Ali Ashour. Al-Jafar

Patent Trials and Appeals Board

Mar 25, 2020

14811780 - (D) (P.T.A.B. Mar. 25, 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.
14/811,780 07/28/2015 ALI ASHOUR AL-JAFAR 32700.92 7051
37833 7590 03/25/2020
Richard C. Litman
Nath, Goldberg & Meyer
112 S. West Street
Alexandria, VA 22314
EXAMINER
HULL, JAMES B
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
03/25/2020 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):
mbashah@nathlaw.com
uspto@4patent.com
uspto@nathlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ALI ASHOUR AL-JAFAR
____________________

Appeal 2019-002481
Application 14/811,780
Technology Center 3700
____________________

Before JOHN C. KERINS, STEFAN STAICOVICI, and
WILLIAM A. CAPP, Administrative Patent Judges.

KERINS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s Decision rejecting claims 1 and 2. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 The term “Appellant” is used herein to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant appears to be, and is presumed to be, the
Applicant, Ali Ashour Al-Jafar.
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CLAIMED SUBJECT MATTER
Claim 1 is independent, is illustrative, and is reproduced below:
1. An educational method of teaching arithmetic, comprising the
steps of:
numbering the corners of a square sheet of paper in numerical
sequence;
preparing addition tables using only the numbers on the sheet of
paper for the addends and sums;
performing subtraction as a reciprocal operation of addition;
preparing multiplication tables using only the numbers on the
sheet of paper for the multiplicands and products;
performing division as a reciprocal operation of multiplication;
folding the sheet of paper in a series of steps to form an origami
figure;
numbering each new angle formed in the sheet by fold lines by
continuing the numerical sequence after each folding step in the
series;
forming additional addition and multiplication tables after each
folding step in the series to include new sums and products
made possible by the step of numbering each new angle formed
by the fold lines; and
continuing the folding steps and forming new tables until the
origami figure is completed.

REJECTIONS
The Examiner rejects claims 1 and 2 under 35 U.S.C. § 101, as being
directed to non-statutory subject matter. Non-Final Act. 2–3; Ans. 2–4.
Rejections of claims 1 and 2 under 35 U.S.C. § 103 appearing at
pages 4–7 in the Non-Final Action have been withdrawn on appeal. Ans. 4.

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OPINION
Claims 1 and 2--§ 101
Appellant argues that the Examiner’s rejection of pending claims 1
and 2 under 35 U.S.C. § 101, as being directed to patent-ineligible subject
matter is in error. Appeal Br. 4–6; Reply Br. 5–10. Appellant presents
certain arguments for dependent claim 2 separately from independent
claim 1, and we will address those separately at appropriate points in the
analysis.
We address the rejection by applying the USPTO’s Revised Guidance,
informed by our governing case law concerning 35 U.S.C. § 101.

PRINCIPLES OF LAW
A. Section 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.
However, the U.S. 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. E.g., Alice Corp. Pty. Ltd. v. CLS Bank
Int’l, 573 U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-part framework, described in Mayo and Alice.
Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 75–77 (2012)). 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
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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” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “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 (1854))); 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
Court held that “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 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. (citation omitted)
(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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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 (internal quotation marks
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 Section 101 Guidance
In January 2019, the U.S. Patent and Trademark Office (“USPTO”)
published revised guidance on the application of § 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“2019 Revised Guidance”).2 “All USPTO personnel are, as a matter of
internal agency management, expected to follow the guidance.” Id. at 51;
see also October 2019 Update at 1.
Under the 2019 Revised Guidance and the October 2019 Update, 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

2 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (the “October
2019 Update”) (available at https://www.uspto.gov/sites/default/files/
documents/peg_oct_2019_update.pdf).
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organizing human activity such as a fundamental economic
practice, or mental processes) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h)
(9th ed. Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).3
2019 Revised Guidance, 84 Fed. Reg. at 52–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
Step 2B, 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.
2019 Revised Guidance, 84 Fed. Reg. at 52–56.

C. ANALYSIS
Step 1 – Statutory Category
Claim 1, as a method, is a method or process reciting a number of
steps, and thus recites one of the enumerated categories of eligible subject

3 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 Revised Guidance — Section III(A)(2), 84
Fed. Reg. at 54–55.
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matter in 35 U.S.C. § 101. Therefore, the issue before us is whether claim 1
is directed to a judicial exception without significantly more.
Step 2A(i): Does the Claim Recite a Judicial Exception?
The Examiner determined that claim 1 recites steps including writing
numbers on a piece of paper, preparing addition tables, performing
subtraction, preparing multiplication tables, performing division, and folding
the paper. Ans. 3. The Examiner determines that these limitations involve
arranging printed matter on a piece of paper, and folding the paper, and also
characterizes the steps as involving a mental process that can be performed
in the human mind, or by a human using a pen and paper. Id. at 3–4. We
note that claim 1 further may be regarded as including steps involving
mathematical concepts. The 2019 Revised Guidance instructs that mental
processes and mathematical concepts are two forms of an abstract idea,
which is one of the categories of judicial exceptions. 2019 Revised
Guidance 84 Fed. Reg. at 52.
Appellant argues that the step of folding is not abstract and changes
the appearance of the substrate, and that claim 1 recites that an origami
figure is created. Appeal Br. 5. Appellant argues, for claim 2, that the
origami figure created is a crane. Id. Appellant additionally argues that
claims 1 and 2 integrate a series of steps into an overall process having a
clear practical application. Reply Br. 7–8.
The former contentions do not detract from the fact that other steps
recited in claim 1 involve mental processes and mathematical relationships.
The latter contention is directed to the next step of the analysis under the
2019 Revised Guidance.
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Appellant’s above arguments are more in the nature of asserting that,
even though the claims involve an abstract idea, other limitations are present
that are directed to a non-conventional application of that abstract idea. We
thus find that the claims recite a judicial exception in the form of an abstract
idea. As noted above, Appellant’s arguments are more appropriately
addressed under the second prong of Step 2A, below.
Step 2A(ii): Judicial Exception Integrated into a Practical Application?
Since claim 1 recites a judicial exception, as we conclude above, we
proceed to the “practical application” inquiry in 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.
In other words, we evaluate claim 1 to determine whether it not only recites
a judicial exception, but also whether it is directed to that judicial exception,
or, alternatively, is directed to some technological implementation or
application of, the judicial exception.
Appellant argues, as noted above, that claim 1 has a very clear
practical application, and reproduces the steps recited in the claim. Reply
Br. 7–8. Appellant appears to assign error to the Examiner’s position that
“the process claimed is completely performable by a human through a series
of mental steps and using pen and paper.” Id. at 8. Appellant does not point
out with any particularity how or why this position is erroneous.
We do not see any of the touchstones of integration of the abstract
idea or ideas presented in claim 1 into a practical application. The steps that
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are arguably not purely mental steps or steps performed by a human with
pen and paper involve folding the sheet of paper in a series of steps, and
continuing the folding until an origami figure is completed. However,
simply because those steps involve physical action or activity does not
evidence that the abstract idea(s) are somehow integrated into a practical
application. In re Marco Guldenaar Holding B.V., 911 F.3d 1157, 1161
(Fed. Cir. 2018) (“the abstract idea exception does not turn solely on
whether the claimed invention comprises physical versus mental steps”).
Indeed, the particular folds to be made in order to produce specific figures
appear to be quite similar in concept to following rules of a card game, the
abstract idea to which the claims in the Guldenaar Holding case were
directed. Id. The folding steps are additionally acts in furtherance of
performing additional mental steps involving writing additional numbers on
the paper and using those numbers in the mathematical relationships of
addition, subtraction, multiplication, and division. Appellant further does
not argue that claim 1 is specifically directed to an improvement in computer
functionality or some other technical field.
We conclude, based on the above, that claim 1 does not integrate the
judicial exception into a practical application.
Step 2B – “Inventive Concept”/“Significantly More”?
The next aspect of the inquiry is whether claim 1 provides an
inventive concept because the additional elements beyond the recited
judicial exception provide significantly more than that judicial exception.
Appellant reiterates that the steps involving folding the paper and
creating an origami figure “cannot be done with the mind and does not fall
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in the realm of something that can be done with pen and paper.”4 Reply
Br. 9. However, the Revised Guidance instructs that the analysis employed
at Step 2(b) is an inquiry as to whether the claim adds a specific limitation
beyond the judicial exception that is not well-understood, routine, or
conventional; or simply appends to the judicial exception well-understood,
routine, or conventional activities known in the industry and specified at a
high level of generality. 2019 Revised Guidance, 84 Fed. Reg. at 52–56.
Appellant argues that the claimed subject matter is directed toward a
novel method of teaching arithmetic, using a specific and unique process of
creating mathematical tables based on the angles and folds of creating an
origami figure. Reply Br. 10. Appellant remarks that the withdrawal of the
prior art rejections in the Answer evidences that there is nothing about the
claims that is routine or conventional. Id.
Aside from the limitations discussed above as reciting aspects of
abstract ideas, the claims recite only folding the sheet of paper to which
numbers have been added in a series of steps to form an origami figure.
Appellant does not, and generally cannot, take the position that steps
involved in the practice of creating origami figures, recited at a high level of
generality as they are in claims 1 and 2, are somehow not well-known,
routine, and conventional. Moreover, we do not agree with Appellant that
withdrawal of the prior art rejections in the Answer evidences that there is
nothing about the claims that is routine or conventional because an abstract
idea does not transform into an inventive concept just because the prior art
does not disclose or suggest it. See Alice, 566 U.S. at 78. “It has been clear

4 We note that the folding steps indeed are performed using the very paper
used in the mathematical exercises.
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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 the ineligible concept.” BSG Tech LLC v.
Buyseasons, Inc., 899 F. 3d 1281, 1290 (Fed. Cir. 2018).
Therefore, analysis of claims 1 and 2, as a whole, with their
limitations considered both individually and as ordered combination,
confirms the Examiner’s conclusion that the claim is directed to an abstract
idea without significantly more. The rejection of these claims as being
directed to patent-ineligible subject matter is sustained.

DECISION
The rejection of claims 1 and 2 under 35 U.S.C. § 101, as being
directed to ineligible subject matter, is affirmed.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§ 
Reference(s)/Bas
is
Affirmed Reversed
1, 2 101  Eligibility 1, 2

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).

AFFIRMED