Scott A. Krig

Patent Trials and Appeals Board

Apr 9, 2020

13993841 - (D) (P.T.A.B. Apr. 9, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/993,841 06/13/2013 Scott A. Krig ITL.2534US (P39406US) 1023
47795 7590 04/09/2020
TROP, PRUNER & HU, P.C.
PO Box 41790
HOUSTON, TX 77241
EXAMINER
ITSKOVICH, MIKHAIL
ART UNIT PAPER NUMBER
2483
NOTIFICATION DATE DELIVERY MODE
04/09/2020 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):
Inteldocs_docketing@cpaglobal.com
tphpto@tphm.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SCOTT A. KRIG
Appeal 2018-007040
Application 13/993,841
Technology Center 2400
Before JOHN A. JEFFERY, LARRY J. HUME, and
TERRENCE W. McMILLIN, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant,1 Scott A. Krig, appeals
from the Examiner’s decision rejecting claims 20–28, which are all claims
pending in the application. Appellant has canceled claims 1–20. See
generally Appeal Br. 12–13 (Claims App.). 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(a). Appellant identifies the real party in interest as Intel
Corporation. Appeal Br. 3.
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STATEMENT OF THE CASE2
Appellant’s disclosed embodiments and claimed invention “relate[] to
encoding video analytics results.” Spec. ¶ 1.
Exemplary Claims
Claims 20 and 25, reproduced below, are representative of the subject
matter on appeal (emphases, labeling, and formatting added to contested
limitations):
20. An encoder comprising:
[L1] a processor to
[L2] perform video analytics for encoded media,
[L3] determine at least one of a count of a number of
frames in which an object is depicted or a list of sequence
numbers of frames depicted in the object,
[L4] store the video analytics data and at least one of
[L4(a)] a count of number of frames in which
an object is depicted or
[L4(b)] a list of sequence numbers of frames
depicting the object in a computer accessible medium; and
[L5] a memory coupled to said processor.
25. The encoder of claim 24, said processor to provide
a confidence indicator indicating how certain is an
identification of an object in the media.

2 Our decision relies upon Appellant’s Appeal Brief (“Appeal Br.,” filed
Jan. 9, 2018); Reply Brief (“Reply Br.,” filed July 2, 2018); Examiner’s
Answer (“Ans.,” mailed May 4, 2018); Final Office Action (“Final Act.,”
mailed Oct. 16, 2017); and the original Specification (“Spec.,” filed
June 13, 2013) (claiming benefit of PCT/US2011/060517, filed
Nov. 14, 2011). A prior appeal (Appeal No. 2017-000045) affirming the
Examiner’s rejection of claims 1–28 was mailed April 3, 2017.
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Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Shu et al. (“Shu”) US 2009/0322881 A1 Dec. 31, 2009
Rejections on Appeal3
R1. Claims 20–28 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to a judicial exception (i.e., a law of nature, a
natural phenomenon, or abstract idea) without significantly more. Final
Act. 5–6.
R2. Claims 20–28 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Shu. Final Act. 10–11.
CLAIM GROUPING
Based on Appellant’s arguments (Appeal Br. 7–11) and our discretion
under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of patent-ineligible
subject matter Rejection R1 of claims 20–28 on the basis of representative
claim 20. We address the appeal of anticipation Rejection R1 of
claims 20–28, infra.4

3 In the event of further prosecution, we invite the Examiner’s attention to
whether the recitation in claim 20 of “a count of number of frames in which
an object is depicted” (second occurrence) and “a list of sequence numbers
of frames” (second occurrence) represent new instances of these limitations,
or whether they more properly are intended to refer back to each respective
first occurrence of these phrases, and whether such potentially confusing
recitations implicate the definiteness requirements of 35 U.S.C. § 112,
second paragraph.
4 “Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
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ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellant. 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).
We disagree with Appellant’s arguments with respect to claims 20–28
and, unless otherwise noted, we incorporate by reference herein and adopt as
our own: (1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken, and (2) the reasons and rebuttals set forth in
the Examiner’s Answer in response to Appellant’s arguments. We highlight
and address specific findings and arguments regarding claims 20 and 25 for
emphasis as follows.
1. § 101 Rejection R1 of Claims 20–28
Issue 1
Appellant argues (Appeal Br. 7–8; Reply Br. 1–3) the Examiner’s
rejection of claim 20 under 35 U.S.C. § 101 as being directed to patent-
ineligible subject matter is in error. These contentions present us with the
following issue:

shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately.” 37 C.F.R. § 41.37(c)(1)(iv).
In addition, when Appellant does not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
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Under the USPTO’s Revised Guidance, informed by our governing
case law concerning 35 U.S.C. § 101, is claim 1 patent-ineligible under
§ 101?
Principles of Law
A. 35 U.S.C. § 101
An invention is patent-eligible if it is a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.5
However, 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. Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 70 (2012) (brackets in original) (citing Diamond v. Diehr,
450 U.S. 175, 185 (1981)).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014)
(citing Mayo, 566 U.S. at 75–77). In accordance with that framework, we
first determine what concept the claim is “directed to.” See Alice, 573 U.S.
at 219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4

5 This threshold analysis of whether a claim is directed to one of the four
statutory categories of invention, i.e., a process, machine, manufacture, or
composition of matter, is referred to as “Step 1” in the USPTO’s patent-
eligibility analysis under § 101. MPEP § 2106.
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in petitioners’ application explain the basic concept of hedging, or protecting
against risk . . . .”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diehr, 450 U.S. at 191); “tanning,
dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores”
(id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267–68 (1853)));
and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v.
Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held “a claim drawn to subject matter otherwise statutory
does not become nonstatutory simply because it uses a mathematical
formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We view
respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, and this principle cannot be circumvented by attempting
to limit the use of the formula to a particular technological environment.”
Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace
that an application of a law of nature or mathematical formula to a known
structure or process may well be deserving of patent protection.”).
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Abstract ideas may include, but are not limited to, fundamental
economic practices, methods of organizing human activities, and
mathematical formulas or relationships. Alice, 573 U.S. at 217–21. Under
this guidance, we must therefore ensure at step one that we articulate what
the claims are directed to with enough specificity to ensure the step one
inquiry is meaningful. Id. at 217 (“[W]e tread carefully in construing this
exclusionary principle lest it swallow all of patent law.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘“inventive
concept”’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (citation omitted). “A claim
that recites an abstract idea must include ‘additional features’ to ensure ‘that
the [claim] is more than a drafting effort designed to monopolize the
[abstract idea].’” Id. (alterations in original) (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
B. USPTO Revised Guidance
The PTO published revised guidance in the Federal Register
concerning the application of § 101. 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50 (January 7, 2019) (hereinafter
“Revised Guidance”) (https://www.govinfo.gov/content/pkg/FR-2019-01-
07/pdf/2018-28282.pdf).
Under the Revised Guidance, we first look to whether the claim
recites:
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(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);6 and
(2) additional elements that integrate the judicial
exception into a practical application (see Manual for Patent
Examining Procedure (“MPEP”) §§ 2106.05(a)–(c), (e)–(h)).7
See Revised Guidance 52–53.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial
exception that is not “well-understood, routine, conventional”
in the field (see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine,
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial exception.8
See Revised Guidance 56.
Step 2A(i) – Abstract Idea
Informed by our judicial precedent, the Revised Guidance extracts and
synthesizes key concepts identified by the courts as abstract ideas to explain
that the abstract idea exception includes the following groupings of subject
matter, when recited as such in a claim limitation:

6 Referred to as “Revised Step 2A, Prong 1” in the Revised Guidance
(hereinafter “Step 2A(i)”).
7 Referred to as “Revised Step 2A, Prong 2” in the Revised Guidance
(hereinafter “Step 2A(ii)”).
8 Items (3) and (4) continue to be collectively referred to as “Step 2B” of the
Supreme Court’s two-step framework, described in Mayo and Alice.
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(a) Mathematical concepts—mathematical relationships,
mathematical formulas or equations, mathematical calculations;
(b) Certain methods of organizing human activity —
fundamental economic principles or practices (including
hedging, insurance, mitigating risk); commercial or legal
interactions (including agreements in the form of contracts;
legal obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior or
relationships or interactions between people (including social
activities, teaching, and following rules or instructions); and
(c) Mental processes—concepts performed in the human
mind (including an observation, evaluation, judgment, opinion).
Revised Guidance 52 (footnotes omitted).
Under the Revised Guidance, if the claim does not recite a judicial
exception (a law of nature, natural phenomenon, or subject matter within the
enumerated groupings of abstract ideas above), then the claim is patent-
eligible at Step 2A(i). This determination concludes the eligibility analysis,
except in situations identified in the Revised Guidance.9
However, if the claim recites a judicial exception (i.e., an abstract idea
enumerated above, a law of nature, or a natural phenomenon), the claim
requires further analysis for a practical application of the judicial exception
in Step 2A(ii).

9 In the rare circumstance in which an examiner believes a claim limitation
that does not fall within the enumerated groupings of abstract ideas should
nonetheless be treated as reciting an abstract idea, the procedure described in
Section III.C. of the Guidance for analyzing the claim should be followed.
See Revised Guidance, Section III.C.
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Step 2A(ii) – Practical Application
If a claim recites a judicial exception in Step 2A(i), we determine
whether the recited judicial exception is integrated into a practical
application of that exception in Step 2A(ii) by: (a) identifying whether there
are any additional elements recited in the claim beyond the judicial
exception(s); and (b) evaluating those additional elements individually and
in combination to determine whether they integrate the exception into a
practical application.
The seven identified “practical application” sections of the MPEP,10
cited in the Revised Guidance under Step 2A(ii), are:
(1) MPEP § 2106.05(a) Improvements to the Functioning of
a Computer or To Any Other Technology or Technical
Field
(2) MPEP § 2106.05(b) Particular Machine
(3) MPEP § 2106.05(c) Particular Transformation
(4) MPEP § 2106.05(e) Other Meaningful Limitations
(5) MPEP § 2106.05(f) Mere Instructions To Apply An
Exception
(6) MPEP § 2106.05(g) Insignificant Extra-Solution Activity
(7) MPEP § 2106.05(h) Field of Use and Technological
Environment
See Revised Guidance 55.

10 See MPEP §§ 2106.05(a)–(c), (e)–(h). Citations to the MPEP herein refer
to revision [R-08.2017]. Sections 2106.05(a), (b), (c), and (e) are indicative
of integration into a practical application, while §§ 2106.05(f), (g), and (h)
relate to limitations that are not indicative of integration into a practical
application.
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If the recited judicial exception is integrated into a practical
application as determined under one or more of the MPEP sections cited
above, then the claim is not directed to the judicial exception, and the patent-
eligibility inquiry ends. See Revised Guidance 54. If not, then analysis
proceeds to Step 2B.
Step 2B – “Inventive Concept” or “Significantly More”
Under our reviewing courts’ precedent, it is possible that a claim that
does not “integrate” a recited judicial exception under Step 2A(ii) is
nonetheless patent eligible. For example, the claim may recite additional
elements that render the claim patent eligible even though one or more claim
elements may recite a judicial exception.11 The Federal Circuit has held
claims eligible at the second step of the Alice/Mayo test (USPTO Step 2B)
because the additional elements recited in the claims provided “significantly
more” than the recited judicial exception (e.g., because the additional
elements were unconventional in combination).12 Therefore, if a claim has
been determined to be directed to a judicial exception under Revised Step
2A, we must also evaluate the additional elements individually and in
combination under Step 2B to determine whether they provide an inventive
concept (i.e., whether the additional elements amount to significantly more
than the exception itself).13

11 See, e.g., Diehr, 450 U.S. at 187.
12 See, e.g., Amdocs, Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1300,
1304 (Fed. Cir. 2016); BASCOM Glob. Internet Servs., Inc. v. AT&T
Mobility LLC, 827 F.3d 1341, 1349–52 (Fed. Cir. 2016); DDR Holdings,
LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257–59 (Fed. Cir. 2014).
13 The patent eligibility inquiry may contain underlying issues of fact.
Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325
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Under the Revised Guidance, we must consider in Step 2B whether an
additional element or combination of elements: (1) “Adds a specific
limitation or combination of limitations that are not well-understood,
routine, conventional activity in the field, which is indicative that an
inventive concept may be present;” or (2) “simply appends well-understood,
routine, conventional activities previously known to the industry, specified
at a high level of generality, to the judicial exception, which is indicative
that an inventive concept may not be present.” See Revised Guidance,
Section III.B.14
In the Step 2B analysis, an additional element (or combination of
elements) is not well-understood, routine or conventional unless the
Examiner finds an evidentiary basis, and expressly supports a rejection in
writing with, one or more of the following:
1. A citation to an express statement in the
specification or to a statement made by an applicant during

(Fed. Cir. 2016). In particular, “[t]he question of whether a claim element or
combination of elements is well-understood, routine and conventional to a
skilled artisan in the relevant field is a question of fact.” Berkheimer v. HP
Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018).
14 In accordance with existing Step 2B guidance, an Examiner’s finding that
an additional element (or combination of elements) is well-understood,
routine, conventional activity must be supported with at least one of the four
specific types of evidence required by the USPTO Berkheimer
Memorandum, as shown above. For more information concerning evaluation
of well-understood, routine, conventional activity, see MPEP § 2106.05(d),
as modified by the USPTO Berkheimer Memorandum (USPTO
Commissioner for Patents Memorandum dated Apr. 19, 2018, “Changes in
Examination Procedure Pertaining to Subject Matter Eligibility, Recent
Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.)” (hereinafter
“Berkheimer Memo”).
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prosecution that demonstrates the well-understood, routine,
conventional nature of the additional element(s). . . .
2. A citation to one or more of the court decisions
discussed in MPEP § 2106.05(d)(II) as noting the well-
understood, routine, conventional nature of the additional
element(s).
3. A citation to a publication that demonstrates the
well-understood, routine, conventional nature of the additional
element(s). . . .
4. A statement that the examiner is taking official
notice of the well-understood, routine, conventional nature of
the additional element(s). . . .
See Berkheimer Memo 3–4.
If the Examiner or the Board determines under Step 2B that the
element (or combination of elements) amounts to significantly more than the
exception itself, the claim is eligible, thereby concluding the eligibility
analysis.
However, if a determination is made that the element and combination
of elements do not amount to significantly more than the exception itself, the
claim is ineligible under Step 2B, and the claim should be rejected for lack of
subject matter eligibility.
Analysis
Step 1 – Statutory Category
Claim 20, as an encoder (device) claim, recites one of the enumerated
categories of eligible subject matter in 35 U.S.C. § 101. Therefore, the issue
before us is whether it is directed to a judicial exception without
significantly more.
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Step 2A(i): Does the Claim Recite a Judicial Exception?
The Examiner determined “the claims appear to be directed toward an
abstract idea, determining and storing a number, which is not considered
statutory under a growing multitude of cases.” Final Act. 5 (case citations
omitted).
We conclude claim 20 does not recite the judicial exceptions of either
natural phenomena or laws of nature. We evaluate, de novo, whether
claim 20 recites an abstract idea based upon the Revised Guidance.
First, we look to the Specification to provide context as to what the
claimed invention is directed to. In this case, the Specification discloses that
the invention “relates to encoding video analytics results,” (Spec. ¶ 1), and
“[e]xamples of video analytics include surveillance video analysis where
persons or objects in the video are recognized, face and object recognition
systems, and tracking systems that track objects, such as cars on highways,
by analyzing the video using electronic techniques.” Id. ¶ 2.
Appellant’s Abstract describes the invention: “An encoded media file
or stream may include video analytics data. There data may include
information about the objects depicted in the media.” Spec. 1 (Abstract).
Appellant argues the claims are patent-eligible in light of the Federal
Circuit’s holding in Enfish. Reply Br. 2–3.
Enfish15
Appellant argues “[i]n the case of Enfish, memory function was
improved as set forth in the specification and this was accepted by the

15 Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016).
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Federal Circuit as a basis for finding or technology improvement sufficient
to preclude abstractness and patent ineligibility.” Reply Br. 2. Further,
“[t]he assertion that somehow the claimed improvement is not ‘fundamental’
enough is mere conclusion. There is nothing in any case law that requires
that the improvement be both an improvement as well as ‘fundamental.’
Nothing in the Enfish case supports this. The only standard is that if there is
an asserted improvement in the specification (and here the Examiner does
not contest that there is) the claimed invention is not abstract.” Reply
Br. 2–3.
We disagree with Appellant’s contentions. We disagree because, in
Enfish, our reviewing court held claims directed to a self-referential logical
model for a computer database patent-eligible under step one of Alice.
Enfish, 822 F.3d at 1330. The disclosed technique enabled faster searching
and more effective storage of data than previous methods. Id. at 1333. The
court found the claims directed to “a specific improvement to the way
computers operate, embodied in the self-referential table” (id. at 1336), and
explained that the claims are “not simply directed to any form of storing
tabular data, but instead are specifically directed to a self-referential table
for a computer database” that functions differently than conventional
databases. Id. at 1337.
We do not find the claims on appeal, which recite performing video
analytics by counting either a number of frames in which an object is
depicted or a list of sequence numbers of frames depicted in the object, and
storing the count, to be sufficiently analogous to those in Enfish, in which
the Federal Circuit held the claims to be an improvement in the operation of
the computer.
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In TABLE 1 below, we identify in italics the specific claim
limitations in claim 20 that we conclude recite an abstract idea. We
additionally identify in bold the additional (non-abstract) claim limitations
that we conclude are generic computer components and techniques:
TABLE 1
Independent Claim 20 Revised Guidance
An encoder comprising: An encoder (device) is a statutory subject
matter class. See 35 U.S.C. § 101.
[L1] a processor to A processor is a generic computer component.
[L2] perform video
analytics for encoded
media,
“[P]erform[ing] . . . analytics,” i.e.,
performing analysis, is an abstract idea, i.e.,
an observation, evaluation, judgment,
opinion” which could be performed as a
mental process. See Revised Guidance 52.
[L3] determine at least
one of a count of a
number of frames in
which an object is
depicted or a list of
sequence numbers of
frames depicted in the
object,
“[D]etermin[ing] . . . a count” or “a list of
sequence numbers” is an abstract idea, i.e., an
observation, evaluation, judgment, opinion”
which could be performed as a mental
process. See Revised Guidance 52.
Alternatively, determining a count can be
considered a mathematical calculation, which
is an abstract idea. Revised Guidance 52 and
n.12 citing SAP America, Inc. v. InvestPic,
LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018)
(holding that claims to a “series of
mathematical calculations based on selected
information” are directed to abstract ideas).
[L4] store the video
analytics data and at
least one of
[L4(a)] a count of
number of frames in
Storing data is a generic computer function,
whether it is storing a count of frames, or a
list of sequence numbers.
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Independent Claim 20 Revised Guidance
which an object is
depicted or
[L4(b)] a list of
sequence numbers of
frames depicting the
object in a computer
accessible medium; and
[L5] a memory
coupled to said
processor.
A memory is a generic computer component.
Appeal Br. 12 (Claims App.).
Under the broadest reasonable interpretation standard,16 we conclude
limitations L1 through L5 of claim 20, as a whole, recite functions that
would ordinarily be carried out when determining the occurrence of an
object in video media by determining and storing a representative number.
See Final Act. 5–6. For example, “determin[ing] at least one of a count of a
number of frames in which an object is depicted or a list of sequence
numbers of frames depicted in the object” are operations that generally occur
when conducting video analysis, i.e., analytics, to determine the occurrence
of an object in media. Further, performing video analytics and either

16 During prosecution, claims must be given their broadest reasonable
interpretation when reading claim language in light of the specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard,
we interpret claim terms using “the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant’s specification.” In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997).
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determining a count of a number of frames in which the object is depicted or
a list of sequence numbers of the frames depicted in the object is an abstract
idea, whether initiated on paper, or by using a computer.
We determine that claim 20, overall, recites a mental process that may
also be performed in the mind or by pen and paper. This type of activity,
i.e., determining the occurrence of an object in video media by determining
and storing a representative number, as recited in limitations L1 through L5,
for example, and aside from any computer-related aspects, includes
longstanding conduct that existed well before the advent of computers and
the Internet, and could be carried out by a human in the mind or with pen
and paper.17 See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d
1366, 1375 (Fed. Cir. 2011) (“That purely mental processes can be
unpatentable, even when performed by a computer, was precisely the
holding of the Supreme Court in Gottschalk v. Benson.”).18

17 In particular, we determine limitations L2 (“perform video analytics for
encoded media”) and L3 (“determine at least one of a count of a number of
frames in which an object is depicted or a list of sequence numbers of
frames depicted in the object”) represent abstract ideas in the form of mental
processes.
18 Our reviewing court recognizes that “[a]n abstract idea can generally be
described at different levels of abstraction.” Apple, Inc. v. Ameranth, Inc.,
842 F.3d 1229, 1240 (Fed. Cir. 2016). That need not and, in this case does
not, “impact the patentability analysis.” Id. at 1241. Further, “[t]he Board’s
slight revision of its abstract idea analysis does not impact the patentability
analysis.” Id. Moreover, merely combining several abstract ideas does not
render the combination any less abstract. RecogniCorp, LLC v. Nintendo
Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017) (“Adding one abstract idea (math)
to another abstract idea . . . does not render the claim non-abstract.”); see
also FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94 (Fed.
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Thus, under Step 2A(i), we agree with the Examiner that claim 20’s
encoder is a combination of well-understood, routine, and conventional
computer elements and techniques (see analysis under Step 2A(ii) and Step
2B, infra) that are used to execute abstract ideas, i.e., in the form of generic
limitations L2 and L3. We conclude claim 20, under our Revised Guidance,
recites a judicial exception of determining the occurrence of an object in
video media by determining and storing a representative number, i.e., a
mental process, and thus is an abstract idea.
Step 2A(ii): Judicial Exception Integrated into a Practical Application?
If the claims are directed to a judicial exception, as we conclude
above, we proceed to the “practical application” Step 2A(ii) in which we
determine whether the recited judicial exception is integrated into a practical
application of that exception by: (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception(s); and
(b) evaluating those additional elements individually and in combination to
determine whether they integrate the exception into a practical application.
As to the specific limitations, we find limitations L2 and L3 recite
abstract ideas, and limitations L1, L4, L4a, L4b, and L5 recite conventional
computer components and/or techniques, e.g., a processor, and storing data
in a memory and, on this record, we are of the view that Appellant’s claims
do not operate the recited generic computer components in an
unconventional manner to achieve an improvement in computer
functionality. See MPEP § 2106.05(a).

Cir. 2016) (determining the pending claims were directed to a combination
of abstract ideas).
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We find each of the limitations of claim 20 recite either abstract ideas
as identified in Step 2A(i), supra, or conventional use of generic computer
components, and none of the limitations integrate the judicial exception of
determining the occurrence of an object in video media by determining and
storing a representative number into a practical application as determined
under one or more of the MPEP sections cited above. The claim as a whole
merely uses instructions to implement the abstract idea on a computer or,
alternatively, merely uses a computer as a tool to perform the abstract idea.
Appellant argues the claims represent an improvement, i.e., “[h]ere,
tracking the movement of across frames is improved and the operation of the
technology, and particularly the operation of a processor is improved as a
result. The Manual of Patent Examining Procedure is explicit that such
improvements set forth in the specification are entitled to significant, if not
dispositive weight.” Reply Br. 2 (emphasis added). Appellant further
argues:
Moreover, the present application points out that the claimed
invention does improve the operation of a processor by
enabling tracking the movement of objects across frames. See
Specification at ¶ 57. Where the processor is used to track or
record the movement of objects between the frames, the
claimed invention improves operation of the processor. In other
words the claimed invention provides a way to determine the
number of frames that include an object or even better which
frames include the object.
Appeal Br. 8.
In particular, Appellant does not identify, nor can we identify, any
recited limitation or limitations, individually, or as a whole, that serve to
improve the operation of a processor or of the encoder. Moreover, we note
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claim 20, for example, merely counts a number of frames in which the object
is depicted or a list of sequence numbers of the frames depicted in the object,
and stores the count in a memory. No further reliance upon the stored count
is recited which could arguably be seen as representing an improvement in
the operation of a processor, or of the encoder overall.19
Under analogous circumstances, the Federal Circuit has held that
“[t]his is a quintessential ‘do it on a computer’ patent: it acknowledges that
[such] data . . . was previously collected, analyzed, manipulated, and
displayed manually, and it simply proposes doing so with a computer. We
have held such claims are directed to abstract ideas.” Univ. of Fla. Research
Found., Inc. v. Gen. Elec. Co., 916 F.3d 1363, 1367 (Fed. Cir. 2019); see
also Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1351 (Fed. Cir.
2016) (“Though lengthy and numerous, the claims do not go beyond
requiring the collection, analysis, and display of available information in a
particular field, stating those functions in general terms, without limiting
them to technical means for performing the functions that are arguably an
advance over conventional computer and network technology.”).
Therefore, the claim as a whole merely uses instructions to implement
the abstract idea on a computer or, alternatively, merely uses a computer as a
tool to perform the abstract idea. Thus, on this record, Appellant has not
shown an improvement or practical application under the guidance of MPEP
section 2106.05(a) (“Improvements to the Functioning of a Computer or To

19 As pointed out by the Examiner, “[t]he claims should be amended to
include limitations toward the technical field.” Final Act. 6.
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Any Other Technology or Technical Field”) or section 2106.05(e) (“Other
Meaningful Limitations”).
Therefore, we conclude the abstract idea is not integrated into a
practical application, and thus claim 20 is directed to the judicial exception.
Step 2B – “Inventive Concept” or “Significantly More”
If the claims are directed to a judicial exception, and not integrated
into a practical application, as we conclude above, we proceed to the
“inventive concept” step. For Step 2B we must “look with more specificity
at what the claim elements add, in order to determine ‘whether they identify
an “inventive concept” in the application of the ineligible subject matter’ to
which the claim is directed.” Affinity Labs of Tex., LLC v. DIRECTV, LLC,
838 F.3d 1253, 1258 (Fed. Cir. 2016).
In applying step two of the Alice analysis, our reviewing court guides
we must “determine whether the claims do significantly more than simply
describe [the] abstract method” and thus transform the abstract idea into
patentable subject matter. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709,
715 (Fed. Cir. 2014). We look to see whether there are any “additional
features” in the claims that constitute an “inventive concept,” thereby
rendering the claims eligible for patenting even if they are directed to an
abstract idea. Alice, 573 U.S. at 221. Those “additional features” must be
more than “well-understood, routine, conventional activity.” Mayo, 566
U.S. at 79.
Limitations referenced in Alice that are not enough to qualify as
“significantly more” when recited in a claim with an abstract idea include, as
non-limiting or non-exclusive examples: adding the words “apply it” (or an
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equivalent) with an abstract idea20; mere instructions to implement an
abstract idea on a computer21; or requiring no more than a generic computer
to perform generic computer functions that are well-understood, routine, and
conventional activities previously known to the industry.22
Evaluating representative claim 20 under Step 2 of the Alice analysis,
we conclude it lacks an inventive concept that transforms the abstract idea of
determining the occurrence of an object in video media by determining and
storing a representative number into a patent-eligible application of that
abstract idea.
The patent eligibility inquiry may contain underlying issues of fact.
Mortg. Grader, 811 F.3d at 1325. In particular, “[t]he question of whether a
claim element or combination of elements is well-understood, routine and
conventional to a skilled artisan in the relevant field is a question of fact.”
Berkheimer, 881 F.3d at 1368.
As evidence of the conventional nature of the recited “processor” and
“memory” in encoder claim 20, the Specification discloses “system 10 may
be a desk top computer, a server, a laptop computer, a mobile Internet
device, or a cellular telephone, to mention a few examples” (Spec. ¶ 5), and
“system memory 22 may be coupled to the system bus 14. While an

20 Alice, 573 U.S. at 221–23.
21 Alice, 573 U.S. at 222–23, e.g., simply implementing a mathematical
principle on a physical machine, namely a computer.
22 Alice, 573 U.S. at 225 (explaining using a computer to obtain data, adjust
account balances, and issue automated instructions involves computer
functions that are well-understood, routine, conventional activities).
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example of a host system architecture is provided, the present invention is in
no way limited to any particular system architecture.” Spec. ¶ 6.
Thus, because the Specification describes the additional elements in
general terms, without describing the particulars, we conclude the claim
limitations may be broadly but reasonably construed as reciting conventional
computer components and techniques, particularly in light of Appellant’s
Specification, as quoted above.23
With respect to this step of the analysis, as discussed above, Appellant
argues the claimed invention is significantly more than an abstract idea
because, by “using the sequence numbers, there is no need to insert anything
into the video itself in order to find a particular sequence.” Appeal Br. 8.
We are not persuaded by Appellant’s argument because the features upon
which Appellant relies are not recited in the claim, i.e., “there is no need to
insert anything into the video itself in order to find a particular sequence.”
Id.
With respect to the Step 2B analysis, we conclude, similar to Alice, the
recitation of an encoder that includes a “processor” and “memory”
(claim 20) as argued by Appellant, is simply not enough to transform the
patent-ineligible abstract idea here into a patent-eligible invention under Step
2B. See Alice, 573 U.S. at 221 (“[C]laims, which merely require generic
computer implementation, fail to transform [an] abstract idea into a patent-
eligible invention.”).

23 Claim terms are to be given their broadest reasonable interpretation, as
understood by those of ordinary skill in the art and taking into account
whatever enlightenment may be had from the Specification. Morris, 127
F.3d at 1054.
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We conclude the claims fail the Step 2B analysis because claim 20, in
essence, merely recites various computer-based elements along with no
more than mere instructions to implement the identified abstract idea using
the computer-based elements.
Therefore, in light of the foregoing, we conclude, under the Revised
Guidance, that each of Appellant’s claims 20–28, considered as a whole, is
directed to a patent-ineligible abstract idea that is not integrated into a
practical application and does not include an inventive concept.
Accordingly, we sustain the Examiner’s § 101 rejection of independent
claim 20, and grouped claims 21–28 which fall therewith. See Claim
Grouping, supra.
2. § 102(b) Rejection R2 of Claims 20–28
Issue 2
Appellant argues (Appeal Br. 8–11; Reply Br. 3–6) the Examiner’s
rejection of claim 20 under 35 U.S.C. § 102(b) as being anticipated by Shu is
in error. These contentions present us with the following issue:
Did the Examiner err in setting forth a prima facie case of anticipation
of claim 20?
Principles of Law
Anticipation of a claim under 35 U.S.C. § 102 occurs when each
claimed element and the claimed arrangement or combination of those
elements is disclosed, inherently or expressly, by a single prior art reference.
Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed.
Cir. 2010). A reference inherently discloses an element of a claim “if that
missing characteristic is necessarily present, or inherent, in the single
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anticipating reference.” Schering Corp. v. Geneva Pharms., 339 F.3d 1373,
1377 (Fed. Cir. 2003) (citation omitted) (emphasis added). “Inherency,
however, may not be established by probabilities or possibilities. The mere
fact that a certain thing may result from a given set of circumstances is not
sufficient.” Therasense, 593 F.3d at 1332 (citing Cont’l Can Co. USA, Inc.
v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991)).
The Federal Circuit has held, “the prima facie case is merely a
procedural device that enables an appropriate shift of the burden of
production.” Hyatt v. Dudas, 492 F.3d 1365, 1369 (Fed. Cir. 2007). The
Federal Circuit stated that this burden is met by “adequately explain[ing] the
shortcomings it perceives so that the applicant is properly notified and able
to respond.” Id. at 1370. It is only “when a rejection is so uninformative
that it prevents the applicant from recognizing and seeking to counter the
grounds for rejection” that the prima facie burden has not been met and the
rejection violates the minimal requirements of 35 U.S.C. § 132. Chester v.
Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990).
Analysis
Appellant contends:
With respect to the claim construction arguments about
the materials in the Evidentiary Appendix, the Examiner has
posed no contrary construction of sequence numbers. Clearly,
the cited material describes sequence numbers as frame
numbers. There is no reason to believe that the construction of
these terms would have changed between the time depicted in
the articles and the current time. They plainly are the only
evidence on record of what this term means to one skilled in the
art and there is no reason to construe sequence numbers to
cover a pointer when a pointer points to something, and a count
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is a number, and a list of sequence numbers is a list of frame
numbers. Moreover, the Specification refers to “frame”
sequence numbers.
Moreover, there is no conceivable way that a pointer
could be either a frame count or a list of sequence numbers,
especially when sequence numbers are well-known in the art,
which has never refuted it in any Office Action to date and is
supported by the Applicant’s submission in the Evidentiary
Appendix.
Appeal Br. 8–9 (citing Spec. ¶ 57).
We note Shu’s Abstract discloses:
Systems and methods are disclosed for analyzing, managing
and cataloguing video tracks generated by a video surveillance
system. Systems and methods operating in accordance with the
present invention receive video tracks from a video surveillance
system; analyze them for particular categories of, for example,
objects or events, assign unique identifying tags to the video
tracks; and save them in highly-cross-referenced databases so
that video tracks containing, for example, particular objects or
events can be easily searched for and recalled.
Shu (Abstract).
The Examiner finds Shu’s disclosure of a pointer anticipates the
claimed functional determination of at least one of a count of number of
frames or list of sequence numbers, i.e., the “prior art teaches[] ‘[t]he track
data comprises at least a pointer [sequence numbers] to a video segment
[comprising a count of frames] containing the object, and can further
comprise in various embodiments location data, trajectory data, motion data,
visual features (for example, color texture and shape) and object class or
identity’ which correspond to tracked metrics.” Final Act. 10–11 (citing Shu
¶¶ 91, 190–192; Figs. 36, 40c, 41c, 47, 48). The Examiner further finds
“that Applicant fails to point out a patentable distinction between storing a
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number to be used as a count and storing a substantially similar number to
be used as a pointer.” Final Act. 3.
In addition, the Examiner finds “Appellant’s argued construction is
impermissibly narrow; it is based on impermissible reading limitations from
external documents (University of Waterloo course material), by
impermissibly narrowing limitations to Applicant’s own naming convention
(lexicography), and based on submitting Attorney’s personal opinion of
knowledge in the art in place of objective evidence.” Ans. 7 (underlining
omitted).
We disagree with the Examiner’s finding that Shu discloses at least
one of or both of a count of number of frames or list of sequence numbers,
as recited in claim 20. We disagree because Shu discloses “[t]he track data
comprises at least a pointer to a video segment containing the object, and
can further comprise in various embodiments location data, trajectory data,
motion data, visual features (for example, color texture and shape) and
object class or identity. In addition to pointers to video segments, the track
data can also comprise digital video clips, keyframes, foreground models
and background models.” Shu ¶ 91 (emphasis).
We disagree with the Examiner because, on this record, we see no
evidence that a pointer as disclosed in Shu is equivalent to either a count of a
number of frames or a list of sequence numbers, as claimed.
Therefore, based upon the findings above, on this record, we are
persuaded of at least one error in the Examiner’s reliance on the cited prior
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art to disclose the disputed limitation of claim 20, such that we find error in
the Examiner’s resulting finding of anticipation.24
Therefore, we do not sustain the Examiner’s anticipation rejection of
independent claim 20, and claims 21–28 which depend therefrom and stand
therewith.25
REPLY BRIEF
To the extent Appellant may advance new arguments in the Reply
Brief (Reply Br. 1–7) not in response to a shift in the Examiner’s position in
the Answer, arguments raised in a Reply Brief that were not raised in the
Appeal Brief or are not responsive to arguments raised in the Examiner’s
Answer will not be considered except for good cause (see 37 C.F.R.
§ 41.41(b)(2)), which Appellant has not shown.

24 Because the issue of obviousness is not before us on Appeal, we do not
determine whether Shu, either alone or in combination with another
reference, would render claim 20 obvious under 35 U.S.C. § 103(a).
Although the Board is authorized to reject claims under 37 C.F.R.
§ 41.50(b), no inference should be drawn when the Board elects not to do so.
See MPEP § 1213.02.
25 We note both Appellant and the Examiner, throughout the record, appear
to rely upon our prior Decision mailed April 3, 2017 to make and emphasize
various points in the Final Action, Answer, and Appellant’s briefs. We point
out that the differences between this Decision and our prior Decision include
the fact that the § 101 Revised Guidance is now in place, and the claims on
Appeal recite a different scope of claimed subject matter, such that we
determine that our prior Decision is not dispositive to issue relevant to the
claims currently on Appeal.
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CONCLUSIONS
(1) Under our Revised Guidance, governed by relevant case law,
claims 20–28 are patent-ineligible under 35 U.S.C. § 101, and we sustain the
rejection.
(2) The Examiner erred with respect to anticipation Rejection R2 of
claims 20–28 under 35 U.S.C. § 102(b), and we do not sustain the rejection.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, we affirm the Examiner’s decision. See 37
C.F.R. § 41.50(a)(1).
DECISION SUMMARY
Claims
Rejected
35 U.S.C.
§
Basis /
References Affirmed Reversed
20–28 101
Subject
Matter
Eligibility
20–28
20–28 102(b) Anticipation Shu 20–28
Overall
Outcome 20–28
FINALITY AND RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED