Emerson Electric Co.

Patent Trials and Appeals Board

Oct 20, 2020

2020002336 (P.T.A.B. Oct. 20, 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.
14/208,105 03/13/2014 Steven A. Cox 0315R-000829-US-01 8123
27572 7590 10/20/2020
HARNESS DICKEY (TROY)
5445 Corporate Dr.
Suite 200
Troy, MI 48098
EXAMINER
RINES, ROBERT D
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
10/20/2020 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):
sto-ptomail@hdp.com
troymailroom@hdp.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte STEVEN A. COX and PAUL LAYTON
____________

Appeal 2020-002336
Application 14/208,105
Technology Center 3600
____________

Before DONALD E. ADAMS, RICHARD M. LEBOVITZ, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from Examiner’s
decision to reject claims 1–30 (see Final Act.2 2; see also Appeal Br. 10).
We have jurisdiction 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. Appellant identifies the real party in interest as
“EMMERSON ELECTRIC CO.” (Appellant’s July 10, 2019 Appeal Brief
(Appeal Br.) 3).
2 Examiner’s January 11, 2019 Final Office Action.
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STATEMENT OF THE CASE
Appellant’s disclosure “relates to a system and method for a
contractor scheduling service and, more specifically, to a system and method
for a contractor scheduling service for HVAC systems and other equipment”
(Spec.3 ¶ 2). Appellant’s independent claims 1, 10, and 19 are reproduced
below:
1. A system comprising:
[A] a database storing a plurality of faults, each fault
having an indicator corresponding to whether the associated
fault is designated for self-maintenance;
[B] a monitoring system including a processor and a
memory, the monitoring system being in communication with
the database and in communication with a monitor module of
an HVAC system at a customer location, the monitor module
being configured to monitor operating parameters of the HVAC
system with at least one of a temperature sensor, a pressure
sensor, a current sensor, a voltage sensor, and a condensate
sensor, and the monitoring system being configured to receive
the monitored operating parameters from the monitor module,
to detect or predict a fault in the HVAC system based on the
monitored operating parameters received from the monitor
module, to determine whether the fault is designated for self-
maintenance based on the database, and to communicate an
alert corresponding to the fault to a customer device associated
with the HVAC system;
[C] wherein the monitored operating parameters are
stored in the memory of the monitoring system when the
monitored operating parameters from the monitor module are
received by the monitoring system;
[D] wherein, when the alert received by the customer
device indicates that the fault in the HVAC system is
designated for self-maintenance, the customer device displays

