TOTAL SA

Patent Trials and Appeals Board

Feb 21, 2020

14420208 - (D) (P.T.A.B. Feb. 21, 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.
14/420,208 02/06/2015 Gérard Massonnat 4229.112WOUS01 1341
24113 7590 02/21/2020
PATTERSON THUENTE PEDERSEN, P.A.
80 SOUTH 8TH STREET
4800 IDS CENTER
MINNEAPOLIS, MN 55402-2100
EXAMINER
KIM, EUNHEE
ART UNIT PAPER NUMBER
2127
NOTIFICATION DATE DELIVERY MODE
02/21/2020 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):
efsuspto@ptslaw.com
johnson@ptslaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GÉRARD MASSONNAT
____________

Appeal 2018–005981
Application 14/420,2080F1
Technology Center 2100
_______________

Before JEREMY CURCURI, HUNG H. BUI, and RUSSELL E. CASS,
Administrative Patent Judges.

BUI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant seeks our review under 35 U.S.C. § 134(a) from the
Examiner’s Final rejection of claims 1–7 and 9–10, which are all the claims
pending in the application. Claim 8 is cancelled. Appeal Br. 22–25 (Claims
App.). An Oral hearing was conducted on February 7, 2020. A transcript of
the Oral hearing will be made of record in due course. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.1F2

1 We use the word “Appellant” to refer to “applicant(s)” as defined in 37
C.F.R. § 1.42. Appellant identifies TOTAL SA as the real party in interest.
Appeal Br. 2.
2 Our Decision refers to the Appellant’s Appeal Brief filed January 16, 2018
(“Appeal Br.”); the Reply Brief filed May 21, 2018 (“Reply Br.”); the
Examiner’s Answer mailed March 19, 2018 (“Ans.”); the Final Office
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STATEMENT OF THE CASE
Appellant’s invention relates to “a method implemented by [a]
computer for simulating karstification phenomena in a karst zone [typically,
insular].” Spec. 2:14–15. Karstification “describes the phenomenon by
which a rock is fashioned by the dissolving of carbonates, for example, in
water.” Spec. 1:8–9. “The so-called ‘insular’ karstification is a
karstification produced notably in the particular areas formed by islands and
the shoreline by the dissolving of the carbonates in the beat zone of the
aquifer table and in the so-called saltwater wedge zone (area of chemical
contact with fresh water and sea water).” Spec. 1:22–25.
Claims 1, 9, and 10 are independent. Claim 1 is representative of
Appellant’s invention on appeal, reproduced below:
1. A method implemented by computer for simulating
karstification phenomena in a real insular karst zone,
comprising:
a/ receiving a geological model of the karst zone, this
model comprising at least one local geological parameter that is
a function of the local coordinates in this model;
b/ simulating the displacement of a particle in the
geological model, said particle having coordinates in said
model, said displacement being probabilized by taking into
account:
at least the local geological parameter, and
at least one advective direction, this advective
direction being a function of said coordinates of the particle in
the geological model;
c/ modifying the geological parameter according to
the displacement of the particle and according to an
aggressivity of the particle, said aggressivity being a capacity of
the particle to erode rocks;

Action mailed August 15, 2017 (“Final Act.”); and the original Specification
filed February 6, 2015 (“Spec.”).
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in which the aggressivity of the particle is a function of
said coordinates of the particle.

App. Br. 22 (Claims App.).

EXAMINER’S REJECTION
Claims 1–7 and 9–10 stand rejected under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter. Final Act. 2.

ANALYSIS
In support of the 35 U.S.C. § 101 rejection of claims 1–7 and 9–10,
the Examiner determines Appellant’s claims are directed to “modification of
parameters in a geological model using a mathematical function which is
data manipulation using a mathematical formula,” and are similar or
analogous to the claims found by the Federal Circuit to be patent-ineligible
in Digitech Image Techs., LLC v. Electronics for Imaging, 758 F.3d 1344
(Fed. Cir. 2014) (holding that “a process of organizing information through
mathematical correlations” is an abstract idea). Ans. 3, 7.
The Examiner also determines the additional elements (i.e.,
“computer” recited in claim 1, “device” recited in claim 9, and “data-
processing unit” and “computer program” recited in claim 10), when
analyzed individually or in combination, do not amount to significantly more
than the abstract idea because these additional elements are “generic
computer components performing generic computing functions.” Ans. 8.
Legal Framework
To determine whether claims are patent eligible under
35 U.S.C. § 101, we apply the Supreme Court’s two-step framework
articulated in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208 (2014).
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First, we determine whether the claims are directed to a patent-ineligible
concept: laws of nature, natural phenomena, and abstract ideas. See Alice,
573 U.S. at 216. If so, we then proceed to the second step to consider the
elements of the claims “individually and ‘as an ordered combination’” to
determine whether there are additional elements that “‘transform the nature
of the claim’ into a patent-eligible application.” Id. at 217. In other words,
the second step is to “search for an ‘inventive concept’—i.e., 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.’” Id. at 218 (quotation marks omitted).
The Federal Circuit has described the Alice step-one inquiry as
looking at the “focus” of the claims, their “character as a whole,” and the
Alice step-two inquiry as looking more precisely at what the claim elements
add—whether they identify an “inventive concept” in the application of the
ineligible matter to which the claim is directed. See Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335–36 (Fed. Cir. 2016); see also Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015).
In an effort to achieve clarity and consistency in how the U.S. Patent
and Trademark Office (the “Office”) applies the Supreme Court’s two-step
framework, the Office has published revised guidance interpreting governing
case law and establishing a prosecution framework for all patent-eligibility
analysis under Alice and 35 U.S.C. § 101 effective as of January 7, 2019.
See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg.
50–57 (Jan. 7, 2019); see also USPTO October 2019 Update: Subject Matter
Eligibility, 84 Fed. Reg. 55942–53 (Oct. 17, 2019) (Updating the guidance
promulgated in January 2019 with “examples as well as a discussion of
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various issues raised by the public comments.”). “All USPTO personnel are,
as a matter of internal agency management, expected to follow the
guidance.” See 2019 Revised Guidance, 84 Fed. Reg. 51; see also October
2019 Update.
2019 Revised Guidance, 84 Fed. Reg.
Under the 2019 Revised Guidance and the October 2019 Update, we
first look under Alice step 1 or “Step 2A” to whether the claim recites:
(1) Prong One: any judicial exceptions, including certain
groupings of abstract ideas (i.e., [i] mathematical concepts,
[ii] mental processes—concepts performed in the human
mind (including an observation, evaluation, judgment,
opinion), or [iii] certain methods of organizing human
activity such as a fundamental economic practice or
managing personal behavior or relationships or interactions
between people); and

(2) Prong Two: additional elements that integrate the judicial
exception into a practical application (see Manual of Patent
Examining Procedure (“MPEP”) §§ 2106.05(a)–(c), (e)–
(h)).2F3
See 2019 Revised Guidance, 84 Fed. Reg. 51–52, 55, Revised Step 2A,
Prong One (Abstract Idea) and Prong Two (Integration into A Practical
Application). Only if a claim: (1) recites a judicial exception; and (2) does
not integrate that exception into a practical application, do we then evaluate
whether the claim provides an “inventive concept” under Alice step 2 or
“Step 2B.” See 2019 Revised Guidance, 84 Fed. Reg. 56; see also Alice,
573 U.S. at 217–18. For example, we look to whether the claim:

3 All references to the MPEP are to the Ninth Edition, Revision 08.2017
(rev. Jan. 2018).
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1) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, conventional” in the field
(see MPEP § 2106.05(d)); or

2) simply appends well-understood, routine, and conventional
activities previously known to the industry, specified at a
high level of generality, to the judicial exception.

See 2019 Revised Guidance, 84 Fed. Reg. 56.
In the briefing, Appellant refers to prior USPTO guidance regarding
35 U.S.C. § 101, including: (1) 2014 Interim Guidance on Patent Subject
Matter Eligibility, 79 Fed. Reg. 74,618 (December 16, 2014) and (2) May
2016 Subject Matter Eligibility Update, 81 Fed. Reg. 27,381 (May 6, 2016).
Final Act. 6–20. However, 2019 Revised Guidance has superseded all prior
guidance. See 2019 Revised Guidance, 84 Fed. Reg. 52; see also October
2019 Update: Subject Matter Eligibility, 17. As such, we review the 101
rejection de novo (Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed.
Cir. 2012)) in accordance with the 2019 Revised Guidance below.
Alice/Mayo—Step 1 (Abstract Idea)
Step 2A–Prongs 1 and 2 identified in the Revised Guidance
Step 2A—Prong 1
Appellant argues “the Examiner has failed to present a prima facie
case on ineligibility” because: (1) “the Examiner misstates and
oversimplifies the Applicant’s claims;” (2) “the Examiner makes no attempt
to carefully correlate the claims to specific case law relevant to the
judicially-created exception being applied;” and (3) “the Examiner’s
analysis does not look at the claims as a whole.” Appeal Br. 11–17 (citing
McRO, Inc. dba Planet Blue v. Bandai Namco Games America Inc., 837
F.3d 1327 (Fed. Cir. 2016)) (emphasis omitted). In addition, Appellant
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argues “Appellant’s claimed method (and related devices and storage
medium) for simulating karstification phenomena in a real insular karst zone
and its various steps cannot be accurately characterized as a mere concept of
mathematically modifying parameters.” Reply Br. 5.
Appellant’s arguments are not persuasive. First, as recognized by the
Federal Circuit, “the prima facie case is merely a procedural device that
enables an appropriate shift of the burden of production.” Hyatt v. Dudas,
492 F.3d 1365, 1369 (Fed. Cir. 2007) (citing In re Oetiker, 977 F.2d 1443,
1445 (Fed. Cir. 1992)). The court has held that the USPTO carries its
procedural burden of establishing a prima facie case when its rejection
satisfies the requirements of 35 U.S.C. § 132 by notifying the applicant of
the reasons for rejection, “together with such information and references as
may be useful in judging of the propriety of continuing the prosecution of
[the] application.” In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011). Thus,
all that is required of the Office is that it set forth the statutory basis of the
rejection in a sufficiently articulate and informative manner as to meet the
notice requirement of 35 U.S.C. § 132. Id.; see also Chester v. Miller, 906
F.2d 1574, 1578 (Fed. Cir. 1990) (Section 132 “is violated when a rejection
is so uninformative that it prevents the applicant from recognizing and
seeking to counter the grounds for rejection.”). Appellant does not contend
that the Examiner’s rejection under 35 U.S.C. § 101 cannot be understood or
that the Examiner’s rejection, otherwise, fails to satisfy the notice
requirements of 35 U.S.C. § 132.
Second, “[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). The Examiner was required to review all claims at some
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level of generalization and determine whether those claims are directed to an
abstract idea under Alice step 1. Because there was no single definition of
an abstract idea at the time, the Examiner was required “to examine earlier
cases in which a similar or parallel descriptive nature can be seen—what
prior cases were about, and which way they were decided.” See Amdocs
(Isr.) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016);
see also accord USPTO Memorandum, JULY 2015 UPDATE: SUBJECT
MATTER ELIGIBILITY, 3 (July 30, 2015). In this case, the Examiner has
determined the steps (e.g., receiving, simulating, and modifying) recited in
Appellant’s claims are similar to the claims in Digitech as required by the
USPTO’s “2014 Interim Guidance on Patent Subject Matter Eligibility,” 79
Fed. Reg. 74618 (Dec. 16, 2014), in effect at the time the rejection was
made, i.e., on Mar. 18, 2016. Ans. 3, 7.
Under the October 2019 Update: Subject Matter Eligibility, 84 Fed.
Reg. 55942–53 (Oct. 17, 2019), we agree with the Examiner’s determination
that the claims recite “modification of parameters in a geological model
using a mathematical function” and include steps of data manipulation or
organization through mathematical correlations, which are similar to
Digitech and, thus, are an abstract idea identified in the Revised Guidance.
Ans. 3, 7; see also Revised Guidance, 84 Fed. Reg. 52 (describing an
abstract idea category of “Mathematical concepts—mathematical
relationships, mathematical formulas or equations, mathematical
calculations”); Gottschalk v. Benson, 409 U.S. 63 (1972) (holding that a
process of converting binary-coded decimal (BCD) numerals into pure
binary numerals including a series of mathematical calculations is an
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abstract idea); Parker v. Flook, 437 U.S. 584 (1978) (holding that a process
for updating an alarm limit via mathematical formula is an abstract idea).
The claim language, in light of the Specification, supports the
Examiner’s determination that the claims are directed to an abstract idea.
See Ans. 3, 7. Particularly, Appellant’s Specification describes “a method
implemented by [a] computer for simulating karstification phenomena in a
karst zone [typically, insular].” Spec. 2:14–15. Karstification “describes the
phenomenon by which a rock is fashioned by the dissolving of carbonates,
for example, in water.” Spec. 1:8–9. Appellant’s claims 1, 9, and 10 recite
“simulating the displacement of a particle in [a] geological model,” via
mathematical probability relationships of a local geological parameter and
advective directions (e.g., coordinates of the particle) in the geological
model, and then “modifying the geological parameter,” via mathematical
correlations, i.e., “according to the displacement of the particle and
according to an aggressivity of the particle.” As correctly recognized by
Appellant, the steps recited in claims 1, 9, and 10 are nothing more than data
organization and manipulation through mathematical correlations, similar to
Digitech. Ans. 3, 7.
Information, as such, is intangible, and data analysis and algorithms
are also abstract ideas. See, e.g., Microsoft Corp. v. AT&T Corp., 550 U.S.
437, 451 n.12 (2007); see also Alice, 134 S.Ct. at 2355; Parker v. Flook, 437
U.S. at 589, 594–95 (“Reasoning that an algorithm, or mathematical
formula, is like a law of nature, Benson applied the established rule that a
law of nature cannot be the subject of a patent.”); Benson, 409 U.S. at 71–
72. “[C]ollecting information, including when limited to particular content
(which does not change its character as information),” and “analyzing
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information by steps people go through in their minds, or by mathematical
algorithms, without more,” are “within the realm of abstract ideas.” Electric
Power Group, LLC, v. Alstom, 830 F.3d 1350, 1353–54 (Fed. Cir. 2016); see
also Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1349
(Fed. Cir. 2015); Digitech, 758 F.3d 1344, 1351 (Fed. Cir. 2014); and
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir.
2011). That is, “[w]ithout additional limitations, a process that employs
mathematical algorithms to manipulate existing information to generate
additional information is not patent eligible.” Digitech, 758 F.3d at 1349–50
(“Data in its ethereal, non-physical form is simply information that does not
fall under any of the categories of eligible subject matter under section
101.”).
Thus, under Step 2A, Prong One, we agree with the Examiner that
Appellant’s claims 1, 9, and 10 recite mathematical concepts as identified in
the 2019 Revised Guidance and, thus, an abstract idea. See 2019 Revised
Guidance, 84 Fed. Reg. 52 (Describing an abstract idea category of
“Mathematical concepts—mathematical relationships, mathematical
formulas or equations, mathematical calculations.”).
According to the Federal Circuit, “collecting information, including
when limited to particular content (which does not change its character as
information),” falls within the realm of abstract ideas. Elec. Power Grp.,
830 F.3d at 1353; see also, e.g., Internet Patents Corp., 790 F.3d at 1346;
OIP Techs., 788 F.3d at 1363; Content Extraction & Transmission LLC v.
Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014);
Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351
(Fed. Cir. 2014); CyberSource, 654 F.3d at 1370. Likewise, “analyzing
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information by steps people go through in their minds, or by mathematical
algorithms, without more,” is “essentially mental processes within the
abstract-idea category.” See Elec. Power Grp., 830 F.3d at 1353; see also,
e.g., In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 613 (Fed. Cir.
2016); Digitech, 758 F.3d at 1351; SmartGene, Inc. v. Advanced Biological
Labs., SA, 555 F. App’x 950, 955 (Fed. Cir. 2014); Bancorp Servs., 687 F.3d
at 1278; CyberSource Corp., 654 F.3d at 1372; SiRF Tech., Inc. v. Int’l
Trade Comm’n, 601 F.3d 1319, 1333 (Fed. Cir. 2010); Parker v. Flook, 437
U.S. 584, 589–90 (1978); Gottschalk v. Benson, 409 U.S. at 67. And, the
Federal Circuit has recognized that merely presenting the results of abstract
processes of collecting and analyzing information, without more (such as
identifying a particular tool for presentation), is abstract as an ancillary part
of such collection and analysis. See, e.g., Content Extraction, 776 F.3d at
1347; see also Ultramercial, Inc. v. Hulu, LLC, 772 F.3d at 715.
During the oral hearing conducted on February 7, 2020, Appellant
argued that the claims are similar to the claim set forth in Example 38 of the
2019 Revised Guidance and, as such, should be patent-eligible under 35
U.S.C. § 101. In particular, Example 38 describes an improved digital
computer simulation of an analog audio mixer to address poor sound quality
replication of previously known prior art digital simulation techniques. See
Subject Matter Eligibility Examples: Abstract Ideas, Examples 37 to 42, 6–7
(Jan. 7, 2019), available at https://www.uspto.gov/sites/default/files/
documents/101_examples_37to42_20190107.pdf. According to Example
38, the claim is described as follows:
A method for providing a digital computer simulation of an
analog audio mixer comprising:
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[1] initializing a model of an analog circuit in the digital
computer, said model including a location, initial value, and a
manufacturing tolerance range for each of the circuit elements
within the analog circuit;
[2] generating a normally distributed first random value
for each circuit element, using a pseudo random number
generator, based on a respective initial value and manufacturing
tolerance range; and
[3] simulating a first digital representation of the analog
circuit based on the first random value and the location of each
circuit element within the analog circuit.

Id. at 6 (bracketing added).
We do not agree with Appellant’s argument that claims 1, 9, and 10
are similar to Example 38. First, the recited method of Example 38 “begins
with a model of an analog circuit representing an audio mixing console,”
including: (1) “a location of all the circuit elements within the circuit,” (2)
“an initial value for each of the circuit elements,” and (3) “a manufacturing
tolerance range for each of the circuit elements.” Id. A “randomized
working value of each element is then determined using a normally
distributed pseudo random number generator (PRNG) based on” (2) “the
initial value of the circuit element” and (3) “the manufacturing tolerance
range.” Id. The model “is then simulated to create a digital representation
of the analog circuit, which is then presented to the user, via a GUI, to test
the sound quality of the digital representation.” Id. This way, the invention
of Example 38 can advantageously replicate the sound quality of an analog
audio mixer more efficiently and effectively by accounting for the slight
variances in analog circuit values that are generated during the circuit’s
manufacturing.
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In contrast to Example 38 of the 2019 Revised Guidance, Appellant’s
claims 1, 9, and 10 purport to “simulat[e] the displacement of a particle in a
geological model” by “probabiliz[ing]” (i.e., calculating the probability of)
the displacement and modifying the parameter according to the calculated
displacement,” as recognized by the Examiner. Appeal Br. 22 (Claims
Appendix); Ans. 9. The Specification confirms that this probability
determination involves mathematical calculations. See Spec. 15:11–15,
16:22–29 (reciting mathematical equations for determining probability).
“[S]imulating” a geological model using probability calculations and then
“modifying” via mathematical correlations, i.e., “according to the
displacement of the particle and according to an aggressivity of the particle”
as recited in Appellant’s claims 1, 9, and 10 are nothing more than data
manipulation, via mathematical correlations, and, as such, are insufficient to
advance any underlying technology as described in Example 38 of the 2019
Revised Guidance. The recited probability calculation and the “modifying
the geological parameter” based on that calculation describes “mathematical
relationships, mathematical formulas or equations, mathematical
calculations,” which are examples of “[m]athematical concepts.” 84 Fed.
Reg. at 52.
Because the claims recite an abstract idea, we next proceed to Step 2A,
Prong Two of the Revised Guidance, to determine whether the claims
integrate the recited idea into a practical application. See 2019 Revised
Guidance, 84 Fed. Reg. 54.
Step 2A—Prong 2 (Integration into Practical Application)
Under Step 2A, Prong Two of the Revised Guidance, we discern no
additional element (or combination of elements) recited in Appellant’s
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claims 1, 9, and 10 that integrate(s) the judicial exception into a practical
application. See 2019 Revised Guidance, 84 Fed. Reg. at 54–55 (“Prong
Two”).
For example, Appellant’s additional elements (i.e., “computer” recited
in claim 1, “device” recited in claim 9, and “data-processing unit” and
“computer program” recited in claim 10) do not (1) improve the functioning
of a computer or other technology, (2) are not applied with any particular
machine (except for generic computer components), (3) do not effect a
transformation of a particular article to a different state, and (4) are not
applied in any meaningful way beyond generally linking the use of the
judicial exception to a particular technological environment, such that the
claim as a whole is more than a drafting effort designed to monopolize the
exception. See MPEP §§ 2106.05(a)–(c), (e)–(h).
Appellant argues that, like the claims in McRO, “the claims at issue
describe a specific way to solve the problem” relating to “an accurate
simulation of a real insular karst zone such that zones of the subsoil
exhibiting lithological characteristics can be determined,” i.e., “a simulation
based on a real geological parameters and coordinates that was not
previously performable” “rooted in computer technology based upon
specific computer-implemented simulation of a tangible, real insular karst
zone, not based upon an abstract idea or notion.” Reply Br. 5–8.
We do not agree. First, there is no support from Appellant’s
Specification for any feature recited in Appellant’s claims 1, 9, and 10 that
would improve any existing technological process or computer-related
technology, as Appellant argues. Appeal Br. 16; see also Reply Br. 6–8. As
correctly recognized by the Examiner, “[t]here is nothing in the claim to
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suggest that, once the modification step is performed after simulation, the
computer functionalities are improved.” Ans. 9. “The focus of the claims is
not on such improvement in computers,” but rather uses “computers as
tools” to perform the abstract idea. Id. Using generic computing
components (i.e., “computer” recited in claim 1, “device” recited in claim 9,
and “data-processing unit” and “computer program” recited in claim 10) as a
tool, for example, as shown in Appellant’s Figure 7, to perform an abstract
idea is insufficient to show “integration into a practical application.” See
MPEP § 2106.05(f). Instead, these generic computing components are
simply the automation of the abstract idea, of simulating karstification
phenomena in a karst zone. OIP Techs., 788 F.3d at 1362–63. “[M]erely
requiring generic computer implementation,” “does not move into section
101 eligibility territory.” buySAFE, 765 F.3d at 1354.
Second, Appellant’s reliance on McRO is misplaced. For example,
McRO’s ’576 patent (U.S. Patent No. 6,307,576) describes computer
software for matching audio to a 3D animated mouth movement to provide
lip-synched animation. McRO’s claims contain: (i) specific limitations
regarding a set of rules that “define[] a morph weight set stream as a
function of phoneme sequence and times associated with said phoneme
sequence” to enable computers to produce “accurate and realistic lip
synchronization and facial expressions in animated characters” and, when
viewed as a whole, are directed to: (ii) a “technological improvement over
the existing, manual 3–D animation techniques” that uses “limited rules in a
process specifically designed to achieve an improved technological result in
conventional industry practice.” McRO, 837 F.3d at 1313, 1316.
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In contrast to McRO, Appellant’s Specification and claims do not
describe technological improvements or specific improvements to the way
computers operate. Instead, Appellant’s claims describe “simulating” a
geological model and then “modifying” via mathematical correlations, i.e.,
“according to the displacement of the particle and according to an
aggressivity of the particle” and, in our view, do not make any specific
improvement to the underlying technology or the way computers operate.
For these reasons, we determine that: (1) Appellant’s “additional
elements” recited in claims 1, 9, and 10 do not integrate the recited judicial
exception into a practical application and, as such; and (2) Appellant’s
claims are directed to an abstract idea. See 2019 Revised Guidance (Revised
Step 2A, Prong Two), 84 Fed. Reg. at 54–55.
Alice/Mayo—Step 2 (Inventive Concept)
Step 2B identified in the Revised Guidance
Under the 2019 Revised Guidance, only if a claim: (1) recites a
judicial exception; and (2) does not integrate that exception into a practical
application, do we then; (3) look to whether the claim adds a specific
limitation beyond the judicial exception that is not “well-understood,
routine, conventional” in the field (see MPEP § 2106.05(d)) or, instead, it
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 Revised Guidance, 84 Fed. Reg. at 56. However, after
considering the elements of claims 1, 9, and 10, both individually and in
combination, we find that no element or combination of elements recited
contains any “inventive concept” or adds “significantly more” to transform
the abstract concept into a patent-eligible application. Alice, 573 U.S. 208 at
221.
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Appellant argues “[t]he Examiner has failed to make the required
findings of fact to show how the claimed simulation is well known, routine,
or conventional” as per Berkheimer v. HP Inc., 881 F.3d 1360, 1366 (Fed.
Cir. 2018). We do not agree.
In Berkheimer, the Federal Circuit held that “[t]he patent eligibility
inquiry may contain underlying issues of fact.” Berkheimer, 881 F.3d at
1365 (quoting Mortgage Grader, Inc. v. First Choice Loan Servs. Inc., 811
F.3d 1314, 1325 (Fed. Cir. 2016) (“The § 101 inquiry ‘may contain
underlying factual issues.”’)). However, the Federal Circuit also held that
“[w]hen there is no genuine issue of material fact regarding whether the
claim element or claimed combination is well-understood, routine, [and]
conventional to a skilled artisan in the relevant field, this issue can be
decided on summary judgment as a matter of law.” Id. at 1368 (emphasis
added). This qualification has been reiterated.
If there is a genuine dispute of material fact, Rule 56 requires that
summary judgment be denied. In Berkheimer, there was such a
genuine dispute for claims 4–7, but not for claims 1–3 and 9 . . . .
[I]n accordance with Alice, we have repeatedly recognized the
absence of a genuine dispute as to eligibility for the many claims
that have been defended as involving an inventive concept based
merely on the idea of using existing computers or the Internet to
carry out conventional processes, with no alteration of computer
functionality.

Berkheimer v. HP Inc., 890 F.3d 1369, 1371–73 (Fed. Cir. 2018) (Order, On
Petition for rehearing en banc, May 31, 2018) (Moore, J., concurring); see
also Aatrix Software, Inc. v. Green Shades Software, Inc., 890 F.3d 1354,
1368 (Fed. Cir. 2018) (“A factual allegation or dispute should not
automatically take the determination out of the court’s hands; rather, there
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needs to be justification for why additional evidence must be considered—
the default being a legal determination.”).
Here, the Specification indisputably shows that (1) the “computer”
recited in claim 1, (2) “device” recited in claim 9, and (3) “data-processing
unit” and “computer program” recited in claim 10, whether taken
individually or in combination, were conventional at the time of filing.
Spec. 19:19–24; Fig. 7. Appellant’s Specification also acknowledges that
modeling of the karst zone was conventional at the time of filing. Spec.
1:26–34. Accordingly, no genuine issue of material fact exists as to the
well-understood, routine, or conventional nature of the computer
components used to simulate karstification phenomena in an insular karst
zone as claimed.
Moreover, Berkheimer is limited to Alice step 2 and is only applicable
after a determination is made that a patent claim is directed to an abstract
idea under Alice step 1. The question of whether a claim is directed to an
abstract idea under Alice step 1 is still a question of law. See, e.g., In re
Wang, 737 F. App’x 534, 535 (Fed. Cir. 2018); see also Intellectual
Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1338 (Fed. Cir.
2017); and Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1331
(Fed. Cir. 2015) (“We review questions concerning compliance with the
doctrinal requirements of [section] 101 of the Patent Act (and its
constructions) as questions of law, without deference to the trial forum.”).
As previously discussed, we find the additional elements beyond the abstract
idea recited in Appellant’s claims 1, 9, and 10 (e.g., “computer” recited in
claim 1, “device” recited in claim 9, and “data-processing unit” and
“computer program” recited in claim 10) do not transform the abstract idea
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into a patent eligible invention. 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
Holdings, 773 F.3d at 1256 (citing Alice, 573 U.S. at 222).
Finally, the law is clear that the claim element(s) to be considered
under Alice step 2 cannot be part of the abstract idea itself. Berkheimer v.
HP Inc., 890 F.3d 1369, 1374 (Fed. Cir. 2018) (Moore, J., concurring)
(“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.”); BSG Tech LLC v. BuySeasons,
Inc., 899 F.3d 1281, 1283 (Fed. Cir. 2018) (indicating same).
“Groundbreaking, innovative, or even brilliant discovery does not by itself
satisfy the [section] 101 inquiry.” Ass’n for Molecular Pathology v. Myriad
Genetics, Inc., 569 U.S. 576, 591 (2013).
Preemption
Lastly, Appellant argues the “claims here do not pre-empt a broad
building block that would unduly obstruct innovation” and “there is no risk
that the claims could foreclose innovation by others in the manner in a
significantly preclusive way.” Appeal Br. 19–20.
We disagree. The lack of preemption is a factor to consider for patent
eligibility, but it is not by itself sufficient for patent eligibility. As the
Federal Circuit explicitly recognized, “the absence of complete preemption
does not demonstrate patent eligibility.” See McRO, 837 F.3d at 1315
(quoting Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379
(Fed. Cir. 2015)); see also Ans. 11–12. Furthermore, “[w]here a patent’s
claims are deemed only to disclose patent ineligible subject matter” under
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the Alice/Mayo framework, “preemption concerns are fully addressed and
made moot.” See Ariosa, 788 F.3d at 1379.
Because Appellant’s independent claims 1, 9 and 10 are directed to a
patent-ineligible abstract concept and do not recite an “inventive concept” or
provide a solution to a technical problem under the second step of the Alice
analysis, we sustain the Examiner’s 35 U.S.C. § 101 rejection of
independent claims 1, 9, and 10, and their dependent claims 2–7, which are
not separately argued.

CONCLUSION
On the record before us, we conclude Appellant has not demonstrated
the Examiner erred in rejecting claims 1–7 and 9–10 under 35 U.S.C. § 101.
As such, we AFFIRM the Examiner’s rejection of claims 1–7 and 9–10
under 35 U.S.C. § 101.

DECISION SUMMARY
In Summary:

Claims
Rejected
35 U.S.C.§ Reference(s)/Basis Affirmed Reversed
1–7, 9–10 101 Eligibility 1–7, 9–10
Overall
Outcome
1–7, 9–10

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).

AFFIRMED