Aitken, Stuart et al.

Patent Trials and Appeals Board

Apr 13, 2020

11749672 - (D) (P.T.A.B. Apr. 13, 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.
11/749,672 05/16/2007 Stuart Aitken 4189-00202 8635
30652 7590 04/13/2020
CONLEY ROSE, P.C.
5601 GRANITE PARKWAY, SUITE 500
PLANO, TX 75024
EXAMINER
POUNCIL, DARNELL A
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
04/13/2020 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):
DallasPatents@dfw.conleyrose.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte STUART AITKEN, WARREN LEE,
KAUSHIK SUBRAMANIAN, and JONATHAN QUINN
____________

Appeal 2019-002785
Application 11/749,672
Technology Center 3600
____________

Before NINA L. MEDLOCK, PHILIP J. HOFFMANN, and
BRUCE T. WIEDER, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1–4, 6–10, 13, 15–17, and 19–28. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Our decision references Appellant’s Appeal Brief (“Appeal Br.,”
filed August 28, 2018) and Reply Brief (“Reply Br.,” filed February 20,
2019), and the Examiner’s Answer (“Ans.,” mailed December 26, 2018) and
Final Office Action (“Final Act.,” mailed April 3, 2018). Appellant
identifies Safeway Inc. as the real party in interest. Appeal Br. 4.
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CLAIMED INVENTION
The claimed invention “relates to the creation of customized
nutritional purchase information,” and more specifically to “the creation of
nutritional reports, nutritional options, and promotional information based
upon purchases at a local store or online store made while using a loyalty
card” (Spec. ¶ 4).
Claims 1, 8, and 13 are the independent claims on appeal. Claim 1,
reproduced below with bracketed notations added, is illustrative of the
claimed subject matter:
1. A method for nutritional planning performed by an
informational computer comprising one or more processors and
instructions stored on a non-transitory computer readable
medium which, when the one or more processors executes the
instructions, the informational computer performs the method
comprising:
[(a)] creating a loyalty profile associated with a
consumer;
[(b)] receiving a notification of products purchased by
the consumer;
[(c)] updating the loyalty profile with nutritional
information relating to the products purchased, wherein the
nutritional information comprises a quantity of a nutritional
element present in each of the products purchased;
[(d)] aggregating the quantity of the nutritional element
present in the products purchased using the loyalty profile over a
historical time range;
[(e)] comparing the quantity of the nutritional element
present in the products purchased using the loyalty profile
aggregated over the historical time range with standardized
intake guidelines;
[(f)] identifying a first deficiency for the quantity of the
nutritional element present in the products purchased using the
loyalty profile based on the step of comparing, wherein the first
deficiency is an inadequate amount of the nutritional element;
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[(g)] creating a meal plan which compensates for the first
deficiency;
[(h)] identifying a second deficiency for a quantity of
another nutritional element present in the meal plan, wherein the
second deficiency is an inadequate amount of the other
nutritional element;
[(i)] matching the meal plan with one or more recipes
containing ingredients that compensate for the second
deficiency;
[(j)] verifying the matching of the meal plan with the one
or more recipes does not exceed the standardized intake
guidelines; and
[(k)] transmitting the meal plan matched with the one or
more recipes that compensate for the second deficiency for
display on a consumer computer via a network connection.
REJECTION
Claims 1–4, 6–10, 13, 15–17, and 19–28 are rejected under 35 U.S.C.
§ 101 as directed to a judicial exception without significantly more.
ANALYSIS
Appellant argues the pending claims as a group (Appeal Br. 13–33).
We select independent claim 1 as representative. The remaining claims
stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
Under 35 U.S.C. § 101, an invention is patent eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[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).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
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Laboratories, Inc., 566 U.S. 66 (2012), “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., 573 U.S. at 217.
The first step in that analysis is to “determine whether the claims at issue are
directed to one of those patent-ineligible concepts.” Id. If the claims are not
directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry
ends. Otherwise, the inquiry proceeds to the second step where the elements
of the claims are considered “individually and ‘as an ordered combination’”
to determine whether there are additional elements that “‘transform the
nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo,
566 U.S. at 79, 78). This is “a search for an ‘inventive concept’ — i.e., an
element or combination of elements that is ‘sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself.’” Id. at 217–18 (alteration in original).
In rejecting the pending claims under 35 U.S.C. § 101, the Examiner
determined that the claims are directed to “nutritional management and meal
planning,” i.e., to an abstract idea, similar to other concepts that courts have
held abstract (Final Act. 2–4). The Examiner also determined that the
claims do not include additional elements or a combination of elements that
is sufficient to amount to significantly more than the abstract idea itself (id.
at 4–6).
After Appellant’s Appeal Brief was filed, and the Examiner’s Answer
mailed, the U.S. Patent and Trademark Office (the “USPTO”) published
revised guidance for use by USPTO personnel in evaluating subject matter
eligibility under 35 U.S.C. § 101. 2019 REVISED PATENT SUBJECT MATTER
ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50, 57 (Jan. 7, 2019) (the “2019
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Revised Guidance”). That guidance revised the USPTO’s examination
procedure with respect to the first step of the Mayo/Alice framework by
(1) “[p]roviding groupings of subject matter that [are] considered an abstract
idea”; and (2) clarifying that a claim is not “directed to” a judicial exception
if the judicial exception is integrated into a practical application of that
exception. Id. at 50. The 2019 Revised Guidance, by its terms, applies to all
applications, and to all patents resulting from applications, filed before, on,
or after January 7, 2019. Id.2,3
Step One of the Mayo/Alice Framework (2019 Revised Guidance, Step 2A)
The first step in the Mayo/Alice framework, as mentioned above, is to
determine whether the claims at issue are “directed to” a patent-ineligible
concept, e.g., an abstract idea. Alice Corp., 573 U.S. at 217. This first step,
as set forth in the 2019 Revised Guidance (i.e., Step 2A), is a two-prong test;
in Step 2A, Prong One, we look to whether the claim recites a judicial
exception, e.g., one of the following three groupings of abstract ideas:
(1) mathematical concepts; (2) certain methods of organizing human