3 Appellant’s March 13, 2014 Specification.
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an identification of at least one replacement component
associated with maintenance for the fault and a first interface to
receive at least one of a first selection for a contractor to deliver
the at least one replacement component and a second selection
for purchasing the at least one replacement component through
a commercial retailer; and
[E] wherein the monitoring system is further configured
to evaluate an effectiveness of an installation of the at least one
replacement component by comparing the monitored operating
parameters stored in the memory before the at least one
replacement component is installed with the monitored
operating parameters stored in the memory after the at least one
replacement component is installed and to generate and
communicate a notification to the customer device indicating
the effectiveness of the installation of the at least one
replacement component based on the comparison.
(Appeal Br. 20–21 (annotation added for reference purposes).)
10. A method comprising:
[A] receiving, with a monitoring system, operating
parameters from a monitor module associated with an HVAC
system at a customer location, the monitoring system being in
communication with a database storing a plurality of faults,
each fault having an indicator corresponding to whether the
associated fault is designated for self-maintenance, the monitor
module being configured to monitor the operating parameters
with at least one of a temperature sensor, a pressure sensor, a
current sensor, a voltage sensor, and a condensate sensor;
[B] storing, with the monitoring system, the operating
parameters of the HVAC system;
[C] detecting or predicting, with the monitoring system, a
fault in the HVAC system based on the monitored operating
parameters;
[D] determining, with the monitoring system, whether the
fault is designated for self-maintenance based on the database;
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[E] communicating, with the monitoring system, an alert
corresponding to the fault to a customer device associated with
the HVAC system;
[F] displaying, when the alert received by the customer
device indicates that the fault in the HVAC system is
designated for self-maintenance and with the customer device,
an identification of at least one replacement component
associated with maintenance for the fault and a first interface to
receive at least one of a first selection for a contractor to deliver
the at least one replacement component and a second selection
for purchasing the at least one replacement component through
a commercial retailer;
[G] evaluating, with the monitoring system, an
effectiveness of installing the at least one replacement
component by comparing the monitored operating parameters
received before installation of the at least one replacement
component with the monitored operating parameters received
after the at least one replacement component is installed; and
[H] generating and communicating a notification to the
customer device indicating the effectiveness of installing the at
least one replacement component based on the comparison.
(Id. at 22–23 (annotation added for reference purposes).)
19. A non-transitory computer readable storage medium
storing instructions executable by a processor for:
[A] receiving, with a monitoring system, operating
parameters of an HVAC system at a customer location from a
monitor module associated with the HVAC system, the monitor
module being configured to monitor the operating parameters
with at least one of a temperature sensor, a pressure sensor, a
current sensor, a voltage sensor, and a condensate sensor;
[B] monitoring, with the monitoring system, the
operating parameters of the HVAC system at the customer
location, the monitoring system being in communication with a
database storing a plurality of faults, each fault having an
indicator corresponding to whether the associated fault is
designated for self-maintenance;
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[C] storing, with the monitoring system, the operating
parameters of the HVAC system;
[D] detecting or predicting, with the monitoring system, a
fault in the HVAC system based on the monitored operating
parameters;
[E] determining, with the monitoring system, whether the
fault is designated for self-maintenance based on the database;
[F] communicating, with the monitoring system, an alert
corresponding to the fault to a customer device associated with
the HVAC system;
[G] displaying, when the alert received by the customer
device indicates that the fault in the HVAC system is
designated for self-maintenance and with the customer device,
an identification of at least one replacement component
associated with maintenance for the fault and a first interface to
receive at least one of a first selection for a contractor to deliver
the at least one replacement component and a second selection
for purchasing the at least one replacement component through
a commercial retailer;
[H] evaluating, with the monitoring system, an
effectiveness of installing the at least one replacement
component by comparing the monitored operating parameters
received before installation of the at least one replacement
component with the monitored operating parameters received
after the at least one replacement component is installed; and
[I] generating and communicating a notification to the
customer device indicating the effectiveness of installing the at
least one replacement component based on the comparison.
(Id. at 24–25 (annotation added for reference purposes).)

Claims 1–30 stand rejected under 35 U.S.C. § 101.
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ISSUE
Does the preponderance of evidence of record support Examiner’s
finding that Appellant’s claimed invention is directed to patent-ineligible
subject matter?
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. 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
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
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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.”).
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
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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)
(“Guidance”).4 “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 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
organizing human activity such as a fundamental economic
practice, or mental processes) (“Step 2A, Prong One”); and

4 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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(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”).5
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.
Guidance, 84 Fed. Reg. at 52–56.
ANALYSIS
(Step 1)
We first consider whether the claimed subject matter falls within the
four statutory categories set forth in § 101, namely “[p]rocess, machine,
manufacture, or composition of matter.” Guidance, 84 Fed. Reg. at 53–54;
see 35 U.S.C. § 101. Examiner finds that Appellant’s “[i]ndependent claims
1, 10, and 19 [and their respective dependent claims] are directed to a
system/apparatus, a method/process, and a computer readable storage
medium, respectively, and are reasonably understood to be properly directed

5 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 Guidance — Section III(A)(2), 84 Fed. Reg. at
54–55.
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to one of the four recognized statutory classes of invention designated by 35
U.S.C. [§] 101” (Final Act. 10). We agree and, therefore, proceed to the
next steps of the analysis.
(Step 2A, Prong 1)
The method of Appellant’s claim 10 comprises, inter alia,
[A] receiving, with a monitoring system, operating
parameters from a monitor module associated with an HVAC
system at a customer location, the monitoring system being in
communication with a database storing a plurality of faults,
each fault having an indicator corresponding to whether the
associated fault is designated for self-maintenance, the monitor
module being configured to monitor the operating parameters
with at least one of a temperature sensor, a pressure sensor, a
current sensor, a voltage sensor, and a condensate sensor;
[C] detecting or predicting, with the monitoring system, a
fault in the HVAC system based on the monitored operating
parameters;
[D] determining, with the monitoring system, whether the
fault is designated for self-maintenance based on the database;
[E] communicating, with the monitoring system, an alert
corresponding to the fault to a customer device associated with
the HVAC system; [and]
[F] displaying, when the alert received by the customer
device indicates that the fault in the HVAC system is
designated for self-maintenance and with the customer device,
an identification of at least one replacement component
associated with maintenance for the fault and a first interface to
receive at least one of a first selection for a contractor to deliver
the at least one replacement component and a second selection
for purchasing the at least one replacement component through
a commercial retailer.
(Appeal Br. 22–23 (annotation added for reference purposes).) The system
and computer readable storage medium of Appellant’s claims 1 and 19,
respectively, comprises similar limitations (see, e.g., Appeal Br. 20–21
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(Appellant’s claim 1(A, B, and D); id. at 24–25 (Appellant’s claim 19(A, B,
and D–G)).
Examiner finds that Appellant’s claims recite “the abstract idea of
monitoring a heating and cooling system and alerting the user that a
component is faulty and needs to be replaced and further facilitating the
scheduling of a maintenance visit” (Final Act. 11; see also Ans.6 8; Appeal
Br. 12). In this regard, Examiner finds that Appellant’s “claims use a
detected fault in mechanical equipment to instruct a human user to schedule
a contractor or purchase a replacement component and install/repair the
component themselves” and “direct the behavior of a human to schedule a
contractor to deliver and replace a part on an HVAC, or perform a self-
replacement/maintenance of the part including purchasing a component/part
using available third party vendors such as Amazon.com” (Ans. 6 (citing
Spec. ¶¶ 146 and 147); see also Ans. 8 (citing Spec. ¶¶ 137 and 142–147)
(Examiner explains “that ‘self-maintenance,’ in the context of the instant
claims is in reference to a customer performing a repair or replacement of a
part manually themselves, and not to a self-maintenance process
implemented by the HVAC system or its operating system”)).
Thus, Examiner finds that the method of Appellant’s claim 10 relates
to “the organization and direction of human actions,” which is an abstract
idea under the Guidance (Final Act. 11; see Guidance, 84 Fed. Reg. at 52
(abstract ideas include “[c]ertain methods of organizing human activity,”
such as “commercial . . . interactions (including . . . marketing or sales
activities or behaviors; business relationships)” and “managing personal

6 Examiner’s December 4, 2019 Answer.
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behavior or relationships or interactions between people (including social
activities, teaching, and following rules or instructions)” (footnote
omitted)).7
In addition, Examiner finds that Appellant’s claims require the
performance of “tasks that are otherwise performable in the human mind
(e.g., performing comparisons of faults to stored faults and/or operating
parameters, and identifying a retailer to purchase a specific component or
part)” (Ans. 13; see Guidance, 84 Fed. Reg. at 52 (abstract ideas include
“Mental processes––concepts performed in the human mind (including an
observation, evaluation, judgement, opinion)” (footnote omitted)).
We find no error in Examiner’s finding that Appellant’s claims recite
a judicial exception (see, e.g., Ans. 3). Therefore, we are not persuaded by
Appellant’s contention that its claims do “not include . . . methods of
organizing human activity (including commercial interactions or managing
personal interactions), or mental processes” (Appeal Br. 12–13).
(Step 2A, Prong 2)
Having determined that Appellant’s claims recite a judicial exception,
the Guidance requires an evaluation as to whether the claim as a whole
integrates the recited judicial exception into a practical application of the
exception. See Guidance, 84 Fed. Reg. at 54. The Guidance explains:
[C]ourts have . . . identified examples in which a judicial
exception has not been integrated into a practical application:

7 Examiner finds that Appellant’s “[i]ndependent claims 1 and 19 . . . [stand]
rejected for substantially the same reasons [as Appellant’s claim 10], in that
the generically recited computer components in the apparatus/system and
computer readable media claims add nothing of substance to the underlying
abstract idea” (Final Act. 14).
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 An additional element . . . merely uses a computer as
a tool to perform an abstract idea;
 an additional element adds insignificant extra-solution
activity to the judicial exception; and
 an additional element does no more than generally
link the use of a judicial exception to a particular technological
environment or field of use.
Id. at 55 (footnotes omitted).
We recognize Appellant’s contention that “simply because the steps
can be performed by a human is insufficient to deem the claim ineligible
under § 101” (Reply Br. 2; see also Appeal Br. 13 (Appellant contends that
“whether . . . a human can perform recited claim features is not the test
under which step 2A, prong two is evaluated”)). We find, however, that
Appellant’s contention misses the point. As discussed above, Appellant’s
claimed invention involves methods of organizing human activity and
mental processes––abstract ideas. Specifically, Appellant’s claimed
invention automates the manual process performed by HVAC professionals
(cf. Reply Br. 2 (Appellant contends that its claim 1 “provides an improved
system of enabling the sensing, identification, and categorization of faults as
well as automatic evaluation of installation effectiveness”)). “[M]ere
automation of manual processes using generic computers does not constitute
a patentable improvement in computer technology.” Credit Acceptance
Corp. v. Westlake Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017).
As discussed above, prong two of step 2A requires that additional
elements recited in the claimed invention are identified and evaluated
individually and in combination to determine whether they integrate the
judicial exception into a practical application. Guidance, 84 Fed. Reg. at
54–55. On this record, Examiner finds that Appellant’s claims include
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limitations, i.e., additional elements, relating to a “‘database’, ‘monitoring
system’, ‘monitor module’, [at least one of a temperature sensor, a pressure
sensor, a current sensor, a voltage sensor, and a condensate sensor] . . ., and
[a] ‘customer device’” (see Ans. 11). Examiner further finds:
[T]he claimed “database” is identified as “storing a plurality of
faults”. The claimed “monitoring system” is identified as
including a processor and memory and in communication with
the monitor module. The “monitor module” is identified as
monitoring operating parameters of the HVAC using the recited
sensors. The “sensors” are recited as merely providing HVAC
data to the monitor module. Further, with respect to the
sensors, [Appellant discloses] . . . that the monitor module may
use[] sensors such as “temperature sensors, pressure sensors,
current sensors, voltage sensors, condensate sensors, and the
like, to collect operating parameter data related to the operation
of the HVAC system”. In other words, the sensors are
reasonably understood to generic sensors present on
commercially available HVAC systems, the role of which is to
gather parameter data. The “customer device” is identified as
displaying alerts and commercial retailers to purchase the
component or have the component delivered.
(Ans. 11–12 (citing Spec. ¶¶ 109 and 135).) In sum, the additional elements
of Appellant’s claimed invention store and retrieve information (e.g., faults
from a database), send and receive information over a network (e.g., alerts
and instructions to purchase a component), and engage in data gathering
(e.g., at least one sensor is used as a generic element to gather data, which
Examiner finds is “an insignificant extra-solution activity”) (see Ans. 14).
Stated differently, Examiner finds that Appellant’s claims conduct a
standard, manual, “process of identifying faulty equipment and determining
where to purchase a replacement component using the generic devices as
tools to perform the abstract idea,” wherein “[t]he identified functions of the
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recited additional elements reasonably constitute a general linking of the
abstract idea to a generic technological environment” (id.).
We find no error in Examiner’s finding that Appellant’s claims fail
“to present an additional element(s) which . . . integrates the judicial
exception into a practical application” (Ans. 14).
Appellant contends that “[s]imilar to the claims addressed in McRO,
Inc., the claims of the present application are not simply a computer-
automated way of carrying out a known or obvious process” (Appeal Br. 11
(citing in McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299
(Fed. Cir. 2016))). Specifically, Appellant contends that its “claims provide
an improvement for enabling an HVAC system to recognize, based on data
from [on at least one] . . . sensor[], when the HVAC system is experiencing a
fault that can be designated for self-maintenance” and
display[] an identification of at least one replacement part to the
customer and allowing the customer to schedule a delivery or
purchase the identified replacement part. That is, faults of the
HVAC system are detected by sensors of the HVAC system
and communicated to a customer device where the customer
can select the identified replacement part for delivery or
purchase.
(Appeal Br. 11–12; see also id. at 13 (“Appellant respectfully asserts that
claim 1 . . . includes an HVAC system that not only senses and categorizes
faults but also alerts whether a fault can be handled by a customer,
designating the fault as self-maintenance.”)). Stated differently, Appellant
contends that its claimed invention serves to automate the manual process
performed by a HVAC service professional. We are not persuaded that the
automation of a manual process constitutes a patentable improvement in this
technology. See Credit Acceptance Corp., 859 F.3d at 1055.
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Unlike Appellant’s claimed invention, McRO’s claims focused on a
specific improvement in computer animation, wherein a combined order of
specific rules rendered information into a specific format used and applied to
create a desired result, i.e., a sequence of synchronized, computer animated
characters. See McRO, 837 F.3d at 1314–15. Thus, contrary to McRO,
where the ultimate product produced was a synchronized computer
animation that was itself the transformative use, Appellant’s claimed
invention utilizes known devices, mental processes, and methods of
organizing human activity to automate a manual process.
Appellant’s reliance on Thales Visionix Inc. v. United States, 850 F.3d
1343 (Fed. Cir. 2017), is likewise unavailing (see Appeal Br. 18 (Appellant
contends that its claims “are analogous to the claims addressed in Thales,”
which “[t]he CAFC held . . . is analogous to the claim in . . . Diehr.”)). In
Thales, the Federal Circuit analogized the claims, which it found not to be
directed to an abstract idea, to those found patent-eligible in Diehr. The
Federal Circuit reasoned that the claims in Thales were directed to using
sensors and algorithms (the application of physics to create an improved
technique) “in a non-conventional manner” to improve measuring and
orienting moving objects, as in Diehr where an algorithm and sensor were
used to improve a rubber-making process. Thales, 850 F.3d at 1348–49. As
discussed in Step 2B below, Appellant failed to establish that any additional
element (i.e., at least one sensor), or combination of additional elements, of
its claimed invention is used in an unconventional manner.
Similarly, in BASCOM, the claims recited a “specific method of
filtering Internet content” requiring “the installation of a filtering tool at a
specific location, remote from the end-users, with customizable filtering
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features specific to each end user.” BASCOM Global Internet Servs., Inc. v.
AT&T Mobility LLC, 827 F.3d 1341, 1345–46, 1350 (Fed. Cir. 2016).
Unlike Appellant’s claimed method, which as discussed above, recasts the
necessary and inherent steps of a prior manual process in terms of an
automated process, in BASCOM the “specific method of filtering Internet
content cannot be said, as a matter of law, to have been conventional or
generic.” Id. at 1350; see id. (“Filtering content on the Internet was already
a known concept, and the patent describes how its particular arrangement of
elements is a technical improvement over prior art ways of filtering such
content.”). In upholding the patent-eligibility of the claims, the BASCOM
court emphasized that, unlike Appellant’s claims on this record, “[t]he
claims [in BASCOM] do not merely recite the abstract idea of filtering
content along with the requirement to perform it on the Internet, or to
perform it on a set of generic computer components. Such claims would not
contain an inventive concept.” Id. at 1350. Instead, BASCOM’s installation
of a filtering tool at a specific location, remote from the end users, with
customizable filtering features specific to each end user, provided an
inventive concept in that it gave the filtering tool both the benefits of a filter
on a local computer and the benefits of a filter on the ISP server. Id. at
1350; see Appeal Br. 17 (Appellant explains that Bascom held that “[w]hen
considering the elements of the claims of the present application as an
ordered combination, it is clear that the claims are directed to patent eligible
subject matter”).
Appellant’s contentions regarding DDR Holdings, LLC v. Hotels.com,
L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014), suffer the same deficiency (see
Appeal Br. 16–28). As Appellant explains, “the claims at issue [in DDR]
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include patent eligible subject matter because they do not merely recite the
performance of some business practice known from the pre-Internet world
along with the requirement to perform it on the Internet” (id. at 16 (internal
quotation mark omitted)). Instead, the claims in DDR Holdings addressed a
problem unique to the Internet in a manner that was “not merely the routine
or conventional use of the Internet.” DDR, 773 F.3d at 1259. In particular,
rather than the expected behavior of simply sending the website visitor to a
third-party website, the claimed invention behaved in a manner different
than expected by sending a website visitor to a hybrid web page presenting
information from a third-party with the look and feel of the host website. Id.
at 1258–59. In contrast, on this record, Appellant automated a previously
known manual process and, as discussed in Step B below, have not
identified any specific limitation (i.e., at least one sensor or present a
customer with a solution on the customer’s device, as HVAC professionals
are known to provide) beyond the judicial exception that is not well-
understood, routine, and conventional in this field (cf. Appeal Br. 17
(Appellant contends that its “claims provide an improved system of enabling
the sensing and identification of self-maintenance faults in an HVAC system
and then presenting a customer with a solution on the customer’s devices,”
wherein “the monitoring system is implemented using sensors of the HVAC
system to improve operation and effectiveness”)).
For the foregoing reasons, we are not persuaded by Appellant’s
reliance on Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016)
(see Appeal Br. 19). In contrast to the claims on this record, the Enfish
Court held that claims to a data storage and retrieval system for computer
memory were not directed to an abstract idea because they involved more
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than storing, organizing, and retrieving memory in a logical table. Enfish,
822 F.3d at 1336–37. More specifically, the claims in Enfish were directed
to a self-referential table (“means for configuring” algorithm) that functions
differently than conventional database structures. Id. at 1337. This
unconventional database structure, or technological improvement, in Enfish
provided increased flexibility, faster search times, and smaller memory
requirements. Id.
We are not persuaded by Appellant’s contention that its “claim 1 can
be compared to Example 37[8] of the USPTO’s subject matter eligibility
examples regarding relocation of icons on a graphical user interface,”
because
claim 1 of the present application recites a specific manner of
monitoring an HVAC system with sensors include[d] in the
system to identify faults to alert a customer and further
categorizes an identified fault as self-maintenance. Claim 1
additionally provides the customer with a solution to fix the
fault when the fault is designated as self-maintenance, allowing
customer selection of a displayed solution, . . . providing a
specific improvement over the prior art.
(Appeal Br. 14; see generally Reply Br.9 1–2.) As discussed above, the
additional elements of Appellant’s claimed invention store and retrieve
information (e.g., faults from a database), send and receive information over
a network (e.g., alerts and instructions to purchase a component), and engage
in data gathering (e.g., at least one sensor is used as a generic element to

8 Example 37 – Relocation of Icons on a Graphical User Interface, Subject
Matter Eligibility Examples: Abstract Ideas, 1–5, available at
https://www.uspto.gov/sites/default/files/documents/101_examples_37to42_
20190107.pdf.).
9 Appellant’s February 3, 2020 Reply Brief.
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gather data, which Examiner finds is “an insignificant extra-solution
activity”), wherein “[t]he identified functions of the recited additional
elements reasonably constitute a general linking of the abstract idea to a
generic technological environment” (see Ans. 14). Thus, similar to claim 2
of Example 37, wherein the “additional element does not integrate the
abstract idea into a practical application because it does not impose any
meaningful limits on practicing the abstract idea,” when the additional
elements of Appellant’s claimed invention are considered individually and in
combination, they fail to integrate the judicial exception into a practical
application (see generally Guidance, 84 Fed. Reg. at 55; see also Example
37 at claim 2’s Step 2A – Prong 2 analysis). In contrast, claim 1 of Example
37 provides “additional elements [that] recite a specific manner of
automatically displaying icons to the user based on usage which provides a
specific improvement over prior systems, resulting in an improved user
interface for electronic devices” (see Example 37 at claim 1’s Step 2A –
Prong 2 analysis).
For the same reasons, we find that Appellant’s claims are more similar
to the analysis provided for claim 2 of Example 42,10 wherein “[t]he claimed
computer components are recited at a high level of generality and are merely
invoked as tools to perform an existing medical records update process” than
to the analysis provided for claim 1 of Example 42, wherein “the additional
elements recite a specific improvement over prior art systems by allowing

10 Example 42 – Method for Transmission of Notifications When Medical
Records Are Updated, Subject Matter Eligibility Examples: Abstract Ideas,
17–20, available at https://www.uspto.gov/sites/default/files/
documents/101_examples_37to42_20190107.pdf.).
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remote users to share information in real time in a standardized format
regardless of the format in which the information was input by the user” (see
Example 42 at Step 2A – Prong 2 analysis, for each of claims 1 and 2; see
also Appeal Br. 15 (Appellant contends that its claim 1 is similar to claim 1
of Example 42 because it “recites a specific improved manner of monitoring
an HVAC system to alert a customer of faults and provide solutions”); cf.
Guidance, 84 Fed. Reg. at 55 (providing examples in which a judicial
exception has not been integrated into a practical application)).
We are also not persuaded by Appellant’s reliance on claim 1 of
Example 4011 (Reply Br. 2). The Step 2A – Prong 2 analysis of Example
40’s claim 1 explains:
The claim recites the combination of additional elements of
collecting at least one of network delay, packet loss, or jitter
relating to the network traffic passing through the network
appliance, and collecting additional Netflow protocol data
relating to the network traffic when the collected network delay,
packet loss, or jitter is greater than the predefined threshold.
Although each of the collecting steps analyzed individually may
be viewed as mere pre- or post-solution activity, the claim as a
whole is directed to a particular improvement in collecting
traffic data. Specifically, the method limits collection of
additional Netflow protocol data to when the initially collected
data reflects an abnormal condition, which avoids excess traffic
volume on the network and hindrance of network performance.
The collected data can then be used to analyze the cause of the
abnormal condition. This provides a specific improvement over
prior systems, resulting in improved network monitoring. The
claim as a whole integrates the mental process into a practical

11 Example 40 – Adaptive Monitoring of Network Traffic Data, Subject
Matter Eligibility Examples: Abstract Ideas, 10–13, available at
https://www.uspto.gov/sites/default/files/documents/101_examples_37to42_
20190107.pdf.)
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application. Thus, the claim is eligible because it is not directed
to the recited judicial exception.
(Example 40 at claim 2: Step 2A – Prong 2 analysis (emphasis added).) As
the foregoing analysis explains, the claim, when viewed as a whole, results
in a specific improvement in the technology (id.). We do not find and
Appellant has not identified a corollary improvement in Appellant’s claimed
invention (see Reply Br. 2 (Appellant contends only that its “claim 1 is not
simply ‘mere instructions to implement an abstract idea on a computer’ or
‘mere data gathering implemented by elements identified as generic and
interchangeable as claimed.’”)). In contrast, to Appellant’s reliance on claim
1 of Example 40, we find Example 40’s claim 2 to more accurately reflect
Appellant’s claimed invention, wherein:
The claim recites two additional elements: collecting at least
one of network delay, packet loss, or jitter relating to the
network traffic passing through the network appliance, and that
a generic network appliance performs the comparing step. The
collecting step is recited at a high level of generality (i.e., as a
general means of gathering network traffic data for use in the
comparison step), and amounts to mere data gathering, which is
a form of insignificant extra-solution activity. The network
appliance that performs the comparison step is also recited at a
high level of generality, and merely automates the comparison
step. Each of the additional limitations is no more than mere
instructions to apply the exception using a generic computer
component (the network appliance).
(Example 40 at claim 2: Step 2A – Prong 2 analysis.)
In sum, although Appellant contends that its claims “include
‘additional features’ that ensure the claims are more than a drafting effort
designed to monopolize any alleged abstract idea,” Appellant failed to
adequately identify and explain, on this record, how those additional features
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of the claims integrate the judicial exceptions into a practical application
(Appeal Br. 17).
(Step 2B)
Having determined that Appellant’s claims: (1) recite a judicial
exception and (2) do not integrate that exception into a practical application,
the Guidance requires that we evaluate whether Appellant’s claims: (a) add
a specific limitation beyond the judicial exception that is not “well-
understood, routine, conventional” in the field or (b) simply appends well-
understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception.
Guidance, 84 Fed. Reg. at 52–56.
Appellant discloses:
Heating, ventilation, and air conditioning (HVAC) systems . . .
periodically require maintenance and repair. When an HVAC
system malfunctions or is in need of maintenance, a user of the
HVAC system, for example a resident or owner of a building
corresponding to the HVAC system may contact a contractor to
perform the repair or maintenance.
(Spec. ¶ 4.) As discussed above, Appellant’s claims relate to HVAC
maintenance and repair, which as Appellant discloses, is well-known,
routine and conventional to contractors in the field of HVAC repair and/or
maintenance.
In addition, as Examiner explains, Appellant discloses that its “system
can be comprised of software, firmware operating on a processor or other
suitable components that provide the described functionality” and “hardware
elements identified as ‘suitable’ to perform the processes by executing the
functions embodied in executable code” (Ans. 15 (citing Spec. ¶¶ 159–
160)). Stated differently, absent evidence to the contrary, the hardware and
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software elements of Appellant’s claimed invention are well-known, routine,
and conventional in this field. Thus, we find no error in Examiner’s finding
that Appellant’s “claims constitute[] known and conventional uses of generic
computing technology” (id. at 14).
In sum, Appellant’s claimed invention automates a manual process
which combines conventional elements (e.g., at least one known sensor)
with the mental processes and method of organizing human behavior applied
by HVAC service professionals. Thus, we find that Appellant’s claimed
invention lacks subject matter eligibility.
CONCLUSION
The preponderance of evidence of record supports Examiner’s finding
that Appellant’s claimed invention is directed to patent ineligible subject
matter. The rejection of claims 1, 10, and 19 under 35 U.S.C. § 101 is
affirmed. Claims 2–9 and 28 are not separately argued and fall with claim 1.
Claims 11–18 and 29 are not separately argued and fall with claim 10.
Claims 20–27 and 30 are not separately argued and fall with claim 19.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–30 101 Eligibility 1–30

TIME PERIOD FOR 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).
AFFIRMED