Caterpillar Inc.

Patent Trials and Appeals Board

Aug 20, 2020

14684229 - (D) (P.T.A.B. Aug. 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.
14/684,229 04/10/2015 Anthony James GRICHNIK 08350.1742-00000 6226
58982 7590 08/20/2020
CATERPILLAR/FINNEGAN, HENDERSON, L.L.P.
901 NEW YORK AVENUE
WASHINGTON, DC 20001-4413
EXAMINER
GURSKI, AMANDA KAREN
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
08/20/2020 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):
regional-desk@finnegan.com
us_docket_clerk@cat.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANTHONY JAMES GRICHNIK
Appeal 2020-001823
Application 14/684,229
Technology Center 3600
Before JOSEPH L. DIXON, DAVID M. KOHUT, and
JON M. JURGOVAN, Administrative Patent Judges.
DIXON, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–20.2 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
Caterpillar Inc. (Appeal Br. 1.)
2 Throughout this Decision we refer to the Final Rejection mailed August 3,
2018 (“Final Act.”), the Appeal Brief filed February 1, 2019 (“Appeal Br.”),
the Examiner’s Answer mailed November 12, 2019 (“Ans.”), and the Reply
Brief filed January 9, 2020 (“Reply Br.”).
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Application 14/684,229
2
INVENTION
The present invention relates to a system and method for “reducing
oscillation in a supply chain including a plurality of supply chain entities
[including sources and customers]” by determining network parameters for
the supply chain for supplying product lines from sources to customers,
transforming the network parameters from a real space to a neutral space
according to a common basis, and determining a neutral-space optimized
network model for the supply chain based on neutral-space representations
of the network parameters. (Spec. ¶ 8.)
Independent claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A system for reducing oscillation in a supply chain
including a plurality of supply chain entities, the supply chain
entities including a plurality of sources and a plurality of
customers, the system comprising:
a memory configured to store instructions;
one or more input/output devices configured to receive
user inputs and generate a user interface; and
a processor configured to receive the instructions from the
memory and execute the instructions, the instructions causing the
processor to:
determine a plurality of network parameters for the supply
chain for supplying a plurality of product lines from the plurality
of sources to the plurality of customers;
transform the network parameters from a real space to a
neutral space to generate a plurality of neutral-space
representations of the network parameters, the neutral-space
representations of the network parameters being measured in
units that are common across different product lines and different
supply chain entities;
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determine a neutral-space optimized network model for
the supply chain based on the neutral-space representations of the
network parameters;
determine real-space supply-demand relationships based
on the neutral-space optimized network model; and
configure the supply chain based on the real-space supply-
demand relationships.

(Appeal Br. 18–23 (Claims Appendix).)
REJECTION
Claims 1–20 stand rejected under 35 U.S.C. § 101 as directed to
patent-ineligible subject matter. (Final Act. 5–7.)

ANALYSIS
Patent eligibility is a question of law that is reviewable de novo.
Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012).
Accordingly, we review the Examiner’s § 101 determinations concerning
patent eligibility under this standard.
Patentable subject matter is defined by 35 U.S.C. § 101, as follows:
[w]hoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new and
useful improvement thereof, may obtain a patent therefor, subject
to the conditions and requirements of this title.
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. Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 70 (2012) (brackets in original) (citing Diamond v. Diehr,
450 U.S. 175, 185 (1981)).
In determining whether a claim falls within an excluded category, we
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are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014)
(citing Mayo, 566 U.S. at 75–77). In accordance with that framework, we
first determine what concept the claim is “directed to.” See Alice, 573 U.S.
at 218–19 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and, thus, patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diehr, 450 U.S. at 191); “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 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
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said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, and this principle cannot be circumvented by attempting
to limit the use of the formula to a particular technological environment.”
Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace
that an application of a law of nature or mathematical formula to a known
structure or process may well be deserving of patent protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a
patent-eligible application.” Alice, 573 U.S. at 221 (internal citation
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.
The PTO published revised guidance on the application of § 101.
USPTO’s Memorandum, 2019 REVISED PATENT SUBJECT MATTER
ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50 (January 7, 2019) (“Revised
Guidance”).3 Under that guidance, we first look to whether the claim

3 The Office issued a further memorandum on October 17, 2019 (“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.” Revised Guidance at 51;
see also October 2019 Memorandum at 1.
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recites:
(1) 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) additional elements that integrate the judicial exception into
a practical application (see MANUAL OF PATENT EXAMINING
PROCEDURE (MPEP) § 2106.05(a)–(c), (e)–(h) (9th ed., Rev.
08.2017, 2018)).

