Norman, David Everton. et al.

Patent Trials and Appeals Board

Jul 29, 2020

2019001239 (P.T.A.B. Jul. 29, 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.
11/983,102 11/06/2007 David Everton Norman 012233US 4174
44257 7590 07/29/2020
PATTERSON & SHERIDAN, LLP - - APPLIED MATERIALS
24 GREENWAY PLAZA
SUITE 1600
HOUSTON, TX 77046
EXAMINER
MEINECKE DIAZ, SUSANNA M
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
07/29/2020 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):
Pair_Eofficeaction@pattersonsheridan.com
psdocketing@pattersonsheridan.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DAVID EVERTON NORMAN and RICHARD STAFFORD
___________

Appeal 2019-001239
Application 11/983,102
Technology Center 3600
____________

Before CARL W. WHITEHEAD JR., JOHN P. PINKERTON and
NABEEL U. KHAN, Administrative Patent Judges.

WHITEHEAD JR., Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE1
Appellant2 is appealing the final rejection of claims 1–3, 5–8, 12–14,
16, 18–20 and 22 under 35 U.S.C. § 134(a). See Appeal Brief 12. Claims 1,
12 and 18 are independent. Claims 4, 9–11, 15, 17, 21, 23 and 24 are

1 Rather than reiterate Appellant’s arguments and the Examiner’s
determinations, we refer to the Appeal Brief (filed August 31, 2018), the
Final Action (mailed March 8, 2018) and the Answer (mailed September 28,
2018), for the respective details. An Oral Hearing was held on July 9, 2020.

2 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies Applied Materials, Inc., as the real party in
interest. Appeal Brief 3.
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cancelled. See Claims Appendix. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
Introduction
According to Appellant, the claimed subject matter is directed to
“managing a manufacturing facility, and more particularly to providing
predictions about the future of a manufacturing facility.” Specification ¶ 1.
Claim 1 is reproduced below for reference (bracketed step lettering
added):
Representative Claim3
1. A computerized method comprising:
[a] receiving, from a user via a user interface of a
prediction server, input that specifies prediction parameters, the
prediction parameters identifying a future time for which
predictions are to be generated, a plurality of source systems in
a semiconductor fabrication manufacturing facility from which
data is to be requested for predictions, characteristics of data
queries by which the data is to be requested, entities to be
predicted, a trigger of prediction generation, a method of
prediction generation; and a subscription;
[b] determining that the trigger of prediction generation
has occurred;
[c] requesting, using one more data queries according to
the characteristics specified by the user in the prediction
parameters, by a processor of the prediction server, the data
from the plurality of source systems in the semiconductor
fabrication manufacturing facility, wherein the data comprises
dynamic data indicative of one or more current operations of
the plurality of source systems, and wherein the prediction

3 Appellant argues claims 1–3, 5–8, 12–14, 16, 18–20 and 22 as a group,
focusing on subject matter common to independent claims 1, 12 and 18. See
Appeal Brief 13–14. We select independent claim 1 as the representative
claim. See 37 C.F.R. § 41.37(c)(1)(iv).
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server is coupled with the plurality of source systems over a
communications network of the semiconductor fabrication
manufacturing facility;
[d] receiving the data from the plurality of source
systems;
[e] populating a prediction data model with the data,
wherein the prediction data model comprises a data schema
including one or more tables that are populated with the data;
[f] generating, by the processor of the prediction server
upon collection of the dynamic data and based on the prediction
data model, predictions pertaining to a future state of the
semiconductor fabrication manufacturing facility at the future
time specified by the user in the prediction parameters
including a future state of the entities specified by the user in
the prediction parameters, wherein the entities comprise
fabrication equipment in the semiconductor fabrication
manufacturing facility, and wherein the predictions are
generated according to the method of prediction generation
specified by the user in the prediction parameters based on the
data received from the plurality of source systems;
[g] providing, over the communications network by the
prediction server, the predictions to a plurality of recipient
systems performing operations in the semiconductor fabrication
manufacturing facility based on the predictions, wherein the
operations comprise determining a processing schedule for
equipment within the semiconductor fabrication manufacturing
facility;
[h] providing, by the prediction server, the predictions to
the user via the user interface based on the subscription;
[i] updating, by the processor of the prediction server, the
predictions in response to receipt of a notification that a
predefined event has occurred in at least one of the plurality of
source systems in the semiconductor fabrication manufacturing
facility, wherein the predefined event notification identifies
when processing of a lot of wafers is put on hold, a piece of
fabrication equipment enters a down-time state or stops
functioning properly, wherein updating the predictions in
response to receipt of the notification comprises:
[i1] sending, over the communications network by the
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prediction server, a query for details regarding the predefined
event to a relevant source system,
[i2] receiving, over the communications network by the
prediction server, a result of the query regarding an impact of
the predefined event from the relevant source system,
[i3] evaluating the impact of the predefined event on each
prediction based on the result comprising determining from the
result of the query whether a cause of the predefined event will
be resolved by the relevant source system during a specific time
interval or whether there is a change to a plurality of operations
that are to be performed by the semiconductor fabrication
manufacturing facility as a result of the predefined event,
[i4] performing an update of only prediction data affected
by the predefined event based on the result of the query when
the cause of the predefined event will be resolved by the
relevant source system during the specific time interval, and
[i5] performing a different update that regenerates the at
least one prediction associated with the source system when
there is a change to the plurality of operations that are to be
performed by the semiconductor fabrication manufacturing
facility as a result of the predefined event;
[j] sending, over the communications network, the
updated predictions over the communications network to update
one or more of the recipient systems performing operations in
the semiconductor fabrication manufacturing facility based on
the updated predictions, wherein the operations comprise
determining a processing schedule for equipment within the
semiconductor fabrication manufacturing facility; and
[k] providing, by the prediction server, the updated
predictions to the user via the user interface based on the
subscription.
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Rejection on Appeal4
Claims 1–3, 5–8, 12–14, 16, 18–20 and 22 stand rejected under 35
U.S.C. § 101 as being directed to patent-ineligible subject matter. Final
Action 6–13; Answer 3–10.
PRINCIPLES OF LAW
A. Section 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 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-part framework, described in Mayo and Alice.
Alice, 573 U.S. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). 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’ application explain the basic concept of hedging, or protecting
against risk.”).

4 The Examiner indicates claims 9 and 23 are rejected under 35 U.S.C.
§ 101, however both claims have been canceled. See Claims Appendix. We
view this as harmless error and list the correct claims rejected under 35
U.S.C. § 101.
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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 (1853))); 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. (citation omitted)
(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 part
of the Alice and Mayo framework, where “we must examine the elements of
the claim to determine whether it contains an ‘inventive concept’ sufficient
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to ‘transform’ the claimed abstract idea into a patent-eligible application.”
Alice, 573 U.S. at 221 (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 U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (January 7, 2019)
(“2019 Revised Guidance”).5 “All USPTO personnel are, as a matter of
internal agency management, expected to follow the guidance.” Id. at 51;
see also October 2019 Update at 1.
Under the 2019 Revised Guidance and the October 2019 Update, we
first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes) (“Step 2A, Prong One”); and

5 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (the “October
2019 Update”) (available at
https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p
df).
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(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th ed.
Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).6
2019 Revised Guidance 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, under
Step 2B, 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, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
2019 Revised Guidance at 52–56.
ANALYSIS
The Examiner determines claims 1–3, 5–8, 12–14, 16, 18–20 and 22
are patent ineligible under 35 U.S.C. § 101. See Final Action 6–13; Answer
3–10; see also Alice, 573 U.S. at 217 (describing the two-step framework
“for distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts”).

6 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See 2019 Revised Guidance at 54–55.
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We are not persuaded the Examiner’s rejection is in error. Unless
otherwise indicated, we adopt the Examiner’s findings and conclusions as
our own. We add the following primarily for emphasis and clarification
with respect to the Revised Guidance.

Step 2A–Prongs 1 and 2 identified in the 2019 Revised Guidance
Prong One
Appellant argues:
The pending claims comprise a technical improvement
that is achieved by generating and providing a user with specific
predictions that are limited by particular “prediction parameters”
received “from a user via a user interface,” the prediction
parameters including “a future time for which predictions are to
be generated, a plurality of source systems in a semiconductor
fabrication manufacturing facility from which data is to be
requested for predictions, characteristics of data queries by
which the data is to be requested, entities to be predicted, a
trigger of prediction generation, a method of prediction
generation; and a subscription.” See Claim 1.
Appeal Brief 13.
The Specification discloses in regard to the background technology:
When managing an automated manufacturing facility,
complicated decisions need to be made about what an idle
equipment should process next. For example, a user may need to
know whether a high-priority lot will become available in the
next few minutes. Current Computer Integrated Manufacturing
(CIM) systems only provide information about the current state
of the facility to aid in making those decisions. Information about
what the facility might look like in the future is not immediately
available and calculating it on the fly is expensive. This limits
the sophistication of decisions that can be made by the CIM
system. In particular, producing a schedule for the facility
requires this sort of predictive information and calculating it can
be a significant portion of the cost of producing a schedule.
Specification ¶ 3.
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The claimed invention collects data where the “collected data may
include static data (e.g., equipment used by a source system, capability
of different pieces of the equipment, etc.) and dynamic data (e.g., current
state of equipment, what product is being currently processed by equipment
of a source system, the characteristics of this product, etc.).” Specification
¶ 12.
Upon collecting the above data, the prediction server uses
it to generate predictions pertaining to a future state of the
manufacturing facility. In particular, the prediction server may
predict, for example, a future state of the equipment in the
manufacturing facility, the quantity and composition of the
product that will be manufactured in the facility, the number of
operators needed by the facility to manufacture this product, the
estimated time a product will finish a given process operation
and/or be available for processing at a given step, the estimated
time a preventative maintenance operation should be performed
on an equipment, etc.

Specification ¶ 13 (emphasis added).
Claim 1 recites a user specifying prediction parameters identifying a
future time to generate predictions and the evaluation of requested data for
predictions in limitation [a]. Claim 1 further recites the user requesting and
receiving data from data queries upon the triggering of prediction generation
in limitations [b]–[d]. Claim 1 recites generating predictions based upon a
prediction data model pertaining to a semiconductor fabrication
manufacturing facility wherein the predictions are predicated by the
prediction model specified by the user in limitations [e]–[f]. Claim 1 recites
scheduling a processing schedule for equipment based upon predictions in
limitation [g]. Claim 1 also recites updating the predictions in response to a
predefined event occurring, evaluating the impact of the predefined event on
each prediction, performing an update on only the affected prediction data
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and performing a different update to regenerate the prediction when there is
a change to the plurality of operations in limitations [i], [i2]–[i4]. Claim 1
further recites updating the processing schedule for equipment in limitation
[j].
These steps comprise “concepts performed in the human mind7
(including an observation, evaluation, judgment, opinion)”; thus, the claim
recites the abstract idea of “Mental processes.” See 2019 Revised Guidance,
Section I (Groupings of Abstract Ideas). Our reviewing court has found
claims to be directed to abstract ideas when they recited similar subject
matter. See Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307,
1318 (Fed. Cir. 2016) (“[W]ith the exception of generic computer-
implemented steps, there is nothing in the claims themselves that foreclose
them from being performed by a human, mentally or with pen and paper.”);
Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324
(Fed. Cir. 2016) (holding that computer-implemented method for
“anonymous loan shopping” was an abstract idea because it could be
“performed by humans without a computer”); Versata Dev. Grp., Inc. v. SAP
Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) (“Courts have examined
claims that required the use of a computer and still found that the
underlying, patent-ineligible invention could be performed via pen and paper
or in a person’s mind.”); CyberSource Corp. v. Retail Decisions, Inc., 654
F.3d 1366, 1375, 1372 (Fed. Cir. 2011) (holding that the incidental use of

7 “If a claim, under its broadest reasonable interpretation, covers
performance in the mind but for the recitation of generic computer
components, then it is still in the mental processes category unless the claim
cannot practically be performed in the mind.” 2019 Revised Guidance at 52
n.14.
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“computer” or “computer readable medium” does not make a claim
otherwise directed to process that “can be performed in the human mind, or
by a human using a pen and paper” patent eligible); id. at 1376
(distinguishing Research Corp. Techs. v. Microsoft Corp., 627 F.3d
859 (Fed. Cir. 2010), and SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d
1319 (Fed. Cir. 2010), as directed to inventions that “could not, as a practical
matter, be performed entirely in a human’s mind”). Therefore, we conclude
the claims recite an abstract idea pursuant to Step 2A, Prong One of the 2019
Revised Guidance. See 2019 Revised Guidance, Section III(A)(1) (Prong
One: Evaluate Whether the Claim Recites a Judicial Exception).
Prong Two
Under Prong Two of the 2019 Revised Guidance, we must determine
“whether the claim as a whole integrates the recited judicial exception into a
practical application of the exception.” 2019 Revised Guidance, Section
III(A)(2). It is noted that a “claim that integrates a judicial exception into a
practical application will 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.” 2019 Revised Guidance, Section III(A)(2).
We acknowledge that some of the considerations at Step 2A, Prong 2,
properly may be evaluated under Step 2 of Alice (Step 2B of the Office
guidance). For purposes of maintaining consistent treatment within the
Office, we evaluate them under Step 1 of Alice (Step 2A of the Office
guidance). See 2019 Revised Guidance at 55 nn. 25, 27–32.
Appellant contends, “[t]he Examiner erred in rejecting claims 1-3, 5-
8, 12-14, 16, 18-20, and 22 under 35 U.S.C. § 101” because the “claims of
the present application are eligible for patent protection because they recite a
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non-abstract improvement to computer technology that involves bringing
together a limited set of data, determined to be relevant in a particular way,
for presentation to a user in a particularly useful manner.” Appeal Brief 12.
Appellant further argues, “the claims of the present application are eligible
for patent protection because they recite a non-conventional and non-generic
solution that improves the technical field of using a computer to generate
and access predictions related to equipment within a semiconductor
fabrication manufacturing facility.” Appeal Brief 12. We do not find
Appellant’s arguments persuasive because it is not clear how providing a
non-conventional and non-generic solution improves the technical field and
thereby integrates the recited claimed abstract idea into a practical
application. See 2019 Revised Guidance at 54, 55. Appellant contends:
Similar to the claims at issue in Core Wireless [Licensing
S.A.R.L. v. LG Electronics, Inc., 880 F.3d 1356 (Fed. Cir. 2018)],
here Claims 1, 12, and 18 (and claims dependent thereon) of the
present application are at least similarly “directed to a particular
manner of summarizing and presenting information in electronic
devices,” they specify a particular manner of generating and
accessing prediction information (e.g., based on particular
prediction parameters specified by a user via a user interface),
restrain the type of data that is displayed (e.g., predictions
generated in a particular way based on the user’s prediction
parameters), and require particular application states (e.g.,
particular queries and operations performed upon detecting
particular events) as did the claims in Core Wireless.
Appeal Brief 14.
We note, in Core Wireless, the court held that claims which recited an
interface were patent eligible because the claims recited specific limitations
of the interface such as: an application summary that can be reached
through a menu, the data being in a list and being selectable to launch an
application, and additional limitations directed to the actual user interface
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displayed and how it functions. Core Wireless, 880 F.3d at 1363. The court
found that the claims were directed to an improved user interface and not the
abstract concept of an index as the claim “limitations disclose a specific
manner of displaying a limited set of information to the user, rather than
using conventional user interface methods to display a generic index on a
computer.” Core Wireless, 880 F.3d at 1363; see also Trading Techs. Int’l,
Inc. v. CQG, Inc., 675 F. App’x 1001 (Fed. Cir. 2017) (holding that a user
interface with a prescribed functionality directly related to the interface’s
structure, that is addressed to and resolves a problem in the art, is patent
eligible.). Accordingly, we do not find Appellant’s arguments persuasive
because using prediction parameters to identify generated predictions in the
future based upon gathered data is unlike patent-eligible claims directed to
particular technical ways of displaying data such as the claimed user
interface in Core Wireless. See 2019 Revised Guidance at 55.
Appellant contends, “the pending claims also do not ‘monopolize
every potential solution to the problem’” and therefore, “the pending claims
are clearly distinguishable from those at issue in Electric Power.” Appeal
Brief 15–16 (citing Elec. Power Grp., LLC v. Alstom SA, 830 F.3d 1350,
1355 (Fed. Cir 2016)). The Examiner finds the claims are directed to
“managing a manufacturing facility, and more particularly to providing
predictions about the future of a manufacturing facility” and thus
“incorporating the abstract ideas of an idea of itself” and cites to Electric
Power for support – “collecting information, analyzing it, and displaying
certain results of the collection and analysis.” Final Action 7–8. We do not
find Appellant’s argument persuasive because we do not find “Electric
Power is distinguishable and, thus, has no bearing on the patentability of the
pending claims.” See Appeal Brief 15. We note, in Electric Power, the
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court held, “[b]ut merely selecting information, by content or source, for
collection, analysis, and display does nothing significant to differentiate a
process from ordinary mental processes, whose implicit exclusion from
§ 101 undergirds the information-based category of abstract ideas.” Elec.
Power, 830 F.3d at 1355 (emphasis added). Accordingly, we do not find the
claims in the instant application, reciting the abstract idea of “Mental
processes,” distinguishable over the claims in Electric Power. See 2019
Revised Guidance, Section I (Groupings of Abstract Ideas).
Appellant also contends, there are no preemption concerns with the
instant application because:
[T]he claims recite specifically configured methods and systems
involving particular implementation for generating and
providing a user with specific predictions that are limited by
particular “prediction parameters” received “from a user via a
user interface,” the prediction parameters including “a future
time for which predictions are to be generated, a plurality of
source systems in a semiconductor fabrication manufacturing
facility from which data is to be requested for predictions,
characteristics of data queries by which the data is to be
requested, entities to be predicted, a trigger of prediction
generation, a method of prediction generation; and a
subscription.”
Appeal Brief 20.
Further, we do not find Appellant’s reasoning persuasive because as
the Supreme Court has described “the concern that drives this exclusionary
principle [i.e., the exclusion of abstract ideas from patent-eligible subject
matter] as one of pre-emption.” Alice, 573 U.S. at 216. However,
characterizing preemption as a driving concern for patent eligibility is not
the same as characterizing preemption as the sole test for patent eligibility.
As our reviewing court has explained, “[t]he Supreme Court has made clear
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that the principle of preemption is the basis for the judicial exceptions to
patentability,” and “[f]or this reason, questions on preemption are inherent in
and resolved by the § 101 analysis.” Ariosa Diagnostics, Inc. v. Sequenom,
Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (citing Alice, 573 U.S. at 216).
And, although “preemption may signal patent ineligible subject matter, the
absence of complete preemption does not demonstrate patent eligibility.” Id.
Moreover, “[w]here a patent’s claims are deemed only to disclose patent
ineligible subject matter under the [Alice/Mayo] framework . . . , preemption
concerns are fully addressed and made moot.” Id.; see also OIP Techs., Inc.
v. Amazon.com, Inc., 788 F.3d 1359, 1362–63 (Fed. Cir. 2015) (“[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.”).
Additionally, we detect no additional element (or combination of
elements) recited in Appellant’s representative claim 1 that integrates the
judicial exception into a practical application. See 2019 Revised Guidance,
Section III(A)(2). For example, Appellant’s claimed additional elements
(e.g., user interface, server, manufacturing facility, processor, network and
fabrication network): (1) do not improve the functioning of a computer or
other technology; (2) are not applied with any particular machine (except for
a generic computer device); (3) do not effect a transformation of a particular
article to a different state; and (4) are not applied in any 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(a)–(c), (e)–(h).
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Accordingly, we determine the claim does not integrate the recited
judicial exception into a practical application. See 2019 Revised Guidance,
Section III(A)(2) (Prong Two: If the Claim Recites a Judicial Exception,
Evaluate Whether the Judicial Exception Is Integrated Into a Practical
Application).

Step 2B identified in the 2019 Revised Guidance
Next, we determine whether the claim includes additional elements
that provide significantly more than the recited judicial exception, thereby
providing an inventive concept. Alice, 573 U.S. at 217–18 (quoting Mayo,
566 U.S. at 72–73).
Appellant argues:
The Examiner’s contention that the claims recite features
that are “well-understood, routine and conventional computer
functions”—without clear and convincing evidence to
substantiate the contention—is well short of the evidentiary
standard set forth by the Federal Circuit in Berkheimer[8] and the
Office’s revised examination procedures in view of Berkehimer
[sic]. See Berkheimer, 881 F.3d at 1368-69 (requiring clear and
convincing evidence); Berkheimer Memo,[9] pp. 2-4 (establishing
examination requirements).
Appeal Brief 19.
The 2019 Revised Guidance states:

8 Berkheimer v. HP Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018).

9 USPTO Memorandum, Changes in Examination Procedure Pertaining to
Subject Matter Eligibility, Recent Subject Matter Eligibility Decision
(Berkheimer v. HP, Inc.) (Apr. 19, 2018) (“Berkheimer Memorandum”),
available at https://www.uspto.gov/sites/default/files/documents/memo-
berkheimer-20180419.PDF.

Appeal 2019-001239
Application 11/983,102
18

In accordance with existing guidance, an examiner’s
conclusion that an additional element (or combination of
elements) is well understood, routine, conventional activity must
be supported with a factual determination. For more information
concerning evaluation of well-understood, routine, conventional
activity, see MPEP 2106.05(d), as modified by the USPTO
Berkheimer Memorandum.
2019 Revised Guidance, 84 Fed. Reg. 56 n.36 (Section III(B)) (emphasis
added).
The Berkheimer Memorandum Section III(A) states when formulating
rejections, “[i]n a step 2B analysis, an additional element (or combination of
elements) is not well-understood, routine or conventional unless the
examiner finds, and expressly supports a rejection in writing.” Berkheimer
Memorandum at 3. The Berkheimer Memorandum provides four criteria for
the Examiner to utilize to provide support for the additional elements to be
considered to be well-understood, routine or conventional.10 The Examiner
determines, “the processor is broadly applied to the abstract ideas at a high
level of generality. As explained in paragraph 18 of the specification, the
invention may be implemented using a general purpose computer.” Final
Action 10. Accordingly, we do not find Appellant’s argument persuasive

10 Berkheimer Memorandum at 3–4 (Section III(A)) (“1. A citation to an
express statement in the specification or to a statement made by an applicant
during prosecution that demonstrates the well-understood, routine,
conventional nature of the additional element(s) . . . . 2. A citation to one or
more of the court decisions discussed in MPEP § 2106.05(d)(II) as noting
the well-understood, routine, conventional nature of the additional
element(s). 3. A citation to a publication that demonstrates the well-
understood, routine, conventional nature of the additional element(s) . . . .
4. A statement that the examiner is taking official notice of the well-
understood, routine, conventional nature of the additional element(s).”).

Appeal 2019-001239
Application 11/983,102
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because, in determining if the additional elements (or combination of
additional elements) represent well-understood, routine, conventional
activity, the Examiner supported the determination based upon a factual
determination as specified in the Berkheimer Memorandum. See
Berkheimer Memorandum at 3–4 (Section III(A)(1)).
Further, we note in BASCOM,11 our reviewing court found that while
the claims of the patent were directed to an abstract idea, the patentee
alleged an “inventive concept can be found in the ordered combination of
claim limitations that transform the abstract idea of filtering content into a
particular, practical application of that abstract idea.” BASCOM, 827 F.3d at
1352. In particular, the patent in BASCOM claimed “a technology-based
solution (not an abstract-idea-based solution implemented with generic
technical components in a conventional way) to filter content on the Internet
that overcomes existing problems with other Internet filtering systems.”
BASCOM, 827 F.3d at 1351. Claim 1 is distinguishable, as it recites an
abstract-idea-based solution, that is, a method of using prediction parameters
to identify generated predictions in the future based upon gathered data. See
generally Specification. Therefore, we are not persuaded that the ordered
combinations of steps in representative claim 1 provides an inventive
concept. See 2019 Revised Guidance at 56. We find the claims do not
include a specific limitation or a combination of elements that amounts to
significantly more than the judicial exception itself. See Memorandum,
Section III(B) (Step 2B: If the Claim Is Directed to a Judicial Exception,
Evaluate Whether the Claim Provides an Inventive Concept).

11 BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d
1341 (Fed. Cir. 2016).
Appeal 2019-001239
Application 11/983,102
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Accordingly, we conclude claims 1–3, 5–8, 12–14, 16, 18–20 and 22
are directed to “concepts performed in the human mind (including an
observation, evaluation, judgment, opinion)”; thus, the claims recite the
abstract idea of “Mental processes” identified in the 2019 Revised Guidance,
and fail to recite limitations that amount to significantly more than the
abstract idea itself. We sustain the Examiner’s § 101 rejection of claims 1–
3, 5–8, 12–14, 16, 18–20 and 22.

CONCLUSION

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3, 5–8,
12–14, 16,
18–20, 22
101 Eligibility 1–3, 5–8,
12–14, 16,
18–20, 22

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)(v).

AFFIRMED