NthGen Software Inc.

Patent Trials and Appeals Board

Sep 28, 2020

14794571 - (D) (P.T.A.B. Sep. 28, 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.
14/794,571 07/08/2015 Mark Endras 015535-18087A-US 2795
154659 7590 09/28/2020
Lempia Summerfield Katz LLC / KAR Auction Services
KAR Auction Services Inc.
20 S. Clark Street
Suite 600
Chicago, IL 60603
EXAMINER
HAQ, NAEEM U
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
09/28/2020 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):
docket-us@lsk-iplaw.com
mail@lsk-iplaw.com
pair_lsk@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MARK ENDRAS and HON-WAI CHIA

_____________

Appeal 2020-003441
Application 14/794,571
Technology Center 3600
____________

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

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 2, 6, 8–10, 12–16, and 20–30. Claims 3–5, 7, 11, and 17–19 are
canceled. We have jurisdiction over the pending claims under 35 U.S.C.
§ 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a) (2018). According to Appellant, the real party in interest
is Nth Gen Software Inc. See Appeal Br. 2.

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STATEMENT OF THE CASE2
Introduction
Appellant’s claimed invention relates generally to “e-commerce and
in particular is related to automated methods of arbitration when dealing
with disputes in vehicle trading especially online vehicle auctions.” Spec.
¶ 2.
Rejection
Claims Rejected 35 U.S.C. § Reference(s)/Basis
1, 2, 6, 8–10, 12–16, 20–30 101 Eligibility
USPTO § 101 Guidance
The U.S. Patent and Trademark Office (USPTO) has published
revised guidance on the application of 35 U.S.C. § 101. See USPTO
January 7, 2019 Memorandum, 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50 (“January 2019 Memorandum”).3
Under that guidance, we first look to whether the claim recites:

2 We herein refer to the Final Office Action, mailed June 26, 2019 (“Final
Act.”); Appeal Brief, filed Nov. 25, 2019 (“Appeal Br.”); the Examiner’s
Answer, mailed Feb. 4, 2020 (“Ans.”); and the Reply Brief, filed April 2,
2020.
3 The Office issued a further memorandum on October 17, 2019 (the
“October 2019 Memorandum”) clarifying guidance of the January 2019
Memorandum in response to received public comments. See https://
www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.pdf.
Moreover, “[a]ll USPTO personnel are, as a matter of internal agency
management, expected to follow the guidance.” January 2019 Memorandum
at 51; see also October 2019 Memorandum at 1.
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(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) (see January 2019
Memorandum Step 2A – Prong One; MPEP
§ 2106.04(a)(2)[R-10.2019]); and
(2) any additional elements that integrate the judicial exception
into a practical application (see MPEP §§
2106.04(d); 2106.05(a)–(c), (e)–(h) [R-10.2019]) (see
January 2019 Memorandum Step 2A – Prong Two).4

Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation, or combination of limitations,
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.
See January 2019 Memorandum (Step 2B).
Because there is no single definition of an “abstract idea” under Alice
Corp. v. CLS Bank International, 573 U.S. 208 (2014) Step 1, the January
2019 Memorandum synthesizes, for purposes of clarity, predictability, and

4 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 October Memorandum, Section III(A)(2),
page 10, et seq.
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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 January 2019 Memorandum, 84 Fed. Reg. at 52.

According to the January 2019 Memorandum, “[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 January 2019 Memorandum, 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 including 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 January Memorandum, 84 Fed. Reg. at 54–55 (“Prong Two”).

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ANALYSIS
January 2019 Memorandum, Step 2A, Prong One
The Judicial Exception
We reproduce independent method claim 1 in Table One, infra. We
have considered all of Appellant’s arguments and any evidence presented.
We highlight and address specific findings and arguments for emphasis in
our analysis below.5
The Examiner concludes that independent claim 1 recites an abstract
idea, i.e., a method of organizing human activity, including commercial
interactions:
The steps recited [] are processes that, under the broadest
reasonable interpretation, cover certain methods of organizing
human activity (i.e. commercial interactions between a buyer and
seller). The mere nominal recitation of a computer and an online
auction does not take the claim limitations out of the human
activity grouping. Thus claims 1 and 22 recite an abstract idea.
Dependent claims 2, 6, 8-10, 12-16, 20, 21, 23, and 26-29 recite
the same abstract idea identified in claims 1 and 22.
Final Act. 4–5.
Under the January 2019 Memorandum, 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 processes, and (c) certain methods of organizing human activities.

5 Throughout this opinion, we give the claim limitations the broadest
reasonable interpretation (BRI) consistent with the Specification. See In re
Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
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Independent Claim 1
In Table One below, we identify in italics the specific claim
limitations that we conclude recite an abstract idea. We also identify in bold
the additional claim elements that we find are generic computer components:

TABLE ONE

Independent Claim 1 January 2019 Memorandum
[a] A method6 of computer-
mediated arbitration following
an online auction of a vehicle
between a seller and a buyer, the
seller and the buyer having
consented to automatic
arbitration of disputes related to
the auction, the buyer having
received and inspected the
vehicle following the auction,
the method comprising:
A computer is a generic computer
component, as shown in bold. See
January 2019 Memorandum, 84 Fed.
Reg. at 52 n.14.
Abstract Idea: Arbitration is a
commercial or legal interaction. See
January 2019 Memorandum 52.
[b1] receiving or retrieving a
vehicle identification number of
the vehicle;
[b2] receiving or retrieving a
price paid in the auction;
[b3] receiving a report of a
disputed feature from the buyer,
including a descriptive
(b1) Receiving or retrieving a vehicle
identification number, (b2) a price paid
in the auction, (b3) a report, or (b4) a
desired compensation, are insignificant
extra-solution activities (i.e., data
gathering). See January 2019
Memorandum, 84 Fed. Reg. at 55 n.31;
see also MPEP § 2106.05(g).

