Verint Systems Ltd.

Patent Trials and Appeals Board

Jun 5, 2020

15007699 - (D) (P.T.A.B. Jun. 5, 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.
15/007,699 01/27/2016 Uri Segal 10171-431US1 4399
75158 7590 06/05/2020
Verint Systems, Inc.
Meunier Carlin & Curfman, LLC
999 Peachtree Street NE
Suite 1300
Atlanta, GA 30309
EXAMINER
ADESANYA, OLUJIMI A
ART UNIT PAPER NUMBER
2658
NOTIFICATION DATE DELIVERY MODE
06/05/2020 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):
KCarroll@mcciplaw.com
docketing@mcciplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________ 

Ex parte URI SEGAL, OANA SIDI, RON WEIN, and DANIEL BAUM
________________

Appeal 2019-002388
Application 15/007,699
Technology Center 2600
________________

Before JOHNNY A. KUMAR, JOHN A. EVANS, and
JASON J. CHUNG, Administrative Patent Judges.

KUMAR, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Introduction
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals the Final Rejection
of claims 3–6, 8–13, and 15–24. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
Invention
The invention relates to automated data processing, specifically the
application of ontology programming to process and analyze communication
data. Spec.¶ 2. In particular, a set of significant phrases and a set of
significant phrase co-occurrences are extracted from an input set of
documents. Id. ¶ 4. Independent claim 3 is reproduced below:
3. A method for automatically extracting a set of significant
phrases from an input set of documents that originate from a common
source and an input generic language model, the method comprising:

accepting, by a computing system, the generic language model
and the set of documents as inputs, wherein the generic language
model models a language distribution of generic texts that are not
specific to the common source;

generating, by the computing system, a source-specific language
model by at least: subdividing each document of the set of documents
into meaning units, each meaning unit comprising one or more n-
grams, counting the n-grams of each meaning unit up to a
predetermined order, and once the n-grams are counted, source-
specific language-model probabilities are estimated based on the
counts and the source-specific language model is obtained;

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. According to Appellant, Verint Systems Ltd. is the real
party in interest. Appeal Br. 3.
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creating, by the computing system, a set of candidate phrases
where each candidate in the set of candidates is an n-gram, wherein
creating the set of candidates comprises computing a prominence
score for each n-gram of each meaning unit in the set of documents,
and if the prominence score of a given n-gram is above a prominence
score threshold and if the given n-gram is not an unigram, then a
stickiness score for the given n-gram is calculated based on a
probability of the given n-gram in the source-specific language model
as compared to a probability of a constituent n-gram of the n-gram in
the source-specific language model, wherein the prominence score of
the given n-gram is calculated based on a probability of the given n-
gram in the source-specific language model as compared to the
generic language model, and wherein the given n-gram is added to the
set of candidate phrases based on whether the stickiness score is
greater than a stickiness score threshold;

filtering, by the computing system, the set of candidate phrases
by at least calculating a frequency for each of the candidate phrases,
calculating an overall phrase score for each of the candidate phrases,
and selecting, by the computer system, as the set of significant phrases
those phrases of the candidate phrases for which the overall phrase
scores are above a threshold phrase score; and

storing, by the computing system, the set of significant phrases.

Appeal Br. 22–23; Claims App. (emphases added to indicate additional, i.e.,
non-abstract, elements).
REJECTION
Claims 3–6, 8–13, and 15–24 stand rejected under 35 U.S.C. § 101 as
being directed to patent ineligible subject matter. Final Act. 3–5.

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ANALYSIS
We have only considered those arguments that Appellant actually
raised in the Briefs.2 Arguments Appellant could have made, but chose not
to make, in the Briefs have not been considered and are deemed to be
waived. See 37 C.F.R. § 41.37(c)(1)(iv) (2019).
A. The Examiner’s Rejections and Appellant’s Arguments
The Examiner concludes that the present claims recite mental
processes achievable by a human using a pen and paper. Final Act. 3–4;
Ans. 5–6 (citing Digitech Image Techs. v. Elecs. for Imaging, 758 F.3d 1344
(Fed. Cir. 2014); Content Extraction and Transmission, LLC v. Wells Fargo
Bank, 776 F.3d 1343 (Fed. Cir. 2014)). The Examiner further concludes that
the abstract idea is not integrated into a practical application, because the
claims, rather than being directed to technological improvements to the
computer or field, “involve comparing received information to known
information when determining significant information/text, i.e. steps
achievable by a generic computer” (Final Act. 3; see also Ans. 6), and “do
not improve the existing technology beyond merely extracting phrases from
a document and storing the extracted phrases, and linking the process to a
generic computer.” Ans. 7. The Examiner also determines that the claims
do not recite additional elements that amount to significantly more than the
judicial exception, because the additional elements amount to no more than
mere instructions to implement the idea on a generic computer. Final Act. 4;
Ans. 6.

2 Claims 4–6, 8–13, and 15–24 are not argued separately from claim 3 in
either of Appellant’s briefs (Appeal Br. 8–21; Reply Br. 2–7). Therefore,
claims 4–6, 8–13, and 15–24 will not be separately addressed.
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Appellant argues that the claimed invention is not directed to an
abstract idea and cannot be performed by a human mind. Appeal Br. 12, 15.
Appellant further argues that the claims do not preempt the use of a judicial
exception because the claims tie meaningful actions to a practical
application. Reply Br. 6–7 (The claims “do not result in the monopolization
of a judicial exception . . . such that each claim, as a whole, is more than a
drafting effort designed to monopolize any judicial exception.”). Appellant
argues that the claims recite steps that amount to a practical application. Id.
at 3–5. Appellant contends that, unlike Digitech or Content Extraction, the
claimed invention solves a technological problem related to computer
technology, namely “how a computer system can process an input set of
documents using a generic language model to automatically extract
significant phrases in the set of documents” (Appeal Br. 16; see 14–15
(citing Spec. ¶ 69);3 see also Reply Br. 5–6), similar to the claims in McRO.4
See Appeal Br. 13–17. Appellant further argues that the claimed steps are
not well-known, generic, or conventional (id. at 19), and that absence of
prior art teaching the claimed steps is evidence that the steps are not well-
known or conventional. Id. Appellant avers that the Examiner’s analysis is
deficient, because the Examiner ignores the additional elements and does not
clearly explain why the additional elements, taken individually or as a
combination, do not add significantly more to the judicial exception. Id. at
19–21.

3 A paragraph “69” does not appear in Appellant’s Specification. The
quoted language (see Appeal Br. 15) appears to be from paragraph 51 of
Appellant’s Specification.
4 McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir.
2016)
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B. Principles of Law
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the U.S. 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. E.g., Alice Corp. v. CLS Bank Int’l, 573
U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-part framework, described in Mayo and Alice.
Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 75–77 (2012)). In accordance with that framework, we first
determine what concept the claim is “directed to.” See Alice, 573 U.S. at
219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making waterproof cloth, vulcanizing India
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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
Court held that “a claim drawn to subject matter otherwise statutory does not
become nonstatutory simply because it uses a mathematical formula.”
Diehr, 450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as
nothing more than a process for molding rubber products and not as an
attempt to patent a mathematical formula.”). Having said that, the Court
also indicated that a claim “seeking patent protection for that formula in the
abstract . . . is not accorded the protection of our patent laws, and this
principle cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment.” Id. (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.”).
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.
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C. USPTO Section 101 Guidance
In January 2019, the USPTO published revised guidance on the
application of § 101. 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019 Revised Guidance”).5 “All
USPTO personnel are, as a matter of internal agency management, expected
to follow the guidance.” Id. at 51; see also October 2019 Update at 1.
Under the 2019 Revised Guidance and the October 2019 Update, we
first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th ed.
Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).6
2019 Revised Guidance, 84 Fed. Reg. at 52–55.

5 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (the “October
2019 Update”) (available at
https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p
df).
6 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See 2019 Revised Guidance - Section III(A)(2), 84
Fed. Reg. 54–55.
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Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
Step 2B, 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.
2019 Revised Guidance, 84 Fed. Reg. at 52–56.
D. Step 2A, Prong 1
Patent eligibility under 35 U.S.C. § 101 is a question of law that is
reviewable de novo. See Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333
(Fed. Cir. 2012). Because claim 3 requires generating a source-specific
language model by subdividing, counting, and estimating probabilities;
creating a set of candidate phrases by calculating a prominence score and a
stickiness score, and comparing the stickiness score to a threshold; filtering
the set of candidate phrases by calculating a frequency of each of the
candidate phrases to create a set of significant phrases; and storing the
significant phrases, we conclude the non-emphasized portions of claim 3,
reproduced above (see supra at 2–3), recite concepts that can be practically
performed in the human mind or by using pen and paper (see Memorandum,
84 Fed. Reg. at 52 n.14), and mathematical calculations. Thus, the present
claims describe subject matter relating to mental processes and mathematical
concepts. Moreover, mental processes and mathematical concepts are types
of abstract ideas. See Memorandum, 84 Fed. Reg. at 52.
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The present claims recite concepts that be performed in the mind or by
using pen and paper, which falls under the category of mental processes (i.e.,
an abstract idea). Namely, the claims require features such as, “subdividing
each document of the set of documents into meaning units,” “counting the n-
grams of each meaning unit,” “if the prominence score of a given n-gram is
above a prominence score threshold,” “wherein the given n-gram is added to
the set of candidate phrases based on whether the stickiness score is greater
than a stickiness score threshold,” “filtering . . . the set of candidate
phrases,” “selecting . . . as the set of significant phrases those phrases of the
candidate phrases for which the overall phrase scores are above a threshold
phrase score,” and “storing . . . the set of significant phrases,” which are all
features that can be performed practically in the human mind or by using pen
and paper, and therefore are abstract ideas. In particular, these claim features
are directed to organizing, comparing, analyzing, and storing data, which are
concepts that have been held to be able to be performed mentally or
analogous to human mental work. See, e.g., Content Extraction and
Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343, 1345, 1347
(Fed. Cir. 2014) (claims directed to an application program interface
comprising a scanner that extracted data from hard copy documents, a
processor that recognized specific information from the extracted data, and a
memory that stored the information, were directed to the basic concept of
“data collection, recognition and storage” that humans have always
performed); Elec. Power Group, LLC v. Alstom, S.Z., 830 F.3d 1350, 1351,
1355 (Fed. Cir. 2016) (selecting, collecting, and analyzing information and
displaying results from the collecting and analyzing are ordinary mental
processes); see also MPEP 2106.04(a)(2). For example, Appellant’s
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Specification discloses that subdividing each document into meaning units
and counting the n-grams of each meaning unit may be counting the number
of words in each sentence (Spec. ¶¶ 43–46 (“[T]he meaning unit may be the
equivalent of a sentence” (id. ¶ 43); “an n-gram (a sequence of n words)”
(id. ¶ 45))), which can be done mentally or with pen and paper. Similarly,
the features of “if the prominence score of a given n-gram is above a
prominence score threshold” and “wherein the given n-gram is added to the
set of candidate phrases based on whether the stickiness score is greater than
a stickiness score threshold,” merely require comparing one number, i.e.,
prominence or stickiness score, and another number, i.e. prominence or
stickiness score threshold, respectively, and discarding the n-gram if the
score is lower than the threshold. Id. These claimed features, therefore, are
all tasks that humans routinely perform mentally and can be performed in
the mind.
The present claims further recite concepts relating to performing
mathematical calculations, which falls under the category of mathematical
concepts (i.e., an abstract idea). The claims require features such as,
“source-specific language-model probabilities are estimated,” “computing a
prominence score for each n-gram of each meaning unit,” “a stickiness score
for the given n-gram is calculated based on a probability of the given n-
gram . . . as compared to a probability of a constituent n-gram,” “the
prominence score of the given n-gram is calculated based on a probability,”
“calculating a frequency for each of the candidate phrases,” and “calculating
an overall phrase score,” which are all features directed to mathematical
concepts, and therefore are abstract ideas. See, e.g., Digitech Image Techs.,
LLC v. Elec. For Imaging, Inc., 758 F.3d 1344, 1350 (Fed. Cir. 2014) (a
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claimed process that organized information through mathematical
correlations, was an abstract idea) (citing Parker v. Flook, 437 U.S. 584, 595
(1978)); In re Abele, 684 F.2d 902, 908 (CCPA 1982) (claimed method
directed to calculating the difference between a local value and an average
value of data, was directed to a mathematical algorithm and therefore subject
matter ineligible); Versata Dev. Group v. SAP Am., Inc., 793 F.3d 1306,
1312–13 (Fed. Cir. 2015) (claimed method of determining a price of a
product based on arranging a hierarchy of organizational groups, associating
pricing information based on the hierarchy, and storing, retrieving, and
sorting the price information to determine the product price, was ineligible);
see also MPEP 2106.04(a)(2). Appellant’s Specification discloses that the
scores and probabilities recited in the claim are calculations to determine
statistical significance (Spec. ¶¶ 14, 45) that may use logarithmic-probability
equations (id. ¶¶ 4, 42, 45–47, 49), and that the frequency for each of the
candidate phrases may be calculated using mathematical integration. Id.
¶ 46. These types of mathematical equations may all be performed mentally
or with pen and paper.
Nevertheless, we must still determine whether the abstract idea is
integrated into a practical application, namely whether the claim applies,
relies on, or uses the abstract idea in a manner that imposes a meaningful
limit on the abstract idea, such that the claim is more than a drafting effort
designed to monopolize the abstract idea. See Guidance, 84 Fed. Reg. at 54–
55. We therefore (1) identify whether there are any additional recited
elements beyond the abstract idea, and (2) evaluate those elements both
individually and collectively to determine whether they integrate the
exception into a practical application. See id.
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Accordingly, we proceed to prong 2.
E. Step 2A, Prong 2
Here, the only elements in the claims beyond the abstract idea are “a
computing system,”7 “[a] set of documents,” “generic texts,” “[a] common
source,” “a processor,”8 and “a memory.”9 See 2019 Revised Guidance, 84
Fed. Reg. at 52. The additional elements of the present claims do not
integrate the abstract idea into a practical application because they do not
impose any meaningful limits on practicing the abstract idea for the
following reasons.
Appellant does not identify persuasively how the Specification sets
forth an improvement in technology. The USPTO October 2019 Patent
Eligibility Guidance Update (“Update”) addresses how we consider
evidence of improvement that is presented to us. The Update states:
the evaluation of Prong Two requires the use of the
considerations (e.g. improving technology, effecting a
particular treatment or prophylaxis, implementing with a
particular machine, etc.) identified by the Supreme Court and
the Federal Circuit, to ensure that the claim as a whole
“integrates [the] judicial exception into a practical application
[that] will apply, rely on, or use the judicial exception in a
manner that imposes a meaningful limit on the judicial
exception, such that the claim is more than a drafting effort
designed to monopolize the judicial exception.
Update, 11 (alterations in original) (emphases added). The Update
further states:
[d]uring examination, the examiner should analyze the

7 Claim 3 also recites “the computer system,” which appears to be referring
to the computing system, and is therefore not a separate element. Claims 10
and 17 do not recite a computing system.
8 A processor is recited only in claim 10.
9 A memory is recited only in claim 10.
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“improvements” consideration by evaluating the specification
and the claims to ensure that a technical explanation of the
asserted improvement is present in the specification, and that
the claim reflects the asserted improvement. Generally,
examiners are not expected to make a qualitative judgment on
the merits of the asserted improvement. If the examiner
concludes the disclosed invention does not improve technology,
the burden shifts to applicant to provide persuasive arguments
supported by any necessary evidence to demonstrate that one of
ordinary skill in the art would understand that the disclosed
invention improves technology. Any such evidence submitted
under 37 C.F.R. § 1.132 must establish what the specification
would convey to one of ordinary skill in the art and cannot be
used to supplement the specification. For example, in response
to a rejection under 35 U.S.C. § 101, an applicant could submit
a declaration under § 1.132 providing testimony on how one of
ordinary skill in the art would interpret the disclosed invention
as improving technology and the underlying factual basis for
that conclusion.
Id. at 13 (emphasis added) (footnotes and citations omitted).
We disagree with Appellant’s argument that the present claims are
directed to a technological innovation. Appeal Br. 14–15, 16–17 (citing
McRO; Spec. ¶ 69);10 Reply Br. 5–6. In this case, the Examiner concludes
that the present claims do not recite an improvement to technology, but
rather amount simply to instructions for using generic computer
components. Final Act. 3; Ans. 6–7. See Affinity Labs of Tex. v. DirecTV,
LLC, 838 F.3d 1253, 1264––65 (Fed. Cir. 2016); TLI Communications LLC
v. AV Auto. LLC, 823 F.3d 607, 612–13 (Fed. Cir. 2016) (a claim must
include more than conventional implementation on generic components or

10 A paragraph “69” does not appear in Appellant’s Specification. The
quoted language (see Appeal Br. 15) appears to be from paragraph 51 of
Appellant’s Specification.
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machinery to qualify as an improvement to an existing technology).
Consequently, we focus on any evidence Appellant cites as discussed in the
Update.
Here, Appellant argues that the present claims provide technological
improvements that include a computer system that can automatically extract
a set of significant phrases from an input set of documents (Appeal Br. 14–
15, 16; Reply Br. 6) and filtering out false phrases that are not significant.
Appeal Br. 15 (citing Spec. ¶ 69).11 However, these alleged improvements
are improvements to textual analysis and determining statistical significance,
which fall within categories of abstract ideas, as discussed supra, not an
improvement to technology. “a claim for a new abstract idea is still an
abstract idea.” Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138,
1151 (Fed. Cir. 2016). “[U]nder the Mayo/Alice framework, a claim
directed to a newly discovered law of nature (or natural phenomenon or
abstract idea) cannot rely on the novelty of that discovery for the inventive
concept necessary for patent eligibility . . . .” Genetic Techs. Ltd. v. Merial
L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016). Nor does Appellant’s citation
to the Specification (see Appeal Br. 15) demonstrate that the problem to be
solved is a technological problem, but rather is in the realm of determining
statistical significance in a manner that merely provides instructions to a
generic computer operating in a generic manner. See id.; Spec. ¶ 51.
Furthermore, we find unavailing Appellant’s argument that the claims
recite steps which demonstrate a practical application (Reply Br. 3–6),

11 A paragraph “69” does not appear in Appellant’s Specification. The
quoted language (see Appeal Br. 15) appears to be from paragraph 51 of
Appellant’s Specification.
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because the additional elements in the claims, namely a computing system, a
set of documents, generic texts, a common source, a processor, and a
memory, do not, either individually or in combination, integrate the abstract
idea into a practical application. Appellant’s Specification discloses that
these elements encompass generic components, such as a generic computer
(Spec. ¶¶ 58–59), a generic processor (id. ¶ 60), a generic memory or storage
system (id. ¶¶ 61–62), a generic set of documents (id. ¶¶ 13, 28), generic
texts (id. ¶ 38), and a generic common source. Id. Merely adding generic
hardware and computer components to perform abstract ideas does not
integrate those ideas into a practical application. See Guidance, 84 Fed.
Reg. at 55 (identifying “merely includ[ing] instructions to implement an
abstract idea on a computer” as an example of when an abstract idea has not
been integrated into a practical application).
In addition, the additional elements “[a] set of documents,” “generic
texts,” and “the common source” do not themselves carry out any of the
steps recited in the claims. See MPEP § 2106.05(g) (“The term ‘extra-
solution activity’ can be understood as activities incidental to the primary
process or product that are merely a nominal or tangential addition to the
claim.”). Rather, we conclude that these additional elements merely act as
data inputs for carrying out the abstract ideas recited in the claims, such that
they constitute extra-solution activity. Id. (“Extra-solution activity includes
both pre-solution and post-solution activity. An example of pre-solution
activity is a step of gathering data for use in a claimed process.” Id.). For
example, courts have found data gathering steps to be insignificant extra-
solution activity. See, e.g., In re Bilski, 545 F.3d 943, 963 (Fed. Cir. 2008)
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(en banc) (characterizing data gathering steps as insignificant extra-solution
activity), aff’d sub nom., Bilski v. Kappos, 561 U.S. 593 (2010).
We are not persuaded by Appellant’s citation to McRO to demonstrate
that the present claims set forth an improvement in technology. See Appeal
Br. 17. The subject claim considered by the McRO court concerned a
method for automatically animating lip synchronization and facial
expressions. McRO, 837 F.3d at 1303. The McRO court concluded the
subject claims did not recite an abstract idea because the computer animation
used a structure of limited rules that reflected a specific implementation
which an animator would not likely have utilized. Id. at 1316. Thus, the
claimed invention in McRO used “limited rules in a process specifically
designed to achieve an improved technological result” over “existing,
manual 3-D animation techniques.” Id.
Unlike the claims of McRO, the present claims do not recite a specific
implementation of rules that a human determining significance of letters,
words, or phrases appearing in a document would not have utilized, and the
present claims instead focus on an improvement to the abstract idea itself.
The rules recited in the claims, namely subdividing, counting, calculating
probabilities, calculating a prominence score (i.e., determining how
prominent a word or phrase appears in a document; Spec. ¶ 51), calculating
a stickiness score (i.e., determining whether terms are likely to appear
together; Spec. ¶ 19), comparing, filtering, and storing, are all techniques,
either individually or in combination, which have been used by human data
analysts for years.
Appellant’s argument that the present claims do not preempt any
abstract idea does not persuade us that the claims are eligible. Reply Br. 6–
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7. Although preemption may denote patent ineligibility, its absence does not
demonstrate patent eligibility. See FairWarning, IP, LLC v. Iatric Sys., Inc.,
839 F.3d 1089, 1098 (Fed. Cir. 2016). For claims covering a patent-
ineligible concept, preemption concerns “are fully addressed and made
moot” by an analysis under the Mayo/Alice framework. Ariosa Diagnostics,
Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
With regard to Appellant’s argument that the prior art does not teach
the subject matter of the present claims (Appeal Br. 19), Appellant
improperly conflates the requirements for eligible subject matter (§ 101)
with the independent requirements of novelty (§ 102) and non-obviousness
(§ 103). “The ‘novelty’ of any element or steps in a process, or even of the
process itself, is of no relevance in determining whether the subject matter of
a claim falls within the § 101 categories of possibly patentable subject
matter.” Diehr, 450 U.S. at 188–89; see also Genetic Techs. Ltd. v. Merial
L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016) (stating that, “under the
Mayo/Alice framework, a claim directed to a newly discovered law of nature
(or natural phenomenon or abstract idea) cannot rely on the novelty of that
discovery for the inventive concept necessary for patent eligibility”).
Appellant does not make any other arguments pertaining to step 2A,
prong 2. Because the present claims recite an abstract idea that is not
integrated into a practical application, we proceed to Step 2B.
F. Step 2B
We agree with the Examiner that the claims do not recite
“significantly more” than the abstract idea. Final Act. 4; Ans. 6.
We disagree with Appellant’s argument that the Examiner’s analysis
is deficient, because “the rejection should identify any additional steps and
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19
also clearly explain why these steps, including in combination of steps, do
not add significantly more.” Appeal Br. 20. Notably, the Examiner finds,
and we agree, that “[t]he additional elements or combination of elements in
the claims other than the abstract idea per se . . . amount to no more than
mere instructions to implement the idea on a computer.” Final Act. 4; see
also Ans. 6. Mere instructions to apply an exception do not amount to
“significantly more,” per step 2B. See MPEP 2106.05(f).
We further disagree with Appellant’s contention that the combination
of claim steps are not well-understood, routine, or conventional. Appeal Br.
18–19. On the record before us, Appellant does not point to any evidence in
the Specification to support this argument. See id. In particular, we
determine that the additional elements recited in the claims, namely the
computing system, set of documents, generic texts, common source,
processor, and memory, whether considered alone or as an ordered
combination, are well-understood, routine, or conventional. See Spec. ¶¶ 13,
28, 38, 58–62; Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can.
(U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012) (generic computer performing
basic functions such as making calculations or computations); Parker v.
Flook, 437 U.S. 584, 594 (generic computer performing mathematical
algorithms); Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306,
1331, 1134 (Fed. Cir. 2015) (generic computer arranging a hierarchy of
product groups, sorting information); OIP Techs., Inc. v. Amazon.com, Inc.,
788 F.3d 1359, 1361–63 (Fed. Cir. 2015) (gathering statistics, using data to
estimate outcomes, automatically selecting based on the estimated
outcomes). The steps recited in the present claims merely recite abstract
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Application 15/007,699

20
ideas that use a generic computing system (or generic processor and
memory) to implement the abstract idea.
For at least the above reasons, we conclude, under the 2019
Memorandum, that each of Appellant’s claims 3–6, 8–13, and 15–24,
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. We therefore sustain the Examiner’s rejection of claims 3–6, 8–13,
and 15–24 under 35 U.S.C. § 101.
CONCLUSION
In summary:

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. § 1.136(a)(1)(iv).

AFFIRMED

Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
3–6, 8–13,
15–24
101 Eligibility 3–6, 8–13,
15–24