Nicholas Bicknell et al.

Patent Trials and Appeals Board

Jan 3, 2020

14201464 - (D) (P.T.A.B. Jan. 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.
14/201,464 03/07/2014 NICHOLAS BICKNELL 5924-12005 7913
35690 7590 01/03/2020
KOWERT, HOOD, MUNYON, RANKIN & GOETZEL, P.C.
P.O. BOX 398
AUSTIN, TX 78767-0398
EXAMINER
SHAAWAT, MUSSA A
ART UNIT PAPER NUMBER
3665
NOTIFICATION DATE DELIVERY MODE
01/03/2020 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):
patent_docketing@intprop.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte NICHOLAS BICKNELL, SHAWN BOHN,
ANMOL PARALKAR, and ANUVRATA ARORA
____________

Appeal 2018-001308
Application 14/201,464
Technology Center 3600
____________

Before MICHAEL C. ASTORINO, JAMES A. WORTH, and
BRADLEY B. BAYAT, Administrative Patent Judges.

BAYAT, 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 43–62, which are all the claims pending in the
application. 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 Nov. 20, 2017), and
the Examiner’s Answer (“Ans.,” mailed Sept. 20, 2017) and Final Office
Action (“Final Act.,” mailed Feb. 1, 2017). Appellant identifies the real
party in interest as “Amazon Technologies, Inc.” Appeal Br. 2.
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CLAIMED INVENTION
Appellant’s discloure “relates generally to matching item descriptions
to item definitions.” Spec. ¶ 1.
Claims 43, 49, and 56 are the independent claims on appeal.
Claim 43, reproduced below with added bracketed notations and emphasis,
is illustrative of the claimed subject matter. See Appeal Br., Claims App.
43. A system, comprising:
one or more persistent storage devices, configured to:
[(a)] maintain an authoritative item definition for individual
items of a plurality of items in inventory received from a
plurality of different sources and listed in a product catalog
hosted at a network-based site;
[(b)] maintain inventory data mapped to the authoritative item
definition for the individual items in inventory;
[(c)] maintain a plurality of different respective rule sets for
individual categories of a plurality of different item
categories; and
one or more computing devices that together implement an item
matching engine, configured to:
[(d)] receive, via an upload to the network-based site, an item
description of an item in inventory received from one of the
different sources;
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[(e)] identify an item category of the plurality of different
item categories for the item based, at least in part, on the item
description;
[(f)] access the one or more persistent storage devices to
obtain the respective rule set for the identified item category;
[(g)] evaluate the item description according to the respective
rule set for the item category to identify the item as a new item
in the inventory different than the plurality of items, wherein
the evaluation determines that none of the respective item
definitions maintained in the persistent storage device for the
plurality of items match or potentially match the item
description;
[(h)] in response to the determination that none of the
respective item definitions maintained in the persistent storage
device for the plurality of items match or potentially match the
item description:
[(i)] store the item description in the one or more
persistent storage devices as a new item definition to be
included with the respective item definitions that
describe the plurality of items in the inventory;
[(j)] update the inventory data to map the new item to
the new item definition;
[(k)] update the product catalog to offer the new item
via the network-based site;
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[(l)] receive a different item description of a different item
from a different source of the plurality of sources;
[(m)] determine the different item description matches the new
item definition stored in the one or more persistent storage
devices; and
[(n)] in response to the determination that the different item
description matches the new item definition, add the different
item to the inventory data mapped to the new item definition.

REJECTION
Claims 43–62 are rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more.

OPINION
Patent-Ineligible Subject Matter
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.
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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 78, 79). This is “a search for an ‘inventive concept’ — i.e., 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.’” Id. at 217–18 (alteration in original).
In rejecting the pending claims under 35 U.S.C. § 101 and under the
first step of the Alice framework, the Examiner determined that the claims
“are directed to the abstract idea of matching item descriptions to item
definitions.” Final Act. 2. According to the Examiner, this is similar to the
basic concept of collecting and comparing known information and “also an
example of using categories to organize, store and transmit information
which has been found by the court to be an abstract idea.” Id. at 4–5; see
also Answer 2–3. Under step two of Alice analysis, the Examiner found that
the additional elements:
one or more persistent storage devices, network and one or more
computing devices . . . when taken alone, each execute in a
manner routinely and conventionally expected of these elements.
The elements of the instant process, when taken in combination,
together do not offer substantially more than the sum of the
functions of the elements when each is taken alone. That is, the
elements involved in the recited process undertake their roles in
performance of their activities according to their generic
functionalities which are well-understood, routine and
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conventional. The elements together execute in routinely and
conventionally accepted coordinated manners and interact with
their partner elements to achieve an overall outcome which,
similarly, is merely the combined and coordinated execution of
generic computer functionalities which are well-understood,
routine and conventional activities previously known to the
industry.
Id. at 5; see also Answer 3–4.
Contesting the Examiner’s analysis under step one of Alice, Appellant
argues: (1) the alleged abstract idea does not correspond to what is recited
in the claims (Appeal Br. 10–11); (2) the Final Office Action does not show
that the claims are directed to a judicial exception (id. at 11–15); and (3)
Appellant’s claims do not tie up the alleged judicial exception (id. at 15–17).
Under step two of Alice, Appellant argues: (1) the Final Office Action fails
to identify the elements in addition to the abstract idea and explain why
these elements do not add significantly more than the exception (id. at 18–
20); (2) the claims are directed to specific features that than what is well-
understood, routine, and conventional in the field (id. at 20–22); (3) the
claims are directed to improvements to the capacility of a computer to
perform item recognition for large numbers of items received from different
sources into inventory (id. at 22–23); (4) the arrangement of the additional
elements beyond the alleged abstract idea recited in Appellant’s claims is
non-conventional and non-generic (id. at 24); and (5) the claims are not
ineligible for the sole reason of reciting a generic compuyer implementation
(id. at 24–26).
After Appellant’s briefs were filed, and the Examiner’s Answer
mailed, the U.S. Patent and Trademark Office (the “USPTO”) published
revised guidance for use by USPTO personnel in evaluating subject matter
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eligibility under 35 U.S.C. § 101. 2019 REVISED PATENT SUBJECT MATTER
ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50, 57 (Jan. 7, 2019) (the “2019
Revised Guidance”). That guidance revised the USPTO’s examination
procedure with respect to the first step of the Alice framework by
(1) “[p]roviding groupings of subject matter that [are] considered an abstract
idea”; and (2) clarifying that a claim is not “directed to” a judicial exception
if the judicial exception is integrated into a practical application of that
exception. Id. at 50. The 2019 Revised Guidance, by its terms, applies to all
applications, and to all patents resulting from applications, filed before, on,
or after January 7, 2019. Id.2
We have reviewed the eligibility of the pending claims through the
lens of the 2019 Revised Guidance, but we are not persuaded the Examiner
erred in concluding that the pending claims are directed to a judicial
exception without significantly more.
Independent claim 43
Step One of the Alice Framework (2019 Revised Guidance, Step 2A)
The first step in the Alice framework, as mentioned above, is to
determine whether the claims at issue are “directed to” a patent-ineligible
concept, e.g., an abstract idea. Alice Corp., 573 U.S. at 217. This first step,

