Ormco CorporationDownload PDFPatent Trials and Appeals BoardJul 20, 20212020002094 (P.T.A.B. Jul. 20, 2021) 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. 14/209,487 03/13/2014 Craig A. ANDREIKO ORM-542US 1075 83571 7590 07/20/2021 Wood, Herron & Evans, LLP (Sybron) 441 Vine Street 2700 Carew Tower Cincinnati, OH 45202 EXAMINER BEG, SAMAH A ART UNIT PAPER NUMBER 2668 NOTIFICATION DATE DELIVERY MODE 07/20/2021 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): ABilton@whe-law.com usptodock@whe-law.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CRAIG A. ANDREIKO, ROBERT F. DILLON, and ANDREW F. VESPER Appeal 2020-002094 Application 14/209,487 Technology Center 2600 Before JOSEPH L. DIXON, MAHSHID D. SAADAT, and JAMES W. DEJMEK, Administrative Patent Judges. SAADAT, 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, 4, 16, 19, and 23.2 We have jurisdiction under 35 U.S.C. § 6(b). 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a) (2018). Appellant identifies the real party in interest as Ormco Corporation. Appeal Br. 3. 2 Claims 2 and 17 have been canceled and claims 3, 5–15, 18, 20–22, and 24–26 have been withdrawn from consideration. See Final Act. 2. Appeal 2020-002094 Application 14/209,487 2 We REVERSE, and enter a new ground of rejection for claims 1 and 16 pursuant to our authority under 37 C.F.R. § 41.50(b). CLAIMED SUBJECT MATTER The claims are directed to “a diagnostic equipment that allows a dental practitioner to see the inside of a patient’s mouth and display the topographical characteristics of teeth on a display unit.” Spec. ¶ 2. Claim 1, reproduced below, illustrates the claimed subject matter: 1. A method for using a dental imaging system, the method comprising: receiving image data from the dental imaging system; analyzing, via a processor, the received image data to measure one or more image properties; determining a tracking error by comparing the one or more measured image properties with a target value for each of the one or more image properties; while the tracking error is greater than a predetermined value, adjusting one or more imaging parameters corresponding to the one or more image properties to reduce the tracking error; receiving adjusted image data corresponding to the adjusted one or more imaging parameters from the dental imaging system; measuring one or more adjusted image properties of the adjusted image data; and iterating one or more times of at least determining the tracking error. Appeal Br. 19 (Claims App.). REFERENCES The prior art relied upon by the Examiner is: Appeal 2020-002094 Application 14/209,487 3 Name Reference Date Rubner US 2009/0040364 A1 Feb. 12, 2009 Fisker US 2012/0092461 A1 Apr. 19, 2012 Pillman US 2012/0177352 A1 July 12, 2012 REJECTION Claims 1, 4, 16, 19, and 23 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Fisker, Pillman, and Rubner.3 Final Act. 6. OPINION REJECTION UNDER 35 U.S.C. § 103(a) We have reviewed the Examiner’s rejections in light of Appellant’s contentions in the Appeal Brief and the Reply Brief that the Examiner has erred, as well as the Examiner’s response to Appellant’s arguments in the Appeal Brief. As discussed below, we are persuaded by Appellant’s contentions of Examiner error. For the recited steps of “receiving image data” and “analyzing, . . ., the received image data” limitations, the Examiner relies on Fisker’s disclosure of recording images and determining in-focus information. Non- Final Act. 7 (citing Fisker ¶¶ 63, 74, 93–96, 292, Fig. 20); see also Ans. 4 (citing Fisker ¶¶ 63, 74). The Examiner further finds Pillman teaches methods for determining a tracking error, comparing the error with a predetermined value, and adjusting an imaging parameter that results in receiving the adjusted image data. Non-Final Act. 7–8 (citing Pillman 3 The Examiner refers to the previous Office Action for the detailed analysis of the rejection. See Final Act. 6. We therefore refer to the Non-Final Action, mailed Mar. 13, 2013, for the Examiner’s findings with respect to this rejection. Appeal 2020-002094 Application 14/209,487 4 ¶¶ 124, 125). As to the reason for modifying Fisker with the teachings of Pillman, the Examiner states: Pillman is considered analogous art because it pertains to reducing effects of motion blur in captured images. Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to substitute the focal plane adjustments of Fisker with the exposure time update based on the calculated image motion blur, as taught by Pillman, to produce the best image quality with the maximum desired magnitude of motion blur (Pillman, ¶0124). Non-Final Act. 8. Lastly, the Examiner relies on Rubner as disclosing measuring the adjusted image properties and iterating the step of determining the tracking error. Non-Final Act. 8–9 (citing Rubner ¶¶ 56, 57, Fig. 1A). According to the Examiner, the reasoning for the proposed combination includes: Rubner is considered analogous art because it pertains to reducing deficiencies through camera exposure control. Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the exposure parameter updating step taught by the combination of Fisker in view of Pillman with the iterative image analysis and adaptive exposure control process taught by Rubner to effectively ameliorate image quality deficiencies related to motion blur (Rubner, ¶¶0057–0058). Non-Final Act. 9. Appellant contends that the Examiner erred in combining Fisker with Pillman because the record does not support the reasoning that one of ordinary skill in the art would have made the proposed substitution of exposure time update calculation of Pillman for the focal plane adjustments of Fisker. Appeal Br. 6. According to Appellant, “the function of the focal plane adjustment differs from the function of the exposure time update Appeal 2020-002094 Application 14/209,487 5 calculation.” Id. With respect to Fisker, Appellant argues that the disclosed image capturing system is based on capturing images of the object as the focal plane is moved, which results in images having in-focus and out of focus pixels depending on the topography of the surface. See Id. at 7–8. Appellant asserts that in a process for capturing an archival image on a digital camera, Pillman is concerned with motion velocity and scene brightness, which are reduced based on the calculated motion blur parameter. See id. at 8–9. Based on these operational differences, Appellant argues that the Examiner’s proposed combination is improper and unsupported by a rational underpinning because it changes the principle of operation of Fisker and is counterproductive to the objective of Fisker. See id. at 10–14.4 In response, the Examiner reiterates the findings with respect to Fisker and asserts “compensating for the relative movement between the probe and teeth during dental imaging is a problem to be solved,” which is further addressed by Pillman’s disclosure of “exposure control technique” for solving “motion-related blur.” Ans. 4 (citing Fisker ¶ 63, Pillman ¶¶ 68, 71). The Examiner does not add any further findings regarding the reasoning for combining the two references and explains “substituting the focal plane adjustment of Fisker with Pillman’s exposure control method to obtain a high quality image would not improperly change the principle operation of Fisker, as both focal adjustment and exposure control are encompassed by Pillman’s method.” Ans. 5. The Examiner adds that the proposed modification would benefit Fisker because “Fisker recognizes that his 4 We do not address Appellant’s other contentions because the above-stated arguments are dispositive of the appealed rejection. Appeal 2020-002094 Application 14/209,487 6 method requires a large amount of data, and provides a solution of having the data processing components within the scanner housing in order to decrease the overall scanning and processing time required.” See Ans. 5–6 (citing Fisker ¶ 74)). Based on our review of the references, we agree with Appellant’s contention that the references’ teachings concern different aspects of improving the captured image related to different image capturing techniques. The cited portions of Fisker disclose a process for capturing images of an object involving confocal microscopy using “the variation, i.e. scanning, of the focal plane without moving the scanner in relation to the object being scanned” which, although benefits from reduced amount of shaking, does not involve using the types of lens adjustments discussed in Pillman. See Fisker ¶¶ 2–4, 63. The only reference made in Fisker to “motion” and “motion blur” is in the context of tracing the object at a suitable scanning speed or motion sensors for capturing 3D images. See id. ¶¶ 135, 175. Pillman, on the other hand, discloses capturing image using a digital camera and improving the image quality by adjusting different camera settings. See Pillman ¶¶ 5, 71–73, 109. We therefore agree with Appellant’s assertion that the Examiner has not sufficiently explained how combining the motion blur calculations of Pillman with the image capturing process disclosed by Fisker based on pattern projection onto the object surface would have taught or suggested the recited claim features. In fact, the Examiner has not identified any teachings in Fisker or Pillman to support the reasoning that reducing motion blur would justify the combination or even result in the recited imaging process. See Ans. 5–6. In the absence of such an explanation, we decline to speculate Appeal 2020-002094 Application 14/209,487 7 as to whether an ordinarily skilled artisan would have been motivated to modify Fisker with Pillman. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (declining to resort to impermissible speculation or unfounded assumptions or hindsight reconstruction to supply deficiencies in the Examiner’s factual basis). Accordingly, we do not sustain the 35 U.S.C. § 103(a) rejection of claim 1, independent claims 16 and 23 which recite limitations similar in scope with claim 1, as well as claims 4 and 19 dependent therefrom. NEW GROUND OF REJECTION UNDER 35 U.S.C. § 101 During prosecution, the Examiner had rejected claims 1 and 16 under 35 U.S.C. § 101 as directed to a judicial exception, which the Examiner described as “the abstract idea of receiving and analyzing image data during dental imaging,” whereas the additional elements “amount(s) to no more than well-understood, routine and conventional activities” and “do not provide meaningful limitation(s) to transform the abstract idea into a patent eligible application of the abstract idea.” Office Act. mailed Mar. 9, 2017, pp. 7–8. Appellant responded by amending claims 1 and 16 with some of the subject matter recited in claims 2 and 17, which were not subject to the rejection under § 101. Response 11–12 (May 4, 2018). Although the amended claims did not include the exact language of claims 2 and 17, the Examiner withdrew the rejection, but provided no explanation or determination of patent eligibility of the amended claims. Final Act. 2 (Sept. 6, 2018). We have reconsidered claims 1 and 16 in view of the Eligibility Guidance published in 20195 and the October 2019 Guidance Update after 5 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 Appeal 2020-002094 Application 14/209,487 8 the Examiner withdrew the rejection and have determined that a rejection under 35 U.S.C. § 101 is appropriate under this Guidance. This is a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). Pursuant to our authority under 37 C.F.R. § 41.50(b), we reject independent claims 1 and 16 under 35 U.S.C. § 101. Principles of Law Patent-eligible subject matter is defined in 35 U.S.C. § 101 of the Patent Act, which recites: Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title. There is, however, an implicit, longstanding exception to patent- eligible subject matter in 35 U.S.C. § 101: “[l]aws of nature, natural phenomena, and abstract ideas are not patentable.” Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (citation omitted). This exception precludes patenting of “the basic tools of scientific and technological work” from which all inventions spring. Id. at 216–17 (quotation marks and citation omitted). Invention or discovery under § 101 is distinguished as being the application of such tools to an end otherwise satisfying the requirements of the patent statutes. See Gottschalk v. Benson, 409 U.S. 63, 67 (1972). The Supreme Court has established a framework for this eligibility determination. Where a claim is directed towards a law of nature, natural phenomena, or abstract idea, the elements of the claim as a whole must ensure that the claim, in practice, amounts to significantly more than a patent (Jan. 7, 2019) (“Eligibility Guidance”) (throughout this decision, we cite to the Federal Register where the Eligibility Guidance is published). Appeal 2020-002094 Application 14/209,487 9 on the law of nature, natural phenomena, or abstract idea itself. Alice, 573 U.S. at 217–18. In applying this eligibility analysis, our reviewing court has stated, “the decisional mechanism courts now apply is to examine earlier cases in which a similar or parallel descriptive nature can be seen[,] . . . the classic common law methodology for creating law when a single governing definitional context is not available.” Amdocs (Isr.) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) (citation omitted). USPTO Section 101 Guidance In January 2019, the U.S. Patent and Trademark Office (“USPTO”) published revised guidance on the application of 35 U.S.C. § 101. See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019 Guidance”), updated by USPTO, October 2019 Update: Subject Matter Eligibility (available at https://www.uspto.gov/sites/ default/files/documents/peg_oct_2019_update.pdf) (“October 2019 Guidance Update”); see also October 2019 Patent Eligibility Guidance Update, 84 Fed. Reg. 55942 (Oct. 18, 2019) (notifying the public of the availability of the October 2019 Guidance Update). “All USPTO personnel are, as a matter of internal agency management, expected to follow the guidance.” 2019 Guidance, 84 Fed. Reg. at 51; see also October 2019 Guidance Update at 1. The Manual of Patent Examining Procedure (“MPEP”) now incorporates this revised guidance and subsequent updates at Section 2106 (9th ed. Rev. 10.2019, rev. June 2020).6 Under MPEP § 2106, we first look to whether the claim recites the following: 6 All references to the MPEP are to the Ninth Edition, Revision 10.2019 (Last Revised June 2020), unless otherwise indicated. Appeal 2020-002094 Application 14/209,487 10 (1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activities such as a fundamental economic practice, or mental processes); and (2) additional elements that integrate the judicial exception into a practical application.7 MPEP § 2106.04(a), (d). 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, [and] conventional activity” 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. MPEP § 2106.05(d). Analysis Independent claim 1 is reproduced below with paragraph letters and with emphasis added to the claim language that recites one or more abstract ideas: 1. A method for using a dental imaging system, the method comprising: (a) receiving image data from the dental imaging system; 7 “Examiners evaluate integration into a practical application by (1) identifying whether there are any additional elements recited in the claim beyond the judicial exception(s), and (2) evaluating those additional elements individually and in combination to determine whether the claim as a whole integrates the exception into a practical application.” MPEP § 2106.04(d)II. Appeal 2020-002094 Application 14/209,487 11 (b) analyzing, via a processor, the received image data to measure one or more image properties; (c) determining a tracking error by comparing the one or more measured image properties with a target value for each of the one or more image properties; (d) while the tracking error is greater than a predetermined value, (e) adjusting one or more imaging parameters corresponding to the one or more image properties to reduce the tracking error; (f) receiving adjusted image data corresponding to the adjusted one or more imaging parameters from the dental imaging system; (g) measuring one or more adjusted image properties of the adjusted image data; and iterating one or more times of at least determining the tracking error. Step 2A, Prong 1: Under step 2A, prong 1, of the 2019 Guidance, we first look to whether claim 1 recites any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activities such as a fundamental economic practice, or mental processes). MPEP § 2106.04(a). Limitations (b)–(e) recite limitations related to analyzing an image data and measuring its properties, determining a tracking error, and adjusting a parameter when the error is greater than a threshold. Limitation (g) recites limitations related to measuring the properties associated with the adjusted image and repeating the step of determining the tracking error recited in limitation (c). Analyzing images, determining tracking error, adjusting image properties constitute functions that are in the category of mental processes, such as an observation, evaluation, judgment, or opinion that can Appeal 2020-002094 Application 14/209,487 12 be performed in the human mind. The 2019 Guidance expressly recognizes such mental processes as constituting patent-ineligible abstract ideas. MPEP § 2106.04(a). Claim 1 recites an act of judgment and evaluation in the form of the above-cited limitations, which allows a user to adjust the imaging parameters based on determining how the adjustment affects the resulting image by comparing the measures property with a predetermined target property. Such acts are characteristic of mental processes, which comprise a category of abstract ideas. October 2019 Update to the Guidance, 7–9; Cybersource v. Retail Decisions, 654 F.3d 1366, 1372 (Fed. Cir. 2011) (finding steps extending to “essentially any method of detecting credit card fraud based on information relating past transactions,” to be an unpatentable mental process); FairWarning IP, LLC v. Iatric Systems, Inc., 839 F.3d 1089, 1093–94 (Fed. Cir. 2016) (finding claims to “detecting fraud and/or misuse in a computer environment based on analyzing data such as in log files, or other similar records, including user identifier data” to be an ineligible mental process). Accordingly, each of limitations (b)–(e) and (g) recite a patent- ineligible abstract idea. See RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017) (“Adding one abstract idea . . . to another abstract idea . . . does not render the claim non-abstract.”) Pursuant to the 2019 Guidance, such limitations are the abstract concept of “[c]ertain methods of organizing human activity.” Id. Moreover, limitations (a) and (f) recite limitations related to receiving an image data or an adjusted image data from a dental imaging system. As such, these steps describe functions related to receiving and presenting data. Appeal 2020-002094 Application 14/209,487 13 See Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343 (Fed. Cir. 2014) (discussing 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 also 2019 Guidance, 84 Fed. Reg. at 52. Claim 16 recites “[a] non-transitory computer readable storage medium for using a dental imaging system, wherein code stored in the non- transitory computer readable storage medium when executed by a processor causes operations” that include the function recited in claim 1. The Guidance states that the abstract idea exception includes mathematical concepts, certain methods of organizing human activity, and mental processes. Guidance, 84 Fed. Reg. at 52. The 2019 Guidance describes mental processes as observations, evaluations, judgements, and opinions, where such can be practically performed in the human mind. October 2019 Update: Subject Matter Eligibility 7, accessible at https://www.uspto.gov/ sites/default/files/documents/peg_oct_2019_update.pdf. Cases reciting steps of collecting, comparing, and analyzing known information, which are practically performed in the human mind, are provided as examples of such mental processes. Id. at 7–8 (citing Classen,8 Electric Power9). 8 Classen Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057 (Fed. Cir. 2011). 9 Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016). Appeal 2020-002094 Application 14/209,487 14 Step 2A, Prong 2 Under step 2A, prong 2, of the 2019 Guidance, we next analyze whether claim 1 recites additional elements that individually or in combination integrate the judicial exception into a practical application. 2019 Guidance, 84 Fed. Reg. at 53–55. The 2019 Guidance identifies considerations indicative of whether an additional element or combination of elements integrate the judicial exception into a practical application, such as an additional element reflecting an improvement in the functioning of a computer or an improvement to other technology or technical field. Id. at 55; MPEP § 2106.05(a). Limitation (a) of claim 1 recites, “receiving image data from the dental imaging system.” This step merely constitutes insignificant pre- solution activity: 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). Similarly, claim 1’s step (f) recites “receiving adjusted image data corresponding to the adjusted one or more imaging parameters from the dental imaging system.” This step does not add any meaningful limitations to the abstract idea because it merely constitutes 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). As our reviewing court has stated, a claim “focused on providing information . . . in Appeal 2020-002094 Application 14/209,487 15 a way that helps [a human] process information more quickly,” or analogously, with less ambiguity, does not recite some manner of “improving computers or technology.” Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1378, 1384 (Fed. Cir. 2019). Claim 1’s preamble additionally recites that the method is for “using a dental imaging system” and step (b) of the claim recites “analyzing, via a processor, the received image data.” However, these recitations only describe an application of a generic imaging system in a manner that amounts to mere instructions to implement the abstract idea on a computer/processor, and, therefore, is insufficient to make the claim patent eligible. See Alice, 573 U.S. at 226 (determining that the claim limitations “data processing system,” “communications controller,” and “data storage unit” were generic computer components that amounted to mere instructions to implement the abstract idea on a computer); October 2019 Guidance Update at 11–12 (recitation of generic computer limitations for implementing the abstract idea “would not be sufficient to demonstrate integration of a judicial exception into a practical application”). Claim 16 also recites elements in its preamble that are directed to generic computer components for performing the recited steps. We observe that Appellant’s disclosure describes a problem (i.e., improving an image by adjusting the imaging properties) that could be performed by a person. In fact, Appellant’s disclosure includes no description of how the solution to the stated problem in conventional methods of manipulating the imaging device to adjust one or more parameter for obtaining a clear image improves the computer technology. The recited steps involve functions that do not improve the computer or its components’ functionality or efficiency, or Appeal 2020-002094 Application 14/209,487 16 otherwise change the way those devices function, at least in the sense contemplated by the Federal Circuit in Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016). The claimed self-referential table in Enfish was a specific type of data structure designed to improve the way a computer stores and retrieves data in memory. Enfish, 822 F.3d at 1339. Additionally, “merely adding computer functionality to increase the speed or efficiency of the process does not confer patent eligibility on an otherwise abstract idea.” Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1370 (Fed. Cir. 2015). Moreover, the recited functions of analyzing the image data using a processor is still an abstract concept under the 2019 Guidance. See Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (holding that “a claim for a new abstract idea is still an abstract idea”) (emphasis omitted). That is, monitoring and recognizing manual activities by retrieving, checking, and comparing information, even performed on a computer, are parts of the recited abstract idea, as discussed above. The holding in Core Wireless Licensing S.A.R.L. v. LG Elec., Inc., 880 F.3d 1356 (Fed. Cir. 2018) also shows why the abstract ideas in this case are not integrated into a practical application. Unlike claim 1, the claims in Core Wireless recited an improved user interface. 880 F.3d at 1362. The claimed “application summary” specified a particular manner to access a summary window, a particular type of data to be displayed in the summary window, and a particular time to display the summary window when an application is in an un-launched state. Id. at 1362–63. The claims thus recited a specific improvement to user interfaces that displayed a limited set of information using unconventional user interface methods. Id. at 1363. Appeal 2020-002094 Application 14/209,487 17 For these reasons, we determine that claim 1 is not directed to an improvement in the function of a computer or to any other technology or technical field. MPEP § 2106.05(a). Nor do the claims recite any feature that is directed to a particular machine or transformation, or that the claims add any other meaningful limitations for the purposes of the analysis under Section 101. MPEP §§ 2106.05(b), (c), (e). As the above-identified elements are part of the abstract idea, they are not additional elements that integrate the identified abstract idea into a practical application. See Guidance, 84 Fed. Reg. 54–55 (“[E]valuate integration into a practical application by: (a) Identifying whether there are any additional elements recited in the claim beyond the judicial exception(s)”). Accordingly, we determine the claim does not integrate the judicial exception into a practical application within the meaning of the 2019 Guidance. Step 2B Having determined that claims 1 and 16 are directed to an abstract idea, we next determine, under Step 2B of the 2019 Guidance, whether the claims amount to significantly more than the abstract idea itself. 84 Fed. Reg. at 56. A determination that the claims are significantly more may be indicated where additional limitations, either alone or in combination, are not well-understood, routine, conventional activity in the field. Id. We determine that the additional elements, including the recited dental imaging system, processor, non-transitory computer readable storage medium, and code stored in the storage medium, are generic computer components that serve to perform generic computer functions that are well- understood, routine, and conventional. These components are described in Appellant’s Specification as generic elements: dental imaging system: Spec. Appeal 2020-002094 Application 14/209,487 18 ¶¶ 40, 45, Fig. 4; processor: Spec. ¶ 87; computer readable storage medium: Spec. ¶¶ 83, 84; code: Spec. ¶ 85. Regarding the additional elements, we observe that the claimed components merely amount to the application or instructions to apply the abstract idea (i.e., a series of steps for collecting and processing information for analysis of image data to determine the changes after adjustments are made), which amount to nothing more than requiring a generic computer system, including a processor, memory, databases and electronic devices, to merely carry out the abstract idea itself. Using generic computer components to perform abstract ideas does not provide the necessary inventive concept. See 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.”). Thus, these elements, taken individually or together, do not amount to “significantly more” than the abstract ideas themselves. Therefore, the claims are not “significantly more” than the abstract idea. Furthermore, Appellant’s Specification does not indicate that the steps performed by this conventional computer, when considered as an ordered combination, add any significance beyond the additional elements, as considered individually. Rather, Appellant’s Specification indicates that the invention is directed to an abstract idea that is made more efficient with the assistance of generic computer components—“the feedback control application 104 adjusts the imaging parameters 108 to reduce tracking error between targeted and measured values of the output.” See Spec. ¶ 31. For these reasons, we determine that claims 1 and 16 do not recite additional elements that, either individually or as an ordered combination, amount to significantly more than the judicial exception within the meaning Appeal 2020-002094 Application 14/209,487 19 of the 2019 Guidance. 2019 Guidance, 84 Fed. Reg. at 52–55; MPEP § 2106.05(d). Remaining claims Although we have rejected independent claims 1 and 16 under 37 C.F.R. § 41.50(b), we have not reviewed the remaining claims to the extent necessary to determine whether these claims are unpatentable under 35 U.S.C. § 101. We leave it to the Examiner to determine the appropriateness of any further rejections based thereon. CONCLUSION We reverse the Examiner’s rejection of claims 1, 4, 16, 19, and 23 under 35 U.S.C. § 103(a) over Fisker, Pillman, and Rubner. Pursuant to our discretionary authority under 37 C.F.R. § 41.50(b), we newly reject claims 1 and 16 under 35 U.S.C. § 101 as being directed to a judicial exception to patent-eligible subject matter, i.e., an abstract idea, without significantly more. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed New Grounds 1, 4, 16, 19, 23 103(a) Fisker, Pillman, Rubner 1, 4, 16, 19, 23 1, 16 101 Patent eligibility 1, 16 Overall Outcome 1, 4, 16, 19, 23 1, 16 Appeal 2020-002094 Application 14/209,487 20 TIME PERIOD FOR RESPONSE This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Rule 37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. . . . Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. 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). REVERSED; 37 C.F.R. § 41.50(b) Copy with citationCopy as parenthetical citation