2 The 2019 Revised Guidance supersedes MANUAL OF PATENT EXAMINING
PROCEDURE (“MPEP”) § 2106.04(II), and also supersedes all versions of the
USPTO’s “Eligibility Quick Reference Sheet Identifying Abstract Ideas.”
See 2019 Revised Guidance, 84 Fed. Reg. at 51 (“Eligibility-related
guidance issued prior to the Ninth Edition, R-08.2017, of the MPEP
(published Jan. 2018) should not be relied upon.”). Accordingly,
Appellant’s arguments challenging the sufficiency of the Examiner’s
rejection will not be addressed to the extent those arguments are based on
now superseded USPTO guidance.
3 The USPTO issued an update on October 17, 2019 (the “October 2019
Update: Subject Matter Eligibility,” available at https://www.uspto.gov/sites/
default/files/documents/peg_oct_2019_update.pdf) clarifying the
2019 Revised Guidance in response to public comments.
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activity, e.g., fundamental economic principles or practices, commercial or
legal interactions; and (3) mental processes. 2019 Revised Guidance,
84 Fed. Reg. at 54. If so, we next consider whether the claim includes
additional elements, beyond the judicial exception, that “integrate the
[judicial] exception into a practical application,” i.e., that apply, rely on, or
use the judicial exception in a manner that imposes a meaningful limit on the
judicial exception, such that the claim is more than a drafting effort designed
to monopolize the judicial exception (“Step 2A, Prong Two”). Id. at 54–55.
Only if the claim (1) recites a judicial exception and (2) does not integrate
that exception into a practical application do we conclude that the claim is
“directed to” the judicial exception, e.g., an abstract idea. Id.
We are not persuaded here that the Examiner erred in determining that
claim 1 is directed to an abstract idea. The Federal Circuit has explained
that “the ‘directed to’ inquiry applies a stage-one filter to claims, considered
in light of the specification, based on whether ‘their character as a whole is
directed to excluded subject matter.’” Enfish, LLC v. Microsoft Corp.,
822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. v.
Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). It asks whether
the focus of the claims is on a specific improvement in relevant technology
or on a process that itself qualifies as an “abstract idea” for which computers
are invoked merely as a tool. See id. at 1335–36. Here, it is clear from the
Specification, including the claim language, that claim 1 focuses on an
abstract idea, and not on any improvement to technology and/or a technical
field.
The Specification is titled “Nutrition Management and Meal Planning
Program,” and states that the invention relates specifically to “the creation of
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nutritional reports, nutritional options, and promotional information based
upon purchases at a local store or online store made while using a loyalty
card” (Spec. ¶ 4). The Specification describes, in the Background section,
that loyalty cards are one way to offer incentives for consumers to return to a
particular company, e.g., a store may reward its consumers with financial
bonuses or discounts which may be applied to purchases (id. ¶ 5). In
addition to the enhanced consumer loyalty that may be attained, the
company also obtains information on consumers’ purchasing behavior (id.);
yet, according to the Specification, although this information is “useful [to]
the company, there has not been a way to provide the consumer with useful
information based upon [the] information that has been obtained” — a
problem that the Specification describes is “perhaps most evident in grocery
stores, where nutrition information is freely available for individual
products, but is not aggregated in a way that is useful to a consumer” (id.
¶ 6).
The claimed invention is ostensibly intended to address this issue by
storing, in a database, nutritional information related to products available
for purchase using a loyalty profile, and associating the nutritional
information with products purchased using the loyalty profile; identifying
deficiencies based on nutritional intake guidelines; and proposing products
that compensate for these deficiencies (id. ¶¶ 7–9). Consistent with this
disclosure, claim 1 recites a method for nutritional planning comprising:
(1) “creating a loyalty profile associated with a consumer” (step (a));
(2) receiving notification of the products purchased by the consumer over a
period of time and updating the loyalty profile to reflect the aggregated
quantity of a nutritional element present in the purchased products, i.e.,
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receiving a notification of products purchased by the
consumer;
updating the loyalty profile with nutritional information
relating to the products purchased, wherein the nutritional
information comprises a quantity of a nutritional element present
in each of the products purchased; [and]
aggregating the quantity of the nutritional element present
in the products purchased using the loyalty profile over a
historical time range
(steps (b), (c), and (d)); (3) comparing the quantity of the nutritional element
with standardized intake guidelines to identify a deficiency in the amount of
the nutritional element, and creating a meal plan that compensates for the
deficiency, i.e.,
comparing the quantity of the nutritional element present
in the products purchased using the loyalty profile aggregated
over the historical time range with standardized intake
guidelines;
identifying a first deficiency for the quantity of the
nutritional element present in the products purchased using the
loyalty profile based on the step of comparing, wherein the first
deficiency is an inadequate amount of the nutritional element;
[and]
creating a meal plan which compensates for the first
deficiency
(steps (e), (f), and (g)); (4) identifying a deficiency in the amount of another
nutritional element present in the meal plan and matching the meal plan with
recipes that compensate for this second deficiency, i.e.,
identifying a second deficiency for a quantity of another
nutritional element present in the meal plan, wherein the second
deficiency is an inadequate amount of the other nutritional
element;
matching the meal plan with one or more recipes
containing ingredients that compensate for the second
deficiency; [and]
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verifying the matching of the meal plan with the one or
more recipes does not exceed the standardized intake guidelines
(steps (h), (i), and (j)); and (5) transmitting the meal plan and recipes to the
consumer, i.e., “transmitting the meal plan matched with the one or more
recipes that compensate for the second deficiency for display on a consumer
computer via a network connection” (step (k)). These limitations, when
given their broadest reasonable interpretation, recite identifying a nutritional
element deficiency in a customer’s product purchases and in a meal plan
created to compensate for the deficiency in the purchased products; and
providing the meal plan, together with one or more recipes containing
ingredients that compensate for the deficiency in the meal plan.
Claim 1 recites that the method is performed by “an informational
computer comprising one or more processors”; yet, the underlying processes
recited in the claim are all acts that, as the Examiner observed (see Final
Act. 3), could be performed mentally or manually, using pen and paper,
without the use of a computer or any other machine. A person, for example,
could receive notice of products purchased by a consumer, via written or
oral communication, and could, mentally, or using pen and paper, compare
the quantity of a nutritional element in those products (aggregated over a
period of time) with standardized intake guidelines to identify any
deficiency in the amount of the nutritional element. A person mentally, or
using pen and paper, also could create a meal plan that compensates for any
such deficiency; identify another nutritional element deficiency in the
created meal plan; and match the meal plan with recipes that contain
ingredients that compensate for this second deficiency. Such a person
further could communicate the meal plan and recipes to the consumer, again
via either written or oral communication. Simply put, claim 1 recites a
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mental process, i.e., a concept performed in the human mind, including an
evaluation or judgment, and, therefore, an abstract idea. See 2019 Revised
Guidance, 84 Fed. Reg. at 52; CyberSource Corp. v. Retail Decisions, Inc.,
654 F.3d 1366, 1373 (Fed. Cir. 2011) (holding that method steps that can be
performed in the human mind, or by a human using a pen and paper, are
unpatentable mental processes). See also Versata Dev. Grp., Inc. v. SAP
Am., Inc., 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.”).
Appellant argues that claim 1 is not within the mental process
category and does not recite an abstract idea, because “practically speaking,
the aspects of loyalty card and loyalty profile administration cannot be
performed mentally” (Reply Br. 5). Appellant maintains that this is so, “due
to the shear amount of information involved with tracking the products
purchased, aggregating the quantity of the nutritional element in the products
purchased using the loyalty card or loyalty profile over a historical time
range, and identifying the first deficiency in the products purchased using
the loyalty profile or loyalty card” (id. at 7–8 (citing the 2019 Revised
Guidance, 84 Fed. Reg. at 52)). Yet, there is nothing in claim 1 that
presupposes, or otherwise requires, any particular volume of information.
And Appellant cannot reasonably maintain that there literally is no amount
of information for which the claimed method could be practically performed,
either mentally or using pen and paper.
Having concluded that claim 1 recites a judicial exception, i.e., an
abstract idea (Step 2A, Prong One), we next consider whether the claim
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recites additional elements that integrate the judicial exception into a
practical application (Step 2A, Prong Two).
The only additional elements recited in claim 1, beyond the abstract
idea, are an “informational computer comprising one or more processors”; a
“non-transitory computer readable medium”; a “consumer computer”; and a
“network connection,” i.e., generic computer components (see, e.g., Spec.
¶¶ 68–70). We find no indication in the Specification, nor does Appellant
direct us to any indication, that the operations recited in claim 1 invoke any
assertedly inventive programming, require any specialized computer
hardware or other inventive computer components, i.e., a particular machine,
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.”).
We also find no indication in the Specification that the claimed
invention effects a transformation or reduction of a particular article to a
different state or thing. Nor do we find anything of record, short of attorney
argument, that attributes an improvement in technology and/or a technical
field, to the claimed invention or that otherwise indicates that the claimed
invention integrates the abstract idea into a “practical application,” as that
phrase is used in the Revised Guidance.4

4 The 2019 Revised Guidance references MPEP § 2106.05(a)–(c) and (e) in
describing the considerations that are indicative that an additional element or
combination of elements integrates the judicial exception, e.g., the abstract
idea, into a practical application. 2019 Revised Guidance, 84 Fed. Reg.
at 55. If the recited judicial exception is integrated into a practical
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Referencing the Background section of the Specification, Appellant
notes that although loyalty card programs obtain information about the
purchases of a customer, a problem with these programs is that “there has
not been a way to provide the nutritional information of what [the
customers] have purchased in a way that is useful” (Appeal Br. 13–14).
Appellant asserts that, “[a]s a solution, Appellant’s claims combine the use
of a loyalty profile with the nutritional information of products purchased in
order to provide meal plans that compensate not only for one deficiency, but
two deficiencies, through two nested levels of deficiency identification” (id.
at 14).
Appellant argues that this two nested levels of deficiency
identification amounts to an improvement in another technology, i.e.,
nutrition planning (id. at 30–33; see also Reply Br. 9–11). But, we are not
persuaded that this is a technological improvement, as opposed to an
improvement to the abstract idea of “nutrition management and meal
planning,” where, as here, there is no indication in the Specification that the
operations recited in claim 1 invoke any assertedly inventive programming,
require any specialized computer hardware or other inventive computer
components, or that the claimed invention is implemented using other than
generic computer components operating in their normal, routine, and
ordinary capacity, which is not enough for patent eligibility.
The Specification describes, as mentioned above, that in addition to
providing incentives for consumers to return to a particular company, loyalty
card programs allow the company to obtain information about consumers’

