Oracle International Corporation

Patent Trials and Appeals Board

Apr 23, 2020

14243591 - (D) (P.T.A.B. Apr. 23, 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.
14/243,591 04/02/2014 Karthic Viswanathan ORACL-05474US1 7055
80548 7590 04/23/2020
TUCKER ELLIS LLP
201 Mission Street
Suite 2310
SAN FRANCISCO, CA 94105
EXAMINER
KIM, JONATHAN C
ART UNIT PAPER NUMBER
2659
NOTIFICATION DATE DELIVERY MODE
04/23/2020 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):
officeactions@tuckerellis.com
pctoa@tuckerellis.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KARTHIC VISWANATHAN, PRANEET TIWARI,
KAUSHIK PAUL, and ANAND GOMATAM
___________

Appeal 2019-002033
Application 14/243,591
Technology Center 2600
_________________

Before CARL W. WHITEHEAD JR., MICHAEL M. BARRY, and
DAVID J. CUTITTA II, Administrative Patent Judges.

CUTITTA, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–20. We have jurisdiction 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). Appellant identifies the real party in interest as Oracle
International Corporation. Appeal Br. 2.
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STATEMENT OF THE CASE
Invention
Appellant’s invention relates to “detect[ing] and/or prevent[ing]
profane/objectionable content in forums/communities with community based
or user generated content.” Spec., Abstract.2 The invention “checks each
word in an incoming message against [a] disallowed variants dictionary, and
determines that one or more words in the incoming message are disallowed
when there is a hit.” Id.
Exemplary Claim
Claims 1, 11, and 20 are independent. Independent claim 1 is
exemplary of the claimed subject matter and is reproduced below with claim
element labels added in brackets:
1. A computer-implemented method for detecting
profane/objectionable content, comprising:
[(a)] generating, during a preprocessing phase, a
disallowed variants dictionary that contains a plurality of
variants of a plurality of disallowed words in a disallowed
words dictionary, each variant represents a corrupted version of
a normal disallowed word, wherein generating the plurality of
variants includes processing each word of the disallowed words
dictionary by:
iteratively, for each character of each disallowed
word of the plurality of disallowed words until a last
character of the disallowed word, performing the steps
of:

2 We refer to: (1) the originally filed Specification filed April 2, 2014
(“Spec.”); (2) the Final Office Action mailed December 1, 2017 (“Final
Act.”); (3) the Appeal Brief filed August 1, 2018 (“Appeal Br.”); (4) the
Examiner’s Answer mailed October 18, 2018 (“Ans.”); and (3) the Reply
Brief filed December 18, 2018 (“Reply Br.”).
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[(a1)] utilizing a misuse table, that specifies
morphological variants of characters, to identify
whether one or more character variants of the
character exist;
[(a2)] generating a first set of disallowed
variants by substituting the character of the
disallowed word with each of the one or more
character variants identified with the misuse table;
[(a3)] adding each disallowed variant of the
set of disallowed variants generated via character
substitution to the disallowed variants dictionary;
[(a4)] utilizing the misuse table, which
further includes at least morphological variants for
character pairs, to identify whether one or more
variants exists from a character pair including the
character in combination with an immediately
preceding character of the disallowed word;
[(a5)] generating a second set of disallowed
variants by substituting the character pair with
each of the one or more variants identified with the
misuse table; and
[(a6)] adding each disallowed variant of the
second set of disallowed variants to the disallowed
variants dictionary;
[(b)] receiving, during runtime, a plurality of messages
from users by a server for user generated content; and
[(c)] for each word of a plurality of words in each of the
plurality of messages received during runtime, checking said
each word against at least the disallowed variants dictionary by
directly looking up said each word in the disallowed variants
dictionary, and determining that said each word is disallowed
when there is a match.
Appeal Br. 14 (Claims Appendix).
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REJECTION
The Examiner rejects claims 1–20 under 35 U.S.C. § 101 as directed
to patent-ineligible subject matter. Final Act. 2–9.
OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of Appellant’s arguments and evidence.
Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(iv) (2017).
I. Principles of Law
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 US 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. See, 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-step framework, described in Alice and Mayo.
Id. 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
217.
If the claim recites an abstract idea, we turn to the second step of the
Alice and Mayo framework, in which “we must examine the elements of the
claim to determine whether it contains an ‘inventive concept’ sufficient to
‘transform’ the claimed abstract idea into a patent-eligible application.”
Alice, 573 U.S. at 221 (internal quotation marks omitted). “A claim that
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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.
The Office published revised guidance on the application of § 101.
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (hereinafter “Guidance”). The USPTO later published an
update to that guidance. October 2019 Patent Eligibility Guidance Update,
84 Fed. Reg. 55,942 (hereinafter “Guidance Update”).3 Under the Guidance
and the Guidance Update, in determining whether a claim falls within an
excluded category, we first look to whether the claim recites:
(1) Step 2A — Prong One: 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); and
(2) Step 2A — Prong Two: additional elements that integrate
the judicial exception into a practical application (see MPEP4
§ 2106.05(a)–(c), (e)–(h)).
See Guidance, 54–55 (“Revised Step 2A”).

3 The Guidance, as revised by the October 2019 Update, supplements
previous guidance memoranda. Guidance 51 (“All USPTO personnel are, as
a matter of internal agency management, expected to follow the guidance.”).
4 All Manual of Patent Examining Procedure (“MPEP”) citations herein are
to MPEP, Rev. 08.2017, January 2018.
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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 (Step 2B):
(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 id. at 56 (“Step 2B: If the Claim Is Directed to a Judicial Exception,
Evaluate Whether the Claim Provides an Inventive Concept.”).
II. The Examiner’s § 101 Rejection
The Examiner determines that exemplary5 claim 1 is directed to a
judicial exception: an abstract idea. Final Act. 2–6; Ans. 3–5. According to
the Examiner, claim 1 recites “an abstract concept that could be performed
in the human mind, or by a human using a pen and paper,” i.e., a mental
process. Final Act. 6. The Examiner identifies the claimed “‘one or more
microprocessors and one or more servers’” as additional elements and
determines “the additional elements do not amount to significantly more
than the above-identified judicial exception (the abstract idea).” Id. at 8.
We adopt the Examiner’s findings and conclusions as our own and add the
following primarily for emphasis.
III. Appellant’s Arguments
We summarize Appellant’s arguments in favor of eligibility as
follows: (1) claim 1 cannot be performed in the human mind because it

5 Appellant argues claims 1–20 as a group with respect to the § 101
rejection. Appeal Br. 8. We, thus, select independent claim 1 as
representative of the claims. See 37 C.F.R. § 41.37(c)(1)(iv).
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“expressly require[s] the use of a computer” (Reply Br. 2); (2) claim 1 is
directed to an improvement in computer functionality (Appeal Br. 5);
(3) “claim 1 does not “preempt the mere idea of content filtering” because it
recites “the noted specific implementation of content filtering” (id. at 11);
(4) “[a]ssuming, arguendo, that the pending claims are directed to an abstract
idea . . . [claim 1] nevertheless recite[s] patent eligible subject matter under
Step 2B . . . [because] the specific improvements to the computer related
technology of content filtering noted above go beyond well-understood,
routine, conventional activities” (id. at 10); (5) the rejection under Step 2B is
improper because the Examiner “asserts that generating a set of variants
during a pre-processing phase for retrieving/matching is a conventional and
generic method/system in computer-related technology. But, the required
express, in-writing support for this assertion is absent.” (id. at 12).
IV. Our Review, Guidance, Step 1
We analyze the exemplary claim and the Examiner’s rejection in view
of the Guidance, and we adopt the nomenclature for the steps used in the
Guidance. As an initial matter, the claims must recite at least one of four
recognized statutory categories, namely, machine, process, article of
manufacture, or composition of matter. MPEP § 2106(I); see 35 U.S.C.
§ 101. Appellant’s independent claim 1 recites a method (i.e., a “process”),
independent claim 11 recites a system (i.e., a “machine”) and independent
claim 20 recites a storage medium (i.e., a “manufacture”). Thus, the pending
claims recite a recognized statutory category of § 101 and we turn to the
two-step Alice/Mayo analysis applied in accordance with the Guidance.

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V. Step 2A, Prong 1 in the Guidance (Alice/Mayo–Step 1)
(Judicial Exceptions)
Next, we determine whether claim 1, being directed to a statutory
class of invention, nonetheless falls within a judicial exception.
Guidance 51.
Claim 1 recites “[(a)] generating . . . a disallowed variants dictionary
that contains a plurality of variants of a plurality of disallowed words in a
disallowed words dictionary,” wherein generating the dictionary includes
“iteratively, for each character of each disallowed word,” performing the
steps of: “[(a1)] utilizing a misuse table . . . to identify whether one or more
character variants of the character exist”; “[(a2)] generating a first set of
disallowed variants by substituting the character of the disallowed word with
each of the one or more character variants identified with the misuse table;”
“[(a3)] adding each disallowed variant of the set of disallowed variants
generated via character substitution to the disallowed variants dictionary;”
“[(a4)] utilizing the misuse table . . . to identify whether one or more variants
exists from a character pair including the character in combination with an
immediately preceding character of the disallowed word;” [(a5)] generating
a second set of disallowed variants by substituting the character pair with
each of the one or more variants identified with the misuse table;” and
“[(a6)] adding each disallowed variant of the second set of disallowed
variants to the disallowed variants dictionary.” Appeal Br. 14. Claim 1 also
recites (b) “receiving . . . a plurality of messages from users” and (c)
“checking said each word against at least the disallowed variants dictionary
by directly looking up said each word in the disallowed variants dictionary,
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and determining that said each word is disallowed when there is a match.”
Id.
Apart from additional elements and extra-solution activity discussed
separately below, claim 1, under a broadest reasonable interpretation, recites
a method having steps that can be practically performed in the mind or with
pencil and paper. For example, limitation (a1) recites “utilizing a misuse
table . . . to identify whether one or more character variants of the character
exist.” Appellant relies, in part, on paragraph 45 of the Specification to
disclose using an exemplary misuse table (Table 1). Appeal Br. 2.
Appellant’s Table 1 shows an exemplary misuse table.

“Table 1: [shows] A Sample Misuse Table.” Spec. ¶ 45.
Appellant’s Table 1 shows that under a broadest reasonable
interpretation, using a misuse table to identify whether one or more character
variants of the character exist, as recited in claim 1, merely requires
identifying a single character variant. As shown in Table 1, a person could
identify a single character variant in a sentence mentally, or with pencil and
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paper, without analyzing a large amount of data. Therefore, this limitation
can be practically performed in the mind.
Limitation (a2) recites “generating a first set of disallowed variants by
substituting the character of the disallowed word with each of the one or
more character variants identified with the misuse table.” Under a broadest
reasonable interpretation, this limitation merely requires substituting a
character of the disallowed word with a single character variant. A person
could perform such a substitution mentally or with pencil and paper without
analyzing a large amount of data and therefore this limitation can be
practically performed in the mind.
Similarly, limitations (a3)–(a6) and (c) recite information collecting or
analyzing steps, but recite those steps at such a high level, and in such a
results-oriented way, that they can be practically performed in the human
mind or with pencil and paper.
We, therefore, agree with the Examiner’s determination that claim 1
recites an abstract idea because the “above steps may be done with a human
without the aid of a machine and they lack specificity to the degree that they
give the human free hand in performing the steps such that no two humans
would do each step the same way.” Final Act. 6–7; see Guidance Update 7
(“a claim to ‘collecting information, analyzing it, and displaying certain
results of the collection and analysis,’ where the data analysis steps are
recited at a high level of generality such that they could practically be
performed in the human mind, Electric Power Group, LLC v. Alstom,
S.A.6”); see also Spec. ¶¶ 37, 40–45.

6 Elec. Power Grp., LLC v. Alston, S.A., 830 F.3d 1350, 1356 (Fed. Cir.
2016)).
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Appellant argues claim 1 cannot be performed in the human mind
because it “expressly require[s] the use of a computer.” Reply Br. 2. This
argument is unpersuasive because, as discussed in VI and VII below, claim 1
merely recites generic hardware (a processor or server) to perform aspects of
the abstract idea. However, “[i]f 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.”
Guidance, 52, n.14 (citing Intellectual Ventures I LLC v. Symantec Corp.,
838 F.3d 1307, 1318 (Fed. Cir. 2016)). In Appellant’s claim 1, similar to the
claims in Intellectual Ventures, “with 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[cil] and
paper.” Id.
Because claim 1 analyzes information by steps people may practically
go through in their minds or with pencil and paper, we conclude the claim
recites a mental process as provided for in the Guidance.
VI. Step 2A, Prong Two in the Guidance (Practical Application)
Because claim 1 recites an abstract idea, we now determine whether
the claim is directed to the abstract idea itself or whether it is instead
directed to some technological implementation or application of, or
improvement to, this idea, i.e., integrated into a practical application. See,
e.g., Alice, 573 U.S. at 223 (discussing Diamond v. Diehr, 450 U.S. 175
(1981)). We determine whether the recited judicial exception is integrated
into a practical application of that exception by: (a) identifying whether there
are any additional elements recited in the claim beyond the judicial
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exception or exceptions; and (b) evaluating those additional elements
individually and in combination to determine whether they integrate the
exception into a practical application. Guidance. 54–55. This evaluation
requires an additional element or a combination of additional elements in the
claim to 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 exception. See id.
The Examiner finds claim 1 recites additional elements including “one
or more servers.” Final Act. 8. The Examiner determines the additional
elements do not integrate the exception into a practical application because
“the additional elements are generic computer components, and these
elements are invoked merely as a tool.” Ans. 3. “The use of generic
computer components to calculate and to execute algorithms though an
unspecified computers and interface does not impose any meaningful limit
on the computer implementation of the abstract idea.” Final Act. 8.
Appellant argues claim 1 is “directed to improvements in computer
functionality” because it recites “an improvement that is achieved by a more
sophisticated content filter based on a novel disallowed variants dictionary”
and, thus, is “patent eligible.” Appeal Br. 7: Reply Br. 3.
We are not persuaded the claim recites an improvement to computer
functionality. Although Appellant argues the claim is directed to “an
improvement that is achieved by a more sophisticated content filter” (id.),
claim 1 does not expressly recite a content filter. Instead, the claim relates
to generating a disallowed variants dictionary using a misuse table. A table
having rows and fields storing information, as claimed here, is not a
computer-specific feature, and, as such, improvements to a disallowed
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variants dictionary, based on the information stored in the misuse table or
the use of the misuse table itself, are not computer-specific improvements.
Even assuming the claimed disallowed variants dictionary is novel
and results in the improvement Appellant asserts, i.e., it provides “more
sophisticated, flexible, and nuanced content filtering than found in the prior
art” (Reply Br. 3), that improvement is an improvement to the abstract idea
identified above. Such an improvement to the recited abstract idea does not
confer patent-eligibility. See Customedia Techs., LLC v. Dish Network
Corp., 951 F.3d 1359, 1363–65 (Fed. Cir. 2020) (collecting cases).
Furthermore, the Specification does not provide additional details that
would distinguish the claimed additional limitations from a generic
implementation. See Ans. 4 (citing Spec. ¶ 52 (describing implementing the
claimed invention using a generic computer). There is no indication that the
computers used in the invention are anything other than general purpose
computers. See Spec. ¶¶ 51–53. Thus, rather than improving computer
technology, claim 1 uses a generic computer and server as tools to
implement the improved abstract idea. Using a generic computer or server
as a tool to perform an abstract idea does not integrate the judicial exception
into a practical application or otherwise confer patent-eligibility.
Guidance 55.
Next, Appellant argues the claimed invention provides an
improvement to computer functionality because claim 1 is like the claims in
Finjan7. Appeal Br. 8. Specifically, Appellant argues “[t]he claimed
content filtering system, which employs the novel disallowed-variants

7 Finjan Inc. v. Blue Coat Systems, Inc., 879 F.3d 1299 (Fed. Cir. 2018).
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dictionary, is easily distinguishable from traditional content filtering systems
such as those including only a disallowed-words dictionary.” Id.
We are not persuaded. In Finjan, the court found the claimed
behavior-based virus scan constituted an improvement in computer
functionality over “traditional, ‘code-matching’ virus scans.” Finjan, 879
F.3d at 1304. The court determined that the Finjan claimed method
employed a new kind of file that allowed access to be tailored to different
users, and allowed the system to accumulate and use newly available,
behavior-based information regarding potential threats. Id. at 1305. The
court ultimately held the Finjan claims were “directed to a non-abstract
improvement in computer functionality, rather than the abstract idea of
computer security,” and “recite[d] specific steps––generating a security
profile that identifies suspicious code and linking it to a downloadable––that
accomplish the desired result.” Id.
Unlike the claims in Finjan, Appellant’s claim 1 does not claim an
improvement over traditional functionality of computer technology. Rather,
Appellant’s claimed generating of a disallowed variants dictionary is merely
directed to collecting and manipulating data and, thus, is an improvement in
the claimed abstract idea. With regard to the technology involved in Finjan,
Appellant’s claim 1 further fails to employ a newly generated file containing
a security profile in a downloadable. Nor does the claim use a new file to
enable a computer security system to improve on or add to computer
functionality by reciting specific steps accomplishing the desired improved
security results. We are, therefore, not persuaded that claim 1 is sufficiently
analogous to the claims in Finjan. Accordingly, we are not persuaded that
claim 1 is “directed to an improvement in computer functionality,” as argued
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by Appellant. Appeal Br. 7. Considering the claim as a whole, Appellant’s
invention lacks a technical solution to a technical problem.
Appellant further argues that claim 1 is similar to the claims at issue
in McRO8 in that “the claimed automation recited in the Pending Claims
goes beyond merely organizing existing information into a new form, or
carrying out a fundamental economic practice.” Appeal Br. 9 (citing
McRO).
This argument is unpersuasive. In McRO, the court reviewed claims
which use “a combined order of specific rules that renders information into a
specific format that is then used and applied to create desired results:
a sequence of synchronized, animated characters.” McRO, 837 F.3d at 1315.
The court found that the claims did not “simply use a computer as a tool to
automate conventional activity,” but instead used the computer to “perform a
distinct process” that is carried out in a different way than the prior non-
computer method to improve the technology of (3-D animation techniques).
See McRO, 837 F.3d at 1314–16.
In contrast with McRO, Appellant does not identify any specific rules
in the claim that are used to solve a technological problem, let alone identify
specific rules that act in the same way as the rules enabling the computer in
McRO to generate computer animated characters. Rather, Appellant’s claim
1 merely recites generating a disallowed variants dictionary using a misuse
table and checking received words against the dictionary for profane or
objectionable content. Appellant also fails to identify any specific rules
related to generating the claimed disallowed variants dictionary using a

8 Citing McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1313
(Fed. Cir. 2016).
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misuse table. We, therefore, find insufficient basis on the record before us
to support Appellant’s argument that claim 1 is similar to the claim in
McRO, where computers were unable to make certain subjective
determinations, i.e., regarding morph weight and phoneme timings, which
could only be made prior to the McRO invention by human animators. As
such, we are not persuaded by Appellant’s argument that the claim improves
a computer technology or other technology, and we do not consider
exemplary claim 1 to recite a practical application of the abstract concept.
Appellant further argues “the rejection is incomplete in that it does not
address all other elements of the pending claims that are additional to the
supposed abstract ideas recited in the Pending Claims” such as “the claimed
feature of [(b)] receiving, during runtime, a plurality of messages from users
by a server.” Appeal Br. 12. Other than the generic computer and server,
which we address above, even if we were to consider the remainder of this
limitation as additional to the claimed abstract idea, we would determine that
receiving a plurality of messages is insignificant extra-solution activity to
the judicial exception. The focus of the invention is “generat[ing] and
provid[ing] a disallowed variants dictionary.” Spec. ¶ 6. Merely gathering
data (e.g., by receiving a plurality of messages from users) for analysis
typically is insignificant extra-solution activity. Guidance 55, n.31 (citations
omitted).
Additionally, none of the remaining indicia of integration identified
by the January 2019 Guidance are present in the claim. Guidance 55; see
MPEP § 2106.05(a)–(c), (e)–(h). For example, the claims do not recite a
particular machine and, instead, generically recites “one or more computer
processors.” Nor does the claim recite the “[t]ransformation and reduction
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of an article ‘to a different state or thing.’” Bilski, 561 U.S. 593, 604 (2010);
MPEP § 2106.05(c). The claimed additional elements do not transform an
article, i.e., some type of tangible or physical object, but instead transform
an intangible concept, i.e., information, from one form to another. That is,
the claim simply collects and manipulates data, thereby “detecting
profane/objectionable content.” Appeal Br. 14; see MPEP § 2106.05(c); see
also Gottschalk v. Benson, 409 U.S. 63, 71–72 (1972) (holding that a
computer based algorithm that merely transforms data from one form to
another is not patent-eligible). As such, claim 1 has no other meaningful
limitations (see MPEP § 2106.05(e)), and merely recites instructions to
execute an abstract idea on generic computer hardware (see MPEP
§ 2106.05(f)).
Moreover, we are not persuaded by Appellant’s argument that claim 1
does not “preempt the mere idea of content filtering” because it recites “the
noted specific implementation of content filtering.” Appeal Br. 11. “While
preemption may signal patent ineligible subject matter, the absence of
complete preemption does not demonstrate patent eligibility.” Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
“[Q]uestions on preemption are inherent in and resolved by the § 101
analysis,” which has been applied here. Id.
In summary, the claimed additional elements are not applied in any
meaningful way beyond generally linking the use of the judicial exception to
a particular technological environment, i.e., a generic computer, such that
the claim as a whole is more than a drafting effort designed to monopolize
the exception. We, therefore, determine claim 1 is not directed to a specific
asserted improvement in computer-related technology or otherwise
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integrated into a practical application and thus is directed to a judicial
exception.
VII. Step 2B in the Guidance (Alice/Mayo, Step 2) (Inventive
Concept)
Next, we determine whether claim 1 includes additional elements that
provide significantly more than the recited judicial exception, thereby
providing an inventive concept. Alice, 573 U.S. at 221 (quoting Mayo, 566
U.S. at 72–73). To determine whether the claim provides an inventive
concept, the additional elements are considered—individually and in
combination—to determine whether they (1) add a specific limitation
beyond the judicial exception that is not “well-understood, routine,
conventional” in the field or (2) simply append well-understood, routine,
conventional activities previously known to the industry, specified at a high
level of generality, to the judicial exception. Guidance 56.
The Examiner finds that “the additional elements of ‘one or more
microprocessors’ and ‘one or more servers’” are “[g]eneric computer
components recited as performing generic computer functions that are well-
understood, routine and conventional activities [that] amount to no more
than implementing the abstract idea with a computerized system.” Final
Act. 8; see Ans. 3 (citing Spec. ¶ 52).
Appellant argues (5) the Examiner fails to provide evidence (as
required by Berkheimer9) in the step 2B analysis to support the assertion that
the additional elements are well-understood, routine, and conventional.
Appeal Br. 12.

9 Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018)
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Appellant’s argument is unpersuasive. In Berkheimer, the Federal
Circuit held that “[w]hether something [(i.e., additional elements beyond the
abstract idea)] is well-understood, routine, and conventional to a skilled
artisan at the time of the patent is a factual determination.” See Berkheimer,
881 F.3d at 1369. In response to Berkheimer, the USPTO issued a new
examination procedure (“the Berkheimer Memorandum”10), requiring the
Examiner to support expressly a finding that limitations beyond the abstract
idea are well-understood, routine, and conventional.
The Examiner, although not expressly mentioning Berkheimer, does
comply with the Berkheimer Memorandum’s requirement to support
expressly a finding that an additional limitation beyond the abstract idea is
well-understood, routine, and conventional. See also Berkheimer, 881 F.3d
at 1369. The Examiner identifies claim 1’s additional elements and finds,
“that the [S]pecification of [the] present invention also recite[s] the
additional elements are generic computer components.” Ans. 3 (citing Spec.
¶ 52 (“The present invention may be conveniently implemented using one
or more conventional general purpose or specialized digital computer,
computing device, machine, or microprocessor, including one or more
processors, memory and/or computer readable storage media programmed
according to the teachings of the present disclosure.”)). Thus, the Examiner
cites to Appellant’s Specification to find certain additional limitations are
well-understood, routine, and conventional as set forth in the Berkheimer
Memorandum. Berkheimer Memorandum 4 (III. A. 1 “[a] citation to an

10 April 19, 2018 Memorandum to the Patent Examining Corps, entitled
“Changes in Examination Procedure Pertaining to Subject Matter Eligibility,
Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.).”
Appeal 2019-002033
Application 14/243,591

20
express statement in the specification.”). We agree with the Examiner’s
finding because the Specification indicates the claimed invention may be
performed by conventional hardware. See Spec. ¶ 52. Also, the
Specification does not describe the particulars of the additional elements,
thereby indicating these elements are sufficiently well-understood in the art.
Appellant, in turn, fails to specifically address the Examiner’s reliance on
the Specification or to persuasively demonstrate which limitations are not
well-understood, routine, or conventional, whether under Berkheimer or any
other authority. See Appeal Br. 12; see also Reply Br. 2–5.
Next, considering the additional elements in combination, Appellant
fails to provide specific arguments indicating which limitations, in
combination, amount to more than the abstract idea. Analyzing the
additional elements as an ordered combination, we agree with the Examiner
that the additional elements “as an ordered combination do not amount to
significantly more than the abstract idea.” Final Act. 8.
We, therefore, conclude that claim 1 does not provide an inventive
concept because the additional elements recited in the claim, considered
individually and as an ordered combination, do not provide significantly
more than the recited judicial exception. Accordingly, we are not persuaded
claim 1 recites patent-eligible subject matter. Further, Appellant has not
proffered sufficient evidence or argument to persuade us that any of the
limitations in the remaining claims provide a meaningful limitation that
transform the claims into a patent-eligible application. Therefore, we sustain
the rejection of claims 1–20 under U.S.C. § 101 as being directed to patent-
ineligible subject matter.
Appeal 2019-002033
Application 14/243,591

21
CONCLUSION
We affirm the Examiner’s patent eligibility rejections of claims 1–20
under 35 U.S.C. § 101.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–20 101 Eligibility 1–20

TIME PERIOD FOR 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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED