International Business Machines Corporation

Patent Trials and Appeals Board

Jun 30, 2020

2019002301 (P.T.A.B. Jun. 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.
14/725,124 05/29/2015 Philip R. Chauvet TUC920150031US1 4479
65384 7590 06/30/2020
TERRILE, CANNATTI & CHAMBERS, LLP
IBM Tucson
P.O. BOX 203518
AUSTIN, TX 78720
EXAMINER
BANSAL, GURTEJ
ART UNIT PAPER NUMBER
2139
NOTIFICATION DATE DELIVERY MODE
06/30/2020 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):
USPTO@dockettrak.com
tmunoz@tcciplaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PHILIP R. CHAUVET, FRANKLIN E. McCUNE,
DAVID C. REED and MAX D. SMITH
____________

Appeal 2019-002301
Application 14/725,124
Technology Center 2100
____________

Before KARA L. SZPONDOWSKI, SCOTT B. HOWARD, and
STEVEN M. AMUNDSON, Administrative Patent Judges.

AMUNDSON, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) from a final
rejection of claims 1, 2, 4, 5, 7, 8, 10, 11, 13, 14, 16, and 17, i.e., all pending
claims. 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 (2018). Appellant identifies the real party in interest
as International Business Machines Corporation. Appeal Br. 1.
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STATEMENT OF THE CASE
The Invention
According to the Specification, the invention concerns “administration
of storage control blocks.” Spec. ¶ 1.2 The Specification explains that “the
storage used by control blocks can have an impact on performance of the
system including possibly exhausting available system storage.” Id. ¶ 4.
Hence, the invention endeavors to “provide a straightforward method for
managing and profiling control blocks” to “enable limits and recovery
actions to be specified by the control block administration operation.” Id.
¶¶ 5–6.
According to the Specification, administration of storage control
blocks includes (1) identifying storage areas used as control blocks;
(2) “profiling the control blocks to provide control block profile
information”; (3) storing control block profile information; and
(4) “administering the control blocks using the control block profile
information.” Spec. ¶ 7, Fig. 3.
Exemplary Claim
Independent claim 1 exemplifies the claims at issue and reads as
follows (with formatting added for clarity):
1. A method for administering control blocks within a data
processing system, the data processing system comprising a
host computer and a data storage system, the host computer
comprising a control block administration module, the control

2 This decision uses the following abbreviations: “Spec.” for the
Specification, filed November May 29, 2015; “Final Act.” for the Final
Office Action, mailed June 7, 2018; “Appeal Br.” for the Appeal Brief, filed
October 2, 2018; “Ans.” for the Examiner’s Answer, mailed November 29,
2018; and “Reply Br.” for the Reply Brief, filed January 22, 2019.
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block administration module comprising a control block
profiler, the data storage system comprising a storage controller
and a plurality of storage devices, the method comprising:
identifying areas of storage that are currently being
used as control blocks, each control block comprising an area
of storage containing information;
profiling the control blocks to provide control block
profile information, the profiling determining a type of control
block;
storing at least some of the control block profile
information in a storage location remote from the control
blocks;
administering the control blocks using the control block
profile information; and,
establishing control block properties to be monitored
based upon the type of control block; and
wherein the control block information includes a control
block unique identifier length indicator, a location of the unique
identifier of the control block, an identification of the unique
identifier, secondary identifying characteristic of the control
block if available, a control block length indicator of each
control block, an indication of a limit to a total number of
allowable control blocks of a particular type, control section
(CSECT) names indicating a location from which the storage
for control block is obtained, information regarding common
storage task termination handling for the control block.
Appeal Br. 8 (Claims App.).
The Rejection on Appeal
Claims 1, 2, 4, 5, 7, 8, 10, 11, 13, 14, 16, and 17 stand rejected under
35 U.S.C. § 101 as directed to patent-ineligible subject matter. Final Act.
2–3.
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ANALYSIS
We have reviewed the rejection in light of Appellant’s arguments that
the Examiner erred. For the reasons explained below, we agree with the
Examiner’s conclusion concerning ineligibility under § 101. We adopt the
Examiner’s findings and reasoning in the Final Office Action and Answer.
