Moo Young Kim et al.

Patent Trials and Appeals Board

Jul 24, 2019

14712849 - (D) (P.T.A.B. Jul. 24, 2019)

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.
14/712,849 05/14/2015 Moo Young Kim 1414-083US01/144883U3 1006
15150 7590 07/24/2019
Shumaker & Sieffert, P. A.
1625 Radio Drive, Suite 100
Woodbury, MN 55125
EXAMINER
SHAH, BHARATKUMAR S
ART UNIT PAPER NUMBER
2677
NOTIFICATION DATE DELIVERY MODE
07/24/2019 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):
ocpat_uspto@qualcomm.com
pairdocketing@ssiplaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MOO YOUNG KIM, NILS GÜNTHER PETERS and
DIPANJAN SEN
___________

Appeal 2018-008291
Application 14/712,849
Technology Center 2600
____________

Before ST. JOHN COURTENAY III, LARRY J. HUME, and
PHILLIP A. BENNETT, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1–19 and 21–30, which constitute all the claims
pending in this application. Claim 20 is cancelled. We have jurisdiction
over the pending claims under 35 U.S.C. § 6(b).
We affirm-in-part.

1 According to Appellants, the real party in interest is Qualcomm Inc. App.
Br. 3.
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STATEMENT OF THE CASE 2
Disclosed embodiments of Appellants’ claimed invention relate to the
“coding of higher-order ambisonic audio data.” Spec. ¶ 2.

Illustrative Claim
1. A method of decoding audio data comprising a vector
quantized spatial component of a soundfield, the method
comprising:

selecting, by a processor, one of a plurality of codebooks
to use when performing vector dequantization with respect to
the vector quantized spatial component, the vector quantized
spatial component defined in a spherical harmonic domain, and
obtained through application of a decomposition to a plurality
of higher order ambisonic coefficients;

performing, by the processor, vector dequantization with
respect to the vector quantized spatial component using the
selected one of the plurality of codebooks to obtain a vector
dequantized spatial component of the soundfield;

rendering, by the processor and based on the vector
dequantized spatial component, speaker feeds.
App. Br. 35 (Claims App’x).

Rejection
Claims 1–19 and 21–30 are rejected under 35 U.S.C. § 101 as being
directed to a judicial exception, without significantly more. Final Act. 2.

2 We herein refer to the Final Office Action, mailed Dec. 22, 2017 (“Final
Act.”); Appeal Brief, filed May 22, 2018 (“App. Br.”); Examiner’s Answer,
mailed July 3, 2018 (“Ans.”); and the Reply Brief, filed Aug. 21, 2018
(“Reply Br.”).
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Issue on Appeal
Did the Examiner err in rejecting claims 1–19 and 21–30 under
35 U.S.C. § 101 as being directed to a judicial exception, without
significantly more?
ANALYSIS
We have considered all of Appellants’ arguments and any evidence
presented. To the extent Appellants have not advanced separate, substantive
arguments for particular claims, or other issues, such arguments are waived.
See 37 C.F.R. § 41.37(c)(1)(iv).
We have reviewed Appellants’ arguments in the Briefs, the
Examiner’s rejections, and the Examiner’s responses to Appellants’
arguments. For at least the reasons discussed below, we are not persuaded
the Examiner erred regarding the rejection under § 101 of “method” claims
1–9, 27, and 29. However, we reverse the § 101 rejection of “device”
claims 10–19, 21–26, 28, and 30, for the reasons discussed infra. In our
analysis below, we highlight and address specific findings and arguments for
emphasis.
Principles of Law — 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.
However, the 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. Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 70 (2012) (citing Diamond v. Diehr, 450 U.S. 175, 185
(1981)).
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In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014)
(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.” (emphasis omitted)); see also Bilski v. Kappos, 561 U.S. 593, 611
(2010) (“Claims 1 and 4 in petitioners’ 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, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding of rubber products” (Diehr, 450 U.S. at 193); “tanning,
dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores”
(id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. (15 How.) 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
Supreme 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
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products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme 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. (citing Benson and Flook); see, e.g., id. at 187 (“It is now
commonplace that an application of a law of nature or mathematical formula
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.
“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.

Subject Matter Eligibility — 2019 Revised Guidance
The USPTO recently published revised guidance on the application of
35 U.S.C. § 101. See 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019 Revised Guidance”). This
new guidance is applied in this opinion. Under the 2019 Revised Guidance,
we first look to whether the claim recites:
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(1) any judicial exceptions, including certain groupings
of abstract ideas (i.e., mathematical concepts, mental processes,
or certain methods of organizing human activity such as a
fundamental economic practice or managing personal behavior
or relationships or interactions between people); and
(2) additional elements that integrate the judicial
exception into a practical application (see Manual of Patent
Examining Procedure (“MPEP”) §§ 2106.05(a)–(c), (e)–(h)).3
See 2019 Revised Guidance, 84 Fed. Reg. at 51–52, 55.
A claim that integrates a judicial exception into a practical application
applies, relies on, or uses 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. See 2019
Revised Guidance, 84 Fed. Reg. at 54. When the judicial exception is so
integrated, then the claim is not directed to a judicial exception and is patent
eligible under § 101. Id.
Only if a claim: (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then evaluate
whether the claim provides an inventive concept. See 2019 Revised
Guidance at 56; Alice, 573 U.S. at 217–18.
For example, we look to whether the claim:
(3) adds a specific limitation beyond the judicial
exception that is not “well-understood, routine, conventional”
in the field (see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, and
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial exception.

3 All references to the MPEP are to the Ninth Edition, Revision 08–2017
(rev. Jan. 2018).
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See 2019 Revised Guidance, 84 Fed. Reg. at 56.
Because there is no single definition of an “abstract idea” under Alice
step 1, the PTO has recently synthesized, for purposes of clarity,
predictability, and consistency, key concepts identified by the courts as
abstract ideas to explain that the “abstract idea” exception includes the
following three groupings:
1. Mathematical concepts—mathematical relationships,
mathematical formulas or equations, mathematical
calculations;
2. Mental processes— concepts performed in the human mind
(including an observation, evaluation, judgment, opinion);
and
3. Certain methods of organizing human activity—fundamental
economic principles or practices (including hedging,
insurance, mitigating risk); commercial or legal interactions
(including agreements in the form of contracts; legal
obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior
or relationships or interactions between people (including
social activities, teaching, and following rules or
instructions).

See 2019 Revised Guidance, 84 Fed. Reg. at 52.
According to the 2019 Revised Guidance, “[c]laims that do not recite
[subject] matter that falls within these enumerated groupings of abstract
ideas should not be treated as reciting abstract ideas,” except in rare
circumstances. Even if the claims recite any one of these three groupings of
abstract ideas, these claims are still not “directed to” a judicial exception
(abstract idea), and thus are patent eligible, if “the claim as a whole
integrates the recited judicial exception into a practical application of that
exception.” See 2019 Revised Guidance, 84 Fed. Reg. at 53.
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For example, limitations that are indicative of “integration into a
practical application” include:
1. Improvements to the functioning of a computer, or to any
other technology or technical field – see MPEP
§ 2106.05(a);
2. Applying the judicial exception with, or by use of, a
particular machine – see MPEP § 2106.05(b);
3. Effecting a transformation or reduction of a particular
article to a different state or thing – see MPEP
§ 2106.05(c); and
4. Applying or using the judicial 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 –
see MPEP § 2106.05(e).

In contrast, limitations that are not indicative of “integration into a
practical application” include:
1. Adding the words “apply it” (or an equivalent) with the
judicial exception, or merely include instructions to
implement an abstract idea on a computer, or merely uses
a computer as a tool to perform an abstract idea – see
MPEP § 2106.05(f);
2. Adding insignificant extra-solution activity to the judicial
exception – see MPEP § 2106.05(g); and
3. Generally linking the use of the judicial exception to a
particular technological environment or field of use – see
MPEP 2106.05(h).
See 2019 Revised Guidance, 84 Fed. Reg. at 54–55 (“Prong Two”).

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2019 Revised Guidance, Step 2A, Prong One
The Judicial Exception
Under the 2019 Revised Guidance, we begin our analysis by first
considering whether the claims recite any judicial exceptions, including
certain groupings of abstract ideas, in particular: (a) mathematical concepts,
(b) mental steps, and (c) certain methods of organizing human activities.
Regarding independent method claim 1, we observe the claim recites
the steps or acts of: “performing vector dequantization with respect to the
vector quantized spatial component . . . [and] application of a decomposition
to a plurality of higher order ambisonic coefficients . . . [and] performing . . .
vector dequantization with respect to the vector quantized spatial component
using the selected one of the plurality of codebooks . . . .” (emphasis added).
Turning to the Specification for context, we note the descriptions of
the corresponding mathematical concepts, as supported with detailed
explanations and equations. See, e.g., Spec. ¶ 6 (“a device configured to
obtain a plurality of higher order ambisonic (HOA) coefficients, the device
comprises one or more processors configured to obtain from a bitstream data
indicative of a plurality of weight values that represent a vector that is
included in a decomposed version of the plurality of HOA coefficients.” See
also, e.g., Spec. ¶¶ 7–8, 13, 17, 27, 28, 120 (showing pseudocode to
reconstruct the V-vectors), and 121 (“When the ith NbitsQ value for the kth
frame equals 4, the v-vector reconstruction unit 74 determines that vector
dequantization is to be performed.”).
Given the claim language and the supporting context set forth in the
Specification, we conclude the aforementioned limitations of claim 1 recite
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an abstract idea, i.e., mathematical concepts and mathematical
relationships.4 See 2019 Revised Guidance, 84 Fed. Reg. at 52.
We additionally observe method claim 1 recites “selecting . . . one of
a plurality of codebooks . . . [and] using the selected one of the plurality of
codebooks.” (emphasis added). We conclude these limitations could be
performed alternatively in the human mind, or with the aid of pen and
paper.5 See 2019 Revised Guidance, 84 Fed. Reg. at 52.
Thus, we conclude the aforementioned limitations of method claim 1
recite an abstract idea — mathematical concepts, i.e., mathematical
relationships, and also mental processes, i.e., concepts performed in the
human mind. See 2019 Revised Guidance, 84 Fed. Reg. at 52.
However, we note the additional limitation of a generic structural
computer element that is not a judicial exception: “a processor” (claim 1).
See 2019 Revised Guidance, 84 Fed. Reg. at 52. We note McRo, Inc. v.
Bandai Namco Games America Inc. (837 F.3d 1299 (Fed. Cir. 2016)),
guides: “[t]he abstract idea exception prevents patenting a result where ‘it
matters not by what process or machinery the result is accomplished.’” 837

4 Throughout this opinion, we give the claim limitations the broadest
reasonable interpretation consistent with the Specification. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).

5 If a method can be performed by human thought alone, or by a human
using pen and paper, it is merely an abstract idea and is not patent eligible
under § 101. See CyberSource, 654 F.3d at 1372–73 (“That purely mental
processes can be unpatentable, even when performed by a computer, was
precisely the holding of the Supreme Court in Gottschalk v. Benson.”).
CyberSource, 654 F.3d at 1375. See also Synopsys, Inc. v. Mentor Graphics
Corp., 839 F.3d 1138, 1146–47 (Fed. Cir. 2016).

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F.3d at 1312 (quoting O’Reilly v. Morse, 56 U.S. (15 How.) 62, 113 (1854))
(emphasis added).
We conclude the last recited “rendering” step of method claim 1
merely adds insignificant post-solution activity to the judicial exception:
“rendering, by the processor and based on the vector dequantized spatial
component, speaker feeds.” (emphasis added). See MPEP § 2106.05(g).
We note the remaining independent device claims 10, 21 and 25 recite
similar language of commensurate scope that we conclude also falls into the
abstract idea categories of mathematical concepts and mental processes.
Independent claims 10 and 25 similarly recite the additional non-abstract
generic limitations of “one or more processors coupled to the memory.”
Independent claim 21 also recites non-abstract means for performing the
similar recited functions using means-plus-function language.
Because we conclude all claims on appeal recite an abstract idea, as
identified above, under Step 2A, Prong One, we proceed to Step 2A, Prong
Two.
2019 Revised Guidance, Step 2A, Prong Two
Integration of the Judicial Exception into a Practical Application
Pursuant to the 2019 Revised Guidance, we next consider whether
there are additional elements set forth in the claims that integrate the
judicial exception into a practical application. See 2019 Revised Guidance,
84 Fed. Reg. at 54–55.
Under MPEP § 2106.05(a) (“Improvements to the Functioning of a
Computer or to Any Other Technology or Technical Field”), Appellants
contend the claims “recite significantly more than the alleged judicially
created exception because the claimed features are squarely directed to
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improvements to the operation of a computer in a technological field, to
solve a problem that is rooted in the underlying technology, i.e., audio
coding technology.” App. Br. 12 (emphasis added).
Appellants further contend: “The improvements to the operation of an
audio encoder or audio decoder provided by [the] claims are analogous to
improvements to the operation of the computer provided by the techniques
of the Enfish claims6 and the claims at issue in DDR Holdings LLC. v.
Hotels.com LP.” App. Br. 7.7 Appellants thus assert the claims provide
“specific improvements addressing a technical problem as to how to
compress an audio signal while maintaining the high level of quality and
immersion provided by higher-order ambisonic coefficients . . . Appellant is
claiming a software (and/or hardware) method that improves the functioning
of the computer itself.” App. Br. 11 (emphasis added).
We have identified supra the additional non-abstract element recited
in independent method claim 1 as the generic “processor.” Therefore, we
conclude that without more, independent method claim 1, and method
claims 2–9, 27, and 29 that depend therefrom, do not integrate the abstract
idea into a practical application under Step 2A, prong two.

6 We note the Enfish court concluded the subject claims were “not directed
to an abstract idea within the meaning of Alice.” Rather, the court held the
subject claims were “directed to a specific improvement to the way
computers operate, embodied in the self-referential table.” Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016) (emphasis added).

7 Appellants are referring to DDR Holdings LLC v. Hotels.com, L.P., 773
F.3d 1245 (Fed. Cir. 2014).
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In contrast, we are persuaded by Appellants’ arguments that
independent device claims 10 and 25 that are “configured to” perform the
recited functions” are special-purpose improved machines – and thus the
devices recited in the preambles of claims 10 and 25 are more than merely a
generic computer. Independent device claim 21 similarly recites such an
improved specialized device using means-plus-function language.
Therefore, we conclude independent device claims 10, 21 and 25, and the
claims that depend therefrom, integrate the abstract idea into a practical
application under Step 2A, prong two.
Therefore, we reverse the Examiner’s § 101 rejection of device claims
10–19, 21–26, 28, and 30.
However, as noted above, we reach a different conclusion for
independent method claim 1, and the method claims that depend therefrom.
Regarding method claim 1, we find Appellants’ argument based on McRO
(App. Br. 9–10), unavailing because we conclude Appellants’ method
claim 1 is unlike the subject claim considered by the court in McRO.8
The patent at issue in McRO describes that prior character animation
and lip synchronization were accomplished by human animators, with the
assistance of a computer, which involved the use of a so-called “keyframe”
approach in which animators set appropriate parameters, i.e., morph weights,
at certain important times, i.e., in order to produce accurate and realistic lip
synchronization and facial expressions. McRO, 837 F.3d. at 1305.
Animators knew what phoneme a character pronounced at a given time from
a time-aligned phonetic transcription (a “timed transcript”). Id.

8 Appellants are referring to McRo, Inc. v. Bandai Namco Games America
Inc., 837 F.3d 1299 (Fed. Cir. 2016).
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In accordance with the prior technique, animators, using a computer,
thus, manually determined the appropriate morph weight sets for each
keyframe based on the phoneme timings in the timed transcript. Id. See
also SAP Am. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018)
(distinguishing McRO):
The claims in McRO were directed to the creation of something
physical—namely, the display of “lip synchronization and
facial expressions” of animated characters on screens for
viewing by human eyes. Id. at 1313. The claimed improvement
was to how the physical display operated (to produce better
quality images), unlike (what is present here) a claimed
improvement in a mathematical technique with no improved
display mechanism. The claims in McRO thus were not abstract
in the sense that is dispositive here. And those claims also
avoided being “abstract” in another sense reflected repeatedly
in our cases (based on a contrast not with “physical” but with
“concrete”): they had the specificity required to transform a
claim from one claiming only a result to one claiming a way of
achieving it.
SAP, 898 F.3d at 1167 (emphasis added).
In contrast to the claimed invention in McRO that improved how a
physical display operated to produce better quality images, the method
claims here merely use a generic processor to perform the recited steps.
See, e.g., claim 1 (“selecting, by a processor, . . .”, “performing, by the
processor . . .”, and “rendering, by the processor. . .”).
Thus, Appellants’ method claims on appeal do not improve the
operation of a physical display, as was the case in McRO, or the operation of
any other computer component. See SAP, 898 F.3d at 1167. Moreover,
Appellants’ generic processor implementation in method claim 1 performs
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steps that can be performed alternatively as mental processes, as discussed
above.
Further regarding method claim 1, Appellants’ argument based on
Enfish is similarly unavailing. See App. Br. 7–8. The Enfish court held at
Alice step one that the subject claims were “not directed to an abstract idea
within the meaning of Alice.” Enfish, LLC v. Microsoft Corp., 822 F3d
1327, 1336 (Fed. Cir. 2016). The court concluded the subject claims were
directed to “a specific improvement to the way computers operate, embodied
in the self referential table.” Id. (emphasis added).
We emphasize that the self referential database table considered by
the Enfish court was found to be a type of data structure that was specifically
designed to improve the way a computer stores and retrieves data in
memory. Id. at 1339. Because the Enfish court found the claimed self-
referential database table improved the way the computer stored and
retrieved data, the court concluded the Enfish claims were not directed to an
abstract idea, and thus ended the analysis at Alice step one. Id. at 1336.
Here, Appellants have not shown that any of the steps of method
claim 1 improve the way the recited generic processor stores and retrieves
data, in a manner analogous to that found by the Enfish court. Moreover,
Appellants method claims are silent regarding any mention of a database.
In addition, because a particular processor or computer is not required
by independent method claim 1, we conclude the method claims on appeal
do not define or rely upon a “particular machine.” Thus, we conclude the
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method claims on appeal are not tied to a particular machine under the Bilski
machine-or-transformation test.9 See MPEP § 2106.05 (b).
Further, method claims 1–9, 27, and 29 do not transform a particular
article to a different state or thing — at best information is transformed. See
MPEP § 2106.05 (c); see Gottschalk v. Benson, 409 U.S. 63, 71–72 (1972)
(holding that a computer based algorithm that merely transforms data from
one form to another is not patent-eligible). See also CyberSource Corp v.
Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) (“The mere
manipulation or reorganization of data, however, does not satisfy the
transformation prong.”).
Regarding the machine-or-transformation test, we emphasize the
Supreme Court cautions it is not the sole test — it merely provides a useful
clue:
This Court's precedents establish that the machine-or-
transformation test is a useful and important clue, an
investigative tool, for determining whether some claimed
inventions are processes under § 101. The machine-or-
transformation test is not the sole test for deciding whether
an invention is a patent-eligible “process.”
Bilski v. Kappos, 561 U.S. 593, 604 (2010).
Thus, under Step 2A, Prong Two (MPEP §§ 2106.05(a)–(c) and
(e)–(h)), we conclude method claims 1–9, 27, and 29 do not integrate the

9 Under the machine-or-transformation test, a claimed process may be
patent-eligible if: (1) it is tied to a particular machine or apparatus, or (2) it
transforms a particular article into a different state or thing. In re Bilski, 545
F.3d 943, 954 (Fed. Cir. 2008), aff’d sub nom. Bilski, 561 U.S. at 593. As
such, satisfying either prong of the machine-or-transformation test may
integrate an abstract idea into a practical application. See Guidance, 84 Fed.
Reg. at 55 nn.27–28 (citing MPEP §§ 2106.05(b)–(c)).

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judicial exception into a practical application. Therefore, for all method
claims on appeal, we proceed to Step 2B, The Inventive Concept.
The Inventive Concept – Step 2B
Under the 2019 Revised Guidance, 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 adds a specific limitation
beyond the judicial exception that is not “well-understood, routine,
conventional” in the field (see MPEP § 2106.05(d)); or, simply appends
well-understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception.
Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018)
We note Berkheimer was decided by the Federal Circuit on
February 8, 2018. On April 19, 2018, the PTO issued the Memorandum
titled: “Changes in Examination Procedure Pertaining to Subject Matter
Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP,
Inc.)” (hereinafter “Berkheimer Memorandum”).10
The Berkheimer Memorandum provided specific requirements for an
Examiner to support with evidence any finding that claim elements (or a
combination of elements) are well-understood, routine, or conventional. In
reviewing record, we note the Examiner has not made a finding that any
particular claim limitations are well-understood, routine and conventional.

10 Available at https://www.uspto.gov/sites/default/files/documents/memo-
berkheimer-20180419.PDF.
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Therefore, on this record, Appellants’ arguments regarding Berkheimer are
inapplicable to this appeal. See Reply Br. 7–8.
In light of the foregoing, we conclude, under the 2019 Revised
Guidance, that each of Appellants’ method claims 1–9, 27, and 29,
considered as a whole, is directed to a patent-ineligible abstract idea that is
not integrated into a practical application and does not include an inventive
concept. Accordingly, for the reasons discussed above, we sustain the
Examiner’s rejection under 35 U.S.C. § 101 of all method claims 1–9, 27,
and 29 on appeal.
CONCLUSIONS
The Examiner did not err in rejecting method claims 1–9, 27, and 29
under 35 U.S.C. § 101, as being directed to a judicial exception, without
significantly more.
The Examiner erred in rejecting device claims 10–19, 21–26, 28, and
30 under 35 U.S.C. § 101, as being directed to a judicial exception, without
significantly more.

DECISION
We affirm the Examiner’s decision rejecting claims 1–9, 27, and 29
under 35 U.S.C. § 101.
We reverse the Examiner’s decision rejecting claims 10–19, 21–26,
28, and 30 under 35 U.S.C. § 101.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See
37 C.F.R. § 41.50(f).
AFFIRMED-IN-PART