CA, Inc.

Patent Trials and Appeals Board

Feb 21, 2020

15262516 - (D) (P.T.A.B. Feb. 21, 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.
15/262,516 09/12/2016 Srikanth Mandava 106861-4450 1085
121312 7590 02/21/2020
Foley & Lardner LLP/ Broadcom Corporation
3000 K Street N.W
Suite 600
Washington, DC 20007-5109
EXAMINER
BODDEN, EVRAL E
ART UNIT PAPER NUMBER
2193
NOTIFICATION DATE DELIVERY MODE
02/21/2020 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):
cmckenna@foley.com
ipdocketing@foley.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SRIKANTH MANDAVA
____________

Appeal 2019-001421
Application 15/262,516
Technology Center 2100
____________

Before ERIC S. FRAHM, JOHN A. EVANS, and JUSTIN BUSCH,
Administrative Patent Judges.

Opinion for the Board filed by Administrative Patent Judge
ERIC S. FRAHM.

Opinion Dissenting filed by Administrative Patent Judge JUSTIN BUSCH.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–20, which are all the claims pending and rejected in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. “The word ‘applicant’ when used in this title refers to the
inventor or all of the joint inventors, or to the person applying for a patent as
provided in §§ 1.43, 1.45, or 1.46.” 37 C.F.R. § 1.42(a). Appellant
identifies the real party in interest as CA, Inc. (Appeal Br. 3).

STATEMENT OF THE CASE
Introduction
The present invention “generally relates to the field of data
processing, and more particularly to collaboration notification of
development based on artifact analysis” (Spec. ¶ 1), where “development”
pertains to product (e.g., hardware, software, etc.) development by
“[e]nterprises (e.g., business entities)” that are growing “in term of groups,
teams, persons, etc.” (Spec. ¶ 2). Claim 1 is exemplary, with bracketed
lettering/numbering, formatting, and emphases added:
1. A method comprising:
creating or assigning a first artifact document that
includes a description of a component of a product that is
included in a product development cycle, and wherein the
description is associated with a product development entity and
includes a description of functionality of the product;
in response to said creating or assigning the first artifact
document, utilizing a text-based search engine to identify
search terms in the first artifact document; and
for each of a plurality of artifact documents currently
stored by a development enterprise,
[A] determining whether the stored artifact
document includes text that matches the identified search
terms in the first artifact document to a degree that
satisfies a matching threshold; and
[B] in response to determining satisfaction of the
matching threshold,
[B1] determining whether the first artifact
document satisfies a collaboration criterion that is
based, at least in part, on an attribute of the first
artifact document and the stored artifact document;
and
[B2] in response to determining that the
collaboration criterion is satisfied, transmitting to
the product development entity a collaboration
notification regarding the stored artifact document.
Appeal Br. 19, Claims Appendix (emphases, bracketed lettering/numbering, and
formatting added).
Examiner’s Rejections2
Claims 1–20 are rejected under 35 U.S.C. § 101 because they are
directed to patent-ineligible subject matter (see Final Act. 4–7).
Claims 1–3, 11–13, and 19 are rejected under 35 U.S.C. § 102(a)(1) as
being anticipated by Claghorn (US 7,890,486 B2; issued Feb. 15, 2011) (see
Final Act. 7–15).
Claims 4–10, 14–18, and 20 are rejected under 35 U.S.C. § 103 as
being unpatentable over Claghorn in combination with various other
secondary prior art references (see Final Act. 15–29).

ANALYSIS
35 U.S.C. § 101
We have reviewed the Examiner’s rejection in light of Appellant’s
contentions and the evidence of record. We concur with Appellant’s
contention that the Examiner erred in this case.

2 Throughout this opinion, we refer to the (1) Final Office Action dated Jan.
17, 2018 (“Final Act.”); (2) Appeal Brief dated April 17, 2018 (“Appeal
Br.”); (3) Examiner’s Answer dated Oct. 4, 2018 (“Ans.”); and (4) Reply
Brief dated Dec. 5, 2018 (“Reply Br.”). Because the Reply Brief is not
paginated, we refer to pages 1 through 7 starting with the first page and
numbered consecutively thereafter.
Section 101 of the Patent Act provides “[w]hoever 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.” 35 U.S.C. § 101. However, the Supreme Court has long interpreted
35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural
phenomena, and abstract ideas” are not patentable. E.g., Alice Corp. Pty.
Ltd. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (internal quotation marks
and citation omitted).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. 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
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.
(15 How.) 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
Supreme 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 Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, . . . and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a
patent-eligible application.” Alice, 573 U.S. at 221 (citation omitted). “A
claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (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.
The PTO published revised guidance on the application of § 101.
USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the 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) (Step 2A, Prong 1); and
(2) additional elements that integrate the judicial exception into
a practical application (see MANUAL OF PATENT EXAMINING
PROCEDURE (“MPEP”) § 2106.05(a)–(c), (e)–(h)) (9th Ed., Rev.
08.2017, 2018) (Step 2A, Prong 2).
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. (Step 2B.)
See Guidance, 84 Fed. Reg. at 54–56.
Even if claim 1 recites an abstract idea, the Federal Circuit explains:
The “directed to” inquiry . . . cannot simply ask whether the
claims involve a patent-ineligible concept, because essentially
every routinely patent-eligible claim involving physical
products and actions involves a law of nature and/or natural
phenomenon—after all, they take place in the physical world.
See Mayo, 132 S.Ct. at 1293 (“For all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural
phenomena, or abstract ideas.”). Rather, the “directed to”
inquiry applies a stage-one filter to claims, considered in light
of the specification, based on whether “their character as a
whole is directed to excluded subject matter.”
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016); see
also Diehr, 450 U.S. at 188 (“In determining the eligibility of respondents’
claimed process for patent protection under § 101, their claims must be
considered as a whole.”); McRO, Inc. v. Bandai Namco Games Am. Inc., 837
F.3d 1299, 1314 (Fed. Cir. 2016) (the question is whether the claims as a
whole “focus on a specific means or method that improves the relevant
technology or are instead directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery”).
Therefore, we proceed to Step 2A, Prong 2 of the Guidance to
determine whether additional elements of the claim integrate the abstract
idea into a practical application. Such additional elements may reflect an
improvement to a technology or technical field. See Guidance, 84 Fed. Reg.
at 55. We determine additional elements of claim 1 integrate the abstract
idea into a practical application, as the additional elements (see claim 1,
limitations A, B, B1, and B2) reflect the technology improvement of
implementing artifact analysis with search engine text matches to transmit a
collaboration notification to a product development entity when a
collaboration criterion is satisfied, i.e., artifact-based, collaborative product
development for an enterprise. See BASCOM Glob. Internet Servs., Inc. v.
AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016) (“The inventive
concept described and claimed . . . is the installation of a filtering tool at a
specific location, remote from the end-users, with customizable filtering
features specific to each end user. This design gives the filtering tool both
the benefits of a filter on a local computer and the benefits of a filter on the
ISP server.”).
Our determination is supported by the Specification, which describes
the technology improvement of the invented enterprise collaboration method
(claim 1), apparatus (claim 11), and non-transitory machine-readable media
(claim 19) based on artifact analysis:
FIG. 4 depicts an example computer device, according to
some embodiments. The computer device includes a processor
401 (possibly including multiple processors, multiple cores,
multiple nodes, and/or implementing multi-threading, etc.).
The computer device includes memory 407. The memory 407
may be system memory (e.g., one or more of cache, SRAM,
DRAM, zero capacitor RAM, Twin Transistor RAM, eDRAM,
EDO RAM, DDR RAM, EEPROM, NRAM, RRAM, SONOS,
PRAM, etc.) or any one or more of the above already described
possible realizations of machine-readable media.

Spec. ¶ 53 (emphasis added). Appellant’s Figure 4 shows the cooperation
of processor 401, artifact manager 411, and search engine 412 in achieving
the claimed aspects of the invention, as further described in the relevant
portion of Appellant’s Specification:
The computer device also includes an artifact manager 411 and
a search engine 412. The artifact manager 411 can perform
operations to determine collaboration among artifacts and
possible notification of such collaboration, as described above.
The search engine 412 can search artifacts to locate search
terms. The search engine 412 can also determine whether a
current artifact can be eligible for collaboration notification
for a new artifact based on a matching threshold, as described
above. Any one of the previously described functionalities may
be partially (or entirely) implemented in hardware and/or on
the processor 401. For example, the functionality may
be implemented with an application specific integrated circuit,
in logic implemented in the processor 401, in a co-processor on
a peripheral device or card, etc. Further, realizations may
include fewer or additional components not illustrated in FIG. 4
(e.g., video cards, audio cards, additional network interfaces,
peripheral devices, etc.). The processor 401, the network
interface 405, and the persistent data storage 409 are coupled to
the bus 403. Although illustrated as being coupled to the bus
403, the memory 407 may be coupled to the processor 401.

Spec. ¶ 55 (emphases added).
Therefore, we agree with Appellant’s arguments that the claims
are patent eligible, because the claims are directed to (i) “a procedure for
utilizing text searches on a created/assigned artifact document with
respect to other artifact documents in a particularized manner to
determine the conditions under which to transmit collaboration
notifications” (Appeal Br. 7); (ii) “an artifact document handling
procedure including creating or assigning an artifact document (e.g.,
file) followed by, in response to the document creation/assignment, a
text-based search engine identifying search terms that are subsequently
used as a procedural factor in subsequent processing of
the created/assigned artifact document with respect to other artifact
documents” (Appeal Br. 12); (iii) “discovering collaboration
opportunities across development personnel based on product artifacts
created and assigned in software development methodologies” (Reply
Br. 1); and (iv) “specific improvement in software development that
determines potential collaborators on [sic] based on product artifacts”
(Reply Br. 3).
Because the additional elements of claim 1 integrate the abstract
idea into a practical application, we determine claim 1 is not directed to an
abstract idea. See Guidance, Step 2A, Prong 2. For similar reasons, each
of claims 2–20 integrates the collaboration notification of development
based on artifact analysis into a practical application, and is not directed
to an abstract idea.
In view of the foregoing, under the Guidance, and informed by our
governing case law concerning 35 U.S.C. § 101, the Examiner erred in
concluding claims 1–20 are directed to a judicial exception, i.e., an abstract
idea, without significantly more, and thus are patent-ineligible under § 101.
Therefore, we reverse the rejection of claims 1–20 under 35 U.S.C. § 101.

35 U.S.C. §§ 102, 103
We have reviewed the Examiner’s rejection in light of Appellant’s
contentions and evidence of record. We concur with Appellant’s
contentions (see App. Br. 15–17; Reply Br. 3–5) that the Examiner erred in
finding the cited portions of Claghorn teach “in response to determining
satisfaction of the matching threshold, determining whether the first artifact
document satisfies a collaboration criterion that is based, at least in part, on
an attribute of the first artifact document and the stored artifact document,”
as recited in independent claim 1 (claim 1, limitation A).
The Examiner cites Claghorn’s column 18, lines 16 through 20 for
teaching the above claim limitation (see Final Act. 8). In response to
Appellant’s arguments, the Examiner cites column 12, lines 52 through 56
and column 18, lines 21 through 28 of Claghorn (see Ans. 12–13), but does
not adequately explain why these portions of Claghorn support the
Examiner’s finding.
We have reviewed the cited Claghorn portions, and they do not
describe determining whether a collaboration criterion based on certain
attributes is satisfied in response to satisfaction of a matching threshold, as
required by claim 1 (and as similarly required by claims 11 and 19). In
particular, while the cited Claghorn portions mention determining exact and
best matches and sending an alert, they do not describe a collaboration
criterion as claimed. In this light, Appellant’s arguments that
(i) “Claghorn’s determination of an exact/best match cannot be both the
determination of whether the matching threshold is satisfied and whether the
collaboration criteria is satisfied;” (ii) “Claghorn does not disclose or
suggest all elements of the claims as arranged;” and (iii) “[t]he Examiner's
arguments lack support in Claghorn, merge different claim elements together
into a single element or attempt to imbue a single aspect of Claghorn with
multiple meanings that are interdependent, and conflict with the actual
disclosure of Claghorn” (Reply Br. 6), are persuasive.
Because the Examiner fails to provide sufficient evidence or
explanation to support the rejection, we are constrained by the record to
reverse the Examiner’s rejection of claim 1. Each of independent claims 11
and 19 recites a similar limitation (see claims 11 and 19), and Examiner
applies the same findings and conclusions discussed above to claims 11 and
19 (see Final Act. 10–12 (claim 11), 13–15 (claim 19)). Therefore, for
similar reasons, we also reverse the Examiner’s (i) rejection of independent
claims 11 and 19; and (ii) rejections of corresponding dependent claims 2–
10, 12–18, and 20, which are based on the same findings regarding
Claghorn.

CONCLUSIONS
We reverse the Examiner’s decision rejecting claims 1–20 under
35 U.S.C. § 101.
We reverse the Examiner’s decision rejecting (i) claims 1–3, 11–13,
and 19 under 35 U.S.C. § 102(a)(1) as being anticipated by Claghorn; and
(ii) claims 4–10, 14–18, and 20 under 35 U.S.C. § 103 as being unpatentable
over Claghorn taken with various secondary prior art references.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–20 101 Eligibility 1–20
1–3, 11–13,
19
102(a)(1) Claghorn 1–3, 11–13,
19
4–6, 8–10,
14–16, 18,
20
103 Claghorn,
Alexander et al.3

4–6, 8–10,
14–16, 18,
20
7, 17 103 Claghorn, Winkler
et al.4
7, 17
Overall
Outcome
1–20

REVERSED

BUSCH, Administrative Patent Judge, dissenting in part.

I agree with and join the Majority Decision reversing the Examiner’s
anticipation and obviousness rejections of claims 1–20 under 35 U.S.C.
§§ 102 and 103. However, I disagree with the Majority Decision reversing
the Examiner’s rejection of claims 1–20 as being directed to an abstract idea

3 US 2009/0234894 A1; published Sept. 17, 2009.
4 US 2009/0106669 A1; published Apr. 23, 2009.
without significantly more. Instead, I agree with the Examiner’s findings
and conclusions with respect to the ineligibility of claims 1–20 under
35 U.S.C. § 101. Because I would ultimately affirm the Examiner’s
rejection of claims 1–20, I write separately.
The Majority lays out the Alice/Mayo framework under which we
analyze claims for eligibility, so I will not repeat the explanation of that
framework here. Because there is no dispute that the claims recite statutory
subject matter, I will not address further what we sometimes refer to as Step
1 of the analysis. See Appeal Br. 19–24 (listing method claims 1–10,
apparatus claims 11–18, and machine-readable media claims 19 and 20).
This Dissent will focus on analysis with respect to each of the other steps in
the Alice/Mayo framework—i.e., the three analysis steps we often refer to as
Step 2A, Prong 1; Step 2A, Prong 2; and Step 2B.
Appellant argues the eligibility of claims 1 through 20 as a group. See
Appeal Br. 2–9; Reply Br. 1–4. Therefore, in this Dissent, I address the
eligibility of the claims by referring to representative claim 1.
As the Majority notes, in Step 2A, Prong 1, we determine whether the
claims recite an abstract idea. 84 Fed. Reg. at 52–54. Claim 1 recites (1) in
response to creating or assigning a first document including particular
information, “identify[ing] search terms in” the first document and, (2) “for
each of a plurality of” stored documents, (a) “determining whether the
stored” documents include “text that matches the identified search terms in
the first . . . document to a degree that satisfies a matching threshold” and
(b) in response to the first determining step, “determining whether the first
. . . document satisfies a collaboration criterion.” Each of these steps recite
mental processes because each step may be performed in the human mind or
using pen and paper. See 84 Fed. Reg. at 52; Ans. 4–6. Specifically, these
steps merely recite observations (identifying search terms) and evaluations
or judgments (determining whether the documents match search terms to a
degree that meets a threshold and determining whether documents satisfy a
collaboration criterion). See 84 Fed. Reg. at 52; 84 Fed. Reg. at 52–53
nn.14–15.5 These mental steps are each a part of the abstract idea of
identifying documents relevant to a first document based on search terms
and collaboration criteria. See Appeal Br. 7 (characterizing the claims as
being “directed to a method, apparatus, and machine-readable medium for
correlatively processing the frequently disparate types and large quantities of
dispersed recorded information (i.e., artifact documents) in a manner
enabling provisioning of relevant document notifications”).
Because I find the claims recite mental processes, under Step 2A,
Prong 2, I look at the additionally recited elements to determine whether
these additional elements integrate the abstract idea into a practical
application. 84 Fed. Reg. at 54–55 (explaining that we look to the elements
recited in addition to the abstract idea to determine whether the claims
integrate the abstract idea into a practical application); see Manual of Patent

5 If 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 Intellectual Ventures I LLC v. Symantec Corp.,
838 F.3d 1307, 1318 (Fed. Cir. 2016) (“[W]ith the exception of generic
computer-implemented steps, there is nothing in the claims themselves that
foreclose them from being performed by a human, mentally or with pen and
paper.”); see also CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d
1366, 1375, 1372 (Fed. Cir. 2011) (holding that the incidental use of
“computer” or “computer readable medium” does not make a claim
otherwise directed to process that “can be performed in the human mind, or
by a human using a pen and paper” patent eligible); Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71 (2012) (explaining mental
processes are not patentable).
Examining Procedure (“MPEP”) §§ 2106.05(a)–(c), (e)–(h). Claim 1’s
additional elements, beyond the mental steps that make up the abstract idea
of identifying documents relevant to a first document, are the creating or
assigning a document step, the “text-based search engine,” and the
transmitting step.
I find claim 1 does not recite additional limitations that: (i) improve
the functionality of a computer or other technology or technical field, see
MPEP § 2106.05(a); (ii) use a “particular machine” to apply or use the
judicial exception, see MPEP § 2106.05(b); (iii) transform an article to a
different thing or state, see MPEP § 2106.05(c); or (iv) provide any other
meaningful limitation, see MPEP § 2106.05(e). See also 84 Fed. Reg. at 55.
Rather, claim 1’s additionally recited elements simply recite insignificant
extra-solution activity or use computers as tools to implement the abstract
idea and require no more than generic computer elements performing
generic computer functions.
I would find the creating or assigning a document step and the
transmitting step are insignificant extra-solution activity and, therefore,
insufficient to integrate the abstract idea into a practical application. 84 Fed.
Reg. at 55. Specifically, I would find the creating or assigning a document
step is insignificant pre-solution activity because it is merely an information
gather step necessary to perform the abstract idea—namely, analyzing the
information to identify other relevant documents. 84 Fed. Reg. at 55 n.31
(explaining that “mere data gathering . . . so that the information can be
analyzed” is extra-solution activity (citing MPEP § 2106.05(g))). Similarly,
I would find the transmitting step is insignificant post-solution activity
because it merely provides a notification about identified relevant
documents. 84 Fed. Reg. at 55.
Claim 1 does not recite an improvement to the functionality of a
computer, other technology, or a technical field because, other than the
recited mental steps and the insignificant extra-solution activity, claim 1
recites only generic computer components (i.e., the “text-based search
engine”). See Alice, 573 U.S. at 224 (“use of a computer to create electronic
records, track multiple transactions, and issue simultaneous instructions” is
not an inventive concept). Moreover, to the extent claim 1 improves the
speed of identifying relevant documents, this improvement lies in the use of
generic technology, an improvement in the process (i.e., identifying
document similarities and attributes), or some combination of the two.
Appellant argues “the claims are directed to a specific improvement in
software development.” Reply Br. 3. I agree that the claims are directed to
an improvement in a software development process because the claims are
directed to methods and systems that allegedly allow software development
teams to identify relevant “collaboration” documents more quickly and
easily. Notably, the claim encompasses comparing the first document to
only two other documents (i.e., “a plurality of artifact documents”).
Moreover, although claim 1 recites using a search engine to identify search
terms in the first document, claim 1 does not preclude the following
determining steps from being performed by a person. Nevertheless, to the
extent the claims are directed to an improvement to a process, that
improvement results from the benefits provided by generic computer
components performing generic computing functions to perform steps more
quickly. “[R]elying 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 (Fed. Cir. 2015).
For at least the foregoing reasons, claim 1 does not integrate the
judicial exception into a practical application, and I agree with the Examiner
that the claims are directed to an abstract idea. Therefore, I analyze the
claims under Step 2B to determine if there are additional limitations that
individually, or as an ordered combination, ensure the claims amount to
“significantly more” than the abstract idea. Alice, 573 U.S. at 217–18 (citing
Mayo, 566 U.S. at 72–73, 77–79). As stated in the Guidance, many of the
considerations to determine whether the claims amount to “significantly
more” under step two of the Alice framework are already considered as part
of determining whether the judicial exception has been integrated into a
practical application. 84 Fed. Reg. at 56. Thus, at this point of the analysis,
I determine if the claims add a specific limitation, or combination of
limitations, that is not well-understood, routine, conventional activity in the
field, or simply append well-understood, routine, conventional activities at a
high level of generality. 84 Fed. Reg. at 56.
An inventive concept “cannot be furnished by the unpatentable law of
nature (or natural phenomenon or abstract idea) itself.” Genetic Techs. Ltd.
v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016); see also 84 Fed.
Reg. at 56; Alice, 573 U.S. at 217 (explaining that, after determining a claim
is directed to a judicial exception, “we then ask, ‘[w]hat else is there in the
claims before us?’” (emphasis added, brackets in original) (quoting Mayo,
566 U.S. at 78)). Instead, an “inventive concept” is furnished by an element
or combination of elements that is recited in the claim in addition to the
judicial exception and sufficient to ensure the claim as a whole amounts to
significantly more than the judicial exception itself. Alice, 573 U.S. at 218–
19 (citing Mayo, 566 U.S. at 72–73); see BSG Tech LLC v. BuySeasons, Inc.,
899 F.3d 1281, 1290 (Fed. Cir. 2018) (explaining that the Supreme Court in
Alice “only assessed whether the claim limitations other than the invention’s
use of the ineligible concept to which it was directed were well-understood,
routine and conventional” (emphasis added)).
As discussed above, claim 1’s only additionally recited elements are
the creating or assigning a document step, the transmitting step, and the text-
based search engine. The Specification supports the conclusion that the text-
based search engine is a generic device recited at a high level of generality.
See Berkheimer Memo6 § III.A.1; Spec. passim (describing the claimed
process steps without identifying any particular element or combination of
elements necessary to perform the steps); see also Spec. ¶¶ 12, 16
(describing that every claimed element may be implemented in logic in the
processor), 55–57 (same), Fig. 1, 4 (depicting the various elements as black
boxes connected to each other without any detail). Moreover, the creating or
assigning data and the transmitting steps are basic computer functions.
buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (“That
a computer receives and sends the information over a network—with no
further specification—is not even arguably inventive.”).
“If a claim’s only ‘inventive concept’ is the application of an abstract
idea using conventional and well-understood techniques, the claim has not
been transformed into a patent-eligible application of an abstract idea.” BSG

6 “Changes in Examination Procedure Pertaining to Subject Matter
Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP,
Inc.)” at 3 (Apr. 19, 2018), available at https://www.uspto.gov/sites/default/
files/documents/memo-berkheimer-20180419.PDF (explaining that a
specification that describes additional elements “in a manner that indicates
that the additional elements are sufficiently well-known that the
specification does not need to describe the particulars of such additional
elements to satisfy 35 U.S.C. § 112(a)” can show that the elements are well-
understood, routine, and conventional).
Tech, 899 F.3d at 1290–91 (citing Berkheimer v. HP Inc., 881 F.3d 1360,
1370 (Fed. Cir. 2018)). “[I]t is irrelevant whether [the claimed abstract idea]
may have been non-routine or unconventional as a factual matter . . .
narrowing or reformulating an abstract idea does not add ‘significantly
more’ to it.” BSG Tech, 899 F.3d at 1291.
For the reasons discussed above, I am not persuaded the Examiner
erred, and I would sustain the Examiner’s rejection of claims 1–20 under
35 U.S.C. § 101.