Hasmukh Dholakiya

Patent Trials and Appeals Board

Jan 30, 2020

12910200 - (D) (P.T.A.B. Jan. 30, 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.
12/910,200 10/22/2010 Hasmukh Dholakiya P/6473-116 7527
2352 7590 01/30/2020
OSTROLENK FABER LLP
845 THIRD AVENUE
8TH FLOOR
NEW YORK, NY 10022
EXAMINER
OFORI-AWUAH, MAAME
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
01/30/2020 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):
pat@ostrolenk.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HASMUKH DHOLAKIYA
____________

Appeal 2018-008842
Application 12/910,200
Technology Center 3600
____________

Before ST. JOHN COURTENAY III, MARC S. HOFF, and
JOYCE CRAIG, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a Final rejection of
claims 1–19. We have jurisdiction over the pending claims under 35 U.S.C.
§ 6(b). We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). According to Appellant, the real party in interest is
Appellant, Hasmukh Dholakiya. See Appeal Br. 3.

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STATEMENT OF THE CASE
Introduction
Embodiments of Appellant’s invention “relates generally to jewelry
and selling of jewelry and, more particularly, to selling pieces of jewelry that
include gemstones.” Spec. ¶ 1.

Rejections
A. Claims 1–19 are rejected under 35 U.S.C. § 101, as being directed to a
judicial exception, without significantly more. See Final Act. 7.
B. Claims 1–11, and 13–19 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being obvious over the combined teachings and
suggestions of Yeko, SR et al. (US 2006/0020524 A1, published Jan.
26, 2006) (hereinafter “Yeko”) in view of in Moryto (US
2009/0070273 A1, published Mar. 12, 2009). See Final Act. 10.
C. Claim 12 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
obvious over the combined teachings and suggestions of Yeko,
Moryto, and Hsien-Chung (US 5,351,378, issued Oct. 4, 1994). See
Final Act. 17.
Issues on Appeal
Did the Examiner err in rejecting claims 1–19 under 35 U.S.C. § 101,
as being directed to a judicial exception, without significantly more?
Did the Examiner err in rejecting claims 1–19 under pre-AIA
35 U.S.C. § 103(a), as being obvious over the combined teachings and
suggestions of the cited references?

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ANALYSIS
We reproduce infra independent claim 1 in Table One. We have
considered all of Appellant’s arguments and any evidence presented. To the
extent Appellant has not advanced separate, substantive arguments for
particular claims, or other issues, such arguments are waived. See 37 C.F.R.
§ 41.37(c)(1)(iv).

Rejection A under 35 U.S.C. § 101
Principles of Law
A. Section 101
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to
include implicit exceptions: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. E.g., Alice Corp. 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.
Alice, 573 U.S. 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.”).
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Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); 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 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
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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 (quotation marks omitted).
“A claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (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 § 101 Guidance
The U. S. Patent and Trademark Office (USPTO) published revised
guidance on the application of § 101. USPTO’s January 7, 2019
Memorandum, 2019 Revised Patent Subject Matter Eligibility Guidance, 84
Fed. Reg. 50 (“2019 Memorandum”).2 Under that guidance, we first look to
whether the claim recites:
(1) (see 2019 Memorandum Step 2A – Prong One) 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 The Office issued a further memorandum on October 17, 2019 (the
“October 2019 Memorandum”) clarifying guidance of the January 2019
Memorandum in response to received public comments. See https://
www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.pdf.
Moreover, “[a]ll USPTO personnel are, as a matter of internal agency
management, expected to follow the guidance.” January 2019 Memorandum
at 51; see also October 2019 Memorandum at 1.
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(2) (see 2019 Memorandum Step 2A – Prong Two) additional
elements that integrate the judicial exception into a practical
application (see MPEP § 2106.05(a)–(c), (e)–(h)).3
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See 2019 Memorandum Step 2B.

Because there is no single definition of an “abstract idea” under Alice
step 1, the PTO has recently synthesized, for purposes of clarity,
predictability, and consistency, key concepts identified by the courts as
abstract ideas to explain that the “abstract idea” exception includes the
following three groupings:
1. Mathematical concepts—mathematical relationships,
mathematical formulas or equations, mathematical
calculations;

3 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See 2019 Memorandum - Section III(A)(2).
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2. Mental processes— concepts performed in the human mind
(including an observation, evaluation, judgment, opinion);
and
3. Certain methods of organizing human activity—fundamental
economic principles or practices (including hedging,
insurance, mitigating risk); commercial or legal interactions
(including agreements in the form of contracts; legal
obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior
or relationships or interactions between people (including
social activities, teaching, and following rules or
instructions).
See 2019 Memorandum, 84 Fed. Reg. at 52.
According to the 2019 Memorandum, “[c]laims that do not recite
[subject] matter that falls within these enumerated groupings of abstract
ideas should not be treated as reciting abstract ideas,” except in rare
circumstances. Even if the claims recite any one of these three groupings of
abstract ideas, these claims are still not “directed to” a judicial exception
(abstract idea), and thus are patent eligible, if “the claim as a whole
integrates the recited judicial exception into a practical application of that
exception.” See 2019 Memorandum, 84 Fed. Reg. at 53.
For example, limitations that are indicative of integration into a
practical application include:
1. Improvements to the functioning of a computer, or to any
other technology or technical field — see MPEP
§ 2106.05(a);
2. Applying the judicial exception with, or by use of, a
particular machine — see MPEP § 2106.05(b);
3. Effecting a transformation or reduction of a particular
article to a different state or thing — see MPEP
§ 2106.05(c); and
4. Applying or using the judicial exception in some other
meaningful way beyond generally linking the use of the
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judicial exception to a particular technological
environment, such that the claim as a whole is more than
a drafting effort designed to monopolize the exception
— see MPEP § 2106.05(e).
In contrast, limitations that are not indicative of integration into a
practical application include:
1. Adding the words “apply it” (or an equivalent) with the
judicial exception, or merely include instructions to
implement an abstract idea on a computer, or merely uses a
computer as a tool to perform an abstract idea — see MPEP
§ 2106.05(f);
2. Adding insignificant extra-solution activity to the judicial
exception — see MPEP § 2106.05(g); and
3. Generally linking the use of the judicial exception to a
particular technological environment or field of use — see
MPEP § 2106.05(h).
See 2019 Memorandum, 84 Fed. Reg. at 54–55 (“Prong Two”).
2019 Memorandum, Step 2A, Prong One4
The Judicial Exception
Under the 2019 Memorandum, we begin our analysis by first
considering whether the claims recite any judicial exceptions, including
certain groupings of abstract ideas, in particular: (a) mathematical concepts,
(b) mental steps, and (c) certain methods of organizing human activities.
The Examiner concludes that independent claim 10 recites an abstract
idea, because the claim describes:
The jewelry information collection, association and storage
concept described in the claim is similar to the data collection,

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

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recognition and storage concept that found to be abstract in
Content Extraction and Transmission LLC v. Wells Fargo Bank
(Fed. Cir. 2014).
Although the claim enumerates the type of information (i.e.
purchase and use of the jewelry and personal story) that is
acquired, stored and analyzed, the Federal Circuit has explained
in Electric Power Group and Digitech that the mere selection and
manipulation of particular information by itself does not make an
abstract concept any less abstract.
Final Act. 8 (emphasis added).
In this Decision, we apply the Director’s 2019 Memorandum
de novo. In Table One below, we identify in italics the specific claim
limitations that we conclude recite an abstract idea. We identify in bold the
additional (non-abstract) claim limitations that are generic computer
components.
TABLE ONE5
Independent Claim 10 2019 Memorandum
[a] A method of selling
jewelry, the method
comprising:
A method (process) is a statutory
subject matter class. See 35 U.S.C.
§ 101 (“Whoever invents or
discovers any new and useful
process, machine, manufacture, or
composition of matter, or any new
and useful improvement thereof,
may obtain a patent therefor, subject
to the conditions and requirements of
this title.”).

5 Based upon Appellant’s arguments, and our discretion under 37 C.F.R.
§ 41.37(c)(1)(iv), we decide the appeal of § 101 Rejection A of claims 1–19
on the basis of representative method claim 10.

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Independent Claim 10 2019 Memorandum
Abstract idea: A method of selling
jewelry is a fundamental economic
practice including the subcategories
of commercial interactions such as
agreements in the form of contracts,
sales activities or behaviors and
business relations that could also be
performed alternatively as a mental
step. See 2019 Memorandum 52.

The jewelry is a non-abstract
limitation.

[b] providing jewelry
including a setting and a
gemstone;
The jewelry, setting, and gemstone
are additional non-abstract
limitations.

[c] providing the jewelry to a
customer together with an
information tag associated
with the jewelry, wherein
the information tag has a
unique one to one correlation
with the piece of jewelry, the
correlation being established
by an identification code,
The jewelry and information tag are
additional non-abstract limitations.

The unique identification code on the
information tag is data.
[d] wherein the identification
code is an alphanumeric
string that includes a unique
one to one correlation with
the piece of jewelry and the
information tag, wherein the
identification code is placed
on the information tag and
the piece of jewelry
The unique identification code on the
information tag is data.

The piece of jewelry, information
tag, setting, and gemstone are
additional non-abstract limitations.

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Independent Claim 10 2019 Memorandum
including both the setting
and the gemstone,

[e] the information tag
reciting an initial story of the
jewelry as presented to the
customer, the initial story
being maintained in a server
associated with a website;
and
Abstract idea: Providing (reciting)
the story or history of the jewelry is
a certain method of organizing
human activity, including
fundamental economic principles or
practices, further including
commercial or legal interactions
(including advertising, marketing or
sales activities or behaviors, and
business relations). See 2019
Memorandum, 84 Fed. Reg. at 52.

[f] providing a website on a
computer to the customer for
registration of the jewelry,
the website permitting the
customer to enter personal
information regarding
purchase and use of the
jewelry in said computer in
order to personalize the story
to provide a personal story of
the piece of jewelry, wherein
the personal story of the
piece of jewelry is associated
with the identification code
and maintained in a server
associated with a website;
Abstract idea: Entering personal
information regarding the purchase
and use of the jewelry is a certain
method of organizing human
activity, including fundamental
economic principles or practices,
further including commercial or
legal interactions, and business
relations). See 2019 Memorandum,
84 Fed. Reg. at 52.

The identification code on the
information tag is data.
[g] wherein the jewelry and
the information tag are
associated and have a one to
one relationship, the
information tag uniquely
identifying the jewelry,
The unique identification code on the
information tag is data.

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Independent Claim 10 2019 Memorandum
wherein the website on a
computer provides for
registration of the
information available in the
information tag in a storage
media.
The jewelry, information tag,
computer, and storage media are
additional non-abstract limitations.

Abstract Ideas — Mental Processes
and Fundamental Economic Practices
After considering representative method claim 10 as a whole, we
conclude the recited italicized functions shown in Table One implement a
fundamental economic practice that falls into the subcategories of
commercial interactions such as agreements in the form of contracts, sales
activities or behaviors and business relations that could also be performed
alternatively as a mental process.6 See 2019 Memorandum, 84 Fed. Reg. at
52. See also “Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307,

6 If a method can be performed by human thought alone, or by a human
using pen and paper, it is merely an abstract idea and is not patent eligible
under § 101. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d
1366, 1372–73 (Fed. Cir. 2011); “That purely mental processes can be
unpatentable, even when performed by a computer, was precisely the
holding of the Supreme Court in Gottschalk v. Benson.” CyberSource, 654
F.3d at 1375. See also Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d
1138, 1146–47 (Fed. Cir. 2016). Moreover, “[u]sing a computer to
accelerate an ineligible mental process does not make that process patent-
eligible.” Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can. (U.S.),
687 F.3d 1266, 1279 (Fed. Cir. 2012); see also OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (“[R]elying on a
computer to perform routine tasks more quickly or more accurately is
insufficient to render a claim patent eligible.”).

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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.’).”
2019 Memorandum, 84 Fed. Reg. at 52 n.14 (emphasis omitted).
“An abstract idea can generally be described at different levels of
abstraction.” Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir.
2016). Merely combining several abstract ideas does not render the
combination any less abstract. See RecogniCorp, LLC v. Nintendo Co., 855
F.3d 1322, 1327 (Fed. Cir. 2017) (“Adding one abstract idea (math) to
another abstract idea . . . does not render the claim non-abstract.”);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94 (Fed. Cir.
2016) (determining the pending claims were directed to a combination of
abstract ideas).
For at least these reasons, we conclude that representative independent
method claim 10 and system claim 1 (which recites similar limitations of
commensurate scope) recite the specific types of abstract ideas identified
above in Table One.
Additional Limitations
As emphasized in bold in Table One, supra, we note the additional
non-abstract limitations recited in representative method claim 10: a piece
of jewelry, an information tag associated with the piece of jewelry, wherein
the jewelry includes a setting and a gemstone; also the claim recites a
computer, and a server. We further note the supporting exemplary
descriptions of generic computer components in the Specification, for
example:
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Each step in the method and system may be implemented by a
computer, microprocessor, or a network of computers, and
information (including the information tag) may be stored on a
database, a network of computers and/or any other computer
readable storage medium.
Spec. ¶ 51.
We emphasize that McRO, Inc. v. Bandai Namco Games America
Inc., (837 F.3d 1299 (Fed. Cir. 2016)), guides: “[t]he abstract idea exception
prevents patenting a result where ‘it matters not by what process or
machinery the result is accomplished.’” 837 F.3d at 1312 (quoting O’Reilly
v. Morse, 56 U.S. 62, 113 (1854)) (emphasis added). See supra Table One.
Because we conclude all claims 1–19 on appeal recite an abstract idea, as
identified above, under Step 2A, Prong One, we proceed to Step 2A, Prong
Two.
2019 Memorandum, Step 2A, Prong Two
Integration of the Judicial Exception into a Practical Application
Pursuant to the 2019 Memorandum, we consider whether there are
additional elements set forth in the claims that integrate the judicial
exception into a practical application. See 2019 Memorandum, 84 Fed. Reg.
at 54–55.

MPEP § 2106.05(a)
Improvements to the Functioning of a Computer or
to Any Other Technology or Technical Field

Citing to Enfish in support, Appellant argues:
Applicant submits that the claimed subject matter is an
improvement to a technological field of a system to sell jewelry
which provides information about the jewelry including history
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of it as well as enable other buyers to add their information, and
thus amounts to significantly more than a judicial exception.
Appeal Br. 18 (emphasis added).
Appellant further avers:
The Amended claims offers a technical solution that
provides the consumer with a much simpler and streamlined
approach to get an authenticated story behind the manufacture
and history of the jewelry. The present invention solves
numerous problem not addressed by the prior art: (1)
authenticating the story behind the manufacture of the jewelry
and ensuring that portions of the jewelry have not been changed
(e.g. the gemstone has not been swapped out). (2)
authenticating, storing and maintaining the personal history and
personal story of the piece of the jewelry, the personal story of
the piece of the jewelry being associated with the identification
code and maintained in a server associated with a website.
Appeal Br. 19 (emphasis added).
Enfish
We note that the Enfish court held that the subject claims “are not
directed to an abstract idea within the meaning of Alice. Rather, they are
directed to a specific improvement to the way computers operate, embodied
in the self-referential table.” Enfish, LLC v. Microsoft Corp., 822 F.3d
1327, 1336 (Fed. Cir. 2016) (emphasis added).
As found by the Enfish court, the structural requirements of prior
databases required a programmer to predefine a structure and subsequent
data entry had to conform to that structure. See Enfish, 822 F.3d at 1337.
However, the “database of the present invention does not require a
programmer to preconfigure a structure to which a user must adapt data
entry.” Id.
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We emphasize that the self-referential database table considered by
the court in Enfish was found to be a specific type of data structure that was
designed to improve the way a computer stores and retrieves data in
memory. Enfish, 822 F.3d at 1339. Because the Enfish court found the
claimed self-referential database table improved the way the computer stored
and retrieved data, the court concluded that the Enfish claims were not
directed to an abstract idea, and thus ended the eligibility analysis at Alice
step one. Id. at 1336.
Here, Appellant has not shown that any of the features of the claims
before us on appeal improve the way the recited generic computer or server
stores and retrieves data, in a manner analogous to that found by the court in
Enfish. See Appellant’s independent claims 1 and 10. Although Appellant’s
claims 1 and 10 include a generic “computer” and “server,” we find
Appellant’s claims 1–19 are silent regarding any mention of a database,
must less any mention of a database storage device that includes a self-
referential database table of the type found by the Enfish court to improve
the way a computer stores and retrieves data in memory.
Therefore, on this record, we are not persuaded that Appellant’s claimed
invention improves the recited computer or server functionality or
efficiency, or otherwise changes the way the claimed generic computer
components function, at least in the sense contemplated by the Federal
Circuit in Enfish.
However, the recited method of selling jewelry includes several
abstract ideas (mental steps and a fundamental economic practice), as
detailed in Table One above. To the extent the informational content of the
information tag might arguendo be an improvement over prior art gemstone
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certifications and the like, we note 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). See also Synopsys, 839 F.3d at 1151 (“[A] claim for a new
abstract idea is still an abstract idea.”) (emphasis omitted);
Moreover, 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
recited computer and server (claims 1 and 10) include more than mere
instructions to perform the recited functions to qualify as an improvement to
an existing technology.
As discussed above, we conclude Appellant’s generic computer
implementation performs a method of organizing human activity including
fundamental economic practices that can be performed alternatively as
mental processes. See independent Claims 1 and 10. Moreover, the “‘mere
automation of manual processes using generic computers’ . . . ‘does not
constitute a patentable improvement in computer technology,’” Trading
Techs. Int’l v. IBG LLC, 921 F.3d 1378, 1384 (Fed. Cir. 2019) (quoting
Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1055 (Fed. Cir.
2017).
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Accordingly, on this record, we conclude that independent claims 1
and 10 do not recite an improvement to the functionality of a computer or
other technology or technical field. See MPEP § 2106.05(a).
MPEP §§ 2106.05(b) and (c)
The Bilski Machine-or-Transformation test (“MoT”)

We note the Supreme Court cautions that the MoT test is not the sole
test, but may provide a useful clue:
This Court’s precedents establish that the machine-or-
transformation test is a useful and important clue, an
investigative tool, for determining whether some claimed
inventions are processes under § 101. The machine-or-
transformation test is not the sole test for deciding whether an
invention is a patent-eligible “process.”

Bilski, 561 U.S. at 604 (emphasis added).
Here, Appellant advances no arguments that any of method claims
10–19 are tied to a particular machine, or transform an article to a different
state or thing. See MPEP § 2106.05(c).

MPEP § 2106.05(e) — Meaningful Claim Limitations7
Appellant does not advance further substantive, persuasive arguments
as to any specific “meaningful” claim limitations, such as those of the types

7 See 2019 Memorandum, 84 Fed. Reg. 55, citing MPEP § 2106.05(e):
“[A]pply[ing] or us[ing] the judicial exception in some other meaningful
way beyond generally linking the use of the judicial exception to a particular
technological environment, such that the claim as a whole is more than a
drafting effort designed to monopolize the exception.” (emphasis added).

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addressed under MPEP § 2106.05(e), that impose meaningful limits on the
judicial exception.
As discussed above, we conclude that the recited italicized functions
shown in Table One could also be performed alternatively as a mental
process. See 2019 Memorandum, 84 Fed. Reg. at 52. As also discussed
above, we see nothing in Appellant’s claims that specifically improves the
efficiency of the recited computer and server (claims 1 and 10), or another
technology or technical field, as addressed above under MPEP § 2106.05(a).
Accordingly, on this record, we conclude representative independent
claim 10 has no other argued meaningful limitations, as considered under
section 2106.05(e) of the MPEP, pursuant to the 2019 Memorandum.

MPEP § 2106.05(f)
Merely including instructions to implement
an abstract idea on a computer, or
Merely using a computer as a tool
to perform an abstract idea

We conclude Appellant’s claimed invention merely implements the
abstract idea using instructions executed on generic computer components,
as depicted in bold type in Table One, and as supported in our reproduction
of the Specification, paragraph 51, supra. Thus, we conclude Appellant’s
claims merely use a computer/processor as a tool to perform an abstract idea.

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MPEP § 2106.05(g)
Adding insignificant extra-solution activity
to the judicial exception
As mapped in the right column of Table One, supra, we conclude that
representative independent method claim 10 recites extra or post-solution
activities that courts have determined to be insufficient to transform
judicially excepted subject matter into a patent-eligible application. See
MPEP § 2106.05(g); 2019 Memorandum, 84 Fed. Reg. at 55 n.31.

MPEP § 2106.05(h)
Generally linking the use of the judicial exception to a particular
technological environment or field of use

The Supreme Court guides: “the prohibition against patenting
abstract ideas ‘cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment’ or [by] adding
‘insignificant postsolution activity.’” Bilski, 561 U.S. at 611–12, (quoting
Diehr, 450 U.S. at 191–92).
Appellant advances no lack of preemption argument in the Appeal
Brief. Nor do claims 1–19 on appeal present any other issues as set forth in
the 2019 Memorandum regarding a determination of whether the additional
generic elements integrate the judicial exception into a practical application.
See 2019 Memorandum, 84 Fed. Reg. at 55.
Thus, under Step 2A, Prong Two (MPEP §§ 2106.05(a)–(c) and (e)–
(h)), we conclude claims 1–19 do not integrate the judicial exception into
a practical application. Therefore, we proceed to Step 2B, The Inventive
Concept.
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The Inventive Concept – Step 2B
Under the 2019 Memorandum, only if a claim: (1) recites a judicial
exception, and (2) does not integrate that exception into a practical
application, do we then look to whether the claim adds a specific limitation
beyond the judicial exception that is not “well-understood, routine,
conventional” in the field (see MPEP § 2106.05(d)); or, simply appends
well-understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception.

Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018)
Berkheimer was decided by the Federal Circuit on February 8, 2018.
On April 19, 2018, the PTO issued the Memorandum titled: “Changes in
Examination Procedure Pertaining to Subject Matter Eligibility, Recent
Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.)” (hereinafter
“Berkheimer Memorandum”).8
Under Step 2B, the Examiner finds, inter alia:
Addressing representative claim 10, the claim recites
additional elements including a website on a computer, a server,
and a storage media. However, these elements are recited a
generic manner (see specification P[0051]) and operate
using well-understood, routine and conventional functions
(see July 2015 Update, section IV, p. 7), such as:
• receiving/storing data (e.g. initial story maintained in a server,
permitting customer to enter personal information, information
tag in a storage media, etc.)
• receiving or transmitting data over a network (providing a
website for registration, etc.).

8 Available at https://www.uspto.gov/sites/default/files/documents/memo-
berkheimer-20180419.PDF.
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Moreover, steps of “providing jewelry including a setting
and a gemstone; providing the jewelry to a customer together
with an information tag associated with the jewelry. . .”
represents little more than pre-solution activity and does not
serve to provide “significantly more” than the abstract idea.
Even considered as an ordered combination, the additional
limitations of claim 10 do not add anything further than when
they are considered individually.
Thus, under Step 2B of the Mayo framework, claim 10 is
ineligible as claim 1 does not recite additional elements which
result in significantly more than the abstract idea itself.
Final Act. 9 (emphasis added).
Appellant has not invoked Berkheimer or advanced arguments
rebutting or otherwise traversing the Examiner’s findings. Further,
regarding the use of the recited generic computer components identified
above in Table One, the Supreme Court has held that “the mere recitation of
a generic computer cannot transform a patent-ineligible abstract idea into a
patent-eligible invention.” Alice, 573 U.S. at 223. Our reviewing court
provides additional guidance: See FairWarning, 839 F.3d at 1096 (“[T]he
use of generic computer elements like a microprocessor or user interface do
not alone transform an otherwise abstract idea into patent-eligible subject
matter.”); OIP Techs, 788 F.3d at 1363 (claims reciting, inter alia, sending
messages over a network, gathering statistics, using a computerized system
to automatically determine an estimated outcome, and presenting offers to
potential customers found to merely recite “‘well-understood, routine
conventional activit[ies],’ either by requiring conventional computer
activities or routine data-gathering steps” (alteration in original)).
This reasoning is applicable here. Therefore, on the record before us,
Appellant has not shown that the claims on appeal add a specific limitation
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beyond the judicial exception that is not well-understood, routine, and
conventional, when the claim limitations are considered both individually
and as an ordered combination. See MPEP § 2106.05(d).
In light of the foregoing, we conclude, under the 2019 Memorandum,
that each of Appellant’s claims 1–19, considered as a whole, is directed to a
patent-ineligible abstract idea that is not integrated into a practical
application, and does not include an inventive concept.
Accordingly, for the reasons discussed above, we sustain the
Examiner’s rejection under 35 U.S.C. § 101 of claims 1–19.9
Rejection B of Independent Claim 1 under § 103(a)
Based upon Appellant’s arguments, and our discretion under
37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of § 103(a) Rejection B of
claims 1–11 and 13–19 on the basis of representative claim 1.
Issue: Under 35 U.S.C. § 103(a), we focus our analysis on the
following argued limitations from claim 1 that we find to be dispositive
regarding obviousness Rejections B and C of all claims 1–19:
Did the Examiner err by finding that Yeko and Moryto would have
collectively taught or suggested the disputed limitations e, f, and g of
representative claim 1:
[e] wherein the information tag has a unique one to one correlation
with the piece of jewelry, the correlation being established by an
identification code,

9 To the extent Appellant has not advanced separate, substantive arguments
for particular claims, or other issues, such arguments are waived. See
37 C.F.R. § 41.37(c)(1)(iv).

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[f] wherein the identification code is an alphanumeric string having a
unique one to one correlation with the piece of jewelry and the information
tag,
[g] wherein the identification code is placed on the information tag
and the piece of jewelry including both the setting and the gemstone, within
the meaning of independent representative claim 1? See supra, n.4.

The Examiner relies principally on Yeko to teach or suggest the
contested “wherein” clauses e, f, and g of claim 1. See Final Act. 11
mapping limitation “d” to Yeko ¶¶ 68, 103, Figs. 30–32; limitation “e” to
Yeko ¶¶ 31, 103; and limitation “f” to Yeko ¶ 31.
We have reviewed Appellant’s arguments in the Briefs, the
Examiner’s obviousness rejections, and the Examiner’s response to
Appellant’s arguments. Appellant does not proffer sufficient argument or
evidence for us to find error in the Examiner’s findings. See Ex parte Frye,
94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). For at least the reasons
discussed below, we agree with and adopt the Examiner’s findings and
conclusions in the Final Action and Answer.
Appellant asserts: “[t]he combination of Yeko and Moryto fails to
teach or suggest, at least” the “wherein” clause limitations e, f, and g of
claim 1. Appeal Br. 24. However, in support, Appellant focuses the
substantive argument on whether the combination of references specifically
teaches limitation g: “wherein the identification code is placed on the
information tag and the piece of jewelry including both the setting and the
gemstone.” Claim 1. Appellant contends “[t]he combination of references
at best teaches an identification code on either the stone or its mounting,
not both, as positively recited in the claims.” Appeal Br. 26 (emphasis
added).
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In support, Appellant argues:
Moryto provides, “the stone OR its mounting will bear a
human-readable indicia of identification such as a serial
number.” See Moryto [0033] emphasis added. Moryto also fails
to teach or suggest an information tag, let alone an
identification code placed on the information tag. The examiner
cites to a certification for a stone which is stored in a
database (See. Fig. 8). This is similar to a rating for the stone,
and is repeatedly referred to as a certification or grading report
that is stored in a database in Moyto [sic]. Moryto does not
teach or suggest an information tag with an identification code.
The specification of the current application describes the
information tag as an information booklet (See [0037], Fig. 4,
5, 6 and 7). A rating stored in a database, as in Moryto, would
not teach an information tag. Yeko is similarly deficient and
does not teach or suggest an information tag.
Appeal Br. 26 (emphasis omitted).
The Examiner disagrees with Appellant, and further explains the
mapping and basis for the rejection of claim 1. The Examiner finds
Appellant is arguing the references separately. Ans. 18. The Examiner finds
Yeko ¶ 68 teaches “wherein the information tag has a unique one to one
correlation with the piece of jewelry, the correlation being established by an
identification code.” Ans. 18 (emphasis omitted).
Turning to the evidence, we find Yeko ¶ 68 teaches or suggests, in
pertinent part, an identification tag as claimed (i.e., a jewelry certificate,
with a validating number or alphabetical code):
A first time customer/consumer would typically
become a registered member by way of a different form/
webpage than that of FIG. 6. As shown in FIG. 30, upon
selecting the button 302 and providing an indication that he
or she is customer/consumer, a webpage 330 would appear.
In order for a user who is a customer to become a member
of the program, the customer must have purchased a jewelry
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item that resulted in the issuance of a certificate (or possibly
the sale of an already-issued certificate). Assuming that such
a certificate was issued, the customer would have not only
a certificate number associated with that certificate but also
a validation number provided by the retailer or other entity
that sold the customer the jewelry item. With those two
numbers (or other types of codes, such as alphabetical
codes), the user would enter a certificate number into a first
field 332 of the webpage 330 and a validation number into
a second field 334 of that webpage and, upon doing so, press
a submission button 336.
(Emphasis added).
The Examiner finds that Moryto ¶ 33 teaches: “Typically, the stone or
its mounting will bear a human-readable indicia of identification, such as a
serial number (hence, identification code).” Ans. 20 (underline omitted and
bold emphasis added). The Examiner finds “Moryto also teaches in
paragraph [0117]: Certificate describing the grading will be associated with
the stone by way of a micro marking of the stone, such as a laser etched
serial number.” Ans. 20.
Regarding the claimed “alphanumeric string having a unique one to
one correlation with the piece of jewelry and the information tag” (claim 1
(emphasis added)), we agree with the Examiner that such alphanumeric
information is non-functional descriptive material (NFDM) intended for
human perception. See Final Act. 11, last paragraph. On this claim
construction issue, we are bound by a PTAB precedential decision: Ex parte
Nehls, 88 USPQ2d 1883, 1889 (BPAI 2008) (precedential) (“[T]he nature of
the information being manipulated does not lend patentability to an
otherwise unpatentable computer-implemented product or process.”).
Further guidance regarding NFDM is found in the MPEP: “[W]here the
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claim as a whole is directed to conveying a message or meaning to a human
reader independent of the intended computer system, and/or the computer-
readable medium merely serves as a support for information or data, no
functional relationship exists.” MPEP § 2111.05 (III.). Moreover, as noted
above, Yeko ¶ 68 expressly teaches the use of alphabetical identifying
codes.
Turning to Moryto, we note paragraph 33 describes, in pertinent part:
A user, for example, can wear a piece of jewelry in which one
or more stones is used as a basis of an authentication scheme.
Typically, the stone or its mounting will bear a human-
readable indicia of identification, such as a serial number,
which will serve as a basis for authentication.
Moryto ¶ 33 (emphasis added).
To the extent Appellant contends “[t]he combination of references at
best teaches an identification code on either the stone or its mounting, not
both, as positively recited in the claims” (Appeal Br. 26 (emphasis added)),
we find Moryto’s teaching of the stone or its mounting bearing a human-
readable indicia of identification, such as a serial number is enough to at
least suggest including the identification code (e.g., serial number) on both.
As guided by our reviewing court: “‘the question under 35
[U.S.C. §] 103 is not merely what the references expressly teach but what
they would have suggested to one of ordinary skill in the art at the time the
invention was made.’” Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804,
807 (Fed. Cir. 1989) (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA
1976)) (emphasis added); see also MPEP § 2123.
This reasoning is applicable here. Moreover, we find the claimed
placement of the identification code on the stone and its setting (mounting)
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would have also been obvious to try, and would have merely produced a
predictable result. Where “the problem is known, the possible approaches to
solving the problem are known and finite, and the solution is predictable
through use of a known option,” a solution that is obvious to try may indeed
be obvious. Abbott Labs. v. Sandoz, Inc., 544 F.3d 1341, 1351 (Fed. Cir.
2008), citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007).
A finding of obviousness under the “obvious to try” standard “does not
require absolute predictability of success . . . all that is required is a
reasonable expectation of success.” In re Kubin, 561 F.3d 1351, 1360 (Fed.
Cir. 2009) (quoting In re O’Farrell, 853 F.2d 894, 903–04 (Fed. Cir. 1988)).
Therefore, based upon a preponderance of the evidence, we are not
persuaded the Examiner erred regarding the claims rejected under
Rejection B. Accordingly, we sustain the Examiner’s Rejection B under 35
U.S.C. § 103(a) of representative claim 1, and grouped claims 2–11 and 13–
19.
Rejection C under § 103(a) of Dependent Claim 12
Appellant advances no separate, substantive arguments for the
remaining dependent claim 12, also rejected under 35 U.S.C. § 103(a);
therefore, such arguments are waived. See Appeal Br. 29. See 37 C.F.R.
§ 41.37(c)(1)(iv).
CONCLUSIONS
Under the Director’s 2019 Memorandum, as governed by relevant
case law, we conclude all claims 1–19, rejected under 35 U.S.C. § 101, are
directed to patent-ineligible subject matter.
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The Examiner did not err in rejecting claims 1–19, as being obvious
under pre-AIA 35 U.S.C. § 103(a), over the combined teachings and
suggestions of the cited references.

DECISION SUMMARY

FINALITY AND RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED

Claims
Rejected
35 U.S.C. § Reference(s)Basis Affirmed Reversed
1–19 101 Eligibility 1–19
1–11, 13–19 103(a) Yeko, Moryto 1–11,
13–19

12 103(a) Yeko, Moryto,
Hsien-Chung
12
Overall
Outcome
1–19