Samsung Electronics Co., Ltd.

Patent Trials and Appeals Board

Jul 9, 2020

2019002788 (P.T.A.B. Jul. 9, 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.
14/827,150 08/14/2015 Eran Pisek 2014.12.007.SR0 6220
106809 7590 07/09/2020
Docket Clerk - SAMS
P.O. Drawer 800889
Dallas, TX 75380
EXAMINER
VALLECILLO, KYLE
ART UNIT PAPER NUMBER
2112
NOTIFICATION DATE DELIVERY MODE
07/09/2020 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):
munckwilson@gmail.com
patent.srad@samsung.com
patents@munckwilson.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ERAN PISEK and
SHADI ABU-SURRA

Appeal 2019-002788
Application 14/827,150
Technology Center 2100

Before ALLEN R. MACDONALD, JEAN R. HOMERE, and
CAROLYN D. THOMAS, Administrative Patent Judges.
HOMERE, Administrative Patent Judge.
DECISION ON APPEAL
I. STATEMENT OF THE CASE1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–22. Claims App. We have
jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.

1 We refer to the Specification, filed Aug. 14, 2015 (“Spec.”); Final Office
Action, mailed June 2, 2017 (“Final Act.”); Appeal Brief, filed Dec. 20,
2017 (“Appeal Br.”); Examiner’s Answer, mailed May 22, 2018 (“Ans.”),
and Reply Brief, filed July 20, 2018 (“Reply Br.”).
2 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
Samsung Electronics Co. Appeal Br. 2.
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II. CLAIMED SUBJECT MATTER
According to Appellant, the claimed subject matter relates to an error
correction method and system for encoding and decoding a message
transmitted over a noisy transmission channel. Spec. ¶ 1. Figure 5,
reproduced below, is useful for understanding the claimed subject matter:

Figure 5 depicts an illustration of a Parallel Concatenated Trellis-based
Quasi-Cyclic Low Density Parity Check Recursive Systematic
Convolutional (QC-RSC) encoder. Spec. ¶ 19.

As shown in Figure 5 above, upon receiving input Z systematic bits
(505) in a message, QC-RSC encoder (500) generates low-density parity
check (LDPC) base code (510–530), which a processing circuit transforms
to generate parallel concatenated Trellis-based Quasi-Cyclic LPDC (TQC-
LDPC) convolutional code upon which the processing circuit performs a
parity check, and concatenates the parity bits thereof. Id. ¶¶ 79–81.
Claims 1, 10, and 19 are independent. Claim 1, reproduced below, is
illustrative of the claimed subject matter:

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1. A method of encoding, the method comprising:
receiving input systematic data including an input group
(xz(n)) of Z systematic bits;
generating a Low Density Parity Check (LDPC) base
code using the input group (xz(n)), wherein the LDPC base
code is characterized by a row weight (Wr), a column weight
(W c ), and a first level lifting factor (Z);
transforming the LDPC base code into a Trellis-based
Quasi-Cyclic LDPC (TQC-LDPC) convolutional code;
generating, by Trellis-based Quasi-Cyclic LDPC
Recursive Systematic Convolutional (QC-RSC) encoder
processing circuitry using the TQC-LDPC convolutional code,
a Parallel Concatenated Trellis-based Quasi-Cyclic LDPC
(PCLDPC) convolutional code in a form of an H-matrix
including a systematic submatrix (Hsys) of the input systematic
data and a parity check submatrix (Hpar) of parity check
bits, wherein the Hpar includes a column of Z-group parity bits;
and
concatenating the Hpar with each column of systematic
bits, wherein the Hpar includes J parity bits per systematic bit.

III. REJECTION
The Examiner rejects claims 1–22 are rejected under 35 U.S.C. § 101
as being directed to patent ineligible subject matter. Final Act. 5–10.3
IV. ANALYSIS
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to

3 Although the Examiner’s statement of the rejection lists only independent
claims 1, 10, and 19, a discussion of dependent claims 2–9, 11–18, and 20–
22 appears in the body of the rejection. Therefore, we treat claims 1–22 as
being rejected under 101.
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include implicit exceptions: “[l]aws of nature, natural phenomena, and
abstract ideas are not patentable.” Alice Corp. v. CLS Bank Int’l, 573 U.S.
208, 216 (2014) (quoting Assoc. for Molecular Pathology v. Myriad
Genetics, Inc., 569 U.S. 576, 589 (2013)).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-step framework, described in Mayo and Alice.
Alice, 573 U.S. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See Alice, 573
U.S. at 219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (Diehr, 450 U.S. at 182 n.7 (quoting Corning v.
Burden, 56 U.S. 252, 267–68 (1854))); and manufacturing flour (Benson,
409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
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In Diehr, the claim at issue recited a mathematical formula, but the
Court held that “[a] claim drawn to subject matter otherwise statutory does
not become nonstatutory simply because it uses a mathematical formula.”
Diehr, 450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as
nothing more than a process for molding rubber products and not as an
attempt to patent a mathematical formula.”). Having said that, the Court
also indicated that a claim “seeking patent protection for that formula in the
abstract . . . is not accorded the protection of our patent laws, and this
principle cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment.” Id. (citing Benson and
Flook); id. at 187 (“It is now commonplace that an application of a law of
nature or mathematical formula to a known structure or process may well be
deserving of patent protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “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. “A claim that recites an
abstract idea must include ‘additional features’ to ensure ‘that the [claim] is
more than a drafting effort designed to monopolize the [abstract idea].’” Id.
(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–
57 (Jan. 7, 2019) (“2019 PEG”). Recently, the Office published an update to
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that guidance. October 2019 Patent Eligibility Guidance Update, 84 Fed.
Reg. 55,942 (hereinafter “PEG Update”). Under the 2019 PEG and PEG
Update (collectively referred to as “2019 Updated PEG”), 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); and

(2) additional elements that integrate the judicial exception
into a practical application (see MPEP § 2106.05(a)–(c),
(e)–(h)).4

See 2019 Updated PEG, 52, and 55–56. Only if a claim: (1) recites a
judicial exception; and (2) does not integrate that exception into a practical
application, does the office 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 2019 Updated PEG 56.
We analyze the patent-eligibility rejection with the principles
identified above in mind.
Examiner’s Findings and Conclusions
In the first part of the Alice inquiry, the Examiner determines that
claims 1–22 are directed to the process of encoding/decoding, which has
been recognized as an abstract concept long utilized to transmit information.

4 All references to the MPEP are to 9th Ed., Rev. 08.2017 (Jan. 2018).
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Final Act. 6 (citing Recognicorp, LLC v. Nintendo Co. 2016-1499 (pp. 7)
(Fed. Cir. 2017) citing Cf. Intellectual Ventures L.L.C v. Capital One Fin.
Corp., 850 F.3d 1332:, 1340-41 (Fed. Cir. 2017) (organizing, displaying,
and manipulating data encoded for human and machine readability is
directed to an abstract concept). According to the Examiner, similar to
Recognicorp, “adding one abstract idea (math) to another abstract idea
(encoding and decoding) does not render the claim non-abstract.” Id. In
particular, the Examiner avers that independent claims 1, 10, and 19 merely
describe an encoding/decoding process onto which an algorithm is applied to
a process to transform data into a new form thereby customizing information
and presenting it to users based on certain characteristics. Id. Therefore, the
Examiner finds that because the cited claims merely organize information
through mathematical correlations, they are directed to an abstract idea
consistent with the case law. Id.
In the second part of the Alice inquiry, the Examiner determines the
claims do not recite additional elements sufficient to amount to significantly
more than the abstract idea. Id. According to the Examiner, the claimed
subject matter fails to show an inventive concept because it merely recites a
generic encoder processing circuitry performing its basic functions for
converting an input code into an equivalent output code according to
conventional functionality to perform the abstract idea. Id. at 6–7.
Appellant’s Arguments and Contentions
In the first part of the Alice inquiry, Appellant argues that the
Examiner’s prima facie case of patent ineligibility is in error because the
Examiner oversimplified the claimed subject matter, and prematurely relied
upon Recognicorp, which merely requires displaying an image, selecting a
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feature from the image and reproducing the image. Appeal. Br. 17–18. In
particular, Appellant alleges the following:
[T]he instant claims require that an encoder ( or decoder),
which is disclosed as a processor based device, be able to
generate a LDPC base code using a specified input and
specified criteria, transform the LDPC code into a TQC-LDPC
convolutional code, and generate a PC-LDPC convolutional
code. The generation of the different codes goes requires
improvements in programming and function of the encoder and
decoder. Such process, as shown throughout the disclosure, is
not merely “performing a process for encoding” nor is it the
mere use of known coding and decoding process; but rather
involves distinct improvements to encoding technology and,
more specifically, improvements to an encoder and decoder to
be able to generate and transform the claimed codes. In fact,
the specification is replete with illustrations how the encoder
and decoder are configured to specifically construct, such as via
the use of multiple different formulas, the claimed codes.
Id. at 18.
According to Appellant, the claimed recitation of an encoder and
decoder to generate code, transform the generated code and generate
additional code is far more than the mere manipulation of data, which can be
performed by a human using a mathematical equation. Id. at 19. Appellant
further argues “a human does not receive Z systematic bits nor does a human
perform a parity check mentally.” Id. Instead, according to Appellant,
because the claims are specifically tied to an improved encoder/decoder
representing machines for performing the claimed method, the ordinarily-
skilled artisan would recognize that the generated convolution codes are
used on data streams, and are thereby unique to or necessarily rooted in
technology. Id. at 20–21.
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In the second part of the Alice inquiry, Appellant argues that the
claims, taken as a whole and in an ordered combination amount to
significantly more than the purported abstract idea. Id. at 21. According to
Appellant, the Specification describes more than mere encoders and
decoders, but rather discloses elements such as QC-RSC encoder, TQC-
LDPC Maximum A posteriori Probability (MAP) decoder that illustrate
improvements to an encoder/decoder. Id. at 23–24. In particular, Appellant
asserts:
As in Enfish, the instant claims, when viewed as a whole
in light of the Specification, represent an improvement to
computer functionality versus being directed to an abstract idea.
For example, the steps of “generating a Low Density Parity
Check (LDPC) base code using the input group (xz(n)),
wherein the LDPC base code is characterized by a row weight
(Wr), a column weight (We), and a first level lifting factor (Z);
transforming the LDPC base code into a Trellis-based Quasi-
Cyclic LDPC (TQC-LDPC) convolutional code; generating, by
Trellis-based Quasi-Cyclic LDPC Recursive Systematic
Convolutional ( QC-RSC) encoder processing circuitry using
the TQC-LDPC convolutional code, a Parallel Concatenated
Trellis-based Quasi-Cyclic LDPC (PC-LDPC) convolutional
code in a form of an H-matrix including a systematic submatrix
(Hsys) of the input systematic data and a parity check
submatrix (Hpar) of parity check bits, wherein the Hpar
includes a column of Z-group parity bits; and concatenating the
Hpar with each column of systematic bits, wherein the Hpar
includes J parity bits per systematic bit” as recited in Claim 1,
illustrates significantly more than a mere “transmitting a
signal over a wireless network with processing circuitry to
simply perform the generic computer functions of carrying
out the instructions of a computer program.”
Id. at 26–27.
According to Appellant, these recited elements of claim 1 are not
simply conventional operations of organizing data using data recognition
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and manipulation, but they are instead directed to new methods for
encoding/decoding codes thereby employing a modern technology solution
that is necessarily rooted in computing devices. Id. at 27 (citing DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed.Cir. 2014). Id. at
27.

Our Review
Applying the guidance set forth in the 2019 Updated PEG and
controlling case law, we determine whether the Examiner has erred in
rejecting the claims as directed to patent ineligible subject matter.
In revised step 1 of 2019 PEG, we consider whether the claimed
subject matter falls within the four statutory categories of patent-eligible
subject matter identified by 35 U.S.C. § 101: process, machine, manufacture,
or composition of matter. Because independent claim 1 recites a “method”
including a number of steps, claim 1 falls within the “process” category of
patent-eligible subject matter. Because independent claim 10 recites an
“encoder” including a processing circuitry for performing various functions,
claim 10 falls within the “machine” category of patent-eligible subject
matter. Because independent claim 19 recites a “decoder” including a
processing circuitry for performing various functions, claim 19 falls within
the “machine” category of patent-eligible subject matter.
In prong 1 of revised step 2A of the 2019 PEG, we determine whether
any judicial exception to patent eligibility is recited in the claims. The
guidance identifies three judicially-excepted groupings of abstract ideas:
(1) mathematical concepts; (2) certain methods of organizing human
activity, such as fundamental economic practices; and (3) mental processes.
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As noted by Appellant, independent claims 1, 10, and 19 recite, inter alia, a
method, an encoder, and a decoder including processing circuitry to generate
LDPC based code; to transform the generated base LDPC base code; to
generate a PC-LDPC convolutional code; and to “concatenate an Hpar with a
column of systematic bits.” Appeal Br. 18, Reply Br. 21. In sum, the cited
claims steps involve an encoder/decoder including a processor, which:
(1) receive Z systematic bits;
(2) generate LDPC base code using the received Z bits;
(3) transform the LDPC base code into TQC-LDPC convolutional
code;
(4) generate a parity check submatrix (Hpar), and
(5) concatenate the (Hpar) with a column of systematic bits.
At an initial matter, we note that independent claims 1, 10, and 19
merely recite an encoding/decoding process without detailing any particular
hardware circuitry beyond a processor circuitry performing mathematical
operations to execute steps 1 through 5 above. Such a manipulation of the
input data relates to the pre-Internet activity of performing mathematical
computations to convert input data into equivalent output data as well as to
correct possible errors therein. As drafted, these claim limitations, under
their broadest reasonable interpretation, recite a mental process for
organizing information through mathematical correlations that can be
performed in the human mind or using a pen and paper. See,
e.g., CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372–73
(Fed. Cir. 2011) (determining that a claim whose “steps can be performed in
the human mind, or by a human using a pen and paper” is directed to an
unpatentable mental process). We thus agree with the Examiner that the
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claimed subject matter is merely relates to the basic concept of
encoding/decoding using mathematics implemented by a mental process to
convert an input code into an equivalent output code, and subsequently
performing error correction thereon. Ans. 9–10 (citing Gottschalk, 409 US
at 67), see id. quoting Cal. Inst, 59 F. Supp.3d at 993 (“concepts of encoding
and decoding are longstanding steps in the process of error correction…are
directed to abstract ideas”), id. (citing Int. Ventures v. Cap One Bank).
Further, we are not persuaded by Appellant’s argument that the
Examiner prematurely or improperly relied upon Recognicorp (finding that
the notion of encoding and decoding pertains to an abstract idea, and is not
therefore patent eligible). As correctly noted by the Examiner, the Federal
Circuit has denied the petition for rehearing of the Recognicorp decision,
and the Supreme Court has likewise denied the petition Writ for Certiorari to
review the decision. Ans. 11. Consequently, we find the record before us
adequately supports the Examiner’s finding that the claims recite the mental
process of encoding/decoding received data. Ans. 10. Accordingly, we find
that independent claims 1, 10, and 19 recite the judicial exception of a
mental process.
Having determined that the claims recite a judicial exception, our
analysis under the 2019 PEG turns now to determining whether there are
“additional elements that integrate the judicial exception into a practical
application.” See MPEP § 2106.05(a)–(c), (e)–(h).5 “Integration into a

5 Specifically, we determine whether the claims recite:
(i) an improvement to the functioning of a computer [(or a mobile
device)];
(ii) an improvement to another technology or technical field;
(iii) an application of the abstract idea with, or by use of, a particular
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practical application” 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. 84 Fed. Reg. at 53.
Appellant’s claims 1, 10, and 19 recite computer-related limitations
(e.g., encoder/decoder processing circuitry). Appellant argues that the
claimed generation and transformation of different codes pertain to
improvements to encoder and decoder devices. Appeal Br. 16–18.
Therefore, Appellant argues that “the claims are directed to an improvement
to computer functionality.” Id. at 20.
We do not find the recited computer-related limitations are sufficient
to integrate the judicial exception into a practical application. Although the
claim nominally requires these steps to be performed by an encoder/decoder
processing circuitry, this computer implementation of a mental process is
insufficient to take the invention out of the realm of abstract ideas. 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

machine;
(iv) a transformation or reduction of a particular article to a different
state or thing; or
(v) other meaningful limitations beyond generally linking the use of
the abstract idea to a particular technological environment.
Id.
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confer eligibility.). Further, the Specification does not provide additional
details about the encoder/decoder processing circuitry that would distinguish
them from any generic processing devices to convert input data from one
form to another, and to perform error correction thereon. Although we do
not dispute that the processing circuitry includes specific instructions for
performing the recited functions, Appellant has not explained persuasively
how the derived content transforms the received data into a new state or
thing. See MPEP § 2106.05(a). Rather, the claims merely adapt the mental
process of converting an input code into an equivalent output code, and
subsequently performing error correction thereon. See Credit Acceptance
Corp. v. Westlake Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017) (“Our prior
cases have made clear that mere automation of manual processes using
generic computers does not constitute a patentable improvement in computer
technology.”); see also Bancorp Services, L.L.C. v. Sun Life Assurance Co.
of Canada (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012) (A computer
“employed only for its most basic function . . . does not impose meaningful
limits on the scope of those claims.”).
Further, Appellant’s identified improvements are to the abstract idea
itself, not improvements to a technology or computer functionality. That is,
the cited claim limitations do not improve the functionality of the processing
devices by performing operations to convert an input code into an equivalent
output code, and subsequently performing error correction thereon, nor do
they achieve an improved technological result in conventional industry
practice. See McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299,
1316 (Fed. Cir. 2016). Thus, we agree with the Examiner that the claims do
not recite an additional element reflecting an improvement in the functioning
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of a computer, or an improvement to other technology or technical field.
Ans. 12–13 (citing Diehr, 450 U.S. 175, DDR Holdings, 773 F.3d at 1258–
59, Intellectual Ventures, at 1371). As correctly noted by the Examiner, the
claims do not recite an additional element that implements the abstract idea
with a particular machine or manufacture that is integral to the claim. Id.
Instead, the claim limitations only recite result-based functional steps that do
not describe how to achieve the encoding/decoding in a non-abstract way.
Id. (citing Recognicorp, 2016–1499), see CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011). Prior to the Internet,
such activities were widely practiced, and became computerized to facilitate
conversion of input code into an equivalent output code, followed by an
error correction operation on the output code. See OIP Technologies, Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1364 (Fed. Cir. 2015).
Because the claimed subject matter outlined above does not (1)
provide any technical solution to a technical problem as required by DDR
Holdings;6 (2) provide any particular practical application as required by
BASCOM; or (3) entail an unconventional technological solution to a
technological problem as required by Amdocs,7 we agree with the

6 The Federal Circuit found DDR’s claims are patent-eligible under
35 U.S.C. § 101 because DDR’s claims: (1) do not merely recite “the
performance of some business practice known from the pre-Internet world”
previously disclosed in Bilski and Alice; but instead (2) provide a technical
solution to a technical problem unique to the Internet, i.e., a “solution . . .
necessarily rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer networks.” DDR Holdings, 773
F.3d at 1257.
7 See Amdocs Ltd. v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016).
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Examiner’s determination that Appellant’s claims 1, 10, and 19 are directed
to an abstract idea that is not integrated into a practical application.
Alice/Mayo—Step 2B (Inventive Concept)
Turning to step 2B of the 2019 PEG, we look to whether the claim:
(a) recites a specific limitation or combination of limitations that are not
well-understood, routine, conventional activity in the field; or (b) simply
appends well-understood, routine, conventional activities previously known
to the industry, specified at a high level of generality, to the judicial
exception. 84 Fed. Reg. 56; see Alice, 573 U.S. at 217 (“[W]e consider the
elements of each claim both individually and ‘as an ordered combination’”
to determine whether the claim includes “significantly more” than the
ineligible concept); see also BASCOM, 827 F.3d at 1350 (“[A]n inventive
concept can be found in the non-conventional and non-generic arrangement
of known, conventional pieces.”).
We discern no additional element or combination of elements recited
in Appellant’s independent claims 1, 10, and 19 that contain any “inventive
concept” or add anything “significantly more” to transform the abstract
concept into a patent-eligible application. Alice, 573 U.S. at 221. We are
not persuaded by Appellant’s remarks, noted above, alleging the claims are
directed to a non-routine and unconventional system because it recites new
methods for encoding and decoding. Appellant has failed to establish on this
record how converting input data into equivalent output data followed by an
error correction operation is distinguished from the conventional processor-
implemented encoding/decoding of data. We agree with the Examiner that
using generic processing circuitry is a routine and conventional approach to
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data encoding/decoding. Ans. 13–14 (citing TLI Comm’ns Patent Litig., 823
F.3d 607, 611 (Fed. Cir. 2016).
We further agree with the Examiner that Appellant does not direct our
attention to any portion of the Specification indicating that the claimed
processing circuitry performs anything other than well-understood, routine,
and conventional functions, such as receiving, processing, and displaying
data. Id. at 15–16 (citing Spec. ¶¶ 85, 96). See Elec. Power Group, LLC v.
Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016) (“Nothing in the claims,
understood in light of the [S]pecification, requires anything other than off-
the-shelf, conventional computer, network, and display technology for
gathering, sending, and presenting the desired information.”); see also Alice,
573 U.S. at 224–26 (receiving, storing, sending information over networks
insufficient to add an inventive concept); 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.”). Instead, Appellant’s claimed subject matter simply
uses a generic processing circuitry to perform the abstract idea of converting
input data from one form to another, and performing error correction
thereon. As noted above, the use of a generic computer does not alone
transform an otherwise abstract idea into patent-eligible subject matter. As
our reviewing court has observed, “after Alice, there can remain no doubt:
recitation of generic computer limitations does not make an otherwise
ineligible claim patent-eligible.” DDR, 773 F.3d at 1256 (citing Alice, 573
U.S. at 223).
Because the discussed claim elements only recite generic computer
functions that are well-understood, routine, and conventional, individually
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and in combination, the claim is devoid of an inventive concept. See Alice,
573 U.S. at 217. “[T]he ‘inventive concept’ [under the second part of the
Mayo/Alice test] cannot be the abstract idea itself” and “Berkheimer . . .
leave[s] untouched the numerous cases from [the Federal Circuit] which
have held claims ineligible because the only alleged ‘inventive concept’ is
the abstract idea.” Berkheimer v. HP Inc., 890 F.3d 1369, 1374 (Fed. Cir.
2018) (Moore, J., concurring). “It has been clear since Alice that a claimed
invention’s use of the ineligible concept to which it is directed cannot supply
the inventive concept that renders the invention ‘significantly more’ than
that ineligible concept.” BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1281,
1290 (Fed. Cir. 2018). We, therefore, agree with the Examiner that the
computer functions recited in the claims were, in fact, generic, and are met
by numerous precedent establishing that using a generic computer to
expedite and automate processes traditionally performed manually, or that
are otherwise abstract, is a well-understood, routine, and conventional use of
such computers. Ans. 14–15; see also, e.g., Intellectual Ventures I LLC v.
Symantec Corp., 838 F.3d at 1321 (utilizing an intermediary computer to
forward information); Bancorp Services, L.L.C., 687 F.3d at 1278 (“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.”).
Therefore, we conclude that claim 1’s elements, both individually and
as an ordered combination, do not provide an inventive concept. See 84 Fed.
Reg. 56; see also Berkheimer, 881 F.3d at 1370 (“The limitations amount to
no more than performing the abstract idea of parsing and comparing data
with conventional computer components.”); Bancorp, 687 F.3d at 1278
Appeal 2019-002788
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(“[T]he use of a computer in an otherwise patent-ineligible process for no
more than its most basic function—making calculations or computations—
fails to circumvent the prohibition against patenting abstract ideas and
mental processes.”).
To the extent Appellant argues the claims necessarily contain an
“inventive concept” based on their alleged novelty or non-obviousness over
the cited references, Appellant misapprehends the controlling precedent.
Although the second part in the Alice/Mayo framework is termed a search
for an “inventive concept,” the analysis is not an evaluation of novelty or
non-obviousness, but, rather, a search for “an element or combination of
elements that is ‘sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [ineligible concept] itself.’” Alice,
573 U.S. at 217–218 (quoting Mayo, 566 U.S. 72–73). A novel and
nonobvious claim directed to a purely abstract idea is, nonetheless, patent-
ineligible. See Mayo, 566 U.S. at 90.
In many cases, “relying on a computer to perform routine tasks more
quickly or more accurately is insufficient to render a claim patent eligible.”
OIP Techs., 788 F.3d at 1363 (citing Alice, 573 U.S. at 224) (“[U]se of a
computer to create electronic records, track multiple transactions, and issue
simultaneous instructions” is not an inventive concept.); see also, e.g.,
Intellectual Ventures I LLC v. Capital One Bank, 792 F.3d at 1370
(“[M]erely adding computer functionality to increase the speed or efficiency
of the process does not confer patent eligibility on an otherwise abstract
idea.”). Therefore, the functions recited in independent claims 1, 10, and 19
do not add meaningful limitations beyond generally linking the abstract idea
to the particular technological environment. See Ans. 15–16.
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Because Appellant’s claims 1, 10, and 19 are directed to a patent-
ineligible abstract concept and do not recite something “significantly more”
under the second prong of the Alice analysis, we sustain the Examiner’s
rejection of independent claims 1, 10, and 19 under 35 U.S.C. § 101.
Regarding dependent claims 2–9, 11–18, and 20–22, Appellant argues
that the Examiner has not offered any individual analysis to notify Appellant
as to why the additional limitations in the cited claims do not render these
claims patent eligible. Appeal Br. 10–14, Reply Br. 4–19. This argument is
not persuasive. The Examiner explains that because the additional
limitations recited in the dependent claims further pertain to the processor
circuitry performing mathematical operations to execute steps 1 through 5
discussed above in the rejection of independent claims 1, 10, and 19, they do
not take the claims out of the realm of patent ineligible subject matter. Ans.
17–24. We agree with the Examiner, and thereby adopt the Examiner’s
analysis, which we hereby incorporate by reference. Accordingly, we
sustain the Examiner’s 35 U.S.C. § 101 rejection of dependent claims 2–9,
11–18, and 20–22.
VI. CONCLUSION
We affirm the Examiner’s patent eligibility rejection of claims 1–22
under 35 U.S.C. § 101.
DECISION SUMMARY
In summary:
Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–22 101 Eligibility 1–22

Appeal 2019-002788
Application 14/827,150
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED