Samsung Electronics Co., Ltd.

Patent Trials and Appeals Board

Jul 28, 2021

2020005455 (P.T.A.B. Jul. 28, 2021)

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.
14/855,814 09/16/2015 Yeong Suk CHOI 15639-000265-US 1071
30593 7590 07/28/2021
HARNESS, DICKEY & PIERCE, P.L.C.
P.O. BOX 8910
RESTON, VA 20195
EXAMINER
SKIBINSKY, ANNA
ART UNIT PAPER NUMBER
1631
NOTIFICATION DATE DELIVERY MODE
07/28/2021 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):
dcmailroom@hdp.com
jcastellano@hdp.com
jhill@hdp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YEONG SUK CHOI, DONGSEON LEE, LNGYEONG YOO,
KWONYOUNG KIM, SUNGJIN KIM, TAE-RAE KIM, and WON-
JOON SON
Appeal 2020-005455
Application 14/855,814
Technology Center 1600
Before ULRIKE W. JENKS, RACHEL H. TOWNSEND, and
CYNTHIA M. HARDMAN, Administrative Patent Judges.
TOWNSEND, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims directed to computational analysis for
predicting characteristics of a test compound and providing that test
compound between a first electrode and a second electrode thereafter to
form an active layer for failing to comply with the written description
requirement and as being directed to patent ineligible subject matter.

1 We use the term “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Samsung
Electronics Co, Ltd. (Appeal Br. 1.)
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We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
Claims 1, 2, 5–13, and 18 are on appeal. Claim 1, reproduced below,
is illustrative of the claimed subject matter:
1. A method for manufacturing a device, including predicting a
characteristic of a compound using a processor, the method
comprising:
[a] collecting a first experimental information database
using the processor, the first experimental information database
including experimental characteristics of a plurality of reference
compounds according to a quantum phenomenon, the
experimental characteristics of the plurality of reference
compounds including a full width at half maximum (FWHM) of
a light absorption spectrum in a visible ray region measured by
UV-Vis spectroscopy for each of the plurality of reference
compounds;
[b] collecting a simulation database using the processor,
the simulation database including simulated characteristics of the
plurality of reference compounds according to the quantum
phenomenon based on applying a plurality of density functional
theory methods, the simulated characteristics of the plurality of
reference compounds including a full width at half maximum
(FWHM) of a light absorption spectrum in a visible ray region
based on applying a plurality of density functional theory
methods;
[c] calculating an accuracy of the simulation database
using the processor based on a comparison of the FWHM of the
light absorption spectrum based on applying the plurality of
density functional theory methods to the FWHM of the light
absorption spectrum measured by UV-Vis spectroscopy for each
of the plurality of reference compounds;
[d] clustering the plurality of reference compounds into a
plurality of clusters and designating a proper density functional
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theory method for each cluster of the plurality of clusters using
the processor based on the accuracy of the simulation database;
[e] determining a similarity between a test compound and
the plurality of reference compounds included using the
processor;
[f] determining a determined density functional theory
method for the test compound according to the similarity using
the processor, the determined density functional theory method
corresponding to the proper density functional theory method of
a selected one of the plurality of clusters,
the selected one of the plurality of clusters including
a selected reference compound among the plurality of
reference compounds that is determined most similar to
the test compound using the processor;
[g] conducting a simulation of the test compound using the
processor according to the determined density functional theory
method to determine a predicted characteristic of the test
compound according to the quantum phenomenon, the predicted
characteristic of the test compound being a predicted full width
at half maximum (FWHM) of a light absorption spectrum in a
visible ray region, measured by UV-Vis spectroscopy, of the test
compound; and
[h] forming an active layer between a first electrode and a
second electrode in response to the predicted FWHM, the active
layer including the test compound.
(Appeal Br. 30–31 (letters in brackets added for ease of reference).)
REJECTIONS
The following grounds of rejection by the Examiner are before us on
review:
Claims 1, 2, 5–13, and 18 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Claims 1, 2, 5–13, and 18 are rejected under 35 U.S.C. § 101 because
the claimed invention is directed to non-statutory subject matter.
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DISCUSSION
Written Description
The written description test involves “an objective inquiry into the
four corners of the specification from the perspective of a person of ordinary
skill in the art. Based on that inquiry, the specification must describe an
invention understandable to that skilled artisan and show that the inventor
actually invented the invention claimed.” Ariad Pharm., Inc. v. Eli Lilly &
Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010).
The requirement is not necessarily met just because “the claim
language appears in ipsis verbis in the specification.” Enzo Biochem, Inc. v.
Gen–Probe Inc., 323 F.3d 956, 968 (Fed. Cir. 2002). As explained by our
reviewing court, “[t]he appearance of mere indistinct words in a
specification or a claim, even an original claim, does not necessarily
satisfy” § 112, ¶ 1 because it may not both put others on notice of the scope
of the claimed invention and demonstrate possession of that invention. Id. at
968–69.
According to the Examiner, the limitation “forming an active layer
between a first electrode and a second electrode” is not adequately supported
by Appellant’s Specification because it
does not list any specific compounds and does not provide any
details about how the density functional theories would be used
to correctly arrive at a compound that can be used as an active
layer between two electrodes.
(Final Action 6–7.) The Examiner acknowledged that the Specification
discloses that “the active layer may include a light absorbing material with
an FWHM of a light absorption spectrum in a visible ray region of about
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40 nm to 110 nm.” (Id. at 7.) However, the Examiner determined that the
Density Functional Theory calculations “must be specifically developed for
each particular atom of compound being modeled” and the Specification
“does not provide any description of having performed Density Functional
Theory [DFT] calculations using molecular properties of any real
compounds,” does not “disclose having measured any FWHM
characteristics using UV-vis,” and “does not disclose any working or even
prophetic examples of determining a test compound FWHM property using
DFT calculations and UV-vis data.” (Id. at 7–8.) The Examiner
summarized in the Advisory Action that “[t]he specification does not
provide any specific details on what one of skill in the art would need to do
to develop a DFT and simulation for specific compounds that would
successfully lead to the selection of a compound that can be used as part of a
layer between electrodes.” (Advisory Action, Nov. 1, 2019, Continuation
Sheet 1.)
We do not agree with the Examiner that Appellant’s Specification
lacks meaningful support for the claimed invention. See, e.g., Novozymes
A/S v. DuPont Nutrition Biosciences APS, 723 F.3d 1336, 1349 (Fed. Cir.
2013). One of the Examiner’s concerns lies with the simulation database
and the requirement of the claim that the characteristics of the plurality of
reference compounds contained therein is “according to the quantum
phenomenon based on applying a plurality of density functional theory
methods.” According to the Examiner, the Specification “provides a list of
density functional theory methods” (Final Action 7 (citing Spec. ¶ 50)) but
“[i]t is known to those of high skill in the art that Density Functional Theory
calculations which may be used to calculate quantum mechanical properties
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of atoms and compounds are complex” (id.). The Examiner further
explained that the Specification states that “it is not intuitive to decide the
proper DFT calculation technique for predicting the characteristics of a
compound” and the prior art teaches that “their DFT calculations resulted in
errors.” (Advisory Action Continuation Sheet 1.)
We note, however, as explained by Appellant (Appeal Br. 13–16), that
the Specification exemplifies the steps of the claimed invention through
conducting a simulation of test compounds. In particular, fourteen
experimental compounds were synthesized and each of their FWHMs were
determined after having been dissolved in toluene and irradiated with UV
visible rays, and each FWHM was also determined through a simulation
using the DFTs B3LYP and M11. (See Spec. ¶¶ 82–98.) The accuracy of
the simulation was calculated and appropriate clustering of the synthesized
experimental compounds was effected based on the accuracy determination.
(Id. ¶¶ 99–103.) Next, four test compounds having structural similarity to
the clustered synthesized experimental compounds underwent evaluation.
(Id. ¶ 105 (Test compounds 1 and 2 having similarity to a first clustered
group and Test compounds 3 and 4 having similarity to a second clustered
group).) To determine whether the claimed method was an appropriate
method to predict the FWHM, not only did Appellant apply the DFT method
according to the similarity of structure with the reference compounds to
determine the predicted FWHM (id. ¶¶ 105, 107 (Table 4)), but Appellant
experimentally determined the FWHM of those test compounds by
dissolving them in toluene and irradiating the solution with UV visible rays,
as was done with the reference compounds, and compared the FWHM
results (id. ¶¶ 106, 107 (Table 5)). Appellant found through that comparison
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that predicting the FWHM of the test compound according to the claimed
method was an appropriate way to determine the FWHM rather than having
to experimentally determine the FWHM considering the “[e]rror from the
experimental values.” (Id. ¶¶ 107–108, including Tables 4 and 5).)
The other concern expressed by the Examiner is that “[t]he
Specification provides no . . . steps of making a physical layer between two
electrodes.” (Ans. 16.) Regarding the step of forming an active layer
including the test compound between electrodes, Appellant further explains,
and we agree, that the Specification teaches in paragraphs 77–79 that if the
method determines a light-absorbing material to have a FWHM of about 40
nm to 110 nm, one could select that material to be used in an organic
photoelectric device where the active layer with that material would be
disposed between a first and a second electrode. (Appeal Br. 11–12.)
We conclude that the foregoing description in the Specification
provides sufficient disclosure to demonstrate that Appellant was in
possession of the claimed method.
Thus, we reverse the Examiner’s rejection of claims 1, 2, 5–13, and 18
under 35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.

Patent-Ineligible Subject Matter
Appellant addresses both of the independent claims, claims 1 and 18
as a group, without differentiating them. Thus, we address the Examiner’s
rejection with respect to exemplary claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).

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The Dispute
The Examiner found that the claims require “using Density Functional
Theory (DFT) which is a mathematical calculation . . . to calculate the
FWHM characteristic of a compound using previously determined
experimental data of reference compounds.” (Ans. 17; Final Action 3.) The
Examiner further found that the physical step of forming an active layer is a
conditional step that is not required to occur because the formation is “in
response to the predicted FWHM.” (Ans. 18.) Accordingly, the Examiner
found that this step is not an additional element providing for a practical
application of the abstract idea or providing for an inventive concept. (Id.)
Appellant does not dispute that the method for manufacturing the
device as claimed employs mathematical calculations, but contends that the
claim is not directed to a judicial exception because the claim is to a method
of forming a device that requires forming an active layer between a first and
second electrode in response to the predicted FWHM of the test compound,
which is not a mental process. (See Appeal Br. 20–22.) In addition,
Appellant argues that because the claim solves a problem rooted in
computational chemistry, i.e., “a more efficient way to select a proper
determined functional theory (DFT) calculation technique to predict the
characteristic of a compound, compared to the conventional trial-and-error
approach,” it is not directed to a judicial exception. (Id. at 20.)
Appellant further argues that the claims do not recite a mental process
because a processor and an experimental information database is required to
perform functions of the claim, and thus the claims do not use a generic
computer. (Id. at 22.)
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Appellant asserts further that even if a judicial exception is recited, the
claimed clustering and designating a proper DFT theory for each cluster “has
a practical application,” namely a more efficient way to select a proper DFT
calculation technique to predict the characteristic of a compound. (Id. at 23–
24.) Appellant further argues that the claim recites an inventive concept
because the method for predicting a characteristic selects the most-accurate
DFT from among many DFT-methods. (Id. at 25.)

Analysis
The Supreme Court has established a two-step framework for
“distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts.” Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014). “First,
we determine whether the claims at issue are directed to” a patent-ineligible
concept. Id. If so, “we consider the elements of each claim both
individually and ‘as an ordered combination’ to determine whether the
additional elements ‘transform the nature of the claim’ into a patent-eligible
application.” Id. (quoting Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 78–79 (2012)).
Applying the 2019 Revised Patent Subject Matter Eligibility Guidance
(“Guidance”), 84 Fed. Reg. 50–57 (Jan. 7, 2019), and in accordance with
judicial precedent, we agree with the Examiner’s conclusion that the claims
are addressed to patent-ineligible subject matter. We address representative
claim 1 first, and will address claim 12 after we complete our analysis of
claim 1.

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STEP 2A, Prong One:
Under the Guidance, in determining what concept a claim is “directed
to” in step one of the Supreme Court’s two-step framework, we first look to
whether the claim recites any judicial exceptions, such as (a) mathematical
concepts, (b) methods of organizing human activity including fundamental
economic principles or practices (including hedging, insurance, mitigating
risk), and/or (c) mental processes including an observation, evaluation,
judgment, or opinion. Guidance, 84 Fed. Reg. at 52, 54 (Step 2A, Prong
One).
We agree with the Examiner that claim 1 recites mathematical
concepts. Indeed, the Specification makes clear that the method is based on
“computational chemistry” that takes into account quantum chemistry.
(Spec. ¶ 3.)
Step [b], which recites that the creation of the simulation database of
simulated characteristics of a plurality of reference compounds is carried out
“according to the quantum phenomenon based on applying a plurality of
density functional theory methods,” requires the implementation of a
mathematical concept. As the Specification explains, the density functional
theory is a method of calculating that is similar to the Hartree-Fock method,
but a wave function of the Hartree-Fock method is substituted with an
electron density function. (Spec. ¶ 4.) The Specification identifies a number
of known density functional theories that may be used for the calculations.
(Id. ¶ 50.)
Additionally, step [c] which recites calculating an accuracy of the
simulation database by comparing the experimentally determined data with
the simulated data is another mathematical concept. (See Spec. ¶ 51.)
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Likewise, step [g], which recites conducting a simulation to determine
the FWHM of the test compound using the density functional theory
identified in step [f], is a mathematical concept. As the Specification
explains, the proper DFT determined from step [f] is “applied.” (See Spec.
¶ 105.)
In addition, we find claim 1 recites mental processes. For example,
step [d], which recites clustering the reference compounds according to
accuracy of the simulated data, can be carried out by observing the accuracy
levels and using a pen and paper to write down all compounds falling within
that accuracy level.
Moreover, step [e], which recites determining a similarity between a
test compound and reference compound, is also a step that can be carried out
via observation. (See, e.g., Spec ¶ 54 (noting a similarity may be structural,
such as moiety similarity, main backbone similarity, or functional group
similarity).)
Step [f], which recites determining a density functional theory for the
test compound based on the similarity determination made in step [e], is also
a step that can be carried out by an observation. All that is required by this
step is to assign the test compound to the DFT of the cluster to which the test
compound is determined to be most similar.
It is true that the claim recites use of a processor for the calculation,
simulation and determination steps. However, a claim recites a mental
process when the claim encompasses acts people can perform using their
minds or pen and paper. See, e.g., CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1372–73 (Fed. Cir. 2011) (determining that a claim
whose “steps can be performed in the human mind, or by a human using a
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pen and paper” is directed to an unpatentable mental process). This is true
even if the claim recites that a generic computer component performs the
acts. See, e.g., Versata Dev. Grp. v. SAP Am., 793 F.3d 1306, 1335 (Fed.
Cir. 2015) (“Courts have examined claims that required the use of a
computer and still found that the underlying, patent-ineligible invention
could be performed via pen and paper or in a person’s mind.”); CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372–73, 1375 (Fed. Cir.
2011) (holding that the incidental use of “computer” or “computer readable
medium” does not make a claim otherwise directed to a process that “can be
performed in the human mind, or by a human using a pen and paper” patent
eligible). Thus, we do not find persuasive Appellant’s argument that
because a processor and database are required to perform step [g], the
“Examiner’s analysis under Step 2A prong one is incorrect” (Appeal Br. 22–
23).
In light of the above, we conclude, that claim 1 recites the use of
mathematical concepts and mental processes, which are abstract ideas.
Thus, we proceed to the next step of the eligibility analysis under the
Guidance.

STEP 2A, Prong Two:
Following the Guidance, we next consider whether “the claim as a
whole integrates the recited judicial exception into a practical application of
the exception,” i.e., whether the claim “appl[ies], rel[ies] on, or use[s] the
judicial exception in a manner that imposes a meaningful limit on the
judicial exception.” Guidance, 84 Fed. Reg. at 54. This analysis includes
“[i]dentifying whether there are any additional elements recited in the claim
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beyond the judicial exception(s)” and “evaluating those additional elements
individually and in combination to determine whether they integrate the
exception into a practical application.” Id. at 54–55.
As noted in the Prong One analysis, claim 1 requires a processor. The
processor is used to collect information, perform calculations, organize
information, make comparisons of data, and make selections of a data. Such
use of a computer is not an integration of the judicial exceptions imposing a
meaningful limit thereto. BASCOM Glob. Internet Servs., Inc. v. AT&T
Mobility LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016) (“An abstract idea on
‘an Internet computer network’ or on a generic computer is still an abstract
idea”) (citation omitted); Alice Corp., 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.”).
Steps [a] and [b] that involve collection of information into databases
are also additional elements. Our reviewing court, however, has concluded
that abstract ideas include the concepts of collecting data. Content
Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d
1343, 1347 (Fed. Cir. 2014); see also Smart Sys. Innovations, LLC v.
Chicago Transit Auth., 873 F.3d 1364, 1372 (Fed. Cir. 2017) (concluding
“claims directed to the collection, storage, and recognition of data are
directed to an abstract idea”). Moreover, as to the data operated upon, “even
if a process of collecting and analyzing information is ‘limited to particular
content’ or a particular ‘source,’ that limitation does not make the collection
and analysis other than abstract.” SAP Am. Inc. v. InvestPic, LLC, 890 F.3d
1016, 1022 (Fed. Cir. 2018).
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Step [h], forming an active layer, is also an additional element.
However, this is not an additional element that applies, relies on, or uses the
judicial exception in a manner that imposes a meaningful limit on the
judicial exception, contrary to Appellant’s suggestion (Appeal Br. 24). As
will be explained, the limitation is at best a token post-solution activity. The
claimed process is one that organizes information stored in databases about
reference compounds and “characteristics” of them based on the accuracy of
determinations of a computational chemistry model compared to
experimental data and compares test compounds to the reference compound
based on some undefined “similarity” to select the computational chemistry
model that is the best fit for the test compound to use to determine a
characteristic of the test compound without having to run an experiment on
the test compound. Once the “characteristic” is determined from the
calculation, in step [h] the test compound is applied as part of an active layer
between a first electrode and a second electrode. It does not matter what the
calculated result of the characteristic is to whether the test compound is
provided between the first and second electrode.2
Thus, we agree with the Examiner’s statement in the Advisory Action,
“even though the claims recite a physical step at the end of the claims, the
judicial exception is not integrated into the practical application.” (Advisory

2 Claim 18 recites that the active layer is formed “in response to the
predicted FWHM being in a desired range.” We agree with the Examiner
that given that language, the step is not necessarily carried out after the
FWHM of a test compound is calculated using the selected DFT method.
(Final Action 4.) Thus, we agree with the Examiner that this claim does not
require the active layer be formed and as such cannot integrate the abstract
idea into a practical application as a conditional limitation.
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Action Continuation Sheet 2.) The limitation is at best the equivalent of
merely adding the words “apply it” to the judicial exception, and
accordingly, it does not serve as an integration into a practical application.
Alice Corp., 573 U.S. at 223 (“Stating an abstract idea ‘while adding the
words ‘apply it’’ is not enough for patent eligibility. Mayo, [566 U.S. at
72.]”).
We also do not find the additional steps or computer processor
provide an improvement to a technological process. Unlike the claims found
patent eligible in Diamond v. Diehr, 450 U.S. 175, 187–88 (1981) that were
a technological improvement, i.e., digital control of the cure time of a rubber
molding process with continuous measurement of temperature in the mold
cavity to constantly recalculate cure time and open the press at the correct
cure time, the improvement in the “more efficient way to select a DFT
calculation technique” (Appeal Br. 21) which is used to calculate a predicted
FWHM of a test compound does not qualify as an improvement to a
technological process (Appeal Br. 21); rather, it is merely an enhancement to
the abstract ideas of the collection and organization of reference data to
select the best model to then use in a calculation. See Athena Diagnostics,
Inc. v. Mayo Collaborative Servs., LLC, 915 F.3d 743, 750 (Fed. Cir. 2019);
Syn opsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir.
2016) (“[A] claim for a new abstract idea is still an abstract idea.”). Even if
it is true that Appellant’s model described in the Specification and recited by
claim 1 might be better than the prior way of analyzing information to select
a DFT method to apply to a test compound to determine a predicted FHWM,
that does not demonstrate that the claimed steps are integrated into a
practical application. See Parker v. Flook, 437 U.S. 584, 594–95 (1978)
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(holding alarm limit calculation ineligible for patenting despite
acknowledgment that claimed computational method “provides a new and
presumably better method for calculating alarm limit values”). An
improvement in the judicial exception, itself, cannot serve as the
technological improvement upon which eligibility is based. Guidance, 84
Fed. Reg. at 55, n. 24.
And, even if the selection of the DFT calculation technique using
Appellant’s method that employs processors and information databases
provides for a more efficient selection than the previous trial-and-error
approach (Appeal Br. 21), such does not establish an integration of the
judicial exception into a practical application. See, e.g., Bancorp Servs.,
L.L.C. v. Sun Life Assur. Co. of Canada (U.S.), 687 F.3d 1266, 1278 (Fed.
Cir. 2012) (“[T]he fact that the required calculations could be performed
more efficiently via a computer does not materially alter the patent eligibility
of the claimed subject matter.”).
Appellant’s argument that its claim is analogous to those found patent
eligible in Thales Visionix Inc. v. United States, 850 F.3d 1343 (Fed. Cir.
2017), (Appeal Br. 24) is not persuasive. In Thales, the court held patent-
eligible claims reciting determining an orientation of an object relative to a
moving reference frame based on signals from two inertial sensors mounted
respectively on the object and on the moving reference frame. Thales, 850
F.3d at 1345–49. In reaching its eligibility conclusion, the court noted that
the claimed invention used inertial sensors in an unconventional manner to
reduce errors in measuring a moving object’s relative position and
orientation on a moving reference frame. Id. at 1348–49. In other words,
the court relied on the particular arrangement of sensors, as the improvement
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in finding claims eligible. Appellant’s claim does not have a similar
particular arrangement of physical objects, much less arranged in an
unconventional manner.3
In sum, we find that the claimed invention does not integrate the
abstract idea into a “practical application,” as that phrase is used in the
Guidance. See Guidance, 84 Fed. Reg. at 55. Thus, we conclude that the
claim is directed to an abstract idea. We next turn to the second step of the
Alice analysis, i.e., whether the claim includes an “inventive concept.”

STEP 2B
Step 2B requires that we look to whether the claim, that we have
determined above to be directed to the judicial exception of an abstract idea,
“[a]dds a specific limitation [beyond the judicial exception that is] not well-
understood, routine, conventional activity in the field.” Guidance, 84 Fed.
Reg. at 56; MPEP § 2106.05(d)).

3 To the extent Appellant’s citation to SiRF Technology, Inc. v.
International Trade Commission, 601 F.3d 1319 (Fed. Cir. 2010), (Appeal
Br. 24), is a suggestion that its claim is analogous to the claim found eligible
in that case, we do not find such an argument persuasive. In SiRF, the
Federal Circuit found that the GPS receiver recited in the claims played an
integral role in the methods, stating that “pseudoranges” required by the
claim in order to “estimate the range of the GPS receiver” “exist only with
respect to a particular GPS receiver that receives the satellite signals” and
that “without a [particular] GPS receiver it would be impossible to generate
pseudoranges or to determine the position of the GPS receiver whose
position is the precise goal of the claims.” SiRF, 601 F.3d at 1332 (emphasis
added). There is no particular machine that is similarly integral to
Appellant’s claim.

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As explained in the Guidance, it is the “additional elements recited in
the claims” beyond the judicial exceptions in the claim that must provide
significantly more than the recited judicial exception. Guidance, 84 Fed.
Reg. at 56 (emphasis added).
There is no indication that the operations recited in claim 1 carried out
by the processor, i.e., collection of experimental information into a database,
collection of calculated information into a database, effecting calculations,
arranging data, determining similarities between compounds and picking a
calculation method based on the arrangement of data, require any specialized
computer hardware or other inventive computer components. In other
words, there is no indication that the claim requires a particular machine,
invokes any asserted inventive programming, or that the claimed invention is
implemented using other than generic computer components to perform
generic computer functions. See DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[A]fter Alice, there can remain no
doubt: recitation of generic computer limitations does not make an otherwise
ineligible claim patent-eligible.”).
Furthermore, the Examiner provides evidence that forming an active
layer between electrode elements is routine, conventional and well
understood (Final Action 4), which Appellant does not contest.
The Examiner explains, and we agree, that viewed as a whole, the
additional elements “do not provide meaningful limitation(s) to transform
the abstract idea into a patent eligible application of the abstract idea such
that the claim(s) amounts to significantly more than the abstract idea itself.”
(Id. at 5.)
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The fact that Appellant’s model described in the Specification and
recited by claim 1 might recite a new way of analyzing data to select a DFT
method to apply to a test compound to determine a predicted FWHM is
insufficient to establish eligibility for patenting because as described above,
the collection and analysis of data to select the DFT method is the abstract
idea. See In re BRCA1- and BRCA2-Based Hereditary Cancer Test Patent
Litig., 774 F.3d 755, 759 (Fed. Cir. 2014) (citing Association for Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013)) (Even if
Appellant “made a ‘[g]roundbreaking, innovative, or even brilliant
discovery,’ . . . that is not enough” to establish patent eligibility.).
Appellant’s assertion that the claim makes “a device provide a more
accurate simulation or measurement” and thus the claim is significantly
more than a judicial exception just as the claims in Exergen Corporation v.
Kaz USA, Incorporated, 725 F. App’x 959 (Fed. Cir. 2018), (Appeal Br. 25–
26) is not persuasive. In Exergen, the claims recited a method of detecting
core body temperature, which measurement is directed to a natural
phenomenon. 725 F. App’x at 964, 966. However, the claims in Exergen
recited steps of scanning the forehead for temperature readings, i.e., not the
natural phenomenon of the core body temperature, with a radiation detector
that contains electronics searching for a peak reading, which steps were
unconventional steps used to determine core body temperature, and the prior
art detectors for measuring core body temperature were not adapted to
perform these type of measurements. Id. at 962, 964–65.
The device of Appellant’s claimed invention that is involved in a
“simulation” is a generic processor and the simulation is the calculation of
the FWHM using a specific DFT method. DFT methods are normally used
Appeal 2020-005455
Application 14/855,814

20
to determine FWHM. (See, e.g., Spec. ¶ 97.) Appellant does not argue to
the contrary. Rather, Appellant indicates that the invention is a more
efficient way to select a proper determined functional theory method to
determine the FWHM of a test compound. Unlike the claims at issue in
Exergen, there are no measurement steps undertaken in Appellant’s claim 1,
much less ones that are not normally used in the determination of FWHM.
Consequently, we do not agree with Appellant that claim 1 is analogous to
those found to recite significantly more than a judicial exception in Exergen.
Consequently, we affirm the Examiner’s rejection of claim 1 under 35
U.S.C. § 101 as being directed to patent-ineligible subject matter.

Claim 12
Appellant separately argues that claim 12 is directed to patent eligible
subject matter because it recites that the experimental information database
is updated to include the test compound data that was calculated with the
DFT method selected. We do not find this argument persuasive because
adding information to a database is simply more collection of data, which
itself is an abstract idea. Content Extraction, 776 F.3d at 1347; Smart Sys.,
873 F.3d at 1372.

Appeal 2020-005455
Application 14/855,814

21
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 5–13,
18
112 Written
Description
1, 2, 5–13,
18
1, 2, 5–13,
18
101 Eligibility 1, 2, 5–13,
18

Overall
Outcome
1, 2, 5–13,
18

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