05(d) (“[i]f . . . the additional element.
. . is no more than well-understood, routine, conventional activities
previously known to the industry, which is recited at a high level of
generality, then this consideration does not favor eligibility”). The
Specification itself provides sufficient evidence that claim limitations
involving computer devices involve only the conventional use of such
computer devices, as discussed supra.
Accordingly, we sustain the Examiner’s rejection of claims 1–30 as
directed to patent-ineligible subject matter under 35 U.S.C. § 101.
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CONCLUSION
In summary:
Claims
Rejected
35
U.S.C.
§
Reference(s) Affirmed Reversed
1–30 101 Patent eligibility 1–30
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).
AFFIRMED