Yong Jae Kim et al.

Patent Trials and Appeals Board

Aug 28, 2019

14588067 - (D) (P.T.A.B. Aug. 28, 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.
14/588,067 12/31/2014 Yong Jae KIM 113930-2
(FE13002/PCT/US)
8105
24256 7590 08/28/2019
DINSMORE & SHOHL LLP
255 East Fifth Street, Suite 1900
CINCINNATI, OH 45202
EXAMINER
HONG, THOMAS J
ART UNIT PAPER NUMBER
3715
MAIL DATE DELIVERY MODE
08/28/2019 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte YONG JAE KIM, SEO JOON KIM,
JONG HO SHIN, and SEUNG YUN CHO1
____________

Appeal 2019-001300
Application 14/588,067
Technology Center 3700
____________

Before DANIEL S. SONG, MICHAEL L. HOELTER, and
MICHAEL L. WOODS, Administrative Patent Judges.

WOODS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Yong Jae Kim et al. (“Appellants”) appeal under 35 U.S.C. § 134
from the Examiner’s decision finally rejecting claims 1, 5–9, 11, and 15–19.
Appeal Br. 4.
We have jurisdiction over this appeal under 35 U.S.C. § 6(b).

SUMMARY OF THE DECISION
We AFFIRM.

1 According to Appellants, the real party in interest is KNOWRE KOREA
INC. Appeal Br. 2.
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CLAIMED SUBJECT MATTER
Appellants’ invention relates to education services provided to a user
electronically, such as online. See Spec. 1 (Field of the Invention,
Background). Claims 1 and 11 are independent. Response to Notification
of Non-Compliant Appeal Brief at 2 (“Claims Appendix”). Claims 1 and 11
are illustrative and reproduced below, with emphases added to the
limitations discussed in this Decision.
1. A system for providing education service based on
knowledge units, the system comprising:
a database configured to store knowledge units and
information on a user’s achievements for the knowledge units;
a curriculum generation unit configured to generate a
curriculum based on the user’s achievement for at least one
knowledge unit stored in the database, wherein the at least one
knowledge unit includes at least one of an interpretative
knowledge unit, a formulaic knowledge unit, and a
computational knowledge unit, and the curriculum includes at
least one problem composed based on the at least one
knowledge unit;
a knowledge providing unit configured to provide the
user with the at least one problem via a user interface, and to
provide the user with contents on the knowledge unit associated
with the user’s response to the at least one problem via the user
interface, wherein the at least one problem is composed by a
knowledge chain comprised of the at least one knowledge unit
and at least one other knowledge unit, and the knowledge chain
includes identification information of the at least one
knowledge unit and the at least one other knowledge unit; and
a user knowledge analysis unit configured to determine
the user’s achievement for the at least one knowledge unit
based on a feedback that the user provided in response to at
least one other problem composed by the knowledge chain, and
to reflect information on the user’s achievement for the at least
one knowledge unit to the database,
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wherein the at least one problem is assigned the
identification information of the at least one knowledge unit
and the at least one other knowledge unit in the form of
metadata, and
wherein the at least one knowledge unit is organized with
at least one yet other knowledge unit to form a matrix
representing an association between the at least one knowledge
unit and the at least one yet other knowledge unit, and the
association is identified when the at least one knowledge unit
and the at least one yet other knowledge unit constitute another
knowledge chain.

11. A non-transitory computer readable medium storing
computer readable instructions which, when executed by a
computer system, perform a method for providing education
service based on knowledge units, the method comprising:
generating a curriculum based on a user’s achievement
for at least one knowledge unit stored in a database, wherein
the at least one knowledge unit includes at least one of an
interpretative knowledge unit, a formulaic knowledge unit and a
computational knowledge unit, and the curriculum includes at
least one problem composed based on the at least one
knowledge unit;
providing the user with the at least one problem via a
user interface, and providing the user with contents on the
knowledge unit associated with the user’s response to the at
least one problem via the user interface, wherein the at least one
problem is composed by a knowledge chain comprised of the at
least one knowledge unit and at least one other knowledge unit,
and the knowledge chain includes identification information of
the at least one knowledge unit and the at least one other
knowledge unit; and
determining the user’s achievement for the at least one
knowledge unit based on a feedback that the user provided in
response to at least one other problem composed by the
knowledge chain, and reflecting information on the user’s
achievement for the at least one knowledge unit to the database,
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wherein the at least one problem is assigned the
identification information of the at least one knowledge unit
and the at least one other knowledge unit in the form of
metadata, and
wherein the at least one knowledge unit is organized with
at least one yet other knowledge unit to form a matrix
representing an association between the at least one knowledge
unit and the at least one yet other knowledge unit, and the
association is identified when the at least one knowledge unit
and the at least one yet other knowledge unit constitute another
knowledge chain.
Claims Appendix 2, 3–4 (emphases added).

THE REJECTIONS
The Examiner rejected:
(a) Claims 1, 5–9, 11, and 15–19 under 35 U.S.C. § 101 as directed to
patent-ineligible subject matter. Final Act. 2.
(b) Claims 1, 5–9, 11, and 15–19 under 35 U.S.C. § 103(a) as
unpatentable over Liu (US 2006/0099563 A1, published May 11,
2006) and Weems (US 2013/0266916 A1, published Oct. 10,
2013). Final Act. 4.

ANALYSIS
I. Rejection (a): Eligibility of Claims 1, 5–9, 11, and 15–19
Appellants contest the rejection of claims 1, 5–9, 11, and 15–19
collectively. See Appeal Br. 10–20; see also id. at 20 (“Claim 11 includes
substantially similar claim elements as claim 1 and would thus follow a
similar analysis.”). We select claim 11 as representative, treating claims 1,
5–9, and 15–19 as standing or falling with representative claim 11. See 37
C.F.R. § 41.37(c)(1)(iv).
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A. Our Guidance
The Patent Laws provide “[w]hoever 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.” 35 U.S.C. § 101. However,
“this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable.” Alice Corp. Pty.
Ltd. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (internal quotation marks
and citation omitted).
Because “‘all inventions . . . embody, use, reflect, rest upon, or apply
laws of nature, natural phenomena, or abstract ideas,’” a framework was set
forth to distinguish patents that claim laws of nature, natural phenomena,
and abstract ideas from those that claim patent-eligible applications of these
concepts. Id. at 217 (quoting Mayo Collaborative Serv. v. Prometheus
Labs., Inc., 566 U.S. 66, 71 (2012)). First, it is determined whether claims at
issue are directed to a patent-ineligible concept. Id. If so, the elements of
each claim are considered, both individually and as an ordered combination,
to determine if there are additional elements that transform the nature of the
claim into a patent eligible application, e.g., by providing an “inventive
concept” that ensures the patent amounts to significantly more than a patent
on the ineligible concept itself. Id. at 217–218 (internal quotation marks and
citation omitted).
Earlier this year, the USPTO issued guidance about this framework.
See 2019 REVISED PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed.
Reg. 50 (Jan. 7, 2019) (“Revised Guidance”). To determine whether a claim
is “directed to” an abstract idea, we evaluate whether the claim recites one of
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the judicial exceptions (law of nature, natural phenomenon, or abstract idea)
and, if so, whether the recited judicial exception is integrated into a practical
application, e.g., by applying, relying on, or using the judicial exception in a
manner that imposes a meaningful limit on the judicial exception. Id. at 53.
If a claim does not recite a judicial exception, or if it integrates a judicial
exception into a practical application, the claim is patent eligible. Id. at 54.
A claim that recites a judicial exception and does not integrate the
judicial exception into a practical application is “directed to” the judicial
exception, but the claim may recite additional elements that render the claim
patent eligible. Id. at 56. Additional elements are evaluated individually
and in combination to determine whether they provide an inventive concept
that amounts to significantly more than the exception itself so that the claim
is patent eligible. Id. A claim that adds a specific limitation or combination
of limitations that are not well-understood, routine, conventional activity in
the field is indicative that an inventive concept may be present. Id. A claim
that appends well-understood, routine, conventional activities previously
known to the industry and specified at a high level of generality to a judicial
exception is indicative that an inventive concept may not be present. Id.

B. Revised Guidance, Step 2A, Prong One: Does Claim 11 Recite a
Judicial Exception?
The Examiner determined that claim 11 is abstract. Final Act. 2. In
particular, the Examiner submits that “the claims are directed to mentally
performable educational curriculum/problems generation based on students’
achievement by obtaining and analyzing data.” Ans. 3.
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In support of this determination, the Examiner explains that
“collecting information, including when limited to particular content (which
does not change its character as information), is treated as within the realm
of abstract ideas.” Id. (citing Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1349 (Fed. Cir. 2015); OIP Techs., Inc. v. Amazon.com, Inc.,
788 F.3d 1359, 1363 (Fed. Cir. 2015); Content Extraction & Transmission
LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1347 (Fed. Cir.
2014); Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d
1344, 1351 (Fed. Cir. 2014); CyberSource Corp. v. Retail Decisions, Inc.,
654 F.3d 1366, 1370 (Fed. Cir. 2011)).
The Examiner further explains that “analyzing information by steps
people go through in their minds, or by mathematical algorithms, without
more, is treated as essentially mental processes within the abstract-idea
category.” Ans. 3–4 (emphasis added) (citing In re TLI Communications
LLC Patent Litig., 823 F.3d 607, 613 (Fed. Cir. 2016); Digitech, 758 F.3d at
1351; SmartGene, Inc. v. Advanced Biological Labs., SA, 555 F. App’x 950,
955 (Fed. Cir. 2014); Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of
Canada (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012); CyberSource, 654
F.3d at 1372; SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319, 1333
(Fed. Cir. 2010); see also Mayo, 566 U.S. at 84–85; Parker v. Flook, 437
U.S. 584, 589–90 (1978); Gottschalk v. Benson, 409 U.S. 63, 67 (1972)).
Appellants contend that the claims are not directed to an abstract idea,
“but instead are directed to specific applications of generating a curriculum
based on a user’s achievement and providing the user with at least one
problem composed by a knowledge chain comprised of at least one
knowledge unit and at least one other knowledge unit.” Appeal Br. 11.
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We disagree with Appellants.
The Revised Guidance extracts and synthesizes key concepts
identified by the courts as abstract ideas into the following three groups:
(a) Mathematical concepts—mathematical relationships,
mathematical formulas or equations, mathematical
calculations;[]
(b) Certain methods of organizing human
activity—fundamental economic principles or practices
(including hedging, insurance, mitigating risk); commercial or
legal interactions (including agreements in the form of
contracts; legal obligations; advertising, marketing or sales
activities or behaviors; business relations); managing personal
behavior or relationships or interactions between people
(including social activities, teaching, and following rules or
instructions);[] and
(c) Mental processes—concepts performed in the human
mind[] (including an observation, evaluation, judgment,
opinion).[]
Revised Guidance, 84 Fed. Reg. at 52 (emphasis added).
We agree with the Examiner that claim 11, under its broadest
reasonable interpretation, recites mental processes. Ans. 3 (“the claims are
directed to mentally performable educational curriculum/problems
generation based on students’ achievement by obtaining and analyzing
data”).
A claim recites a mental process when the claim encompasses acts
people can perform using their minds or pen and paper. See, e.g.,
CyberSource, 654 F.3d at 1372–73 (determining that a claim whose “steps
can be performed in the human mind, or by a human using a pen and paper”
is directed to an unpatentable mental process). This is true even if the claim
recites that a generic computer component performs the acts. See, e.g.,
Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir.
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2015) (“Courts have examined claims that required the use of a computer
and still found that the underlying, patent-ineligible invention could be
performed via pen and paper or in a person’s mind.”); see also Revised
Guidance, 84 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”); see
also Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1146–47
(Fed. Cir. 2016) (“[W]e continue to ‘treat[ ] analyzing information by steps
people go through in their minds, or by mathematical algorithms, without
more, as essentially mental processes within the abstract-idea category”’)
(internal citation omitted).
Focusing on Appellants’ argument that the claims are not directed to
an abstract idea “but instead are directed to specific applications of
generating a curriculum based on a user’s achievement . . .” (Appeal Br. 11),
a person can perform this limitation using his or her mind and a pen (or
pencil) and paper.
In this instance, a teacher can perform the step of
generating a curriculum based on a user’s achievement
for at least one knowledge unit . . . wherein the at least one
knowledge unit includes at least one of an interpretative
knowledge unit, a formulaic knowledge unit and a
computational knowledge unit, and the curriculum includes at
least one problem composed based on the at least one
knowledge unit
by simply administering and grading a math test with a pencil and paper.
The Specification defines “knowledge units” as “knowledge module
required to solve the problems.” Spec. 7. The term “knowledge module” is
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not further mentioned in the Specification. See, generally, id. The
Specification provides examples of an “interpretive knowledge unit” as
“[t]he pizza is circular,” a “formulaic knowledge unit” as “[t]he area of a
circle = ½ x radius x circumference”, and a “computational knowledge unit”
as “[i]f there is a denominator on either side of an equation, then multiply
both sides of the equation by a number equal to the denominator.” Id. at 7.
We find that the rejected claims recite mental processes that people,
such as math teachers, can perform using their minds and with a pencil and
paper. In this instance, once a teacher administers a math test, and based on
the student’s test performance, the teacher may “generate a curriculum based
on [a] . . . user’s achievement” that may simply include retaking the subject
or advancing to the next level of study.
In this particular example, the teacher tests the student’s ability to
calculate the surface area of a pizza. In such an example, the teacher would
test the student’s ability to understand that the pizza is circular (“interpretive
knowledge unit”) and that the area of a circle is (“formulaic
knowledge”). In a related question, the teacher may inform the student that
½ of the area of the pizza is 20 square inches, and ask the student to
determine the area of a full-size pizza. In response to this question, the
student would (hopefully) know to multiply 20 by 2—as 2 is the
denominator of ½—in calculating the area of the pizza as 40 square inches
(“computational knowledge unit”). See also Spec. 7 (providing examples of
“interpretative knowledge unit[s],” “formulaic knowledge unit[s],” and
“computational knowledge unit[s].”).
Thus, we agree with the Examiner that the rejected claims recite
mental processes, which are merely abstract ideas (see Ans. 3–4), and that
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people can perform the claimed steps using their minds and with a pencil
and paper. See CyberSource, 654 F.3d at 1372–73 (All of “claim 3’s
[method] steps can all be performed in the human mind[, or by a human
using a pen and paper] . . . . Such a method that can be performed by human
thought alone is merely an abstract idea and is not patent-eligible under
§ 101.”).

C. Revised Guidance, Step 2A, Prong Two: Is There Integration into a
Practical Application?
Under the Revised Guidance, we now must determine if additional
elements in the claims integrate the judicial exception into a practical
application. See MPEP § 2106.05(a)–(c), (e)–(h).
We discern no additional element (or combination of elements)
recited in Appellants’ representative claim 11 that integrates the judicial
exception into a practical application. See Revised Guidance, 84 Fed. Reg.
at 54–55 (“Prong 2”). For example, Appellants’ claimed additional elements
(e.g., “computer system,” “database,” “user interface,” and “metadata”) do
not: (1) improve the functioning of a computer or other technology; (2) are
not applied with any particular machine (except for a generic computer); (3)
do not effect a transformation of a particular article to a different state; and
(4) are not applied in any meaningful way beyond generally linking the use
of the judicial exception to a particular technological environment, in a
manner that the claim as a whole is more than a drafting effort designed to
monopolize the exception. See MPEP §§ 2106.05(a)–(c), (e)–(h).
Appellants contend that the “claimed subject matter similarly provides
efficient and improved education services by employing knowledge units,
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knowledge chains, and a matrix representing an association between
knowledge units.” Appeal Br. 12 (emphasis added); see also id. at 16 (“the
claims of the present application solve a problem in the software arts of
providing problems to a user by composing the problem using a knowledge
chain comprising of a plurality of knowledge units, and a matrix of
knowledge units”); see also Reply Br. 2–3 (“the claimed subject matter
solves a problem in the software arts, namely the problem that existing
programs do not provide a user with an ability to provide customized
problems composed by a knowledge chain comprised of at least one
knowledge unit and at least one other knowledge unit.”). Appellants further
argue that “the claims of the present application do[] not unduly monopolize
the basic tools of scientific and technological work” and that “[t]he Office
has produced guidance regarding preemption in the context of abstract
ideas.” Appeal Br. 12–13.
Appellants’ arguments are not persuasive.
We first point out that using a computer to gain efficiency over a
manual process is not sufficient to distinguish a claim from a patent-
ineligible abstract idea. See OIP Techs., 788 F.3d at 1363 (“[R]elying on a
computer to perform routine tasks more quickly or more accurately is
insufficient to render a claim patent eligible.”). We agree with the Examiner
that “the functions of the computer are described in vague terms or
generically without any meaningful limitations.” Ans. 7.
As to the claimed “knowledge units,” “knowledge chains,” and
“matrixes,” Appellants’ Specification discusses these elements in relation to
its Figure 2a. See Spec. 6–7. We reproduce Figure 2a, below:
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Figure 2a, reproduced above, is a diagram to “facilitate understanding of the
knowledge units and knowledge chains of the present invention.” Spec. 3.
Figure 2a itself illustrates three views: (1) first view, top left, illustrating
“knowledge units”; second view (2), top right, illustrating a “knowledge
chain”; and (3) third view, bottom, illustrating a “matrix.” Id. at 7.
The Specification further describes:
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According to the present invention, individual problems
are composed on the basis of knowledge units, which are
knowledge modules required to solve the problems. For
example, in case of the problem, “Find the radius of a pizza
with an area of 1,250 cm2 and a circumference of 125 cm.,”
the knowledge unit may be an interpretative knowledge unit
(e.g., “The pizza is circular.”), a formulaic knowledge unit (e.g.,
“The area of a circle = 1/2 x radius x circumference.”), or a
computational knowledge unit (e.g., “If there is a denominator
on either side of an equation, then multiply both sides of the
equation by a number equal to the denominator.” or “If an
equation has an unknown multiplied by a constant, then divide
both sides of the equation by the constant.”), as illustrated in the
first view of Fig. 2a.
As shown in the second view of Fig. 2a, at least one of
such knowledge units may constitute a knowledge chain, which
may be of a similar problem type. The knowledge chain may be
a chunk of information that sequentially includes the
identification information of the knowledge units constituting
the knowledge chain.
Further, as shown in the third view of Fig. 2a, one
knowledge unit may be solely used in one knowledge chain,
while it may be usually used in a variety of knowledge chains.
Therefore, the knowledge units that may constitute a knowledge
chain together may be associated with each other and organized
into the form of a matrix (three-dimensional in certain cases).
Id.
Appellants argue that by “employing knowledge units, knowledge
chains, and a matrix,” “efficient and improved education services” are
provided. Appeal Br. 12 (emphasis added); see also id. at 16 (“Because
these knowledge units are stored in the database and the association between
knowledge units is stored in the form of a matrix, generating problems based
on the stored knowledge units and the association information of the
knowledge units can be implemented quickly and efficiently” (emphasis
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added)). Yet, as shown in Figure 2a and discussed above, these “knowledge
units” are simply “knowledge modules,” or information, that vaguely form
“knowledge chains” and may be “organized” to vaguely form a “matrix.”
Appellants have not identified any “improved technological result”
attributable to the claimed invention that previously could not be produced
by humans or identified rules specifically designed to achieve an improved
technological result in conventional industry practice. The claims recite
nothing more than the “association” and “organization” of basic information
(e.g., a circle is round, equation for area of a circle). Furthermore, simply
using a computer to gain efficiency over a manual process is not sufficient to
distinguish a claim from a patent-ineligible abstract idea. See OIP Techs.,
788 F.3d at 1363.
Appellants further argue that the “Final Office Action has merely
stated a conclusion, without evidence or statement of principles relied on,
that claims 1, 5-9, 11, and 15-19 are directed to an abstract concept.”
Appeal Br. 14.
We disagree, as at least page 2 of the Final Office Action discusses
“education service based on knowledge units” and references TLI
Communications. In TLI Communications, the Federal Circuit decided that
claims reciting a “telephone unit,” a “digital pick up unit” for “recording
images” (a digital camera), and a “server” for “storing the digital images”
were directed to an abstract idea and failed to satisfy § 101’s requirements.
TLI Communications, 823 F.3d at 610–13.
Furthermore, applying the abstract ideas on a “computer system” and
“user interface” is not an integration. See Alice, 573 U.S. at 223 (“[M]ere
recitation of a generic computer cannot transform a patent-ineligible abstract
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idea into a patent-eligible invention.”) (quoting Mayo, 566 U.S. at 72); see
also Bancorp Servs., 687 F.3d at 1278 (“To salvage an otherwise patent-
ineligible process, a computer must be integral to the claimed invention,
facilitating the process in a way that a person making calculations or
computations could not.”).
For the foregoing reasons, we determine that claim 11 (1) recites a
judicial exception and (2) does not integrate that exception into a practical
application. Thus, representative claim 11 is directed to the aforementioned
abstract idea.

D. Revised Guidance Step 2B: Does Claim 1 Recite an Inventive
Concept?
Turning to the second step of the Alice inquiry, we now look to
whether claim 1 contains any “inventive concept” or adds anything
“significantly more” to transform the abstract concept into a patent-eligible
application. Alice, 573 U.S. at 217–18 (internal quotation marks and citation
omitted). As recognized by the Revised Guidance, an “inventive concept”
under Alice step 2 can be evaluated based on whether an additional element
or combination of elements:
[(1) a]dds a specific limitation or combination of
limitations that are not well-understood, routine, conventional
activity in the field, which is indicative that an inventive
concept may be present; or
[(2)] simply appends well-understood, routine,
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial exception,
which is indicative that an inventive concept may not be
present.[]
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See Revised Guidance, 84 Fed. Reg. at 56; see also MPEP § 2106.05(d).
Appellants contend that the claims “recite significantly more than an
abstract idea, thus satisfying step 2B.” Appeal Br. 17. In support of this
argument, Appellants contend that “the Office Action fails to substantiate
the rejection under Step 2B as required under the Berkheimer Memo.” Id.
Appellants explain that “[i]n a step 2B analysis, an additional element (or
combination of elements) is not well-understood, routine or conventional
unless the examiner finds, and expressly supports a rejection in writing.” Id.
at 18 (emphasis omitted). Appellants assert that “knowledge units,
knowledge chains, and a matrix are not well-understood, routine or
conventional.” Id. at 20.
We disagree with Appellants’ arguments that (1) the Examiner failed
to substantiate the rejection by complying with the Berkheimer Memo (id. at
17) and (2) that the claimed “knowledge units,” “knowledge chains,” and
“matrix” are not well-understood, routine, or conventional (id. at 20).
First, we address Appellants’ argument that the Examiner did not
comply with the Berkheimer Memo. Id. at 17. As explained in Berkheimer,
“[w]hether something is well-understood, routine, and conventional to a
skilled artisan at the time of the patent is a factual determination.” See
Berkheimer v. HP Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018). The
Berkheimer Memo provides that an examiner may support a rejection in
writing by providing “[a] citation to one or more of the court decisions
discussed in MPEP § 2106.05(d)(II) as noting the well-understood, routine,
conventional nature of the additional element(s).” REQUEST FOR COMMENTS
ON DETERMINING WHETHER A CLAIM ELEMENT IS WELL-UNDERSTOOD,
ROUTINE, CONVENTIONAL FOR PURPOSES OF SUBJECT MATTER ELIGIBILITY,
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83 Fed. Reg. 17536, 17537 (Apr. 20, 2018). The cited section of the MPEP
lists TLI Communications as a court decision noting the well-understood,
routine, and conventional nature of additional elements. MPEP
§ 2106.05(d)(II)(i) (listing TLI Communications in support of “[r]eceiving or
transmitting data over a network, e.g., using the Internet to gather data”). By
citing TLI Communications on page 2 of the Final Office Action, the
Examiner complied with the Berkheimer Memo.
We now turn to Appellants’ second argument that the claimed
“knowledge units,” “knowledge chain,” and “matrix” are not
well-understood, routine, or conventional. See Appeal Br. 20. As discussed
above (supra Parts I.B, I.C), we find that these limitations recite nothing
more than the “association” and “organization” of basic information (e.g., a
circle is round, area of a circle). See supra Parts I.B, I.C. We agree with the
Examiner that the claimed “knowledge units,” “knowledge chains,” and
“matrix” do not add anything “significantly more” to transform the abstract
concept into a patent-eligible application. Final Act. 2–3 (referencing TLI
Communications).
As to the claimed “computer system,” database,” and “user interface,”
simply using a computer to gain efficiency over a manual process is not
sufficient to distinguish a claim from a patent-ineligible abstract idea. See
OIP Techs., 788 F.3d at 1363; see also Accenture Global Servs., GmbH v.
Guidewire Software, Inc., 728 F.3d 1336, 1344–45 (Fed. Cir. 2013) (claims
reciting “generalized software components arranged to implement an
abstract concept [of generating insurance-policy-related tasks based on rules
to be completed upon the occurrence of an event] on a computer” not patent
eligible); see also Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333–34 (Fed.
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Cir. 2012) (“[s]imply adding a ‘computer aided’ limitation to a claim
covering an abstract concept, without more, is insufficient to render [a]
claim patent eligible” (internal citation omitted)). We agree with the
Examiner that “the claimed ‘system,’ ‘non-transitory computer readable
medium storing computer readable instructions,’ ‘database,’ and ‘display
device’ are merely using a computer or machinery as a tool to perform an
existing process, which courts repeatedly found not significantly more.”
Ans. 12 (citing MPEP § 2106.05(f)(2)).
As to Appellants’ argument regarding preemption (Appeal Br. 13–14),
this argument is addressed in our 35 U.S.C. § 101 analysis. Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015);
see also Two-Way Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d
1329, 1339 (Fed. Cir. 2017) (where patent claims are deemed patent
ineligible, “preemption concerns are fully addressed and made moot”); see
Ans. 8–9 (“Based on the supra 101 analysis, claimed invention is concluded
to be non-patentable subject matter. Therefore, the preemption concerns are
fully addressed and made moot.”).
Because Appellants’ independent claim 11 is directed to a
patent-ineligible abstract concept, does not include additional elements that
integrate the judicial exception into a practical application, and does not add
a specific limitation beyond the judicial exception that is not
“well-understood, routine, [and] conventional,” we sustain the Examiner’s
rejection of the claims 1, 5–9, 11, and 15–19 under 35 U.S.C. § 101 as being
directed to judicially excepted subject matter.
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E. Summary of § 101 Rejection
We sustain the rejection of claim 11 and claims 1, 5–9, and 15–19,
which fall therewith, as directed to patent-ineligible subject matter under 35
U.S.C. § 101. 37 C.F.R. § 41.37(c)(1)(iv).

II. Rejection (b): Claims 1, 5–9, 11, and 15–19 Unpatentable Over
Weems and Liu
Appellants contest the rejection of claims 1, 5–9, 11, and 15–19
collectively. See Appeal Br. 20–28; see also id. at 20. We select claim 1 as
representative, treating claims 5–9, 11, and 15–19 as standing or falling with
representative claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).

A. Examiner’s Rejection
In rejecting claim 1, the Examiner relies on Liu for disclosing the
claimed “system for providing education service based on knowledge units”
comprising a “database,” a “curriculum generation unit,” a “knowledge
providing unit,” and a “user knowledge analysis unit.” Final Act. 5–6
(internal citations omitted).
Liu describes a teaching system that includes explanatory materials
and problems on an interactive basis that adapts to the student’s performance
to identify weaknesses. Liu ¶ 57. For example, the identified weaknesses
may be addressed by providing additional practice problems or by providing
a detailed analysis or diagnosis. Id. The system may also be embodied on a
web site, to permit communication between students, teachers, and parents.
Id.
The Examiner acknowledges, however, that Liu does not disclose “at
least one knowledge unit includes at least one of an interpretive knowledge
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unit, a formulaic knowledge unit, and a computational knowledge unit.” Id.
at 6.
To address this missing limitation, the Examiner relies on Weems and
finds that Weems discloses reasoning blocks (“knowledge units”) including
an “interpretive knowledge unit,” a “formulaic knowledge unit,” and a
“computational knowledge unit.” Id. at 7 (citing Weems ¶¶ 38, 107). In
combining Liu with Weems, the Examiner reasons that a skilled artisan
would have modified “the multi-step mathematic education in Liu by
adopting the reasoning block as taught in Weems in order to find a balance
between structure and meaning of mathematics.” Id. (citing Weems ¶ 14).

B. Analysis
In contesting this rejection, Appellants present several arguments,
which we address separately, below.
First, Appellants argue that “Liu and Weems do not teach or fairly
suggest that ‘the association is identified when the at least one knowledge
unit and the at least one yet other knowledge unit constitute another
knowledge chain.’” Appeal Br. 23 (emphases added).
Appellants’ first argument is not persuasive.
We agree with the Examiner that “knowledge units” and “knowledge
chains” “are unique terms defined by Appellants.” Ans. 13. As discussed
above, the term “knowledge unit” is broadly defined by Appellants as
“knowledge modules required to solve problems.” Spec. 7 (“[K]nowledge
units, which are knowledge modules required to solve problems”); see also
supra Parts I.B, I.C. The term “knowledge chain” is broadly described as
being constituted of “at least one of such knowledge units.” Spec. 7
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(referencing Fig. 2a). As shown above in Figure 2a, and discussed above in-
depth, this “knowledge chain” is simply one or more “knowledge units,” or
pieces of information. Id.; supra Part I.C.
We further agree with the Examiner’s finding that Liu’s teaching of
generating multiple math problems meets this limitation. Ans. 17–18 (citing
Liu ¶¶ 27, 45). In particular, we agree with the Examiner that “providing the
second problem inevitably require[s] identifying any knowledge chain” and
that “providing a next question having partially shared knowledge units
implies that any association between the partially shared knowledge units
must be identified.” Id. at 17.
Second, Appellants argue that “Liu and Weems do not teach or
otherwise suggest that ‘the at least one knowledge unit is organized with at
least one yet other knowledge unit to form a matrix representing an
association between the at least one knowledge unit and the at least one yet
other knowledge unit.’” Appeal Br. 25 (emphasis added).
Appellants’ second argument is unavailing.
We agree with the Examiner’s interpretation that “the claimed
‘matrix’ can be found in a single association between two different
knowledge units.” Ans. 19. Indeed, and as explained above, the
Specification broadly describes “matrix” in the context of “knowledge units
that may constitute a knowledge chain together may be associated with each
other and organized into the form of a matrix.” Spec. 7; see also Fig. 2a; see
also supra Part I.C.
Turning to Liu, Liu discloses:
Each problem template will generally be associated with
a multi-step problem solving process. . . . Associated with each
step of a template are an instruction, a question, and one or
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more formulas for solution of that step. Each answer in that the
student provides during the multi-step process may have a
diagnosis code identifying a skill. . . . Process 100 uses the
question associated with a step of the problem when the student
is solving practice problems.
Liu ¶ 27.
Notably, Liu discloses the claimed “matrix” in its teaching of a
multi-step problem using a template. See, e.g., Liu ¶ 27 (“Each problem
template will generally be associated with a multi-step problem solving
process.”); see also Ans. 20 (finding the same). Each step of Liu’s process
is associated with a corresponding knowledge unit, such as a skill or
concept. See, e.g., Liu ¶ 27 (“Associated with each step of a template are an
instruction, a question, and one or more formulas for solution of that step.”);
see also Ans. 20 (finding the same). We further agree with the Examiner’s
finding that “Liu teaches the claimed matrix, i.e. association between two
different knowledge units, as a data relationship between diagnosis codes
associated with a specific problem.” Ans. 21 (citing Liu ¶ 51). Liu
discloses that “[e]ach of the diagnosis code tables 340 is linked to a
corresponding entry in problem body table 310 and therefore linked to a
specific problem.”). Liu ¶ 51.
Third, Appellants argue that
Liu and Weems do not teach or otherwise suggest “a
knowledge providing unit configured to provide the user with
the at least one problem via a user interface, and to provide the
user with contents on the knowledge unit associated with the
user’s response to the at least one problem via the user
interface.”
Appeal Br. 27 (emphasis added).
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As explained correctly by the Examiner, the claimed limitation refers
to feedback in response to the user’s answer. See Ans. 22 (“[T]he content
refers to the feedback in response to the user’s answers.”). In support of this
interpretation, the Specification provides that “the knowledge providing unit
220 may provide an indication that the user did not make an error in
connection with the knowledge unit . . . provide an indication that the user
made an error in connection with the knowledge unit.” Spec. 10; see also id.
at Fig. 4 (illustrating a feedback loop in response to the questions “Are the
Results Satisfactory?”).
Liu discloses the claimed limitation through its teaching of feedback
in its request for a student to try again after an incorrect response to a
question. Liu ¶ 29, Fig. 4; see also Ans. 22 (finding the same). In
particular, Liu discloses, “if the student answered the last question
incorrectly, step 168 may ask the student to try again.” Liu ¶ 29, Fig. 1.
In response to Appellants’ argument that Liu’s feedback does not
disclose the claimed limitation because, somehow, the “contents on the
knowledge unit are to include at least information on the knowledge unit”
(Reply Br. 5–6), we disagree. As discussed above, Appellants’ argument
appears to be premised on an overly-narrow understanding of what a
“knowledge unit” is. See supra Parts I.B, I.C. As to Liu’s feedback, we find
that the “content on the knowledge unit” includes information on the
knowledge unit to the extent that the student will understand that the
incorrectly answered question will pertain (and thus include information) to
that very question including the knowledge unit.

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C. Summary of § 103 Rejection
Appellants’ arguments do not apprise us of error. We adopt as our
own the Examiner’s findings and reasoning and affirm the rejection of claim
1 as unpatentable over Liu and Weems, and of claims 5–9, 11, and 15–19,
which fall therewith. 37 C.F.R. § 41.37(c)(1)(iv).

SUMMARY
We affirm the rejection of claims 1, 5–9, 11, and 15–19 under 35
U.S.C. § 101 as directed to patent ineligible subject matter.
We affirm the rejection of claims 1, 5–9, 11, and 15–19 under 35
U.S.C. § 103(a) as unpatentable over Liu and Weems.
No time period for taking any subsequent action in connection with
this appeal may be extended. See 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED