ORACLE INTERNATIONAL CORPORATIONDownload PDFPatent Trials and Appeals BoardMay 8, 20202019002616 (P.T.A.B. May. 8, 2020) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 14/837,584 08/27/2015 Anadi UPADHYAYA ORA150961 (O-371) 4305 51444 7590 05/08/2020 Kraguljac Law Group/Oracle 4700 Rockside Road Summit One, Suite 510 Independence, OH 44131 EXAMINER WILDER, ANDREW H ART UNIT PAPER NUMBER 3627 NOTIFICATION DATE DELIVERY MODE 05/08/2020 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): DDay@KragLaw.com MPusti@KragLaw.com PTOMail@KragLaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ANADI UPADHYAYA Appeal 2019-002616 Application 14/837,584 Technology Center 3600 Before MICHAEL J. STRAUSS, MIRIAM L. QUINN, and DAVID J. CUTITTA II, Administrative Patent Judges. QUINN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1−20. See Final Act. 1. 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 the real party in interest as Oracle International Corporation. Appeal Br. 1. Appeal 2019-002616 Application 14/837,584 2 CLAIMED SUBJECT MATTER The claims are directed to a computerized system and method for controlling electronic distribution of compensation. The Specification explains that providing compensation to employees in a corporation with global reach is a complex task. Spec. ¶ 1. Because different countries have different norms for distributing compensation and laws, a single rule that governs the whole corporation is not flexible enough. Id. Further, the Specification explains the complexity of tiers of management hierarchies where upper level management may prefer blanket policies affecting employees in different localities. Id. ¶ 2. Thus, the Specification describes a holistic view of maintaining compensation that incorporates a global approval rule, but allows local rules affecting compensation for local groups to provide flexibility. Id. ¶ 10. Claim 15, identified by the Examiner as exemplary (Final Act. 4), recites as follows: 15. A computer-implemented method performed by a computing device including at least a processor that executes instructions from a memory, the method comprising: generating, in an electronic database, an electronic data structure that defines a compensation group comprised of a subset of employee records that represent a employees of a business; creating, in the electronic database, a local approval rule that (a) defines criteria that are to be satisfied for approving distribution of compensation to the compensation group and (b) modifies compensation approval for the compensation group from a global approval rule that defines conditions for approving the electronic distribution of compensation and that controls electronic distribution of compensation to all employees of the business; Appeal 2019-002616 Application 14/837,584 3 replacing the global approval rule with the local approval rule to change the conditions for the electronic distribution of compensation by applying the local approval rule to the employee records of the compensation group in place of the global approval rule; and applying the local approval rule to the compensation group, in place of the global approval rule, to determine whether the criteria are satisfied for approving the electronic distribution of compensation to the compensation group; and in response to determining that the local approval rule has been satisfied, electronically distributing the compensation to the compensation group by transmitting an electronic communication indicating approval of the compensation to cause the compensation to be transferred to the subset of the employee records. Appeal Br. 36−37 (Claim Appendix). REJECTION Claims 1−20 stand rejected under 35 U.S.C. § 101 for claiming unpatentable subject matter. Final Act. 4−10. OPINION We review the appealed rejection for error based upon the issues identified by Appellant, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). To the extent Appellant has not advanced separate, substantive arguments for particular claims, or other issues, such arguments are waived. 37 C.F.R. § 41.37(c)(1)(iv) (2017). For example, here Appellant argues claim 1 separately and states that claims 10 and 15 recite similar limitations. Appeal Br. 22−24. As for the Appeal 2019-002616 Application 14/837,584 4 dependent claims, Appellant does not present argument for any dependent claim except for generically arguing that claim 9 recites additional combination of elements not analyzed by the Examiner as well-understood, routine or conventional. Id. at 25−26. We, therefore, decide the appeal based on the arguments presented for claim 1, and further address Appellant’s contention regarding dependent claim 9 separately. See 37 C.F.R. § 41.37(c)(1)(iv). An invention is patent-eligible if it claims a “new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101. But the Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014). To determine whether a claim falls within an excluded category, the Court has set out a two-part framework, described in Mayo and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). That framework requires to first consider 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.”). 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- Appeal 2019-002616 Application 14/837,584 5 eligible application.” Alice, 573 U.S. at 221 (citation and quotation marks omitted). The PTO has published revised guidance on the application of § 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the 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); and (2) additional elements that integrate the judicial exception into a practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th Ed., Rev. 08.2017 (Jan. 2018))). 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 recites an inventive concept, by determining 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 Guidance. With these principles in mind, we turn to the Examiner’s § 101 rejection. Discussion of Claim 1 (a) The Judicial Exception—Step 2A, Prong 1 of the Guidance The Guidance breaks the Alice/Mayo test for identifying claims directed to judicial exceptions into two prongs. Guidance, 84 Fed. Reg. at Appeal 2019-002616 Application 14/837,584 6 53. Step 2A, Prong 1 asks whether the claims recite a judicial exception. The Examiner identified various claim limitations that recite certain methods of organizing human activity as abstract ideas. Final Act. 6−7 (citing, for example, Accenture Global Svcs., Gmbh, v. Guidewire Software, Inc., 728 F.3d 1336 (Fed. Cir. 2013), which states that claims that generate tasks based on rules to be completed upon the occurrence of an event are an “abstract concept”). The Examiner also found that the claim recites “an idea of itself.” Id. at 8 (citing, for example, Cybersource Corp., v. Retail Decisions, Inc., 654 F.3d 1366 (Fed. Cir. 2011), which states that claims directed to verifying the validity of a credit card transaction over the Internet constitute mental processes, and, therefore, the claim recites an abstract idea). Under the Guidance, looking to the specific limitations in claim 1, as the representative claim, we agree with the Examiner that claim 1 recites an abstract idea. Under Supreme Court precedent, claims directed purely to an abstract idea are patent ineligible. As set forth in the Guidance, which extracts and synthesizes key concepts identified by the courts, abstract ideas include (1) mathematical concepts, (2) certain methods of organizing human activity, and (3) mental processes. As stated above, the Examiner finds that the claim recites two distinct categories of abstract ideas: certain methods of organizing human activity and mental processes. Final Act. 6−8. We agree with the Examiner. The following are enumerated limitations recited in claim 1, with the italicized portions denoting the limitations the Examiner finds are abstract ideas: Appeal 2019-002616 Application 14/837,584 7 (A) generate, in an electronic database, an electronic data structure that defines a compensation group comprised of a subset of employee records that represent a sub-set of all employees of a business; (B) create, in the electronic database, a local approval rule that (a) defines criteria that are to be satisfied for approving an electronic distribution of compensation to the compensation group and (b) modifies compensation approval for the compensation group from a global approval rule that defines conditions for approving the electronic distribution of compensation and that controls electronic distribution of compensation to all employees of the business; (C) replace the global approval rule with the local approval rule to change the criteria for the electronic distribution of compensation by applying the local approval rule to the employee records of the compensation group in place of the global approval rule; and (D) in response to determining that the local approval rule has been satisfied for the compensation group, electronically distribute compensation to the compensation group by transmitting an electronic communication indicating approval of the compensation to cause the compensation to be transferred to the subset of the employee records. Apart from additional limitations discussed separately below, limitations A through D recite certain methods of organizing human activity, and, in particular commercial or legal interactions. See October 2019 Patent Eligibility Guidance Update, 5 (stating that “commercial interactions” or “legal interactions” include subject matter relating to agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or Appeal 2019-002616 Application 14/837,584 8 behaviors, and business relations.”).2 The business relation recited in the claim is the relationship between the employer and employee as it pertains to the employer’s activity of issuing paychecks. Limitation A recites the concept of a business defining a particular group of employees. Limitation B recites the concept of creating an exception to the default rule for the business to approve the paychecks for the identified employees. Limitation C recites the concept of using the exception, rather than the default rule, as the criteria for processing the paychecks for the identified employees. And finally, limitation D recites the concept of issuing paycheck instructions in accordance with the exception, after checking that the exception applies to the identified employees. As stated above, the Specification describes that a business may have a global approval rule that applies to all employees of a business. Spec. ¶¶ 17, 20. The Specification offers an example of the global approval rule as specifying that the compensation requires certification by managers at each managerial level, up to the CEO, and that the paychecks will not be distributed before the 15th of each month. Id. ¶ 23. The Specification then provides an example of a local approval rule (or the “exception” in our summary) such as the local laws in a specific location in India that dictate that compensation must be provided on the 1st of each month. Id. The approval process for the local approval rule could also change to allow for local management approval, rather than requiring approval up to the CEO. Id. ¶ 24. Therefore, the claim’s recited compensation group or group of employees includes the employees that work in the specific location in India. 2 84 Fed. Reg. 55,942 (notifying the public of updated guidance available from the USPTO website at https://www.uspto.gov/PatentEligibility). Appeal 2019-002616 Application 14/837,584 9 Id. It is therefore clear that the claims recite how a business entity sets up rules for authorizing and processing compensation to take into account different legal requirements of locations in which employees work. Accordingly, we agree with the Examiner that the claim recites certain methods of organizing human activity, and more particularly, commercial or legal interactions. We determine that limitations A through D also recite mental processes. For instance, limitation A may be performed practically by the human mind or with the aid of pen and paper by gathering the employee’s files from a particular group (such as those employees working in a particular city in India) or by merely listing those employees known to work in that location. Limitation B may be performed practically by the human mind or with the aid of pen and paper by specifying the rule that (1) employees in the Indian city must be paid by the 1st of the month, rather than processing the payment after the 15th of the month, and (2) the local manager may certify the compensation. Limitation C may be performed practically by the human mind or with the aid of pen and paper by applying these compensation exceptions of limitation B to the particular group of employees identified in limitation A. And limitation D may be performed practically by the human mind or with the aid of pen and paper by sending a message to the company’s accountant to issue paychecks to the particular employees after verifying that compensation was approved by a local manager and that the employees qualify for the exception (i.e., that they do live in the relevant Indian city). Appeal 2019-002616 Application 14/837,584 10 In sum, we are persuaded that under the Guidance, claim 1 recites certain methods of organizing human activity (commercial or legal interactions) and mental processes. (b) Integration into a Practical Idea—Step 2A, Prong 2 of the Guidance Step 2A, Prong 2 asks whether the claims are “directed to” a judicial exception or whether the claims integrate the judicial exception into a practical application. Guidance, 84 Fed. Reg. at 53 (explaining the practical application test responds to “a growing body of decisions . . . distinguish[ing] between claims that are ‘directed to’ a judicial exception . . . and those that are not”). A practical application is one where the claim “will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.” Id. at 54. For example, limitations that are indicative of “integration into a practical application” include: 1) Improvements to the functioning of a computer, or to any other technology or technical field —see MPEP § 2106.05(a); 2) Applying the judicial exception with, or by use of, a particular machine —see MPEP § 2106.05(b); 3) Effecting a transformation or reduction of a particular article to a different state or thing —see MPEP § 2106.05(c); and 4) Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort Appeal 2019-002616 Application 14/837,584 11 designed to monopolize the exception —see MPEP § 2106.05(e). In contrast, limitations that are not indicative of “integration into a practical application” include: 1) Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea —see MPEP § 2106.05(f); 2) Adding insignificant extra-solution activity to the judicial exception —see MPEP § 2106.05(g); and 3) Generally linking the use of the judicial exception to a particular technological environment or field of use —see MPEP § 2106.05(h). Appellant argues that the claims are directed to an improvement to existing technological processes. Reply 2 (stating that the “improvements of the claims and present specification are explicit and clear and referring to the arguments made in the Appeal Brief at pages 8−10). For instance, Appellant argues that the improvement includes changing a “global approval rule” that “controls electronic distribution of compensation to all employees of the business” with a “local approval rule” that has different approval conditions and replaces the global rule. Appeal Br. 9; see also Reply 7 (arguing that “the present system is directed to an improvement that provides a mechanism to adapt and modify such global rules with local rules (having different criteria) specifically applied to a particular group of data records.”) Thus, Appellant argues, the improvement “provides a mechanism to adapt and modify such global rules with local rules (having different criteria) specifically applied to a particular group of records.” Appeal Br. 9. We are Appeal 2019-002616 Application 14/837,584 12 not persuaded that the alleged “improvements” integrate the abstract idea into a practical application. The “global approval rule” and “local approval rule,” Appellant argues, allegedly improve the process of electronic distribution and approval. Id.; Reply 6 (arguing that “the claim also determines and controls the electronic distribution process including when to electronically distribute compensation when a local approval rule is satisfied, which also improves accuracy of the electronic process.”). The alleged improved process, however, is part of the abstract idea discussed above. That is, modifying the “global approval rule” that dictates when the company distributes paychecks, with a “local approval rule” that, for example, changes the default paycheck date for a particular group of employees, is still a certain method of organizing human activity and a mental process, i.e., an abstract idea. And any improvement to render more accurate the process of issuing compensation does not make the improvement a technological improvement. Any alleged improvement lies in the abstract idea itself, not to any technological improvement. See BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1287–88 (Fed. Cir. 2018). Furthermore, the Specification confirms that any improvement alleged by Appellant is an improvement in the business process, not a technological improvement. According to the Specification, the “local approval rule defines criteria that are to be satisfied for approving distribution of compensation to the compensation group.” Spec. ¶ 35. The Specification describes that this criteria consists of, for example, a managerial level of the reporting hierarchy that is to certify the compensation prior to distribution. Id. ¶ 36. Another criteria may be timeframes, completions rates, Appeal 2019-002616 Application 14/837,584 13 performance indicators or other criteria that may be tracked and used to gauge whether compensation should be approved for the compensation group. Id. The claim broadly recites the “local approval rule” consistent with this general description in the Specification: it defines criteria that are to be satisfied for approving an electronic distribution of compensation and modifies compensation approval for the compensation group from a global approval rule. Appeal Br. 28 (Claim Appendix). Applying this local approval rule, therefore, merely changes the default manner in which a business processes compensation distribution, not because the technology is improved, but because the business process is changed: to apply one set of criteria instead of another. In sum, we find no evidence that the technology itself is improved. Appellant further argues that the claim here is analogous to the “improved process” recited in claims in Diamond v. Diehr, 450 U.S. 175 (1981), and, therefore, the claim here is patent-eligible. Appeal Br. 10. According to Appellant, the Diehr claim and the present claim both recite “physical actions performed based on previous conditions determined by a computer for controlling when to perform the final action.” Id. Further, Appellant argues Diehr’s alleged improvement of “timing conditions” as being comparable to the claimed local approval rules, which, according to Appellant, change the timing conditions for when the electronic distribution is triggered. Reply 7−8. We are not persuaded by these arguments. Diehr explained that the claimed contribution to the art was the step of “constantly measuring the actual temperature inside the mold” for the synthetic rubber products. 450 U.S. at 178, 179 n.5. Diehr improved the curing process for producing Appeal 2019-002616 Application 14/837,584 14 synthetic rubber. Id. The claim limitation here, argued by Appellant to be analogous to Diehr, recites “transmitting an electronic communication . . . to cause the compensation to be transferred to the subset of the employee records.” Appeal Br. 10. These two “actions” are not analogous. Unlike in Diehr, the claim here involves a generic computer implementation of transmitting a message that states that the compensation is approved. The claim here does not recite any technology for effecting the actual transfer of compensation or otherwise making a tangible change in a product or the product’s manufacture, like the claims in Diehr perform. As drafted, the claim merely requires the sending of a message, which, as stated previously in our analysis of the claim’s recited mental process, can be effected by a human being sending a message, to the accounting department, informing that it is approved to send paychecks to the selected employees. Thus, no improvement of technology is involved. See Final Act. 2 (Examiner concluding that “the focus of the claims is not on such an improvement in computers as tools, but on certain independently abstract ideas that use computers as tools.”). Rather, by “transmitting an electronic communication indicating approval of the compensation” the claim points to post-solution activity—the electronic message is the result of applying the new rule. Diehr, 450 U.S. 191−192 (“[I]nsignificant post-solution activity will not transform an unpatentable principle into a patentable process.”). Appellant also argues that the claims are directed to a machine implemented with special functions such that a generic computer cannot perform the claimed functions. Appeal Br. 21−22. Appellant presents this argument in connection with the factual inquiry regarding generic or well- understood, routine, and conventional activity. Id. Although such a Appeal 2019-002616 Application 14/837,584 15 discussion falls under a different analysis under the Guidance, we address here only the portions of Appellant’s argument that imply that the claim applies the recited abstract ideas with or by the use of a special machine. See supra, citing MPEP § 2106.05(b). We do not agree with Appellant that the claim involves the application of the abstract ideas in a special machine. The claim does not recite any special machine. Nor does Appellant point to any special machine in the Specification. Rather, we find that the Specification describes the computing environment in which the functions are performed in a very generic manner. For example, the Specification describes the computing device as a computer that includes a processor, a memory, and input/output ports operably connected by a bus. Spec. ¶ 45. The computer includes an approval logic, which the Specification describes as a “means (e.g., structure: hardware, non-transitory computer-readable medium, firmware) for performing the actions described.” Id. ¶ 46. These means, according to the Specification may be implemented as stored computer executable instructions that are presented to the computer as data that are temporarily stored in memory and then executed by the processor. Id. ¶ 47. And the processor, the Specification states, “may be a variety of various processors including dual microprocessor and other multi-processor architectures.” Id. ¶ 49. By describing the computing device, processor, and the approval logic (instructions) in this manner, the Specification conveys that the claimed functions are performed in a standard computer environment—without the use or application of a special machine. Indeed, the Specification confirms that the claim uses a computer as a tool to perform the abstract idea. And to Appeal 2019-002616 Application 14/837,584 16 the extent Appellant’s argument places the claim in a particular field of electronic distribution of compensation,3 such an argument merely links the use of the judicial exception to a particular technological environment or field of use, such that the claim as a whole is no more than a drafting effort designed to monopolize the exception. See Diehr, 450 U.S. at 191 (stating that the prohibition against patenting an abstract principle “cannot be circumvented by attempting to limit the use of the [principle] to a particular technological environment” (citing Parker v. Flook, 437 U.S. 584, 584 (1978))); Final Act. 3 (Examiner concluding that “[a]t most, the computer implementation involved in the claims at issue here is an attempt to limit use of the abstract concept to a particular technological environment.”). Finally, we address the recitation of additional elements, such as “a computer” in the preamble, “an electronic database” in limitations A and B, and “an electronic data structure” in limitation A.4 In particular, the claim recites generating “in an electronic database” an “electronic structure” that defines a compensation group comprised of a subset of employee records that represent a sub-set of all employees of a business. And the claim recites creating “in the electronic database,” a local approval rule. These additional elements, alone or in combination with the remainder of the limitations 3 See Appeal Br. 9 (arguing that “Claim 1 is directed to a non-transitory computer-readable medium that improves an existing technological process of processing employee records, and determining and controlling an electronic distribution process including when to electronically distribute compensation (which is an electronic process).”). 4 We have addressed above the “electronic communication” as being post- solution activity and the “electronic distribution of compensation” as an attempt to link the use of the judicial exception to a particular technological environment or field or use. Appeal 2019-002616 Application 14/837,584 17 addressed above do not add any meaningful limitations to the claims that would indicate a practical application of the abstract ideas. First, as stated earlier, the Specification describes the computer as a generic computer. Spec. ¶¶ 46−49. Claim 10 also recites a “remote computer” to which the electronic communication is transmitted. Appeal Br. 34 (“transmitting an electronic communication to a remote computer indicating approval of the compensation to cause the compensation to be transferred to the subset of the employee records”). Other than receiving the electronic communication, the “remote computer” of claim 10 performs no other function. There is no indication that this “remote computer” is any different from the generic computer recited generally, in claim 1. Thus, we are persuaded that the remote computer of claim 10 is a generic computer functioning as a generic computer component that merely receives data. Second, the Specification describes the database and database structure elements as generic computer components. For instance, the database is an employee database (Spec. ¶ 13) that stores the reporting hierarchy, or more plainly, the managerial structure of business. Id. ¶ 14. The database also stores the employee records, which maintain information concerning the employee such as age, position, location, and salary. Id. ¶ 18. Also, the local approval rule is created in the database. Id. ¶ 34. To do so, one must create a data structure in the database to store the criteria for the local approval rule and populate the data structure with the criteria. Id. Notably, the Specification describes the “data structure” and the “database” in functional, non-generic terms: A “data structure,” as used herein, is an organization of data in a computing system that is stored in a memory, a storage device, or other computerized system. A data Appeal 2019-002616 Application 14/837,584 18 structure may be any one of, for example, a data field, a data file, a data array, a data record, a database, a data table, a graph, a tree, a linked list, and so on. A data structure may be formed from and contain many other data structures (e.g., a database includes many data records). Other examples of data structures are possible as well, in accordance with other embodiments. Spec. ¶ 59. These passages convey that the database and data structure are merely tools used in the implementation of the recited functions. There is no identification of particular technology that is improved in either the database or the data structure. Indeed, the database is being used for the very purpose it is designed: to store, organize, and find data. And the data structure is generically described, devoid of ties to any particular database technology or structure because the Specification provides for the “data structure” to comprise simply a data field or a data file, among other options. Id. In sum, consistent with the descriptions of the Specification, the claim’s recited computer elements are nothing more than the use of generic computer components as tools to implement the combined recited abstract ideas. We conclude, based on our analysis above, that the additional elements, alone or in combination, do not apply the abstract idea in a meaningful way such that the claim as a whole is more than a drafting effort designed to monopolize the exception. For these reasons, we conclude that claim 1 does not integrate the recited abstract idea into a practical application, and, therefore, is directed to an abstract idea. (c) Inventive Concept—Step 2B of the Guidance Because we agree with the Examiner that claim 1 is “directed to” an abstract idea, we consider whether an additional element (or combination of elements) adds a limitation that is not well-understood, routine, conventional Appeal 2019-002616 Application 14/837,584 19 activity in the field or whether the additional elements simply append WURC activities previously known to the industry, specified at a high level of generality, to the judicial exception. Guidance, 84 Fed. Reg. at 23. The Examiner’s finding that an additional element (or combination of the additional elements) is a WURC activity must be supported with a factual determination. Id. (citing MPEP § 2106.05(d), as modified by the Berkheimer Memorandum5). The Examiner finds that consistent with what the courts have recognized, the claimed computer functions of the additional elements (such as processor, memory, electronic database, non-transitory computer readable medium, and remote computer) and their associated functions are well- understood, routine, and conventional. Final Act. 9−10 (citing In re TLI Commc’ns LLC Patent Litigation, 823 F.3d 607 (Fed. Cir. 2016); Ans. 4−5 (relying on TLI to reiterate that the combination of additional elements of at least one processor, at least one memory, an electronic database, a non- transitory computer readable medium, and a remote computer are well- understood, routing and conventional and, therefore, do not amount to significantly more than the abstract idea.) Appellant argues that the Examiner failed to provide the fact-finding necessary to conclude that the additional elements in the independent claims are well-understood, conventional, and routine. Appeal Br. 12−13. Appellant’s arguments on this point attempt to cast the Berkheimer findings as deficient because the Examiner discussed the additional elements and not 5 “Changes in Examination Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.),” April 19, 2018 (hereinafter “Berkheimer Memorandum”). Appeal 2019-002616 Application 14/837,584 20 the combination of all the recited elements. See id. (stating there is no statement in the Specification, no court decision, no publication, and no other fact in the record, discussing the conventional nature “of the individual or combination of elements”). Indeed, Appellant takes the position that in the analysis of the additional elements, the Examiner ignores all other claim limitations, and that the Examiner’s conclusions are, therefore, improper. Id. at 15−16; Reply 9−10. Appellant then argues that if one considers the recited functions, not just the functions performed by the additional components found to be generic computer components, the conclusion is that the claim does not recite any “generic computer functions.” Id. at 16−19. First, we agree with the Examiner that the additional limitations, individually and as an ordered combination, consistent with our discussion of genericness in Section 2A, prong 2 of the analysis, are well-understood, routine, and conventional. The preamble of claim 1 is directed to non- transitory computer-readable medium storing computer-executable instructions that when executed by a computer cause the computer to perform the recited functions. Although the computer is recited in the preamble, we nonetheless inspect its role in the claim and find that it is claimed generically, with no particular hardware, structure, or programming that makes the computer non-conventional. Spec. ¶¶ 46−49. The “remote computer” recited in claim 10 is also a generic computer that alone or in combination with other elements performs well-known functions of receiving data. The Examiner recognized as much when finding that a processor and a memory (which independent claim 10 recites in place of a computer executing instructions) are generically recited, where the memory Appeal 2019-002616 Application 14/837,584 21 stores instructions and the processor executes them. Appeal Br. 33 (Claim Appendix); see also Spec. ¶ 49 (describing the processor as being a variety of various processor and the memory includes volatile and/or non-volatile memory); Ans. 5−6 (stating that processor and memory independently or together with database, non-transitory computer readable medium, and remote computer are conventional relying on TLI). The TLI court recognized that a “server” fails to add an inventive concept because it is simply a generic computer that performed known functions of receiving data, extracting information from the received data, and storing digital images in accordance with the data. TLI, 823 F.3d at 614. The Examiner relies on TLI to make findings regarding the genericness of the recited computer (or processor and memory), and, therefore, there is sufficient fact- finding in the record to support the Examiner’s rejections.6 The Examiner also found the recited database is well-understood, routine and conventional and does not add significantly more. Ans. 5−6; TLI, 823 F.3d at 614 (relying on cases that hold reciting a generic computer component such as a “database” fails to satisfy the inventive concept requirement). The claim confirms that the database and its corresponding database structure, either independently or in combination with the computer (or processor and memory of claim 10) are conventional components. Claim 1 recites the database and the database structure as means to store and organize the employee records and for creating the “local approval rule” in 6 Consistent with the Berkheimer Memorandum, the Examiner relied on a citation to the TLI decision, which notes the well-understood, routine, and conventional nature of additional elements of claim 1 (e.g., “computer,” “database”). Appeal 2019-002616 Application 14/837,584 22 said database. There is neither functionality nor structure of the database that alone or in combination with the other recited elements goes beyond the generic functionality of a database. It may be that the computer needs to be programmed and that the database needs to be set up with the particular fields to store data in, but these are not functions that are beyond what is required to use a generic computer and a database in the course of executing programmed instructions and basic database functions of storing and organizing data. Therefore, it is not persuasive for Appellant to argue that the computer must be implemented with “special functions based on the specific present invention to be able to perform the specifically defined functions.” Appeal Br. 21. It is likewise not persuasive to argue that by merely reciting the “replacing” function, in combination with the other elements, the claim specifies how to implement a specific computer function, and is not a generalized use of a computer. Id. at 22. The computer functionality that the claim recites, as stated previously, involves the use of the computer as a tool to implement the abstract idea: i.e., a mental process or certain method of organizing human activity consisting of following an exception to the default mode of issuing paychecks for a particular group of employees. The claim recites no technical detail as to how the computer implements the use of one rule over another, such that reciting “replacing” one rule with another becomes an inventive concept. Again, the claim does not recite any particular software instruction, algorithm, unique data structure, or hardware that places the function of replacing one rule with another outside the realm of well-understood, routine, or conventional computer activity. Appeal 2019-002616 Application 14/837,584 23 Finally, we note that Appellant’s argument regarding the Examiner’s alleged failure to analyze all claim limitations under Berkheimer is unpersuasive. Berkheimer does not require the Examiner make a factual finding that all claim elements in combination 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 Memorandum, 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”). Accordingly, we do not find error in the Examiner’s evaluation of the additional elements in accordance with the Office’s Berkheimer guidance. We therefore conclude that claim 1, considered as a whole, does not include an inventive concept. The additional limitations of claim 1 are also recited in claims 10 and 15 (except as noted in our analysis above concerning the processor, memory, and remote computer), and therefore, we are not persuaded that the Examiner erred in finding that claims 10 and 15 as a whole, do not include an inventive concept. Discussion of Claim 9 Appellant argues that claim 9 was not analyzed by the Examiner and that the claim recites an “additional combination of elements and arrangement of elements that is not well-understood, routine and conventional.” Appeal Br. 25−26. The Examiner responds that the additional limitations of the dependent claims has been analyzed consistent with the Berkheimer Memorandum because the Examiner identified the additional limitations and cited court cases that recognized the computer Appeal 2019-002616 Application 14/837,584 24 functions to be well-understood, routine, and conventional. Ans. 3, 4, 6. We do not find Examiner error. Claim 9 recites additional limitations of receiving an electronic communication over “a communication network,” and “a hardware processor” (for scanning). Appeal Br. 31 (“receiving an electronic communication over a communication network”); 32 (“monitoring . . . by scanning, using at least a hardware processor, the subset of employee records . . . to identify whether the criteria for the local approval rule have been satisfied” and “wherein [the] scanning includes electronically traversing the subset of employee records in the electronic database to identify changes in the subset of employee records associated with the criteria specified by the local approval rule”). The Examiner identified that receiving, processing, and storing data, electronically scanning or extracting data from a physical document, electronic recordkeeping, automating mental tasks, and receiving or transmitting data over a network are recognized by courts as functions that are well-understood, routine, and conventional. Ans. 3 (citing the Office’s July 2015 Update on Subject Matter Eligibility (“the 2015 Update”7)). The Examiner noted TLI and various other cases that discuss the generic computer technology recited as additional elements of claim 9. Id. at 3−5. For instance, we note that receiving data over a communication network is discussed in BuySafe v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014). Ans. 5. We also note that the scanning is generally discussed in Content Extraction and Transmission LLC v. Wells 7 Available from the USPTO website at https://www.uspto.gov/sites/default/files/documents/ieg-july-2015- update.pdf. Appeal 2019-002616 Application 14/837,584 25 Fargo Bank, N.A., 776 F.3d 1343, 1358 (Fed. Cir. 2014) (discussing optical character recognition). And we note that the further function of scanning, in the context of monitoring changes in the employee record, using a hardware processor, involves merely using a generic computer processor (discussed above with respect to claim 1) to automate a mental task of reviewing documents to identify changes in the information. The Examiner noted that automating mental tasks is also a recognized well-understood, routine, conventional activity identified in Gottschalk v. Benson (409 U.S. 63, 65−67 (1972)), Bancorp Services v. Sun Life (687 F.3d 1266, 1275 (Fed. Cir. 2012)), and Cybersource Corp. v. Retail Decisions, Inc., (654 F.3d 1366, 1375 (Fed. Cir. 2011)). Ans. 3−4 (citing again the 2015 Update). Viewing these additional limitations as an ordered combination, also is well- understood, routine, and conventional activity because the recited components perform their expected functions: using a communication network to receive data and using a hardware processor programmed to analyze information in data records selected according to the received data. Thus, we are persuaded that the record provides sufficient fact-finding by the Examiner that the additional limitations recited in dependent claim 9, independently, or as an ordered combination, are well-understood, routine, and conventional computer components that do not add to the claim anything beyond the abstract ideas. Therefore, we are not persuaded that the Examiner erred. CONCLUSION For the reasons explained above, we conclude that claim 1 is directed to an abstract idea that is not integrated into a practical application, and does Appeal 2019-002616 Application 14/837,584 26 not recite an inventive concept. We also conclude that none of the additional limitations recited in independent claims 10 and 15 evidence that the claims integrate the abstract idea into a practical application and that the claims recite an inventive concept. Finally, we conclude that the Examiner did not err in finding that the additional limitations of claim 9, independently or as an ordered combination, constitute well-understood, routine, and conventional components, and, therefore, claim 9 does not recite an inventive concept. Accordingly, we sustain the Examiner’s rejection of claim 1 under 35 U.S.C. § 101 and claims 2–20. DECISION SUMMARY Claims Rejected 35 U.S.C. § Basis Affirmed Reversed 1–20 101 Eligibility 1–20 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation