John W. Alcorn et al.

Patent Trials and Appeals Board

Feb 3, 2020

12847589 - (D) (P.T.A.B. Feb. 3, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/847,589 07/30/2010 John W. Alcorn AUS920100166US1 4220
87220 7590 02/03/2020
Walder Intellectual Property Law (END)
C/O Walder Intellectual Property Law, P.C.
1701 N. Collins Blvd.
Suite 2100
Richardson, TX 75080
EXAMINER
GURSKI, AMANDA KAREN
ART UNIT PAPER NUMBER
3623
MAIL DATE DELIVERY MODE
02/03/2020 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOHN W. ALCORN and JOACHIM H. FRANK
____________

Appeal 2018-004759
Application 12/847,589
Technology Center 3600
____________

Before ANTON W. FETTING, MICHAEL C. ASTORINO, and
TARA L. HUTCHINGS, Administrative Patent Judges.

HUTCHINGS, 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 1–21. 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 July 3, 2017) and Reply Brief (“Reply Br.,” filed Apr. 2, 2018), and the
Examiner’s Answer (“Ans.,” mailed Feb. 5, 2018) and Final Office Action
(“Final Act.,” mailed Mar. 3, 2017). Appellant identifies International
Business Machines Corporation as the real party in interest. Appeal Br. 2.
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CLAIMED INVENTION
Appellant’s claimed invention “relates generally to an improved data
processing apparatus and method and more specifically to mechanisms for
providing self-extending monitoring models that learn based on the arrival
of new data.” Spec. ¶ 1.
Claims 1 and 15 are the independent claims on appeal. Claim 1,
reproduced below with bracketed notations added, is illustrative of the
claimed subject matter:
1. A method, in a computing system, for monitoring a
process executing on a data processing system, comprising:
[(a)] receiving, in the computing system, a notification of
an event comprising information regarding the event and
identifying a process executing in the data processing system that
generated the event;
[(b)] determining, by the computing system, whether one
or more key performance indicators (KPIs) have been defined,
for an element corresponding to the process identified in the
notification, in a model of the data processing system;
[(c)] in response to determining that one or more KPIs
have not been defined for the element in the model corresponding
to the process, automatically generating, by a model extension
engine executing in the computing system, new KPI definitions
for the element in the model corresponding to the process, based
on default KPIs specified in the computing system, wherein the
new KPI definitions constitute an extension of the model of the
data processing system to thereby generate an extended model of
the data processing system; and
[(d)] monitoring, by a system monitor executing in the
computing system, the system monitor being specifically
configured to implement the extended model of the data
processing system, an operation of the data processing system
based on the extended model of the data processing system.

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REJECTION
Claims 1–21 are rejected under 35 U.S.C. § 101 as directed to patent-
ineligible subject matter.
ANALYSIS
Appellant argues the independent claims 1 and 15 together. Appeal
Br. 4–28. We select independent claim 1 as representative. Claim 15 stands
or falls with claim 1. 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
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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).
In rejecting the claims under 35 U.S.C. § 101, the Examiner
determined that the claims recite steps for “receving event notification,
determining whether key performance indicators [“KPIs”] have been defined
corresponding to the notification, generating new KPI definitions
constituting an extension of the model . . . , and monitoring an operation
based on the extended model.” Final Act. 4–5. Therefore, the Examiner
found that the claims recite steps that could be performed by a human
mentally and/or with pen and paper for extending models through key
performance indicators. Id. at 5 (“A user can create and extend models and
also define key performance indicators with only pen to paper actions and/or
mental calculation.”). The Examiner, thus, found that the claims recite a
mental process, which is an abstract idea. Id. The Examiner also
determined that these claims do not include additional elements that are
sufficient to amount to more than the judicial exception. Id. at 5–6.
The U.S. Patent and Trademark Office (the “USPTO”) published
revised guidance for use by USPTO personnel in evaluating subject matter
eligibility under 35 U.S.C. § 101. That guidance “extracts and synthesizes
key concepts identified by the courts as abstract ideas to explain that the
abstract idea exception includes” the following three groupings:
(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 PATENT SUBJECT
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MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50, 52 (Jan. 7, 2019) (the
“Revised Guidance”).
Under the Revised Guidance, in determining whether a claim is
patent-eligible, we first look to whether the claim recites a judicial
exception, including one of the enumerated groupings of abstract ideas
(“Step 2A, Prong One”). Id. 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., 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 then look to
whether the claim “[a]dds a specific limitation or combination of
limitations” that is not “well-understood, routine, conventional activity in the
field” or simply “appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception” (“Step 2B”). Id. at 56.
Step One of the Mayo/Alice Framework (Revised Guidance, Step 2A,
Prong One)
We are not persuaded by Appellant’s argument that the Examiner
oversimplified the claimed invention, improperly expanded the scope of the
claims to include an abstract idea, or otherwise erred in determining that
claim 1 recites an abstract idea. Appeal Br. 5–10; see also id. at 18–19
(arguing that, even though it is a limitation of claim 1, claim 1 is not directed
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to extending a model with KPIs; but instead, monitors an operation of the
data processing system based on the extended model of the data processing
system).
Appellant’s Specification is titled “SELF-EXTENDING
MONITORING MODELS THAT LEARN BASED ON ARRIVAL OF
NEW DATA,” and states that the disclosure relates, in particular, “to
mechanisms for providing self-extending monitoring models that learn based
on the arrival of new data.” Spec. ¶ 1. The Background section describes
that, for some time now, business decision makers have used key
performance indicator (“KPI”) applications to monitor the health of their
business. Id. ¶ 4. These applications retrieve specific data to calculate a
KPI value, and display the calculated KPI value, a threshold associated with
the KPI, and a graphical indication of performance based on a comparison of
the KPI value and threshold. Id. Known KPI applications, however, require
selection of KPIs to monitor, and knowledge of the relevant database
schema required to gather the data needed to calculate the KPI values. Id.
¶ 5.
The process of customizing the KPI application for monitoring
employee productivity and managing operations is costly and time
consuming. See id. ¶¶ 15–16. A business would prefer an alternative
approach that does not require customized monitoring models for each
business process, and that has the ability to customize the monitoring model
to see important business measures at the necessary level of detail without
the need for IT professionals. Id. ¶ 17. To remedy this problem, Appellant’s
invention provides a self-extending monitoring model that learns based on
the arrival of new data. Id. ¶ 18. A generic monitoring model that is not
customized, in response to an event, extends the model’s defined KPI for a
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particular process, such as a loan approval process. Id. The extension is
through an analysis of the event that could be automatic, semi-automatic, or
manual. Id.
Consistent with this disclosure, claim 1 recites a method for
monitoring a process on a data processing system by: (1) receiving an event
notification, i.e. “receiving . . . a notification of an event comprising
information regarding the event and identifying a process . . . that generated
the event” (step (a)); (2) determining whether one or more KPIs have been
defined for an element corresponding to the identified process, i.e.,
“determining . . . whether one or more key performance indicators (KPIs)
have been defined, for an element corresponding to the process identified in
the notification, in a model . . . .” (step (b)); (3) generating new KPI
definitions for the element based on default KPIs, i.e.,
in response to determining that one or more KPIs have
not been defined for the element in the model corresponding to
the process, . . . generating . . . new KPI definitions for the
element in the model corresponding to the process, based on
default KPIs. . . , wherein the new KPI definitions constitute an
extension of the model . . . to thereby generate an extended
model . . .
(step (c)); and (4) monitoring an operation based on the extended model, i.e.,
“monitoring . . . an operation . . . based on the extended model . . . .”
