Winfried Schwarzmann

Patent Trials and Appeals Board

Oct 31, 2019

12566917 - (D) (P.T.A.B. Oct. 31, 2019)

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.
12/566,917 09/25/2009 Winfried Schwarzmann 54874-398F01US/2009P00094 3290
64280 7590 10/31/2019
Mintz Levin/SAP
Mintz Levin Cohn Ferris Glovsky and Popeo, P.C.
One Financial Center
Boston, MA 02111
EXAMINER
HARPER, ELIYAH STONE
ART UNIT PAPER NUMBER
2166
NOTIFICATION DATE DELIVERY MODE
10/31/2019 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):
IPDocketingBOS@mintz.com
IPFileroombos@mintz.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WINFRIED SCHWARZMANN
Appeal 2018-006682
Application 12/566,917
Technology Center 2100
BEFORE JAMES R. HUGHES, ALEX S. YAP, and
JASON M. REPKO, Administrative Patent Judges.
HUGHES, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision rejecting claims 1–19, which are all the claims pending
in this application. See Final Act. 1–2.2 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 SAP SE. See
Appeal Br. 2.
2 We refer to Appellant’s Specification (“Spec.”), filed Sept. 25, 2009;
Appeal Brief (“Appeal Br.”), filed Dec. 18, 2017; and Reply Brief (“Reply
Br.”), filed June 15, 2018. We also refer to the Examiner’s Final Office
Action (“Final Act.”), mailed Sept. 7, 2017; and Answer (“Ans.”) mailed
May 24, 2018.
Appeal 2018-006682
Application 12/566,917
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CLAIMED SUBJECT MATTER
The claims in this patent application generally “relate to data
handling” and, “[m]ore specifically,” “to . . . manipulation of validity
dependent data sets.” Spec. ¶ 1; see Spec. ¶ 5 and Abstract. Claims 1, 11,
and 14 are independent. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A method comprising:
receiving a request of a consuming application;
determining, in a processor, a location of a validity
dependent data set;
wherein, when the determination indicates that the
location is in a coupled database where a corresponding
persistence is not in accordance with a predefined design pattern,
the method further comprises performing first operations
including:
defining a set of dimensions for the validity
dependent data set;
associating at least a first dimension, belonging to
the set of dimensions, with a validity independent structure
of the data set; and
associating at least a second dimension, belonging
to the set of dimensions and being different from the first
dimension, with one or more validity constraints effective
for the data set;
and wherein, after the first operations, and when the
determination indicates that the location is not in the coupled
database where the corresponding persistence is not in
accordance with the predefined design pattern, the method
further comprises performing second operations including:
retrieving, in the processor, the validity dependent data set
and its association with the set of dimensions;
generating, in the processor, a plural dimensional model
of the retrieved data; and
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responding, from the processor, to the request of the
consuming application with information derived from the plural
dimensional model.
REJECTION
The Examiner rejects claims 1–19 under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter. See Final Act. 2–13.
OPINION
Subject Matter Eligibility—35 U.S.C. § 101
Under 35 U.S.C. § 101, a patent may be obtained for “any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof.” The Supreme Court has “long held that
this provision contains an important implicit exception: [l]aws of nature,
natural phenomena, and abstract ideas are not patentable.” Alice Corp. v.
CLS Bank Int’l, 573 U.S. 208, 216 (2014) (quoting Ass’n for Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 77–80 (2012), “for distinguishing patents that claim laws of
nature, natural phenomena, and abstract ideas from those that claim patent-
eligible applications of those concepts.” Alice, 573 U.S. at 217. The
framework requires us first to consider “whether the claims at issue are
directed to one of those patent-ineligible concepts.” Alice, 573 U.S. at 217.
If so, we then examine “the elements of [the] claim both individually and ‘as
an ordered combination’ to determine whether the additional elements
‘transform the nature of the claim’ into a patent-eligible application.” Alice,
573 U.S. at 217 (quoting Mayo, 566 U.S. at 78, 79). That is, we examine the
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claim for an “inventive concept,” “an element or combination of elements
that is ‘sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [ineligible concept] itself.’” Alice,
573 U.S. at 217–18 (alteration in original) (quoting Mayo, 566 U.S. at 72–
73).
The Patent Office recently published revised guidance concerning this
framework and the application of § 101. USPTO’s 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(hereinafter “2019 Revised Guidance”). Under that guidance, we first look
to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, mental processes, or
certain methods of organizing human activity such as a
fundamental economic practice or managing personal behavior
or relationships or interactions between people) (hereinafter
“Step 2A, prong 1”); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a)–(c), (e)–(h))
(hereinafter “Step 2A, prong 2”).3
See 2019 Revised Guidance, 84 Fed. Reg. at 51–52, 55.
A claim that integrates a judicial exception into a practical application
applies, relies on, or uses 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. See 2019
Revised Guidance, 84 Fed. Reg. at 54. When the judicial exception is so

3 All references to the MPEP are to the Ninth Edition, Revision 08–2017
(rev. Jan. 2018).
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integrated, then the claim is not directed to a judicial exception and is patent
eligible under 35 U.S.C. § 101. Id.
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. See 2019 Revised
Guidance 84 Fed. Reg. at 56; Alice, 573 U.S. at 217–18.
For example, we 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.4
See 2019 Revised Guidance, 84 Fed. Reg. at 56. With these principles in
mind, we turn to the merits of the § 101 rejection. The Examiner rejects
Appellant’s claims 1–19 as being directed to patent ineligible subject matter.
See Final Act. 2–13. Appellant does not separately argue the claims with
specificity and, instead, argues claims 1–19 together for this rejection. See
Appeal Br. 4–14. Accordingly, we address the Examiner’s rejection of
independent claim 1 and the claims not separately argued by Appellant as a
group based on claim 1, as permitted by 37 C.F.R. § 41.37(c)(1)(iv).

4 Items (3) and (4) are collectively referred to as “Step 2B” hereinafter and
in the 2019 Revised Guidance.
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Statutory Subject Matter
We find that claim 1 recites a “method” (infra). A “method” is a
process, which is a statutory category of invention (subject matter)
(USPTO’s Step 1).
Abstract Idea
The Examiner rejects Appellant’s claim 1 as being directed to patent
ineligible subject matter. See Final Act. 2–5; Ans. 2–7. Specifically, the
Examiner concludes “[t]he limitations [of claim 1] are directed” to an
“abstract idea” (Final Act. 3), in that the limitations recite collecting and
analyzing information similar to Electric Power—which is “an ordinary
mental process” (Final Act. 4). See Final Act. 2–4; Ans. 3–4, 6 (citing Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016)).
Appellant contends the Examiner erred in rejecting the claims as
being directed to patent-ineligible subject matter. See Appeal Br. 4–14;
Reply Br. 2–6. Specifically, Appellant contends, with respect to the first
step of the Alice analysis, that the Examiner erred in rejecting claim 1 (and
the other independent claims—claims 11 and 14) because: (1) claim 1 is not
“directed to an abstract idea” (Appeal Br. 11 (emphasis and quotations
omitted); see Appeal Br. 12; Reply Br. 4); (2) claim 1 is not a mental process
as some of the steps “cannot be performed in the human mind” in that “they
involve a transformation or a creation of something that is not merely a
figment of a person’s imagination” (Appeal Br. 13; see Reply Br. 5); (3) the
Examiner mischaracterizes claim 1 by “oversimplifying” the claim and
describing the claim “at a high level of abstraction” (Appeal Br. 8; see
Appeal Br. 9; Reply Br. 3–4); and (4) the Examiner did not provided a prima
facie rejection in that the Examiner did not clearly identifying the specific
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claim limitations that recite the abstract idea and did not sufficiently explain
why the limitations at issue set forth an abstract idea (see Appeal Br. 9–11;
Reply Br. 4).
For the reasons discussed below, we conclude Appellant’s claim 1
(and the other pending claims) recites abstract ideas, these abstract ideas are
not integrated into a practical application, nor do they include an inventive
concept. In view of the 2019 Revised Guidance, we clarify and expand the
Examiner’s reasoning as follows.
We begin our analysis by broadly but reasonably construing
Appellant’s claim 1 (see Appeal Br. 15 (Claims App.)). Claim 1 recites a
“method” comprising “receiving a request of a consuming application.”
That is, receiving a request from a consuming application (application
executed on a computer that utilizes data). See Spec. ¶¶ 12, 13, and 24.
Although not expressly recited, the request specifies constraints to be
applied to particular data (the data set)) such that the application may utilize
the data set (the validity dependent data set). See Spec. ¶¶ 2, 3, 12, 13, and
24. Hereinafter we refer to this step as “Step A.”
Claim 1 further recites “determining, in a processor, a location of a
validity dependent data set.” Appeal Br. 15 (Claims App.)); see Spec ¶ 21;
Fig. 2A (202). The “location” is where the validity dependent data set
resides. See Spec ¶¶ 2, 3, 4, and 20–24; Fig. 2A (202). Hereinafter we refer
to this step as “Step B.”
Claim 1 also recites “wherein, when the determination indicates that
the location is in a coupled database where a corresponding persistence is
not in accordance with a predefined design pattern, the method further
comprises performing first operations.” Appeal Br. 15 (Claims App.). In
other words, the processor determination (of Step B) indicates (the processor
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further determines) that—(1) the location is a coupled database, and (2) the
persistence (where the data resides) does not conform to a predetermined
pattern. See Spec ¶¶ 21, 22; Fig. 2A (202-208). Hereinafter we refer to this
step as “Step C.”
Claim 1 additionally recites performing first operations, including:
“defining a set of dimensions for the validity dependent data set”;
“associating at least a first dimension, belonging to the set of dimensions,
with a validity independent structure of the data set;” and “associating at
least a second dimension, belonging to the set of dimensions and being
different from the first dimension, with one or more validity constraints
effective for the data set.” Appeal Br. 15 (Claims App.)); see Spec ¶ 22.
The first operations are performed by the processor, which generates
(defines) dimensions (e.g., structural or validity dimensions) (see Spec ¶ 22;
Fig. 2A (208); see also Spec ¶¶ 29–31 (describing various dimensions));
associates (creates an association between) one or more of the generated
dimensions with a validity independent data structure in the data set (see
Spec ¶¶ 22, 29 (describing associating a dimension with a validity
independent data structure); Fig. 2A (214)); and associates one or more of
the generated dimensions with one or more constraints of the validity data
set (see Spec ¶¶ 22, 30 (describing associating a dimension with a validity
constraint); Fig. 2A (214)). Hereinafter we refer to these steps as “Step C1,”
“Step C2,” and “Step C3,” respectively.
Claim 1 further recites “wherein, after the first operations, and when
the determination indicates that the location is not in the coupled database
where the corresponding persistence is not in accordance with the predefined
design pattern, the method further comprises performing second operations.”
Appeal Br. 15 (Claims App.). That is, the processor determination (of Step
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B) indicates that the location is not in the coupled database. See Spec ¶¶ 21,
23; Fig. 2A (202, 204, and 216). Hereinafter we refer to this step as “Step
D.”
Claim 1 also recites performing a second set of operations (second
operations), including “retrieving, in the processor, the validity dependent
data set and its association with the set of dimensions.” Appeal Br. 15
(Claims App.)). In other words, the processor retrieving the validity
dependent data set and its associated dimensions. See Spec. ¶ 21; Fig. 2A
(210, 212, and 222). Hereinafter we refer to this step as “Step D1.” Claim 1
further recites performing a second operation of “generating, in the
processor, a plural dimensional model of the retrieved data.” Appeal Br. 15
(Claims App.)). That is, the processor generates a multi-dimensional model
from the retrieved data. See Spec. ¶ 23; Fig. 2A (222); see also Spec. ¶ 33;
Fig. 5. Hereinafter we refer to this step as “Step D2.”
Finally, Claim 1 recites performing a second operation of
“responding, from the processor, to the request of the consuming application
with information derived from the plural dimensional model.” Appeal Br.
15 (Claims App.)). In other words, the processor responds to the request of
the consuming application with information (sends information to the
consuming application), which information is derived from the plural
dimensional model. See Spec ¶ 25; Fig. 2A (232). Hereinafter we refer to
this step as “Step D3.”
In summary, claim 1 recites an information processing (data handling)
method (process) for manipulating validity dependent data sets (see Spec
¶¶ 1–4) including steps of determining a validity dependent data set location,
generating a multi-dimensional model, and providing the resulting
information to a consuming application. Hereinafter, we refer to this process
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as the “validity dependent data handling process.” This is consistent with
how Appellant describes the claimed invention—“[t]he present subject
matter relates to approaches for handling validity-dependent data sets.”
Appeal Br. 5 (emphasis and quotations omitted).
Appellant’s contentions (supra) focus on the Examiner’s purported
failure to properly characterize claim 1 and present a prima facie rejection
(see, e.g., Appeal Br. 8–13). Here, in rejecting the claims (in particular
claim 1) under 35 U.S.C. § 101, the Examiner analyzed the claims using the
Mayo/Alice two-step framework, consistent with the guidance set forth in
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 September 7, 2017. The Examiner notified Appellant of the
reasons for the rejection “together with such information and references as
may be useful in judging of the propriety of continuing the prosecution of . .
. [the] application.” 35 U.S.C. § 132. See Final Act. 2–5. Contrary to
Appellant’s assertions, in doing so, the Examiner set forth a prima facie case
of unpatentability such that the burden of production shifted to Appellant to
demonstrate that the claims are patent-eligible.
Appellant also contends (supra) claim 1 is not abstract because it
requires something more than collecting and analyzing information (see
Appeal Br. 11–12) and claim 1 is not a purely mental process (see Appeal
Br. 13). Claim 1, however, recites no substantive limitations on how the
validity dependent data handling process determines a validity dependent
data set location, defines dimensions, associates dimensions, or generates a
multi-dimensional model from the validity dependent data set. The
limitations are entirely functional in nature, or characterize various data
utilized in Steps A, B, C, C1, C2, C3, D, D1, D2, and D3 (supra).
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A person can perform the functions of limitations A–D3 (delineated
above) mentally, or by using pen and paper. See, e.g., Appellant’s Figs. 2A,
3–5. Nowhere does Appellant point to specific claim limitations that
distinguish over a human process.
Performing data analysis, as well as the collection and provision
(outputting) of information related to such analysis, has been determined by
our reviewing court to be an abstract concept (a mental process) that is not
patent eligible. Indeed, even if such analysis requires one to access and
gather data from a database or utilize a pen and paper in the analysis (such as
to graphically represent a data set), such analysis may still be an abstract
mental process. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d
1366, 1372 (Fed. Cir. 2011) (“[E]ven if some physical steps are required to
obtain information from the database . . . such data-gathering steps cannot
alone confer patentability.” A claim focused on verifying credit card
transaction information is directed to “unpatentable mental processes”
because the claim’s steps “can be performed in the human mind, or by a
human using a pen and paper.”); see also SAP Am., Inc. v. InvestPic, LLC,
898 F.3d 1161, 1165, 1167–68 (Fed. Cir. 2018) (Claims reciting “[a] method
for providing statistical analysis” (id. at 1165), were determined to be
“directed to an abstract idea” (id. at 1168). “As many cases make clear,
even if a process of collecting and analyzing information is limited to
particular content or a particular source, that limitation does not make the
collection and analysis other than abstract” (id. (citation and quotation marks
omitted)); Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d
1332, 1340 (Fed. Cir. 2017) (identifying the abstract idea of collecting,
displaying, and manipulating data); Elec. Power Grp., 830 F.3d at 1354
(characterizing collecting information, analyzing information by steps
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people go through in their minds, or by mathematical algorithms, and
presenting the results of collecting and analyzing information, without more,
as matters within the realm of abstract ideas); Content Extraction &
Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1345,
1347 (Fed. Cir. 2014) (finding the “claims generally recite . . . extracting
data . . . [and] recognizing specific information from the extracted data” and
that the “claims are drawn to the basic concept of data recognition”);
Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d
1266, 1278 (Fed. Cir. 2012) (“[T]he fact that the required calculations could
be performed more efficiently via a computer does not materially alter the
patent eligibility of the claimed subject matter.”).
In summary, we conclude Appellant’s claim 1 recites a judicial
exception (USPTO’s Step 2A, Prong 1; see 2019 Revised Guidance).
Specifically, claim 1 recites a data handling process for manipulating
validity dependent data sets including determining a validity dependent data
set location, generating a multi-dimensional model, and providing the
resulting information to a consuming application—the validity dependent
data handling process—as discussed supra. The validity dependent data
handling process consists of mental processes performed in the human mind
(or utilizing pen and paper) including observation, evaluation, or judgment.
See 2019 Revised Guidance, 84 Fed. Reg. at 52, 53 (listing “[m]ental
processes—concepts performed in the human mind (including an
observation, evaluation, judgment, opinion)” as one of the “enumerated
groupings of abstract ideas” (footnote omitted)). The revised guidance
explains that “mental processes” include acts that people can perform in
their minds or using pen and paper, even if the claim recites that a generic
computer component performs the acts. See 2019 Revised Guidance, 84
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Fed. Reg. at 52 n.14 (“If a claim, under its broadest reasonable
interpretation, covers performance in the mind but for the recitation of
generic computer components, then it is still in the mental processes
category unless the claim cannot practically be performed in the mind.”)
Because each of the limitations discussed above encompasses an act that
people can practically perform in their minds or using pen and paper, claim
1 recites mental processes. Appellant’s arguments have not persuaded us
otherwise.
Practical Application
We next consider whether claim 1 integrates the abstract idea into a
practical application (USPTO’s Step 2A, Prong 2). See Revised Guidance,
84 Fed. Reg. at 51. In doing so, we consider whether there are any
additional elements beyond the abstract idea that, individually or in
combination, “integrate the [abstract idea] into a practical application, using
one or more of the considerations laid out by the Supreme Court and the
Federal Circuit.” Revised Guidance, 84 Fed. Reg. at 54–55.
Appellant’s claim 1 recites additional elements beyond the abstract
validity dependent data handling process (the judicial exception) (supra).
The additional elements in claim 1 include the recited “consuming
application,” the “processor,” and “coupled database.” Appeal Br. 15
(Claims App). The written description indicates that each of these elements
encompass commonplace generic components. Appellant does not describe
the “processor,” “database,” and “application” with any specificity. For
example, Appellant’s Specification describes the “processor 102” as being
“coupled to a database 110 that may store a validity dependent data set 118,”
and “may also be coupled to a local user node 104 and/or via a network 106
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to a remote user node 108.” Spec. ¶ 12; see Fig. 1. Appellant’s
Specification further describes the “[l]ocal user node 104” as having a “user
interface 126 which permits a user to select parameters at a consuming
application 128” such that the application may make a “request having a set
of constraints to be applied to data set 118.” Spec. ¶ 12; see Spec. 13; Fig. 1.
With respect to the process disclosed in Appellant’s Figure 2A, Appellant’s
Specification also describes the processor performing customary functions—
“processor 102 loads” a file, the structure of which is a “tag-based markup
language such as extensible markup language (XML),” and “processor 102
triggers the transmission” “to a remote system” over a channel that
“provides a protocol for transmitting the data set and its association to a set
of dimensions.” Spec. ¶ 21; see Fig. 2A.
Other than disclosing that these additional elements performing their
accustomed functions utilizing standard techniques—the processor
processing data that is stored or transferred in a standard protocol, the
database storing data in a standard format, and the application sending and
receiving data—the written description describes these components in
functional, result-oriented terms with no technical details. See, e.g., Spec.
¶¶ 21–23 (describing operations performed by the processor with respect to
the consuming application and database). These descriptions show that
additional elements are generic. See Hybritech Inc. v. Monoclonal
Antibodies, Inc., 802 F.2d 1367, 1384 (Fed. Cir. 1986) (“[A] patent need not
teach, and preferably omits, what is well known in the art.”); Intellectual
Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315, 1331 (Fed. Cir. 2017)
(“The claimed mobile interface is so lacking in implementation details that it
amounts to merely a generic component (software, hardware, or firmware)
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that permits the performance of the abstract idea, i.e., to retrieve the user-
specific resources.”).
Appellant contends claim 1 (as well as independent claims 11 and 14)
provides a “technological solution to a technological problem” (Appeal Br.
7) and constitutes an “improvement of computer-related technology”
(Appeal Br. 8). See Appeal Br. 4–8; Reply Br. 2–3. Specifically, Appellant
contends claim 1 solves the technical problem that objects (specifically, the
state of objects) in a validity dependent data set “cannot necessarily be
sequenced based on their validity constraints” (Appeal Br. 7 (quoting Spec.
¶ 4)), such that it is “possible to generate [a] plural dimensional model of . . .
retrieved data” so as to “respond to [a] request from [a] consuming
application” (Appeal Br. 7–8). Appellant further contends that the claim
recites improvements to computer functionality—similar to Enfish (Enfish,
LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016)). See Appeal Br. 4–
5. In other words, the claims recite a technological improvement that
amounts to more than simply utilizing a computer as a tool to accomplish the
validity dependent data handling process.
Appellant’s contentions correspond to the reasoning in MPEP
§§ 2106.05(a)–(c), where additional elements integrate the judicial exception
into a practical application. We, however, disagree with Appellant’s
contentions. Appellant’s additional elements, in particular the processor, do
not apply or use the validity dependent data handling process (the judicial
exception) in a manner that imposes a meaningful limit on the judicial
exception, such that it is more than a drafting effort designed to monopolize
the exception. See Alice, 573 U.S. at 221–24 (citing Mayo, 566 U.S. at 78–
85). Rather, Appellant’s claim recites a generic computer element (a
processor) that is utilized as a tool to carry out the functions recited in the
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validity dependent data handling process—determining a validity dependent
data set location, defining dimensions, associating dimensions, and
generating a multi-dimensional model from the validity dependent data set.
Utilizing a computer as a tool to perform common data processing functions
that are part of a mental process (an abstract idea) does not impose a
meaningful limit on the abstract idea. See MPEP § 2106.05(f); see also
Alice, 573 U.S. at 223 (finding “if [the] recitation of a computer amounts to
a mere instruction to implement an abstract idea on a computer that addition
cannot impart patent eligibility” (quotations and internal citations omitted)).
Appellant’s claim 1 can be distinguished from patent-eligible claims
such as those in Enfish that are directed to “a specific improvement to the
way computers operate.” Enfish, 822 F.3d at 1336. Appellant’s claims can
also be distinguished from patent-eligible claims such as those solve a
technology-based problem (see BASCOM Glob. Internet Servs., Inc. v.
AT&T Mobility LLC, 827 F.3d 1341, 1349–52 (Fed. Cir. 2016)), or a method
“rooted in computer technology in order to overcome a problem specifically
arising in the realm of computer [technology]” (DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014)). Contrary to
Appellant’s arguments, claim 1 is not a technological improvement or an
improvement in a technology. Appellant’s claim 1 does not “improve the
functioning of the computer itself” or “any other technology or technical
field.” Alice, 573 U.S. at 225. Nor does it provide a technological solution
to a technological problem. See DDR Holdings, 773 F.3d at 1257; MPEP
§ 2106.05(a). Appellant fails to sufficiently and persuasively explain how
the instant claims are directed to an improvement in the way computers
operate, nor has Appellant identified any technical advance or improvement
or specialized computer components. See Appeal Br. 4–8.
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As discussed supra, nothing in claim 1, precludes a human from
performing the validity dependent data handling process. Performing such
data handling functionality is the reason computers exist. The mere
automation of a process that can be performed by a human is not sufficient
to show an improvement in computer functionality, and the fact that a
computer may increase efficiency—by providing processing of validity
dependent data sets (see Appeal Br. 4–8; Spec. ¶¶ 1–4)—does not change
the abstract-idea analysis. See Intellectual Ventures I LLC v. Capital One
Bank (USA), 792 F.3d 1363, 1370 (Fed. Cir. 2015) (holding that “merely
adding computer functionality to increase the speed or efficiency of the
process does not confer patent eligibility on an otherwise abstract idea”);
OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015)
(“[R]elying on a computer to perform routine tasks more quickly or more
accurately is insufficient to render a claim patent eligible.”); see also
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1095 (Fed. Cir.
2016).
Even if Appellant’s claimed process includes an (undisclosed)
improved algorithm for determining the location of validity dependent data
(sets) and creating a multi-dimensional model of the data, claim 1 does not
specify any improvement in how a computer (the processor) performs the
underlying data processing and analysis necessary to perform the algorithm.
In other words, only the abstract ideas in claim 1 are potentially new
(although we make no determination as to novelty or obviousness), not the
way a computer (the processor) operates.
In summary, “the focus of the claims is not on such an improvement
in computers as tools, but on certain independently abstract ideas that use
computers as tools.” Elec. Power Grp., 830 F.3d at 1354; see also MPEP
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§ 2106.05(f) (emphasis omitted) (instructing Examiners to consider
“[w]hether the claim invokes computers or other machinery merely as a tool
to perform an existing process” in determining whether the claim recites
mere instructions to apply the exception), cited in 2019 Revised Guidance,
84 Fed. Reg. at 55, n.30. Thus, we conclude the claims are directed to an
abstract idea that is not integrated into a practical application.
Inventive Concept
Having concluded Appellant’s claims are directed to an abstract idea
under the 2019 Revised Guidance (Step 2A analysis), we consider whether
claim 1 has an inventive concept, that is, whether the claim has additional
elements that “‘transform the nature of the claim’ into a patent-eligible
application.” Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S. at 78, 79). As
discussed above, this requires us to evaluate whether the additional claim
elements add “a specific limitation or combination of limitations that are not
well-understood, routine, conventional activity in the field” or “simply
append[] well-understood, routine, conventional activities previously known
to the industry, specified at a high level of generality.” Revised Guidance,
84 Fed. Reg. at 56.
The Examiner determined that all the limitations of Appellant’s claim
1 were “directed towards a generic computer” (Final Act. 3), that the
“limitations alone or in combination are well known in the art and do not
amount to significantly more than the judicial exception” (Final Act. 4), and
that the limitations were “well understood routine conventional activities
previously known to the industry, [and] therefore each step does no more
than require a generic computer to perform generic computer functions”
(Final Act. 4–5). See Final Act. 2–5; Ans. 5–7.
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Appellant, on the other hand, reiterates the limitations of claim 1 and
contends claim 1 “amount to significantly more than any alleged judicial
exception.” Appeal. Br. 12; see Appeal Br. 12, 14; Reply Br. 4–6.
