CanFigurelt LLC

Patent Trials and Appeals Board

Nov 19, 2021

2021001659 (P.T.A.B. Nov. 19, 2021)

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.
15/094,403 04/08/2016 Eyal Inbar P-78955-US 4815
49443 7590 11/19/2021
Pearl Cohen Zedek Latzer Baratz LLP
7 Times Square, 19th Floor
New York, NY 10036
EXAMINER
UTAMA, ROBERT J
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
11/19/2021 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):
Arch-USPTO@PearlCohen.com
USPTO@PearlCohen.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EYAL INBAR and ARNON AVITZUR
Appeal 2021-001659
Application 15/094,403
Technology Center 3700
Before JENNIFER D. BAHR, EDWARD A. BROWN, and
BENJAMIN D. M. WOOD, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–12. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as BrainPOP
ESL LLC. Appeal Br. 1.
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CLAIMED SUBJECT MATTER
Appellant’s invention is directed to “assisting a user in determining
geometric proofs.” Spec. ¶ 2. Of the claims on appeal, claims 1 and 7 are
independent. Claim 1, reproduced below, is illustrative of the claimed
subject matter.
1. A computerized-method for assisting a user in determining
geometrical proofs, the computerized-method comprising:
a) providing, by a computing device, a geometrical
object, a corresponding predicate to be justified, and one or
more known predicates regarding the geometrical object;
b) receiving, by the computing device, a selection of one
predicate of the one or more known predicates;
c) displaying, by the computing device on a display, a
plurality of derivations corresponding to the selected known
predicate;
d) receiving, by the computing device, a selection of one
derivation of the plurality of derivations;
e) displaying, by the computing device on the display, a
user input template corresponding to the derivation, wherein the
user input template comprises at least one input field that is not
populated with a value;
f) receiving, by the computing device, derivation input
via the user template;
g) determining, by the computing device, whether the
derivation input is correct;
h) if the derivation input is correct, then adding, by the
computing device, a resulting predicate to the plurality of
known predicates and transmitting the derivation input to the
display;
i) determining, by the computing device, whether the
resulting predicate is the predicate to be justified;
j) if the resulting predicate is not the predicate to be
justified, then repeating steps b) through i).
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REJECTIONS
Claims 1–12 stand rejected as being directed to a patent-ineligible
judicial exception to 35 U.S.C. § 101 (an abstract idea without significantly
more).
Claims 1–12 stand rejected under 35 U.S.C. § 102(a)(1) or 102(a)(2)
as being anticipated by Silver (US 5,584,699, issued Dec. 17, 1996).
OPINION
Patent Eligibility
Principles of Law Pertaining to Patent Eligibility
An invention is patent-eligible if it is a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Alice, 573 U.S. at 217–18 (citing Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with
that framework, one first determines what concept the claim is “directed to.”
See id. at 219 (“On their face, the claims before us are drawn to the concept
of intermediated settlement, i.e., the use of a third party to mitigate
settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010)
(“Claims 1 and 4 in petitioners’ application explain the basic concept of
hedging, or protecting against risk.”).
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Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent-eligible include physical and chemical processes,
such as “molding of rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “a claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191
(“view[ing] respondents’ claims as nothing more than a process for molding
rubber products and not as an attempt to patent a mathematical formula”).
Having said that, the Supreme Court also indicated that a claim “seeking
patent protection for that formula in the abstract . . . is not accorded the
protection of our patent laws, and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.”).
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If the claim is “directed to” an abstract idea, one turns to the second
step of the Alice and Mayo framework, where “[one] must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a
patent-eligible application.” Alice, 573 U.S. at 221 (quotation marks
omitted). “A claim that recites an abstract idea must include ‘additional
features’ to ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
On January 7, 2019, the PTO issued revised guidance on the
application of § 101. See 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (hereinafter “2019 Eligibility
Guidance”). The 2019 Eligibility Guidance includes steps 2A and 2B.
Under Step 2A, Prong One, of the guidance, one first looks to whether the
claim recites any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing human
activities such as a fundamental economic practice, or mental processes).
See id. at 54.
Pursuant to the 2019 Eligibility Guidance, if a claim recites a judicial
exception, one proceeds to Step 2A, Prong Two, and determines whether the
claim recites additional elements that integrate the judicial exception into a
practical application. See 2019 Eligibility Guidance, 84 Fed. Reg. at 54; see
also MPEP § 2106.05(a)–(c), (e)–(h) (9th ed. Rev. 10.2019, rev. June 2020).
If the additional elements in the claim integrate the recited exception into a
practical application of the exception, then the claim is not directed to the
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judicial exception and thus is eligible. MPEP § 2106.04(II)(A)(2). If,
however, the additional elements do not integrate the exception into a
practical application, then the claim is directed to the recited judicial
exception. Id.
Only if a claim is directed to a judicial exception—i.e., it both recites
a judicial exception and fails to integrate the judicial exception into a
practical application—does one proceed to Step 2B of the guidance. At this
step, one determines whether the claim adds a specific limitation beyond the
judicial exception that is not “well-understood, routine, conventional” in the
field (see MPEP § 2106.05(d)); or simply appends well-understood, routine,
conventional activities previously known to the industry, specified at a high
level of generality, to the judicial exception. See 2019 Eligibility Guidance,
84 Fed. Reg. at 56. In doing so, one considers the elements of the claim
both individually and as “an ordered combination.” See Alice, 573 U.S. at
217–18 (stating that “[one] consider[s] the elements of each claim both
individually and ‘as an ordered combination’ to determine whether the
additional elements ‘transform the nature of the claim’ into . . . an
‘“inventive concept”’—i.e., an element or combination of elements that is
‘sufficient to ensure that the patent in practice amounts to significantly more
than a patent upon the [ineligible concept] itself’”); see also BASCOM Glob.
Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1349–50 (Fed.
Cir. 2016) (explaining that, even in claims reciting only “generic computer,
network and Internet components, none of which is inventive by itself,” “an
inventive concept can be found in the non-conventional and non-generic
arrangement of known, conventional pieces” under step two of the Alice
framework).
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Analysis
Claim Grouping
In contesting the patent-eligibility rejection, Appellant argues claims
1–12 as a group. Appeal Br. 6–9. We decide the appeal of this rejection on
the basis of claim 1, with claims 2–12 standing or falling with claim 1.
See 37 C.F.R. § 41.37(c)(1)(iv) (providing that when multiple claims subject
to the same ground of rejection are argued as a group by the appellant, the
Board may select a single claim from the group to decide the appeal with
respect to the group as to the ground of rejection on the basis of the selected
claim alone).
Step 2A, Prong One
The Examiner finds that claim 1 recites “the display of predicate
(mathematical) statement[s] to the user, receiving predicate selection from
the user, receiving derivation of the predicate from the user[,] and
determining if the user’s derivation is correct” and determines “that these
limitations are either directed to the abstract idea of mental process[es] or
the abstract idea of certain method[s] of organizing human activity.”
Non-Final Act. 2.2 According to the Examiner, “the mental steps of
processing a mathematical statement would be something that can [be]
practically performed in the human mind. Such steps can be seen in any

2 Appellant argues that the Examiner “has not alleged [the patent eligibility]
rejection with specificity” because “the Examiner is noncommittal with
respect to which category of abstract idea . . . the claim actually falls
within.” Appeal Br. 7. However, as set forth in MPEP § 2106.04(a), and as
correctly pointed out by the Examiner (Non-Final Act. 6; Ans. 4), where a
claim includes limitations that are determined to fall within multiple
groupings, it is appropriate for the Examiner to identify such multiple
groupings.
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mathematical class when a student provides proof for a geometric concept[]
and a teacher analyze[s] the student’s work for correctness/incorrectness.”
Id. at 6; see also Ans. 4.
Appellant argues that the Examiner is improperly simplifying
Appellant’s claim 1 in determining that the steps are directed to an abstract
idea. Appeal Br. 6. Appellant emphasizes that step b) of claim 1 “requires
receiving a selection of one predicate from the one or more known
predicates, where the one or more known predicates are regarding a
particular geometrical object as specified in [step a)]” and asserts that “[t]he
Examiner is impermissibly picking and choosing language from the claim
elements to minimize the elements into a form necessary to allege an
abstract idea.” Id. Appellant further argues that claim 1 is “not a method of
organizing human activity” because it is “primarily directed to a technology
solution”3 and is “also not mental steps” because it cannot be performed in
the human mind. Id. at 7. For the reasons that follow, Appellant’s
arguments do not apprise us of error in the Examiner’s determination that
claim 1 recites an abstract idea.
A geometrical object, a corresponding predicate to be justified, and
one or more known predicates regarding the geometrical object are all
mathematical concepts (mathematical/geometrical relationships), which is
one of the recognized groupings of abstract ideas. 2019 Eligibility
Guidance, 84 Fed. Reg. at 52. Thus, step a) of claim 1 recites an abstract
idea (mathematical concepts).

3 We address Appellant’s assertion regarding the claim being directed
primarily to a technology solution in the Step 2A, Prong Two analysis
below.
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Additionally, or alternatively, step a) may be considered to recite a
mental process (i.e., the process of thinking of these mathematical concepts
in the mind, or writing them down on paper or other media). If the broadest
reasonable interpretation of a claim 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 Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307,
1318 (Fed. Cir. 2016) (“[W]ith the exception of generic
computer-implemented steps, there is nothing in the claims themselves that
foreclose them from being performed by a human, mentally or with pen and
paper.”); CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375,
1372 (Fed. Cir. 2011) (holding that the incidental use of a “computer” or
“computer readable medium” does not make a claim otherwise directed to a
process that “can be performed in the human mind, or by a human using a
pen and paper” patent eligible); Synopsys, Inc. v. Mentor Graphics Corp.,
839 F.3d 1138, 1139, 1148 (Fed. Cir. 2016) (holding that claims to the
mental process of “translating a functional description of a logic circuit into
a hardware component description of the logic circuit” are directed to an
abstract idea, because the claims “can be . . . performed mentally or with
pencil and paper”). But for the recitation of a generic “computing device,”
step a) can be performed in the human mind or with pen and paper. Thus,
step a) recites a mental process, which falls into one of the recognized
groupings of abstract ideas. 2019 Eligibility Guidance, 84 Fed. Reg. at 52.
Furthermore, step a) can be considered to be a step of teaching, by
posing a geometry problem to a student—namely, providing a geometrical
object, a corresponding predicate (i.e., geometrical relationship) to be
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justified (i.e., proven), and one or more known predicates (the givens from
which the predicate may be justified/proven). Managing personal behavior
or relationships or interactions between people, including teaching, is one of
certain methods of organizing human activity recognized as an abstract idea.
2019 Eligibility Guidance, 84 Fed. Reg. at 52; MPEP § 2106.04(a)(2)(II).
Thus, step a) of claim 1 may be considered to recite one of certain methods
of organizing human activity (i.e., teaching) recognized as an abstract idea.
Step b) recites receiving a selection of one predicate of the known
predicates. But for the recitation of a generic “computing device,” this step
covers merely selecting and thinking about one of the known predicates in
the human mind, which is a mental process and, thus, an abstract idea.
Selecting one of the known predicates provided for the geometric object
constitutes essentially a starting point for a person doing a geometric
proof—starting with one of the givens and seeing how far one can get with it
toward proving the predicate to be justified (i.e., the geometric relationship
to be proven). Furthermore, even assuming step b) is interpreted as
requiring that the entity doing the receiving be different from the entity
selecting the one predicate of the known predicates, this is still a mental
process, and, thus, an abstract idea. Standing alone, the act of providing
someone information, or receiving information, is an abstract idea. Interval
Licensing LLC v. AOL, Inc., 896 F.3d 1335, 1344 (Fed. Cir. 2018)
(analogizing the act of providing or receiving information “to the
nontechnical human activity of passing a note to a person”).
Step c) recites displaying a plurality of derivations corresponding to
the selected known predicate. But for the recitation of the generic
computing device and a generic display, this covers writing out a plurality of
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derivations corresponding to the selected known predicate. In the age-old
and fundamental methodology of doing a geometrical proof, this involves
thinking of and writing out a plurality of relationships or geometrical
principals that mathematically follow from, or are a consequence of, the
selected known predicate. This is, thus, a mental process (a concept that can
be performed in the human mind or with pen and paper), which, as discussed
above, is an abstract idea. Alternatively, step c) can be considered to be an
aspect of teaching (providing the student with hints about relationships that
may be useful in completing the geometrical proof), which falls under the
category of managing personal behavior or relationships or interactions
between people, which, in turn, falls within the grouping of certain methods
of organizing human activity recognized as abstract ideas. 2019 Eligibility
Guidance, 84 Fed. Reg. at 52; MPEP § 2106.04(a)(2)(II). Thus, whether
considered to be a mental process or managing personal behavior or
relationships or interactions between people, step c) is an abstract idea.
Step d) recites receiving a selection of one derivation of the plurality
of derivations. But for the recitation of a generic computing device, this step
covers selecting one of the plurality of derivations and thinking about it and,
thus, can be performed in the human mind. Moreover, even assuming we
were to construe step d) as requiring that the selection be received by one
entity from another entity, this is still a mental process, and, thus, an abstract
idea. As discussed above, standing alone, the act of providing someone
information, or receiving information, is an abstract idea. Interval
Licensing, 896 F.3d at 1344 (analogizing the act of providing or receiving
information “to the nontechnical human activity of passing a note to a
person”). In the age-old and fundamental methodology of doing a
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geometrical proof, this involves picking one of the plurality of relationships
or geometrical principals that flow from the selected known predicate
(given) to determine what else is known about the geometrical object (i.e., to
generate more known predicates (givens) from the selected known
predicate).
Step e) recites displaying a user input template corresponding to the
selected derivation, wherein the template comprises at least one unpopulated
input field. But for the recitation of a generic computing device and a
generic display, this covers writing down the selected derivation (i.e.,
relationship or geometrical principal), leaving blanks to be filled in with
labels from elements (e.g., sides or angles) of the geometrical object. This
is, thus, a mental process (a concept that can be performed in the human
mind or with pen and paper), which, as discussed above, is an abstract idea.
Step f) recites receiving derivation input via the user template, which
amounts to filling in the blanks left in the user template with appropriate
labels from elements of the geometrical object. Thus, this is a mental
process (a concept that can be performed in the human mind or with pen and
paper), which, as discussed above, is an abstract idea.
Step g) recites determining whether the derivation input is correct.
This amounts to just checking the work by making an observation or
evaluation, which is a mental process—namely, a concept that can be
performed in the human mind, but for the recitation of a generic computing
device. Alternatively, this step could also be considered to be an aspect of
teaching (evaluating the work of a student), which falls under the category of
managing personal behavior or relationships or interactions between people,
which, in turn, falls within the grouping of certain methods of organizing
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human activity recognized as abstract ideas. 2019 Eligibility Guidance, 84
Fed. Reg. at 52; MPEP § 2106.04(a)(2)(II). Thus, whether considered to be
a mental process or managing personal behavior or relationships or
interactions between people, step g) is an abstract idea.
Step h) recites adding a resulting predicate to the plurality of known
predicates, and transmitting the derivation input to the display, if the
derivation input is correct. This amounts to writing down a predicate that
results from inputting the derivation inputs (the labels from the geometrical
object) and adding the resulting predicate to the plurality of known
predicates (i.e., treating it as an additional given). But for the recitation of a
generic computing device and a generic display, this can be done in the
human mind or with a pen and paper. Thus, it is a mental process, which is
an abstract idea.
Step i) recites determining whether the resulting predicate is the
predicate to be justified. This is an observation or evaluation that, but for
the recitation of a generic computing device, can be performed in the human
mind and, thus, is a mental process, which is an abstract idea. In the age-old
and fundamental process of doing a geometrical proof, this amounts to
looking to see if the predicate to be justified (i.e., proven) has been reached;
in other words, this step asks whether the proof has been completed or
whether there is more work to be done.
Step j) recites repeating steps b) through i) if the resulting predicate
from step h) is not the predicate to be justified. As discussed above, steps b)
through i) are a series of mental processes or certain methods of organizing
human activity recognized as abstract ideas, and, thus, repeating these steps
is a series of abstract ideas. Adding one abstract idea to another abstract
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idea does not render the claim non-abstract or patent-eligible. RecogniCorp.,
LLC v. Nintendo Co., Ltd., 855 F.3d 1322, 1327 (Fed. Cir. 2017) (“Adding
one abstract idea (math) to another abstract idea (encoding and decoding)
does not render the claim non-abstract.”).
Appellant argues that claim 1 “could not as a practical matter be
performed in the human mind . . . due to complex mathematical nature” and
that, “[p]ractically speaking, a human would likely do it different in their
mind.” Appeal Br. 8. Appellant’s contention of a “complex mathematical
nature” is not commensurate with the scope of claim 1, which does not
specify any complexity for the geometrical object, the known predicates, or
the predicate to be justified. Further, the level of math required to complete
the geometrical proof described in the embodiment of Figures 4–13 of the
present application is not of such a complex nature as to preclude
performance in the human mind. Appellant does not elaborate, nor is it
apparent, why or in what manner a human would do the math or the
geometrical proof differently in their mind than as Appellant discloses or
claims.
For the above reasons, the Examiner correctly finds that claim 1
recites a judicial exception, namely an abstract idea (i.e. a series of steps that
are mathematical concepts and mental processes and/or certain methods of
organizing human activity).
Step 2A, Prong Two
Turning now to Step 2A, Prong Two of the framework, the Examiner
finds that the “judicial exception [of claim 1] is not integrated into a
practical application.” Non-Final Act. 3. In particular, the Examiner finds
that the only additional elements recited in claim 1 are a computing device
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and a display. Id. According to the Examiner, claim 1 recites the computing
device “on a high-level of generality (i.e. as a device that accepts user input
or a device that checks the correctness of user’s input),” which “amounts [to]
no more than mere instructions to apply the exception using a generic
computer component.” Id. Thus, the Examiner determines that “this
additional element does not integrate the abstract idea into a practical
application because it does not impose any meaningful limits on practicing
the abstract idea.” Id. Accordingly, the Examiner determines that claim 1
“is directed to an abstract idea.” Id.
Appellant contends that claim 1 is “primarily directed to a technology
solution,” in that it is “directed to an improved assisted geometrical proof
system which, among other things, uses a repeatable iterative process to
reach an end goal which improves the accuracy of the system.” Appeal
Br. 7. This argument is not persuasive because the improvement on which
Appellant relies is the abstract idea itself (the iterative mental processes that
a person goes through in the human mind or with pen and paper to do a
geometrical proof). Although claim 1 recites performing the steps of claim 1
using a “computing device” and “display,” claim 1 recites these computer
elements in a highly generic manner. Further, Appellant’s Specification
gives no indication that anything more than a generic processor and display
are required to perform the claimed method or that the computing device or
display functions other than in a customary manner. See, e.g., Spec. ¶ 26
(describing generically “a display device” and “a computer workstation”
with a processor that communicates with “storage . . . to retrieve data”);
Fig. 1 (illustrating the computer workstation, processor, storage, and display
schematically only).
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Rather, as the Examiner correctly finds, the recitation of the
computing device and display amounts to no more than mere instructions to
apply the judicial exception (the abstract idea) using generic computer
components. See Non-Final Act. 3. Our reviewing court has noted that
“some improvements in computer-related technology when appropriately
claimed are undoubtedly not abstract” and that “[s]oftware can make
non-abstract improvements to computer technology just as hardware
improvements can.” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335
(Fed. Cir. 2016). The court defined the question in “the first step in the
Alice inquiry” as being “whether the focus of the claims is on [a] specific
asserted improvement in computer capabilities . . . or, instead, on a process
that qualifies as an ‘abstract idea’ for which computers are invoked merely
as a tool.” Id. at 1335–1336. The court found that the “plain focus of the
claims” in Enfish was “on an improvement to computer functionality itself,
not on economic or other tasks for which a computer is used in its ordinary
capacity.” Id. at 1336. Unlike the claims in Enfish, the primary focus of
Appellant’s claim 1, by Appellant’s own admission, is “an improved assisted
geometrical proof system.” Appeal Br. 7. As discussed above, the claimed
geometrical proof system is a process that qualifies as an abstract idea (i.e., a
series of steps including mathematical concepts and mental processes and/or
certain methods of organizing human activity) for which a generic
computing device and generic display are invoked merely as a tool. Thus,
claim 1 is directed to an abstract idea.
