INTERNATIONAL BUSINESS MACHINES CORPORATION

Patent Trials and Appeals Board

Jul 16, 2020

14539497 - (D) (P.T.A.B. Jul. 16, 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.
14/539,497 11/12/2014 Barbara R. Guerin END920140165US1 5602
37945 7590 07/16/2020
DUKE W. YEE
YEE AND ASSOCIATES, P.C.
P.O. BOX 190809
DALLAS, TX 75219
EXAMINER
ARAQUE JR, GERARDO
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
07/16/2020 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):
ptonotifs@yeeiplaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BARBARA R. GUERIN,
RUSSELL J. MILLER,
DENNIS G. TOUGAS,
and GARY D. WEXLER
____________

Appeal 2019-001493
Application 14/539,497
Technology Center 3600
____________

Before ANTON W. FETTING, PHILIP J. HOFFMANN, and
BRUCE T. WIEDER, Administrative Patent Judges.

FETTING, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2019-001493
Application 14/539,497

2

STATEMENT OF THE CASE1
Barbara R. Guerin, Russell J. Miller, Dennis G. Tougas, and Gary D.
Wexler (Appellant2) seeks review under 35 U.S.C. § 134(a) of a final
rejection of claims 1–20, the only claims pending in the application on
appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
The Appellant invented a way of optimizing regulatory compliance
across multiple boundaries. Regulatory compliance is a term used to
describe enterprises' efforts to ensure that they are in accord with laws,
regulations, and other standards for their industry type. Specification
paras. 1–2.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A method for optimizing regulatory compliance, the method
comprising:
[1] identifying, by one or more processors, an industry category
for an enterprise,
wherein the industry category for the enterprise is
identified by:

1 Our decision will make reference to the Appellant’s Appeal Brief (“Appeal
Br.,” filed January 17, 2018) and Reply Brief (“Reply Br.,” filed December
12, 2018), and the Examiner’s Answer (“Ans.,” mailed October 12, 2018),
and Final Action (“Final Act.,” mailed October 24, 2017).
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as
International Business International Business (Appeal Br. 2).

Appeal 2019-001493
Application 14/539,497

3

[2] receiving, by a processor, coded information that identifies a
type of equipment that is in use by the enterprise,
wherein the coded information is transmitted to the
processor directly from equipment that is in use by the
enterprise;
and
[3] identifying the industry category for the enterprise based on
the type of equipment that is in use by the enterprise;
[4] storing, by one or more processors, a set of regulatory
requirements for the industry category in a database;
[5] categorizing, by one or more processors, the set of
regulations by focus areas, summary requirements, and
harmonized detailed requirements,
wherein the focus areas describe components of
regulatory requirements,
wherein the summary requirements summarize each first
tier subcomponent of the components of the regulatory
requirements,
and
wherein the harmonized detailed requirements describe
second tier subcomponents of each first tier component;
[6] mapping, by one or more processors, detailed requirements
for each set of regulations to one or more of the focus areas,
summary requirements, and harmonized detailed requirements;
[7] mapping, by one or more processors, the detailed
requirements to compliance resources;
and
[8] executing the compliance resources to satisfy the detailed
requirements.
Appeal 2019-001493
Application 14/539,497

4

The Examiner relies upon the following prior art:
Name Reference Date
McKinney US 2004/0019511 A1 Jan. 29, 2004
Steger US 2004/0034659 A1 Feb. 19, 2004
Farneman US 2008/0141589 A1 June 19, 2008
Bianchini US 2014/0164267 A1 June 12, 2014
Norman, Bayes Rule, https://web-beta.archive.org/web/
20100427012917/https://www.eecs.gmul.ac.uk/norman/BBNs/
Bayes rule.htm, 4/27/2010
Bizfilings, Web Site,
https://web-beta.archive.org/web/20130312072916/
http:l/www.bizfilings.com/wizard.aspx, 3/12/2013
Claims 1–20 stand rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more.
Claims 1, 3–7, 9, 11, 13–17, 19, and 20 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Bizfilings and McKinney.3
Claims 2 and 12 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Bizfilings, McKinney, and Bianchini.
Claims 8 and 18 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Bizfilings, McKinney, and Farneman.
Claim 9 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Bizfilings, McKinney, and Steger.
Claim 10 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Bizfilings, McKinney, and Norman.

3 Although the introductory paragraph omits claim 19 (Final Action 27), the
analysis includes claim 19. Final Action 39.
Appeal 2019-001493
Application 14/539,497

5

ISSUES
The issues of eligible subject matter turn primarily on whether the
claims recite more than abstract conceptual advice of results desired.
The issues of obviousness turn primarily on whether the art applied
describes the claim limitations.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to Claim Construction
01. The disclosure contains no lexicographic definition of
“mapping.”
02. The disclosure contains no lexicographic definition of
“executing.”
03. To map as a verb is to establish a mapping.4
04. A mapping as a noun is a “rule of correspondence between two
sets such that there is exactly one element in the second set
assigned to each element in the first set.”5
05. To execute is to carry out.6

4 American Heritage Dictionary, https://www.ahdictionary.com/word/
search.html?q=map, last visited July 9, 2020.
5 American Heritage Dictionary, https://www.ahdictionary.com/word/
search.html?id=F5365400, last visited July 9, 2020.
6 American Heritage Dictionary, https://www.ahdictionary.com/word/
search.html?q=execute, last visited July 9, 2020.

Appeal 2019-001493
Application 14/539,497

6

Facts Related to the Prior Art
Bizfilings
06. Bizfilings is directed to an online application for suggesting a
business type. Bizfilings 1.
McKinney
07. McKinney is directed to monitoring systems and verifying
regulatory compliance related to maintenance, operation,
inspection, repair, and/or service contract renewal status of
environmental equipment such as wastewater treatment systems.
McKinney para. 2.
08. McKinney describes an electronic regulatory compliance
method for one or a plurality of environmental equipment
systems. McKinney para. 14.
ANALYSIS
Initially we construe the claim 1 limitations of “mapping” and
“executing.” Neither term is lexicographically defined. Mapping in the
context of mathematics and therefore computer science is establishing a rule
of correspondence between two sets such that there is exactly one element in
the second set assigned to each element in the first set. This is a result
driven definition, amenable to any implementation, and we construe
“mapping” as such. Execute has several definitions, all but one (put to
death) of which generally mean to carry out. Even the meaning in a
computer context of to run means to carry out. The claims do not recite that
such execution necessarily is performed by a computer. At best the claims
recite invoking execution using a computer. As what is executed is
Appeal 2019-001493
Application 14/539,497

7

compliance resources to satisfy regulatory requirements (claim 1,
limitation 8), and as generally such requirements pertain to the regulated
activities rather than a computer, such execution must at least partially be
performed in something other than a computer context. Thus we construe
the term “executing” as carrying out. This is sufficiently broad to
encompass using a computer to display instructions that those responsible
carry out.
Claims 1–20 rejected under 35 U.S.C. § 101 as directed to a judicial
exception without significantly more
STEP 17
Claim 1, as a method claim, nominally recites one of the enumerated
categories of eligible subject matter in 35 U.S.C. § 101. The issue before us
is whether it is directed to a judicial exception without significantly more.
STEP 2
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, . . .
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. If so, we then ask, “[w]hat
else is there in the claims before us? To answer that question,
. . . consider the elements of each claim both individually and
“as an ordered combination” to determine whether the
additional elements “transform the nature of the claim” into a
patent-eligible application. [The Court] described step two of
this analysis as a search for an “‘inventive concept’”—i.e., an
element or combination of elements that is “sufficient to ensure

7 For continuity of analysis, we adopt the steps nomenclature from 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) (“Revised Guidance”).
Appeal 2019-001493
Application 14/539,497

8

that the patent in practice amounts to significantly more than a
patent upon the [ineligible concept] itself.”
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014) (citations
omitted) (quoting Mayo Collaborative Servs. v. Prometheus Labs, Inc.,
566 U.S. 66 (2012)). To perform this test, we must first determine what the
claims are directed to. This begins by determining whether the claims recite
one of the judicial exceptions (a law of nature, a natural phenomenon, or an
abstract idea). Then, if the claims recite a judicial exception, determining
whether the claims at issue are directed to the recited judicial exception, or
whether the recited judicial exception is integrated into a practical
application of that exception, i.e., that the claims “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.” Revised Guidance, 84 Fed. Reg. at
54. If the claims are directed to a judicial exception, then finally
determining whether the claims provide an inventive concept because the
additional elements recited in the claims provide significantly more than the
recited judicial exception.
STEP 2A Prong 1
At a high level, and for our preliminary analysis, we note that method
claim 1 recites identifying category data, receiving coded data, identifying
more category data, storing requirement data, categorizing regulation data,
mapping requirement data to focus area data and to compliance resource
data, and executing the compliance resources. Identifying and categorizing
data is rudimentary data analysis. Mapping data is construed supra as
establishing a rule of correspondence between two sets such that there is
Appeal 2019-001493
Application 14/539,497

9

exactly one element in the second set assigned to each element in the first set
by any and all means. It is also a rudimentary form of data analysis.
Executing resources is carrying out those resources, which encompasses
reading and following instructions. Thus, claim 1 recites receiving,
analyzing, storing, and following data. None of the limitations recite
technological implementation details for any of these steps, but instead recite
only results desired by any and all possible means.
From this we see that claim 1 does not recite the judicial exceptions of
either natural phenomena or laws of nature.
Under Supreme Court precedent, claims directed purely to an abstract
idea are patent in-eligible. As set forth in the Revised Guidance, which
extracts and synthesizes key concepts identified by the courts, abstract ideas
include (1) mathematical concepts,8 (2) certain methods of organizing
human activity,9 and (3) mental processes.10 Among those certain methods
of organizing human activity listed in the Revised Guidance are commercial
or legal interactions. Like those concepts, claim 1 recites the concept of
managing regulatory compliance. Specifically, claim 1 recites operations

8 See, e.g., Gottschalk v. Benson, 409 U.S. 63, 71–72 (1972); Bilski v.
Kappos, 561 U.S. 593, 611 (2010); Mackay Radio & Telegraph Co. v. Radio
Corp. of Am., 306 U.S. 86, 94 (1939); SAP America, Inc. v. InvestPic, LLC,
898 F.3d 1161, 1163 (Fed. Cir. 2018).
9 See, e.g., Bilski, 561 U.S. at 628; Alice, 573 U.S. at 219–20; Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed Cir. 2014); Smart Sys.
Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1383 (Fed. Cir.
2017); In re Marco Guldenaar Holding B.V., 911 F.3d 1157, 1160–61 (Fed.
Cir. 2018).
10 See, e.g., Benson, 409 U.S. at 67; CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1371–72 (Fed. Cir. 2011); Intellectual Ventures I LLC
v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016).
Appeal 2019-001493
Application 14/539,497

10

that would ordinarily take place in advising one to follow directions using
resources to comply with regulation details mapped from requirements for
an industry and its equipment. The advice to follow directions using
resources to comply with regulation details mapped from requirements for
an industry and its equipment involves regulatory compliance, which is legal
interaction, and mapping detailed requirements for each set of regulations,
which is an act ordinarily performed in the stream of legal regulatory
compliance. For example, claim 1 recites “regulatory compliance,” which is
an activity that would take place whenever one is enforcing legal regulatory
compliance. Similarly, claim 1 recites “mapping . . . detailed requirements
for each set of regulations,” which is also characteristic of regulatory
compliance.
The Examiner determines the claims to be directed to compliance
management. Final Act. 3.
The preamble to claim 1 recites that it is a method for optimizing
regulatory compliance. The steps in claim 1 result in managing regulatory
compliance by following directions using resources to comply with
regulation details mapped from requirements for an industry and its
equipment absent any technological mechanism other than a conventional
computer for doing so.
As to the specific limitations, limitation 2 recites receiving data.
Limitations 1 and 3–8 recite generic and conventional analyzing, storing,
and following of regulatory data, which advise one to apply generic
functions to get to these results. The limitations thus recite advice for
following directions using resources to comply with regulation details
mapped from requirements for an industry and its equipment. To advocate
Appeal 2019-001493
Application 14/539,497

11

following directions using resources to comply with regulation details
mapped from requirements for an industry and its equipment is conceptual
advice for results desired and not technological operations.
The Specification at paragraphs 1 and 2 describes the invention as
relating to optimizing regulatory compliance across multiple boundaries.
Regulatory compliance is a term used to describe enterprises' efforts to
ensure that they are in accord with laws, regulations, and other standards for
their industry type. Thus, all this intrinsic evidence shows that claim 1
recites managing regulatory compliance. This is consistent with the
Examiner’s determination.
This in turn is an example of commercial or legal interactions as a
certain method of organizing human activity because managing regulatory
compliance is a form of legal interaction to comply with legal regulations.
The concept of managing regulatory compliance by following directions
using resources to comply with regulation details mapped from requirements
for an industry and its equipment is one idea for conceptually following
regulations. The steps recited in claim 1 are part of how this might
conceptually be premised.
Our reviewing court has found claims to be directed to abstract ideas
when they recited similar subject matter. buySAFE, Inc. v. Google, Inc., 765
F.3d 1350, 1355 (Fed.Cir.2014) (contractual relationship).
Alternately, this is an example of concepts performed in the human
mind as mental processes because the steps of receiving, analyzing, storing,
and following data mimic human thought processes of observation,
evaluation, judgment, and opinion, perhaps with paper and pencil, where the
data interpretation is perceptible only in the human mind. See In re TLI
Appeal 2019-001493
Application 14/539,497

12

Commc’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94 (Fed. Cir.
2016). Claim 1, unlike the claims found non-abstract in prior cases, uses
generic computer technology to perform data reception, analysis, storage,
and following and does not recite an improvement to a particular computer
technology. See, e.g., McRO, Inc. v. Bandai Namco Games Am. Inc., 837
F.3d 1299, 1314 (Fed. Cir. 2016) (finding claims not abstract because they
“focused on a specific asserted improvement in computer animation”). As
such, claim 1 recites receiving, analyzing, storing, and following data, and
not a technological implementation or application of that idea.
From this we conclude that at least to this degree, claim 1 recites
managing regulatory compliance by following directions using resources to
comply with regulation details mapped from requirements for an industry
and its equipment, which is a commercial and legal interaction, one of
certain methods of organizing human activity identified in the Revised
Guidance, and, thus, an abstract idea.
STEP 2A Prong 2
The next issue is whether claim 1 not only recites, but is more
precisely directed to this concept itself or whether it is instead directed to
some technological implementation or application of, or improvement to,
this concept i.e. integrated into a practical application.11
At the same time, we tread carefully in construing this
exclusionary principle lest it swallow all of patent law. At
some level, “all inventions . . . embody, use, reflect, rest upon,
or apply laws of nature, natural phenomena, or abstract ideas.”

11 See, e.g., Alice, 573 U.S. at 223, discussing Diamond v. Diehr, 450 U.S.
175 (1981).
Appeal 2019-001493
Application 14/539,497

13

Thus, an invention is not rendered ineligible for patent simply
because it involves an abstract concept. “[A]pplication[s]” of
such concepts “ ‘to a new and useful end,’ ” we have said,
remain eligible for patent protection.
Accordingly, in applying the § 101 exception, we must
distinguish between patents that claim the “ ‘buildin[g]
block[s]’ ” of human ingenuity and those that integrate the
building blocks into something more.
Alice, 573 U.S. at 217 (citations omitted) (alterations in original).
Taking the claim elements separately, the operation performed by the
computer at each step of the process is expressed purely in terms of results,
devoid of implementation details. Step 2 is a pure data gathering step.
Limitations describing the nature of the data do not alter this. Step 4 recites
basic conventional data operations such as generating, updating, and storing
data. Step 8 is insignificant post solution activity, such as displaying the
results for people to follow. Steps 1, 3, and 5–7 recite generic computer
processing expressed in terms of results desired by any and all possible
means and so present no more than conceptual advice. All purported
inventive aspects reside in how the data is interpreted and the results desired,
and not in how the process physically enforces such a data interpretation or
in how the processing technologically achieves those results.
Viewed as a whole, Appellant’s claim 1 simply recites the concept of
managing regulatory compliance by following directions using resources to
comply with regulation details mapped from requirements for an industry
and its equipment as performed by a generic computer. This is no more than
conceptual advice on the parameters for this concept and the generic
computer processes necessary to process those parameters, and do not recite
any particular implementation.
Appeal 2019-001493
Application 14/539,497

14

Claim 1 does not, for example, purport to improve the functioning of
the computer itself. Nor does it effect an improvement in any other
technology or technical field. The 21 pages of specification do not bulge
with disclosure, but only spell out different generic equipment12 and
parameters that might be applied using this concept and the particular steps
such conventional processing would entail based on the concept of
managing regulatory compliance by following directions using resources to
comply with regulation details mapped from requirements for an industry
and its equipment under different scenarios. They do not describe any
particular improvement in the manner a computer functions. Instead,
claim 1 at issue amounts to nothing significantly more than an instruction to
apply managing regulatory compliance by following directions using
resources to comply with regulation details mapped from requirements for
an industry and its equipment using some unspecified, generic computer.
Under our precedents, that is not enough to transform an abstract idea into a
patent-eligible invention. See Alice, 573 U.S. at 225–26.
None of the limitations reflect an improvement in the functioning of a
computer, or an improvement to other technology or technical field, applies
or uses a judicial exception to effect a particular treatment or prophylaxis for
a disease or medical condition, implements a judicial exception with, or uses
a judicial exception in conjunction with, a particular machine or manufacture
that is integral to the claim, effects a transformation or reduction of a
particular article to a different state or thing, or applies or uses the judicial

12 The Specification describes personal computer systems, server
computer systems, thin clients, thick clients, hand-held or laptop devices,
multiprocessor systems, microprocessor-based systems, set top boxes,
programmable consumer electronics. Spec. para. 36.
Appeal 2019-001493
Application 14/539,497

15

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.
We conclude that claim 1 is directed to achieving the result of
managing regulatory compliance by advising one to follow directions using
resources to comply with regulation details mapped from requirements for
an industry and its equipment, as distinguished from a technological
improvement for achieving or applying that result. This amounts to
commercial or legal interactions, which fall within certain methods of
organizing human activity that constitute abstract ideas. The claim does not
integrate the judicial exception into a practical application.
STEP 2B
The next issue is whether claim 1 provides an inventive concept
because the additional elements recited in the claim provide significantly
more than the recited judicial exception.
The introduction of a computer into the claims does not generally alter
the analysis at Mayo step two.
the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea “while adding the words ‘apply it’” is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological environment.’”
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implemen[t]” an abstract idea
“on . . . a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the preemption
concern that undergirds our § 101 jurisprudence. Given the
Appeal 2019-001493
Application 14/539,497

16

ubiquity of computers, wholly 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.”
Alice, 573 U.S. at 223–24 (citations omitted) (alteration in original).
“[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea . . . on a
generic computer.” Alice, 573 U.S. at 225. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer for receiving, analyzing, storing, and following data amounts to
electronic data query and retrieval—some of the most basic functions of a
computer. All of these computer functions are generic, routine, conventional
computer activities that are performed only for their conventional uses. See
Elec. Power Grp. LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016).
See also In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303,
1316 (Fed. Cir. 2011) (“Absent a possible narrower construction of the terms
‘processing,’ ‘receiving,’ and ‘storing,’ . . . those functions can be achieved
by any general purpose computer without special programming”). None of
these activities is used in some unconventional manner nor does any produce
some unexpected result. Appellant does not contend it invented any of these
activities. In short, each step does no more than require a generic computer
to perform generic computer functions. As to the data operated upon, “even
if a process of collecting and analyzing information is ‘limited to particular
content’ or a particular ‘source,’ that limitation does not make the collection
Appeal 2019-001493
Application 14/539,497

17

and analysis other than abstract.” SAP America, Inc. v. InvestPic LLC, 898
F.3d 1161, 1168 (Fed. Cir. 2018) (citation omitted).
Considered as an ordered combination, the computer components of
Appellant’s claim 1 add nothing that is not already present when the steps
are considered separately. The sequence of data reception-analysis-storage-
following is equally generic and conventional. See Ultramercial, Inc. v.
Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (sequence of receiving,
selecting, offering for exchange, display, allowing access, and receiving
payment recited an abstraction), Inventor Holdings, LLC v. Bed Bath &
Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017) (sequence of data
retrieval, analysis, modification, generation, display, and transmission),
Two-Way Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329,
1339 (Fed. Cir. 2017) (sequence of processing, routing, controlling, and
monitoring). The ordering of the steps is therefore ordinary and
conventional.
We conclude that claim 1 does not provide an inventive concept
because the additional elements recited in the claim do not provide
significantly more than the recited judicial exception.
REMAINING CLAIMS
Claim 1 is representative. The remaining method claims merely
describe process parameters. We conclude that the method claims at issue
are directed to a patent-ineligible concept itself, and not to the practical
application of that concept.
As to the structural claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
Appeal 2019-001493
Application 14/539,497

18

computer components configured to implement the same idea.
This Court has long “warn[ed] . . . against” interpreting
§ 101“in ways that make patent eligibility ‘depend simply on
the draftsman’s art.’
Alice, 573 U.S. at 226 (citations omitted). As a corollary, the claims are not
directed to any particular machine.
LEGAL CONCLUSION
From these determinations we further determine that the claims do not
recite an improvement to the functioning of the computer itself or to any
other technology or technical field, a particular machine, a particular
transformation, or other meaningful limitations. From this we conclude the
claims are directed to the judicial exception of the abstract idea of certain
methods of organizing human activity as exemplified by the commercial and
legal interaction of managing regulatory compliance by advising one to
follow directions using resources to comply with regulation details mapped
from requirements for an industry and its equipment, without significantly
more.
APPELLANT’S ARGUMENTS
We are not persuaded by Appellant’s argument that
the Examiner's assertion in the final Office Action that Claim 1
is directed to an abstract idea of "compliance management"
results in describing the claim at such a high level of abstraction
and untethered from the language of the claim all but ensures
that the exceptions to 35 USC 101 swallow the rule.
Appeal Br. 10. The Examiner responds that
the appellant merely recites the general application of mapping
information and, more specifically, narrowing the concept of
mapping to specific information and nothing more. The
invention is not concerned or focused on improving the
Appeal 2019-001493
Application 14/539,497

19

mapping process, using mapping in an unconventional manner,
or resolving an issue that arose in mapping.
Ans. 4. As we determine supra, claim 1 is no more than the commercial and
legal interaction of managing regulatory compliance by advising one to
follow directions using resources to comply with regulation details mapped
from requirements for an industry and its equipment, without significantly
more. The specific recited operations are conventional receiving, analyzing,
storing, and following data. The claims simply involve no more than this.
We are not persuaded by Appellant’s argument that the claims are
analogous to those in Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed.
Cir. 2016). App. Br. 10. The claims differ from those found patent
eligible in Enfish, where the claims were “specifically directed to a self-
referential table for a computer database.” Enfish, 822 F.3d at 1337 (Fed.
Cir. 2016). The claims thus were “directed to a specific improvement to
the way computers operate” rather than an abstract idea implemented on
a computer. Id. at 1336. Here, by contrast, the claims are not directed
to an improvement in the way computers operate. Though the claims
purport to accelerate the process of regulatory compliance, our reviewing
court has held that speed and accuracy increases stemming from the
ordinary capabilities of a general purpose computer “do[] not materially
alter the patent eligibility of the claimed subject matter.” Bancorp Servs.,
L.L.C. v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1278
(Fed. Cir. 2012). Instead, the claims are more analogous to those in
FairWarning, supra, wherein claims reciting “a few possible rules to
analyze audit log data” were found directed an abstract idea because they
asked “the same questions (though perhaps phrased with different words)
Appeal 2019-001493
Application 14/539,497

20

that humans in analogous situations detecting fraud have asked for
decades.” FairWarning, 839 F.3d at 1094, 1095.
Appellant also attempts to analogize the claims to those involved in
McRO, supra. App. Br. 10. In McRO, the court held that, although the
processes were previously performed by humans, “the traditional process
and newly claimed method . . . produced . . . results in fundamentally
different ways.” FairWarning, 839 F.3d at 1094 (differentiating the
claims at issue from those in McRO). In McRO, “[i]t i s the incorporation
of the claimed rules not the use of the computer, that improved the
existing technology process,” because the prior process performed by
humans “was driven by subjective determinations rather than specific,
limited mathematical rules.” McRO, 837 F.3d at 1314 (internal quotation
marks, citation, and alterations omitted). In contrast, the claims of the
instant application merely implement an old practice of using decision
criteria in making compliance decisions in a new environment. Appellant has
not argued that the claimed processes of selecting compliance resources apply
rules of selection in a manner technologically different from those which
humans used, albeit with less efficiency, before the invention was claimed.
Merely pigeon holing the objects of decision making in tiers to aid decision
making is both old and itself abstract.
The claims in McRO were not directed to an abstract idea, but
instead were directed to “a specific asserted improvement in
computer animation, i.e., the automatic use of rules of a
particular type.” We explained that “the claimed improvement
[was] allowing computers to produce ‘accurate and realistic lip
synchronization and facial expressions in animated characters’
that previously could only be produced by human animators.”
The claimed rules in McRO transformed a traditionally
Appeal 2019-001493
Application 14/539,497

21

subjective process performed by human artists into a
mathematically automated process executed on computers.
FairWarning, 839 F.3d at 1094 (citations omitted, alteration in original).
We are not persuaded by Appellant's argument that there is no case
law supporting the eligibility determination. App. Br. 11. Case law is cited
supra.
We are not persuaded by Appellant’s argument that the “claims are
not directed to methods of organizing human activities, as no ‘humans’ or
associated activities are actually recited in the claims.” App. Br. 12. Legal
interactions such as regulatory compliance are recognized forms of human
activity. Indeed, the entire field of law would be a nullity in the absence of
human interaction at least as to adherence and enforcement.
We are not persuaded by Appellant’s argument that the “claims are
also not directed to an idea of itself, since it is not possible to infringe
Claim 1 through mere human thought, and therefore Claim 1 is not directed
to an ‘idea’ 4 of itself - abstract or otherwise.” Id. (footnoted omitted). This
is no more than an argument that the computer context confers eligibility.
But context cannot confer eligibility. “The Supreme Court and this court
have repeatedly made clear that merely limiting the field of use of the
abstract idea to a particular existing technological environment does not
render the claims any less abstract.” Affinity Labs of Texas, LLC v. DirecTV,
LLC, 838 F.3d 1253, 1259 (Fed. Cir. 2016).
We are not persuaded by Appellant’s argument that
technological improvement of ‘regulatory compliance’
optimization directly results from executing compliance
resources that have automatically been determined using a
series of steps that synergistic[ly] cooperate with one another in
order to satisfy the detailed requirements that describe second
Appeal 2019-001493
Application 14/539,497

22

tier subcomponents of each first tier subcomponent that result
from the special categorization of a set of regulations for an
industry category that is identified for a particular enterprise by
receiving coded information that identifies a type of equipment
used by the enterprise and identifying such industry category
based on the type of equipment that is in use by the enterprise.
App. Br. 13 (emphasis omitted). This is no more than an argument that
conventional data processing confers eligibility because it automates data
searching and retrieval. But such conventional operations cannot confer
eligibility.
At that level of generality, the claims do no more than
describe a desired function or outcome, without providing any
limiting detail that confines the claim to a particular solution
to an identified problem. The purely functional nature of the
claim confirms that it is directed to an abstract idea, not to a
concrete embodiment of that idea.
Affinity Labs of Texas, 838 F.3d at 1269.
We are not persuaded by Appellant’s argument that the claims are
similar to those in Enfish for the same reasons we determine supra. Appeal
Br. 13.
We are not persuaded by Appellant’s argument that “[c]laim 1 passes
muster under Step 2B of the Alice analysis by providing significantly more
than the alleged abstract idea of ‘compliance management’” for the reasons
we determine supra. App. Br. 14.
The Reply Brief essentially repeats and refers back to the above
arguments.
As to separately argued claim 6, we are not persuaded by Appellant’s
argument that claim 6 provides “a technological based improvement due to
the resulting improvement in the regulatory compliance functionality of the
information technology resources.” App. Br. 15. This is a contention as to
Appeal 2019-001493
Application 14/539,497

23

information improvement, not technological improvement. “The claims are
focused on providing information to traders in a way that helps them process
information more quickly, not on improving computers or technology. . . .
The “tool for presentation” here . . . is simply a generic computer.” Trading
Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1378, 1384–85 (Fed. Cir. 2019)
(citations omitted).
As to separately argued claim 8, we are not persuaded by Appellant’s
argument that in claim 8 “a SCADA [supervisory control and data
acquisition] system is used to control petrochemical refinery equipment,
which is therefore not a mere idea because such control cannot merely be
performed by a human mind.” App. Br. 16. This is a contention that context
confers eligibility, which we determined not to be the case supra.
Claims 1, 3–7, 9, 11, 13–17, 19, and 20 rejected under 35 U.S.C. § 103(a) as
unpatentable over Bizfilings and McKinney
We are persuaded by Appellant’s argument that
First, Claim 1 does not recite ‘industry category’ detailed
requirements are mapped to a corresponding ‘set of
regulations’, which is what Bizfilings is alleged to teach.
Instead, the claimed detailed requirements that are mapped are
detailed requirements ‘for each set of regulations’ - and not
detailed requirements ‘for each industry category’, as alleged
by the Examiner as being taught by Bizfilings.
Second, the alleged teaching of detailed requirements/or
each ‘industry category’ being mapped to a corresponding ‘set
of regulations’ essentially puts the cart before the horse, since
the order of mapping that is alleged to be taught by Bizfilings is
essentially just the opposite of what is claimed.
App. Br. 18 (emphasis omitted). The Examiner responds that Bizfilings
discloses
Appeal 2019-001493
Application 14/539,497

24

an organized table of information that have [sic] been
categorized and linked with other information and conveyed in
a table to demonstrate how each enterprise type is
linked/associated/mapped to specific requirements. Further yet
still, Pages 61 and 62 disclose yet one other GUI where a user
is able to select business types and have the information use the
stored information in order to map the stored organized
information to each of the selected business types. As a result,
the Examiner asserts that Bizfilings does, indeed, disclose
mapping and, more specifically, mapping the detailed
requirements for each industry category to a corresponding set
of regulations and provides a mapping that outlines what set of
regulations correspond to each industry category detailed
requirements, as well as, mapping the detailed requirements for
each particular industry category with an explanation of how to
achieve the detailed requirements, i.e. compliance resources, as
set forth by the corresponding, i.e. mapped, set of regulations.
Ans. 8. But this determines no more than there are mappings. There is no
analysis showing that Bizfilings’s mappings are those recited in the claims.
Claims 2 and 12 rejected under 35 U.S.C. § 103(a) as unpatentable over
Bizfilings, McKinney, and Bianchini
We are persuaded by Appellant’s argument for the independent claim.
Claims 8 and 18 rejected under 35 U.S.C. § 103(a) as unpatentable over
Bizfilings, McKinney, and Farneman
We are persuaded by Appellant’s argument for the independent claim.
Claim 9 rejected under 35 U.S.C. § 103(a) as unpatentable over Bizfilings,
McKinney, and Steger
We are persuaded by Appellant’s argument for the independent claim.
Claim 10 rejected under 35 U.S.C. § 103(a) as unpatentable over Bizfilings,
McKinney, and Norman
Appeal 2019-001493
Application 14/539,497

25

We are persuaded by Appellant’s argument for the independent claim.
CONCLUSIONS OF LAW
The rejection of claims 1–20 under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more is proper.
The rejection of claims 1, 3–7, 9, 11, 13–17, 19, and 20 under 35
U.S.C. § 103(a) as unpatentable over Bizfilings and McKinney is improper.
The rejection of claims 2 and 12 under 35 U.S.C. § 103(a) as
unpatentable over Bizfilings, McKinney, and Bianchini is improper.
The rejection of claims 8 and 18 under 35 U.S.C. § 103(a) as
unpatentable over Bizfilings, McKinney, and Farneman is improper.
The rejection of claim 9 under 35 U.S.C. § 103(a) as unpatentable
over Bizfilings, McKinney, and Steger is improper.
The rejection of claim 10 under 35 U.S.C. § 103(a) as unpatentable
over Bizfilings, McKinney, and Norman is improper.
Appeal 2019-001493
Application 14/539,497

26

CONCLUSION
The rejection of claims 1–20 is affirmed.
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–20 101 Eligibility 1–20
1, 3–7, 9, 11,
13–17, 19, 20
103 Bizfilings,
McKinney
1, 3–7, 9, 11,
13–17, 19, 20
2, 12 103 Bizfilings,
McKinney,
Bianchini
2, 12
8, 18 103 Bizfilings,
McKinney,
Farneman
8, 18
9 103 Bizfilings,
McKinney,
Steger
9
10 103 Bizfilings,
McKinney,
Norman
10
Overall Outcome 1–20

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