See Final Act. 2–4; Ans. 3–5. We provide the following to address and
emphasize specific findings and arguments.
Introduction
The Patent Act defines patent-eligible subject matter broadly:
“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.” 35 U.S.C. § 101. In Mayo and Alice, the
Supreme Court explained that § 101 “contains an important implicit
exception” for laws of nature, natural phenomena, and abstract ideas. Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012);
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014); see Diamond v.
Diehr, 450 U.S. 175, 185 (1981). In Mayo and Alice, the Court set forth a
two-step analytical framework for evaluating patent-eligible subject matter.
Mayo, 566 U.S. at 77–80; Alice, 573 U.S. at 217–18.
Under Mayo/Alice step one, we “determine whether the claims at
issue are directed to” a judicial exception, i.e., an abstract idea, a law of
nature, or a natural phenomenon. Alice, 573 U.S. at 217. Step one involves
looking at the “focus” of the claims at issue and their “character as a whole.”
SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018).
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In January 2019, the PTO issued revised guidance for determining
whether claims are directed to a judicial exception. See 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019
Guidance”).3 The 2019 Guidance applies to the Board. Id. at 50–51,
57 n.42; see 35 U.S.C. § 3(a)(2)(A) (investing the Director with
responsibility “for providing policy direction” for the PTO).
The 2019 Guidance specifies two prongs for the analysis under
Mayo/Alice step one (PTO step 2A). 84 Fed. Reg. at 54–55. Prong one
requires evaluating “whether the claim recites a judicial exception, i.e., an
abstract idea, a law of nature, or a natural phenomenon.” Id. at 54. “If the
claim does not recite a judicial exception, it is not directed to a judicial
exception,” and it satisfies § 101. Id. “If the claim does recite a judicial
exception, then it requires further analysis” under prong two. Id. Prong two
requires evaluating “whether the claim as a whole integrates the recited
judicial exception into a practical application of the exception.” Id. “When
the exception is so integrated, then the claim is not directed to a judicial
exception,” and it satisfies § 101. Id. “If the additional elements do not
integrate the exception into a practical application, then the claim is directed
to the judicial exception,” and it “requires further analysis” under
Mayo/Alice step two (PTO step 2B). Id.
Under Mayo/Alice step two, we “consider the elements of each claim
both individually and ‘as an ordered combination’ to determine whether the

3 In response to received public comments, the PTO issued further guidance
in October 2019 clarifying the 2019 Guidance. October 2019 Update:
Subject Matter Eligibility (Oct. 17, 2019) (available at https://www.uspto.
gov/sites/default/files/documents/peg_oct_2019_update.pdf).
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additional elements” add enough to transform the “nature of the claim” into
“significantly more” than the judicial exception. Alice, 573 U.S. at 217–18,
221–22 (quoting Mayo, 566 U.S. at 78–79). Step two involves the search for
an “inventive concept.” Alice, 573 U.S. at 217–18, 221; Univ. of Fla.
Research Found., Inc. v. Gen. Elec. Co., 916 F.3d 1363, 1366 (Fed.
Cir. 2019). “[A]n inventive concept must be evident in the claims.”
RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017).
Mayo/Alice Step One: PTO Step 2A Prong One
Patent-ineligible abstract ideas include mental processes,
mathematical formulas, and fundamental economic practices. See, e.g.,
Alice, 573 U.S. at 219–20 (fundamental economic practice of intermediated
settlement); Bilski v. Kappos, 561 U.S. 593, 599, 611–12 (2010)
(fundamental economic practice of hedging or protecting against risk in
independent claim and mathematical formula in dependent claim); Parker v.
Flook, 437 U.S. 584, 585–86, 596–98 (1978) (mathematical formula for
calculating updated alarm limit); Gottschalk v. Benson, 409 U.S. 63, 65–67
(1972) (mental process of converting binary-coded-decimal representation to
binary representation). The 2019 Guidance specifies three groupings of
abstract ideas: (1) mental processes, (2) mathematical concepts, and
(3) certain methods of organizing human activity. 84 Fed. Reg. at 51–52.