application, as determined under one or more of these MPEP sections, the
claim is not “directed to” the judicial exception.
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purchasing behavior. Yet, according to the Specification, companies have
been unable to use this information to provide further information that may
be useful to their customers — a situation that the Specification describes is
particularly evident in grocery stores where nutrition information for
individual products is readily available. It, thus, clearly appears from the
Specification that the focus of the claimed invention is on addressing a
business objective (i.e., further enhancing consumer loyalty by using
collected information regarding consumers’ purchasing behavior to provide
targeted information, e.g., proposed products and meal plans, which
compensate for nutritional element deficiencies identified in the consumer’s
product purchases), and not on any claimed means for accomplishing that
goal that improves technology.
Appellant attempts to draw an analogy between claim 1 and the
patent-eligible claim in McRO, Inc. v. Bandai Namco Games America, Inc.,
837 F.3d 1299 (Fed. Cir. 2016) (Appeal Br. 31–33). Appellant, thus, argues
that “[s]imilar to McRO, Appellant’s claims are patent eligible because the
two levels of deficiency identification presented in Appellant’s claims 1, 8,
and 13 determine a meal plan based on a particular set of rules that improve
the technical field of nutritional planning” (id. at 32).
The claim in McRO was directed to a method for automatically
animating lip synchronization and facial expression of three-dimensional
(“3-D”) characters. McRO, 837 F.3d at 1307–08. There, the Federal Circuit
concluded that the claim, when considered as a whole, was directed to a
“technological improvement over the existing, manual 3-D animation
techniques” through the use of “limited rules in a process specifically
designed to achieve an improved technological result in conventional
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industry practice.” Id. at 1316. More particularly, the Federal Circuit found
that the claimed rules allow “computers to produce ‘accurate and realistic lip
synchronization and facial expressions in animated characters’ that
previously could only be produced by human animators”; and that the rules
are “limiting in that they define morph weight sets as a function of the
timing of phoneme sub-sequences.” Id. at 1313 (citations omitted).
Appellant has not identified any analogous improvement here that is
attributable to the claimed invention. Although presenting a meal plan to a
consumer (which compensates for nutritional element deficiencies in the
consumer’s purchased products) may improve a business process, i.e., a
loyalty program, by enhancing consumer loyalty, it does not achieve an
improved technological result.
We also are not persuaded of Examiner error to the extent that
Appellant argues that claim 1 is patent eligible because “the two levels of
nested deficiency identification do not preempt all nutritional management
and meal planning techniques” (Appeal Br. 31–33). Although the Supreme
Court has described “the concern that drives [the exclusion of abstract ideas
from patent-eligible subject matter] as one of pre-emption,” Alice Corp.,
573 U.S. at 216, characterizing preemption as a driving concern for patent
eligibility is not the same as characterizing preemption as the sole test for
patent eligibility. “The Supreme Court has made clear that the principle of
preemption is the basis for the judicial exceptions to patentability” and “[f]or
this reason, questions on preemption are inherent in and resolved by the
§ 101 analysis.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1379 (Fed. Cir. 2015) (citing Alice Corp., 573 U.S. at 216). “[P]reemption
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may signal patent ineligible subject matter, [but] the absence of complete
preemption does not demonstrate patent eligibility.” Id.
We conclude, for the reasons outlined above, that claim 1 recites a
mental process, i.e., an abstract idea, and that the additional elements recited
in the claim are no more than generic components used as tools to perform
the recited abstract idea. As such, they do not integrate the abstract idea into
a practical application. See Alice Corp., 573 U.S. at 223–24 (“[W]holly
generic computer implementation is not generally the sort of ‘additional
featur[e]’ that provides any ‘practical assurance that the process is more than
a drafting effort designed to monopolize the [abstract idea] itself.’” (quoting
Mayo, 566 U.S. at 77)). Accordingly, we agree with the Examiner that
claim 1 is directed to an abstract idea.
Step Two of the Mayo/Alice Framework (2019 Revised Guidance, Step 2B)
Having determined under step one of the Mayo/Alice framework that
claim 1 is directed to an abstract idea, we next consider under Step 2B of the
2019 Revised Guidance, the second step of the Mayo/Alice framework,
whether claim 1 includes additional elements or a combination of elements
that provides an “inventive concept,” i.e., whether an additional element or
combination of elements adds specific limitations beyond the judicial
exception that are not “well-understood, routine, conventional activity” in
the field (which is indicative that an inventive concept is present) or simply
appends well-understood, routine, conventional activities previously known
to the industry to the judicial exception. 2019 Revised Guidance,
84 Fed. Reg. at 56.
Appellant argues that “[t]he inventive concept in the claims which
renders the claims patent eligible is the specific application of the alleged
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abstract idea of ‘nutritional management and meal planning’ via the two
nested levels of deficiency identification” (Appeal Br. 30). Appellant
maintains that “the two nested levels of deficiency identification amount to
specific features ‘other than what is well-understood, routine and
conventional in the field” (id.). And Appellant charges that the § 101
rejection cannot be sustained because the Examiner has provided no
evidence that “the nested levels of deficiency identification, alone and in
combination with the other features of Appellant’s claims,” are “well-
understood, routine, and conventional in accordance with the evidentiary
standard in Berkheimer” (id. at 24–29).
There is no dispute that an examiner must show — with supporting
facts — that certain claim elements are well-understood, routine, and
conventional when the examiner has made such a finding. See Berkheimer
v. HP Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018) (holding that the 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). Indeed, shortly after the Federal Circuit issued its decision
in Berkheimer, the USPTO issued an April 19, 2018 Memorandum to the
Patent Examining Corps entitled, “Changes in Examination Procedure
Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility
Decision (Berkheimer v. HP, Inc.)” (the “Berkheimer Memo”),5 in which the
Office instructed the Patent Examining Corps that “[i]n a step 2B analysis
[i.e., an analysis under step two of the Mayo/Alice framework], an additional
element (or combination of elements) is not well-understood, routine or

5 Available at https://www.uspto.gov/sites/default/files/documents/memo-
berkheimer-20180419.PDF.
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conventional unless the examiner finds, and expressly supports a rejection in
writing with, one or more of” (1) a “citation to an express statement in the
specification or to a statement made by an applicant during 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)”; and (4) a “statement that the examiner
is taking official notice of the well-understood, routine, conventional nature
of the additional element(s).” Id. at 3–4.
Appellant contends here that the Examiner must provide evidentiary
support for the conventionality or routineness of the nested levels of
deficiency identification, as recited in claim 1 (Appeal Br. 24–29). But, that
argument fails at least because steps (f), (g), (h), and (i), as recited in claim 1
(the features that Appellant asserts “recite two nested levels of deficiency
identification” and “transform the claim[ ] into an inventive concept that is
patent eligible” (id. at 16–17)), are part of the abstract idea itself; they are
not additional elements to be considered when determining whether claim 1
includes additional elements or a combination of elements that is sufficient
to amount to significantly more than the judicial exception.
It could not be clearer from Alice, that under step two of the
Mayo/Alice framework, the elements of each claim are considered both
individually and “as an ordered combination” to determine whether the
additional elements, i.e., the elements other than the abstract idea itself,
“transform the nature of the claim” into a patent-eligible application.
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Alice Corp., 573 U.S. at 217; see Mayo, 566 U.S. at 72–73 (requiring that “a
process that focuses upon the use of a natural law also contain other
elements or a combination of elements, sometimes referred to as an
‘inventive concept,’ sufficient to ensure that the patent in practice amounts
to significantly more than a patent upon the natural law itself” (emphasis
added) (internal citation omitted)). In other words, the inventive concept
under step two of the Mayo/Alice framework cannot be the abstract idea
itself:
It is clear from Mayo that the “inventive concept” cannot be the
abstract idea itself, and Berkheimer . . . leave[s] untouched the
numerous cases from this court which have held claims ineligible
because the only alleged “inventive concept” is the abstract idea.
Berkheimer v. HP Inc., 890 F.3d 1369, 1374 (Fed. Cir. 2018) (Moore, J.,
concurring); see also BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1281,
1290 (Fed. Cir. 2018) (“It has been clear since Alice that a claimed
invention’s use of the ineligible concept to which it is directed cannot supply
the inventive concept that renders the invention ‘significantly more’ than
that ineligible concept.”).
The Examiner determined here, and we agree, that the only claim
elements beyond the abstract idea are the “informational computer
comprising one or more processors”; “non-transitory computer readable
medium”; “consumer computer”; and “network connection,” i.e., generic
computer components used to perform generic computer functions (Final
Act. 5–6) — a determination amply supported by, and fully consistent with
the Specification (see, e.g., Spec. ¶¶ 68–70).6

6 The Berkheimer Memo, as described above, expressly directs that an
examiner may support the position that an additional element (or
Appeal 2019-002785
Application 11/749,672

19
Finally, Appellant misapprehends the controlling precedent to the
extent Appellant maintains that claim 1 is patent eligible because “the two
nested levels of deficiency identification . . . are not in the prior art” (Appeal
Br. 19; see also id. at 29–30 and Reply Br. 11–14). Neither a finding of
novelty nor a non-obviousness determination automatically leads to the
conclusion that the claimed subject matter is patent-eligible. Although the
second step in the Mayo/Alice framework is termed a search for an
“inventive concept,” the analysis is not an evaluation of novelty or non-
obviousness, but rather, a search for “an element or combination of elements
that is ‘sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [ineligible concept] itself.’”
Alice Corp., 573 U.S. at 217–18 (citation omitted) (brackets in original).
“Groundbreaking, innovative, or even brilliant discovery does not by itself
satisfy the § 101 inquiry.” Ass’n for Molecular Pathology v. Myriad
Genetics, Inc., 569 U.S. 576, 591 (2013). A novel and non-obvious claim
directed to a purely abstract idea is, nonetheless, patent ineligible. See
Mayo, 566 U.S. at 90; see also Diamond v. Diehr, 450 U.S. 175, 188–89
(1981) (“The ‘novelty’ of any element or steps in a process, or even of the
process itself, is of no relevance in determining whether the subject matter of
a claim falls within the § 101 categories of possibly patentable subject
matter.”).

combination of elements) is well-understood, routine or conventional with
“[a] citation to an express statement in the specification . . . that
demonstrates the well-understood, routine, conventional nature of the
additional element(s)” (id. at 3).
Appeal 2019-002785
Application 11/749,672

20
We are not persuaded, on the present record, that the Examiner erred
in rejecting independent claim 1 under 35 U.S.C. § 101. Therefore, we
sustain the Examiner’s rejection of independent claim 1, and claims 2–4, 6–
10, 13, 15–17, and 19–28, which fall with claim 1.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–4, 6–10,
13, 15–17,
19–28
101 Eligibility 1–4, 6–10,
13, 15–17,
19–28

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