WONG, Kevin Nelson. et al.

Patent Trials and Appeals Board

Feb 13, 2020

13462178 - (D) (P.T.A.B. Feb. 13, 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.
13/462,178 05/02/2012 Kevin Nelson WONG P3533US00 3638
54640 7590 02/13/2020
PERRY + CURRIER INC.
1300 YONGE STREET
SUITE 500
TORONTO, ONTARIO M4T-1X3
CANADA
EXAMINER
BUCHANAN, CHRISTOPHER R
ART UNIT PAPER NUMBER
3627
NOTIFICATION DATE DELIVERY MODE
02/13/2020 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):
docketing@pckip.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KEVIN NELSON WONG, DANIEL A. TEOH,
EMILY A. STOVER, ENAM RABBANI, JASON A. YUEN,
SEAN S. KIRBY, JESSICA S. LIU, MEHRAN MALEK, and
BRYCE KWAN
____________

Appeal 2019-002936
Application 13/462,178
Technology Center 3600
____________

Before ST. JOHN COURTENAY III, BETH Z. SHAW, and
JOYCE CRAIG Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a Final rejection of
claims 1 and 9–15. Claims 2–8 are canceled. We have jurisdiction over the
pending claims 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). According to Appellant, the real party in interest is
Nulogy Corporation. See Appeal Br. 3.

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STATEMENT OF THE CASE
Introduction
Embodiments of Appellant’s invention relate generally to “inventory
management, and specifically to a method, system and apparatus for
integrating order management and warehouse management.” Spec. ¶ 1.

Rejection 2 3
Claims 1 and 9–15 are rejected under 35 U.S.C. § 101, as being
directed to a judicial exception, without significantly more. See Final Act. 2.
Issue on Appeal
Did the Examiner err in rejecting claims 1 and 9–15 under
35 U.S.C. § 101, as being directed to a judicial exception, without
significantly more?

2 The Examiner withdrew the rejection under 35 U.S.C. § 103. See Final
Act. 4.

3 Regarding claims 11 and 12, in the event of further prosecution, we leave
further review of these claims to the discretion of the Examiner. See IPXL
Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005)
(citing Ex parte Lyell, 17 USPQ2d 1548 (BPAI 1990)) (“[R]eciting both an
apparatus and a method of using that apparatus [in a single claim] renders
[such] claim indefinite under section 112, paragraph 2.”); see also Pfizer Inc.
v. Ranbaxy Labs. Ltd., 457 F.3d 1284, 1292 (Fed. Cir. 2006) (when a claim
relying on another claim “fails to ‘specify a further limitation of the subject
matter’ of the [another] claim to which it refers because it is completely
outside the scope of [the another claim,]” such claim is invalid under pre-
AIA 35 U.S.C. § 112, fourth paragraph.) Although the Board is authorized
to reject claims under 37 C.F.R. § 41.50(b), no inference should be drawn
when the Board elects not to do so. See Manual of Patent Examining
Procedure (MPEP) § 1213.02.

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ANALYSIS
We reproduce infra independent claim 1 in Table One. We have
considered all of Appellant’s arguments and any evidence presented. To the
extent Appellant has not advanced separate, substantive arguments for
particular claims, or other issues, such arguments are waived. See 37 C.F.R.
§ 41.37(c)(1)(iv).
Principles of Law
A. Section 101
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.
Alice, 573 U.S. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See Alice, 573
U.S. at 219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
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economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (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 Supreme
Court also indicated that a claim “seeking patent protection for that formula
in the abstract . . . is not accorded the protection of our patent laws, and this
principle cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment.” Id. (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-
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eligible application.” Alice, 573 U.S. at 221 (quotation marks 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. (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
B. USPTO § 101 Guidance
The U. S. Patent and Trademark Office (USPTO) published revised
guidance on the application of § 101. USPTO’s January 7, 2019
Memorandum, 2019 Revised Patent Subject Matter Eligibility Guidance, 84
Fed. Reg. 50 (“2019 Memorandum”).4 Under that guidance, we first look to
whether the claim recites:
(1) (see 2019 Memorandum Step 2A – Prong One) any judicial
exceptions, including certain groupings of abstract ideas (i.e.,
mathematical concepts, certain methods of organizing human activity
such as a fundamental economic practice, or mental processes); and
(2) (see 2019 Memorandum Step 2A – Prong Two) additional
elements that integrate the judicial exception into a practical
application (see MPEP § 2106.05(a)–(c), (e)–(h)).5