In Alice, the Supreme Court “did not establish any ‘precise contours’
for defining whether claims are directed to ‘abstract ideas’ or something
else.” Cellspin Soft, Inc. v. Fitbit, Inc., 927 F.3d 1306, 1315 (Fed. Cir.
2019) (citing Alice, 573 U.S. at 221). Further, for Mayo/Alice step one, the
Federal Circuit has noted that “[a]n abstract idea can generally be described
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at different levels of abstraction.” Apple, Inc. v. Ameranth, Inc., 842 F.3d
1229, 1240 (Fed. Cir. 2016).
Here, the Examiner determines that the claims are directed to the
abstract idea of “creating a profile, and using that profile to administer
memory.” Final Act. 2; see Ans. 4. The Examiner explains that the claims
encompass concepts similar to “concepts identified as an abstract ides [sic]
by the Courts,” e.g., the abstract idea of “creating an index, and using that
index to access memory.” Final Act. 2 (citing Intellectual Ventures I LLC v.
Erie Indemnity Co., 850 F.3d 1315 (Fed. Cir. 2017) (“Erie Indemnity”)); see
Ans. 3–4. The Examiner reasons that “while the claims necessarily cabin
the idea [of] providing control block profile information and administering
the control blocks using the control block information, these steps essentially
equate to creating an index, and using the index to access memory.” Ans.
3–4.
Appellant disputes that independent claims 1, 7, and 13 are directed to
an abstract idea. See Appeal Br. 4–6; Reply Br. 1. Appellant asserts that
“the claims do not recite matter that falls within one of the enumerated
groupings of abstract ideas” in the 2019 Guidance. Reply Br. 1.
We disagree that the Examiner errs under Mayo/Alice step one. In
determining that the claims are directed to an abstract idea, the Examiner
accurately assesses the “focus” of the claims and their “character as a
whole.” See Final Act. 2–3; Ans. 3–4; see also SAP Am., 898 F.3d at 1167.
In addition, we determine that the claims recite abstract ideas falling
within one of the three groupings of abstract ideas specified in the 2019
Guidance, i.e., mental processes. See 84 Fed. Reg. at 51–52. The 2019
Guidance describes mental processes as “concepts performed in the human
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mind,” such as “an observation, evaluation, judgment, [or] opinion.” Id.
at 52 (footnote omitted).
Here, each independent claim recites the following limitations
encompassing observations and evaluations performed by a human mentally
or with pen and paper:
● “profiling the control blocks to provide control block
profile information, the profiling determining a type of
control block”; and
● “establishing control block properties to be monitored
based upon the type of control block.”
Appeal Br. 8–11.
The “profiling” and “establishing” limitations encompass observations
and evaluations performed by a human mentally or with pen and paper
because someone could mentally review information about control block
usage. After mentally reviewing information about control block usage,
someone could mentally or with pen and paper categorize or profile the
control blocks by determining different types of control blocks. As an
example, someone could profile control blocks based on size as small,
medium, or large. See Spec. ¶ 3. As another example, someone could
profile control blocks based on location as residing in private storage or
common storage. Id. ¶¶ 3, 22–23. In addition, someone could mentally
or with pen and paper specify or establish control block properties to be
monitored based upon the type of control block. For instance, someone
could establish a first set of properties for small control blocks, a second set
of properties for medium control blocks, and a third set of properties for
large control blocks. Id. ¶¶ 21, 33.
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For these reasons, the “profiling” and “establishing” limitations
encompass observations and evaluations performed by a human mentally
or with pen and paper. The 2019 Guidance identifies observations and
evaluations performed by a human mentally or with pen and paper as mental
processes, and thus an abstract idea. 84 Fed. Reg. at 52 & nn.14–15; see
also Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318
(Fed. Cir. 2016) (“Symantec”) (“[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.”).
Hence, under the 2019 Guidance, each independent claim recites an abstract
idea.
