ORACLE INTERNATIONAL CORPORATION

Patent Trials and Appeals Board

Aug 27, 2020

14686896 - (D) (P.T.A.B. Aug. 27, 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.
14/686,896 04/15/2015 Ming LEI ORA150664 (O-359) 3818
51444 7590 08/27/2020
Kraguljac Law Group/Oracle
4700 Rockside Road
Summit One, Suite 510
Independence, OH 44131
EXAMINER
IQBAL, MUSTAFA
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
08/27/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
DDay@KragLaw.com
MPusti@KragLaw.com
PTOMail@KragLaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MING LEI and CATALIN POPESCU

_____________

Appeal 2020-001496
Application 14/686,896
Technology Center 3600
____________

Before ROBERT E. NAPPI, ST. JOHN COURTENAY III, and
ELENI MANTIS MERCADER, 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 1–20. 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). According to Appellant, the real party in interest is
Oracle International Corporation. See Appeal Br. 2.

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STATEMENT OF THE CASE 2
Introduction
Appellant’s claimed invention relates generally to “[s]ystems,
methods, and other embodiments are disclosed that are configured to
generate promotion effects for use by a demand forecast model.” Abstract.

Rejection
Claims
Rejected
35 U.S.C. § Reference(s)/Basis
1–20 101 Eligibility

Rejection under 35 U.S.C. § 101
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

2 We herein refer to the Final Office Action, mailed Jan. 31, 2019 (“Final
Act.”); Appeal Brief, filed July 1, 2019 (“Appeal Br.”); the Examiner’s
Answer, mailed Oct. 18, 2019 (“Ans.”); and the Reply Brief, filed Dec. 18,
2019.

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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Under that guidance, 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) (see January 2019
Memorandum Step 2A – Prong One); and

(2) any additional elements that integrate the judicial exception
into a practical application (see MPEP § 2106.05(a)–(c),
(e)–(h)) (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 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 Int’l, 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.
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
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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”).

ANALYSIS
January 2019 Memorandum, Step 2A, Prong One
The Judicial Exception
We reproduce infra independent claim 1 in Table One. We have
considered all of Appellant’s arguments and any evidence presented. We
highlight and address specific findings and arguments for emphasis in our
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analysis below.5
The Examiner concludes that independent method claim 1 recites one
or more types of abstract ideas:
These steps relate to an abstract idea which fall[s] under the
grouping of a mental process. Additionally[,] the steps relate[]
to regression analysis which relate[s] to the abstract idea
groupings of mathematical relationships/formulas. The phrase
“mathematical relationships/formulas” is used to describe
mathematical concepts such as mathematical algorithms,
mathematical relationships, mathematical formulas, and
calculations.
Final Act. 7.
Under the January and October 2019 Memorandums, we begin our
analysis by first considering whether the claims recite any judicial
exceptions, including certain groupings of abstract ideas, in particular: (a)
mathematical concepts, (b) mental steps, and (c) certain methods of
organizing human activities.

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:

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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TABLE ONE

Independent Claim 1 January 2019 Memorandum
[a] A method implemented by
a computing device
configured to execute a
computer application,
wherein the computer
application is configured to
process data in electronic
form, the method
comprising: 6

A computing device is a generic
computer component, as shown in
bold. See January 2019
Memorandum, 84 Fed. Reg. at 52
n.14.

[b] controlling an algorithm
to perform regression
analysis on a plurality of
promotion components in a
joint analysis and in a
subsequent phased analysis
to mitigate inaccurate results
of the joint analysis, the
regression analysis
comprising:
Abstract Idea: Controlling an
algorithm to perform a regression
analysis is a mathematical concept or
calculation that can be performed
alternatively by a person as a mental
process with the aid of pen and
paper. A “plurality of promotion
components” involves advertising,
marketing or sales activities.
Therefore, all claim limitations infra
that recite “promotion components”
and/or “promotion effect values”
involve a fundamental economic
practice, e.g., see Spec. ¶ 2
“Retailers often use promotions to
boost sales of items.” See January
2019 Memorandum, 84 Fed. Reg. at
52.

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

Similarly, performing a joint
analysis and a subsequent phased
analysis can be performed
alternatively by a person as a mental
process with the aid of pen and
paper.

[c] performing the joint
analysis by applying a first
regression analysis on
historical performance data
for an item to generate first
promotion effect values by
jointly analyzing a plurality
of promotion components
associated with the item,
wherein the historical
performance data includes at
least unit sales data and data
associated with the plurality
of promotion components
across a plurality of time
periods;
Abstract Idea: performing the
joint analysis by applying a
first regression analysis on
historical performance data
for an item to generate first
promotion effect values by
jointly analyzing a plurality of
promotion components
associated with the item
involves a fundamental
economic practice (promotion
effects and components), and
a mathematical concept or
calculation (regression
analysis) that can be
performed alternatively by a
person as a mental process
with the aid of pen and paper.
See January 2019
Memorandum, 84 Fed. Reg. at
52.

[d] comparing the first
promotion effect values from
the joint analysis to a
plurality of first rules to
determine if one or more of
the plurality of first rules is
Abstract Idea: comparing the first
promotion effect values from the
joint analysis to a plurality of first
rules involves a fundamental
economic practice (i.e., promotion
effects – sales and advertising) that
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Independent Claim 1 January 2019 Memorandum
violated by one or more of the
first promotion effect values;
can be performed alternatively by a
person as a mental process. See
January 2019 Memorandum, 84 Fed.
Reg. at 52.

[e] if none of the plurality of
first rules are violated,
outputting the first promotion
effect values to an output
data structure as final
promotion effect values for
adjusting an order quantity of
the item;
Outputting the first promotion effect
values to an output data structure is
insignificant extra-solution activity
(i.e., data transmission). See January
2019 Memorandum, 84 Fed. Reg. at
55 n.31; see also MPEP §
2106.05(g).

[f] in response to at least one
of the plurality of first rules
being violated, setting a flag
or signal to indicate that the
phased analysis of the
regression analysis is to be
performed;
Abstract Idea: Setting a flag or
signal to indicate that the phased
analysis of the regression analysis is
to be performed can be performed
alternatively by a person as a mental
process. See January 2019
Memorandum, 84 Fed. Reg. at 52.

[g] in response to the flag or
signal being set, initiating
and performing the phased
analysis comprising:
Abstract Idea: Initiating and
performing the phased analysis can
be performed alternatively by a
person as a mental process. See
January 2019 Memorandum, 84 Fed.
Reg. at 52.

[h] (i) selecting a first subset
of promotion components
from the plurality of
promotion components, and
performing a second
regression analysis on the
Abstract Idea: Selecting a
first subset of promotion
components from the plurality
of promotion components, and
performing a second
regression analysis on the
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Independent Claim 1 January 2019 Memorandum
historical performance data
associated to the first subset
of promotion components to
generate second promotion
effect values that identify
which promotion components
from the first subset are
effective for the item;
historical performance data
involves a fundamental
economic practice
(promotions), and a
mathematical concept or
calculation (regression
analysis) that can be
performed alternatively by a
person as a mental process
with the aid of pen and paper.
See January 2019
Memorandum, 84 Fed. Reg. at
52.

Similarly, using second promotion
effect values to identify which
promotion components from the first
subset are effective for the item
involves a fundamental economic
practice (promotions including
marketing, advertising and sales),
that can be performed alternatively
by a person as a mental process. See
January 2019 Memorandum, 84 Fed.
Reg. at 52.

[i] (ii) selecting a second
subset of promotion
components from the
plurality of promotion
components, and performing
a third regression analysis on
the historical performance
data associated to the second
subset of promotion
components to generate third
promotion effect values that
Abstract Idea: Selecting a
second subset of promotion
components from the plurality
of promotion components, and
performing a third regression
analysis on the historical
performance data involves a
fundamental economic
practice (promotions including
marketing, advertising and
sales), that also involves a
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Independent Claim 1 January 2019 Memorandum
identify which promotion
components from the second
subset are effective for the
item; and
mathematical concept or
calculation that can be
performed alternatively by a
person as a mental process
with the aid of pen and paper.
See January 2019
Memorandum, 84 Fed. Reg. at
52.

Similarly, using third promotion
effect values to identify which
promotion components from the first
subset are effective for the item
involves a fundamental economic
practice (promotions including
marketing, advertising and sales),
that can be performed alternatively
by a person as a mental process. See
January 2019 Memorandum, 84 Fed.
Reg. at 52.

[j] (iii) adjusting the order
quantity of the item based on
at least the promotion
components that are
determined to be effective for
the item, wherein the second
promotion effect values and
the third promotion effect
values are applied to mitigate
results of the joint analysis.
Abstract Idea: adjusting the
order quantity of the item
based on at least the
promotion components that
are determined to be effective
for the item, wherein the
second promotion effect
values and the third promotion
effect values are applied to
mitigate results of the joint
analysis involves a
fundamental economic
practice (promotion
components including
marketing, advertising and
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Independent Claim 1 January 2019 Memorandum
sales), that can be performed
alternatively by a person as a
mental process with the aid of
pen and paper. See January
2019 Memorandum, 84 Fed.
Reg. at 52.

Abstract Idea — Step 2A, Prong One Arguments
Appellant contends:
MPEP [§] 2111 requires the pending claims must be
“given their broadest reasonable interpretation consistent with
the specification.” Thus, the claims cannot be interpreted to be
performed in the human mind because such an interpretation is
not reasonable and inconsistent with the both the specification
and the explicitly recited limitations in the claim. Nothing in the
present specification suggests in any way that the invention can
be performed in the human mind.
Appeal Br. 11.
Appellant also contends that claim 1 does not recite a mathematical
concept. See Reply Br. 4.
We disagree on both counts. As identified above in Table One, we
conclude steps (b), (c), (f), (h), and (i) recite a mathematical concept or
calculation (a “regression analysis”) that can be performed alternatively by a
person as a mental process with the aid of pen and paper. As clarified in the
October 2019 Memorandum:
A claim that recites a mathematical calculation will be
considered as falling within the “mathematical concepts”
grouping. A mathematical calculation is a mathematical
operation (such as multiplication) or an act of calculating using
mathematical methods to determine a variable or number, e.g.,
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performing an arithmetic operation such as exponentiation.
There is no particular word or set of words that indicates a claim
recites a mathematical calculation. That is, a claim does not have
to recite the word “calculating” in order to be considered a
mathematical calculation. For example, a step of “determining”
a variable or number using mathematical methods or
“performing” a mathematical operation may also be considered
mathematical calculations when the broadest reasonable
interpretation of the claim in light of the specification
encompasses a mathematical calculation.
October 2019 Memorandum 4.
Applying this guidance here, we conclude a regression analysis, as
claimed, may also be considered a mathematical calculation because the
broadest reasonable interpretation of claim 1 in light of the specification
(e.g., at paragraphs 61–70) encompasses a mathematical calculation.
Moreover, we conclude each recitation of “promotion components” or
“promotion effect values” in claim 1 involves advertising, marketing, or
sales activities. These are judicial exceptions (abstract ideas) under the
January 2019 Memorandum. For example, see the Specification at
paragraph 2: “Retailers often use promotions to boost sales of items.”
Therefore, we conclude steps (b) (c), (d), (e), (h), (i), and (j), which
each recite “promotion effect values” and/or “promotion components”
involve a fundamental economic practice, and thus recite an abstract idea.
See January 2019 Memorandum, 84 Fed. Reg. at 52.
Similarly, we conclude that all the steps of method claim 1 that are
identified in Table One as reciting an abstract idea 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,
section C: “Mental Processes” page 7.
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Although claim 1 requires the recited steps to be performed by “a
computing device” this generic computer implementation of a mental
process is insufficient to take the invention out of the realm of abstract ideas.
See independent claim 17, which recites “a computer” and independent
claim 11, which recites “a processor connected to at least one memory.”
“That purely mental processes can be unpatentable, even when
performed by a computer, was precisely the holding of the Supreme Court in
Gottschalk v. Benson.” CyberSource Corp. v. Retail Decisions, Inc., 654
F.3d 1366, 1375 (Fed. Cir. 2011). 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 id. at 1372–73; see also
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.”); 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.”).
Merely combining several abstract ideas does not render the
combination any less abstract. RecogniCorp, LLC v. Nintendo Co., 855 F.3d
1322, 1327 (Fed. Cir. 2017) (“Adding one abstract idea (math) to another
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abstract idea . . . does not render the claim non-abstract.”); see also
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94 (Fed. Cir.
2016) (determining the pending claims were directed to a combination of
abstract ideas). Thus, we conclude representative claim 1 recites an abstract
idea.
Because claim 1 considered as a whole recites an abstract idea, as
identified in Table One, supra, and because remaining independent claims
11 and 17 recite similar language of commensurate scope, we conclude all
claims 1–20 recite an abstract idea, as identified above, under Step 2A,
Prong One. Therefore, we proceed to Step 2A, Prong Two.

January 2019 Memorandum, Step 2A, Prong Two
Integration of the Judicial Exception into a Practical Application 7
The Examiner finds: “the claims do not include additional elements
that are sufficient to amount to significantly more than the judicial exception
because the additional computer elements, which are recited at a high level

7 Under the January 2019 Memorandum, at Step 2A, Prong Two, we
determine whether the claims recite:
(i) an improvement to the functioning of a computer;
(ii) an improvement to another technology or technical field;
(iii) an application of the abstract idea with, or by use of, a
particular machine (for method or process claims);
(iv) a transformation or reduction of a particular article to a different
state or thing (for method or process claims); or
(v) other meaningful limitations beyond generally linking the use
of the abstract idea to a particular technological environment.

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of generality, provide conventional computer functions that do not add
meaningful limits to practicing the abstract idea.” Final Act. 7.
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 component recited in claim 1: “a computing device.”
Similarly, independent claim 17 recites “a computer” and independent claim
11 recites “a processor connected to at least one memory.”
We further note the supporting exemplary, non-limiting descriptions
of generic computer components in the Specification, as found by the
Examiner:
When looking at these additional elements individually,
each step does no more than require a generic computer to
perform generic computer functions, the computer components
are recited purely functional and generic. ¶0097-0099 recite
general purpose computer configurations. ¶0097 states generally
describing an example configuration of the computer 600, the
processor 602 may be a variety of various processors including
dual microprocessor and other multi-processor architectures. A
memory 604 may include volatile memory and/or non-volatile
memory. Non-volatile memory may include, for example, ROM,
ROM, and so on. Volatile memory may include, for example,
RAM, SRAM, DRAM, and so on. This shows general purpose
computer configurations. See MPEP 2106.05.
Ans. 8.
We emphasize that McRO, Inc. v. Bandai Namco Games America
Inc., 837 F.3d 1299 (Fed. Cir. 2016), guides: “The abstract idea exception
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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 (1853)) (emphasis added). See supra, Table One.
Thus, we conclude Appellant’s claimed invention merely implements
the abstract idea using instructions executed on generic computer
components, as depicted in Table One (above), and as supported in
Appellant’s Specification, for example, at paragraphs 97–100. Therefore,
we conclude Appellant’s claims merely use a generic 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 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 supra Claim 1, Table One, step (e). We conclude
that “outputting the first promotion effect values to an output data structure”
is insignificant extra-solution activity (i.e., data transmission). Claim 1
(emphasis added). See January 2019 Memorandum, 84 Fed. Reg. at 55 n.31;
see also MPEP § 2106.05(g). See buySAFE, Inc. v. Google, Inc., 765 F.3d
1350, 1355 (Fed. Cir. 2014) (“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.
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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 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:
The claims do not show [] a technological improvement.
The claims are geared toward providing an improved algorithm
to mitigate inaccurate results of a joint analysis as well as
accurately predict[ing] promotional effects in [a] retail business
in relation to forecast demanding. Having a better algorithm or a
better mathematical process is not analogous to an improvement
in the computer itself. The claims and specification[] fail to show
an improvement to a computer. The claims are geared toward
improving a business process side of promotional effects and
forecast demanding and [do] not show an improvement on the
technological side.
Final Act. 3 (emphasis added).

Appellant disagrees with the Examiner. Appellant urges that “[t]he
controlled regression analysis with joint analysis and phased analysis
is explicitly recited in the claim and is an improvement to previous
technological processes.” Appeal Br. 16. Appellant further contends:

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Mitigating inaccurate results is an improvement to a
computer and its technological processes. Performing two phases
based on detected errors is an improvement to inventory
controlled computer processes. These are meaningful
limitations. Thus the claim is directed to an improvement to the
existing technological processes of regression analysis and
inventory control. The claim is not directed to an abstract idea.
Appeal Br. 16.
To the extent that Appellant claims an improved approach to
“controlled regression analysis with joint analysis and phased analysis”
(Appeal Br. 16), 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.”).
Regarding independent claims 1, 11, and 17, our reviewing court
provides further applicable guidance: The “‘mere automation of manual
processes using generic computers’ . . . ‘does not constitute a patentable
improvement in computer technology.’” Trading Techs. Int’l, Inc. v. IBG
LLC, 921 F.3d 1378, 1384 (Fed. Cir. 2019) (quoting Credit Acceptance
Corp. v. Westlake Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017)).
Simply 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; see id. at 55 (“merely includ[ing] instructions to implement an abstract
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idea on a computer” is an example of when an abstract idea has not been
integrated into a practical application).
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).
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.” MPEP § 2106.05(a) (emphasis added).
Accordingly, on this record, we conclude independent claims 1, 11,
and 17, which recite similar limitations of commensurate scope, do not recite
an improvement to the functionality of a computer or other technology or
technical field. See MPEP § 2106.05(a).
Further, Appellant advances no arguments that any of 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).
Appellant additionally contends that “[t]he present invention is a
novel process that improves the functioning of the computer and existing
technological processes for at least generating more accurate data and
controlling order quantities in an improved manner (two phased technique).
These are meaningful limitations.” Appeal Br. 16.
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In support, Appellant urges: “Claim 1 does not recite a known
business process and then simply perform that known process on a
computer.” Id.
However, we have addressed this argument supra: See Mayo
Collaborative Servs., 566 U.S. at 66 (holding that a novel and nonobvious
claim directed to a purely abstract idea is, nonetheless, patent ineligible).
“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); 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.”); Affinity Labs. of Texas, LLC v.
DIRECTV, LLC, 838 F.3d 1253, 1263 n.3 (Fed. Cir. 2016) (noting that an
eligibility finding does not turn on the novelty of using a user-downloadable
application for the particular purpose recited in the claims). Moreover, an
improved abstract idea is still an abstract idea. See Mayo, 566 U.S. at 90
(holding that a novel and nonobvious claim directed to a purely abstract idea
is, nonetheless patent-ineligible).
On this record, we find no “meaningful” claim limitations, such as
those of the types addressed under MPEP § 2106.05(e), that impose
meaningful limits on the judicial exception.8

8 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
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“[T]he prohibition against patenting abstract ideas ‘cannot be
circumvented by attempting to limit the use of the formula to a particular
technological environment’ or [by] adding ‘insignificant postsolution
activity.’” Bilski v. Kappos, 561 U.S. 593, 610–12 (2010) (quoting Diehr,
450 U.S. at 191–92). See MPEP § 2106.05(h). We note Appellant advances
no arguments regarding a lack of preemption in the Appeal Brief.
Nor do claims 1–20 present any other issues as set forth in the January
and October 2019 Memorandums regarding a determination of whether the
additional generic computer elements integrate the judicial exception into a
practical application.
Thus, under Step 2A, Prong Two (MPEP § 2106.05(a)–(c) and (e)–
(h)), we conclude claims 1–20 do not integrate the judicial exception into a
practical application.

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.

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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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”).9 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.
Appellant contends:
The application of Berkheimer is not conditional upon the
Examiner using or not using the rational of the claim being well-
understood, routine, and conventional. The Examiner cannot
avoid Berkheimer. Berkheimer is a test that applies to all claims.
It is clear from the analysis in the FOA that the Examiner
identified all elements of claim 1 and excluded them all from the
Step 2B analysis because he believed the elements were well-
understood, routine, and conventional (see FOA pages 7-9).
Appeal Br. 19 (emphasis added).
However, the record supports the Examiner’s response (Ans. 7) that
the Examiner made no findings that any claim elements were well-
understood, routine, and conventional in the Final Action.

9 Available at https://www.uspto.gov/sites/default/files/documents/memo-
berkheimer-20180419.PDF.

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To the extent that the Examiner finds repetitive calculations were
well-understood, routine, and conventional in the Answer (7), we note the
Examiner supports this finding with case law as Berkheimer evidence:10
Performing repetitive calculations, Flook, 437 U.S. at 594,
198 USPQ2d at 199 (re-computing or readjusting alarm limit
values); Bancorp Services v. Sun Life, 687 F.3d 1266, 1278, 103
USPQ2d 1425, 1433 (Fed. Cir. 2012) (“The computer required
by some of Bancorp’s claims is employed only for its most basic
function, the performance of repetitive calculations, and as such
does not impose meaningful limits on the scope of those
claims.”)
Ans. 7.
We find Appellant has not substantively traversed this Berkheimer
type 2 case law evidence in 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 January 2019 and
October 2019 Memorandums, we conclude that each of Appellant’s claims
1–20, 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 representative claim 1, and the rejection of grouped
claims 2–20 (not argued separately), which fall with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(iv).

10 “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).” Berkheimer Memorandum 4.

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CONCLUSION
Under the January and October 2019 Memorandums, we conclude
that claims 1–20, rejected under 35 U.S.C. § 101, are directed to patent-
ineligible subject matter.

DECISION SUMMARY

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–20 101 Eligibility 1–20

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