Appellant also contends the Examiner “fail[ed] to take into account
numerous aspects recited in the independent claims” (Reply Br. 4) and did
not provide sufficient evidence that the claim limitations recite well
understood, routine, or conventional activities. See Appeal Br. 12, 14; Reply
Br. 4–6.5
Appellant fails to persuade us of error in the Examiner’s rejection
with respect to the second Alice step (USPTO’s Step 2B). We agree with the
Examiner that Appellant’s claim 1 (and the other pending claims) does not
evince an “inventive concept” that is significantly more than the abstract
idea itself. In particular, Appellant fails to explain how the additional
elements (above) add specific limitations beyond the judicial exception that
are not well-understood, routine, and conventional in the field.
As previously discussed, claim 1 (and the other pending claims)
merely recites additional non-abstract elements (above)—specifically the
consuming application, the processor, and the coupled database (see Appeal
Br. 15 (Claims App))—generic computer elements, in particular the

5 Appellant’s Reply Brief was filed after the publication of the Berkheimer
decision (Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018)) and the
USPTO’s Berkheimer Memorandum (Changes in Examination Procedure
Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility
Decision (Berkheimer v. HP, Inc.) (April 19, 2018) available at
https://www.uspto.gov/sites/default/files/documents/memo-berkheimer-
20180419.PDF. Appellant makes no explicit arguments with respect to
Berkheimer. Appellant, however, contends the “Examiner . . . fail[ed] to
comply with the requirement[s]” of the Berkheimer Memorandum. Reply
Br. 5; see id. at 5–6.
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20
processor, that carry out common data processing functions recited in the
validity dependent data handling process (the abstract idea). Specifically,
Appellant’s Specification describes a computer system (not recited in the
claims) as a collection of conventional (generic) computers components
performing traditional computer functions—these components include the
above-discussed processor interacting with the application and database.
See, e.g., Spec. ¶¶ 12 –13; Fig. 1. Also, to the extent that the written
description describes the functions performed by these elements, Appellant’s
Specification describes the functions at a high level of generality and largely
does not describe the particulars of how the claimed invention implements
these functions. See, e.g., Spec. ¶¶ 21–23 (describing the functions in the
validity dependent data handling process). Such conventional computer
processes operating on conventional computer hardware “do not alone
transform an otherwise abstract idea into patent-eligible subject matter.”
FairWarning, 839 F.3d at 1096 (citing DDR Holdings, 773 F.3d at 1256);
see also Berkheimer Memorandum at 3 (explaining that a specification that
describes additional elements “in a manner that indicates that the additional
elements are sufficiently well-known that the specification does not need to
describe the particulars of such additional elements to satisfy 35 U.S.C.
§ 112(a)” can show that the elements are well understood, routine, and
conventional).
To the extent Appellant contends the Examiner failed to comply with
the requirements of the Berkheimer Memorandum (supra), we disagree. The
Examiner cited to Appellant’s Specification as well as case precedent to
support the Examiner’s determinations that the claims recite well-
understood, routine, and conventional components and activities. See Final
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Act. 4–5 (citing Spec. ¶¶ 4, 14–16); Ans. 5–7 (citing Alice, 573 U.S. at 222–
24).
For at least the reasons above, we are not persuaded of Examiner error
in the rejection of claim 1 under 35 U.S.C. § 101. Thus, we sustain the
Examiner’s rejection under § 101 of independent claim 1, independent
claims 11 and 14, and dependent claims 2–10, 12, 13, and 15–19, which
depend from claims 1, 11, and 14, respectively, and which were not
separately argued with specificity.
CONCLUSION
For the reasons discussed above, we determine that claims 1–19 are
directed to an abstract idea and do not demonstrate an inventive concept.
Appellant has not shown that the Examiner erred in rejecting claims
1–19 under 35 U.S.C. § 101. We therefore sustain the Examiner’s rejection
of claims 1–19 under § 101.
CONCLUSION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Basis  Affirmed Reversed
1–19 § 101 Eligibility 1–19
Overall
Outcome
1–19
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED