AKTIEBOLAGET SKF

Patent Trials and Appeals Board

Oct 29, 2020

2020004040 (P.T.A.B. Oct. 29, 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.
14/693,752 04/22/2015 Alexander Pinkerton 2015P00126US 6903
81598 7590 10/29/2020
SKF GmbH
IA&IP
Gunnar-Wester-Strasse 12
Schweinfurt, 97421
GERMANY
EXAMINER
SCHEUNEMANN, RICHARD N
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
10/29/2020 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):
ipr@skf.com
mark@jtek-law.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ALEXANDER PINKERTON

_____________

Appeal 2020-004040
Application 14/693,752
Technology Center 3600
____________

Before ST. JOHN COURTENAY III, JAMES R. HUGHES, and
JAMES W. DEJMEK, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 3–5, 7, 8, 10, and 13–23. We have jurisdiction over the pending
claims 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) (2019). According to Appellant, the real party in interest
is Aktiebolaget SKF. See Appeal Br. 3.

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STATEMENT OF THE CASE2
Introduction
Appellant’s claimed invention relates generally to “[a] work package
management system and method for servicing equipment assets for a
plurality of clients.” Abstract.

Evidence
The prior art relied upon by the Examiner as evidence is:
Name Reference Date
Tanaka et al.
(“Tanaka”)
US 2002/0123934 A1 Sept. 5, 2002
Compton et al.
(“Compton”)
US 2011/0106565 A1 May 5, 2011
Nixon et al.
(“Nixon”)
US 2014/0282257 A1 Sept. 18, 2014

Rejections
Rejection Claims
Rejected
35 U.S.C. § References/Basis
A 1, 3–5, 7,
8, 10,
13–23
101 Eligibility
B 1, 4, 7, 8,
13-23
103 Nixon, Compton
C 3, 5, 10 103 Nixon, Compton, Tanaka

2 We herein refer to the Final Office Action, mailed September 9, 2019
(“Final Act.”); the Appeal Brief, filed January 21, 2020 (“Appeal Br.”); the
Examiner’s Answer, mailed March 11, 2020 (“Ans.”); and the Reply Brief,
filed May 8, 2020.
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Rejection A under 35 U.S.C. § 101
USPTO § 101 Guidance
The U.S. Patent and Trademark Office (USPTO) has published
revised guidance on the application of 35 U.S.C. § 101. See USPTO
January 7, 2019 Memorandum, 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50 (“January 2019 Memorandum”).3
Under that guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods
of organizing human activity such as a fundamental
economic practice, or mental processes) (see January 2019
Memorandum Step 2A – Prong One); and

(2) any additional elements that integrate the judicial exception
into a practical application (see MPEP § 2106.05(a)–(c),

3 The Office issued a further memorandum on October 17, 2019 (the
“October 2019 Memorandum”) clarifying guidance of the January 2019
Memorandum in response to received public comments. See https://
www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.pdf.
Moreover, “[a]ll USPTO personnel are, as a matter of internal agency
management, expected to follow the guidance.” January 2019 Memorandum
at 51; see also October 2019 Memorandum at 1. The Office’s current
eligibility guidance is found in the Ninth Edition, Revision 10.2019 (revised
June 2020) of the Manual of Patent Examination Procedure (MPEP), and
particularly Sections 2103 through 2106.07(c). The MPEP now incorporates
the January 2019 Memorandum, the October 2019 Memorandum, and the
April 2018 Berkheimer Memorandum. See
https://www.uspto.gov/patent/laws-and-regulations/examination-
policy/subject-matter-eligibility

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(e)–(h)) (see January 2019 Memorandum Step 2A – Prong
Two).4
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.
See January 2019 Memorandum Step 2B.
Because there is no single definition of an “abstract idea” under Alice
Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014) Step 1, the January 2019
Memorandum synthesizes, for purposes of clarity, predictability, and
consistency, key concepts identified by the courts as abstract ideas to explain
that the “abstract idea” exception includes the following three groupings:
1. Mathematical concepts—mathematical relationships,
mathematical formulas or equations, mathematical
calculations;
2. Mental processes—concepts performed in the human mind
(including an observation, evaluation, judgment, opinion);
and
3. Certain methods of organizing human activity—fundamental
economic principles or practices (including hedging,

4 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See 2019 October Memorandum, Section III(A)(2),
page 10, et seq.
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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).
See January 2019 Memorandum, 84 Fed. Reg. at 52.
According to the January 2019 Memorandum, “[c]laims that do not
recite [subject] matter that falls within these enumerated groupings of
abstract ideas should not be treated as reciting abstract ideas,” except in rare
circumstances. Even if the claims recite any one of these three groupings of
abstract ideas, these claims are still not “directed to” a judicial exception
(abstract idea), and thus are patent eligible, if “the claim as a whole
integrates the recited judicial exception into a practical application of that
exception.” See January 2019 Memorandum, 84 Fed. Reg. at 53.
For example, limitations that are indicative of integration into a
practical application include:
1. Improvements to the functioning of a computer, or to any
other technology or technical field — see MPEP
§ 2106.05(a);
2. Applying the judicial exception with, or by use of, a
particular machine — see MPEP § 2106.05(b);
3. Effecting a transformation or reduction of a particular article
to a different state or thing — see MPEP § 2106.05(c); and
4. Applying or using the judicial exception in some other
meaningful way beyond generally linking the use of the
judicial exception to a particular technological environment,
such that the claim as a whole is more than a drafting effort
designed to monopolize the exception — see MPEP
§ 2106.05(e).

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In contrast, limitations that are not indicative of integration into a
practical application include:
1. Adding the words “apply it” (or an equivalent) with the
judicial exception, or merely including instructions to
implement an abstract idea on a computer, or merely uses a
computer as a tool to perform an abstract idea — see MPEP
§ 2106.05(f);
2. Adding insignificant extra-solution activity to the judicial
exception — see MPEP § 2106.05(g); and
3. Generally linking the use of the judicial exception to a
particular technological environment or field of use — see
MPEP § 2106.05(h).
See 2019 January Memorandum, 84 Fed. Reg. at 54–55 (“Prong Two”).

ANALYSIS
January 2019 Memorandum, Step 2A, Prong One
The Judicial Exception
We reproduce infra independent claim 1 in Table One. We have
considered all of Appellant’s arguments and any evidence presented. We
highlight and address specific findings and arguments for emphasis in our
analysis below.5
The Examiner concludes “the present claims recite steps for
determining when to communicate work package information to users” such
as “automatically receiving at least a portion of a first work package in
response to the remote server automatically pushing the portion of the first

5 Throughout this opinion, we give the claim limitations the broadest
reasonable interpretation (BRI) consistent with the Specification. See In re
Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).

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work package to the device” (claim 1), which the Examiner analogizes to
“[c]ertain methods of organizing human activity . . . including managing
personal behavior or relationships or interactions between people.” Final
Act. 6. The Examiner further concludes that limitations 4-6, 8, and 9
(corresponding to limitations (l), (m), (r), (t), and (u) in Table One, infra,
“could be implemented mentally or on paper.” Id.
Under the January 2019 Memorandum, we begin our analysis by first
considering whether the claims recite any judicial exceptions, including
certain groupings of abstract ideas, in particular: (a) mathematical concepts,
(b) certain methods of organizing human activity, and (c) mental processes.

Independent Claim 1
For ease of reference in connection with our analysis of Step 2A,
Prongs One and Two, in Table One below, we identify in italics the specific
claim limitations that we conclude recite an abstract idea. We also identify
in bold the additional claim elements that we find are generic computer
components:

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TABLE ONE

Independent Claim 1 January 2019 Memorandum
[a] A system comprising: 6

A system is a generic computer
component. See January 2019
Memorandum, 84 Fed. Reg. at 52
n.14.

[b] a data device comprising: A data device comprises generic
computer components, including a
location sensor, processor, and
memory, as claimed. See January
2019 Memorandum, 84 Fed. Reg. at
52 n.14.
[c] a location sensor
configured to determine
current geographic location
coordinates of the device;
A location sensor configured to
determine current geographic
location coordinates of the device is
a generic computer component (e.g.,
a GPS receiver is found in virtually
every cell phone). See January 2019
Memorandum, 84 Fed. Reg. at 52
n.14.

[d] a processor; and A processor is a generic computer
component. See January 2019
Memorandum, 84 Fed. Reg. at 52
n.14.

6 A system (i.e., apparatus) falls under the statutory subject matter class of a
machine. See 35 U.S.C. § 101 (“Whoever invents or discovers any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof, may obtain a patent therefor, subject to the
conditions and requirements of this title.”).

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Independent Claim 1 January 2019 Memorandum
[e] a memory system
comprising one or more
non-transitory computer
readable media storing
instructions thereon that,
when executed by the
processor, cause the device to
perform operations, the
operations comprising:
A memory system comprising one
or more non-transitory computer
readable media is a generic
computer component. See January
2019 Memorandum, 84 Fed. Reg. at
52 n.14.

[f] receiving, as user input to
the device, a security
credential from a user
associated with the device;
Receiving a security credential from
a user associated with the device is
insignificant extra-solution activity
(data gathering). See January 2019
Memorandum, 84 Fed. Reg. at 55
n.31; see also MPEP § 2106.05(g).

[g] transmitting, to a remote
server, the security credential
to allow the remote server to
identify and
verify the user associated with the
device is authorized to access
a central database associated
with the remote server,
wherein the central database
contains a plurality of work
packages, each work package
comprising:
Transmitting the security credential
is insignificant extra-solution activity
(i.e., sending data). See January
2019 Memorandum, 84 Fed. Reg. at
55 n.31; see also MPEP
§ 2106.05(g).

Abstract Idea: verifying that the user
associated with the device is
authorized to access a central
database associated with the remote
server can be performed
alternatively by a person as a mental
process. See January 2019
Memorandum, 84 Fed. Reg. at 52.

[h] a client identifier that
identifies a client;
The client identifier is data.
[i] a client site identifier that
identifies a client site;
The client site identifier is data.
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Independent Claim 1 January 2019 Memorandum
[j] a geographic location
associated with the client site
or at least one client
equipment asset at the client
site; and
A geographic location is data.
[k] one or more work routes
comprising one or more
maintenance routines to be
performed on at least one
client equipment asset;
One or more work routes comprising
one or more maintenance routines to
be performed on at least one client
equipment asset is/are data.
[l] transmitting, periodically
to the remote server, the
current geographic location
coordinates of the device
determined by the location
sensor;
Transmitting the current geographic
location coordinates of the device is
insignificant extra-solution activity
(i.e., sending data). See January
2019 Memorandum, 84 Fed. Reg. at
55 n.31; see also MPEP
§ 2106.05(g).
[m] automatically receiving
at least a portion of a first
work package in response to
the remote server
automatically pushing the
portion of the first work
package to the device,
wherein the remote server
automatically pushing the
portion of the first work
package comprises:
Receiving at least a portion of a first
work package is insignificant extra-
solution activity (data gathering).
See January 2019 Memorandum, 84
Fed. Reg. at 55 n.31; see also MPEP
§ 2106.05(g).

[n] determining that the
device approaches or enters a
set or range of geographic
coordinates specified for the
first client site or the at least
one client equipment asset;
Abstract Idea: Determining that the
device approaches or enters a set or
range of geographic coordinates
specified for the first client site or
the at least one client equipment
asset can be performed alternatively
by a person as a mental process. See
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Independent Claim 1 January 2019 Memorandum
January 2019 Memorandum, 84 Fed.
Reg. at 52.
[o] identifying the user based
on the security credential;
Abstract Idea: identifying the user
based on the security credential is a
method of organizing human activity
that can be performed alternatively
by a person as a mental process. See
January 2019 Memorandum, 84 Fed.
Reg. at 52.
[p] identifying type of work
that the user is qualified to
perform based on the
identifying the user; and
Abstract Idea: identifying type of
work that the user is qualified to
perform based on the identifying the
user is a method of organizing
human activity that can be performed
alternatively by a person as a mental
process. See January 2019
Memorandum, 84 Fed. Reg. at 52.
[q] determining that the user
is qualified to perform work
associated with the portion of
the first work package based
on the type of work that the
user is qualified to perform;
and
Abstract Idea: determining that the
user is qualified to perform work
associated with the portion of the
first work package based on the type
of work that the user is qualified to
perform is a method of organizing
human activity that can be performed
alternatively by a person as a mental
process. See January 2019
Memorandum, 84 Fed. Reg. at 52.
[r] displaying, on an interface
of the device, information
describing the one or more
maintenance routines
included in the first work
package to be performed on
the at least one client
equipment asset at the first
client site to effectuate
performance of the one or
Displaying, on an interface of the
device, information describing the
one or more maintenance routines
included in the first work package
is insignificant post-solution activity
See January 2019 Memorandum, 84
Fed. Reg. at 55 n.31; see also MPEP
§ 2106.05(g).
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Independent Claim 1 January 2019 Memorandum
more maintenance routines
by the user based on the user
being located within the
predetermined radius of the
first client site and wherein
the user is qualified to
perform the maintenance
routine;
[s] upon completion of the
first work package, receiving
work package results from
the user via user input;
Receiving work package results from
the user via user input is
insignificant extra-solution activity
(data gathering). See January 2019
Memorandum, 84 Fed. Reg. at 55
n.31; see also MPEP § 2106.05(g).

[t] storing the work package
results in the central database;
and
storing the work package results in
the central database is insignificant
extra-solution activity (data
gathering). See January 2019
Memorandum, 84 Fed. Reg. at 55
n.31; see also MPEP § 2106.05(g).

[u] modifying a maintenance
record stored within the
central database based on the
receiving the work package
results from the user upon
completion of the first work
package and the storing the
work package results.
Abstract Idea: modifying a
maintenance record stored within
the central database based on the
receiving the work package results
from the user is a method of
organizing human activity that can
be performed alternatively by a
person as a mental process. See
January 2019 Memorandum, 84 Fed.
Reg. at 52.

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Abstract Idea
As discussed above, the Examiner concludes that claim 1 recites
certain methods of organizing human activity that are ineligible abstract
ideas, including managing personal behavior or relationships or interactions
between people that “could be implemented mentally or on paper.” Final
Act. 6.
We agree, as detailed above in the right column of Table One.
Although independent claim 1 requires the recited functions to be
performed by a system comprising a data device further comprising a
location sensor, a processor, and a memory, this generic computer
implementation of a mental process is insufficient to take the invention out
of the realm of abstract ideas. “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.” CyberSource Corp.
v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011). If a method
can be performed by human thought alone, or by a human using pen and
paper, it is merely an abstract idea and is not patent eligible under § 101.
See id. at 1372–73; see also Versata Dev. Grp. 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.”);
Alice, 573 U.S. at 223 (“Stating an abstract idea while adding the words
‘apply it with a computer’” is insufficient to confer eligibility.).
Appellant urges in the Reply Brief that “it simply is not
possible or feasible to maintain a central database of tens of thousands or
millions of maintenance records in the manner claimed, or that all of these
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maintenance records could be practically modified by an individual with pen
and paper.” Reply Br. 3.
However, Appellant’s arguments that the maintaining or modifying
cannot be practically performed in the mind are not persuasive, because
independent claims 1 and 8 are not limited to a large data set, such as the
“tens of thousands or millions of maintenance records” as argued by
Appellant. Reply Br. 3. Because Appellant’s argument is not
commensurate with the broader scope of the claim, Appellant has not
persuaded us of error regarding the Examiner’s conclusion that independent
claims 1 and 8 recite an abstract idea.
Moreover, “[u]sing a computer to accelerate an ineligible mental
process does not make that process patent-eligible.” Bancorp Servs., L.L.C.
v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1279 (Fed. Cir.
2012); see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363
(Fed. Cir. 2015) (“[R]elying on a computer to perform routine tasks more
quickly or more accurately is insufficient to render a claim patent eligible.”).
Because claim 1 considered as a whole recites an abstract idea, as
identified in Table One, supra, we conclude all claims 1, 3–5, 7, 8, 10, and
13–23 recite an abstract idea, as identified above, under Step 2A, Prong One.
Therefore, we proceed to Step 2A, Prong Two.

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January 2019 Memorandum, Step 2A, Prong Two
Integration of the Judicial Exception into a Practical Application

Additional Limitations
Pursuant to the January 2019 Memorandum, we consider whether
there are additional elements set forth in the claims that integrate the judicial
exception into a practical application. See January 2019 Memorandum, 84
Fed. Reg. at 54–55.
As emphasized in bold in Table One, supra, we note the additional
generic computer components recited in claim 1, i.e., a system comprising a
data device further comprising a location sensor, a processor, and a memory.
We further note the supporting exemplary, non-limiting descriptions of
generic computer components found in the Specification, such as the
following: “The computer system 401A may be an individual computer
system 401A or an arrangement of distributed computer systems.” (Spec.
¶ 35). “A processor may include a microprocessor, microcontroller,
processor module or subsystem, programmable integrated circuit,
programmable gate array, or another control or computing device.” Spec.
¶ 36. “The storage media 406 may be implemented as one or more
computer-readable or machine-readable storage media.” Spec. ¶ 37. See
also Spec. ¶ 39:
It should be appreciated that computing system 400 is merely one
example of a computing system, and that computing system 400
may have more or fewer components than shown, may combine
additional components not depicted in the example embodiment
of Figure 4, and/or computing system 400 may have a different
configuration or arrangement of the components depicted in
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Figure 4.
Spec. ¶ 39 (emphasis added).
See also Spec. ¶ 40:
Further, the steps in the processing methods described herein
may be implemented by running one or more functional modules
in information processing apparatus such as general purpose
processors or application specific chips, such as ASICs, FPGAs,
PLDs, or other appropriate devices. These modules,
combinations of these modules, and/or their combination with
general hardware are included within the scope of the present
disclosure.
Spec. ¶ 40 (emphasis added).
We emphasize that McRO, Inc. v. Bandai Namco Games America
Inc., 837 F.3d 1299 (Fed. Cir. 2016), guides: “The abstract idea exception
prevents patenting a result where ‘it matters not by what process or
machinery the result is accomplished.’” 837 F.3d at 1312 (quoting O’Reilly
v. Morse, 56 U.S. 62, 113 (1854)) (emphasis added). See supra Table One.
Thus, we conclude Appellant’s claimed invention merely implements
the abstract idea using instructions executed on generic computer
components, as depicted in Table One (above), and as supported in
Appellant’s Specification, for example, at paragraphs 36–40. Therefore, we
conclude Appellant’s claims merely use a generic programmed computer as
a tool to perform an abstract idea. See MPEP § 2106.05(f).
We note “the prohibition against patenting abstract ideas ‘cannot be
circumvented by attempting to limit the use of the formula to a particular
technological environment’ or [by] adding ‘insignificant postsolution
activity.’” Bilski v. Kappos, 561 U.S. 593, 610–12 (2010) (quoting
Diamond v. Diehr, 450 U.S. 175, 191–92 (1981)). See MPEP § 2106.05(h).
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As mapped in the right column of Table One, supra, we conclude that
independent claim 1 recites several additional limitations that are extra-
solution activities the courts have determined to be insufficient to transform
judicially excepted subject matter into a patent-eligible application. See
MPEP § 2106.05(g); January 2019 Memorandum, 84 Fed. Reg. at 55 n.31.
For example, see claim 1, Table One, supra, limitation (f): we
conclude that “receiving, as user input to the device, a security credential
from a user associated with the device” is insignificant extra-solution
activity (i.e., data gathering). Similarly, we conclude limitation (r) of claim
1 (“displaying, on an interface of the device, information”) is insignificant
post-solution activity (presenting information for display intended for human
perception). See January 2019 Memorandum, 84 Fed. Reg. at 55 n.31; see
also MPEP § 2106.05(g). See buySAFE v. Google, Inc, 765 F.3d 1350, 1355
(Fed. Circ. 2014) (“That a computer receives and sends the information over
a network—with no further specification—is not even arguably inventive.”).
These extra or post-solution limitations use a generic computer
component that performs a generic computer function as a tool to perform an
abstract idea. Thus, these limitations do not integrate the abstract idea into a
practical application. See Alice, 573 U.S. at 223–24. Instead, these
limitations merely perform insignificant extra-solution activities. Cf. Apple,
Inc. v. Ameranth, Inc., 842 F.3d 1229, 1242 (Fed. Cir. 2016) (agreeing with
the Board that limitations for printing and downloading generated menus are
insignificant post-solution activities).
We consider next the question of whether there are any claimed
improvements to the functioning of a computer or to any other technology or
technical field, applying the January 2019 Memorandum and the guidance
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set forth under MPEP § 2106.05(a).
The Examiner finds:
The claims do not recite an improvement to another technology
or technical field, nor do they recite an improvement to the
functioning of the computer itself. See MPEP §2106.05(a). The
claims require no more than a generic computer to implement the
abstract idea, which does not amount to significantly more than
an abstract idea. See MPEP §2106.05(f). Because the claims only
recite use of a generic computer, they do not apply the judicial
exception with a particular machine. See MPEP §2106.05(b). For
these reasons, the claims do not provide a practical application
of the abstract idea.
Final Act. 7.
Appellant does not agree with the Examiner. Appellant contends that
“[t]he additional elements of the claimed invention improve the technical
field of work package allocation and selection systems, e.g., analogously the
claims at issue in Trading Techs. Int’l Inc. v. CQG, Inc., No. 16-1616 (Fed.
Cir. 2017).” Appeal Br. 15.
In support, Appellant contends that the claim elements (b), (m), (s),
and (u) (See supra, Table One), among other claimed features:
result in the prompt, automatic pushing of work packages (thus
improving the speed of the interface). Further, these claimed
elements automatically modify, update, and maintain
maintenance records based on the work package results received
from the worker, which results in more accurate record keeping
and faster availability of the maintenance records (thus
improving speed, accuracy, and usability of the interface).
For at least these reasons, combination of additional
limitations of claimed invention, like the claims of Trading
Techs, eliminates problems of prior art graphic user interfaces
relating to speed, accuracy, and usability).
Appeal Br. 17.
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However, we note that Trading Technologies International, Inc. v.
CQG, INC., (675 F. App’x 1001 (Fed. Cir. 2017)) is non-precedential and
therefore not a binding authority on the Board. Although Appellant’s
claim 1 recites: “displaying, on an interface of the device, information
describing the one or more maintenance routines included in the first work
package to be performed on the at least one client equipment asset at the first
client site,” Appellant has not claimed an interactive graphical user interface,
per se. Moreover, we conclude such displayed maintenance information is
merely Non-Functional Descriptive Material (NFDM) intended for human
(user) perception.7
Thales
Appellant further urges that “[t]he claimed invention describes a
particular method of using raw data from a particular configuration of

7 “Claim limitations directed to the content of information and lacking a
requisite functional relationship are not entitled to patentable weight because
such information is not patent eligible subject matter under 35 U.S.C.
§ 101.” Praxair Distrib., Inc. v. Mallinckrodt Hosp. Prods. IP Ltd., 890
F.3d 1024, 1032 (Fed. Cir. 2018); Ex parte Nehls, 88 USPQ2d 1883, 1889
(BPAI 2008) (precedential) (“[T]he nature of the information being
manipulated does not lend patentability to an otherwise unpatentable
computer-implemented product or process.”). Further guidance regarding
Non-Functional Descriptive Material (NFDM) is found in the MPEP:
“[W]here the claim as a whole is directed to conveying a message or
meaning to a human reader independent of the intended computer system,
and/or the computer-readable medium merely serves as a support for
information or data, no functional relationship exists.” MPEP § 2111.05
(III.) (emphasis added).

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sensors, which is considered to improve an existing technology, as discussed
in MPEP 2106.05(a) citing Thales Visionix.” Appeal Br. 17.
The subject claims in Thales were found eligible at Alice step one, as
not being directed to an abstract idea. The claims were directed to a
“particular configuration of inertial sensors and a particular method of using
the raw data from the sensors,” which improved the accuracy of calculating
an object’s position and orientation. Thales Visionix, Inc. v. United States,
850 F.3d 1343, 1349 (Fed. Cir. 2017), cited in MPEP § 2106.05(a)(II)(vii).
Although the claims recited mathematical equations, the Federal
Circuit in Thales explained that “[t]he mathematical equations are a
consequence of the arrangement of the sensors and the unconventional
choice of reference frame in order to calculate position and orientation.” Id.
The claimed system eliminated “many ‘complications’ inherent in previous
solutions” for determining an object’s position and orientation. Id. at 1348.
Here, Appellant’s claims are distinguishable from Thales, because the
claims on appeal use a generic location sensor (e.g., a GPS receiver — see
Spec. ¶ 20), which is the conventional approach to determining a current
location of the GPS receiver (location sensor) relative to the earth.
Therefore, we do not interpret “a location sensor configured to determine
current geographic location coordinates of the device” (claim 1) as an
unconventional configuration of a GPS receiver, which improves an existing
technology.
In contrast, the subject claim(s) in Thales used inertial sensors in an
unconventional manner relative to a moving platform:
The inertial sensors disclosed in the '159 patent do not use
the conventional approach of measuring inertial changes
with respect to the earth. Id. at 7:12–23. Instead, the
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platform (e.g., vehicle) inertial sensors directly measure
the gravitational field in the platform frame. Id. at 7:12–
49, fig. 3D. The object (e.g., helmet) inertial sensors then
calculate position information relative to the frame of
the moving platform. Id. at 7:41–67, 8:1–17, fig. 3D. By
changing the reference frame, one can track the position
and orientation of the object within the moving platform
without input from a vehicle attitude reference system or
calculating orientation or position of the moving platform
itself. Id. at 8:34–41.

Thales, 850 F.3d at 1345.
We additionally conclude the subject claim in Thales is inapposite to
Appellant’s claims because the Thales court expressly stated: “We have held
claims ineligible as directed to an abstract idea when they merely collect
electronic information, display information, or embody mental processes
that could be performed by humans.” Id. at 1346–47.
As noted above in Table One, we conclude Appellant’s claims gather
or collect information (data), display information, and perform steps or
functions that could be performed alternatively as mental processes by
humans. Appellant’s claims are thus not analogous to the subject claims in
Thales that specified “a particular configuration of inertial sensors and a
particular method of using the raw data from the sensors in order to more
accurately calculate the position and orientation of an object on a moving
platform.” Thales, 850 F.3d at 1349 (emphasis added).
To the extent that Appellant has invented an improved method of
“determining that the device approaches or enters a set or range of
geographic coordinates specified for the first client site or the at least one
client equipment asset” (claim 1 function (n)), as noted above in Table One,
we conclude this recited function of “determining” is a method of organizing
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human activity that can be performed alternatively by a person as a mental
process. Claim 1 (emphasis added). See January 2019 Memorandum, 84
Fed. Reg. at 52.
But an improved abstract idea, (i.e., an improved way to track client
equipment assets) is still an abstract idea. See Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 90 (2012) (holding that a novel and
nonobvious claim directed to a purely abstract idea is, nonetheless, patent-
ineligible).
Appellant urges that “the claims could not be practically implemented
mentally or on paper, and the involvement of a computer is necessary and a
significant part for achieving the time-saving advantages provided by the
invention.” (Appeal Br. 18–19). But our reviewing court guides that the
“‘mere automation of manual processes using generic computers’ . . .
‘does not constitute a patentable improvement in computer technology.’”
Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1378, 1384 (Fed. Cir. 2019)
(quoting Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1055
(Fed. Cir. 2017)).
As noted by Appellant on page 18 of the Appeal Brief, as set forth in
MPEP § 2106.05(a) (emphasis added):
To show that the involvement of a computer assists in
improving the technology, the claims must recite the details
regarding how a computer aids the method, the extent to which
the computer aids the method, or the significance of a computer
to the performance of the method. Merely adding generic
computer components to perform the method is not sufficient.
Thus, the claim must include more than mere instructions to
perform the method on a generic component or machinery to
qualify as an improvement to an existing technology.

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However, in reviewing the Appeal Brief and Reply Brief, we find
Appellant does not advance any specific, substantive arguments explaining
how the claimed generic computer components aid the method, the extent to
which the computer aids the method, or the significance of a computer to the
performance of the method to improve the recited computer components.
See MPEP § 2106.05(a). Merely reciting the claim language and asserting
that it provides an improvement to the technology is insufficient. See e.g.,
Appeal Br. 18, last full paragraph.
Accordingly, on this record, we conclude independent claim 1, and
claims 3–5, 7, 8, 10, and 13–23, do not recite an improvement to the
functionality of a computer or other technology or technical field. See
MPEP § 2106.05(a).

MPEP § 2106.05(b), 2106.05(c)
The Examiner finds: “Because the claims only recite use of a generic
computer, they do not apply the judicial exception with a particular machine.
See MPEP §2106.05(b).” Final Act. 7.
Appellant advances no arguments in response that any of the method
claims on appeal are tied to a particular machine (MPEP § 2106.05(b)), or
transform an article to a different state or thing (MPEP §2106.05(c)).

MPEP § 2106.05(e) Meaningful Claim Limitations
Appellant does not argue that claim 1 (or any other claim) recites
certain “meaningful” claim limitations, such as those of the types addressed
under MPEP § 2106.05(e), that impose meaningful limits on the judicial
exception. Although Appellant urges that “the additional elements of the
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claimed invention are integrated into a practical application with
consideration to the plain meaning of the term ‘practical’” (Appeal Br. 19),
Appellant does not present substantive arguments explaining how the
judicial exceptions are applied or used in some meaningful way as set forth
under the January or October 2019 Memoranda. 8
Simply adding generic hardware and computer components to
perform abstract ideas does not integrate those ideas into a practical
application, because the “mere recitation of a generic computer cannot
transform a patent-ineligible abstract idea into a patent-eligible invention.”
Alice, 573 U.S. at 223; see January 2019 Memorandum, 84 Fed. Reg. at 55,
n.30; see id. at 55 (“merely includ[ing] instructions to implement an abstract
idea on a computer” is an example of when an abstract idea has not been
integrated into a practical application).
Thus, under Step 2A, Prong Two (MPEP § 2106.05(a)–(c) and (e)–
(h)), we conclude claims 1, 3–5, 7, 8, 10, and 13–23 do not integrate the
judicial exception into a practical application.

8 See January 2019 Memorandum, 84 Fed. Reg. at 55, citing MPEP
§ 2106.05(e) (stating that one exemplary consideration indicative that an
additional element may have integrated the exception into a practical
application is that the additional element “applies or uses the judicial
exception in some other meaningful way beyond generally linking the use of
the judicial exception to a particular technological environment, such that
the claim as a whole is more than a drafting effort designed to monopolize
the exception”) (emphasis added).
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The Inventive Concept – Step 2B
Under the January 2019 Memorandum, 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 adds a specific limitation
beyond the judicial exception that is not “well-understood, routine,
conventional” in the field (see MPEP § 2106.05(d)); or, simply appends
well-understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception.
Appellant contends that “the Examiner has not provided any evidence
or articulated reasoning to support the conclusion under step 2B that the
combination of claimed features are routine and conventional.” Appeal
Br. 22. Appellant further urges that “the Examiner's analysis of only a
subset of the claimed features is undoubtedly in error and the Examiner's
conclusion that the claimed invention is routine and conventional is not
supported by a preponderance of the evidence.” Appeal Br. 23.
We note Berkheimer was decided by the Federal Circuit on
February 8, 2018. On April 19, 2018, the PTO issued the Memorandum
titled: “Changes in Examination Procedure Pertaining to Subject Matter
Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP,
Inc.)” (hereinafter “Berkheimer Memorandum”).9 The Berkheimer
Memorandum provided specific requirements for an Examiner to support
with evidence any finding that claim elements (or a combination of elements)
are well-understood, routine, or conventional.

9 Available at https://www.uspto.gov/sites/default/files/documents/memo-
berkheimer-20180419.PDF.
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In particular, the Examiner must find, and expressly support 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 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). . . .
Berkheimer Memorandum at 3–4.
Here, the Examiner finds, under Step 2B of the 2019 Memorandum:
The data gathering steps performed by the location sensor were
found in part 2A to be insignificant [extra-]solution activity. This
is supported by the Nixon reference, which describes a
conventional tablet device that has a GPS receiver for receiving
location data (see, ¶ [0078]). The use of security credentials for
identifying users of devices was also found to be an insignificant
[extra-]solution step. Likewise, Nixon supports the conclusion
that this is a well-understood, routine and conventional step
in, ¶ [0146]. The claims do not recite elements that amount to
significantly more than an abstract idea. Therefore, the claims
recite ineligible subject matter under 35 USC §101.
Final Act. 7 (emphasis added).
As noted above, the Examiner has provided Berkheimer evidence
under category three of the the four types of factual evidence acceptable
under the Berkheimer Memorandum at 3–4. See Final Act. 7. We
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emphasize that Appellant has not specifically traversed the Berkheimer
evidence provided by the Examiner in the Appeal Brief (20–23).
In the Reply Brief, Appellant again contends the Examiner:
fails to factually support the assertion that the claims recite well-
understood and routine processes and hence do not recite an
inventive concept, as is required by the PEG and Berkheimer.
More specifically, Appellant explained precisely why the
claimed process is not merely “routine and conventional” (and
hence, an inventive concept is present, as discussed in the Brief
at pages 20-23). In the Answer, Examiner does not explain how
the claimed processes are considered routine or conventional.
Specifically, the Examiner does not explain how the claimed
features amount to merely a sequence of actions regularly
followed as a matter of normal, regularly followed, day-to-day,
standard operations. It is self-evident that no reasonable
individual of ordinary skill in the art would recognize that a
computing device, in any way shape or form routinely, performs
the combination of all claimed process steps (e.g., much like the
routine, day-to-day process steps involving a bios check, a
bootdisk check, a virus check, etc.).
Reply Br. 6.
However, Appellant again does not specifically traverse the
Berkheimer evidence provided by the Examiner. Id. As noted above, the
Examiner specifically cited to the Nixon reference as Berkheimer type three
evidence. See Final Act. 7.
Moreover, because Appellant does not advance substantive,
persuasive arguments regarding any claimed nonconventional and non-
generic arrangement of known computer components, we find no inventive
concept in any purported ordered combination of these limitations.
Thus, we find Appellant’s claims are unlike the claims considered by
the court in BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827
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F.3d 1341 (Fed. Cir. 2016)), in which the court found “an inventive concept
. . . in the non-conventional and non-generic arrangement of known,
conventional pieces.” 827 F.3d at 1350 (emphases added). Here, we do not
find a claimed non-conventional, non-generic arrangement of known,
conventional structures (generic computer components).
Turning to independent claim 1, we particularly note that system
claim 1 merely recites a system comprising a data device further comprising
a location sensor, a processor, and a memory without specifying any non-
generic and non-conventional arrangement of processors, sensors, and/or
memory elements.
Therefore, we agree with the Examiner that “[t]he claims are directed
to an abstract idea, and the additional elements of the claims amount to
generic computer hardware and location sensors that are used in a well-
understood, routine, and conventional manner.” Ans. 7.
In light of the foregoing, and under the January 2019 and October
2019 Memoranda, we conclude that each of Appellant’s claims 1, 3–5, 7, 8,
10, and 13–23, 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. Therefore, we sustain the Examiner’s
Rejection A under 35 U.S.C. § 101 of claims 1, 3–5, 7, 8, 10, and 13–23.10

10 Regarding Rejection A under 35 U.S.C. § 101, grouped claims 3–5, 7, 8,
10, and 13–23 (not argued separately) fall with representative independent
claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).

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Obviousness Rejection B
Under 35 U.S.C. § 103, and based upon Appellant’s argument
(Appeal Br. 23–24) we focus our analysis on the disputed (u) “modifying”
limitation of claim 1, as identified in Table One above, and as recited using
identical language as the last step of independent method claim 8:
Issue 1: Did the Examiner err by finding that Nixon and Compton
collectively teach or suggest the disputed limitation (u) (see supra Table
One):
[u] modifying a maintenance record stored within the
central database based on the receiving the work package
results from the user upon completion of the first work
package and the storing the work package results[,]
within the meaning of independent claim 1 (and as identically recited
as the last step of independent method claim 8)?
The Examiner further explains the basis for the rejection in the
Answer:
The broadest reasonable interpretation of a maintenance record
includes a completed work item, so Nixon reads on that
limitation. Nixon explicitly discloses maintenance material in the
work checklist in ¶ [0321]. Therefore, Nixon’s work checklist is
a work package that includes a maintenance record. The
Appellant’s arguments seems to rely on an explicit word-for-
word teaching of a maintenance record, rather than the broadest
reasonable interpretation. The Appellant additionally suggests
that a work package cannot contain a maintenance record. See
Brief p. 25. However, the Appellant does not point to anything
in the record to limit the broadest reasonable interpretation
of work package to a record that excludes maintenance records.
A ‘work package’ can contain a ‘maintenance record,’ and
¶ [0320]-[0321] of Nixon support this interpretation. The claims
are obvious over Nixon in view of Compton.
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Ans. 7.
Appellant disagrees. Appellant contends in the Reply Brief:
the Examiner has not explained how the work item corresponds
to a maintenance record, despite the differences between the two
being clearly explained (see e.g., Brief, pages 24 and 25). In
particular, the Examiner cites “work item” in the Nixon reference
as the “work package” in the claim, however, the Examiner also
cites the “work item” as the “maintenance record” (see e.g.,
Office Action, page 5). Appellant emphasizes that the “work
package” and the “maintenance record” are two separate and
distinct elements, and thus, it is improper for the Examiner to cite
the same element in Nixon (i.e., the “work item”) as both the
“work package” and the “maintenance record.”
Reply Br. 6–7.
Appellant further contends:

Moreover, the “work item” in Nixon is fundamentally different
than the “maintenance record” of the claimed invention. For
example, a “work package” is defined in the claim as comprising
a client ID, a client site ID, a geographic location for the client
and client equipment, and maintenance routines to be performed
on the client equipment. That is, the work package defines who,
what, and where to perform a maintenance task on client
equipment. The “maintenance record” defines a record of details
of work actually performed (e.g., work package results) as part
of performing the work package (see e.g., Appellant’s
specification, paragraph 0026). The “work item” in Nixon is
merely a “to-do list” or “checklist” rather than a maintenance
record having the details of what work was completed and
being modified based on work package results. At best, the
“work item” in Nixon may be a work package, but it is not a
maintenance record, as the work item does not identify what
work was actually done as does a maintenance record.
Reply Br. 7 (emphasis added).

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Based upon our review of the evidence and the record, we find a
preponderance of the evidence supports the Examiner’s underlying factual
findings and ultimate legal conclusion of obviousness. We agree with the
Examiner that Nixon teaches or at least suggests both the claimed
“maintenance record” (that is modified) and the claimed “work package:”
“Nixon explicitly discloses maintenance material in the work checklist in
¶ [0321]. Therefore, Nixon’s work checklist is a work package that includes
a maintenance record.” Ans. 7. The Examiner’s findings are buttressed by
Nixon’s express teaching of “a maintenance management system.” Nixon
¶ 72. Nixon also expressly discloses that work items are stored in a
database of work items. Nixon ¶ 13. Also found in the last sentence of
paragraph 13 of Nixon is a description of a checklist that may include
maintenance material.
Moreover, we find Nixon’s description in paragraph 113 of marking
the work item complete, and removing it from a list of active work items
teaches or suggests a maintenance record, as claimed:
Upon completion of the work item, the supervisor module 106
and, in embodiments, the work item tracking module 318, may
mark the item complete, remove it from a list of active work
items, remove or expire any permissions associated with the
work item, assign another work item, notify personnel that the
work item is complete, notify personnel that a dependent
work item can be started (i.e., a work item dependent on the
prior work item to be complete before it can be started), and
the like.

Nixon ¶ 113 (emphasis added).
We emphasize that “‘the question under 35 USC 103 is not merely
what the references expressly teach but what they would have suggested to
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one of ordinary skill in the art at the time the invention was made.’” Merck
& Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (quoting In
re Lamberti, 545 F.2d 747, 750 (CCPA 1976)). (emphasis added); see also
MPEP § 2123.
This guidance is applicable here.
Because Appellant has not persuaded us the Examiner erred regarding
obviousness Rejection B of independent “system” claim 1, we sustain the
Examiner’s Rejection B of claim 1. As noted above, the last step of
independent method claim 8 identically recites the disputed “modifying”
limitation. Therefore, for the same reasons as discussed above for claim 1,
we sustain grouped independent method claim 8. For the same reasons, we
also sustain the Examiner’s Rejection B of grouped dependent claims 4, 7,
and 13–23 (not argued separately). See 37 C.F.R. § 41.37(c)(1)(iv).

Rejection C under 35 U.S.C. § 103 of Dependent Claims 3, 5, and 10
Appellant argues that “[c]laims 3, 5, and 10 are dependent claims,
depending from base claims 1 and 8, which are allowable for the reasons
discussed above.” Appeal Br. 26. However, we find Appellant’s arguments
are unavailing regarding Rejection B of independent claims 1 and 8, for the
reasons discussed above. Therefore, for the same reasons discussed above
regarding Rejection B of independent claims 1 and 8, we also sustain
Rejection C of remaining dependent claims 3, 5, and 10.

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CONCLUSIONS
Under the Director’s January and October 2019 Memoranda, we
conclude that claims 1, 3–5, 7, 8, 10, and 13–23, rejected under 35 U.S.C.
§ 101, are not directed to patent-eligible subject matter.
Appellant has not shown the Examiner erred in rejecting claims 1,
3–5, 7, 8, 10, and 13–23 as being obvious under 35 U.S.C. § 103, over the
cited combinations of prior art.

DECISION SUMMARY

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3–5, 7,
8, 10,
13–23
101 Eligibility 1, 3–5, 7,
8, 10,
13–23

1, 4, 7, 8,
13–23
103 Nixon, Compton 1, 4, 7, 8,
13–23

3, 5, 10 103 Nixon, Compton,
Tanaka
3, 5, 10
Overall
Outcome
1, 3–5, 7,
8, 10,
13–23

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