(step (d)). These limitations, given their broadest reasonable interpretation,
recite steps for generating an extended model and monitoring an operation
based on the extended model. Although claim 1 recites that the steps are
performed by a “computing system,” the underlying steps recited in the
claim are all acts that, as the Examiner observes (see Final Act. 5), could be
performed by a human mentally or manually, using pen and paper, without
the use of a computer or any other machine. For example, a person could
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receive a notification of an event comprising information regarding the event
and identifying a process that generated the event, and determine whether
one of more KPIs have been defined for the element corresponding to the
process. Upon determining that KPIs have not been defined, the user could
perform calculations in his or her head or using pen and paper, and create
new KPI definitions for the element in the model corresponding to the
process to generate an extended model. The user could then monitor an
operation based on the extended model. Simply put, claim 1 recites a
concept, including an observation, evaluation, or judgment, that can be
performed in the human mind, which is a mental process and, therefore, an
abstract idea. See Revised Guidance, 84 Fed. Reg. at 52. See also
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed.
Cir. 2011) (holding that method steps that can be performed in the human
mind, or by a human using a pen and paper, are unpatentable mental
processes).
Step One of the Mayo/Alice Framework (Revised Guidance, Step 2A,
Prong Two)
Having concluded that claim 1 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).
Beyond the abstract idea, claim 1 recites a “computer system,” a “data
processing system,” a “model extension engine” that executes step (c) in the
computer system, and a “system monitor” that executes step (d) in the
computer system and is configured to implement the extended model of the
data processing system. But these elements are described in the
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Specification at a high level of generality, i.e., as a generic computer
components. See, e.g., Spec. ¶¶ 26, 43, 67.
Appellant argues that generic computers cannot perform the steps
recited in claim 1. See Appeal Br. 10–17; see, e.g., id. at 11 (“[t]hese
operations are clearly not generic computing functions as generic computers
do not perform such evaluations of a model of a data processing system”),
13 (“one cannot simply buy a computer at the local computer store, plug it
in, and it would miraculously perform the operations recited in the present
claims”). However, contrary to Appellant’s suggestion, the question is not
whether the claim uses a computer in its ordinary capacity to implement the
abstract idea. Instead, the Federal Circuit has explained that the question is
“whether the focus of the claim[] is on the specific asserted improvement in
computer capabilities . . . or, instead, on a process that qualifies as an
‘abstract idea’ for which computers are invoked merely as a tool.” Enfish,
LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting
Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1335–36
(Fed. Cir. 2015)).
Here, we find no indication in the Specification, nor do Appellant
direct us to any indication, that the operations recited in claim 1 invoke any
assertedly inventive programming, require any specialized computer
hardware or other inventive computer components, i.e., a particular machine,
or that the claimed invention is implemented using other than generic
computer components to perform generic computer functions (e.g., receiving
data (step (a)), and processing data (steps (b)–(d))). And “after Alice, there
can remain no doubt: recitation of generic computer limitations does not
make an otherwise ineligible claim patent-eligible.” DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014).
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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 that attributes an
improvement in computer technology and/or a technical field to the claimed
invention or that otherwise indicates that the claimed invention integrates the
abstract idea into a “practical application,” as that phrase is used in the
Revised Guidance.2
Appellant argues that
[t]he claims and the present specification clearly demonstrate
the invention to be an improvement in computer technology
directed to the manner by which a computer system may
monitor a process executing on a data processing system and
specifically when KPIs are not defined, in a model of the data
processing system, for an element of the data processing system
that generates an event received by the computing system.
Appeal Br. 19; see also id. at 19–20 (“[c]learly[,] the focus of the claimed
improvement is directed to an improvement in computer technology with
regard to the monitoring of a process executing on a data processing
system”), 22 (“[c]learly, the present claims effect an improvement in the
technological field of monitoring process execution of a data processing
system” that “eliminates the need for manual intervention and provides

2 The Revised Guidance references the MANUAL OF PATENT EXAMINING
PROCEDURE (“MPEP”) §§ 2106.05(a)–(c) and (e)–(h) 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. 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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customizability through a self-extending mechanism that was previously not
available prior to the claimed invention”).
Yet, no “improvement in computer technology” is apparent in claim 1.
Although claim 1 recites “generating . . . new KPI definitions for the
element in the model corresponding to the process . . . to thereby generate an
extended model of the data processing system” (step (c)) and “monitoring
. . . an operation of the data processing system based on the extended model
of the data processing system” (step (d)), the claim provides no technical
details for achieving those results. For example, claim 1 does not specify
how to generate “new KPI definitions for the element in the model
corresponding to the process based on default KPIs,” or how to monitor “an
operation of the data processing system based on the extended model of the
data processing system.” Instead, “the claim language here provides only a
result-oriented solution with insufficient detail for how a computer
accomplishes it. Our law demands more.” Intellectual Ventures I LLC v.
Capital One Fin. Corp., 850 F.3d 1332, 1342 (Fed. Cir. 2017).
We also are not persuaded by Appellant’s argument that claim 1
“solves the problems associated with the monitoring processes executing in
a data processing system” by performing the steps recited in claim 1. See
Appeal Br. 22. Specifically, Appellant contends that “the present
specification clearly sets forth numerous improvements made by the claimed
invention with regard to the automatic extension of the monitoring
capabilities of the system monitor as information about the data processing
system learned through the generation of events by elements of the data
processing system.” Id. Appellant concludes an application of Enfish would
lead to a determination that the present claims are not directed to an abstract
idea. Id.
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Appellant’s Specification may well identify purported benefits of
and/or problems purportedly overcome by Appellant’s invention. See, e.g.,
Spec. ¶¶ 16–18. However, as indicated above, limitations (a)–(d) of claim 1
each recites results-based-functional language without providing sufficient
technological detail for how to achieve the desired result. For example,
limitation (c) recites “automatically generating” and limitation (d) recites
“monitoring” but no particular manner of generating or monitoring is recited
that would indicate an improvement to technology. The same holds true for
the other recited limitations.
We do not see a parallel between Appellant’s claim 1 and the claims
at issue in Enfish. In Enfish, the Federal Circuit rejected a § 101 challenge at
the step one stage of the Mayo/Alice analysis because the claims at issue
focused on “a specific type of data structure [i.e., a self-referential table for a
computer database] designed to improve the way a computer stores and
retrieves data in memory.” Enfish, 822 F.3d at 1339. There, a
representative claim recited a data storage and retrieval system for a
computer memory having a means for configuring a memory according to a
logical table that included rows, columns, and a means for indexing data. Id.
at 1336. The means for configuring required a four-step algorithm, and the
third step of that algorithm (i.e., “[f]or each column, store information about
the column in one or more rows”), rendered the table self-referential. Id.
The court noted that the specification identified additional benefits conferred
by the self-referential table (e.g., increased flexibility, faster search times,
and smaller memory requirements), which further supported the court’s
conclusion that the claims were directed to an improvement of an existing
technology. Id. at 1337 (citation omitted).
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Here, in contrast, Appellant’s claim 1 does not focus on a particular
data structure analogous to Enfish’s self-referential table. Claim 1 also does
not focus on an improvement to technology in generating an extended model
and/or monitoring techniques — at least because claim 1 covers any manner
of generating and montoring that achieves the result-based functional
limitations. Instead, claim 1 focuses on the abstract idea itself (i.e., a mental
process) that is implemented using generic computers in their ordinary
capacity.
Appellant argues that claim 1 is similar to the claims held patent
eligible in McRO, Inc. v. Bandai Namco Games America, Inc., 837 F.3d
1299 (Fed. Cir. 2016). Appeal Br. 23–24. In particular, Appellant asserts
that claim 1 automates a significant part of a monitoring process and
automatically extends its knowledge of the system being monitored. Id.
at 23. Appellant asserts these techniques are different from those that
previously have been produced manually. Id. However, the Federal Circuit
in McRO did not find the claims at issue to be patent-eligible merely because
a process was automated, and the automated process differed from the
manual process.
Instead, in McRO the claims at issue used “rules to automatically set a
keyframe at the correct point to depict more realistic speech, achieving
results similar to those previously achieved manually by animators.” McRO,
837 F.3d at 1307. These rules “allow[ed] computers to produce ‘accurate
and realistic lip synchronization and facial expressions in animated’
characters that previously could only be produced by human[s]” (id. at 1313
(citation omitted), effecting an improvement to technology in 3-D animation
techniques (id. at 1316). We do not see any parallel between the rules
described in McRO that result in an improvement to technology in 3-D
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animation technniques, and the result-based, functional limitations recited in
Appellant’s claim 1.
We also are not persuaded of Examiner error by Appellant’s argument
regarding preemption. Appeal Br. 9–10. There is no dispute that 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. Yet, 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
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.
We find nothing 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 invention integrates the
abstract idea into a “practical application,” as that phrase is used in the
Revised Guidance. See Revised Guidance, 84 Fed. Reg. at 55. At best, the
additional elements recited in claim 1, considered individually and as an
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ordered combination, do no more than implement the abstract idea using
generic computer components.
Accordingly, we are not persuaded that the Examiner erred in
determining that claim 1 is directed to an abstract idea.
Step Two of the Mayo/Alice Framework (Revised Guidance, Step 2B)
Having determined under step one of the Mayo/Alice framework that
claim 1 is directed to an abstract idea, we next consider under Step 2B of the
Revised Guidance, the second step of the Mayo/Alice framework, whether
claim 1 adds any additional element or combination of elements that
provides an “inventive concept,” i.e., whether the additional elements
amount to “significantly more” than the judicial exception itself or simply
appends well-understood, routine, conventional activities previously known
to the industry to the judicial exception. Revised Guidance, 84 Fed. Reg.
at 56.
Appellant argues that claim 1 recites additional element that
demonstrate that Appellant is claiming significantly more than the abstract
idea. See Appeal Br. 25–27. Specifically, Appellant identifies a “computing
system . . . identifying a process executing in the data processing processing
system” (step (a)); “computing system . . . a model of the data processing
system” (step (b)); “the model corresponding to the process, automatically
generating by a model extension engine executing in the computing system .
. . an extension of the model of the data processing system to thereby
generate an extended model of the data processing system” (step (c)); and
“monitoring, by a system monitor executing in the computing system, the
system monitor being specifically configured to implement the extended
model of the data processing system, an operation of the data processing
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system based on the extended model of the data processing system” (step
(d)) as the additional elements. Id. at 25.
Appellant contends that these additional elements indicate a “specific
ordered combination of operations performed in a specific computing
environment and which involve multiple systems in that computer
environment, i.e., a computing system and a data processing system.” Id. at
25–26. For example, Appellant contends that the claimed monitoring of
step (d) is “based on a specific configuration of the system monitor, i.e., a
specific configuration to implement an extended model of the data
processing system.” Id. at 26. Appellant also disputes that the claimed
operations are generic computer functions performed by a generic computer,
at least because they require a specially configured computing system to
perform the operations. Id. Appellant further argues that claim 1 modifies
the computing system itself by generating new KPI definitions to extend the
model of the data processing system. Id.
Appellant’s arguments are unpersuasive, at least because Appellant
identifies elements that are part of the abstract idea itself when determining
whether claim 1 includes additional elements or a combination of elements
that is sufficient to amount to significantly more than the judicial exception.
“It has been clear since Alice that a claimed invention’s use of the ineligible
concept to which it is directed cannot supply the inventive concept that
renders the invention ‘significantly more’ than that ineligible concept.” BSG
Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018)
(internal citation omitted).
As described above, the claim elements beyond the abstract idea
include a “computer system,” a “data processing system,” a “model
extension engine” that executes step (c) in the computer system, and a
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“system monitor” that executes step (d) in the computer system and is
configured to implement the extended model of the data processing system.
But these elements are described in the Specification at a high level of
generality, i.e., as a generic computer components used to perform generic
computer functions (e.g., receiving and processing data). See, e.g., Spec.
¶¶ 26, 43, 67. 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) (citations
omitted); see also BSG Tech. LLC v. BuySeasons, Inc., 899 F.3d 1281, 1291
(Fed. Cir. 2018) (“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.”).
Citing the Federal Circuit’s holding, in BASCOM Global Internet
Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016), that
an inventive concept can be found in the non-conventional and non-generic
arrangement of known conventional pieces, Appellant argues that even if
claim 1 is directed to an abstract idea, the claim is nonetheless patent eligible
because it includes significantly more than an abstract idea. Appeal Br. 27–
28. Appellant asserts that claim 1 recites “an ordered combination of
elements that set[s] forth a technology-based solution to a computer-based
problem, namely the monitoring of the extension of a process in a data
processing system or the operation of the data processing system by way of a
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self-extending system monitor.” Id. at 28. And Appellant argues that “[t]his
technology based solution rooted in computer technology involves the
ordered combination of operations discussed above which specifically
address problems associated with manual human based KPI generation as
well as overly generic general global systems.” Id. Appellant’s argument is
not persuasive.
In BASCOM, the Federal Circuit determined that the claimed
installation of a filtering tool at a specific location, remote from the end-
users, with customizable filtering features specific to each end user provided
an inventive concept in that it gave the filtering tool both the benefits of a
filter on a local computer and the benefits of a filter on the ISP server.
BASCOM, 827 F.3d at 1350. 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 improve[s] the performance
of the computer system itself.’” Id. at 1351 (stating that like DDR Holdings,
where the patent “claimed a technical solution to a problem unique to the
Internet,” the patent in BASCOM claimed a “technology-based solution . . .
to filter content on the Internet that overcomes existing problems with other
Internet filtering systems . . . making it more dynamic and efficient”)
(internal citations omitted). Here, we do not find in Appellant’s claim 1 any
analogous “non-conventional and non-generic arrangement” of generic or
conventional pieces that results in a technology-based solution.
Appellant argues that the reversal of a rejection under 35 U.S.C. § 103
in a prior appeal demonstrates that the nature of the operations recited in
claim 1 are not well-known or routine. Appeal Br. 17. Yet, the operations
recited in claim 1, as set forth above, are part of the abstract idea. Although
the second step in the Mayo/Alice framework is termed a search for an
Appeal 2018-004759
Application 12/847,589
19
“inventive concept,” the analysis is not an evaluation of novelty or non-
obviousness, but rather, a search for “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.’” Alice
Corp., 573 U.S. at 217–18 (alteration in original). A novel and non-obvious
claim directed to a purely abstract idea is, nonetheless, patent-ineligible. See
Mayo, 566 U.S. at 90.
Here, Appellant has not identified, and we do not find, any additional
elements recited in claim 1 that, individually or in combination, provide
significantly more than the abstract idea. Instead, the additional elements
recite generic computer elements for executing the abstract idea.
We are not persuaded, on the present record, that the Examiner erred
in rejecting independent claim 1 and dependent claims 2, 4, 5, 7–9, 11, 12,
and 14 under 35 U.S.C. § 101. We also are not persuaded that the Examiner
erred in rejecting independent claim 15, which falls with claim 1, and
dependent claims 16, 18, 19, and 21 under 35 U.S.C. § 101.
With respect to dependent claims 3, 10, and 17, Appellant asserts that
the additional limitations recited in these claims “cannot be generic
computer functions.” Appeal Br. 29. And with respect to dependent claims
6, 13, and 20, Appellant asserts that these limitations “further tie the claimed
invention to a specific computing environment and further illustrate that
Appellant[] [is] not claiming the abstract idea.” Id. However, these steps
further describe the abstract idea with additional results-based functional
limitations for receiving and processing data. Therefore, we are not
persuaded that the Examiner erred in rejecting dependent claims 3, 6, 10, 13,
17, and 20 under 35 U.S.C. § 101.
Appeal 2018-004759
Application 12/847,589
20
CONCLUSION
In summary:
Claims
Rejected 35 U.S.C. §  Basis Affirmed Reversed
1–21 101  Eligibility 1–21

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).

AFFIRMED