3M INNOVATIVE PROPERTIES COMPANY

Patent Trials and Appeals BoardJul 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. Appeal 2020-004295 Application 16/064,146 2 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. Appeal 2020-004295 Application 16/064,146 3 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. Appeal 2020-004295 Application 16/064,146 4 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). Appeal 2020-004295 Application 16/064,146 5 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 Appeal 2020-004295 Application 16/064,146 6 — 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. Appeal 2020-004295 Application 16/064,146 7 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.”). Appeal 2020-004295 Application 16/064,146 8 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 Appeal 2020-004295 Application 16/064,146 9 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. Appeal 2020-004295 Application 16/064,146 10 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.”). Appeal 2020-004295 Application 16/064,146 11 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. Appeal 2020-004295 Application 16/064,146 12 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 Appeal 2020-004295 Application 16/064,146 13 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 Appeal 2020-004295 Application 16/064,146 14 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.” Appeal 2020-004295 Application 16/064,146 15 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. Appeal 2020-004295 Application 16/064,146 16 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, Appeal 2020-004295 Application 16/064,146 17 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. Appeal 2020-004295 Application 16/064,146 18 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 Appeal 2020-004295 Application 16/064,146 19 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