6 A method falls under the statutory subject matter class of a process. 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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Independent Claim 1 January 2019 Memorandum
component and a photo or video
component;
[b4] receiving from the buyer a
desired compensation;
[c] making a threshold
assessment from the report as to
whether a dispute is present,
Abstract Idea: making a threshold
assessment from the report as to
whether a dispute is present is a certain
method of organizing human activities,
i.e., a commercial interaction that could
be performed alternatively (to a
computer implemented process) as a
mental process. See January 2019
Memorandum 52.
[d] communicating with the
seller if a dispute is present, and
taking steps comprising:
Communicating with the seller is an
insignificant extra-solution activity. See
January 2019 Memorandum, 84 Fed.
Reg. at 55 n.31; see also MPEP §
2106.05(g).
[e] receiving or retrieving an
assessment of a vehicle value
based on the vehicle
identification number, vehicle
mileage, and vehicle condition
data,
wherein the vehicle mileage and
the vehicle condition data are
obtained from on board
diagnostics in the vehicle;
Receiving or retrieving an assessment of
a vehicle value is insignificant extra-
solution activity (data gathering). See
January 2019 Memorandum, 84 Fed.
Reg. at 55 n.31; see also MPEP §
2106.05(g).
“on board diagnostics” (OBD) is
performed by a generic computer
component, as shown in bold. See
January 2019 Memorandum, 84 Fed.
Reg. at 52 n.14.
[f] using the report to calculate
or look up an estimate to repair
or replace the disputed feature;
Abstract Idea — using the report to
calculate or look up an estimate to
repair or replace the disputed feature
could be performed alternatively by a
person as a mental process. See January
2019 Memorandum, 84 Fed. Reg. at 52.
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Independent Claim 1 January 2019 Memorandum
The steps of calculating or looking up
could be carried out by a human with
pen and paper. See CyberSource Corp.
v. Retail Decisions, Inc., 654 F.3d 1366,
1375 (Fed. Cir. 2011) (“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.”).
[g] selecting a lowest one of the
following values and from the
selected lowest value,
calculating a first settlement
amount: the buyer's desired
compensation, the assessment of
the vehicle value less the price
paid, and the estimate to repair
or replace; and
Abstract Idea — selecting a lowest one
of the following values and from the
selected lowest value, calculating a first
settlement amount could be performed
alternatively by a person as a mental
process. See January 2019
Memorandum, 84 Fed. Reg. at 52.
[h] communicating the first
settlement amount to the buyer;
and
Communicating the first settlement
amount to the buyer is insignificant
post-solution activity. Revised
Guidance 55, n.31; see MPEP §
2106.05(g); see also buySAFE, Inc. v.
Google, Inc., 765 F.3d 1350, 1355 (Fed.
Cir. 2014) (determining a claim reciting
a computer that receives and sends
information over a network is directed
to an abstract idea).
[i] if the first settlement amount
is accepted by the buyer,
communicating the first
settlement amount to the seller,
and automatically initiating
funds settlement at the seller’s
and buyer’s auction accounts.
The conditional communicating
limitation is insignificant post-solution
activity. Revised Guidance 55, n.31; see
also MPEP § 2106.05(g); buySAFE, 65
F.3d at 1355.
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Abstract Idea
As identified in the preamble (a) of claim 1, “arbitration” is a
commercial or legal interaction, which are types of abstract ideas identified
under the January 2019 Memorandum. As also identified above in Table
One, we conclude method steps (c), (f) and (g) involve making assessments,
calculating or looking up a repair estimate, and selecting the lowest value
and calculating a settlement amount, which can be performed alternatively
by a person as a mental process. See January 2019 Memorandum, 84 Fed.
Reg. at 52. See also October 2019 Memorandum at 7 (section C: “Mental
Processes”).
Although we describe the abstract idea slightly differently than the
Examiner (Final Act. 4–5), the Examiner’s characterization of the idea is not
erroneous. “An abstract idea can generally be described at different levels of
abstraction.” Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir.
2016). The level of abstraction an Examiner uses to describe an abstract
idea need not “impact the patentability analysis.” Apple, 842 F.3d at 1241.
Regardless of the level of generality used to describe the abstract idea,
we conclude independent claim 1 recites an abstract idea under Step 2A,
prong one, of the January 2019 Memorandum. Cf. Accenture Glob. Servs.,
GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1344–45 (Fed. Cir.
2013) (“Although not as broad as the district court’s abstract idea of
organizing data, it is nonetheless an abstract concept.”).
Although independent method claim 1 requires the recited steps to be
performed by a computer, we find this generic computer implementation of
a mental process is insufficient to take the invention out of the realm of
abstract ideas. See also independent claims 22 and 24 which similarly
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recite: “A method of computer-mediated arbitration.” (emphasis added).
“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.” See also CyberSource, 654 F.3d at 1375. 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; see also Versata Dev. Grp. 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.”); Alice, 573 U.S. at 223 (“Stating an abstract idea
while adding the words ‘apply it with a computer’” is insufficient to confer
eligibility.).
Moreover, “[u]sing a computer to accelerate an ineligible mental
process does not make that process patent-eligible.” Bancorp Servs., L.L.C.
v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1279 (Fed. Cir.
2012); see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363
(Fed. Cir. 2015) (“[R]elying on a computer to perform routine tasks more
quickly or more accurately is insufficient to render a claim patent eligible.”).
Because claim 1 considered as a whole recites an abstract idea, as
identified in Table One, supra, and because remaining independent claims
22 and 24 recite similar language of commensurate scope, we conclude all
claims 1, 2, 6, 8–10, 12–16, and 20–30 recite an abstract idea, as identified
above, under Step 2A, Prong One. Therefore, we proceed to Step 2A, Prong
Two.
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January 2019 Memorandum, Step 2A, Prong Two
Integration of the Judicial Exception into a Practical Application
Pursuant to the January 2019 Memorandum, we consider whether
there are additional elements set forth in the claims that integrate the judicial
exception into a practical application. See January 2019 Memorandum, 84
Fed. Reg. at 54–55.
Additional Limitations
As emphasized in bold in Table One, supra, we note the additional
generic computer components recited in claim 1, i.e., “computer-mediated
arbitration.” (emphasis added). We further note the supporting exemplary,
non-limiting descriptions of generic computer components found in the
Specification, for example at paragraph 10: “The application may be
specific for a particular mobile device[,] e.g. an iPhone or a Google Android
phone, or a tablet computer etc.[,] or generic[,] e.g. Flash or HTML5[-]based
app that can be used in a browser.” Spec. ¶ 10. See also Spec. ¶ 11:
Users may use connected devices e.g. a Smartphone, a
tablet, or a personal computer to connect with the system[,] e.g.
using a browser on a personal computer to access the website or
via an app on a mobile device. For example, users may download
the app from an AppStore. Devices where invention can be
advantageously used may include but not limited to an iPhone,
iPad, Smartphones, Android phones, personal computers[,] e.g.
laptops, tablet computers, touch-screen computers running any
number of different operating systems[,] e.g. MS Windows,
Apple iOS, Linux, Ubuntu, etc.
Spec. ¶ 11.

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See also Spec. ¶ 42:
the system and method may be practiced with other
computer system configurations, including single-processor,
multiprocessor or multi-core processor computer systems, mini-
computing devices, mainframe computers, as well as personal
computers, hand-held computing devices (e.g., personal digital
assistant (PDA), phone, watch or other electronic gadgets
incorporating the capacity to compute), microprocessor-based or
programmable consumer or industrial electronics, and the like.
The illustrated aspects may also be practiced in distributed
computing environments where tasks/routines/processes etc. are
performed by remote processing devices that are linked through
a communications network e.g. a local area network (LAN) or
the Internet. However, some, if not all aspects may be practiced
on stand-alone computer(s). In a distributed computing
environment, program modules may be located in both local and
remote memory storage devices.
Spec. ¶ 42. See also ¶¶ 41, 45, 48, 128 (describing generalized
descriptions of a “computer”).

We emphasize that McRO, Inc. v. Bandai Namco Games America
Inc., 837 F.3d 1299 (Fed. Cir. 2016), guides: “The abstract idea exception
prevents patenting a result where ‘it matters not by what process or
machinery the result is accomplished.’” 837 F.3d at 1312 (quoting O’Reilly
v. Morse, 56 U.S. 62, 113 (1854)) (emphasis added). See supra, Table One.
Thus, we conclude Appellant’s claimed invention merely implements
the abstract idea using steps executed by generic computer components, as
depicted in Table One (above), i.e., using instructions (Final Act. 6), as
supported in Appellant’s Specification, for example, at paragraphs 42, 45,
and 50. Therefore, we conclude Appellant’s claims merely use a generic
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programmed computer as a tool to perform an abstract idea. See MPEP
§ 2106.05(f).
As mapped in the right column of Table One, supra, we conclude that
independent claim 1 also recites several additional limitations that are extra-
solution activities the courts have determined to be insufficient to transform
judicially excepted subject matter into a patent-eligible application. See
MPEP § 2106.05(g); January 2019 Memorandum, 84 Fed. Reg. at 55 n.31.
For example, see Claim 1, Table One, supra, “receiving” step (b) —
consisting of four grouped steps of “receiving” — and “receiving” step (e).
We conclude that steps: (b1) receiving or retrieving a vehicle identification
number of the vehicle, (b2) receiving or retrieving a price paid in the auction,
(b3) receiving a report of a disputed feature from the buyer, (b4) receiving
from the buyer a desired compensation, and (e) receiving or retrieving an
assessment of the vehicle value, are all insignificant extra-solution activities
(data gathering). See January 2019 Memorandum, 84 Fed. Reg. at 55 n.31;
see also MPEP § 2106.05(g); buySAFE, 765 F.3d at 1355 (“That a computer
receives and sends the information over a network—with no further
specification—is not even arguably inventive.”).
These extra- or post-solution limitations use a generic computer
component that performs a generic computer function as a tool to perform an
abstract idea. Thus, these limitations do not integrate the abstract idea into a
practical application. See Alice, 573 U.S. at 223–24. Instead, these
limitations merely perform insignificant extra-solution activities. Cf. Apple,
Inc. v. Ameranth, Inc., 842 F.3d 1229, 1242 (Fed. Cir. 2016) (agreeing with
the Board that printing and downloading generated menus are insignificant
post-solution activities); see also Two-Way Media Ltd. v. Comcast Cable
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Commc’ns, LLC, 874 F.3d 1329, 1341 (Fed. Cir. 2017) (streaming
audio/visual data over a communications system like the Internet held patent
ineligible).
We consider next the question of whether there are any claimed
improvements to the functioning of a computer or to any other technology or
technical field, applying the January 2019 Memorandum and the guidance
set forth under MPEP § 2106.05(a).
The Examiner finds:
Claim 1 recites the additional elements of a computer, an
online auction, and an on board diagnostics in a vehicle. These
elements are recited at a high level of generality for performing
generic computer functions of processing data using generic
computer components. These generic limitations are no more
than mere instructions to apply the exception using generic
computer components. Accordingly, these additional elements
do not integrate the abstract idea into a practical application
because they do not impose any meaningful limits on practicing
the abstract idea.
Final Act. 6 (emphasis added).
Appellant does not agree with the Examiner, arguing that “each of the
claims is integrated into a practical application.” Appeal Br. 6. Appellant
contends that the “online auctions may necessitate arbitration because of a
basic lack of trust, such as because of disputes in information provided as
part of the auction (e.g., images of the vehicle that may have been
manipulated). Each of the independent claims is directed to a specific,
practical, and integrated solution to address the underlying trust issue by
implementing a technical solution.” Id.
Appellant further contends: “[i]n order to bridge the lack of trust,
certain information is obtained from the on board diagnostics (OBD) of the
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vehicle, such as: (1) the vehicle mileage; and (2) the vehicle condition data.”
Appeal Br. 7. Appellant contends the use of this OBD data is the basis of
integrating claim 1 in to a practical application. Appeal Br. 8.
Similarly, Appellant argues regarding claim 20 that “plugging a
device into an on board diagnostics port in the vehicle” integrates it into a
practical application. Appeal Br. 8. For claim 21, it is “obtaining the VIN
number from the [OBD]. Id. For claim 22, it is using image analysis to
obtain the vehicle’s condition and mileage data. Id. at 9. For claim 24, it is
“using an app to capture vehicle condition data for the vehicle.” Appeal
Br. 11.
The Examiner finds that “OBD is a generic routine and conventional
computer device that has been required in passenger vehicles since 1996.”
Ans. 3. The Examiner provides several references as evidence in support.
See Ans. 3–4. The Examiner further explains that Appellant’s Specification
describes the claimed plug-in “device” as a generic “smartphone, tablet, or a
personal computer.” Ans. 4 (citing Spec. ¶ 11). Regarding the claims that
recite “image analysis,” the Examiner cites to several previously cited
patents. See Ans. 4–5. The Examiner explains that these and similar
limitations do not integrate the abstract idea into a practical application, nor
do they add significantly more to the abstract idea, because enhancing an
abstract idea using generic computer technology does not integrate the
abstract idea into a practical application. See Ans. 6.
Considering the arguments made, we find Appellant does not advance
any substantive, persuasive arguments regarding any specific claimed
purported improvements. Regarding the claimed data gathering steps
recited in claim 1 (and each of the other argued claims), we note that simply
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adding generic hardware and computer components to perform abstract ideas
does not integrate those ideas into a practical application, because the
“mere recitation of a generic computer cannot transform a patent-ineligible
abstract idea into a patent-eligible invention.” Alice, 573 U.S. at 223; see
January 2019 Memorandum, 84 Fed. Reg. at 55, n.30; id. at 55 (“merely
includ[ing] instructions to implement an abstract idea on a computer” is an
example of when an abstract idea has not been integrated into a practical
application).
To the extent Appellant arguendo claims an improved approach to
computer-mediated arbitration (i.e., a commercial or legal interaction under
the January 2019 Memorandum), an improved abstract idea is still an
abstract idea. See Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566
U.S. 66, 90 (2012) (holding that a novel and nonobvious claim directed to a
purely abstract idea is, nonetheless, patent ineligible); see also Synopsys,
Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (“[A]
claim for a new abstract idea is still an abstract idea.”).
As set forth under MPEP § 2106.05(a):
To show that the involvement of a computer assists in
improving the technology, the claims must recite the details
regarding how a computer aids the method, the extent to which
the computer aids the method, or the significance of a computer
to the performance of the method . . . . Merely adding generic
computer components to perform the method is not sufficient.
Thus, the claim must include more than mere instructions to
perform the method on a generic component or machinery to
qualify as an improvement to an existing technology.
(Emphasis added).

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Here, we find Appellant has not persuasively shown how the claims
“recite the details regarding how a computer aids the method, the extent to
which the computer aids the method, or the significance of a computer to the
performance of the method.” Id. (emphasis added).
Therefore, we agree with the Examiner that independent claims 1, 22,
and 24 do not recite an improvement to the functioning of the computer
itself or to any other technology or technical field because “obtaining vehicle
data using routine and conventional technology does not integrate the
abstract idea into a practical application nor does it add significantly more to
the abstract idea.” Ans. 5; see MPEP § 2106.05(a).
We note Appellant advances no arguments that the method claims on
appeal are tied to a particular machine, or transform an article to a different
state or thing. See MPEP § 2106.05(b), 2106.05(c).
Nor does Appellant advance any substantive, persuasive arguments
that explain how the claims on appeal recite specific “meaningful” claim
limitations, such as those of the types addressed under MPEP § 2106.05(e),
that impose meaningful limits on the judicial exception.7
Thus, under Step 2A, Prong Two (see MPEP § 2106.05(a)–(c) and
(e)–(h)), we conclude claims 1, 2, 6, 8–10, 12–16, and 20–30 do not
integrate the judicial exception into a practical application.

7 See January 2019 Memorandum, 84 Fed. Reg. at 55, citing MPEP
§ 2106.05(e): “[A]ppl[ying] or us[ing] 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.”
(Emphasis added).
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The Inventive Concept – Step 2B
Under the January 2019 Memorandum, 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)
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”).8 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 particular, the Examiner must find, and expressly support a
rejection in writing, with one or more of the following:
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). . . .

8 Available at https://www.uspto.gov/sites/default/files/documents/memo-
berkheimer-20180419.PDF.
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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). . . .
Berkheimer Memorandum at 3–4.

Here, under Step 2B, the Examiner finds “an online auction is routine
and conventional” and cites to five patents as examples:
• US 20030105705 A1 (paragraph [0005]);
• US 20070073610 A1 (paragraph [0005]);
• US 20080167983 A1 (paragraph [0004]);
• US 20080235126 A1 (paragraph [0002]);
• US 20140108180 A1 (paragraph [0003])
Final Act. 9.

The Examiner also finds “onboard diagnostics in a vehicle is routine
and conventional” and provides citations to both non-patent literature and a
patent reference in support. Final Act. 9–11. The Examiner also provides
evidentiary support for “image analysis” and “image recognition” as being
routine and conventional. See Final Act. 11.

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21
The Examiner further finds:
Taking the additional elements individually, the computer
components perform purely generic computer functions. Taking
the additional elements in combination, the claims as a whole are
directed to an abstract idea that is implemented using generic
computer technology. As such, there is no inventive concept
sufficient to transform the claimed subject matter into a patent-
eligible application. The claim does not amount to significantly
more than the abstract idea itself.
Ans. 12.
Appellant has not substantively traversed the Examiner’s Berkheimer
evidence in the Appeal Brief or the Reply Brief. Arguments not made are
waived. See 37 C.F.R. § 41.37(c)(1)(iv).

Therefore, in light of the foregoing, and under the Director’s policy
guidance, as set forth in the January 2019 and October 2019 Memoranda, we
conclude that each of Appellant’s claims 1, 2, 6, 8–10, 12–16, and 20–30,
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, we sustain the Examiner’s rejection under 35 U.S.C.
§ 101 of independent representative claim 1, and grouped claims 2, 6, 8–10,
12–16, and 20–30. See 37 C.F.R. § 41.37(c)(1)(iv).

CONCLUSION
Under the Director’s policy guidance, and the Alice /Mayo
framework, as set forth in the January 2019 and October 2019 Memoranda,
we conclude that claims 1, 2, 6, 8–10, 12–16, and 20–30, rejected under 35
U.S.C. § 101, are directed to patent-ineligible subject matter.

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22
DECISION SUMMARY

Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 2, 6,
8–10,
12–16,
20–30
101 Eligibility 1, 2, 6,
8–10,
12–16,
20–30

FINALITY AND RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED