LYNES, Matthew et al.

Patent Trials and Appeals Board

Jan 8, 2020

13827073 - (D) (P.T.A.B. Jan. 8, 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.
13/827,073 03/14/2013 Matthew LYNES ORA121171 (O281) 5421
51444 7590 01/08/2020
Kraguljac Law Group/Oracle
4700 Rockside Road
Summit One, Suite 510
Independence, OH 44131
EXAMINER
AUGUSTINE, VICTORIA PEARL
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
01/08/2020 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):
DDay@KragLaw.com
MPusti@KragLaw.com
PTOMail@KragLaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHEW LYNES, VICTOR MATSKIV, and
JAYANT THOMAS

Appeal 2019-000282
Application 13/827,073
Technology Center 3600
Before BRADLEY W. BAUMEISTER, MICHAEL J. STRAUSS, and
IRVIN E. BRANCH, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL
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Application 13/827,073
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STATEMENT OF THE CASE1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1, 4–6, 11–13, 15, and 28–32.
Claims 2, 3, 7–10, 14, and 16–27 are canceled. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
Appellant describes the present invention as a mobile clinical research
associate framework for offline capability. Spec., Title. Independent
claim 1 is representative of the appealed claims. It is reproduced below with
modified formatting for clarity, labels added, and with emphasis added to the
language that recites an abstract idea:
1. A non-transitory computer-readable medium storing
computer-executable instructions that when executed by a
computer cause the computer to:
[(i)] receive, from a mobile device via a network
communication, a creation request that requests the
computer to create a trip report skeleton, where the trip
report skeleton is a template that allows trip report data
to be inputted and stored on the mobile device;
[(ii)] initiate, by the computer, a first thread and a second
thread to separate operations of the creation request and

1 We refer to the Specification, filed March 14, 2013 as amended June 9,
2016 (“Spec.”); Final Office Action, mailed October 6, 2017 (“Final Act.”);
Appeal Brief, filed March 8, 2018 (“Appeal Br.”); Examiner’s Answer,
mailed August 10, 2018 (“Ans.”); and Reply Brief, filed October 10, 2018
(“Reply Br.”).
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 Oracle International
Corporation. Appeal Br. 2.
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generating the trip report skeleton, wherein the first thread
and the second thread are performed asynchronously;
[(iii)] process, by the computer, the creation request in the
first thread, wherein the first thread performing [sic]:
[(iii)(a)] in response to the creation request, scheduling
creation of the trip report skeleton in the second
thread; and
[(iii)(b)] transmitting an acknowledgment
acknowledging receipt of the creation request to the
mobile device;
[(iv)] in the second thread, generating by the computer, the
trip report skeleton, wherein the generating comprises:
[(iv)(a)] retrieving a canonical trip report including
data fields from a database, and combining the
canonical trip report with metadata for rendering
the data fields from the canonical trip report on a
display of a mobile device;
[(iv)(b)] creating the trip report skeleton in a Self
Describing Object (SDO) from the combined
canonical trip report and the metadata;
[(v)] in response to receiving, by the computer from the
mobile device, a fetch request to retrieve the trip report
skeleton:
[(v)(a)] determining whether the trip report skeleton
has been created and:
[(v)(b)] when the trip report skeleton is not yet created,
allowing the fetch request to time out such that the
mobile device is enabled to make a subsequent fetch
request for the trip report skeleton; and
[(v)(c)] when the trip report skeleton has been created,
transmitting the trip report skeleton to the mobile
device; and
[(vi)] wherein the metadata allows the mobile device to
render the trip report skeleton including the template and
the data fields, wherein the trip report skeleton allows the
mobile device to input data into the data fields when the
mobile device is offline from the computer to minimize
network interactions therebetween.
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REJECTION
Claims 1, 4–6, 11–13, 15, and 28–32 stand rejected under 35 U.S.C.
§ 101 as being directed to patent-ineligible subject matter. Final Act. 2–16.

STANDARD OF REVIEW
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).

PRINCIPLES OF LAW
A. SECTION 101
Inventions for “new and useful process, machine, manufacture, or
composition of matter” generally constitute patent-eligible subject matter.
35 U.S.C. § 101. However, the U.S. Supreme Court has long interpreted
35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural
phenomena, and abstract ideas” are not patentable. E.g., Alice Corp. v. CLS
Bank Int’l, 573 U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-step framework, described in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66
(2012), and Alice. Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S. at 75–
77). In accordance with that framework, we first determine what concept
the claim is “directed to.” See Alice, 573 U.S. at 219 (“On their face, the
claims before us are drawn to the concept of intermediated settlement, i.e.,
the use of a third party to mitigate settlement risk.”); see also Bilski v.
Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’
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application explain the basic concept of hedging, or protecting against
risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Court held that “a claim drawn to subject matter otherwise statutory does not
become nonstatutory simply because it uses a mathematical formula.”
Diehr, 450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as
nothing more than a process for molding rubber products and not as an
attempt to patent a mathematical formula.”). Having said that, the Court
also indicated that a claim “seeking patent protection for that formula in the
abstract . . . is not accorded the protection of our patent laws, and this
principle cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment.” Id. at 191 (citing
Benson and Flook) (citation omitted); see, e.g., id. at 187 (“It is now
commonplace that an application of a law of nature or mathematical formula
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to a known structure or process may well be deserving of patent
protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (internal quotation marks
omitted). “A claim that recites an abstract idea must include ‘additional
features’ to ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo,
566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention.” Id.