4 The Office issued a further memorandum on October 17, 2019 (the
“October 2019 Memorandum”) clarifying guidance of the January 2019
Memorandum in response to received public comments. See https://
www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.pdf.
Moreover, “[a]ll USPTO personnel are, as a matter of internal agency
management, expected to follow the guidance.” January 2019 Memorandum
at 51; see also October 2019 Memorandum at 1.
5 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
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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 to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See 2019 Memorandum Step 2B.
Because there is no single definition of an “abstract idea” under Alice
step 1, the PTO has recently synthesized, for purposes of clarity,
predictability, and consistency, key concepts identified by the courts as
abstract ideas to explain that the “abstract idea” exception includes the
following three groupings:
1. Mathematical concepts—mathematical relationships,
mathematical formulas or equations, mathematical
calculations;
2. Mental processes— concepts performed in the human mind
(including an observation, evaluation, judgment, opinion);
and
3. Certain methods of organizing human activity—fundamental
economic principles or practices (including hedging,
insurance, mitigating risk); commercial or legal interactions
(including agreements in the form of contracts; legal
obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior

(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 Memorandum - Section III(A)(2).
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or relationships or interactions between people (including
social activities, teaching, and following rules or
instructions).
See 2019 Memorandum, 84 Fed. Reg. at 52.
According to the 2019 Memorandum, “[c]laims that do not recite
[subject] matter that falls within these enumerated groupings of abstract
ideas should not be treated as reciting abstract ideas,” except in rare
circumstances. Even if the claims recite any one of these three groupings of
abstract ideas, these claims are still not “directed to” a judicial exception
(abstract idea), and thus are patent eligible, if “the claim as a whole
integrates the recited judicial exception into a practical application of that
exception.” See 2019 Memorandum, 84 Fed. Reg. at 53.
For example, limitations that are indicative of integration into a
practical application include:
1. Improvements to the functioning of a computer, or to any
other technology or technical field — see MPEP
§ 2106.05(a);
2. Applying the judicial exception with, or by use of, a
particular machine — see MPEP § 2106.05(b);
3. Effecting a transformation or reduction of a particular
article to a different state or thing — see MPEP
§ 2106.05(c); and
4. Applying or using the judicial exception in some other
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(e).
In contrast, limitations that are not indicative of integration into a
practical application include:
1. Adding the words “apply it” (or an equivalent) with the
judicial exception, or merely include instructions to
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implement an abstract idea on a computer, or merely uses a
computer as a tool to perform an abstract idea — see MPEP
§ 2106.05(f);
2. Adding insignificant extra-solution activity to the judicial
exception — see MPEP § 2106.05(g); and
3. Generally linking the use of the judicial exception to a
particular technological environment or field of use — see
MPEP § 2106.05(h).
See 2019 Memorandum, 84 Fed. Reg. at 54–55 (“Prong Two”).
2019 Memorandum, Step 2A, Prong One 6
The Judicial Exception
Under the 2019 Memorandum, we begin our analysis by first
considering whether the claims recite any judicial exceptions, including
certain groupings of abstract ideas, in particular: (a) mathematical concepts,
(b) mental steps, and (c) certain methods of organizing human activities.
The Examiner concludes that all claims 1 and 9–15 describe:
the abstract idea of receiving an order message for a finished
good and determining if the items in inventory match the
received order, which is considered to be a fundamental
economic practice or an idea of itself (i.e., taking an order and
determining if there is sufficient inventory available to fill it).
In the examiner's view, the claims are similar to those in the
case of Electric Power Group in which a computer system was
used in a conventional, routine manner to collect and analyze
information, then perform actions based on the analysis.
Final Act. 2 (emphasis added).

