International Business Machines Corporation

Patent Trials and Appeals Board

Feb 14, 2020

14831418 - (D) (P.T.A.B. Feb. 14, 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.
14/831,418 08/20/2015 Charles W. Cross CAM920080034US2_8150-0566 6229
112978 7590 02/14/2020
Cuenot, Forsythe & Kim, LLC
20283 State Road 7, Suite 300
Boca Raton, FL 33498
EXAMINER
GOLDBERG, IVAN R
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
02/14/2020 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):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CHARLES W. CROSS, BRIAN D. GOODMAN,
FRANK L. JANIA, and DARREN M. SHAW
____________

Appeal 2019-003813
Application 14/831,418
Technology Center 3600
____________

Before HUBERT C. LORIN, NINA L. MEDLOCK, and
JAMES A. WORTH, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 21–24, 26–31, 33–38, and 40. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Our decision references Appellant’s Appeal Brief (“Appeal Br.,”
filed January 20, 2019) and Reply Brief (“Reply Br.,” filed April 16, 2019),
and the Examiner’s Answer (“Ans.,” mailed March 7, 2019), and Final
Office Action (“Final Act.,” mailed August 28, 2018). Appellant identifies
IBM Corporation as the real party in interest. Appeal Br. 1.
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CLAIMED INVENTION
Appellant’s claimed invention relates to “project management and,
more particularly, to ambient project management” (Spec. ¶ 1).
Claims 21, 28, and 35 are the independent claims on appeal.
Claim 21, reproduced below with bracketed notations added, is illustrative
of the claimed subject matter:
21. A computer-implemented method, comprising:
[(a)] associating, with a project and using a processor, a
project decay function that regulates a rate at which a project
health declines;
[(b)] identifying, from a project event and using the
processor, a parameter of the project decay function; and
[(c)] calculating, based upon the project decay function
and using the identified parameter, the project health, wherein
[(d)] an avatar is displayed as a representation of
the project health, and
an appearance of the avatar is altered
responsive to changes in the project health.
REJECTION2
Claims 21–24, 26–31, 33–38, and 40 are rejected under 35 U.S.C.
§ 101 as directed to a judicial exception without significantly more.

2 We understand that the double patenting rejection of claims 21–24, 26–31,
33–38, and 40 has been withdrawn in view of the terminal disclaimer, which
Appellant filed, concurrently with its Notice of Appeal, on November 28,
2018. In this regard, we note that neither Appellant, in its briefs, nor the
Examiner, in the Answer, addresses the double patenting rejection.
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ANALYSIS
Appellant argues the pending claims as a group (Appeal Br. 6–12).
We select independent claim 21 as representative. The remaining claims
stand or fall with claim 21. See 37 C.F.R. §41.37(c)(1)(iv).
Under 35 U.S.C. § 101, an invention is patent eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S.
208, 216 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), “for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts.” Alice Corp., 573 U.S. at 217.
The first step in that analysis is to “determine whether the claims at issue are
directed to one of those patent-ineligible concepts.” Id. If the claims are not
directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry
ends. Otherwise, the inquiry proceeds to the second step where the elements
of the claims are considered “individually and ‘as an ordered combination’”
to determine whether there are additional elements that “‘transform the
nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo,
566 U.S. at 79, 78). This is “a search for an ‘inventive concept’ — i.e., an
element or combination of elements that is ‘sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself.’” Id. at 217–18 (alteration in original).
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In rejecting the pending claims under 35 U.S.C. § 101, the Examiner
determined that claim 21 is directed to “collecting information, analyzing it,
and displaying the results,” i.e., to an abstract idea similar to other concepts
that the courts have found abstract (Final Act. 3–4). The Examiner also
determined that claim 21 does not include additional elements that are
sufficient to amount to significantly more than the abstract idea itself (id.
at 4–5); that independent claims 28 and 35 are patent ineligible for the same
reasons as claim 21 (id. at 5–6); and that the dependent claims also are
patent ineligible based on the same rationale (id. at 6–7).
The U.S. Patent and Trademark Office (the “USPTO”) published
revised guidance on January 7, 2019 for use by USPTO personnel in
evaluating subject matter eligibility under 35 U.S.C. § 101. 2019 REVISED
PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50, 57
(Jan. 7, 2019) (the “2019 Revised Guidance”). That guidance revised the
USPTO’s examination procedure with respect to the first step of the
Mayo/Alice framework by (1) “[p]roviding groupings of subject matter that
[are] considered an abstract idea”; and (2) clarifying that a claim is not
“directed to” a judicial exception if the judicial exception is integrated into a
practical application of that exception. Id. at 50. The 2019 Revised
Guidance, by its terms, applies to all applications, and to all patents resulting
from applications, filed before, on, or after January 7, 2019. Id.3

3 The USPTO issued an update on October 17, 2019 (the “October 2019
Update: Subject Matter Eligibility,” available at https://www.uspto.gov/sites/
default/files/documents/peg_oct_2019_update.pdf) clarifying the
2019 Revised Guidance in response to comments solicited from the public.
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Step One of the Mayo/Alice Framework (2019 Revised Guidance, Step 2A)
The first step in the Mayo/Alice framework, as mentioned above, is to
determine whether the claims at issue are “directed to” a patent-ineligible
concept, e.g., an abstract idea. Alice Corp., 573 U.S. at 217. This first step,
as set forth in the 2019 Revised Guidance (i.e., Step 2A), is a two-prong test;
in Step 2A, Prong One, we look to whether the claim recites a judicial
exception, e.g., one of the following three groupings of abstract ideas:
(1) mathematical concepts; (2) certain methods of organizing human
activity, e.g., fundamental economic principles or practices, commercial or
legal interactions; and (3) mental processes. 2019 Revised Guidance,
84 Fed. Reg. at 54. If so, we next consider whether the claim includes
additional elements, beyond the judicial exception, that “integrate the
[judicial] exception into a practical application,” i.e., that apply, rely on, or
use the judicial exception in a manner that imposes a meaningful limit on the
judicial exception, such that the claim is more than a drafting effort designed
to monopolize the judicial exception (“Step 2A, Prong Two”). Id. at 54–55.
Only if the claim (1) recites a judicial exception and (2) does not integrate
that exception into a practical application do we conclude that the claim is
“directed to” the judicial exception, e.g., an abstract idea. Id.
We are not persuaded by Appellant’s arguments that the Examiner
erred in determining that claim 21 is directed to an abstract idea (Appeal
Br. 6–10). The Federal Circuit has explained that “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) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d
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1343, 1346 (Fed. Cir. 2015)). It asks whether the focus of the claims is on a
specific improvement in relevant technology or on a process that itself
qualifies as an “abstract idea” for which computers are invoked merely as a
tool. See id. at 1335–36. Here, it is clear from the Specification (including
the claim language) that the claims focus on an abstract idea, and not on any
improvement to technology and/or a technical field.
The Specification is titled “AMBIENT PROJECT MANAGEMENT,”
and describes that when tasks involve a specific set of activities to meet a
goal or objective, each task may be considered a project, with each project
having a different level of importance and different deadlines and milestones
(Spec. ¶1). The Specification notes that “[a]s a particular project increases
in importance, or nears completion, it can distract attention from lesser
projects” and that this loss of attention can lead to neglect of these lesser
projects — neglect that, according to the Specification, can be especially
prevalent with smaller projects, containing fewer time restrictions and/or
milestones (id. ¶ 2).
The claimed invention is ostensibly intended to eliminate, or at least
reduce, the likely occurrence of such neglect by providing a method for
monitoring a defined project, e.g., a collection of tasks, and generating and
outputting an ambient indication of the health of the project (e.g., timeliness,
progress, robustness, state), as it changes over time, using an ambient device
(see, e.g., id. ¶¶ 21–23, 37). The Specification discloses that the method
begins with defining a project, which the Specification describes can be
performed manually by specifying project parameters, e.g., project tasks,
goals, resources, deadlines, assignment of project duties, etc. (id. ¶¶ 24–26).
Next, a project delay function, e.g., a mathematical model or algorithm for
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calculating the health of the project, is defined and associated with the
defined project (id. ¶ 30). The system monitors for project events, i.e., any
event that can be detected by the project management system that influences
the health of the project, e.g., a detected electronic communication between
project members (id. ¶¶ 38, 41). And when an event is detected, a parameter
of the project decay function, e.g., a level of collaboration between project
members, from the project event (id. ¶¶ 39, 42), is identified and used in the
project decay function to calculate the health of the project (id. ¶ 49). The
calculated project health is then output, e.g., presented or graphically
displayed as an icon or avatar on a display device (id. ¶¶ 50–51).
The Specification discloses that, in one embodiment, as each project
event is detected, the project health can be dynamically recalculated, or
adjusted, according to the project decay function (id. ¶ 49). Changes over
time in the project health can then be displayed by changes in appearance,
e.g., size, color, position, motion, luminescence, perspective or the like, of
the icon and/or avatar (id. ¶ 51).
Consistent with this disclosure, claim 21 recites a computer-
implemented method comprising: (1) defining a project decay function and
associating the project decay function with a project, i.e., “associating, with
a project and using a processor, a project decay function that regulates a rate
at which a project health declines” (limitation (a)); (2) identifying a
parameter of the project decay function from a project event, i.e.,
“identifying, from a project event and using the processor, a parameter of the
project decay function” (limitation (b)); (3) calculating the project health,
i.e., “calculating, based upon the project decay function and using the
identified parameter, the project health” (limitation (c)); and (4) displaying
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the results, i.e., “wherein an avatar is displayed as a representation of the
project health, and an appearance of the avatar is altered responsive to
changes in the project health” (limitation (d)). These limitations, when
given their broadest reasonable interpretation, recite calculating the health of
a project using parameters, determined from various project events, in a
project decay function, i.e., a mathematical model or algorithm, and
displaying the results of the calculation. Simply put, claim 21 recites a
mathematical concept, i.e., a mathematical calculation, and, therefore, an
abstract idea.
The Federal Circuit has held similar concepts to be abstract. Thus, for
example, the Federal Circuit has held that claims directed to a “process of
organizing information through mathematical correlations” are directed to an
abstract idea. Digitech Image Techs., LLC v. Elecs. for Imaging, Inc.,
758 F.3d 1344, 1350 (Fed. Cir. 2014); see also SAP Am., Inc. v. InvestPic,
LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018) (holding that claims to “a series
of mathematical calculations based on selected information” are directed to
an abstract idea). The court also has held that abstract ideas include the
concepts of collecting data, analyzing the data, and reporting the results of
the collection and analysis, including when limited to particular content.
See, e.g., Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d
1332, 1340 (Fed. Cir. 2017) (identifying the abstract idea of collecting,
displaying, and manipulating data); Elec. Power Grp., LLC v. Alstom S.A.,
830 F.3d 1350, 1354 (Fed. Cir. 2016) (characterizing collecting information,
analyzing information by steps people go through in their minds, or by
mathematical algorithms, and presenting the results of collecting and
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analyzing information, without more, as matters within the realm of abstract
ideas).
Having concluded that claim 21 recites a judicial exception, i.e., an
abstract idea (Step 2A, Prong One), we next consider whether the claim
recites additional elements that integrate the judicial exception into a
practical application (Step 2A, Prong Two).
The only additional element recited in claim 21, beyond the abstract
idea, is the “processor” — an element that, as the Examiner observed, is a
generic computer component (Final Act. 4–5; see also Ans. 6), and disclosed
as such in the written description portion of the Specification (see, e.g.,
Spec. ¶ 14). We find no indication in the Specification that the operations
recited in claim 21 require any specialized computer hardware or other
inventive computer components, i.e., a particular machine, invoke any
assertedly inventive programming, or that the claimed invention is
implemented using other than generic computer components to perform
generic computer functions. See DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[A]fter Alice, there can remain no
doubt: recitation of generic computer limitations does not make an otherwise
ineligible claim patent-eligible.”).
We also find no indication in the Specification that the claimed
invention effects a transformation or reduction of a particular article to a
different state or thing. Nor do we find anything of record, short of attorney
argument, that attributes an improvement in technology and/or a technical
field to the claimed invention or that otherwise indicates that the claimed
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invention integrates the abstract idea into a “practical application,” as that
phrase is used in the 2019 Revised Guidance.4
Appellant attempts in the Appeal Brief to draw a parallel between the
present claims and the patent eligible claims at issue in Core Wireless
Licensing, S.A.R.L. v. LG Electronics, Inc., 880 F.3d 1356 (Fed. Cir. 2018)
(Appeal Br. 6). In this regard, Appellant summarily asserts in the Reply
Brief that “the claimed invention is an improvement in existing technology
— i.e., a graphical user interface that is specifically configured to provide
updates on project health using an avatar that changes appearances” (Reply
Br. 2).
The facts of Core Wireless are readily distinguishable. There, the
claims were directed to “an improved user interface for electronic devices,
particularly those with small screens.” Core Wireless, 880 F.3d at 1363.
The specification described that “prior art interfaces had many deficits
relating to the efficient functioning of the computer, requiring a user ‘to
scroll around and switch views many times to find the right
data/functionality,”’ and disclosed that the claimed invention improved the
“efficiency of using the electronic device by bringing together ‘a limited list
of common functions and commonly accessed stored data,’ which can be
accessed directly from the main menu.” Id. The specification also disclosed

4 The 2019 Revised Guidance references MPEP § 2106.05(a)–(c) and (e) in
describing the considerations that are indicative that an additional element or
combination of elements integrates the judicial exception, e.g., the abstract
idea, into a practical application. 2019 Revised Guidance, 84 Fed. Reg.
at 55. If the recited judicial exception is integrated into a practical
application, as determined under one or more of these MPEP sections, the
claim is not “directed to” the judicial exception.
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that “[t]he speed of a user’s navigation through various views and windows”
was improved in that the user was saved “from navigating to the required
application, opening it up, and then navigating within that application to
enable the data of interest to be seen or a function of interest to be activated”
— disclosure that the Federal Circuit concluded “clearly indicates that the
claims are directed to an improvement in the functioning of computers,
particularly those with small screens.” Id.
Appellant asserts here that the graphical user interface is specifically
configured to provide updates on project health using an avatar that changes
appearances. But, we find no indication in the Specification, nor does
Appellant direct us to any indication, that claim 21 is directed to an
improved interface analogous to the one in Core Wireless that provides an
improvement in computer functionality, or that claim 21 uses anything other
than conventional interface methods to display an avatar on a display device.
Cf. Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240–43 (Fed. Cir. 2016)
(noting a user interface that generates and displays selectable user interface
elements from other selectable user interface elements does not transform an
otherwise abstract idea into eligible subject matter); FairWarning IP, LLC v.
Iatric Sys., Inc., 839 F.3d 1089, 1096 (Fed. Cir. 2016) (noting use of a
generic computer element like a user interface is not patent-eligible subject
matter); Intellectual Ventures I LLC, 850 F.3d at 1342 (noting a user
interface that provides little more than an unspecified set of rules for
displaying and organizing elements does not recite eligible subject matter).
Appellant’s argument that the present claims are distinguishable from
patent-ineligible claims in Electric Power because Appellant has “done more
than claim the calculation of project health” is likewise unpersuasive
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(Appeal Br. 7). Appellant asserts that the claims involve a “new type of
analysis (i.e., the calculation of the project decay function using the
identified parameter)” and recite a “particular way” of calculating project
health (id.). Yet, even if claim 21’s project decay function is new, and adds
a degree of particularity to the claim, that, standing alone, is not enough to
confer patent eligibility at least because a specific abstract idea is still an
abstract idea. Cf. Mayo, 566 U.S. at 88–89 (“[O]ur cases have not
distinguished among different laws of nature according to whether or not the
principles they embody are sufficiently narrow.”). See also, e.g., Intellectual
Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1321 (Fed. Cir. 2016)
(“A narrow claim directed to an abstract idea, however, is not necessarily
patent-eligible.”); BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1287
(Fed. Cir. 2018) (“[A] claim is not patent eligible merely because it applies
an abstract idea in a narrow way.”). As the Court remarked in Parker v.
Flook, 437 U.S. 584 (1978), “[i]f a claim is directed essentially to a method
of calculating, using a mathematical formula, even if the solution is for a
specific purpose, the claimed method is nonstatutory.” Id. at 595.
We also are not persuaded of Examiner error to the extent that
Appellant argues that the claims are patent eligible because there is no risk
of preemption (Appeal Br. 8; see also Reply Br. 2–3). Although the
Supreme Court has described “the concern that drives [the exclusion of
abstract ideas from patent-eligible subject matter] as one of pre-emption,”
Alice Corp., 573 U.S. at 216, characterizing preemption as a driving concern
for patent eligibility is not the same as characterizing preemption as the sole
test for patent eligibility. “The Supreme Court has made clear that the
principle of preemption is the basis for the judicial exceptions to
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patentability” and “[f]or this reason, questions on preemption are inherent in
and resolved by the § 101 analysis.” Ariosa Diagnostics, Inc. v. Sequenom,
Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (citing Alice Corp., 573 U.S.
at 216). “[P]reemption may signal patent ineligible subject matter, [but] the
absence of complete preemption does not demonstrate patent eligibility.”
Id.5
We also do not agree with Appellant that the Examiner
overgeneralized the claims as directed to “collecting information, analyzing
it, and displaying the results” or that the Examiner otherwise failed to
consider the claimed invention as a whole (Appeal Br. 8–9; see also Reply
Br. 3–4). Instead, the Examiner’s characterization of claim 21 is, in our
view, fully consistent with the Specification, as described above, including
the claim language.
Appellant argues that the “Examiner’s analysis omits the vast majority
of the claim[ ] language” (Appeal Br. 9). But, there is no requirement that
the Examiner’s formulation of the abstract idea must copy the claim
language. That the claim includes more words than the phrase the Examiner
used to articulate the abstract idea, and that the Examiner, thus, articulates
the abstract idea at a different level of abstraction than would Appellant is an
insufficient basis to persuasively argue that the claim language has been

5 Citing McRO, Inc. v. Bandai Namco Games America, Inc., 837 F.3d 1299
(Fed. Cir. 2016), Appellant asserts that “[w]hile total (or complete)
preemption is not required to establish patent ineligibility, the absence of
broad preemption of the abstract idea is a determinative factor in finding that
claims are not directed to an abstract idea” (Reply Br. 2). Yet, the court in
McRO explicitly “recognized that ‘the absence of complete preemption does
not demonstrate patent eligibility.”’ McRO, 837 F.3d at 1315 (quoting
Ariosa, 788 F.3d at 1379.
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mischaracterized. Cf. Apple, 842 F.3d at 1240–41 (“An abstract idea can
generally be described at different levels of abstraction. As the Board has
done, the claimed abstract idea could be described as generating menus on a
computer, or generating a second menu from a first menu and sending the
second menu to another location. It could be described in other ways,
including, as indicated in the specification, taking orders from restaurant
customers on a computer.”).
Appellant also misapprehends the controlling precedent to the extent
that Appellant maintains that the claims are patent eligible, because they
“are directed to a novel solution that is tied to a graphical user interface”
(Appeal Br. 9–10). Neither a finding of novelty nor a non-obviousness
determination automatically leads to the conclusion that the claimed subject
matter is patent eligible. “Groundbreaking, innovative, or even brilliant
discovery does not by itself satisfy the § 101 inquiry.” Ass’n for Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013). A novel and
non-obvious claim directed to a purely abstract idea is, nonetheless, patent
ineligible. See Mayo, 566 U.S. at 90; see also Diamond v. Diehr, 450 U.S.
175, 188–89 (1981) (“The ‘novelty’ of any element or steps in a process, or
even of the process itself, is of no relevance in determining whether the
subject matter of a claim falls within the § 101 categories of possibly
patentable subject matter.”).
We conclude, for the reasons outlined above, that claim 21 recites a
mathematical concept, i.e., an abstract idea, and that the additional element
recited in the claim is no more than a generic computer component used as a
tool to perform the recited abstract idea. As such, it does not integrate the
abstract idea into a practical application. See Alice Corp., 573 U.S. at 223–
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24 (“[W]holly generic computer implementation is not generally the sort of
‘additional featur[e]’ that provides any ‘practical assurance that the process
is more than a drafting effort designed to monopolize the [abstract idea]
itself.’” (last two alterations in original) (quoting Mayo, 566 U.S. at 77)).
Accordingly, we agree with the Examiner that claim 21 is directed to an
abstract idea.
Step Two of the Mayo/Alice Framework (2019 Revised Guidance, Step 2B)
Having determined under step one of the Mayo/Alice framework that
claim 21 is directed to an abstract idea, we next consider under Step 2B of
the 2019 Revised Guidance, the second step of the Mayo/Alice framework,
whether claim 21 includes additional elements or a combination of elements
that provides an “inventive concept,” i.e., whether the additional elements
amount to “significantly more” than the judicial exception itself.
2019 Revised Guidance, 84 Fed. Reg. at 56.
Appellant attempts to draw an analogy between the present claims and
those in BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC,
827 F.3d 1341 (Fed. Cir. 2016) (Appeal Br. 12). Yet, we can find no
parallel between claim 21 and the claims at issue in BASCOM.
There, the Federal Circuit determined that the claims were directed to
a technology-based solution to filter Internet content that overcame existing
problems with other Internet filtering systems by taking a known filtering
solution — i.e., a “one-size-fits-all” filter at an Internet Service Provider
(“ISP”) — and making it more dynamic and efficient by providing
individualized filtering at the ISP. BASCOM, 827 F.3d at 1351. The court,
thus, held that the second step of the Mayo/Alice framework was satisfied
because the claimed invention “represents a ‘software-based invention[ ] that
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improve[s] the performance of the computer system itself.’” Id. (alterations
in original).
Appellant argues that, similar to the inventive concept embodied in
the claims of BASCOM, the present claims “include additional limitations
that are directed to an improvement to an existing technological process
(Appeal Br. 12). But, unlike the filtering system improvements in BASCOM
that added significantly more to the abstract idea in that case, the claimed
invention here merely uses generic computing components to implement an
abstract idea, i.e., monitoring the status of a project by collecting
information, analyzing the information using a mathematical algorithm, and
displaying the results.
The Examiner determined here, and we agree, that the only claim
element beyond the abstract idea is a processor, i.e., a generic computer
component used to perform generic computer functions (Final Act. 4–5; see
also Ans. 6) — a determination amply supported by, and fully consistent
with the Specification (see, e.g., Spec. ¶ 14).6 Appellant cannot reasonably
contend, nor does Appellant, that there is a genuine issue of material fact
regarding whether the operation of this component is well-understood,

6 The Office’s April 19, 2018 Memorandum to the Examining Corps from
Deputy Commissioner for Patent Examination Policy, Robert W. Bahr,
entitled, Changes in Examination Procedure Pertaining to Subject Matter
Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP,
Inc.), available at https://www.uspto.gov/sites/default/files/documents/
memo-berkheimer-20180419.PDF, expressly directs that an examiner may
support the position that an additional element (or combination of elements)
is well-understood, routine or conventional with “[a] citation to an express
statement in the specification . . . that demonstrates the well-understood,
routine, conventional nature of the additional element(s)” (id. at 3).
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routine, or conventional, where, as here, there is nothing in the Specification
to indicate that the operations recited in claim 21 require any specialized
hardware or inventive computer components or that the claimed invention is
implemented using other than a generic computer component to perform
generic computer functions, e.g., receiving, processing, transmitting, and
displaying information. Indeed, the Federal Circuit, in accordance with
Alice, has “repeatedly recognized the absence of a genuine dispute as to
eligibility” where claims have been defended as involving an inventive
concept based “merely on the idea of using existing computers or the
Internet to carry out conventional processes, with no alteration of computer
functionality.” Berkheimer v. HP, Inc., 890 F.3d 1369, 1373 (Fed. Cir.
2018) (Moore, J., concurring); see also BSG Tech, 899 F.3d at 1291
(“BSG Tech does not argue that other, non-abstract features of the claimed
inventions, alone or in combination, are not well-understood, routine and
conventional database structures and activities. Accordingly, the district
court did not err in determining that the asserted claims lack an inventive
concept.”).
We are not persuaded, on the present record, that the Examiner erred
in rejecting independent claim 21 under 35 U.S.C. § 101. Therefore, we
sustain the Examiner’s rejection of claim 21, and claims 22–24, 26–31, 33–
38, and 40, which fall with claim 21.
Appeal 2019-003813
Application 14/831,418

18
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
21–24, 26–
31, 33–38,
40
101 Eligibility 21–24, 26–
31, 33–38,
40

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

AFFIRMED