2 The 2019 Revised Guidance supersedes MANUAL OF PATENT EXAMINING
PROCEDURE (“MPEP”) § 2106.04(II) and also supersedes all versions of the
USPTO’s “Eligibility Quick Reference Sheet Identifying Abstract Ideas.”
See 2019 Revised Guidance, 84 Fed. Reg. at 51 (“Eligibility-related
guidance issued prior to the Ninth Edition, R-08.2017, of the MPEP
(published Jan. 2018) should not be relied upon.”). Accordingly,
Appellant’s arguments challenging the sufficiency of the Examiner’s
rejection will not be addressed to the extent those arguments are based on
currently superseded USPTO guidance.
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as set forth in the 2019 Revised Guidance (i.e., Step 2A), is a two-prong test;
in Step 2A, Prong 1, we look to whether the claim recites a judicial
exception, e.g., one of the following three groupings of abstract ideas:
(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 Guidance,
84 Fed. Reg. 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., that 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 2”). 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 conclude that the claim is
“directed to” the judicial exception, e.g., an abstract idea.
The Federal Circuit has explained that “the ‘directed to’ inquiry
applies a stage-one filter to claims, considered in light of the specification,
based on whether ‘their character as a whole is directed to excluded subject
matter.’” 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, 1346 (Fed. Cir. 2015)). It asks whether the focus of the claims is on a
specific improvement in relevant technology or on a process that itself
qualifies as an “abstract idea” for which computers are invoked merely as a
tool. See id. at 1335–36. Here, it is clear from the Specification (including
the claim language) that the focus of the claim is on an abstract idea, and not
on any improvement to technology, as argued by Appellant.
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The Specification is entitled “METHOD AND SYSTEM FOR
MANUALLY MAINTAINING ITEM AUTHORITY,” and states that the
disclosure “relates generally to matching item descriptions to item
definitions.” Spec. ¶ 1. The Specification describes, in the Background
section, that electronic commerce
web sites may provide various services that allow a merchant to
update its inventory information maintained by the web site. For
example, the web site may provide a bulk loader that uploads a
file of current inventory information from a merchant. The bulk
loader may scan the inventory information to ensure that it is in
the correct format before updating the existing inventory
information for that merchant. The inventory information needs
to be mapped to the product in the product catalog associated
with each product whose inventory information is being
uploaded. For example, if a product is a book, then the inventory
information may include the international standard book number
(“ISBN”) for that book. The product catalog will contain an
entry with that ISBN that describes the book. If each product in
inventory is mapped to a product in the product catalog, then,
when a customer browses the product catalog, the web site can
identify and display the corresponding inventory of that product.

Unfortunately, there may not be an industry standard way
to uniquely identify each product that is in inventory. As a result,
the uploaded inventory information may not correctly or
uniquely be associated with a product in the product catalog. The
uploaded inventory information may, nevertheless, include
attributes of the product, such as title, publisher, manufacturer,
part number, and price, that may help to uniquely identify a
corresponding product in the product catalog. Even if there was
an industry standard way to uniquely identify each product, the
merchants might not use that unique identification in their own
databases and thus have no easy way for providing that unique
identification when uploading their inventory information. In
addition, since there may be hundreds of thousands of products
in the product catalog, even if each merchant attempted to use
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the unique identification, it would be expected that various errors
in the identification itself would occur. For example, a data entry
operator for a merchant may mistype the unique identification or
simply enter the wrong identification. In addition, merchants
may attempt to upload information relating to new products that
have not yet been defined in the product catalog. It would be
desirable to have a system that would automatically match
products in inventory to products in the product catalog and,
when not possible, to facilitate the manual matching of products
in inventory to products within the product catalog.
Id. ¶¶ 3–4.
To that end, claim 43 recites a system,3 comprising: (a) maintain an
authoritative item definition for individual items of a plurality of items in
inventory received from a plurality of different sources and listed in a
product catalog; (b) maintain inventory data mapped to the authoritative
item definition for the individual items in inventory; (c) maintain a plurality
of different respective rule sets for individual categories of a plurality of
different item categories. Limitations (a)–(c) recite maintaining in one or
more storage devices “item definitions for items in inventory that are
received from different sources and listed in a product catalog and
inventory data that maps the inventory to the items definitions in
inventory.” Appeal Br. 10. Under the broadest reasonable interpretation,
these limitations recite data gathering actions, which represent extra-solution
activity. See MPEP § 2106.05 (g).

3 A machine (system) is a statutory subject matter class. See 35 U.S.C.
§ 101 (“Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title.”).
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Further, claim 43 recites (d) receive an item description of an item in
inventory received from one of the different sources; (e) identify an item
category of the plurality of different item categories for the item based, at
least in part, on the item description; (f) obtain the respective rule set for the
identified item category; (g) evaluate the item description according to the
respective rule set for the item category to identify the item as a new item in
the inventory different than the plurality of items, wherein the evaluation
determines that none of the respective item definitions for the plurality of
items match or potentially match the item description. These limitations
indicate “that the detection of a new item definition is performed upon an
item description that is received for an item in inventory, that an item
category is identified based on the description, and that a rule set for the
identified item category is obtain and used to evaluate the item description to
determine whether the item description matches or potentially matches item
definitions maintained for other items in inventory.” Appeal Br. 10. Under
the broadest reasonable interpretation, limitations (e)–(g) describe activities
(i.e., observation, evaluation) that can be practically performed in the human
mind based on the received item description in (d), which is a mental
process, and thus, an abstract idea. See Revised Guidance 84 Fed. Reg. at 52
(“Mental processes—concepts performed in the human mind (including an
observation, evaluation, judgment, opinion.”)
In addition, claim 43 recites that (h) in response to the determination
that none of the respective item definitions for the plurality of items match
or potentially match the item description: (i) store the item description as a
new item definition to be included with the respective item definitions that
describe the plurality of items in the inventory; (j) update the inventory data
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to map the new item to the new item definition; (k) update the product
catalog to offer the new item; (l) receive a different item description of a
different item from a different source of the plurality of sources; (m)
determine the different item description matches the new item definition
stored; and (n) in response to the determination that the different item
description matches the new item definition, add the different item to the
inventory data mapped to the new item definition. Under the broadest
reasonable interpretation, limitations (h)–(l) and (n) describe data gathering
activities (i.e., obtaining and updating data), which our reviewing court has
found to be insignificant extra-solution activity. See MPEP § 2106.05 (g).
And, determining whether the different item description matches the new
item definition stored recited in limitation (m) is a simple comparison that
can be performed in the human mind, which also is a mental process, and, an
abstract idea. See Revised Guidance 84 Fed. Reg. at 52.
Simply put, claim 43 recites a series of limitations discussed supra
that can be practically performed in the human mind or with a pen and
paper, which are mental processes under grouping (c) of the Revised
Guidance and, therefore, an abstract idea. See id.
It is noteworthy here that the “claimed system providing for updating
an inventory mapping data and a product catalog” (Appeal Br. 10)
implemented in claim 43 as a set of data gathering and manipulation steps, is
similar in character to claims that have been held to involve abstract ideas.
Notably, the Federal Circuit in Intellectual Ventures I LLC v. Erie Indemnity
Co., 850 F.3d 1315, 1328–29 (Fed. Cir. 2017), indicated that “organizing
and accessing records through the creation of an index-searchable database,
includes longstanding conduct that existed well before the advent of
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computers and the Internet. For example, a hardcopybased classification
system (such as library-indexing system) . . . classifiers organize and
crossreference information and resources such as books, magazines, or the
like) by certain identifiable tags, e.g., title, author, subject.” See also, e.g.,
In re TLI Communications LLC Patent Litigation, 823 F.3d 607, 611 (Fed.
Cir. 2016) (the concept of classifying data (an image) and storing it based on
its classification is abstract under step one); Cyberfone Sys., LLC v. CNN
Interactive Grp., 558 Fed. Appx. 988 (Fed. Cir. 2014) (affirming the district
court’s holding that using categories to organize, store, and transmit
information is well-established and the idea of collecting information and
then separating and transmitting that information according to its
classification is patent ineligible); Content Extraction and Transmission LLC
v. Wells Fargo Bank, Nat. Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014)
(identifying the concept of data collection, recognition, and storage abstract).
Having concluded that claim 1 recites a judicial exception, i.e., an
abstract idea (Step 2A, Prong 1), we next consider whether the claim recites
additional elements that integrate the judicial exception into a practical
application (Step 2A, Prong 2).
The italicized additional elements recited in claim 43 supra, beyond
the abstract idea and operations characterized above as extra-solution
activity, are “persistent storage devices”; “computing devices”; and a
“network-based site” — all of which are disclosed in the Specification at a
high degree of generality, i.e., as generic computer components (see
Spec. ¶ 28). We find no indication in the Specification, nor does Appellant
direct us to any indication, that the operations recited in claim 43 invoke any
assertedly inventive programming, require any specialized computer
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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. See DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014)
(“[A]fter Alice, there can remain no doubt: recitation of generic computer
limitations does not make an otherwise ineligible claim patent-eligible.”).
As discussed above, the claim limitations that add insignificant extra-
solution activity to the judicial exception (e.g., mere data gathering by
receiving, storing, and updating data in conjunction with an abstract idea) do
not meaningfully limit the claim.
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 functionality 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
2019 Revised Guidance.4
Regarding Step 2A, Prong Two, Appellant states that the “claims are
directed to a technique for identifying new items in inventory and updating
the product catalog accordingly by reciting such features as identifying an

4 The 2019 Revised Guidance references MPEP § 2106.05(a)–(c) and (e) 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. 2019 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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item category for a received item description, applying a rule set to
determine whether the item description is a new item definition, updating the
inventory data and product catalog to include the new item, and storing the
new item definition such that subsequently received item descriptions are
recognized and added to the inventory for the new item definition.” Appeal
Br. 23. According to Appellant,
[s]uch a technique improves the performance of a computer
because it allows the computer to identify new items in spite of
the large number of potentially matching item definitions as well
as the non-standardized way in which items are uniquely
identified in way that could not be performed due to time or
computing cost restraints. The technique changes the way in
which the computer performs because the computer performs a
technique that does not require that every item definition be
evaluated with respect to a received item description.
Id. See also Reply Br. 6 (drawing a parallel to McRO5).
But, Appellant basically characterizes the claims as being directed to
the abstract idea discussed above, which encompasses mental processes.
Appellant merely invokes the use of a computer (i.e., computing devices) as
a tool, in order to implement the abstract concept identified. Such a use of
computer technology does not integrate a judicial exception into a practical
application, in the manner specified in the 2019 Revised Guidance, 84 Fed.
Reg. at 54–55. See Enfish, 822 F.3d at 1335–36 (explaining that the Alice
inquiry “asks whether the focus of the claims 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

5 McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed.
Cir. 2016).
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tool.”). And, Appellant’s reliance on McRO is misplaced because the
Federal Circuit premised its determination that the claim in McRO was
patent eligible was not merely on the specificity of the claimed animation
scheme, but on the fact that the claim, when considered as a whole, was
directed to a technological improvement over existing manual 3-D animation
techniques, and used limited rules in a process specifically designed to
achieve an improved technological result in conventional industry practice.
See McRO, 837 F.3d at 1316.
Contrary to Appellant’s contention, the language of claim 43 as
recited does not require “a large number of potentially matching item
definitions,” but instead “an item definition of a plurality of items in
inventory,” which renders Appellant’s argument unpersuasive as not
commensurate with the scope of the claim. Claim 43 supra. And, to the
extent that Appellant’s alleged improvement relies on automation by a
computer, it is well-established that computer-based efficiency by itself does
not save an otherwise abstract method. See Bancorp Servs., L.L.C. v. Sun
Life Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1277–78 (Fed. Cir. 2012)
(Performance by computer of operations that previously were performed
manually or mentally, albeit less efficiently, does not convert a known
abstract idea into eligible subject matter).
Appellant also draws a parallel to the Federal Circuit’s decision in
BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d
1341 (Fed. Cir. 2016), and contends that “the recited additional features of a
product catalog hosted at a network-based site, an inventory of items
received from different sources listed in the product catalog, receiving via an
upload to the network-based site the item description, updating the inventory
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data to map the new item to the new item definition, and updating the
product catalog to offer the new item via the network-based site provide a
nonconventional and non-generic arrangement (to which the lack of an art-
based rejection in the Final Office Action attests).” Appeal Br. 24. But we
can find no parallel between claim 43 and the claims at issue in BASCOM.
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 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 (alterations in original) (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”).
Here, we are not persuaded that hosting a product catalog at a
network-based site by receiving an inventory of items and item descriptions
from different sources via an upload to the network-based site and updating
the inventory data to map a new item to the new item definition and the
product catalog to offer the new item via the network-based site provides a
nonconventional and non-generic arrangement that is a technological
improvement comparable to the situation in BASCOM. Appellant also does
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not identify, and we do not find, any improvement to computer technology
analogous to the ordered combination described in BASCOM or any
additional element or elements recited in claim 43 that yield an improvement
in the functioning of a computer, or an improvement to another technology
or technical field.
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 43, considered individually and as an
ordered combination, do no more than generally link the use of the abstract
idea to a particular technological environment or field of use.
We conclude, for the reasons outlined above, that claim 43 recites a
mental process, i.e., an abstract idea, and that the additional elements recited
in the claim are no more than generic components used as tools to perform
the recited abstract idea. As such, they do not integrate the abstract idea into
a practical application. See Alice Corp., 573 U.S. at 223–24 (“[W]holly
generic computer implementation is not generally the sort of ‘additional
featur[e]’ that provides any ‘practical assurance that the process is more than
a drafting effort designed to monopolize the [abstract idea] itself.’”)
(alterations in original) (quoting Mayo, 566 U.S. at 77). Accordingly, we
agree with the Examiner that claim 43 is directed to an abstract idea.
Step Two of the Alice Framework (2019 Revised Guidance, Step 2B)
Having determined under step one of the Alice framework that claim
43 is directed to an abstract idea, we next consider under Step 2B of the
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2019 Revised Guidance, the second step of the Alice framework, whether
claim 43 includes additional elements or a combination of elements that
provides an “inventive concept,” i.e., whether the additional elements
amount to “significantly more” than the judicial exception itself.
2019 Revised Guidance, 84 Fed. Reg. at 56. Here, the only additional
elements recited are “one or more persistent storage devices,” “one or more
computing devices,” and a “network-based site,” and we agree with the
Examiner that the employment of such devices in the manner recited is well-
understood, routine, or conventional.
Contrary to Appellant’s contention (see Appeal Br. 21), neither a
finding of novelty nor a non-obviousness determination automatically leads
to the conclusion that the claimed subject matter is patent eligible. Although
the second step in the Alice framework is termed a search for an “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. “Groundbreaking, innovative, or even brilliant discovery does not
by itself satisfy the § 101 inquiry.” Ass’n for Molecular Pathology v.
Myriad Genetics, Inc., 569 U.S. 576, 591 (2013). A novel and non-obvious
claim directed to a purely abstract idea is, nonetheless, patent ineligible. See
Mayo, 566 U.S. at 90; see also Diamond v. Diehr, 450 U.S. 175, 188–89
(1981) (“The ‘novelty’ of any element or steps in a process, or even of the
process itself, is of no relevance in determining whether the subject matter of
a claim falls within the § 101 categories of possibly patentable subject
matter.”).
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We also find Appellant’s additional argument unpersuasive because it
merely paraphrases the claim language, generally describes the various steps
recited in claim 43, and argues that the presently claimed invention is more
than that which is well-understood, routine and conventional in the field,
based on the combination of the multiple claimed steps. See Appeal Br. 23.
Yet, “the relevant inquiry is not whether the claimed invention as a whole is
unconventional or non-routine.” BSG Tech LLC v. BuySeasons, Inc.,
899 F.3d 1281, 1290 (Fed. Cir. 2018). Instead, the question is whether the
claim includes additional elements, i.e., elements other than the abstract idea
itself, that “‘transform the nature of the claim’ into a patent-eligible
application.” Alice Corp., 573 U.S. at 217 (quoting Mayo, 566 U.S. at 79,
78).
We diagree with Appellant’s contention that the Examiner failed to
identify the additional elements beyond the abstract idea. The Examiner
determined, and we agree, that the only claim elements beyond the abstract
idea are one or more “persistent storage devices,” “computing devices,” and
a “network” i.e., generic computer components used to perform generic
computer functions (Final Act. 5) — a determination fully consistent with
the Specification (see Spec. ¶ 28). We also disagree that the Examiner
alleges that the claims are necessarily patent-ineligible for reciting a generic
computer implementation; rather, the Examiner states that the additional
generic computing components simply appends well-understood, routine,
conventional activities to the judicial exception, which is considered nothing
more than carrying out the abstract idea using generic computer
implementation. Answer 5. Thus, the Examiner concludes that, “the claim,
when considered as a whole, is nothing more than the instruction to
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implement the abstract idea, in a particular, albeit well-understood, routine
and conventional technological envionrment.” Id.
Indeed, Appellant does not persuasively deny that the operation of
these components is well-understood, routine, or conventional, where, as
here, there is nothing in the Specification to indicate that the operations
recited in claim 43 require any specialized hardware or inventive computer
components or that the claimed invention is implemented using anything
other than generic computer components to perform generic computer
functions, e.g., maintaining, storing, receiving, identifying, accessing,
evaluating, determining, and updating information. In fact, 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); see also BSG Tech, 899
F.3d at 1291 (“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.”).
Finally, Appellants’ argument as to the lack of preemption is
unpersuasive. See Appeal Br. 17 (“Appellants’ claims thus do not threaten
to create problems relating to preemption.”). Although “preemption may
signal patent ineligible subject matter, the absence of complete preemption
does not demonstrate patent eligibility.” Ariosa Diagnostics, Inc. v.
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Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). See OIP Techs., 788
F.3d at 1362–63 (“[T]hat the claims do not preempt all price optimization or
may be limited to price optimization in the e-commerce setting do not make
them any less abstract.”). “Where a patent’s claims are deemed only to
disclose patent ineligible subject matter” under the Alice framework,
“preemption concerns are fully addressed and made moot.” Id.
We are not persuaded, on the present record, that the Examiner erred
in rejecting independent claim 43 under 35 U.S.C. § 101. Therefore, we
sustain the Examiner’s rejection of claim 43.

Independent claims 49 and 56
Appellant argues that independent claims 49 and 56 recite
significantly more that the alleged abstract idea identified as to claim 43
because those claims “do not recite one or more persistent storage devices
configured to: maintain” information recited in limitations (a)–(c) of claim
43. Appeal Br. 27. We disagree that the omission of the one or more
generic storage devices from the process claims 49 and 56 alters the
eligibility analysis. A claim directed to a process or “computer readable
storage medium,” despite their format, should be treated no differently from
the comparable system claim held to be patent ineligible under § 101. As
the Supreme Court has explained, the form of the claims should not trump
basic issues of patentability. See Parker v. Flook, 98 S. Ct. 2522
(1978) (advising against a rigid reading of §101 that “would make the
determination of patentable subject matter depend simply on the draftsman’s
art and would ill serve the principles underlying the prohibition against
patents for ‘ideas’ or phenomena of nature.”); see also Internet Patents
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Corp. v. Active Network, Inc., 790 F.3d 1343, 1349 (Fed. Cir. 2015). As
such, we sustain the rejection of independent claims 49 and 56 for
substantially similar reasons discussed above with respect to claim 43.

Dependent claims 44–48, 50–55, and 57–62
Regarding the dependent claims, we disagree that these dependent
claims recite significantly more than the abstract idea, and thus, recite
patent-eligible subject matter. Appeal Br. 28–30. In arguing against
dependent claims 46, 47, 52, 53, 59, and 60, Appellant argues that the
additional user interface element and recited limitations solve a
technological problem because “claimed solution can prevent inventory
errors by automatically identifying item descriptions that do not match a
present item or cannot be definitively recognized as a new item, providing
an opportunity for a user to prevent an inventory error by displaying and
accepting user selections indicating an item definition to be mapped to a
received item description.” Id. at 29. The use of a generic computing
devices and a generic user interface in their ordinary capacity to process and
display data, automatically identify matching item definitions, and “provide
potential matching items definitions to assist in manual matching” (Spec.
¶ 25) reflects efficiency and accuracy through automation, which is not a
technological solution, but rather, is “directed to a result or effect that itself
is the abstract idea and merely invoke[s] generic processes and machinery.”
McRO, 837 F.3d at 1314. Although a processor may perform calculations
faster than a human could manually, using a computer to achieve a solution
more quickly may not be sufficient to show an improvement to computer
technology. See Versata Development Group, Inc. v. Sap America, Inc., 793
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F.3d 1306, 1334 (Fed. Cir. 2015); see also MPEP § 2106.05(a)(II)
(instructing examiners that a “commonplace business method . . . being
applied on a general purpose computer” may not be sufficient to show an
improvement).
Although dependent claims 44–48 may limit the scope of the abstract
idea to which the independent claims are directed, their character remains
unchanged, especially given that these dependent claims provide no insight
to improvements in computer functionality beyond what one would expect
from using a generic computer as a tool in performing the scheme as
claimed. None of these claims add anything significantly more to transform
the abstract idea. Thus, Appellants have not persuaded us that the Examiner
erred in rejecting these claims as being directed to patent-ineligible subject
matter. Therefore, we sustain the rejection of claims 44–48, 50–55, and 57–
62 under 35 U.S.C. § 101.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
43–62 101 Eligibility 43–62
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED