3M INNOVATIVE PROPERTIES COMPANY

Patent Trials and Appeals Board

Jul 20, 2020

16064146 - (D) (P.T.A.B. Jul. 20, 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.
16/064,146 06/20/2018 Richard F. AVERILL 77472US012 3458
32692 7590 07/20/2020
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
EXAMINER
RAPILLO, KRISTINE K
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
07/20/2020 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):
LegalUSDocketing@mmm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RICHARD F. AVERILL, RICHARD L. FULLER,
ELIZABETH C. MCCULLOUGH, KEITH C. MITCHELL, and
GARRI L. GARRISON
_____________

Appeal 2020-004295
Application 16/064,146
Technology Center 3600
____________

Before MAHSHID D. SAADAT, ST. JOHN COURTENAY III, 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 1–6 and 8–15. Claim 7 is 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) (2018). According to Appellant, the real party in interest
is 3M Innovative Properties Company. See Appeal Br. 2.
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STATEMENT OF THE CASE 2
Introduction
Appellant’s claimed invention relates generally to “Health
Management System with Multidimensional Performance Representation.”
Spec. 1, Title.

Rejection 3
Claims
Rejected
35 U.S.C. § Reference(s)/Basis
1–6, 8–15 101 Eligibility

Claim Grouping
Based on Appellant’s arguments (Appeal Br. 10–36) and our
discretion under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of the
rejection under 35 U.S.C. § 101 of claims 1–6 and 8–15 on the basis of
representative claim 1.
Analysis
In reaching this Decision, we consider all evidence presented and all
arguments actually made by Appellant. To the extent Appellant has not

2 We herein refer to the Final Office Action, mailed May 21, 2019 (“Final
Act.”); Appeal Brief, filed Dec. 17, 2019 (“Appeal Br.”); the Examiner’s
Answer, mailed Mar. 23, 2020 (“Ans.”); and the Reply Brief, filed May 21,
2020 (“Reply Br.”).

3 The Examiner withdrew the rejection under 35 U.S.C. § 112(b) of claims 1,
9, 11, and 13 in the Answer. See Ans. 3. Therefore, this rejection is not
before us on appeal.
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advanced separate, substantive arguments for particular claims, or other
issues, such arguments are waived. 37 C.F.R. § 41.37(c)(1)(iv).

Rejection under 35 U.S.C. § 101 of Claims 1–6 and 8–15
USPTO 35 U.S.C. § 101 Guidance
On January 7, 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of 35 U.S.C. § 101 in the
Federal Register, Vol. 84, No. 4 (“January 2019 Memorandum”). This
January 2019 Memorandum was updated by the October 2019 Revised
Patent Subject Matter Eligibility Guidance (“October 2019 Memorandum”),
which was made available on the USPTO website.4 Under the January 2019
Memorandum, we first look to whether the claim recites:
(1) (see January 2019 Memorandum, Fed. Reg. 54, 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 January 2019 Memorandum, Fed. Reg. 54–55, Step 2A
— Prong Two) additional elements that integrate the

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, Fed. Reg. 51.
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judicial exception into a practical application (see MPEP
§ 2106.05(a)–(c), (e)–(h)).5

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 January 2019 Memorandum, Fed. Reg. 56, Step 2B.
Because there is no single definition of an “abstract idea” under Alice
step 1, the January 2019 Memorandum, Fed. Reg., synthesizes, 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

5 This evaluation is performed by: (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See January 2019 Memorandum, 84 Fed. Reg. 53–54
Section III (A)(2).
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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
or relationships or interactions between people (including
social activities, teaching, and following rules or
instructions).
See January 2019 Memorandum, 84 Fed. Reg. at 52.
According to the January 2019 Memorandum, Fed. Reg. 53, “[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 January 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
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— 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
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 January 2019 Memorandum, 84 Fed. Reg. 54–55, Prong Two.
January 2019 Memorandum, Step 2A, Prong One
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 the claims recite an abstract idea, because:
“The recited limitations, as drafted, under their broadest reasonable
interpretation, cover Mental Processes by creating a multi-dimensional data
representation and accessing the multi-dimensional data representation to
obtain performance measure[s] of the selected healthcare provider.” Final
Act. 4 (emphasis added). The Examiner thus concludes “the claims recite an
abstract idea” under Step 2A, Prong One. Id.

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Independent Claim 1
In Table One below, we identify in italics the specific claim
limitations that we conclude recite an abstract idea. We also 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 health management system
comprising: 6

[b] a processor; A processor is a generic computer
component. See 84 Fed. Reg. at 52
n.14.
[c] a searchable multi-dimensional
data representation of the
performance of an entire health
care delivery system accessible by
the processor, in which the
performance of every healthcare
provider, including downstream
providers, that are delivering
services is distilled down to a
clinically credible measure of
actual versus expected
performance at analytic points
across a comprehensive set of
quality outcomes and resource
utilization measures wherein the
Abstract Idea: Distilling the
performance of every healthcare
provider, including downstream
providers, that are delivering
services down to a clinically credible
measure of actual versus expected
performance at analytic points
across a comprehensive set of
quality outcomes and resource
utilization measures is a method of
organizing human activity, i.e., a
fundamental economic practice,
including commercial interactions,
and business relations that can be
performed alternatively by a person

6 A system (apparatus) falls under the statutory subject matter class of a
machine. 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
multidimensional data
representation has multiple
dimensions including individual
health care providers, sites of
service, quality outcomes and
resource use measures, type of
patients, time periods covered,
geographic location of provider and
patient, and the patient's payer;
as a mental process. See January
2019 Memorandum, 84 Fed. Reg. at
52.
[d] a memory device coupled to
the processor and having a
program stored thereon for
execution by the processor to
perform operations comprising:
A memory device coupled to the
processor is an arrangement of
generic computer components. See
January 2019 Memorandum, 84 Fed.
Reg. at 52 n.14.
[e] creating the multi-dimensional
data representation to obtain
performance measures of a selected
healthcare provider; and
Abstract Idea: Creating the multi-
dimensional data representation to
obtain performance measures of a
selected healthcare provider is a
method of organizing human
activity, i.e., a fundamental
economic practice, including
commercial interactions, and
business relations that can be
performed alternatively by a person
as a mental process. See January
2019 Memorandum, 84 Fed. Reg. at
52.

[f] accessing the multi-dimensional
data representation to obtain
performance measures of the
selected healthcare provider,
Accessing the multi-dimensional
data representation to obtain
performance measures of the
selected healthcare provider is
insignificant extra-solution activity
(i.e., data gathering). See January
2019 Memorandum, 84 Fed. Reg. at
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Independent Claim 1 2019 Memorandum
55 n.31; see also MPEP
§ 2106.05(g).
[g] wherein each analytic point in
the multi-dimensional data
representation contains a
preprocessed specific measure of
performance expressed as a
difference between actual and
expected along with the financial
impact of the difference wherein
expected values are risk adjusted to
account for differences in case mix,
and wherein the pre-processed
specific measure of performance of
each analytic point is pre-
calculated using indirect rate
standardization based on an
exhaustive and mutually exclusive
set of risk groups for risk
adjustment.
Abstract Idea: Risk adjustment
and pre-processing specific
measures of performance that
are pre-calculated involve
mathematical concepts including
mathematical relationships and
mathematical calculations that can
be performed alternatively by a
person as a mental process. See
January 2019 Memorandum, 84 Fed.
Reg. at 52.

Abstract Idea

As identified above in Table One, step “c” of claim 1 recites an
abstract idea. We conclude distilling the performance of every healthcare
provider, including downstream providers, that are delivering services down
to a clinically credible measure of actual versus expected performance at
analytic points across a comprehensive set of quality outcomes and resource
utilization measures is a method of organizing human activity, in particular,
a fundamental economic practice, including commercial interactions and
business relations, that can be performed alternatively by a person as a
mental process. See January 2019 Memorandum, 84 Fed. Reg. at 52.
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Step “e” (“creating the multi-dimensional data representation to
obtain performance measures of a selected healthcare provider”) similarly
recites a method of organizing human activity, i.e., a fundamental economic
practice, including commercial interactions and business relations, which
can be performed alternatively by a person as a mental process. Claim 1.
Step “g” of claim 1 also recites risk adjustment and pre-processing as
specific measures of performance that are pre-calculated, which we
conclude involve mathematical concepts, including mathematical
relationships and mathematical calculations, which can be performed
alternatively by a person as a mental process. See January 2019
Memorandum, 84 Fed. Reg. at 52. 7
But merely combining several abstract ideas does not render the
combination any less abstract. 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.”); see also

7 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[, 409 U.S. 63
(1972)].” 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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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).
Because independent claim 1 recites an abstract idea, as identified in
Table One, supra, and because independent claims 9 and 13 recite similar
language of commensurate scope, we conclude all claims 1–6 and 8–15
recite an abstract idea, as identified above, under Step 2A, Prong One.
Therefore, 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.
Additional Limitations
We identify the additional claim 1, step “f” (“accessing the multi-
dimensional data representation to obtain performance measures of the
selected healthcare provider”), as an insignificant extra-solution activity
(i.e., data gathering). See January 2019 Memorandum, 84 Fed. Reg. at 55
n.31; see also MPEP § 2106.05(g). The Supreme Court guides that the
“prohibition against patenting abstract ideas ‘cannot be circumvented by’ . . .
adding ‘insignificant postsolution activity.’” Bilski v. Kappos, 561 U.S. 593,
610–11 (2010) (quoting Diamond v. Diehr, 450 U.S. 175, 191–92 (1981)).
We additionally find the “processor” and the “memory device” recited
in claim 1 are additional elements that are generic computer components.
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The Examiner finds:
This judicial exception is not integrated into a practical
application. The claims are abstract but for the inclusion of the
additional elements including a “a processor” and “a memory
device”, [which] are additional elements that are recited at a
high level of generality (e.g., the “a memory device coupled to
the processor and having a program stored thereon for
execution by the processor”) such that they amount to no more
than mere instruction[s] to apply the exception using generic
computer components.
Final Act. 4.
The Examiner also finds “[t]he claims here are not directed to a
specific improvement to computer functionality. Rather, they are directed to
the use of conventional or generic technology in a well-known environment,
without an inventive solution to any problem presented by combining the
two.” Final Act. 8–9.
Appellant disagrees, and contends:
The first element is a processor. A processor cannot be
performed in the human mind. The second element recites
details regarding a “searchable multi-dimensional data
representation” with “analytic points across a comprehensive
set of quality outcomes and resource utilization measures” with
at least eight dimensions. The processor creates the
representation and accesses the representation to obtain
performance measures. This is not a process that can be
performed by the human mind. Hence, the Examiner is in error
in asserting that the claims can be performed in the human
mind.
Appeal Br. 15.
We disagree with Appellant. To the extent that Appellant urges that
the claims use “an improved data structure with pre-calculated analytic
points” and that the “data structure can greatly improve the performance of a
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computer in achieving the goal” (Appeal Br. 19–20), Appellant provides no
evidence in support.
The “‘mere automation of manual processes using generic computers’
. . . ‘does not constitute a patentable improvement in computer technology,’”
Trading Techs. Int’l, Inc. 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)). Because Appellant’s claim limitations use generic
computer components as a tool to perform generic computer functions, we
conclude these limitations do not integrate the abstract idea into a practical
application. See Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 223–24
(2014).
As set forth in MPEP § 2106.05(a) (emphasis added):
To show that the involvement of a computer assists in
improving the technology, the claims must recite the details
regarding how a computer aids the method, the extent to which
the computer aids the method, or the significance of a computer
to the performance of the method . . . . Merely adding generic
computer components to perform the method is not sufficient.
Thus, the claim must include more than mere instructions to
perform the method on a generic component or machinery to
qualify as an improvement to an existing technology.

Here, it is our view that Appellant does not sufficiently show how the
claimed generic computer components aid the method, the extent to which
the computer aids the method, or the significance of a computer to the
performance of the method to improve the recited generic processor(s) and
memory device coupled thereto. Id.
Accordingly, on this record, we conclude independent claim 1, and
independent claims 9 and 13, which recite similar limitations of
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commensurate scope, do not recite an improvement to the functionality of a
computer or other technology or technical field. See MPEP § 2106.05(a).

MPEP § 2106.05(c), 2106.05(e)
Appellant advances no arguments that any 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).

MPEP § 2106.05(e) Meaningful Claim Limitations
Appellant does not argue that claim 1 recites certain “meaningful”
claim limitations, such as those of the types addressed under MPEP
§ 2106.05(e), that impose meaningful limits on the judicial exception.8
Appellant does not present substantive arguments explaining how the
judicial exceptions are applied or used in some meaningful way.

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 a “processor” and a “memory device.” Therefore, we

8 See January 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.”
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conclude Appellant’s claims merely use a generic programmed computer as
a tool to perform an abstract idea.

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

As discussed above, we conclude that 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); see also January 2019 Memorandum,
84 Fed. Reg. 55 n.31.
For example, see claim 1, i.e., the step “f” of claim 1 (“accessing the
multi-dimensional data representation to obtain performance measures of the
selected healthcare provider”) that we conclude is an insignificant extra-
solution activity (data gathering). See also buySAFE, Inc. v. Google, Inc.,
765 F.3d 1350, 1355 (Fed. Cir. 2014) (“That a computer receives and sends
the information over a network—with no further specification—is not even
arguably inventive.”). That is, these limitations use a generic computer
component that performs a generic computer function as a tool to perform an
abstract idea. Thus, these limitations do not integrate the abstract idea into a
practical application. See Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 223–
24 (2014). Instead, these limitations perform insignificant extra-solution
activities. Cf. Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1242 (Fed. Cir.
2016) (agreeing with the Board that printing and downloading generated
menus are insignificant post-solution activities). See also Two-Way Media
Ltd. v. Comcast Cable Communications, LLC, 874 F.3d 1329, 1341 (Fed.
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Cir. 2017) (Streaming audio/visual data over a communications system like
the Internet held patent ineligible.).

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 v. Kappos, 561 U.S. 593, 610–
12 (2010) (quoting Diamond v. Diehr, 450 U.S. 175, 191–92 (1981)).
We note Appellant advances no arguments regarding a lack of
preemption in the Appeal Brief or the Reply Brief.
Nor do claims 1–6 and 8–15 on appeal present any other issues as set
forth in the 2019 Memorandum regarding a determination of whether the
additional generic computer elements integrate the judicial exception into a
practical application. See January 2019 Memorandum, 84 Fed. Reg. 55.
Thus, under Step 2A, Prong Two (MPEP § 2106.05(a)–(c) and (e)–
(h)), we conclude claims 1–6 and 8–15 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,
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conventional” in the field; or simply appends well-understood, routine,
conventional activities previously known to the industry, specified at a high
level of generality, to the judicial exception. See MPEP § 2106.05(d).

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”).9 The Berkheimer Memorandum provided
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.
The Examiner, under Step 2B, finds several additional elements
recited in the claims were well understood, routine, and conventional at the
time of Appellant’s invention. In particular, the Examiner finds:
[t]he claims do not include additional elements that are
sufficient to amount to significantly more than the judicial
exception. As discussed above with respect to integration of the
abstract idea into a practical application, using the additional
elements to perform the abstract idea amounts to no more than
mere instructions to apply the exception using generic
components. Mere instructions to apply an exception using []
generic components cannot provide an inventive concept. See
MPEP 2106.05(f).
Final Act. 5 (emphasis added).

9 Available at https://www.uspto.gov/sites/default/files/documents/memo-
berkheimer-20180419.PDF.
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In support, the Examiner cites to paragraphs 12, 60, and 61 of
Appellant’s Specification. See Final Act. 6–7. The Examiner finds at least
these portions of the Specification do not “provide any indication that
the additional elements are anything other than well-understood, routine,
and conventional functions when claimed in a merely generic manner (as
they are here). See: MPEP 2106.05(g).” Final Act. 7 (emphasis added).
Appellant responds in the Appeal Brief: “Under Berkheimer, the
Board must reverse the Examiner’s rejection because the Examiner did not
provide sufficient evidence that each of the actually-recited additional
elements of the claims were well-understood, routine, or conventional, both
individually and on combination.” Appeal Br. 21 (emphasis omitted).
The Examiner disagrees with Appellant, and further explains the basis
for the rejection, noting that the USPTO Berkheimer memo merely requires
(as one type of Berkheimer factual evidence) “a citation to an express
statement in the specification or to a statement made by Appellant during
prosecution that demonstrates the well-understood, routine, conventional
nature of additional elements.” Ans. 10.
We note the Examiner cited to paragraphs 12, 60, and 61 of the
Specification as Berkheimer evidence. See Final Act. 6–7. Based upon our
review of the record, we find the Appellant has not persuasively or
substantively addressed the Examiner’s findings under Step 2B (the inventive
concept), regarding the generic computer components and functions as
described in paragraphs 12, 60, and 61 of Appellant’s Specification. The
Reply Brief is silent regarding any mention of Berkheimer. Nor does the
Reply Brief further traverse the Examiner’s findings regarding paragraphs
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12, 60, and 61 of the Specification. Arguments not made are waived. See
37 C.F.R. § 41.37(c)(1)(iv).
Accordingly, on the record before us, Appellant has not shown that
the claims on appeal add a specific limitation 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, and under the 2019 Memorandum, we
conclude that each of Appellant’s claims 1–6 and 8–15, 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.
Therefore, we sustain the Examiner’s rejection under 35 U.S.C. § 101 of
claims 1–6 and 8–15.

CONCLUSION
Under the Director’s 2019 Memorandum, as governed by relevant
case law, we conclude that claims 1–6 and 8–15, as rejected under 35 U.S.C.
§ 101, are directed to patent-ineligible subject matter.

Appeal 2020-004295
Application 16/064,146

20
DECISION SUMMARY

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–6, 8–15 101 Eligibility 1–6, 8–15

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