B. USPTO SECTION 101 GUIDANCE
In January 2019, the United States Patent and Trademark Office
(“USPTO”) published revised guidance on the application of 35 U.S.C.
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) (“2019 Guidance”), updated by USPTO, October
2019 Update: Subject Matter Eligibility (available at https://www.uspto.gov/
sites/default/files/documents/peg_oct_2019_update.pdf) (jointly referred to
as “the 2019 Guidance”); see also October 2019 Patent Eligibility Guidance
Update, 84 Fed. Reg. 55942 (Oct. 18, 2019) (notifying the public of the
availability of the October update).
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Under the 2019 Guidance, we first look to whether the claim recites
the following:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activities such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h)).
2019 Guidance, 84 Fed. Reg. at 52–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, [and] conventional” in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
2019 Guidance, 84 Fed. Reg. at 56.

EXAMINER’S FINDINGS and CONTENTIONS OF ERROR
The Examiner finds claim 1 requires responding to a creation request
by acknowledging the request, scheduling creation of a trip report skeleton,
combining a trip report with metadata to create a trip report skeleton object,
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responding to a fetch request, and determining whether the trip report
skeleton has been created. Final Act. 3. The Examiner determines
These steps describe the concept of creating [Self Describing
Objects (SDOs)] and processing this object, which corresponds
to the concepts identified as abstract ideas by the courts, such as
‘an idea of itself’ [i.e., mental processes3] in Alice. An example
of “an idea of itself” is the concept of “obtaining and comparing
intangible data” (CyberSource[4]).
Final Act. 3.
According to the Examiner, “the claims recite the concept of
processing a request for [a] trip report skeleton, which, in itself, is also
intangible data describing a clinical study (Specification paragraph 0003).”
Id. The Examiner further addresses technical details recited by the claims
including, for example, receipt of the creation request from a mobile device,
use of asynchronous threads, transmission of the acknowledgement, fetch
request time out, finding these additional limitations do “not impose any
meaningful limit on the computer implementation of the abstract idea [or]
amount to significantly more than the . . . judicial exception (the abstract
idea).” Final Act. 4–5. According to the Examiner
Looking at the limitations as an ordered combination adds
nothing that is not already present when looking at the elements
taken individually. There is no indication that the combination
of elements improves the functioning of a computer or improves

3 See Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344,
1350 (Fed. Cir. 2014) (holding claims directed to “a process of organizing
information through mathematical correlations” are patent-ineligible under
§ 101).
4 CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (Fed. Cir.
2011)).
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any other technology. Their collective functions merely provide
conventional computer implementation.
Id. at 5.
The Examiner finds the asynchronous threads are recited at a high
level of generality and constitute “a well-understood, routine, and
conventional technique.” Id. Addressing the recited provision of offline
data input into the skeleton, the Examiner finds there is no requirement for
an online mode, so that “simply allowing a user to input data locally without
regards to network connection is not a technical improvement.” Id.
The Examiner concludes:
The claim does not include additional elements that are sufficient
to amount to significantly more than the judicial exception
because the additional element(s) or combination of elements in
the claim(s) other than the abstract idea per se amount(s) to no
more than: mere instructions to implement the idea on a
computer, and/or recitation of generic computer structure that
serves to perform generic computer functions that are well-
understood, routine, and conventional activities previously
known to the pertinent industry. Viewed as a whole, these
additional claim element(s) do not provide meaningful
limitation(s) to transform the abstract idea into a patent eligible
application of the abstract idea such that the claim(s) amounts to
significantly more than the abstract idea itself.
Id. at 6.
Appellant contends the rejection is deficient based on an absence of
citations to relevant court cases finding substantially identical subject matter
to be abstract. Appeal Br. 11–12. Appellant further argues the claims are
directed to a technical improvement, not an abstract idea, arguing “claim 1 is
directed to an improvement to the computer itself by more efficiently
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processing trip report requests from mobile devices by separating specific
functions into asynchronous threads in a novel technique.” Id. at 13.
According to Appellant, separating the functions into asynchronous
threads better distributes server resources and allows a fetch request to be
timed-out if the skeleton is not ready. Id. at 13–15. Appellant further argues
the claimed implementation using a self-describing object (SDO) provides
an improvement to offline processing and reduces network communications.
Id. at 15. According to Appellant, rather than being directed to an abstract
idea, “[t]he claim addresses a computer network related challenge (a mobile
device engaged in lengthy connection with a server while the server is
processing a trip report request and creating a template) that is particular to
network communication.” Id. at 16.
The Examiner responds, finding “[t]he claims recite the concept of
processing requests for a ‘trip report skeleton’ [defined] as storing
information regarding a clinical study.” Ans. 3 (citing Spec. ¶ 3). The
Examiner finds “[e]ssentially, a ‘trip report skeleton’ is a data container or
template used to enter data.” Id. According to the Examiner, the claimed
steps of receiving a request to, create and report the availability of a skeleton
involves “[t]he concept of comparing the fetch request to a group of requests
currently being processed to determine if the request has been completed
amounts to a comparison of abstract data objects, which is similar to at least
one concept identified by the courts.” Id. (citing CyberSource).
The Examiner notes the argued technical improvements are additional
elements properly considered under step 2B of the USPTO analysis. Ans. 4.
Nonetheless, the Examiner finds the claimed asynchronous threads are well-
understood, routine, and conventional in the art and that “[a]t best, Appellant
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has merely invoked a well-known technical tool to implement the abstract
concept.” Id.
In support of the finding, the Examiner cites to Linenbach,
US 6,480,847 B1 (issued Nov. 12, 2002), as describing the use of multi-
threading to perform tasks simultaneously and independently of each other.
Id. (citing Linenbach col. 1, ll. 38–48). The Examiner further finds
Linenbach discloses allowing a user to retry an operation in a thread that is
taking too long to complete operations. Id.
Addressing the offline feature, the Examiner finds such functionality
is widely available in computers and mobile devices while, at the same time,
the claims do not require an Internet connection. Id. at 5.
Appellant disputes the Examiner’s findings and conclusions. Reply
Br. 2–15. Of particular note, Appellant contends:
The combination of elements recited in the independent
claims are not well-understood, routine and conventional.
Proper evidence (as required by Berkheimer[5] and the USPTO
Berkheimer Memo of April 19, 2018[6]) has not been provided
by the Examiner to refute this fact. The Examiner has only made
conclusory statements based on dissected claim elements, which
fail to meet the requirement for a proper § 101 rejection.
Reply Br. 6.

5 Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018).
6 USPTO Memorandum of April 19, 2018, “Changes in Examination
Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter
Eligibility Decision (Berkheimer v. HP, Inc.)” (Apr. 19, 2018), available at
https://www.uspto.gov/sites/default/files/documents/memo-berkheimer-
20180419.PDF (“USPTO Berkheimer Memorandum”)
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ANALYSIS
Except as noted, we adopt as our own the findings, determinations,
and reasons set forth by the Examiner in the (1) action from which this
appeal is taken (Final Act. 2–16) and (2) Examiner’s Answer in response to
Appellant’s Appeal Brief (Ans. 3–6) and concur with the findings,
determinations and conclusions reached by the Examiner. We highlight the
following for emphasis.
Step 2A, Prong 1
Under step 2A, prong 1, of the 2019 Guidance, we first look to
whether the claim recites any judicial exceptions, including certain
groupings of abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activities such as fundamental economic principles or
practices, or mental processes). 2019 Guidance, 84 Fed. Reg. at 52–54.
Limitation (i) recites “receive . . . a creation request that requests . . . a
trip report skeleton . . . ” Receiving a request, i.e., information, reasonably
can be characterized as reciting mental processes that entail concepts that
can be performed in the human mind, i.e., an observation. The
2019 Guidance expressly recognizes mental processes, including
observations, evaluations, judgments, and opinions that can be performed in
the human mind, as patent-ineligible abstract ideas. Accordingly,
limitation (i) reasonably can be characterized as reciting a judicial exception
to patent-eligible subject matter.
Limitation (ii) recites “separate operations of the creation request and
generating the trip report skeleton.” The act of separating operations
reasonably can be characterized as an act of sorting. Sorting, in turn,
reasonably can be characterized as an evaluation or judgment that can be
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performed in the human mind. Accordingly, limitation (ii) reasonably can
be characterized as reciting a mental process that is recognized by the
2019 Guidance.
Limitation (iii)(a) and (iii)(b) recite, inter alia, [(iii)(a)] in response to
the creation request, scheduling creation of the trip report skeleton . . . ; and
[(iii)(b)] transmitting an acknowledgment acknowledging receipt of the
creation request;
The act of scheduling the creation of a trip report skeleton (or
anything else) reasonably can be characterized as a judgment that can be
performed in the human mind. As such, limitation (iii)(a) reasonably can be
characterized as reciting a mental process, which the 2019 Guidance
recognizes as an abstract idea.
The act of transmitting an acknowledgment reasonably can be
characterized as a certain method of organizing human activity. More
specifically, transmitting an acknowledgment reasonably can be
characterized as managing interactions between people, such as teaching.
The 2019 Guidance recognizes such certain methods of organizing human
activity as another type of abstract idea.
Limitation (iv) recites
[(iv)] generating . . . the trip report skeleton, wherein the
generating comprises:
[(iv)(a)] retrieving a canonical trip report including
data fields from a database, and combining the
canonical trip report with metadata for rendering the
data fields from the canonical trip report on a
display of a mobile device; [and]
[(iv)(b)] creating the trip report skeleton . . . from the
combined canonical trip report and the metadata.
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Retrieving a canonical trip report including data fields from a
database, as recited in limitation (iv)(a), reasonably reads on a person
visually observing the data fields in a printed database. As such, the
retrieving step reasonably can be characterized as constituting a mental
observation that can be performed in the human mind.
Combining the canonical trip report with metadata for the purpose of
subsequently rendering the data fields from the canonical trip report on a
display of a mobile device reasonably reads on compiling a paper report
with printed data (or metadata). As such, the combining step reasonably can
be characterized as an evaluation, judgment, or opinion that can be
performed in the human mind or with the aid of pen and paper.
Accordingly, such combining of the report and metadata reasonably can be
characterized as a mental process that the 2019 Guidance recognizes as an
abstract idea. See October 2019 PEG Update at 9 (“A claim that
encompasses a human performing the step(s) mentally with the aid of a pen
and paper [still] recites a mental process”) (emphasis omitted).
Limitation (iv)(b)’s step of “creating the trip report skeleton . . . from
the combined canonical trip report and the metadata” reasonably reads on
creating a report with pen and paper. As such, this step of creating the trip
report skeleton reasonably can be characterized as an observation, judgment,
or opinion that can be performed in the human mind.
Limitation (v) recites, in part, “in response to receiving . . . a fetch
request to retrieve the trip report skeleton,” [performing steps (v)(a) through
(v)(c) subject to limitation (vi)]. Thus, limitation (v) requires recognizing a
fetch request, which is a type of observation. That is, receiving the recited
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fetch request reasonably can be characterized as a mental process that the
2019 Guidance recognizes as an abstract idea.
Limitation (v)(a) recites “determining whether the trip report skeleton
has been created.” This determining step reasonably can be characterized as
another observation that can be performed in the human mind and, therefore,
reasonably can be characterized as a mental process that the 2019 Guidance
recognizes as an abstract idea.
Limitation (v)(b) recites what is to be done when the trip report
skeleton is not yet created—allowing the fetch request to time out.
Thus, the limitation may be characterized as inaction. Deciding to
wait and do nothing, as recited by limitation (v)(b), can be
accomplished in the human mind. Accordingly, limitation (v)(b)
reasonably can be characterized as reciting a mental process.
Limitation (v)(c) recites “transmitting the trip report skeleton” under
the condition of “when the trip report skeleton has been created.” Again,
this transmission step is recited broadly enough as to be accomplished using
pen and paper. As such, the transmission step reasonably can be
characterized as a mental process, such as expressing an opinion.
Accordingly, limitation (v)(c) reasonably can be characterized as a mental
process.
Limitation (vi) recites, in part,
wherein the metadata allows the mobile device to render the trip report
skeleton including the template and the data fields, wherein the trip
report skeleton allows the mobile device to input data into the data fields
when the mobile device is offline from the computer to minimize
network interactions therebetween.
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That is, limitation (vi) recites requirements for the type of metadata
that is attached to the canonical trip report to allow the entry of data into data
fields. As such, the description of the metadata merely constitutes a more
specific description of the data that is attached to the report in step (iv)(b).
For the reasons discussed above in relation to step (iv)(b), then, limitation
(vi) also reasonably can be characterized as mental processes that the
2019 Guidance recognizes to be abstract idea.
For these reasons, each of limitations (i) through (vi) reasonably can
be characterized as reciting judicial exceptions to patent-eligible subject
matter under step 2A, prong 1, of the 2019 Guidance.
Step 2A, Prong 2
Under step 2A, prong 2, of the 2019 Guidance, we next analyze
whether claim 1 recites additional elements that individually or in
combination integrate the judicial exception into a practical application.
2019 Guidance, 84 Fed. Reg. at 53–55. The 2019 Guidance provides
exemplary considerations that are indicative of an additional element or
combination of elements integrating the judicial exception into a practical
application, such as an additional element reflecting an improvement in the
functioning of a computer or an improvement to other technology or
technical field. Id. at 55; MPEP § 2106.05(a).
Claim 1’s limitation (i) more fully recites “receive, from a mobile
device via a network communication, a creation request that requests the
computer to create a trip report skeleton, where the trip report skeleton is a
template that allows trip report data to be inputted and stored on the mobile
device.” In addition to reciting an abstract idea, as explained above,
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limitation (i) also can be characterized reasonably as merely constituting
insignificant pre-solution activity:
An example of pre-solution activity is a step of gathering data for
use in a claimed process, e.g., a step of obtaining information
about credit card transactions, which is recited as part of a
claimed process of analyzing and manipulating the gathered
information by a series of steps in order to detect whether the
transactions were fraudulent.
MPEP § 2106.05(g).
Similarly, claim 1’s final step of “when the trip report skeleton has
been created, transmitting the trip report skeleton to the mobile device”
(limitation (v)(c)) does not add any meaningful limitations to the abstract
idea because it reasonably may be characterized as merely being directed to
the insignificant post-solution activity of transmitting data. E.g., Apple, Inc.
v. Ameranth, Inc., 842 F.3d 1229, 1241–42 (Fed. Cir. 2016) (holding that
printing or downloading generated menus constituted insignificant extra-
solution activity).
Appellant argues the use of asynchronous threads constitutes a
technological improvement:
the functioning of the computer itself is improved by separating
the functions of processing the request (which are internal
computer operations) to create the trip report and generating the
trip report as described in the present specification [0011 and
0013]. Conventional systems did not separate the processing of
the request to create a trip report and the functions of generating
the trip report into separate asynchronous threads. No prior art
has been cited that teaches such techniques.
Appeal Br. 14 (bracketing in original).
Appellant’s argument is unpersuasive of reversible Examiner error.
Appellant does not assert that it has improved the concept of computer
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threads by inventing threads that run in an asynchronous manner. See
generally Spec. In fact, asynchronous threads are not inventive.7
Rather, Appellant merely discloses that the invention uses such
asynchronous threads so that Appellant’s computer method runs more
efficiently than if a single thread were employed to both create and then
generate the trip report. Spec. 3. As such, Appellant’s improvement of
using asynchronous threads entails using a generic technical tool to
implement the claimed abstract concept of creating a fillable template. It
does not entail an improvement to the technology that carries out these
abstract idea.
As an analogy, consider a scenario wherein a customer of a brick-and-
mortar office supply store places an order with a sales clerk for copies of a
customized form (step (i)). The sales clerk acknowledges the order and
transmits the order to the appropriate store personnel, such as the operator of
a copy machine (steps (ii) and (iii)). The appropriate store personnel would
retrieve a standardized form (e.g., a stock sales or real estate agreement or
contract having blanks fields for insertion of designated information, such

7 See, e.g., Microsoft Computer Dictionary, Fifth Ed. 38 (available at
https://burmastarrecords.files.wordpress.com/2009/12/microsoft_computer_
dictionary__fifth_edition1.pdf) (defining an asynchronous operation as “[a]n
operation that proceeds independently of any timing mechanism, such as a
clock:); id. (defining asynchronous communications as “[c]omputer-to-
computer communications in which the sending and receiving computers do
not rely on timing as a means of determining where transmissions begin and
end”); id. at 39 (defining an asynchronous procedure call as “[a] function
call that executes separately from an executing program when a set of
enabling conditions exist. After the conditions have been met, the operating
system’s kernel issues a software interrupt and directs the executing program
to execute the call”).
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as names and addresses), add the customer requested information (e.g., the
name of the company and form identifying information, such as a title or
number) to create the customized form (steps (iv), (iv)(a), and (iv)(b) in
accordance with limitation (vi)).
In response to the customer requesting the delivery of the customized
form, as ordered (step v), the sales clerk would determine whether the
customized form had been created (step (v)(a)) and, if so, provide the
completed order to the customer (step (v)(c)). If the order was not ready, the
sales clerk would inform the customer and suggest the customer check back
later (step (v)(b)).
Thus, the analogy illustrates that, overall, claim 1 reasonably can be
characterized as a certain method of organizing human activity.
Furthermore, Appellant’s purported improvement, under this analogy,
entails, instead of waiting until the customized form is completed before
acknowledging the receipt of the customer’s request, having the sales clerk
acknowledge the receipt asynchronously from generating the requested
customized form. In this hypothetical analogy, the overall efficiency of
processing customer orders may be improved (i.e., the underlying concept)
without improving how the orders are received or how the forms are
generated (i.e., without improving a technical aspect of form processing.)
Accordingly, Appellant’s arguments that asynchronous threads
provide technical advantages (Appeal Br. 13–16) are unpersuasive because
the problems that these features are used to address are not problems that are
unique or limited to computer environments. Although the claimed method
is implemented using a computer and specific computer operations and
structures, these specifics of the invention find direct analogs in a manual
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implementation, as illustrated above. As such, the claimed use of
asynchronous threads to create a fillable template reasonably can be
characterized as entailing a computerized automation, using a generic tool
that is described at a high level, of an improvement to the underlying method
of interacting between people.
We also are unpersuaded that the recited timeout requirement is a
technological advancement. See Appeal Br. 14–15. Instead, notifying a user
that a request for services has been received while processing the request,
such that the user can issue subsequent requests for the service, is a feature
of the underlying concept of providing a customized form or template for
data, such as a trip report. Such timeouts were common in everyday events
prior to the advent of the Internet. For example, a customer initially may
request a product be prepared (i.e., created), and then upon waiting a
reasonable amount of time, periodically ask an agent about the status of the
order (e.g., whether the product is ready for delivery) and re-submit the
request for delivery. Thus, we are unpersuaded that providing a timeout to
allow repeated requests for delivery of a product or service, as claimed,
constitutes a technological improvement.
We also are unpersuaded that using a Self Describing Object (SDO)
for providing the skeleton constitutes a technical improvement. According
to Appellant, the use of the SDO allegedly allows offline data entry and,
thereby, reduces network communications between a server and a mobile
device. See Appeal Br. 15–16 (arguing requirements of an SDO). But under
a broad but reasonable interpretation, a trip report need only include some
form of identification information to satisfy the recited SDO requirement,
such as file name, file type, identification of fillable fields. Rather than
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providing a technical improvement, then, the use of an SDO merely
constitutes a technical-implementation detail that enables the underlying
concept of creating a fillable template to be undertaken with the aid of a
computer, rather than be manually provided as a printed a form with a form
title and/or field names. Like the asynchronous threads and the timeout
requirement, using an SDO merely limits the abstract idea to a particular
technological environment, but does not, itself, provide a technological
improvement.
Thus, the alleged improvement lies in the abstract idea itself, not to
any technological improvement. That is, the “focus” of the claim is not “on
the specific asserted improvement in computer capabilities” (Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016)), but rather on using
the computer as a tool to implement the abstract idea in the particular field
of creating a fillable template. See Affinity Labs of Tex., LLC v. DIRECTV,
LLC, 838 F.3d 1253, 1259 (Fed. Cir. 2016) (“[M]erely limiting the field of
use of the abstract idea to a particular . . . environment does not render the
claims any less abstract”).
We also are unpersuaded that separating the “processing of the request
to create a trip report and the functions of generating the trip report into
separate asynchronous threads” constitutes a technological improvement or
otherwise renders the claims patent-eligible merely due to the fact, as
Appellant contends, that “[n]o prior art has been cited that teaches such
techniques.” Appeal Br. 14. A novel and nonobvious abstract idea is still
patent ineligible. See SAP Am., Inc. v. Investpic, LLC, 890 F.3d 1016, 1018
(Fed. Cir. 2018) (“Nor is it enough for subject-matter eligibility that claimed
techniques be novel and nonobvious in light of prior art, passing muster
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under 35 U.S.C. §§ 102 and 103.”); Synopsys, 839 F.3d at 1151 (“[A] claim
for a new abstract idea is still an abstract idea.”)
Appellant’s reliance on Research Corp. Techs. Inc. v. Microsoft
Corp., 627 F.3d 859 (Fed. Cir. 2010) also is unpersuasive. See Appeal
Br. 19. This case predates the Alice decision and does not employ the Alice
steps or process set forth in the 2019 Guidance and is, therefore, unhelpful.
Furthermore, the case is distinguishable over the claims now on
appeal. In Research Corp., the claims recited methods for halftoning gray
scale images using a pixel-by-pixel comparison of the image against a blue
noise mask to produce dot profiles thresholded at any level of gray scale
images. Research Corp., 627 F.3d at 865. The claims thus recited
functional, palpable improvements in computer technology for halftoning.
Id. at 868–69. Here, claim 1 recites steps for creating and filling a template,
rather than computer improvements for deghosting or other computer
technology.
We also are not persuaded that the claims are patent-eligible based on
any similarity with the subject matter determined to be patent-eligible in
BASCOM8 and DDR Holdings,9 as argued. See Appeal Br. 19–20.
In BASCOM, the court determined that “an inventive concept can be found
in the non-conventional and non-generic arrangement of known,
conventional pieces.” BASCOM, 827 F.3d at 1350. In that case, the
installation of a filtering tool at a specific location, remote from the end
users, with customizable filtering features specific to each end user, provided

8 BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341
(Fed. Cir. 2016).
9 DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014).
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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. Id.
No analogous achievement of a technical improvement exists here.
Appellant has not shown that any of the presently claimed steps address a
technological problem.
Appellant’s reliance on DDR Holdings (Appeal Br. 20) likewise is
misplaced. In DDR Holdings, the claims at issue involved web-page
displays with “at least one active link associated with a commerce object
associated with a buying opportunity of a selected one of a plurality of
merchants.” DDR Holdings, 773 F.3d at 1249.
In determining that the claims in DDR Holdings were not abstract, the
court noted
these claims stand apart because they do not merely recite the
performance of some business practice known from the pre-
Internet world along with the requirement to perform it on the
Internet. Instead, the claimed solution is necessarily rooted in
computer technology in order to overcome a problem specifically
arising in the realm of computer networks.
Id. at 1257.
Here, as we noted above, the problem of separating the threads or
tasks of requesting the creation of a trip report skeleton and subsequently
creating the skeleton does not specifically arise from a technology, such as
computers or computer networks.
For the reasons discussed, we agree with the Examiner that the claims
do not include additional elements that are sufficient to amount to
significantly more than the judicial exception because the additional
elements do not effect an improvement to another technology, technical
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field, or to the functioning of a computer itself. See MPEP § 2106.05(a).
We further determine claim 1 does not recite:
(i) an application of the abstract idea with, or by use of, a
particular machine;
(ii) a transformation or reduction of a particular article to a
different state or thing; or
(iii) other meaningful limitations beyond generally linking the
use of the abstract idea to a particular technological
environment.
See id. § 2106.05(b), (c), (e)–(h). Instead, the record reasonably indicates
that any claimed improvement is to the underlying abstract idea of providing
items to a customer by collecting and using/analyzing data. Thus, claim 1
does not integrate the judicial exception into a practical application.
Step 2B
Under step 2B of the 2019 Guidance, we next analyze whether
claim 1 adds any specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional” in the field. 2019 Guidance,
84 Fed. Reg. at 56; MPEP § 2106.05(d). In so doing, we analyze the claim
elements individually and as an ordered combination. See Alice, 573 U.S. at
217–18, 221–22 (“[W]e consider the elements of each claim both
individually and ‘as an ordered combination’” to determine whether the
claim includes “significantly more” than the ineligible concept)
(quoting Mayo, 566 U.S. at 78–79); see also Bascom Glob. Internet Servs.,
Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016)] (“[A]n
inventive concept can be found in the non-conventional and non-generic
arrangement of known, conventional pieces.”).
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The Examiner finds
[The recited] computer components are recited as a high level of
generality and are recited as performing generic computer
functions routinely used in computer applications. Generic
computer components recited as performing generic computer
functions that are well-understood, routine and conventional
activities amount to no more than implementing the abstract idea
with a computerized system.
Final Act. 4.
Appellant contends the rejection is deficient, arguing the Examiner
failed to provide sufficient evidence that the claim elements are well-
understood, routine, and conventional. Reply Br. 5–10 (citing Berkheimer
881 F.3d at 1369–70 and the USPTO Berkheimer Memorandum).
In particular, Appellant argues “[t]he recited combination of elements
is not well-understood, routine, and conventional.” Reply Br. 7. In addition
to this generalized allegation directed to claim 1 overall, Appellant argues
(i) the Examiner’s reliance on Linenbach is inadequate “to support a
conclusion that ‘it [was] well known for multi-threading to split up tasks on
a database operation so that they may be performed independently of each
other.’” Id. at 8 (citing Final Act. 4). Appellant further argues Linenbach
“fails to even discuss ‘asynchronous’ threads, which is the primary basis of
the Examiner’s rejection.” Id. at 9. Appellant still further argues Linenbach
fails to discuss “timing-out a fetch request when a trip report skeleton is not
created.” Id. at 10. Appellant contends that because “no appropriate
evidence has been presented, the claim elements, as a whole and as an
ordered combination[,] are not ‘well-understood, routine, and conventional.’
Accordingly, the Federal Circuit in Berkheimer requires that claim 1 be
found patent eligible.” Id.
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Appellant’s contention is unpersuasive of Examiner error. Although
we consider the claim as a whole under Step 2B, we more specifically
determine whether the additional elements recited in the claim, as opposed
to the underlying abstract ideas, provide “a specific limitation or
combination of limitations that are not well-understood, routine,
conventional activity in the field,” or whether these elements “simply
append[] well-understood, routine, conventional activities previously known
to the industry, specified at a high level of generality.” 2019 Guidance, 84
Fed. Reg. at 56.
As a threshold matter, Appellant’s repetition of the entirety of claim 1,
without specifying which additional elements are contended not to be well-
understood, routine and conventional (Reply Br. 7), is unpersuasive. “A
statement [that] merely points out what a claim recites will not be considered
an argument for separate patentability of the claim.” 37 C.F.R.
§ 41.37(c)(1)(iv).
We, instead, consider under Step 2B, the specific limitations beyond
the judicial exception, as identified above in connection with Step 2A,
Prong 2, including the recited mobile device, threads, computer, self
describing object, transmission of data to the mobile device, and offline
processing.
Appellant’s Specification merely describes the mobile device as a
computer. Spec. ¶ 40. Court decisions have recognized that generic
computer-system components operating to communicate, manipulate, and
display 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, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1234, 1241–42
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(Fed. Cir. 2016); Symantec, 838 F.3d at 1316–20; Versata Dev. Group Inc.
v. SAP Am. Inc., 793 F.3d 1306, 1334 (Fed. Cir. 2015); Ultramercial, Inc. v.
Hulu, LLC, 772 F.3d 709, 715–716 (Fed. Cir. 2014); buySAFE, Inc. v.
Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014).
Likewise, receiving or transmitting data over a network is also
recognized as well-understood, routine and conventional. See, e.g., OIP
Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015);
MPEP § 2106.05(d).
In addressing the recited asynchronous threads, the Examiner finds
Linenbach evidences that “it [was] well known for multi-threading to split
up tasks of a database operation so that they may be performed
independently of each other (column 1 line 38-48)” and that “if an operation
in a thread is taking too long, the user is given the option to retry the
operation (column 43-48), all the while without having to wait for the
operation to terminate.” Ans. 4.
Appellant argues Linenbach is deficient because the disclosure “has
nothing to do with timing-out a fetch request when a trip report skeleton is
not created [as claimed].” Reply Br. 10. However, such argument is
unpersuasive of Examiner error because the argument fails to address the
Examiner’s findings.
In particular, the Examiner cites Linenbach as evidence that
asynchronous threads, when considered as a specific limitation beyond the
judicial exception (i.e., the mental processes of creation request and
generating the trip report skeleton), simply appends well-understood,
routine, conventional activities previously known to the industry, specified
at a high level of generality, to the judicial exception. Thus, Appellant’s
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argument that Linenbach fails to describe the specific abstract concept that is
implemented using asynchronous threads (i.e., a specific limitation beyond
the judicial exception) is unpersuasive as the argument, itself, does not
address the Examiner’s findings regarding the asynchronous threads
themselves, i.e., that asynchronous threads are well-understood, routine, and
conventional.
Likewise, we are unpersuaded by Appellant’s argument that
Linenbach is deficient because it “discuss[es] a very particular use of multi-
threading.” Reply Br. 9. There is no indication that Linenbach considers
multithreading to be limited to the disclosed usage. Therefore, we agree
with the Examiner that Linenbach’s disclosure of splitting up functions of an
application into independently executable tasks that are separately executed
by a collection of threads, thereby allowing the tasks to be accomplished
concurrently, (Linenbach col. 1, ll. 39–44) is persuasive evidence that
asynchronous threads were well-understood, routine, and conventional.
We are also not persuaded by Appellant’s argument that “citing to one
prior art reference fails to meet the high standard of determining that
something is well-understood, routine and conventional.” Reply Br. 8. The
Berkheimer Memo sets forth that “merely finding the additional element in a
single patent or published application would not be sufficient to demonstrate
that the additional element is well-understood, routine, conventional, unless
the patent or published application demonstrates that the additional element
are widely prevalent or in common use in the relevant field.” USPTO
Berkheimer Memorandum p.4 (emphasis added). Here, the Background
section of Linenbach cited by the Examiner discloses database management
systems are in wide spread use and that database application use of
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multithreading enhances performance by allowing tasks to be accomplished
concurrently. Linenbach col. 1, ll. 24–26, 36–45. Thus, the present situation
is not one in which a single reference discloses that only the inventor used
an additional element. Linenbach, instead, evidences that asynchronous
threads (i.e., multithreading with independently operating threads) were
commonly used by others, as well as by inventor Linenbach. Linenbach
col. 1, ll. 38–48. Accordingly, we are not persuaded the Examiner erred in
the Step 2B analysis.
Because the Examiner correctly concluded claim 1 is directed to a
judicial exception, and because Appellant does not identify any error in the
Examiner’s determination under step 2B of the 2019 Guidance, we sustain
the rejection of claim 1 under 35 U.S.C. § 101. Appellant does not present
arguments pertaining to any other claim. Accordingly, we treat claim 1 as
representative, and we sustain the rejection of the pending claims under
35 U.S.C. § 101.

CONCLUSION

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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED
Claims Rejected 35 U.S.C. § Basis Affirmed Reversed
1, 4–6, 11–13,
15, 28–32
§ 101 Eligibility 1, 4–6, 11–13,
15, 28–32