Appellant argues that “any alleged judicial exception is integrated into
a practical application of that exception” because the process of claim 1
“produces a practical, real-world result: a computer displaying a user input
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template corresponding to the selected predicate, and/or transmitting
derivation input to a display.” Appeal Br. 8. According to Appellant, claim
1 integrates any judicial exception into a practical application because it
“appl[ies], rel[ies] on, and use[s] any judicial exception in a manner that
imposes a ‘meaningful limit’ on the judicial exception.” Id. Further,
Appellant asserts that claim 1 is “not merely an expression of a complex
algorithm but a specific use of the algorithm, when other limitations are
viewed in combination.” Id. at 8–9. For the reasons that follow, Appellant’s
arguments are not persuasive.
Turning first to Appellant’s contention that the process of claim 1
produces a practical, real-world result, as the Supreme Court emphasized in
Bilski, “although the machine-or-transformation test is not the only test for
patentability, this by no means indicates that anything which produces a
‘useful, concrete, and tangible result,’ State Street Bank & Trust Co. v.
Signature Financial Group, Inc., 149 F.3d 1368, 1373 (C.A.Fed. 1998), is
patentable.” Bilski, 561 U.S. at 659 (Breyer, J., concurring). Thus, “not
every claim that recites concrete, tangible components escapes the reach of
the abstract-idea inquiry.” In re TLI Commc’ns LLC Patent Litig., 823
F.3d 607, 611 (Fed. Cir. 2016). As discussed above, viewing claim 1 as a
whole, the claimed geometrical proof system is a process that qualifies as an
abstract idea (i.e., a series of steps including mathematical concepts and
mental processes and/or certain methods of organizing human activity) for
which a generic computing device and generic display are invoked merely as
a tool. The claimed process amounts to a method of presenting and doing
geometrical proofs, which is a fundamental exercise practiced by
generations of geometry students, using generic computer components
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employed in a customary manner to perform steps previously performed in
the human mind or with pen and paper. Such automation and use of a
conventional computer implementation in a customary manner does not
transform the abstract idea into a patent-eligible invention. See Credit
Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017)
(stating that “mere automation of manual processes using generic computers
does not constitute a patentable improvement in computer technology”).
Further, displaying a user input template and transmitting user input to
a display constitute insignificant extra-solution activity, which are
insufficient to integrate an abstract idea into a practical application. See,
e.g., CyberSource, 654 F.3d at 1370 (“We have held that mere ‘[data-
gathering] step[s] cannot make an otherwise nonstatutory claim statutory.’”
(alterations in original) (quoting In re Grams, 888 F.2d 835, 840 (Fed. Cir.
1989))); see also 2019 Eligibility Guidance, 84 Fed. Reg. at 55 (identifying
“add[ing] insignificant extra-solution activity to the” abstract idea as an
example of when an abstract idea has not been integrated into a practical
application); Elec. Power Grp. LLC v. Alstom S.A., 830 F.3d 1350, 1353–54
(Fed. Cir. 2016) (claims reciting the combination of the abstract-idea
processes of gathering and analyzing information of a specified content and
then displaying the results, without any particular assertedly inventive
technology for performing those functions, are directed to an abstract idea).
Recitation, as in this case, of the collection (via generic user input),
organization, and display of information on a generic display is insufficient
to transform the abstract idea into a practical application of the abstract idea
absent a specific improvement to the way the computing device or display
operates. See Interval Licensing, 896 F.3d at 1345 (“Recitation, as in this
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case, of the collection, organization, and display of two sets of information
on a generic display device is abstract absent a ‘specific improvement to the
way computers [or other technologies] operate.’”) (citing Enfish, 822 F.3d at
1336). Appellant does not assert, nor does Appellant’s Specification
disclose, any such improvement in the way the computing device or display
used in the claimed method operates. See Non-Final Act. 3 (finding that
“the limitation of [a] computer device is nothing more than a generic
computing device that accepts the user’s input” and that, “[a]t best, the
computer system[] in this particular case is used to automate the abstract
idea”).
Appellant’s contention that claim 1 recites a specific use of an
algorithm, thus imposing a “meaningful limit” on the abstract idea (Appeal
Br. 8), is not persuasive. “[A] claim is not patent eligible merely because it
applies an abstract idea in a narrow way. For an application of an abstract
idea to satisfy step one, the claim’s focus must be something other than the
abstract idea itself.” BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1281,
1287 (Fed. Cir. 2018). This is not the case for Appellant’s claim 1, as
discussed above. To the extent that Appellant is arguing that claim 1 limits
the scope of the claim to geometrical proofs, this argument is unavailing.
See Bilski, 561 U.S. at 612 (stating that “limiting an abstract idea to one field
of use . . . did not make the concept patentable”); Affinity Labs of Tex., LLC
v. DIRECTV, LLC, 838 F.3d 1253, 1259 (Fed. Cir. 2016) (“The Supreme
Court and [the Federal Circuit] have repeatedly made clear that merely
limiting the field of use of the abstract idea to a particular existing
technological environment does not render the claims any less abstract.”).
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For the above reasons, Appellant fails to apprise us of error in the
Examiner’s determination that claim 1 does not recite additional elements
that integrate the judicial exception into a practical application and that, thus,
claim 1 “is directed to an abstract idea.” Non-Final Act. 3.
Step 2B
Turning now to Step 2B of the framework, the Examiner determines
that claim 1 does “not include additional elements that are sufficient to
amount to significantly more than the judicial exception.” Non-Final Act. 3.
According to the Examiner, “the additional element of using a processor to
perform both the automation of mental process or accept user input amounts
to no more than mere instructions to apply the exception using a generic
computer component,” and “[m]ere instructions to apply an exception using
a generic computer component cannot provide an inventive concept.” Id.
Thus, the Examiner concludes that claim 1 “is not patent eligible.” Id.
Appellant argues that claim 1 “recite[s] operations in a non-obvious
ordered combination describing a multiprocessor-based method using novel
operations to assist a user in determining geometrical proofs, which amounts
to an inventive concept.” Appeal Br. 9; see also Reply Br. 2 (asserting that
“[a] specific way to achieve an effect or outcome (the ‘how’, a specific
implementation) is described in [claim 1]”). Further, Appellant contends
that “the use of a generic computer does not in itself render the claims patent
ineligible under [§] 101” and asserts that “[t]he Examiner is ignoring all of
the limitations of [Appellant’s] claims that go beyond the generic computer.”
Reply Br. 1 (citing Enfish, 822 F.3d at 1336).
We disagree with Appellant that the Examiner is ignoring all
limitations in claim 1 that go beyond the generic computer, and, as evident
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in the detailed analysis of the steps of claim 1 above, the Board is not
ignoring these limitations either. As explained above, the Examiner finds,
and we agree, that the method of claim 1, considered as a whole, is a process
that qualifies as an abstract idea (i.e., a series of steps including
mathematical concepts and mental processes and/or certain methods of
organizing human activity) for which a generic computing device and
generic display are invoked merely as tools. The claimed process amounts
to a method of presenting and doing geometrical proofs, which is a
fundamental exercise practiced by generations of geometry students, using
generic computer components employed in a customary manner to perform
steps previously performed in the human mind or with pen and paper.
As for Appellant’s assertions regarding a non-obvious ordered
combination comprising a multiprocessor-based method using novel
operations to assist a user in determining geometrical proofs (Appeal Br. 9),
it is well established that innovations within the field of an abstract idea
cannot satisfy the “something more” step of the Alice inquiry. Alice, 573
U.S. at 217. Thus, “a claim for a new abstract idea is still an abstract idea.”
Synopsys, 839 F.3d at 1151; see also BSG Tech, 899 F.3d at 1290 (“It has
been clear since Alice that a claimed invention’s use of the ineligible concept
to which it is directed cannot supply the inventive concept that renders the
invention ‘significantly more’ than that ineligible concept.”); buySAFE, Inc.
v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (“[N]arrowing of [an
abstract idea] does not make the idea non-abstract for [§] 101 purposes.”);
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014), cert.
denied, 576 U.S. 1057 (2015) (stating that the fact that some steps in an
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abstract idea “were not previously employed in this art is not enough—
standing alone—to confer patent eligibility”).
For the above reasons, Appellant fails to apprise us of error in the
Examiner’s determination that claim 1 does not recite additional elements
that, when considered both individually and as an ordered combination,
transform the nature of the claim into an inventive concept (i.e., an element
or combination of elements that is sufficient to ensure that the claim
amounts to significantly more than an abstract idea). See Non-Final Act. 3.
Accordingly, we sustain the rejection of claim 1, and of claims 2–12, which
fall with claim 1, as being directed to a patent-ineligible judicial exception to
35 U.S.C. § 101.
Anticipation
The Examiner finds that Silver discloses a computerized-method
comprising all of the steps recited in claim 1, as well as a computer readable
medium containing program instructions to cause a computer to perform
these steps as recited in claim 7. Non-Final Act. 4. In particular, the
Examiner finds that Silver discloses “providing, by a computing device, a
geometrical object, a corresponding predicate to be justified, and one or
more known predicates regarding the geometrical object (see FIG. 3 item
45).” Id. Notably, Silver uses item 45 to denote blank spaces to be filled in
with labels denoting elements of a geometrical object by the user in any of
standardized statements 49 selected by the user. See Silver, col. 8, ll. 17–20;
col. 10, ll. 47–50; Fig. 3. We understand the Examiner’s reference to “item
45” to have been an inadvertent typographical error and treat the rejection as
relying on Silver’s Statements Card 46 for step a) of claims 1 and 7. The
Examiner also finds that Silver discloses receiving a selection of one
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predicate of one or more known predicates. Non-Final Act. 4 (citing
Silver’s disclosure (col. 5, ll. 58–65) of a user being able to select a card that
contains one or more mathematical predicates). With respect to step c) of
the claims, the Examiner finds that Silver discloses “displaying, by the
computing device, a plurality of derivations corresponding to the selected
known predicate (see FIG. 5).” Id.
The Examiner does not specify what part of fifth screen 51 illustrated
in Silver’s Figure 5 the Examiner considers to be a display of a plurality of
derivations. The statement following THEN in Theorem 4–1, the Isosceles
Triangle Theorem, on theorem card 46 can reasonably be considered to be a
derivation. See Silver, col. 9, ll. 25–46; Fig. 5. Further, in the example
illustrated in Figure 5, theorem card 46 appears to be the card (i.e.,
predicate) selected in the disclosure the Examiner cites for the step of
selecting a predicate. Thus, the THEN statement of Theorem 4–1
reasonably seems to correspond to the selected predicate. However, it is not
apparent to us how the aforementioned statement in Theorem 4–1 could
reasonably be considered to be a plurality of derivations, as called for in step
c) of claims 1 and 7.
Appellant argues that “Silver simply does not show a plurality of
derivations that correspond to a selected known predicate.” Appeal Br. 5.
In responding to this argument, the Examiner states that “an example of
displaying, by the computing device on [a] display, a plurality of derivations
corresponding to the selected known predicates can be seen in FIG. 5 of the
Silver reference” and that “FIG. 5 of the Silver reference shows that
mathematical derivations required show that an isosceles triangle will have
two equal angle[s].” Ans. 5–6. However, this explanation is insufficiently
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illuminating as to what in Figure 5 of Silver constitutes displaying a
plurality of derivations corresponding to the selected predicate. The
Examiner’s attempt to shift the burden to Appellant to “[provide an]
explanation how . . . Silver lacks the required claim limitation” (id. at 6) is
improper and unavailing. See In re Warner, 379 F.2d 1011, 1017 (CCPA
1967) (“[T]he precise language of 35 U.S.C. § 102 that ‘(a) person shall be
entitled to a patent unless,’ concerning novelty and unobviousness, clearly
places a burden of proof on the Patent Office which requires it to produce
the factual basis for its rejection of an application under sections 102 and
103.”).
On the record before us, the Examiner has not set forth factual
findings with sufficient specificity to establish the factual basis for the
rejection of claims 1 and 7 as being anticipated by Silver. Accordingly, we
do not sustain the rejection of claims 1 and 7, or their dependent claims 2–6
and 8–12, under 35 U.S.C. § 102(a)(1) or 102(a)(2) as being anticipated by
Silver.

CONCLUSION
The Examiner’s rejection of claims 1–12 as being directed to a
patent-ineligible judicial exception to 35 U.S.C. § 101 is AFFIRMED. The
Examiner’s rejection of claims 1–12 under 35 U.S.C. § 102(a)(1) or
102(a)(2) as being anticipated by Silver is REVERSED.
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DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–12 101 Eligibility 1–12
1–12 102(a)(1)
or (a)(2)
Silver 1–12
Overall
Outcome
1–12

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