6 Throughout this opinion, we give the claim limitations the broadest
reasonable interpretation consistent with the Specification. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).

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We apply the Director’s 2019 Memorandum de novo. In Table One
below, we identify in italics the specific claim limitations that we conclude
recite an abstract idea. We identify in bold the additional (non-abstract)
claim elements that we find are generic computer components:
TABLE ONE
Independent Claim 1 2019 Memorandum
[a] A method comprising: 7
[b] at the contract packager
server maintaining a first
data store in memory, the
first data store storing
inventory records, each
respective inventory record
comprising a subcomponent
identifier of a subcomponent
and data indicative of a
quantity of the subcomponent
at a production site:
Maintaining a first data store in
memory that stores inventory records
is insignificant extra-solution activity
(data gathering). 2019
Memorandum, 55 n.31; see also
MPEP § 2106.05(g).

The contract packager server, the
first data store, and the memory are
additional non-abstract limitations.
[c] receiving an order
message for a finished good
from an enterprise
management server via a
network, the order message
including an identifier of the
finished good, quantity data
indicative of the quantity of
the finished good to be
produced, and a
Receiving an order message for a
finished good is insignificant extra-
solution activity (data gathering).
2019 Memorandum, 55 n.31; see
also MPEP § 2106.05(g).

The enterprise management server
and network are additional non-
abstract limitations.

7 A method falls under the statutory subject matter class of a process. See
35 U.S.C. § 101 (“Whoever invents or discovers any new and useful
process, machine, manufacture, or composition of matter, or any new and
useful improvement thereof, may obtain a patent therefor, subject to the
conditions and requirements of this title.”).

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Independent Claim 1 2019 Memorandum
subcomponent identifier of a
subcomponent included in the
finished good, and a format
identifier identifying a format
of the order message;
[d] responsive to receiving
the order message, formatting
the order message into a
format suitable for storage in
a first data store maintained
in a memory connected to
the contract packager
server based on the format
identifier, and storing the
formatted order message in
the first data store;
Formatting the order message into a
format suitable for storage in a first
data store maintained in a memory is
insignificant extra-solution activity
(data gathering). 2019
Memorandum, 55 n.31; see also
MPEP § 2106.05(g).

The enterprise management server,
network, first data store, memory,
and the contract packager server are
additional non-abstract limitations.
[e] creating a job record
based on the formatted order
message, the job record
comprising the identifier of
the finished good, the
quantity data indicative of the
quantity of the finished good
to be produced, and the
subcomponent identifier of
the subcomponent included in
the finished good;
Abstract Idea: Creating a job record
based on the formatted order
message is a fundamental economic
practice including business relations
that could be performed alternatively
as a mental process. See 2019
Memorandum 52.

[f] storing the job record in
the first data store;
Storing the job record in the first
data store is insignificant extra-
solution activity (data gathering).
2019 Memorandum, 55 n.31; see
also MPEP § 2106.05(g).

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Independent Claim 1 2019 Memorandum
The first data store is an additional
non-abstract limitation.
[g] retrieving an inventory
record from the first data
store comprising the
subcomponent identifier and
determining whether a
sufficient quantity of the
subcomponent is located at
the production site to produce
the finished good based on
the data indicative of the
quantity of the subcomponent
at a production site in the
inventory record;
Retrieving an inventory record is
insignificant extra-solution activity
(data gathering). 2019
Memorandum, 55 n.31; see also
MPEP § 2106.05(g).

Abstract Idea: determining whether
a sufficient quantity of the
subcomponent is located at the
production site to produce the
finished good based on the data
indicative of the quantity of the
subcomponent at a production site in
the inventory record is a
fundamental economic practice
including business relations that
could be performed alternatively as a
mental process. See 2019
Memorandum 52.

The first data store is an additional
non-abstract limitation.
[h] in response to determining
that a sufficient quantity of
the subcomponent is not
located at the production site
to produce the finished good,
generating a message and
sending the message to a
warehouse management
server associated with a
warehouse site via the
network, the message
Abstract Idea: Generating a message
and sending the message to a
warehouse management server
associated with a warehouse site via
the network, the message including
data indicative of a specified
quantity of the subcomponent is a
fundamental economic practice
including business relations that
could be performed alternatively as a
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Independent Claim 1 2019 Memorandum
including data indicative of a
specified quantity of the
subcomponent;
mental process. See 2019
Memorandum 52.

The warehouse management server
and the network are additional non-
abstract limitations.

[i] receiving, from the
warehouse management
server, input data defining a
quantity of the subcomponent
that has been transferred to
the production site from the
warehouse site;
Receiving input data defining a
quantity of the subcomponent that
has been transferred to the
production site from the warehouse
site is insignificant extra-solution
activity (data gathering). 2019
Memorandum, 55 n.31; see also
MPEP § 2106.05(g).

The warehouse management server
is an additional non-abstract
limitation.

[j] responsive to receiving the
input data, determining
whether the quantity defined
by the input data matches the
specified quantity of the
subcomponent included in the
message; and,
Abstract Idea: determining whether
the quantity defined by the input data
matches the specified quantity of the
subcomponent included in the
message is a fundamental economic
practice including business relations
that could be performed alternatively
as a mental process. See 2019
Memorandum 52.

[k] when the quantity defined
by the input data matches the
specified quantity of the
subcomponent included in the
request, updating the
inventory record stored in the
Updating the inventory record stored
in the first data store comprising the
subcomponent identifier, and
generating and transmitting a
notification message are insignificant
extra-solution activities. 2019
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Independent Claim 1 2019 Memorandum
first data store comprising
the subcomponent identifier,
and generating and
transmitting a notification
message from the contract
packager server to each of
the enterprise management
server and the warehouse
management server via the
network; the notification
message containing the
subcomponent identifier, a
location identifier of the
location of the quantity of the
subcomponent, the quantity
of the subcomponent received
at the production site;

Memorandum, 55 n.31; see also
MPEP § 2106.05(g).

The first data store, the contract
packager server, the enterprise
management server, the warehouse
management server and the network
are additional non-abstract
limitations.
[l] wherein the notification
message causes an update to
a second data record
representing the
subcomponent maintained in
a second data store at the
enterprise management
server and a third data record
representing the
subcomponent maintained in
a third data store at the
warehouse management
server to synchronize the
inventory data record stored
in the first data store with
the second data record stored
in the enterprise
management server and the
third data record stored [in
Causing an update to a second data
record representing the
subcomponent maintained in a
second data store at the enterprise
management server and a third data
record representing the
subcomponent maintained in a third
data store at the warehouse
management server to synchronize
the inventory data record stored in
the first data store with the second
data record stored in the enterprise
management server and the third
data record stored [in the] warehouse
management server is an
insignificant post-solution activity.
2019 Memorandum, 55 n.31; see
also MPEP § 2106.05(g).

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Independent Claim 1 2019 Memorandum
the] warehouse
management server.

The first data store, the second
data store at the enterprise
management server, the third
data store at the warehouse
management server, and the
warehouse management server
are additional non-abstract
limitations.

Abstract Idea
After considering representative method claim 1 as a whole, we
conclude the recited italicized steps shown above in Table One recite the
abstract idea of a fundamental economic practice including business
relations that could be performed alternatively as mental processes.8 See
2019 Memorandum, 84 Fed. Reg. at 52. See also “Intellectual Ventures I
LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016) (‘[W]ith the
exception of generic computer-implemented steps, there is nothing in the

8 If a method can be performed by human thought alone, or by a human
using pen and paper, it is merely an abstract idea and is not patent eligible
under § 101. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d
1366, 1372–73 (Fed. Cir. 2011); “That purely mental processes can be
unpatentable, even when performed by a computer, was precisely the
holding of the Supreme Court in Gottschalk v. Benson.” CyberSource, 654
F.3d at 1375. See also Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d
1138, 1146–47 (Fed. Cir. 2016). Moreover, “[u]sing a computer to
accelerate an ineligible mental process does not make that process patent-
eligible.” Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can. (U.S.),
687 F.3d 1266, 1279 (Fed. Cir. 2012); see also 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.”).

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claims themselves that foreclose them from being performed by a human,
mentally or with pen and paper.’).” 2019 Memorandum, 84 Fed. Reg. at 52
n.14.
“An abstract idea can generally be described at different levels of
abstraction.” Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir.
2016). Merely combining several abstract ideas does not render the
combination any less abstract. See RecogniCorp, LLC v. Nintendo Co., 855
F.3d 1322, 1327 (Fed. Cir. 2017) (“Adding one abstract idea (math) to
another abstract idea . . . does not render the claim non-abstract.”);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94 (Fed. Cir.
2016) (determining the pending claims were directed to a combination of
abstract ideas).
For at least these reasons, we conclude claim 1 recites the specific
types of abstract ideas identified above in Table One.

Additional Elements
As emphasized in bold in Table One, supra, we note the additional
generic computer components recited in claim 1: the contract packager
server, memory, enterprise management server, network, first data store,
second data store, warehouse management server, and third data store. We
further note the supporting exemplary descriptions of generic computer
components in the Specification, for example:

Network 122 can include any suitable combination of wired
and/or wireless networks, including but not limited to a WAN
such as the Internet, a Local Area Network (“LAN”), cell phone
networks, WiFi networks, WiMax networks and the like.
Spec. ¶ 19 (emphasis added).
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ERP server 108 and WMS server 112 are each based on any
suitable server architecture, and can therefore each include one
or more processors interconnected with memories and housed
in enclosures.
Spec. ¶ 23 (emphasis added).
We emphasize that McRO, Inc. v. Bandai Namco Games Am. Inc.,
837 F.3d 1299 (Fed. Cir. 2016), guides: “[t]he abstract idea exception
prevents patenting a result where ‘it matters not by what process or
machinery the result is accomplished.’” 837 F.3d at 1312 (quoting O’Reilly
v. Morse, 56 U.S. 62, 113 (1854)) (emphasis added). See supra Table One.
Because we conclude all claims 1 and 9–15 on appeal recite an abstract idea,
as identified above, under Step 2A, Prong One, we proceed to Step 2A,
Prong Two.
2019 Memorandum, Step 2A, Prong Two
Integration of the Judicial Exception into a Practical Application

Pursuant to the 2019 Memorandum, we consider whether there are
additional elements set forth in the claims that integrate the judicial
exception into a practical application. See 2019 Memorandum, 84 Fed. Reg.
at 54–55.
MPEP § 2106.05(a)
Improvements to the Functioning of a Computer or
to Any Other Technology or Technical Field

Appellant contends the claimed invention provides an improvement to
computer functionality. In particular, Appellant submits that “the claims are
directed to a technology based solution that overcomes the disadvantages of
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prior art order management and warehouse management systems.” Appeal
Br. 9 (emphasis added).
In support, Appellant recites the claim language (Appeal Br. 10–11),
and urges:
As outlined in [Spec.] paragraph [0062], the method of claim 1
reduces the need for communication between the enterprise
management server, the contract packager server, and the
warehouse management server, for example to manage
overlapping records, thereby managing the impact on network
and system resources, for example by reducing the operational
burden on the network to collect and transmit data to update
and synchronize the data stores, without sacrificing the
synchronization between the servers. Accordingly, the
combination of elements recited in claim 1 provide technical
details which lead to an improved computer functionality and
are therefore inextricably tied to a server (e.g. a computer) to
provide a technology-based solution that overcomes the
disadvantages of prior art order management and warehouse
management systems.

Claim l is directed to an improvement in computer functionality
which, in accordance with MPEP 2106.04(a) is not abstract.
Hence, claim 1 is not directed to a judicial exception and is
patent eligible.
Appeal Br. 11.
However, we find Appellant has not provided sufficient details
regarding how the recited contract packager server, memory, enterprise
management server, network, first data store, second data store, warehouse
management server, and third data store (claim 1) include more than mere
instructions to perform the recited steps to qualify as an improvement to an
existing technology. As discussed above, we conclude Appellant’s generic
computer-implemented method performs steps that can be performed
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alternatively as mental processes. See independent claim 1. Moreover, the
“‘mere automation of manual processes using generic computers’ . . . ‘does
not constitute a patentable improvement in computer technology,’” Trading
Techs. Int’l v. IBG LLC, 921 F.3d 1378, 1384 (Fed. Cir. 2019) (quoting
Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1055 (Fed. Cir.
2017).
Accordingly, on this record, we conclude sole independent claim 1
does not recite an improvement to the functionality of a computer or other
technology or technical field. See MPEP § 2106.05(a).
Appellant advances no arguments that any of method claims on appeal
are tied to a particular machine, or transform an article to a different state or
thing. See MPEP § 2106.05(c).
Appellant does not advance further substantive, persuasive arguments
as to any particular “meaningful” claim limitations, such as those of the
types addressed under MPEP § 2106.05(e), that impose meaningful limits on
the judicial exception.9
Appellant has not argued, nor do we find, that the additional generic
computer, memory, data stores, network, and server limitations (bolded in
Table One supra) do more than generally link the abstract idea (italicized in
Table One) to a particular technological environment.

9 See 2019 Memorandum, 84 Fed. Reg. 55, citing MPEP § 2106.05(e):
“[A]pply[ing] or us[ing] the judicial exception in some other 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.” (emphasis added).
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Accordingly, on this record, we conclude representative independent
claim 1 has no other argued meaningful limitations, as considered under
section 2106.05(e) of the MPEP, pursuant to the 2019 Memorandum.

MPEP § 2106.05(f)
Merely including instructions to implement
an abstract idea on a computer, or
Merely using a computer as a tool
to perform an abstract idea

We conclude Appellant’s claimed invention merely implements the
abstract idea using instructions executed on generic computer components,
as depicted in bold type in Table One, and as supported in our reproduction
of the Specification, paragraphs 19 and 23, supra. Thus, we conclude
Appellant’s claims merely use a programmed computer as a tool to perform
an abstract idea.

MPEP § 2106.05(g)
Adding insignificant extra-solution activity
to the judicial exception

As mapped in the right column of Table One, supra, we conclude that
representative independent claim 1 recites extra or post-solution activities
that courts have determined to be insufficient to transform judicially
excepted subject matter into a patent-eligible application. See MPEP
§ 2106.05(g); 84 Fed. Reg. at 55 n.31.

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MPEP § 2106.05(h)
Generally linking the use of the judicial exception to a particular
technological environment or field of use

The Supreme Court guides: “the prohibition against patenting
abstract ideas ‘cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment’ or [by] adding
‘insignificant postsolution activity.’” Bilski, 561 U.S. at 611–12, (quoting
Diehr, 450 U.S. at 191–92).
As noted above, Appellant argues:
the combination of elements recited in claim 1 provide
technical details which lead to an improved computer
functionality and are therefore inextricably tied to a server (e.g.
a computer) to provide a technology-based solution that
overcomes the disadvantages of prior art order management and
warehouse management systems. Claim l is directed to an
improvement in computer functionality which, in accordance
with MPEP 2106.04(a) is not abstract. Hence, claim 1 is not
directed to a judicial exception and is patent eligible.
Appeal Br. 11.
However, as noted above, we find Appellant has not provided
sufficient details regarding how the recited contract packager server,
memory, enterprise management server, network, first data store, second
data store, warehouse management server, and third data store (claim 1)
include more than mere instructions to perform the recited steps to qualify as
an improvement to an existing technology.
Therefore, we agree with the Examiner: “The additional limitations do
not constitute improvements to another technology, another technical field,
or to the computer itself and are not considered to be meaningful limitations
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beyond generally linking the use of the abstract idea to a particular
technological environment.” Final Act. 3 (emphasis added).
Nor do claims 1 and 9–15 on appeal present any other issues as set
forth in the 2019 Memorandum regarding a determination of whether the
additional generic elements integrate the judicial exception into a practical
application. See 2019 Memorandum, 84 Fed. Reg. at 55.
Thus, under Step 2A, Prong Two (MPEP §§ 2106.05(a)–(c) and (e)–
(h)), we conclude claims 1 and 9–15 do not integrate the judicial
exception into a practical application. Therefore, we proceed to Step 2B,
The Inventive Concept.
The Inventive Concept – Step 2B
Under the 2019 Memorandum, only if a claim: (1) recites a judicial
exception, and (2) does not integrate that exception into a practical
application, do we then look to whether the claim adds a specific limitation
beyond the judicial exception that is not “well-understood, routine,
conventional” in the field (see MPEP § 2106.05(d)); or, simply appends
well-understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception.
We find unpersuasive Appellant’s arguments that analogize the claims
on appeal to the subject claims considered by the court in Amdocs (Israel)
Limited v. Openet Telecom, Inc., 841 F.3d 1288 (2016). Appeal Br. 18–19.
In particular, Appellant submits that “the present claims are more closely
aligned to the claims in Amdocs, in particular the ‘065 patent, which
concerns ‘a system, method, and computer program for merging data in a
network-based filtering and aggregating platform as well as a related
apparatus for enhancing network accounting data records.’” Appeal Br. 12.
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The benefits of the claims in Amdocs were possible because of
the distributed, remote enhancement that produced an
unconventional result - reduced data flows and the possibility of
smaller databases. Similarly, the benefits of claim l of the
present application are possible because of the combination of
elements recited above that produce an unconventional result –
reduced need for communications while maintaining
synchronization between servers.
Appeal Br. 13 (emphasis added).
In support, Appellant recites the claim language, and urges:
Thus, the combination of elements in independent claim l work
together in a particular manner to enhance records, which result
in a technical improvement over prior art technologies and
serves to improve the performance of the system itself. Further,
the combination of elements cannot be regarded as being well-
understood, routine and conventional. Rather, the claimed
solution is necessarily rooted in computer technology and
provides meaningful limitations that confine the claims to a
particular useful application. Accordingly, Applicant submits
that the combination of elements recited in independent claim 1,
when viewed as a whole, amount to “significantly more” than
the judicial exception and hence independent claim 1 is patent
eligible (Step 2B: Yes).
Appeal Br. 15–16 (emphasis added).
In Amdocs, the Federal Circuit held that claim 1 of the ’065 patent:
is also like the claims in BASCOM because even though the
system in the ’065 patent relies upon some arguably generic
limitations, when all limitations are considered individually and
as an ordered combination, they provide an inventive concept
through the use of distributed architecture. This is similar to the
design in BASCOM which permitted the invention to have a
filtering tool with the benefits of a filter on a local computer
and the benefits of a filter on an ISP server. The benefits in
BASCOM were possible because of customizable filtering
features at specific locations remote from the user. Similarly,
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the benefits of the ’065 patent’s claim 1 are possible because of
the distributed, remote enhancement that produced an
unconventional result—reduced data flows and the possibility
of smaller databases. This arrangement is not so broadly
described to cause preemption concerns. Instead, it is narrowly
circumscribed to the particular system outlined. As in
BASCOM, this is a technical improvement over prior art
technologies and served to improve the performance of the
system itself.
Amdocs, 841 F.3d at 1302 (emphasis added).
We are not persuaded by Appellant’s reliance upon Amdocs, because
there is nothing in Appellant’s claims that provides benefits based upon a
“distributed, remote enhancement that produce[s] an unconventional
result—reduced data flows and the possibility of smaller databases,” as was
found by the court in Amdocs. Id. Appellant’s claims are silent regarding
any mention of a database, much less any indication that claim 1 provides
unconventional results produced by a distributed, remote enhancement that
reduces data flows and allows for the possibility of smaller databases, as was
the case in Amdocs.

Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018)
Berkheimer was decided by the Federal Circuit on February 8, 2018.
On April 19, 2018, the PTO issued the Memorandum titled: “Changes in
Examination Procedure Pertaining to Subject Matter Eligibility, Recent
Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.)” (hereinafter
“Berkheimer Memorandum”).10 The Berkheimer Memorandum provided

10 Available at https://www.uspto.gov/sites/default/files/documents/memo-
berkheimer-20180419.PDF.
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specific requirements for an Examiner to support with evidence any finding
that claim elements (or a combination of elements) are well-understood,
routine, or conventional.
Under Step 2B, the Examiner finds, inter alia:
The interactions between the various servers (receiving an
order, formatting the order, storing the order, sending a
request for a subcomponent, etc.), as described by the applicant,
are merely conventional, routine operations of generic
computer systems (sending, receiving, and processing data). It
has long been well-known and conventional to reformat data
to enable communication between various computer systems
and storage of data. These things do not provide meaningful
limitations that transform the abstract idea into a patent eligible
application of the abstract idea such that the claims amount to
significantly more than the abstract idea itself.
Final Act. 4–5 (emphasis added).
In the Appeal Brief, filed Oct. 5, 2018, Appellant cites to Berkheimer.
Appeal Br. 1–13. Appellant makes a demand for Berkheimer evidence, such
as one or more of the specific types of factual evidence identified in the
USPTO Berkheimer Memorandum: “In particular, the Examiner has failed
to provide the requisite support that the above elements and combination of
elements are well-understood, routine and conventional.” Appeal Br. 14.
The Examiner disagrees with Appellant, and further explains the basis
for the rejection:
Lastly, the examiner gives official notice that the features in
question (receiving an order, formatting the order, creating an
order record, updating inventory records, and synchronizing
multiple data records) alone and in combination are well-
known, routine, and conventional matters. Furthermore, since
appellant has drawn special attention in his arguments to the
issue of synchronizing multiple data records, the examiner
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hereby provides prior art references to support the contention
that these are routine, conventional matters. Deitz et al. (US
7,020,876) suggest that it is common practice to synchronize
multiple copies of a database in campaign management (see col.
8 line 1-12). Sadiq et al. (US 6,029,177) suggest that it is
routine to synchronize the update of multiple databases to
maintain data persistence in conventional distributed systems
(see col. 1 line 43-53). Both of these references have priority
dates that are well before that of the instant application.
Ans. 5 (emphasis added).
Appellant does not file a Reply Brief to further rebut the Examiner’s
findings, extrinsic evidence, and responsive explanations. Id.
Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(iv).
Further, regarding the use of the recited generic computer components
identified above in Table One, the Supreme Court has held “the mere
recitation of a generic computer cannot transform a patent-ineligible abstract
idea into a patent-eligible invention.” Alice, 573 U.S. at 223. Our reviewing
court provides additional guidance: See FairWarning, 839 F.3d at 1096
(“[T]he use of generic computer elements like a microprocessor or user
interface do not alone transform an otherwise abstract idea into patent-
eligible subject matter.”); OIP Techs, 788 F.3d at 1363 (claims reciting, inter
alia, sending messages over a network, gathering statistics, using a
computerized system to automatically determine an estimated outcome, and
presenting offers to potential customers found to merely recite “‘well-
understood, routine conventional activit[ies],’ either by requiring
conventional computer activities or routine data-gathering steps” (alteration
in original)).
This reasoning is applicable here. Therefore, on the record before us,
Appellant has not shown that the claims on appeal add a specific limitation
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beyond the judicial exception that is not well-understood, routine, and
conventional, when the claim limitations are considered both individually
and as an ordered combination. See MPEP § 2106.05(d).
In light of the foregoing, we conclude, under the 2019 Memorandum,
that each of Appellant’s claims 1 and 9–15 considered as a whole, is
directed to a patent-ineligible abstract idea that is not integrated into a
practical application, and does not include an inventive concept.
Accordingly, for the reasons discussed above, we sustain the
Examiner’s Rejection under 35 U.S.C. § 101 of claims 1 and 9–15.

CONCLUSION
Under the Director’s 2019 Memorandum, as governed by relevant
case law, we conclude all claims 1 and 9–15, rejected under 35 U.S.C.
§ 101, are directed to patent-ineligible subject matter.
DECISION SUMMARY

FINALITY AND RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED

Claims
Rejected
35 U.S.C. § Reference(s)Basis Affirmed Reversed
1, 9–15 101 Eligibility 1, 9–15