Further, as the Examiner properly determines, the claims resemble the
claims in Erie Indemnity. There, the claims covered “creating an index and
using that index to search for and retrieve data.” 850 F.3d at 1327. For
Mayo/Alice step one, the Federal Circuit reasoned that “[t]his type of
activity, i.e., organizing and accessing records through the creation of an
index-searchable database, includes longstanding conduct that existed well
before the advent of computers and the Internet.” Id. The court explained
that “a hardcopy-based classification system (such as library-indexing
system) employs a similar concept.” Id. Here, the claims cover creating a
profile and using that profile for “administering” data similar to the claims
in Erie Indemnity. See Appeal Br. 8–11.
Mayo/Alice Step One: PTO Step 2A Prong Two
Because we determine that each independent claim recites an abstract
idea, we consider whether each claim as a whole integrates the recited
abstract idea into a practical application. See 84 Fed. Reg. at 54–55. “Only
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when a claim recites a judicial exception and fails to integrate the exception
into a practical application, is the claim ‘directed to’ a judicial exception
. . . .” Id. at 51.
As additional elements, the independent claims recite computer-
system components. Appeal Br. 8–11. Specifically, method claim 1 recites
a “data processing system comprising a host computer and a data storage
system.” Id. at 8. The “data storage system compris[es] a storage controller
and a plurality of storage devices.” Id. Similarly, system claim 7 recites
a “processor,” a “data bus coupled to the processor,” a “computer-usable
medium embodying computer program code,” and a “data storage system
comprising a storage controller and a plurality of storage devices.” Id. at 9.
Claim 13 recites a similar “computer-usable medium embodying computer
program code” and a “data processing system comprising a host computer
and a data storage system” that comprises “a storage controller and a
plurality of storage devices.” Id. at 11.
In addition, each independent claim recites the following data-
collecting and data-manipulating limitations:
● “identifying areas of storage that are currently being
used as control blocks, each control block comprising
an area of storage containing information”;
● “storing at least some of the control block profile
information in a storage location remote from the
control blocks”; and
● “administering the control blocks using the control
block profile information.”
Appeal Br. 8–11.
We determine that each independent claim as a whole does not
integrate the recited abstract idea into a practical application because the
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additional elements do not impose meaningful limits on the abstract idea.
See 84 Fed. Reg. at 53–54; see also Final Act. 2–4; Ans. 3–5. Instead, the
claimed computer-system components constitute generic computer-system
components that perform generic computer functions. See Spec. ¶¶ 16, 28,
35, 39. Further, the data-collecting and data-manipulating limitations
constitute insignificant extra-solution activity. See, e.g., Mayo, 566 U.S.
at 79; Bilski, 561 U.S. at 611–12; Apple, 842 F.3d at 1241–42; OIP Techs.,
Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363–64 (Fed. Cir. 2015);
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014);
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir.
2011); In re Grams, 888 F.2d 835, 839–40 (Fed. Cir. 1989).
As an example of insignificant extra-solution activity, in Mayo the
Supreme Court decided that measuring metabolite levels for later analysis
constituted purely “conventional or obvious” pre-solution activity. Mayo,
566 U.S. at 79. Similarly, the Federal Circuit has held that mere data-
gathering steps “cannot make an otherwise nonstatutory claim statutory.”
CyberSource, 654 F.3d at 1370 (quoting Grams, 888 F.2d at 840). The
Federal Circuit has also held that (1) presenting offers to potential customers
and (2) gathering statistics concerning responses were “conventional data-
gathering activities that [did] not make the claims patent eligible.” OIP
Techs., 788 F.3d at 1363–64. Consistent with those decisions, the Manual of
Patent Examining Procedure (“MPEP”) identifies “gathering data” as an
example of insignificant pre-solution activity. MPEP § 2106.05(g) (9th ed.
rev. 08.2017 Jan. 2018).
Here, the data-collecting limitations amount to mere data-gathering
steps and require nothing unconventional or significant. See Classen
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Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057, 1067 (Fed. Cir.
2011) (analogizing “data gathering” to “insignificant extra-solution
activity”). In particular, the “identifying” and “storing” limitations in each
independent claim operate to make data available for processing like the
“conventional data-gathering activities” in OIP Technologies. See OIP
Techs., 788 F.3d at 1363–64; see also Bilski, 561 U.S. at 611–12
(establishing inputs for mathematical formula). Hence, the data-collecting
limitations in each claim do not help integrate the recited abstract idea into
a practical application.
Further, in Flook the Supreme Court decided that adjusting an alarm
limit according to a mathematical formula was “post-solution activity” and
insufficient to confer eligibility. Flook, 437 U.S. at 590, 596–98; see Bilski,
561 U.S. at 610–11 (discussing Flook). Similarly, the Federal Circuit has
held that printing menu information constituted insignificant post-solution
activity. Apple, 842 F.3d at 1241–42. Consistent with those decisions, the
MPEP identifies printing “to output a report” as an example of insignificant
post-solution activity. MPEP § 2106.05(g).
Here, the data-manipulating limitations require nothing
unconventional or significant. Instead, the “administering” limitation in
each independent claim constitutes token post-solution activity analogous to
adjusting an alarm limit in Flook. See Ans. 3. Hence, the data-manipulating
limitation in each claim does not help integrate the recited abstract idea into
a practical application.
Appellant asserts that the “claims are directed to a practical
application” of “administering control blocks within a data processing
system” because the “claims recite a specific set of steps that improve the
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functionality of a computer and address a technological problem.” Appeal
Br. 4; Reply Br. 1; see Appeal Br. 5. Appellant similarly asserts that the
“claims address an undeniably technology-based problem (monitoring
control blocks within a data storage system) in an unconventional manner.”
Appeal Br. 5.
We disagree that the claims are directed to a technological
improvement. Similar to the claims in Erie Indemnity, the claims here
“are not focused on how usage of” control block profile information to
administer control blocks alters a computer or storage device “in a way that
leads to an improvement in the technology” for control blocks. See Erie
Indemnity, 850 F.3d at 1328. For example, the claims here contain no
details about how administering control blocks using control block profile
information achieves a technological improvement. “Claims directed to
generalized steps to be performed on a computer using conventional
computer activity are not patent eligible.” Two-Way Media Ltd. v. Comcast
Cable Commc’ns, LLC, 874 F.3d 1329, 1337 (Fed. Cir. 2017).
Accordingly, the Examiner correctly determines that “the claims do
not recite any improvement.” Ans. 5. As the Examiner reasons, the “claims
merely amount to the profiling of information, which . . . amounts to an
abstract invention with no recited improvement.” Id. As the Examiner also
reasons, the claimed “profiling of control information, storing at least some
of the profile information, [and] administering control information” includes
“longstanding conduct that existed well before the advent of computers and
the Internet.” Id. at 4.
The Specification discusses an alleged improvement to a deficiency
with “known systems,” i.e., a failure to free storage associated with control
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blocks residing in certain locations under certain conditions. See Spec. ¶¶ 4,
22–23. As broadly drafted, however, the claims do not capture that alleged
improvement. Unclaimed improvements do not support patent eligibility.
See ChargePoint, Inc. v. SemaConnect, Inc., 920 F.3d 759, 769 (Fed. Cir.
2019); Berkheimer v. HP Inc., 881 F.3d 1360, 1369–70 (Fed. Cir. 2018);
Two-Way Media, 874 F.3d at 1338–39; Erie Indemnity, 850 F.3d at
1331–32.
Appellant analogizes the claims here to the claims in the following
cases: Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016), and
Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir.
2016). See Appeal Br. 5–6. But the claims here do not resemble the claims
in Enfish or Amdocs.
In Enfish, the Federal Circuit decided that the claims satisfied § 101
under Mayo/Alice step one because they recited a “specific improvement to
the way computers operate,” i.e., an improved memory or database
configuration that permitted faster and more efficient searching. Enfish,
822 F.3d at 1330–33, 1336, 1339. Further, the Federal Circuit has explained
that the claims in Enfish “did more than allow computers to perform familiar
tasks with greater speed and efficiency” and “actually permitted users to
launch and construct databases in a new way.” Finjan, Inc. v. Blue Coat
Sys., Inc., 879 F.3d 1299, 1305 (Fed. Cir. 2018).
Unlike the claims in Enfish, the claims here do not recite a “specific
improvement to the way computers operate.” See Ans. 4–5. For instance,
the claims do not recite an advance in hardware or software that causes a
processor itself or a memory itself to operate faster or more efficiently.
As the Examiner reasons, the “claims merely amount to the profiling of
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information, which . . . amounts to an abstract invention with no recited
improvement.” Id.
In Amdocs, the patents concerned network components “arrayed in a
distributed architecture” that “collect[ed] and process[ed] data close to its
source,” and thus enabled “load distribution” and reduced network
congestion. Amdocs, 841 F.3d at 1291–92, 1300, 1303, 1306. The Federal
Circuit decided that the claims satisfied § 101 under Mayo/Alice step two
because they either (1) “entail[ed] an unconventional technological solution
. . . to a technological problem” that required generic computer components
to “operate in an unconventional manner to achieve an improvement in
computer functionality” or (2) “recite[d] a technological solution to a
technological problem specific to computer networks—an unconventional
solution that was an improvement over the prior art.” Id. at 1299–1306.
Unlike the claims in Amdocs, the claims here do not provide an
unconventional technological solution to a technological problem. See Final
Act. 2–3; Ans. 4–5. For example, the claims do not require generic
computer components to “operate in an unconventional manner to achieve
an improvement in computer functionality.” See Appeal Br. 8–11.
The 2019 Guidance identifies exemplary considerations indicating
that additional elements in claims “may have integrated the [judicial]
exception into a practical application.” 84 Fed. Reg. at 55 & nn.25–29
(citing MPEP §§ 2106.05(a)–(c), 2106.05(e)). As the above analysis
indicates, we have evaluated Appellant’s arguments in light of those
exemplary considerations. For the reasons discussed above, however, we
determine that each independent claim as a whole does not integrate the
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recited abstract idea into a practical application. Thus, each claim is directed
to a judicial exception and does not satisfy § 101 under Mayo/Alice step one.
Mayo/Alice Step Two: PTO Step 2B
Because we determine that each independent claim is directed
to a judicial exception, we “consider the elements of each claim both
individually and ‘as an ordered combination’ to determine whether the
additional elements” add enough to transform the “nature of the claim” into
“significantly more” than the judicial exception. See Alice, 573 U.S.
at 217–18, 221–22 (quoting Mayo, 566 U.S. at 78–79). Under Mayo/Alice
step two, we “look with more specificity at what the claim elements add, in
order to determine ‘whether they identify an “inventive concept” in the
application of the ineligible subject matter’ to which the claim is directed.”
Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1258
(Fed. Cir. 2016) (quoting Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d
1350, 1353 (Fed. Cir. 2016)). An “inventive concept” requires more than
“well-understood, routine, conventional activity already engaged in” by the
relevant community. Rapid Litig. Mgmt. Ltd. v. CellzDirect, Inc., 827 F.3d
1042, 1047 (Fed. Cir. 2016) (quoting Mayo, 566 U.S. at 79–80). But a
“non-conventional and non-generic arrangement of known, conventional
pieces” may provide an “inventive concept” satisfying step two. BASCOM
Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350
(Fed. Cir. 2016).
As discussed above, the independent claims recite computer-system
components. Appeal Br. 8–11. The Specification describes the claimed
computer-system components generically and evidences their conventional
nature. See Spec. ¶¶ 16, 28, 35, 39.
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As an example, the Specification explains that a “host computer”
includes “a mainframe, personal computer, workstation, and combinations
thereof.” Spec. ¶ 28. As another example, the Specification explains that
a “storage system” includes “a storage system such as those available from
International Business Machines under the trade designation IBM DS6000
or DS8000.” Id. ¶ 16. As yet another example, the Specification explains
that a “computer readable storage medium” includes “an electronic storage
device, a magnetic storage device, an optical storage device, an
electromagnetic storage device, a semiconductor storage device, or any
suitable combination of the foregoing.” Id. ¶ 35.
Simply implementing an abstract idea using conventional machines or
devices “add[s] nothing of substance.” See Alice, 573 U.S. at 226–27; see
also Mayo, 566 U.S. at 84–85 (explaining that “simply implementing a
mathematical principle on a physical machine” does not suffice for patent
eligibility) (citing Gottschalk, 409 U.S. at 64–65, 71).
Moreover, the claimed computer-system components operate to
collect and manipulate data. Appeal Br. 8–11; see Final Act. 2–3; Ans. 3.
Court decisions have recognized that generic computer-system components
operating to collect and manipulate data are well understood, routine, and
conventional to a skilled artisan. See, e.g., Alice, 573 U.S. at 226–27; SAP
Am., 898 F.3d at 1164–65 & n.1, 1170; Apple, 842 F.3d at 1234, 1241–42;
Symantec, 838 F.3d at 1316–20; Versata Dev. Grp., Inc. v. SAP Am., Inc.,
793 F.3d 1306, 1334 (Fed. Cir. 2015); Ultramercial, 772 F.3d at 715–16;
buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014).
For example, the system claims in Alice recited a “data processing
system” (e.g., “host computer” or “processor”) with a “communications
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controller” (e.g., “data bus”) and a “data storage unit” (e.g., a “data storage
system,” “storage controller,” or “storage device”). Alice, 573 U.S. at 226.
The Supreme Court decided that the system claims failed to satisfy § 101
because “[n]early every computer” includes those generic components for
performing “basic calculation, storage, and transmission functions” and the
system claims simply implemented the same abstract idea as the method
claims. Id. at 226–27. The Court reasoned that (1) “the system claims are
no different from the method claims in substance”; (2) “[t]he method claims
recite the abstract idea implemented on a generic computer”; and (3) “the
system claims recite a handful of generic computer components configured
to implement the same idea.” Id. at 226.
Here, the claimed computer-system components perform “basic
calculation, storage, and transmission functions” that nearly every computer
system performs. Appeal Br. 8–11; see Final Act. 2–3; Ans. 3. For
instance, nearly every computer system includes a “processor” for
manipulating data and a “storage device” for storing data. Nothing in the
claims “requires anything other than conventional computer . . . components
operating according to their ordinary functions.” See Two-Way Media,
874 F.3d at 1339, 1341.
Hence, the claimed computer-system components do not satisfy the
“inventive concept” requirement. See, e.g., Customedia Techs., LLC v. Dish
Network Corp., 951 F.3d 1359, 1361, 1366 (Fed. Cir. 2020) (describing the
claimed “processor,” “storage device,” “programmable receiver unit,” and
“remote server” as “generic computer components”); Mortg. Grader, Inc. v.
First Choice Loan Servs. Inc., 811 F.3d 1314, 1324–25 (Fed. Cir. 2016)
(holding that “generic computer components such as an ‘interface,’
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‘network,’ and ‘database’” did not satisfy the “inventive concept”
requirement); FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089,
1095–96 (Fed. Cir. 2016) (describing the claimed “microprocessor” and
“user interface” as “generic computer elements”); Prism Techs. LLC v.
T-Mobile USA, Inc., 696 F. App’x 1014, 1016–17 (Fed. Cir. 2017)
(describing the claimed “authentication server,” “access server,” “Internet
Protocol network,” “client computer device,” and “database” as
“indisputably generic computer components”).
We reach a similar conclusion concerning the data-collecting and
data-manipulating limitations, i.e., the “identifying,” “storing,” and
“administering” limitations. As discussed above, the data-collecting
limitations amount to mere data-gathering steps and require nothing
unconventional or significant. As also discussed above, the data-
manipulating limitations constitute token post-solution activity and require
nothing unconventional or significant. Consequently, the claimed
insignificant extra-solution activity does not satisfy the “inventive concept”
requirement. See, e.g., Mayo, 566 U.S. at 79–80; Bilski, 561 U.S. at 611–12;
Flook, 437 U.S. at 590; Apple, 842 F.3d at 1241–42; OIP Techs., 788 F.3d at
1363–64; CyberSource, 654 F.3d at 1370. As the Examiner reasons, “that
the control blocks are stored in memory is routine and conventional since
this data would need to be accessed when access[ing] the memory,” and
“these control blocks must be administered, so they contain up to date data
in order to access the memory.” Ans. 3.
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Citing PTO guidance about Berkheimer,4 Appellant asserts that no
showing has been made that the “claimed combination of elements is . . .
well-understood, routine or conventional.” Appeal Br. 4. That PTO
guidance states that a “citation to one or more . . . court decisions” may
demonstrate that additional elements are well understood, routine, and
conventional to a skilled artisan. Apr. 19, 2018 PTO Mem. 4. As discussed
above, court decisions have recognized that generic computer-system
components operating to collect and manipulate data are well understood,
routine, and conventional to a skilled artisan. See, e.g., Alice, 573 U.S.
at 226–27; SAP Am., 898 F.3d at 1164–65 & n.1, 1170; Apple, 842 F.3d
at 1234, 1241–42; Symantec, 838 F.3d at 1316–20; Versata, 793 F.3d
at 1334; Ultramercial, 772 F.3d at 715–16; buySAFE, 765 F.3d at 1355.
Appellant contends that “the claims are narrowly drawn to not
preempt any and all generic enhancement of data in a similar system.”
Appeal Br. 6.
Appellant’s preemption argument does not persuade us of Examiner
error. While preemption may denote patent ineligibility, its absence does
not establish patent eligibility. See FairWarning, 839 F.3d at 1098. For
claims covering a patent-ineligible concept, preemption concerns “are fully
addressed and made moot” by an analysis under the Mayo/Alice framework.
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015).

4 PTO Memorandum, Changes in Examination Procedure Pertaining
to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision
(Berkheimer v. HP, Inc.) (Apr. 19, 2018) (“Apr. 19, 2018 PTO Mem.”).
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“Whether a combination of claim limitations supplies an inventive
concept that renders a claim ‘significantly more’ than an abstract idea to
which it is directed is a question of law.” BSG Tech LLC v. BuySeasons,
Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018). Considering the claim
limitations as an ordered combination adds nothing to the abstract idea that
is not already present when the limitations are considered separately. See
Mayo, 566 U.S. at 79; Final Act. 2–3. The ordered combination of
limitations in each independent claim amounts to nothing more than the
abstract idea implemented with generic computer-system components that
perform generic computer functions. See Alice, 573 U.S. at 225–26; Final
Act. 2–3. Hence, we conclude that the ordered combination of limitations in
each independent claim does not supply an “inventive concept” that renders
the claim “significantly more” than the abstract ideas. See Final Act. 2–3.
Thus, each claim does not satisfy § 101 under Mayo/Alice step two.
Summary for Independent Claims 1, 7, and 13
For the reasons discussed above, Appellant’s arguments have not
persuaded us of any error in the Examiner’s findings or conclusions under
Mayo/Alice step one or step two. Hence, we sustain the § 101 rejection of
the independent claims.
Dependent Claims 2, 4, 5, 8, 10, 11, 14, 16, and 17
We also sustain the § 101 rejection of dependent claims 2, 4, 5, 8, 10,
11, 14, 16, and 17 because Appellant does not argue eligibility separately for
them. See Appeal Br. 4–6; Reply Br. 1; 37 C.F.R. § 41.37(c)(1)(iv).
CONCLUSION
We affirm the Examiner’s decision to reject claims 1, 2, 4, 5, 7, 8, 10,
11, 13, 14, 16, and 17.
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In summary:
Claims
Rejected 35 U.S.C. § Basis Affirmed Reversed
1, 2, 4, 5, 7,
8, 10, 11, 13,
14, 16, 17
101 Eligibility
1, 2, 4, 5, 7,
8, 10, 11, 13,
14, 16, 17

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)(1)(iv). See
37 C.F.R. § 41.50(f).
AFFIRMED