SAS Institute Inc.

Patent Trials and Appeals Board

Mar 19, 2020

15167238 - (D) (P.T.A.B. Mar. 19, 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.
15/167,238 05/27/2016 Michael James Leonard 094926-1010331
(025310US)
1051
110577 7590 03/19/2020
Kilpatrick Townsend & Stockton LLP
SAS Institute Inc.
Mailstop: IP Docketing - 22
1100 Peachtree Street, Suite 2800
Atlanta, GA 30309
EXAMINER
PELLETT, DANIEL T
ART UNIT PAPER NUMBER
2121
NOTIFICATION DATE DELIVERY MODE
03/19/2020 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):
KTSDocketing2@kilpatrick.foundationip.com
eofficeaction@appcoll.com
ipefiling@kilpatricktownsend.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL JAMES LEONARD and DAVID BRUCE
ELSHEIMER
Appeal 2018-006191
Application 15/167,238
Technology Center 2100
Before ROBERT E. NAPPI, LARRY J. HUME, and
STEPHEN E. BELISLE, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant,1 SAS Institute Inc., appeals
from the Examiner’s decision rejecting claims 1–5 and 7–31 which are all
claims pending in the application. Appellant has canceled claim 6. Non-
Final Act. 2. 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 SAS
Institute Inc. Appeal Br. 3.
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STATEMENT OF THE CASE2
The claims are directed to systems and methods for time series
analysis techniques utilizing count data sets. See Spec. (Title). In particular,
Appellant’s disclosed embodiments and claimed invention relate to
“systems, methods, and computer-program products . . . for adjusting a set of
predicted future data points for a time series data set.” Spec. ¶ 5.
Claim 23, reproduced below, is representative of the subject matter on
appeal:
Exemplary Claim
23. A computer-implemented method comprising:
instantiating, by a data processing apparatus, an event-
stream processing engine, wherein the event-stream processing
engine includes layers of windows configured to perform
operations on an input event-stream to transform the input
event-stream into an output event-stream that is different from
the input event-stream, wherein a relationship among the layers
of windows is defined by a directed graph, and wherein the
layers of windows include:
a source window in a first layer among the layers
of windows, wherein the source window is configured to:
receive the input event-stream, perform a first operation
on the input event-stream to transform the input event-
stream into a modified version of the input event-stream,
and transmit the modified version of the input event-
stream; and

2 Our decision relies upon Appellant’s Appeal Brief (“Appeal Br.,” filed
Feb. 7, 2018); Reply Brief (“Reply Br.,” filed May 24, 2018); Examiner’s
Answer (“Ans.,” mailed Mar. 29, 2018); Non-Final Office Action (“Non-
Final Act.,” mailed Sept. 11, 2017); and the original Specification (“Spec.,”
filed May 27, 2016).
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a derived window in a second layer among the
layers of windows, wherein the derived window is
configured to: receive the modified version of the input
event-stream from the source window in the first layer,
perform a second operation on the modified version of
the input event-stream to transform the modified version
of the input event-stream into a further modified version
of the input event-stream, and transmit the further
modified version of the input event-stream;
receiving, by the data processing apparatus, the input
event-stream using the event-stream processing engine, wherein
the input event-stream includes event block objects that are
associated with a time series data set;
transforming, by the data processing apparatus, the input
event-stream into the output event-stream using the event-
stream processing engine, wherein the input event-stream is
transformed into the output event-stream by applying the layers
of windows to the input event-stream, wherein the layers of
windows are configured to perform operations including:
generating a set of counts for the time series data
set, wherein a count corresponds to a number of instances
of a particular discrete value in the time series data set;
determining a discrete probability distribution for
the set of counts;
generating a set of predicted future data points,
wherein the set of predicted future data points is
generated using a statistical model; and
generating an adjusted set of predicted future data
points, wherein generating the adjusted set of predicted
future data points includes adjusting the set of predicted
future data points using a set of parameters
corresponding to the discrete probability distribution, and
wherein the adjusted set of predicted future data points is
more accurate than the set of predicted future data points;
and
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transmitting the output event-stream, wherein the output
event-stream includes the adjusted set of predicted future data
points.
Rejection on Appeal
Claims 1–5 and 7–31 stand rejected under 35 U.S.C. § 101 as being
directed to a judicial exception (i.e., a law of nature, a natural phenomenon,
or abstract idea) without significantly more. Non-Final Act. 2.
CLAIM GROUPING
Based on Appellant’s arguments (Appeal Br. 13–34) and our
discretion under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of the
patent-ineligible subject matter rejection of claims 1–5 and 7–31 on the basis
of representative claim 23.3
ISSUE
Under the USPTO’s Revised Guidance, informed by our governing
case law concerning 35 U.S.C. § 101, is claim 23 patent-ineligible under
§ 101?

3 “Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately.” 37 C.F.R. § 41.37(c)(1)(iv).
In addition, when Appellant does not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
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PRINCIPLES OF LAW
A. 35 U.S.C. § 101
An invention is patent-eligible if it is a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.4
However, the 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. Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 70 (2012) (brackets in original) (citing Diamond v. Diehr,
450 U.S. 175, 185 (1981)).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014)
(citing Mayo, 566 U.S. at 75–77). 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);

4 This threshold analysis of whether a claim is directed to one of the four
statutory categories of invention, i.e., a process, machine, manufacture, or
composition of matter, is referred to as “Step 1” in the USPTO’s patent-
eligibility analysis under § 101. MPEP § 2106.
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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” (Diehr, 450 U.S. at 191); “tanning,
dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores”
(id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267–68 (1853)));
and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v.
Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held “[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 Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, and this principle cannot be circumvented by attempting
to limit the use of the formula to a particular technological environment.”
Id. (citation omitted) (citing Benson and Flook); see, e.g., id. at 187 (“It is
now commonplace that an application of a law of nature or mathematical
formula to a known structure or process may well be deserving of patent
protection.”).
Abstract ideas may include, but are not limited to, fundamental
economic practices, methods of organizing human activities, and
mathematical formulas or relationships. Alice, 573 U.S. at 217–21. Under
this guidance, we must therefore ensure at step one that we articulate what
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the claims are directed to with enough specificity to ensure the step one
inquiry is meaningful. Id. at 217 (“[W]e tread carefully in construing this
exclusionary principle lest it swallow all of patent law.”).
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 (citation omitted). “A claim
that recites an abstract idea must include ‘additional features’ to ensure ‘that
the [claim] is more than a drafting effort designed to monopolize the
[abstract idea].’” Id. (alterations in original) (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
B. USPTO Revised Guidance
The PTO published revised guidance in the Federal Register
concerning the application of § 101. See 2019 Revised Patent Subject
Matter Eligibility Guidance, 84 Fed. Reg. 50 (January 7, 2019) (hereinafter
“Revised Guidance”) (https://www.govinfo.gov/content/pkg/FR-2019-01-
07/pdf/2018-28282.pdf).
Under the Revised 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
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of organizing human activity such as a fundamental economic
practice, or mental processes);5 and
(2) additional elements that integrate the judicial
exception into a practical application (see Manual for Patent
Examining Procedure (“MPEP”) §§ 2106.05(a)–(c), (e)–(h)).6
See Revised Guidance 52–53.
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.7
See Revised Guidance 56.
Step 2A(i) – Abstract Idea
Informed by our judicial precedent, the Revised Guidance extracts and
synthesizes key concepts identified by the courts as abstract ideas to explain
that the abstract idea exception includes the following groupings of subject
matter, when recited as such in a claim limitation:
(a) Mathematical concepts—mathematical relationships,
mathematical formulas or equations, mathematical calculations;

5 Referred to as “Revised Step 2A, Prong 1” in the Revised Guidance
(hereinafter “Step 2A(i)”).
6 Referred to as “Revised Step 2A, Prong 2” in the Revised Guidance
(hereinafter “Step 2A(ii)”).
7 Items (3) and (4) continue to be collectively referred to as “Step 2B” of the
Supreme Court’s two-step framework, described in Mayo and Alice.
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(b) 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); and
(c) Mental processes—concepts performed in the human
mind (including an observation, evaluation, judgment, opinion).
Revised Guidance 52 (footnotes omitted).
Under the Revised Guidance, if the claim does not recite a judicial
exception (a law of nature, natural phenomenon, or subject matter within the
enumerated groupings of abstract ideas above), then the claim is patent-
eligible at Step 2A(i). This determination concludes the eligibility analysis,
except in situations identified in the Revised Guidance.8
However, if the claim recites a judicial exception (i.e., an abstract idea
enumerated above, a law of nature, or a natural phenomenon), the claim
requires further analysis for a practical application of the judicial exception
in Step 2A(ii).
Step 2A(ii) – Practical Application
If a claim recites a judicial exception in Step 2A(i), we determine
whether the recited judicial exception is integrated into a practical

8 In the rare circumstance in which an examiner believes a claim limitation
that does not fall within the enumerated groupings of abstract ideas should
nonetheless be treated as reciting an abstract idea, the procedure described in
of the Guidance for analyzing the claim should be followed. See Revised
Guidance, Section III.C.
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application of that exception in Step 2A(ii) by: (a) identifying whether there
are any additional elements recited in the claim beyond the judicial
exception(s); and (b) evaluating those additional elements individually and
in combination to determine whether they integrate the exception into a
practical application.
The seven identified “practical application” sections of the MPEP,9
cited in the Revised Guidance under Step 2A(ii), are:
(1) MPEP § 2106.05(a) Improvements to the Functioning of
a Computer or To Any Other Technology or Technical
Field
(2) MPEP § 2106.05(b) Particular Machine
(3) MPEP § 2106.05(c) Particular Transformation
(4) MPEP § 2106.05(e) Other Meaningful Limitations
(5) MPEP § 2106.05(f) Mere Instructions To Apply An
Exception
(6) MPEP § 2106.05(g) Insignificant Extra-Solution Activity
(7) MPEP § 2106.05(h) Field of Use and Technological
Environment
See Revised Guidance 55.
If the recited judicial exception is integrated into a practical
application as determined under one or more of the MPEP sections cited
above, then the claim is not directed to the judicial exception, and the patent-

9 See MPEP §§ 2106.05(a)–(c), (e)–(h). Citations to the MPEP herein refer
to revision [R-08.2017]. Sections 2106.05(a), (b), (c), and (e) are indicative
of integration into a practical application, while §§ 2106.05(f), (g), and (h)
relate to limitations that are not indicative of integration into a practical
application.
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eligibility inquiry ends. See Revised Guidance 54. If not, then analysis
proceeds to Step 2B.
Step 2B – “Inventive Concept” or “Significantly More”
Under our reviewing courts’ precedent, it is possible that a claim that
does not “integrate” a recited judicial exception under Step 2A(ii) is
nonetheless patent eligible. For example, the claim may recite additional
elements that render the claim patent eligible even though one or more claim
elements may recite a judicial exception.10 The Federal Circuit has held
claims eligible at the second step of the Alice/Mayo test (USPTO Step 2B)
because the additional elements recited in the claims provided “significantly
more” than the recited judicial exception (e.g., because the additional
elements were unconventional in combination).11 Therefore, if a claim has
been determined to be directed to a judicial exception under Revised Step
2A, we must also evaluate the additional elements individually and in
combination under Step 2B to determine whether they provide an inventive
concept (i.e., whether the additional elements amount to significantly more
than the exception itself).12

10 See, e.g., Diehr, 450 U.S. at 187.
11 See, e.g., Amdocs, Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1300,
1304 (Fed. Cir. 2016); BASCOM Global Internet Services, Inc. v. AT&T
Mobility LLC, 827 F.3d 1341, 1349–52 (Fed. Cir. 2016); DDR Holdings v.
Hotels.com, L.P., 773 F.3d 1245, 1257–59 (Fed. Cir. 2014).
12 The patent eligibility inquiry may contain underlying issues of fact.
Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325
(Fed. Cir. 2016). In particular, “[t]he question of whether a claim element or
combination of elements is well-understood, routine and conventional to a
skilled artisan in the relevant field is a question of fact.” Berkheimer v. HP
Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018).
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Under the Revised Guidance, we must consider in Step 2B whether an
additional element or combination of elements: (1) “Adds a specific
limitation or combination of limitations that are not well-understood,
routine, conventional activity in the field, which is indicative that an
inventive concept may be present;” or (2) “simply appends well-understood,
routine, conventional activities previously known to the industry, specified
at a high level of generality, to the judicial exception, which is indicative
that an inventive concept may not be present.” See Revised Guidance,
Section III.B.13
In the Step 2B analysis, an additional element (or combination of
elements) is not well-understood, routine or conventional unless the
examiner finds an evidentiary basis, and expressly supports a rejection in
writing with, one or more of the following:
1. A citation to an express statement in the
specification or to a statement made by an applicant during
prosecution that demonstrates the well-understood, routine,
conventional nature of the additional element(s). . . .
2. A citation to one or more of the court decisions
discussed in MPEP § 2106.05(d)(II) as noting the well-

13 In accordance with existing Step 2B guidance, an Examiner’s finding that
an additional element (or combination of elements) is well understood,
routine, conventional activity must be supported with at least one of the four
specific types of evidence required by the USPTO Berkheimer
Memorandum, as shown above. For more information concerning evaluation
of well-understood, routine, conventional activity, see MPEP § 2106.05(d),
as modified by the USPTO Berkheimer Memorandum (USPTO
Commissioner for Patents Memorandum dated Apr. 19, 2018, “Changes in
Examination Procedure Pertaining to Subject Matter Eligibility, Recent
Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.)” (hereinafter
“Berkheimer Memo”).
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understood, routine, conventional nature of the additional
element(s).
3. A citation to a publication that demonstrates the
well-understood, routine, conventional nature of the additional
element(s). . . .
4. A statement that the examiner is taking official
notice of the well-understood, routine, conventional nature of
the additional element(s). . . .
See Berkheimer Memo 3–4.
If the Examiner or the Board determines under Step 2B that the
element (or combination of elements) amounts to significantly more than the
exception itself, the claim is eligible, thereby concluding the eligibility
analysis.
However, if a determination is made that the element and combination
of elements do not amount to significantly more than the exception itself, the
claim is ineligible under Step 2B, and the claim should be rejected for lack of
subject matter eligibility.
ANALYSIS
Step 1 – Statutory Category
Claim 23, as a method (process) claim, recites one of the enumerated
categories of eligible subject matter in 35 U.S.C. § 101. Therefore, the issue
before us is whether it is directed to a judicial exception without
significantly more.
Step 2A(i): Does the Claim Recite a Judicial Exception?
The Examiner determined that “in this case the claims fall within the
judicial exception of an abstract idea. Specifically the abstract idea similar
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to ‘collecting information, analyzing it, and displaying certain results of the
collection and analysis.’” Non-Final Act. 3 (generally citing Elec. Power
Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016)) (hereinafter
“EPG”).
We conclude claim 23 does not recite the judicial exceptions of either
natural phenomena or laws of nature. We evaluate, de novo, whether
claim 23 recites an abstract idea based upon the Revised Guidance.
First, we look to the Specification to provide context as to what the
claimed invention is directed to. In this case, the Specification discloses that
“[t]he present disclosure generally relates to systems and methods for time
series analysis techniques utilizing count data sets.” Spec. ¶ 3.
Appellant’s Abstract describes the invention as follows:
Systems and methods are included for adjusting a set of
predicted future data points for a time series data set including a
receiver for receiving a time series data set. One or more
processors and one or more non-transitory computer readable
storage mediums containing instructions may be utilized. A
count series forecasting engine, utilizing the one or more
processors, generates a set of counts corresponding to discrete
values of the time series data set. An optimal discrete
probability distribution for the set of counts is selected. A set of
parameters are generated for the optimal discrete probability
distribution. A statistical model is selected to generate a set of
predicted future data points. The set of predicted future data
points are adjusted using the generated set of parameters for the
optimal discrete probability distribution in order to provide
greater accuracy with respect to predictions of future data
points.
Spec. (Abstract).
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Appellant cites Federal Circuit cases and makes various arguments
against the Examiner’s determination the claims are directed to an abstract
idea.
McRO
In McRO, the claims were not held to be abstract because they recited
a “specific . . . improvement in computer animation” using “unconventional
rules that relate[d] sub-sequences of phonemes, timings, and morph weight
sets.” McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1302–
03, 1307–08, 1314–15 (Fed. Cir. 2016). In McRO, “the incorporation of the
claimed rules, not the use of the computer,” improved an existing
technological process. Id. at 1314.
In the Appeal Brief, Appellant argues the claims are similar to those
held patent-eligible in McRO because “[l]ike the claims upheld in McRo, the
pending claims recite a specific way (using particular steps/rules) for solving
the problem of producing a more accurate predicted future data point, rather
than merely claiming the idea of generating and/or improving a predicted
future data point.” Appeal Br. 24. Appellant does not, however, identify
how claim 23 improves an existing technological process. See Alice, 573
U.S. at 223 (explaining that “the claims in Diehr were patent eligible
because they improved an existing technological process”). Rather,
claim 23 concerns a “computer-implemented method,” and Appellant does
not direct us to any evidence or specific limitations that reflect using
particular steps or rules, or that correspond to unconventional rules.
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Thales Visionix
Appellant argues:
Like the claims in Visionix, the Pending Claims specify a
particular event-stream processing engine and a particular
technique of using time series data containing discrete values in
order to more accurately generate predicted future data points.
The court in Visionix found the claims were patent eligible,
being directed to “a new and useful technique for using sensors
to more efficiently track an object on a moving platform.” Id
p. 10. In close similarity to the claims in Visionix, the Pending
Claims are directed to a new and useful technique for using an
event-stream processing engine to more accurately predict
future data points from time series data containing discrete
values.
Appeal Br. 25 (footnote omitted).
Appellant’s attempt (Appeal Br. 24–25) to analogize the claims under
appeal to the invention claimed in Thales Visionix Inc. v. United States, 850
F.3d 1343 (Fed. Cir. 2017) is misplaced because the Thales claims were not
directed to a judicial exception to patent eligibility, but to the particular
mathematical application of laws of physics. Thales at 1348. Although the
court in Thales held the use of a mathematical equation to achieve the
particular application recited in the pending claims “does not doom the
claims to abstraction,” the system in Thales is very different than the claims
on Appeal. Id. at 1349. The system in Thales used inertial sensors, such as
accelerometers and gyroscopes, to measure forces associated with changes
in a sensor’s position and orientation relative to a known starting position.
Id. at 1344. Although the Thales Court ultimately determined that the
claims were not “directed to” an abstract idea in accordance with an analysis
that parallels our analysis below, Thales reconfirmed the underlying
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principle that collecting and analyzing electronic information using mental
processes that could be performed by humans recites an abstract idea. Id. at
1346–47.
Here, the rejected claims are dissimilar to Thales’s force measuring
system, and the Specification does not provide any support to the view that
the computer-related claim elements are unconventional. The Thales court’s
conclusion of patent eligibility rested on claims that specified “a particular
configuration of inertial sensors and a particular method of using the raw
data from the sensors in order to more accurately calculate the position and
orientation of an object on a moving platform . . . . [T]he claims [sought] to
protect only the application of physics to the unconventional configuration
of sensors as disclosed.” Thales Visionix, 850 F.3d at 1347. In contrast, no
such unconventional configuration of sensors, or unconventional method of
using raw sensor data, is disclosed or claimed herein. We determine the
claims under appeal recite conventional computer-related components.
Novelty
Appellant argues, “the present claims include many of the features
found to be lacking in Electric Power Group (“EPG”) and that would have
otherwise resulted in the claims of that case being patent eligible . . . . In
contrast, the present claims do have a new technique for analyzing data that
is novel and inventive, as admitted by the Office and further supported by
the lack of any current part rejections.” Appeal Br. 17–18.
In response, we note the Supreme Court emphasizes, “[t]he ‘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
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the § 101 categories of possibly patentable subject matter.” Diehr, 450 U.S.
at 188–89 (emphasis added). Our reviewing court further guides that
“[e]ligibility and novelty are separate inquiries.” Two-Way Media Ltd. v.
Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1340 (Fed. Cir. 2017); see
also Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1263
(Fed. Cir. 2016) (holding that “[e]ven assuming” that a particular claimed
feature was novel does not “avoid the problem of abstractness”).
Preemption
Appellant contends the claims on Appeal are distinguishable from
EPG due to lack of preemption concerns. Appeal Br. 18–19.
Regarding preemption, “[w]hile preemption may signal patent
ineligible subject matter, the absence of complete preemption does not
demonstrate patent eligibility. . . . Where a patent’s claims are deemed only
to disclose patent ineligible subject matter under the Mayo framework, as
they are in this case, preemption concerns are fully addressed and made
moot.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379
(Fed. Cir. 2015); see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d
1359, 1362–63 (Fed. Cir. 2015) (“that the claims do not preempt all price
optimization or may be limited to price optimization in the e-commerce
setting do not make them any less abstract”).
We further agree with the Examiner’s response, which we incorporate
herein by reference. Ans. 16; and see buySAFE, Inc. v. Google, Inc., 765
F.3d 1350, 1355 (Fed. Cir. 2014) (collecting cases); Accenture Global
Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1345 (Fed. Cir.
2013); Ariosa, 788 F.3d at 1379 (“While preemption may signal patent
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ineligible subject matter, the absence of complete preemption does not
demonstrate patent eligibility”).
Representative Claim 23
In TABLE 1 below, we identify in italics the specific claim
limitations in claim 23 that we conclude recite an abstract idea. We
additionally identify in bold the additional (non-abstract) claim limitations
that are generic computer components and techniques, and underline
limitations that represent extra or post-solution activity:
TABLE 1
Independent Claim 23 Revised Guidance
A computer-
implemented method
comprising:
A process (method) is a statutory subject
matter class. See 35 U.S.C. § 101.
[L1a] instantiating, by a
data processing
apparatus,
an event-stream
processing engine,

[L1b] wherein the event-
stream processing engine
includes layers of
windows configured to
perform operations on
an input event-stream
to
As claimed and described, a data processing
apparatus is a generic computer component.
See, e.g., Spec. ¶¶ 7, 51.
An “event stream processing engine” is
described in terms of a generic processor, i.e.,
“[t]he computing device includes, but is not
limited to, a processor and a computer-
readable medium operably coupled to the
processor. The processor is configured to
execute an ESP engine (ESPE).” Spec. ¶ 140.
“[L]ayers of windows configured to perform
operations on an input event stream”
represents generic computer functionality,

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Independent Claim 23 Revised Guidance
[L1c] transform the input
event-stream into an
output event-stream that
is different from the
input event-stream,

[L1d] wherein a
relationship among the
layers of windows is
defined by a directed
graph, and wherein the
layers of windows
include:
The input event-stream transformation is
merely extra-solution activity because it is
described as being performed by “one or
more derived windows 808 [that] may
perform computations or transformations on
the incoming event streams.” Spec. ¶ 121. See
In re Bilski, 545 F.3d 943, 962 (Fed. Cir.
2008) (en banc), aff’d on other grounds, 561
U.S. 593 (2010) (“[T]he involvement of the
machine or transformation in the claimed
process must not merely be insignificant
extra-solution activity”).
Defining a relationship by a directed graph is
an abstract idea as described by the
Specification: “A continuous query may be
described as a directed graph of source,
relational, pattern matching, and procedural
windows. . . . A directed graph, for example,
is a set of nodes connected by edges, where
the edges have a direction associated with
them.” Spec. ¶ 118 (emphasis added).
[L2a] a source window
in a first layer among
the layers of windows,
wherein the source
window is configured to:

[L2b] receive the input
event-stream, perform a
first operation on the
input event-stream to
transform the input
event-stream into a
modified version of the
input event-stream, and

According to the Specification, “[t]he one or
more source windows 806 and the one or
more derived windows 808 represent
continuously executing queries that generate
updates to a query result.” Spec. ¶ 118. We
determine the recited source window
represents generic computer functionality.
Receiving and transforming the input event-
stream, i.e., receiving and processing
information to provide a modified version of
the input event-stream, is merely
insignificant extra-solution activity that does
not add significantly more to the abstract
idea to render the claimed invention patent-
eligible. Revised Guidance 55 n.31; see also
In re Bilski, 545 F.3d 943, 962 (Fed. Cir.
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Independent Claim 23 Revised Guidance

[L2c] transmit the
modified version of the
input event-stream; and
2008) (en banc), aff’d on other grounds, 561
U.S. 593 (2010) (“[T]he involvement of the
machine or transformation in the claimed
process must not merely be insignificant
extra-solution activity”).
Communicating or transmitting information
is insignificant post-solution activity.
Revised Guidance 55 n.31; see also MPEP
§ 2106.05(g); and see buySAFE, Inc. v.
Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir.
2014) (computer receives and sends
information over a network).
[L3a] a derived window
in a second layer among
the layers of windows,
wherein the derived
window is configured to:

[L3b] receive the
modified version of the
input event-stream from
the source window in the
first layer, perform a
second operation on the
modified version of the
input event-stream to
transform the modified
version of the input
event-stream into a
further modified version
of the input event-stream,
and

According to the Specification, “[t]he one or
more source windows 806 and the one or
more derived windows 808 represent
continuously executing queries that generate
updates to a query result.” Spec. ¶ 118. We
determine the recited derived window
represents generic computer functionality.
Receiving and transforming the modified
version of the input event-stream into a
“further modified version of the input event-
stream,” i.e., receiving and processing
information, is merely insignificant extra-
solution activity that does not add
significantly more to the abstract idea to
render the claimed invention patent-eligible.
Revised Guidance, 55 n.31; see In re Bilski,
545 F.3d 943, 962 (Fed. Cir. 2008) (en
banc), aff’d on other grounds, 561 U.S. 593
(2010) (“[T]he involvement of the machine
or transformation in the claimed process
must not merely be insignificant extra-
solution activity”).

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Independent Claim 23 Revised Guidance
[L3c] transmit the further
modified version of the
input event-stream;
Communicating or transmitting information
is insignificant post-solution activity.
Revised Guidance 55 n.31; see also MPEP
§ 2106.05(g); and see buySAFE, Inc. v.
Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir.
2014) (computer receives and sends
information over a network).
[L4a] receiving, by the
data processing
apparatus, the input
event-stream using the
event-stream
processing engine,
[L4b] wherein the input
event-stream includes
event block objects that
are associated with a
time series data set;
Receiving the input event-stream, i.e.,
receiving information, is merely
insignificant extra-solution activity that does
not add significantly more to the abstract
idea to render the claimed invention patent-
eligible. Revised Guidance 55 n.31.
Associating event block objects in an event-
stream with a time series data set is an
abstract idea, i.e., an observation,
evaluation, judgment, opinion” which, aside
from any computer-related aspects, could be
performed as a mental process. See Revised
Guidance 52.
[L5a] transforming, by
the data processing
apparatus, the input
event-stream into the
output event-stream
using the event-stream
processing engine,

[L5b] wherein the input
event-stream is
transformed into the
output event-stream by
applying the layers of
windows to the input
event-stream, wherein
“[T]ransforming . . . the input event-stream
into the output event-stream” is extra-
solution activity. See In re Bilski, 545 F.3d
943, 962 (Fed. Cir. 2008) (en banc), aff’d on
other grounds, 561 U.S. 593 (2010) (“[T]he
involvement of the machine or
transformation in the claimed process must
not merely be insignificant extra-solution
activity”).
Applying layers of windows to effect
transformation constitutes abstract ideas in
the form of a mental processes and/or
mathematical processes because the layers
of windows are merely configured to carry
out various abstract ideas as reflected in
limitations [L6]–[L9], below.
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Independent Claim 23 Revised Guidance
the layers of windows are
configured to perform
operations including:
[L6] generating a set of
counts for the time series
data set, wherein a count
corresponds to a number
of instances of a
particular discrete value
in the time series data
set;
A mathematical calculation such as counting
or generating a set of counts corresponding
to a number of occurrences of a discrete
value is an abstract idea. Revised Guidance
52 and n.12 citing SAP America, Inc. v.
InvestPic, LLC, 898 F.3d 1161, 1163 (Fed.
Cir. 2018) (holding that claims to a “series
of mathematical calculations based on
selected information” are directed to abstract
ideas).
[L7] determining a
discrete probability
distribution for the set of
counts;
“[D]etermining” is an abstract idea, i.e., an
observation, evaluation, judgment, opinion”
which could be performed as a mental
process. See Revised Guidance 52.
[L8] generating a set of
predicted future data
points, wherein the set of
predicted future data
points is generated using
a statistical model; and
“[G]enerating a set of predicted . . . data
points . . . using a statistical model” may be
characterized as a mathematical calculation,
and thus, is an abstract idea. Revised
Guidance 52 and n.12 citing SAP America,
Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163
(Fed. Cir. 2018) (holding that claims to a
“series of mathematical calculations based
on selected information” are directed to
abstract ideas).
[L9a] generating an
adjusted set of predicted
future data points,
[L9b] wherein
generating the adjusted
set of predicted future
data points includes
adjusting the set of
predicted future data
“[G]enerating an adjusted set of predicted
future data points . . . using a set of
parameters . . . corresponding to the discrete
probability distribution” and determining
whether “the adjusted set of predicted future
data points is more accurate than the set of
predicted future data points” are abstract
ideas i.e., an observation, evaluation,
judgment, opinion” which could be
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Independent Claim 23 Revised Guidance
points using a set of
parameters
corresponding to the
discrete probability
distribution, and wherein
the adjusted set of
predicted future data
points is more accurate
than the set of predicted
future data points; and
performed as a mental process. See Revised
Guidance 52.
[L10] transmitting the
output event-stream,
wherein the output event-
stream includes the
adjusted set of predicted
future data points.
Transmitting information, e.g., for display,
is insignificant extra-solution activity.
Revised Guidance 55, n.31; see also MPEP
§ 2106.05(g); and see buySAFE, Inc. v.
Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir.
2014) (computer receives and sends
information over a network).
See Spec. 40–41 (Claims App.).
Under the broadest reasonable interpretation standard,14 we conclude
limitations L1 through L10 recite steps that, but for any computer-related
aspects, would ordinarily occur when predicting future data points in an
input event-stream using a discrete probability distribution. See generally

14 During prosecution, claims must be given their broadest reasonable
interpretation when reading claim language in light of the specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard,
we interpret claim terms using “the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant’s specification.” In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997).
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Non-Final Act. 2–10. For example, “generating a set of predicted future
data points, wherein the set of predicted future data points is generated using
a statistical model” (claim 23, limitation L8) is an operation that generally
occurs when statistically predicting more accurate data points.
Further, for the reasons provided in TABLE 1, above, we identify
limitations [L1d] (“wherein a relationship among the layers of windows is
defined by a directed graph”); [L4b] (“wherein the input event-stream
includes event block objects that are associated with a time series data set”);
[L5b] (“wherein the input event-stream is transformed into the output event-
stream by applying the layers of windows to the input event-stream”); [L6]
(“generating a set of counts for the time series data set, wherein a count
corresponds to a number of instances of a particular discrete value in the
time series data set”); [L7] (“determining a discrete probability distribution
for the set of counts”); [L8] (“generating a set of predicted future data
points, wherein the set of predicted future data points is generated using a
statistical model”); [L9a] (“generating an adjusted set of predicted future
data points”); and [L9b] (“wherein generating the adjusted set of predicted
future data points includes adjusting the set of predicted future data points
using a set of parameters corresponding to the discrete probability
distribution, and wherein the adjusted set of predicted future data points is
more accurate than the set of predicted future data points”) as representing
various abstract ideas, whether initiated in the mind, on paper, or by using a
computer.
We determine that claim 23, overall, recites a mental process that may
also be performed practically by pen and paper. This type of activity, i.e.,
predicting future data points in an input event-stream using a discrete
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probability distribution, as recited in limitations L1 through L10, for
example, and aside from any computer-related aspects, includes
longstanding conduct that existed well before the advent of computers and
the Internet, and could be carried out by a human with pen and paper. See
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir.
2011) (“That purely mental processes can be unpatentable, even when
performed by a computer, was precisely the holding of the Supreme Court in
Gottschalk v. Benson.”).15
Thus, under Step 2A(i), we agree with the Examiner that claim 23’s
computer-implemented method is a judicial exception. We conclude
claim 23, under our Revised Guidance, recites a judicial exception of
predicting future data points in an input event-stream using a discrete
probability distribution, i.e., a mental process, and thus is an abstract idea.
Step 2A(ii): Judicial Exception Integrated into a Practical Application?
If the claims are directed to a judicial exception, as we conclude
above, we proceed to the “practical application” Step 2A(ii) in which we

15 Our reviewing court recognizes that “[a]n abstract idea can generally be
described at different levels of abstraction.” Apple, Inc. v. Ameranth, Inc.,
842 F.3d 1229, 1240 (Fed. Cir. 2016). That need not and, in this case does
not, “impact the patentability analysis.” Id. at 1241. Further, “[t]he Board’s
slight revision of its abstract idea analysis does not impact the patentability
analysis.” Id. Moreover, 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 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).
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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 exception(s); and
(b) evaluating those additional elements individually and in combination to
determine whether they integrate the exception into a practical application.
In addition to the abstract limitations identified above, we conclude
limitations [L2b] (“receive the input event-stream”); [L3b] (“receive the
modified version of the input event-steam”); and [L4a] (“receiving . . . the
input event-stream”) recite insignificant data gathering. See MPEP
§ 2106.05(g). Data gathering, as performed by the steps or function in
Appellant’s claims, is a classic example of insignificant extra-solution
activity. See, e.g., In re Bilski, 545 F.3d 943, 963 (Fed. Cir. 2008) (en banc),
aff’d sub nom, Bilski v. Kappos, 561 U.S. 593 (2010).
We also find limitations [L1c] (“transform the input event-stream into
an output event-stream”); [L2c] (“transmit the modified version of the input
event-stream”); [L3c] (“transmit the further modified version of the input
event-stream”); [L5a] (“transforming, by the data processing apparatus, the
input event-stream into the output event-stream using the event-stream
processing engine”); and [L10] (“transmitting the output event-stream”)
recite insignificant post-solution activity. The Supreme Court guides that
the “prohibition against patenting abstract ideas ‘cannot be circumvented by’
. . . adding ‘insignificant postsolution activity.’” Bilski, 561 U.S. at 610–11
(quoting Diehr, 450 U.S. at 191–92). On this record, we are of the view that
Appellant’s claims do not operate the recited generic computer components
in an unconventional manner to achieve an improvement in computer
functionality. See MPEP § 2106.05(a).
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We find each of the limitations [L1d], [L4b], [L5b], [L6], [L7], [L8],
[L9a], and [L9b] of claim 23 recite abstract ideas as identified in Step 2A(i),
supra, and none of the limitations integrate the judicial exception of
predicting future data points in an input event-stream using a discrete
probability distribution into a practical application as determined under one
or more of the MPEP sections cited above. The claim as a whole merely
uses instructions to implement the abstract idea on a computer or,
alternatively, merely uses a computer as a tool to perform the abstract idea.
Under analogous circumstances, the Federal Circuit has held that
“[t]his is a quintessential ‘do it on a computer’ patent: it acknowledges that
[such] data . . . was previously collected, analyzed, manipulated, and
displayed manually, and it simply proposes doing so with a computer. We
have held such claims are directed to abstract ideas.” Univ. of Fla. Research
Found., Inc. v. Gen. Elec. Co., 916 F.3d 1363, 1367 (Fed. Cir. 2019); see
also Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1351 (Fed. Cir.
2016) (“Though lengthy and numerous, the claims do not go beyond
requiring the collection, analysis, and display of available information in a
particular field, stating those functions in general terms, without limiting
them to technical means for performing the functions that are arguably an
advance over conventional computer and network technology.”).
To the extent that Appellant argues that the method claims 23–31 on
appeal provide a patentable transformation of data (see Appeal Br. 26–27),
we disagree. The “[t]ransformation and reduction of an article ‘to a different
state or thing’ is the clue to the patentability of a process claim that does not
include particular machines.” Gottschalk v. Benson, 409 U.S. at 70. “The
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mere manipulation or reorganization of data, however, does not satisfy the
transformation prong.” CyberSource, 654 F.3d at 1375.
Therefore, we conclude method claim 23 fails to satisfy the
transformation prong of the machine-or-transformation test because the data
types recited in the claim are merely manipulated or reorganized. Thus,
without more, we conclude method claims 23–31 do not use a “particular
machine” to apply the judicial exception (see MPEP § 2106.05(b)), or
perform a transformation of an article to a different state or thing (see MPEP
§ 2106.05(c)).
Therefore, we conclude the abstract idea is not integrated into a
practical application, and thus the claim is directed to the judicial exception.
Step 2B – “Inventive Concept” or “Significantly More”
If the claims are directed to a judicial exception, and not integrated
into a practical application, as we conclude above, we proceed to the
“inventive concept” step. For Step 2B we must “look with more specificity
at what the claim elements add, in order to determine ‘whether they identify
an “inventive concept” in the application of the ineligible subject matter’ to
which the claim is directed.” Affinity Labs, 838 F.3d at 1258.
In applying step two of the Alice analysis, our reviewing court guides
we must “determine whether the claims do significantly more than simply
describe [the] abstract method” and thus transform the abstract idea into
patentable subject matter. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709,
715 (Fed. Cir. 2014). We look to see whether there are any “additional
features” in the claims that constitute an “inventive concept,” thereby
rendering the claims eligible for patenting even if they are directed to an
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abstract idea. Alice, 573 U.S. at 221. Those “additional features” must be
more than “well-understood, routine, conventional activity.” Mayo, 566
U.S. at 79.
Limitations referenced in Alice that are not enough to qualify as
“significantly more” when recited in a claim with an abstract idea include, as
non-limiting or non-exclusive examples: adding the words “apply it” (or an
equivalent) with an abstract idea16; mere instructions to implement an
abstract idea on a computer17; or requiring no more than a generic computer
to perform generic computer functions that are well-understood, routine and
conventional activities previously known to the industry.18
Regarding this step of the analysis, Appellant cites to Amdocs and
Bascom, as discussed below.
Amdocs
Appellant relies upon Amdocs to rebut the Examiner’s citation to
EPG. Appeal Br. 19–20. In Amdocs, the Federal Circuit held that claim 1 of
the patent at issue
is also like the claims in Bascom because even though the
system in the ‘065 patent relies upon some arguably generic
limitations, when all limitations are considered individually and
as an ordered combination, they provide an inventive concept
through the use of distributed architecture. This is similar to the
design in Bascom which permitted the invention to have a
filtering tool with the benefits of a filter on a local computer

16 Alice, 573 U.S. at 221–23.
17 Alice, 573 U.S. at 222–23, e.g., simply implementing a mathematical
principle on a physical machine, namely a computer.
18 Alice, 573 U.S. at 225 (explaining using a computer to obtain data, adjust
account balances, and issue automated instructions involves computer
functions that are well-understood, routine, conventional activities).
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and the benefits of a filter on an ISP server. The benefits in
Bascom were possible because of customizable filtering
features at specific locations remote from the user. Similarly,
the benefits of the '065 patent's claim 1 are possible because of
the distributed, remote enhancement that produced an
unconventional result—reduced data flows and the possibility
of smaller databases. This arrangement is not so broadly
described to cause preemption concerns. Instead, it is narrowly
circumscribed to the particular system outlined. As in Bascom
this is a technical improvement over prior art technologies and
served to improve the performance of the system itself.
Amdocs, 841 F.3d at 1302.
Again, we determine Appellant’s reliance upon Amdocs is unavailing
because there is no indication that claim 23 on appeal provides
unconventional results produced by a distributed, remote enhancement that
reduces data flows and allows for the possibility of smaller databases.
Bascom
Appellant alleges:
Here, the claimed techniques make use of a set of counts
wherein a count corresponds to a number of instances of a
particular discrete value in a time series data set to determine a
discrete probability distribution, the set of parameters of which
are used to adjust a generated set of predicted future data points
such that the adjusted set of predicted future data points is more
accurate. Although any one of these aspects may arguably have
been known or present in the prior art, which Appellants do not
concede, Appellant submits that the specific order,
arrangement, use, and combination of these aspects is non-
conventional, non-generic, and otherwise not well-known -
these aspects have not been applied in prior forecasting
techniques in the combination specified in the claims and are
unconventional, novel, and nonobvious, as described above.
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Like in BASCOM, the instant claims, through their non-
generic ordering and combination provide an inventive use of
the alleged abstract ideas. As such, the claims amount to
significantly more than the alleged abstract idea.
Appeal Br. 33–34.
In Bascom, the claims were directed to the inventive concept of
providing customizable Internet-content filtering which, under Step 2 of the
Alice analysis, was found to transform the abstract idea of filtering content
into a patent-eligible invention. Although the underlying idea of filtering
Internet content was deemed to be abstract, under step 2 of the Alice
analysis, the claims carved out a specific location for the filtering system,
namely a remote Internet service provider (ISP) server, and required the
filtering system to give users the ability to customize filtering for their
individual network accounts. Bascom Global Internet Services, Inc. v.
AT&T Mobility LLC, 827 F.3d 1341, 1349 (Fed. Cir. 2016).
In response to Appellant’s reliance upon Bascom, supra, there is no
evidence of record to substantiate the assertion that the claims recite non-
conventional and non-generic arrangement of known, conventional
elements, as in Bascom. Moreover, we find no analogy between Appellant’s
claimed computer-implemented method and the Internet content filtering
claims in Baccom.
“Significantly More” Analysis
Evaluating representative claim 23 under step 2 of the Alice analysis,
we conclude it lacks an inventive concept that transforms the abstract idea of
predicting future data points in an input event-stream using a discrete
probability distribution into a patent-eligible application of that abstract idea.
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The patent eligibility inquiry may contain underlying issues of fact.
Mortg. Grader, 811 F.3d at 1325. In particular, “[t]he question of whether a
claim element or combination of elements is well-understood, routine and
conventional to a skilled artisan in the relevant field is a question of fact.”
Berkheimer, 881 F.3d at 1368.
We provide evidence of the conventional nature, i.e., WURC19 nature
of various elements and limitations recited in method claim 23 in TABLE 2,
below:
TABLE 2
Elements Recited Support for a finding of WURC
data processing apparatus As claimed and described, a data
processing apparatus is a generic
computer component. See, e.g., Spec.
¶¶ 7, 51.
event-stream processing
engine,
An “event stream processing engine” is
described in terms of a generic processor,
i.e., “[t]he computing device includes, but
is not limited to, a processor and a
computer-readable medium operably
coupled to the processor. The processor is
configured to execute an ESP engine
(ESPE).” Spec. ¶ 140.
a source window in a first
layer among the layers of
windows
According to the Specification, “[t]he
one or more source windows 806 and
the one or more derived windows 808
represent continuously executing queries
that generate updates to a query result.”
Spec. ¶ 118. We determine the recited
source window represents generic
computer functionality.

19 “Well-understood, routine, and conventional” (“WURC”).
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Elements Recited Support for a finding of WURC
a derived window in a
second layer among the
layers of windows
According to the Specification, “[t]he
one or more source windows 806 and
the one or more derived windows 808
represent continuously executing queries
that generate updates to a query result.”
Spec. ¶ 118. We determine the recited
derived window represents generic
computer functionality.
See generally, claim 23.
Thus, because the Specification describes the additional elements in
general terms, without describing the particulars, we conclude the claim
limitations may be broadly but reasonably construed as reciting conventional
computer components and techniques, particularly in light of Appellants’
Specification, as quoted above.20
The MPEP, based upon our precedential guidance, provides additional
considerations with respect to analysis of the well-understood, routine, and
conventional nature of the recited computer-related components.
Another consideration when determining whether a claim
recites significantly more than a judicial exception is whether
the additional elements amount to more than a recitation of the
words “apply it” (or an equivalent) or are more than mere
instructions to implement an abstract idea or other exception on
a computer. As explained by the Supreme Court, in order to
transform a judicial exception into a patent-eligible application,
the additional element or combination of elements must do
“‘more than simply stat[e] the [judicial exception] while adding
the words ‘apply it’”. Alice Corp. v. CLS Bank, 573 U.S. __,

20 Claim terms are to be given their broadest reasonable interpretation, as
understood by those of ordinary skill in the art and taking into account
whatever enlightenment may be had from the Specification. In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
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134 S. Ct. 2347, 2357, 110 USPQ2d 1976, 1982-83 (2014)
(quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 72, 101 USPQ2d 1961, 1965). Thus, for example,
claims that amount to nothing more than an instruction to apply
the abstract idea using a generic computer do not render an
abstract idea eligible. Alice Corp., 134 S. Ct. at 2358, 110
USPQ2d at 1983. See also 134 S. Ct. at 2389, 110 USPQ2d at
1984 (warning against a § 101 analysis that turns on “the
draftsman’s art”) . . . .
In Alice Corp., the claim recited the concept of
intermediated settlement as performed by a generic computer.
The Court found that the recitation of the computer in the claim
amounted to mere instructions to apply the abstract idea on a
generic computer. 134 S. Ct. at 2359-60, 110 USPQ2d at 1984.
The Supreme Court also discussed this concept in an earlier
case, Gottschalk v. Benson, 409 U.S. 63, 70, 175 USPQ 673,
676 (1972), where the claim recited a process for converting
binary-coded decimal (BCD) numerals into pure binary
numbers. The Court found that the claimed process had no
substantial practical application except in connection with a
computer. Benson, 409 U.S. at 71-72, 175 USPQ at 676. The
claim simply stated a judicial exception (e.g., law of nature or
abstract idea) while effectively adding words that “apply it” in a
computer. Id.
MPEP § 2106.05(f) (“Mere Instructions To Apply An Exception”).
With respect to the Step 2B analysis, we conclude, similar to Alice, the
recitation of a method that includes well-understood, routine, and
conventional computer components and functionality, is simply not enough
to transform the patent-ineligible abstract idea here into a patent-eligible
invention under Step 2B. See Alice, 573 U.S. at 221 (“[C]laims, which
merely require generic computer implementation, fail to transform [an]
abstract idea into a patent-eligible invention.”).
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Application 15/167,238

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Therefore, in light of the foregoing, we conclude, under the Revised
Guidance, that each of Appellant’s claims 1–5 and 7–31, 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 § 101 rejection of independent
claim 23, and grouped claims 1–5, 7–22, and 24–31 which fall therewith.
See Claim Grouping, supra.
REPLY BRIEF
To the extent Appellant may advance new arguments in the Reply
Brief (Reply Br. 2–19) not in response to a shift in the Examiner’s position
in the Answer, arguments raised in a Reply Brief that were not raised in the
Appeal Brief or are not responsive to arguments raised in the Examiner’s
Answer will not be considered except for good cause (see 37 C.F.R.
§ 41.41(b)(2)), which Appellant has not shown.
CONCLUSION
Under our Revised Guidance, governed by relevant case law,
claims 1–5 and 7–31 are patent-ineligible under 35 U.S.C. § 101, and we
sustain the rejection.
DECISION SUMMARY
Claims
Rejected
35 U.S.C.
§
Basis /
References Affirmed Reversed
1–5, 7–31 101 Subject Matter Eligibility 1–5, 7–31
Appeal 2018-006191
Application 15/167,238

37
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