Anderson, Blake et al.

Patent Trials and Appeals Board

Feb 3, 2020

15098422 - (D) (P.T.A.B. Feb. 3, 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.
15/098,422 04/14/2016 Blake Anderson 1620.0030 4656
147210 7590 02/03/2020
LeonardPatel PC
Triad National Security, LLC
9891 Irvine Center Drive
Suite 100
Irvine, CA 92618
EXAMINER
WOLDEMARIAM, NEGA
ART UNIT PAPER NUMBER
2433
NOTIFICATION DATE DELIVERY MODE
02/03/2020 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):
docket@lanl.gov
mleonard@leonardpatel.com
patents@leonardpatel.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BLAKE ANDERSON, CURTIS STORLIE, and
JOSEPH SEXTON
____________

Appeal 2019-001769
Application 15/098,422
Technology Center 2400
____________

Before JEFFREY S. SMITH, TREVOR M. JEFFERSON, and
AMBER L. HAGY, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the rejection of
claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Illustrative Claim
1. A computer-implemented method, comprising:
automatically labeling each subroutine in a program, by a
computing system, in a function call graph;
applying a probabilistic approach, by the computing
system, to identify at least one subroutine as potentially
indicative of malware; and
providing an indication of the at least one identified
subroutine, by the computing system, to an analyst for further
analysis.
Prior Art
Name Reference Date
Anderson US 2013/0326625 A1 Dec. 5, 2013
Gupta US 2015/0161024 A1 June 11, 2015

Examiner’s Rejections
Claims 1–20 stand rejected under 35 U.S.C. § 101 as directed to
patent-ineligible subject matter.
Claims 1, 2, 4–18, and 20 stand rejected under 35 U.S.C. § 102(a)(1)
as anticipated by Anderson.
Claims 3 and 19 stand rejected under 35 U.S.C. § 103 as unpatentable
over Anderson and Gupta.

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ANALYSIS
I. Section 101 Rejection1
The Examiner rejects all of the pending claims under 35 U.S.C. § 101
as patent-ineligible because they are directed to a judicial exception without
significantly more. Final Act. 5–7. Appellant argues that the claims are not
directed to an abstract idea, are directed to patent-eligible subject matter, and
the Examiner’s rejection should be reversed. Appeal Br. 6–17. For the
reasons explained below, we are not persuaded of Examiner error in the
§ 101 rejection, and we, therefore, sustain that rejection.
A. Principles of Law
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 U.S. Supreme Court, however, has 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) (citation omitted).
The Court, in Alice, reiterated the two-part framework previously set
forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc.,
566 U.S. 66, 75–77 (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, 573 U.S. at 217. The first
part in the analysis is to “determine whether the claims at issue are directed

1 With regard to the Examiner’s § 101 rejection, Appellant argues all claims
together with claim 1 (Appeal Br. 17), and we consider claim 1
representative of the claimed subject matter on appeal. See 37 C.F.R.
§ 41.37(c)(1)(iv).
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to one of those patent-ineligible concepts.” Id. For example, abstract ideas
include, but are not limited to, fundamental economic practices, methods of
organizing human activities, an idea of itself, and mathematical formulas or
relationships. Id. at 218–20. The “directed to” inquiry asks not whether
“the claims involve a patent-ineligible concept,” but instead whether,
“considered in light of the specification, . . . ‘their character as a whole is
directed to excluded subject matter.’” Enfish, LLC v. Microsoft Corp.,
822 F.3d 1327, 1335 (Fed. Cir. 2016). In that regard, we determine whether
the claims “focus on a specific means or method that improves the relevant
technology” or are “directed to a result or effect that itself is the abstract idea
and merely invoke generic processes and machinery.” McRO, Inc. v. Bandai
Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016).
If, in the first part of the Alice/Mayo analysis, we conclude that the
claims are not directed to a patent-ineligible concept, they are considered
patent eligible under § 101 and the inquiry ends. Rapid Litig. Mgmt. Ltd. v.
CellzDirect, Inc., 827 F.3d 1042, 1047 (Fed. Cir. 2016).
If the claims are directed to a patent-ineligible concept, the second
part in the Alice/Mayo analysis is to consider the elements of the claims
“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.” Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S.
at 79, 78). In other words, the second part is to “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 (alterations in original)
(quoting Mayo, 566 U.S. at 72–73). The prohibition against patenting an
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abstract idea “‘cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment’ or adding ‘insignificant
postsolution activity.’” Bilski v. Kappos, 561 U.S. 593, 610–11 (2010)
(internal citation omitted).
The U.S. Patent and Trademark Office (the “Office”) has published
revised guidance on the application of 35 U.S.C. § 101. 2019 Revised
Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50–57 (Jan. 7,
2019) (“2019 Guidance”). Under the 2019 Guidance, the Office first looks
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); and (2) additional elements that integrate the judicial
exception into a practical application. See 2019 Guidance at 52, 54–55; see
also MPEP § 2106.05(a)–(c), (e)–(h).2
Only if a claim (1) recites a judicial exception, and (2) does not
integrate that exception into a practical application, does the Office then
look to whether the claim: (3) adds a specific limitation beyond the judicial
exception that are 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 2019 Guidance at 56. We
follow this guidance here.3

2 Unless otherwise specified herein, all references to the MPEP are to Rev.
08.2017 (Jan. 2018).
3 “All USPTO personnel are, as a matter of internal agency management,
expected to follow the guidance.” 2019 Guidance at 51; see also October
2019 Update: Subject Matter Eligibility, 2 (Oct. 17, 2019) (“October 2019
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In reviewing the Examiner’s rejection under § 101, we group claims
1–7 together and claims 8–20 together. 37 C.F.R. § 31.47(c)(1)(iv).
Accordingly, claims 2–7 stand or fall with claim 1, and claims 9–20 stand or
fall with claim 8.
B. Application of Legal Principles
1. Step 2A of 2019 Guidance
Prong 1: Do Claims 1–20 Recite an Abstract Idea
In applying the framework set out in Alice/Mayo, and as the first part
of that analysis, the Examiner concludes the claims are directed to the
abstract idea of an algorithm for calculating parameters indicating an
abnormal condition, such as malware. Final Act. 4. The Examiner finds that
the algorithm is recited in claim 1 by the steps of “labeling,” “applying,” and
“providing;” in claim 12 by the steps of “receive,” “learn,” and “label;” and
in claim 17 by the steps of “receive,” “learn,” “label,” and “apply.” Id.
In challenging the Examiner’s determination that the claims recite an
abstract idea, Appellant argues that the claim limitations are more than a
mental process performed on a computer, because “the claimed invention
improves the computing system upon which it operates by providing new
malware detection capabilities and a novel data structure.” Reply Br. 4;
Appeal Br. 38–41.
We evaluate the Examiner’s § 101 rejection by applying the 2019
Guidance, which uses enumerated groupings of abstract ideas that are rooted

Update”) (“Note, the feedback received was primarily directed to
examination procedures and, accordingly, this update focuses on clarifying
practice for patent examiners. However, all USPTO personnel are expected
to follow the guidance.”).
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in U.S. Supreme Court precedent, as well as Federal Circuit decisions
interpreting that precedent. See 2019 Guidance at 51–52. By grouping the
abstract ideas, the 2019 Guidance synthesizes the holdings of various court
decisions to facilitate examination. The 2019 Guidance describes one
category of abstract ideas as including “[m]ental processes”; that is,
“concepts performed in the human mind (including an observation,
evaluation, judgment, opinion).” Id. at 52 (footnotes omitted). The October
2019 Update4 provides additional clarification on “mental processes” by
providing an example of claims that recite mental processes as including “a
claim to ‘collecting information, analyzing it, and displaying certain results
of the collection and analysis,’ where the data analysis steps are recited at a
high level of generality such that they could practically be performed in the
human mind . . . .” October 2019 Update at 7 (citing Electric Power
Group5). The October 2019 Update also gives as an example of a claim
reciting a “mental process” a “claim to collecting and comparing known
information . . . , which are steps that can be practically performed in the
human mind . . . .” Id. at 8 (citing Classen).
We find that the claims recite steps that fall within the category of
mental processes, consistent with the 2019 Guidance. See 2019 Guidance at
52; see also October 2019 Update at 7–8. In particular, claim 1 recites
“automatically labeling each subroutine in a program . . . in a function call
graph;” “applying a probabilistic approach . . . to identify at least one
subroutine as potentially indicative of malware; and” “providing an

4 Available at https://www.uspto.gov/sites/default/files/documents/
peg_oct_2019_update.pdf.
5 Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1356 (Fed. Cir.
2016).
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indication . . . to an analyst for further analysis.” Claim 12 recites “receive a
training program and a list of subroutines labeled in a plurality of
categories;” “learn an identification strategy of how to identify the
categories based on the received subroutines and labels; and” “label new
subroutines based on the learned identification strategy.” Claim 17 recites
“receive a training program . . .; learn an identification strategy . . .;
automatically label new subroutines in a function call graph . . .; and apply a
probabilistic approach to identify at least one subroutine as potentially
indicative of malware.”
Each step in claims 1, 12, and 17 qualifies as a step of collecting
information, analyzing it, comparing it to known information, and/or
providing results. Each of these steps could be performed in the human
mind or with the aid of pen and paper; hence, they each fall within the
category of mental processes, and, thus, the claim recites an abstract idea.
Appellant’s reasoning that the steps would not be performed in the
human mind in the same way as a processor would perform them is not
persuasive, as this is not the proper test. As the 2019 Guidance states, “[i]f a
claim, under its broadest reasonable interpretation, covers performance in
the mind but for the recitation of generic computer components, then it is
still in the mental processes category unless the claim cannot practically be
performed in the mind.” See 2019 Guidance at 52 n.14 (emphasis omitted).
Here, with the exception of generic computer implemented functions or
steps, there is nothing in the claims themselves that foreclose them from
being performed by a human, mentally, or with pen and paper. See
Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed.
Cir. 2016) (holding that claims to screening messages in the context of
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electronic communications were directed to an abstract idea because they
could, but for the recitation of generic computer-implemented steps, be done
by a human with the aid of pen and paper); see also October 2019 Update at
8 (“The courts have found claims requiring a generic computer or nominally
reciting a generic computer may still recite a mental process even though the
claim limitations are not performed entirely in the human mind.”).
Thus, under Prong 1 of Step 2A in accordance with the 2019
Guidance, we conclude the claims recite a judicial exception of mental
processes, and we, therefore, agree with the Examiner’s conclusions that the
claims recite an abstract idea.
Prong 2: Do the Claims Integrate the Abstract
Idea Into a Practical Application6
In accordance with Prong 2 of Step 2A of the 2019 Guidance, we
evaluate the claims to determine whether they recite additional elements
beyond the abstract idea, and, if so, we evaluate the additional elements to
determine whether they integrate the abstract idea into a practical
application. 2019 Guidance at 54. The 2019 Guidance at page 55 provides
exemplary considerations, including whether an additional element:
• “reflects an improvement in the functioning of a computer, or
an improvement to other technology or technical field”;
• “implements a judicial exception with, or uses a judicial
exception in conjunction with, a particular machine or

6 We acknowledge that some of these considerations may be properly
evaluated under the second part of the Alice/Mayo analysis (Step 2B of the
2019 Guidance). For purposes of maintaining consistent treatment within
the Office, we evaluate them under the first part of the Alice/Mayo analysis
(Step 2A of the 2019 Guidance). See 2019 Guidance at 54–55.
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manufacture that is integral to the claim”;
• “effects a transformation or reduction of a particular article [or
thing] to a different state or thing”; or
• “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.”
The 2019 Guidance also highlights certain examples in which courts
have held that “a judicial exception has not been integrated into a practical
application,” such as where the claims “merely use[] a computer as a tool to
perform an abstract idea” or the additional element adds “insignificant extra-
solution activity” to the abstract idea. 2019 Guidance at 55 (emphasis
added); see also October 2019 Update at 11–15. The Examiner determines
that the additional elements recited in the claim are “a generic recitation of a
computer and a computer network performing their generic computer
functions.” Final Act. 4.
Appellant argues that the claims are not directed to an abstract idea
because they are analogous to claims determined to be patent-eligible in
Finjan7, Enfish8, and McRO9. Reply Br. 3; Appeal Br. 27–36. With respect
to Finjan, Appellant argues,
Finjan generates a security profile and links it to a
Downloadable; independent claim 1 of the subject application,
for instance, automatically labels each subroutine in a program
in a function call graph, applies a probabilistic approach to
identify at least one subroutine as potentially indicative of

7 Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1303-04 (Fed. Cir.
2018).
8 Enfish, LLC, v. Microsoft Corp., 822 F.3d 1327 (Fed Cir. 2016).
9 McRO, Inc. dba Planet Blue v. Bandai Namco Games America Inc., 120
USPQ2d 1091 (Fed. Cir. 2016).
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malware, and provides an indication of the at least one identified
subroutine to an analyst for further analysis. Thus, the claimed
invention takes the further step of actually providing an output,
and not merely “linking” as its final step. Since Finjan is not
directed to an abstract idea, Appellant respectfully submits that
the claimed invention also cannot be.
Appeal Br. 30.
We are not persuaded by Appellant’s comparison of the claims on
appeal to the patent-eligible subject claim considered by the court in Finjan.
In Finjan, the court found the claimed behavior-based virus scan constituted
an improvement in computer functionality over the “traditional, ‘code-
matching’ virus scans.” Finjan, 879 F.3d at 1304. The court determined
that the claimed method of Finjan employed a new kind of file that allowed
access to be tailored for different users, and allowed the system to
accumulate and use newly available, behavior-based information regarding
potential threats. Id. at 1305. The court ultimately held that the Finjan
claims were “directed to a non-abstract improvement in computer
functionality, rather than the abstract idea of computer security,” and
“recite[d] specific steps-- generating a security profile that identifies
suspicious code and linking it to a downloadable--that accomplish the
desired result.” Id.
Unlike the subject claims of Finjan, Appellant’s claims fail to employ
a newly generated file containing a security profile in a downloadable, and
does not use a new file to enable a computer security system to improve on
or add a computer functionality by reciting specific steps accomplishing the
desired improved security results. We have considered Appellant’s
argument that “the claimed invention takes the further step of actually
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providing an output” (Appeal Br. 30), and are not persuaded that actually
providing an output is sufficiently analogous to the subject claims in Finjan.
Appellant argues that its claims are not directed to an abstract idea in
view of Enfish. Appeal Br. 31. According to Appellant, Enfish mandates
that both the scope of the claims and the disclosure of the specification must
be consulted. Appeal Br. 32. Appellant contends that paragraphs 28 and 31
of Appellant’s specification disclose advantages over the prior art, namely,
that the subroutine-based approach allows for identifying other malware
programs and new malware subroutines. Appeal Br. 34–35.
We are not persuaded by Appellant’s contention that the claims
provide an improvement over existing technology, as was the case in Enfish,
because Appellant’s Specification discloses advantages over the prior art.
Any analysis based upon anticipation or obviousness is not relevant to our
analysis for patent eligibility under 35 U.S.C. § 101. See Return Mail, Inc.
v. U.S. Postal Service, 868 F.3d 1350, 1370 (Fed. Cir. 2017). Although the
second step in the Alice/Mayo test is a search for an “inventive concept,” the
analysis is not directed to novelty or nonobviousness, but rather searches for
elements sufficient to ensure that the claimed invention is directed to more
than a patent ineligible concept, such as an abstract idea. See Alice, 573 U.S.
at 217–18. “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); 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.”); Affinity Labs of Texas, LLC v.
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DIRECTV, LLC, 838 F.3d 1253, 1263 n.3 (Fed. Cir. 2016) (noting that an
eligibility finding does not turn on the novelty of using a user-downloadable
application for the particular purpose recited in the claims). Moreover, an
improved abstract idea is still an abstract idea. See Mayo, 566 U.S. at 90
(holding that a novel and nonobvious claim directed to a purely abstract idea
is nonetheless patent-ineligible).
As set forth in MPEP § 2106.05(a):
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.
(Emphasis added).
Here, Appellant has not provided sufficient details regarding how the
claimed “computer-implemented method” performed “by a computing
system” includes more than mere instructions to perform the recited steps to
qualify as an improvement to an existing technology. As discussed above,
we conclude Appellant’s generic computer implementation performs mental
processes. See independent claim 1. See also Trading Techs. Int’l, Inc. v.
IBG LLC, 921 F.3d 1378, 1384 (Fed. Cir. 2019) (The “‘mere automation of
manual processes using generic computers’ . . . ‘does not constitute a
patentable improvement in computer technology.’” Quoting Credit
Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017)).
Accordingly, on this record, we conclude independent claims 1, 12,
and 17, unlike those of Enfish, do not recite an improvement to the
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functionality of a computer or other technology or technical field. See
MPEP § 2106.05(a).
Appellant argues that its claims are not directed to an abstract idea
because they are analogous to those of McRo. Appeal Br. 35–36.
According to Appellant, the claimed rules in McRo transformed a process
performed by humans into a mathematically automated process performed
on computers. Appeal Br. 35; Reply Br. 3. Appellant argues that while
humans may perform labeling of subroutines to help train some
embodiments initially, the claimed invention may further identify new
malware subroutines that have not been previously labeled. Appeal Br. 36.
We disagree that Appellant’s claims are analogous to those deemed
patent eligible in McRO. In McRO, the claims described a way of animating
characters that represented a technological improvement over the existing,
manual 3-D animation techniques. McRO, 837 F.3d at 1316. Appellant’s
claims, on the other hand, do not produce any improved product, such as a
visual animation. Claim 1 recites a computer-implemented method of
“automatically labeling” data, “applying a probabilistic approach” to data,
and “providing” an indication of data. Claim 12 recites a computer program
to “receive” data, “learn” based on the received data, and “label” data.
Claim 17 recites “receive” data, “learn” based on the received data,
“automatically label” data, and “apply a probabilistic approach” to identify
data.
Claim 12’s and 17’s data-gathering steps reasonably can be
characterized as merely constituting insignificant extra-solution activity:
An example of pre-solution activity is a step of gathering data for
use in a claimed process, e.g., a step of obtaining information
about credit card transactions [that] is recited as part of a claimed
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process of analyzing and manipulating the gathered information
by a series of steps in order to detect whether the transactions
were fraudulent.
MPEP § 2106.05(g). As our reviewing court has explained, such data
gathering simply provides data for other method steps. See, e.g.,
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir.
2011) (“We have held that mere ‘[data-gathering] step[s] cannot make an
otherwise nonstatutory claim statutory.”’ (alterations in original) (quoting In
re Grams, 888 F.2d 835, 840 (Fed. Cir. 1989))); see also 2019 Guidance at
55 (identifying “add[ing] insignificant extrasolution activity to the” abstract
idea as an example of when an abstract idea has not been integrated into a
practical application).
The other steps of the claims entail using a computer to process data
to generate identified data. But the act of identifying constitutes the
underlying abstract ideas—the mental processes that, as we determine
above––can be performed in the human mind or with pencil and paper. See
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.”);
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir.
2016) (“[A] claim for a new abstract idea is still an abstract idea.” (emphasis
omitted)); SAP America, Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168 (Fed.
Cir. 2018) (“What is needed is an inventive concept in the non-abstract
application realm.”).
Consistent with the Examiner’s determination, we determine the
claims do not include an improvement to another technology or technical
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field or an improvement to the functioning of the computer itself; we also
find the claims do not include a transformation of an article or meaningful
limitations beyond generally linking the use of an abstract idea to a
particular technological environment. See Ans. 3–6. As the U.S. Supreme
Court has explained, “if a patent’s recitation of a computer amounts to a
mere instruction to ‘implemen[t]’ an abstract idea ‘on . . . a computer,’ that
addition cannot impart patent eligibility.” Alice, 573 U.S. at 223 (quoting
Mayo, 566 U.S. at 84).
In summary, we conclude the claims do not integrate the abstract idea
into a practical application so as to remove them from the realm of reciting
patent-ineligible abstract ideas. Accordingly, in the first part of the
Alice/Mayo analysis, we conclude that the claims are directed to an abstract
idea.
2. Step 2B of 2019 Guidance – Do the Claims Recite Significantly More
Than the Abstract Idea
Regarding the second part of the Alice/Mayo analysis, the Examiner
finds the elements of the claims, when considered individually or as an
ordered combination, do not recite significantly more than the abstract idea.
Ans. 4. In particular, the Examiner finds the claims “do not include
additional elements that are sufficient to amount to significantly more than
the judicial exception because the additional elements are simply a generic
recitation of a computer and a computer network performing their generic
functions.” Id.
Appellant argues that the claims have an inventive concept when
considered as an ordered combination, namely, implementing a new
malware identification approach based on analysis of labeled subroutines,
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similar to that of BASCOM Global Internet Services v. AT&T Mobility LLC,
827 F.3d 1341 (Fed. Cir. 2016). Appeal Br. 42–45. According to Appellant,
the Specification makes explicit that the claimed functions are not well-
understood, routine, and conventional, because the “use of a probabilistic
approach to find signatures of malware is also a novel feature of some
embodiments that is lacking from conventional analysis software.” Appeal
Br. 47 (citing Spec. ¶ 28).
We disagree that the claims are analogous to those determined to be
patent-eligible in BASCOM. The inventions recited in claims 1, 12, and 17
do not improve the performance of the computer system itself. Thus, this
case is unlike BASCOM, in which an inventive concept was found in the
ordered combination of limitations providing for “the installation of a
filtering tool at a specific location, remote from the end users, with
customizable filtering features specific to each end user.” 827 F.3d at 1350.
Here, the claim elements beyond the abstract idea recite only generic
computer functions and components that are well-understood, routine, and
conventional—that is, “a computer-implemented method” performed by “a
computing system”; such generic computer functions and components do not
convey an inventive concept. See Alice, 573 U.S. at 217. Appellant is
reminded that in most cases, “relying on a computer to perform routine tasks
more quickly or more accurately is insufficient to render a claim patent
eligible.” OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (citing
Alice, 573 U.S. at 224 (holding that “use of a computer to create electronic
records, track multiple transactions, and issue simultaneous instructions” is
not an inventive concept)); Intellectual Ventures I LLC v. Capital One Bank,
792 F.3d 1363, 1370 (“[M]erely adding computer functionality to increase
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the speed or efficiency of the process does not confer patent eligibility on an
otherwise abstract idea.”).
To the extent Appellant relies on the particular manipulation of data
recited as indicative of an inventive concept, we have determined above that
such steps amount to mental processes, which is categorized in the 2019
Guidance as an abstract idea. Appellant is reminded that “the ‘inventive
concept’ [under the second part of the Mayo/Alice test] 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). “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.” BSG Tech LLC v.
Buyseasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018).
We determine that the functions recited in Appellant’s claims do not
add any meaningful limitations beyond generally linking the abstract idea to
the particular technological environment. Accordingly, we sustain the
Examiner’s rejection of claims 1–20 under 35 U.S.C. § 101 as patent-
ineligible.

II. Section 102 Rejection
Independent claim 1 recites “automatically labeling each subroutine in
a program, by a computing system, in a function call graph.” Independent
claims 12 and 17 contain a similar limitation. The Examiner finds that
Anderson discloses this limitation in describing dynamic traces to identify
Appeal 2019-001769
Application 15/098,422
19
and categorize computer programs. Final Act. 5. Appellant contends that a
dynamic trace does not identify or categorize subroutines. Reply Br. 5–6;
Appeal Br. 57–61. In response, the Examiner finds that Anderson discloses
that “instances of programs (i.e. subroutines) labeled as malware can be
collected.” Ans. 4.
We agree with Appellant for the reasons given in the Appeal and
Reply Briefs. In particular, the Examiner has not persuasively explained
how Anderson’s disclosure of instances of programs describes “subroutines”
as claimed. Therefore, we do not sustain the rejection of claims 1, 2, 4–18,
and 20 under 35 U.S.C. § 102.

III. Section 103 Rejection
Claim 3 recites “labeling each subroutine, by the computing system,
as file I/O, process/thread, network, GUI, registry, and/or exploit.” Claim 19
recites a similar limitation. The Examiner finds that Figure 4 and paragraph
117 of Gupta teach this limitation. Final Act. 11; Ans. 3. Appellant
contends that Gupta does not teach this limitation because (1) Gupta does
not discuss subroutines, and (2) the sections of Gupta cited by the Examiner
do not disclose the claimed labels. Reply Br. 13; Appeal Br. 82.
We agree with Appellant for the reasons given by Appellant in the
Appeal and Reply Briefs. Therefore, we do not sustain the rejection of
claims 3 and 19 under 35 U.S.C. § 103.

Appeal 2019-001769
Application 15/098,422
20
DECISION
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–20

101 Eligibility 1–20
1, 2, 4–18,
20

102 Anderson 1, 2, 4–18,
20
3, 19

103 Anderson, Gupta 3, 19
Overall
Outcome
1–20

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.
§ 41.50(f).

AFFIRMED