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 Revised Guidance.
Appellant argues independent claims 1–20 together, submitting
arguments for independent claim 1. (See Appeal Br. 7, 10, 12–15; Reply Br.
2–8.) As a result, we select independent claim 1 as the representative claim
for the group and address Appellant’s arguments thereto. See 37 C.F.R.
§ 41.37(c)(1)(iv).
Step 1 of the Revised Guidance
Independent claim 1, as a “system” claim, recites one of the
enumerated categories of statutory subject matter in 35 U.S.C. § 101,
namely, a machine. The issue before us is whether this claim is directed to a
judicial exception without significantly more.

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Alice/Mayo—Step 1 (Abstract Idea)
Step 2A–Prongs 1 and 2 identified in the Revised Guidance
Step 2A, Prong 1 of the Revised Guidance
The first Prong of Step 2A under the Revised Guidance is to
determine whether the claim recites a judicial exception including
(a) mathematical concepts; (b) certain methods of organizing human
activity; and (c) mental processes. Revised Guidance, 84 Fed. Reg. at 51–
52.
The Examiner determines that
claims 1, 8, and 16 are directed to determining parameters for a
supply chain, transforming the parameters from real space to
neutral space, determining a neutral space optimized supply
chain model, determining real space supply-demand
relationships based on the model, and configuring the supply
chain based on those relationships,

which “are merely mental processes” as “[o]ne could determine parameters,
convert them from one form to another universal form, determine a model,
determine relationships, and configure a supply chain all on their own
without any assistance from technology.” (Final Act. 5; Ans. 3–4.) The
Examiner also finds claim 1 is directed to “a practice similar to those found
by the courts to be abstract [such as in Electric Power Group].” (Final
Act. 5–6 (citing Electric Power Grp., LLC v. Alstom S.A., 830 F.3d 1350
(Fed. Cir. 2016)).)
Appellant argues claim 1 does not recite a mental process because
“the claimed method is clearly performed by a processor.” (Appeal Br. 8–
9.) Appellant further argues claim 1 is not directed to a mental process
because
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the steps of “transform the network parameters [for the supply
chain] from a real space to a neutral space,” “determine a neutral-
space optimized network model,” and “determine real-space
supply-demand relationships based on the neutral-space
optimized network model” cannot be “practically” performed in
the human mind, at least because a processor is required to
process the large volume of data (i.e., network parameters) in
order to perform these steps.

(Reply Br. 5.)
Appellant’s arguments do not persuade us that the claims do not recite
an abstract idea, and we concur with the Examiner’s conclusion that the
claims recite an abstract idea. (Final Act. 5–6; Ans. 3–4.)
Under its broadest reasonable interpretation, claim 1 recites an
abstract mental process of modelling supply and demand parameters for a
supply chain. In particular, claim 1 recites an abstract mental process of
modelling parameters for a supply chain by: collecting/gathering
information (using data of “supply chain entities including a plurality of
sources and a plurality of customers”), analyzing the information (claimed
“determine a plurality of network parameters for the supply chain for
supplying a plurality of product lines from the plurality of sources to the
plurality of customers,” “transform the network parameters from a real space
to a neutral space to generate a plurality of neutral-space representations of
the network parameters” with “the neutral-space representations of the
network parameters being measured in units that are common across
different product lines and different supply chain entities,” “determine a
neutral-space optimized network model for the supply chain based on the
neutral-space representations of the network parameters,” and “determine
real-space supply-demand relationships based on the neutral-space
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optimized network model”), and providing results of the collection and
analysis (“configure the supply chain based on the real-space supply-
demand relationships”). (See Appeal Br. 18 (claim 1).)
That is, although claim 1 recites “instructions causing the processor”
to perform operations for reducing oscillation in a supply chain, the
underlying operations recited in the claim are acts that could be performed
mentally and by pen and paper, without the use of a computer or any other
machine. (Ans. 4.) For example, a person could (i) manually
determine/collect network parameters (e.g., customer demand, supplier data,
and production rates, see Spec. ¶¶ 64–65), (ii) manually determine (e.g.,
with pen and paper) transformations of network parameters from a real space
to a unit-neutral space (using unit-less or “per unit” representations, see
Spec. ¶ 62) to obtain neutral-space representations and a neutral-space
optimized network model for the supply chain, and (iii) manually determine
(e.g., with pen and paper) real-space supply-demand relationships to assess
supply chain parameters such as, e.g., production capacities based on
customer demands. That is, “[a] user can calculate the math [for the claimed
modeling steps] and make comparisons of available supply and forecasted
demand with only pen to paper actions and/or mental calculation.” (Final
Act. 6.) Our reviewing court has concluded that mental processes include
similar concepts of collecting, manipulating, and providing, data. See
Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1340
(Fed. Cir. 2017) (the Federal Circuit held “the concept of . . . collecting
data, . . . recognizing certain data within the collected data set,
and . . . storing that recognized data in a memory” ineligible); and Electric
Power Grp., 830 F.3d at 1353 (merely selecting information, by content or
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source, for collection, analysis, and display does nothing significant to
differentiate a process from ordinary mental processes). Claim 1’s
“processor” automates actions performable manually with pen and paper;
however, mental processes remain unpatentable even when automated to
reduce the burden on the user of what once could have been done with pen
and paper. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
1375 (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.”).
We additionally note Appellant’s argument—that the claimed steps
“cannot be ‘practically’ performed in the human mind, at least because a
processor is required to process the large volume of data (i.e., network
parameters) in order to perform these steps”—is not commensurate with the
scope of claim 1. (See Reply Br. 5 (emphasis added).) Claim 1 does not
require processing a “large volume” of data or network parameters, as
Appellant argues. (Id.) Claim 1 recites processing two or more (“a plurality
of”) network parameters for supplying two or more (“a plurality of”) product
lines from two or more (“plurality of”) sources to two or more (“plurality
of”) customers. (See Appeal Br. 18 (claim 1).) Thus, claim 1’s steps recite
data processing operations that can be performed manually, using pen and
paper.
Thus, Appellant’s arguments that claim 1 recites elements that cannot
be characterized as mental steps or performed mentally, and that the claim
recites more than an abstract idea, have not persuaded us the Examiner erred
in finding the claim also recites an abstract idea. We now turn to Step 2A,
Prong 2, of the Revised Guidance to determine whether the abstract idea is
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integrated into a practical application. See Revised Guidance, 84 Fed. Reg.
at 54–55.
Step 2A, Prong 2 of the Revised Guidance
Under Revised Step 2A, Prong Two of the Revised Guidance, we
discern no additional element (or combination of elements) recited in
Appellant’s claim 1 that may have integrated the judicial exception into a
practical application. See Revised Guidance, 84 Fed. Reg. at 54–55. For
example, Appellant’s claimed additional elements (e.g., a “memory,” “one
or more input/output devices,” a “user interface,” and a “processor”) do not:
(1) improve the functioning of a computer or other technology; (2) are not
applied with any particular machine (except for generic computing
elements); (3) do not effect a transformation of a particular article to a
different state; and (4) are not applied in any meaningful way beyond
generally linking the use of the judicial exception to a particular
technological environment, such that the claim as a whole is more than a
drafting effort designed to monopolize the exception. (See MPEP
§§ 2106.05(a)–(c), (e)–(h); Ans. 4–5.) Rather, Appellant’s claimed
computing elements are configured to perform real-world functions and
operations that automate actions and operations that can be performed in the
human mind and with pen and paper, adding nothing of substance to the
underlying abstract idea. (Ans. 4–5.) It is clear from the claims and the
Specification (describing a “[p]rocessor 210 [that] may include one or more
processing devices, such as one or more microprocessors from the
PentiumTM or XeonTM family . . . or any other type of processors,” “a volatile
or non-volatile, magnetic, semiconductor, tape, optical, removable,
nonremovable, or other type of storage device,” and an “I/O device 240
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[that] may include one or more display devices, such as monitors, or other
peripheral devices . . . or any other suitable type of I/O device”), the claimed
computing elements require no improvements to computer technology. (See
Spec. ¶¶ 29–30, 38.) Claim 1 does not recite a specific improvement to the
way computers operate; rather, the broad claim language recites generic
“processor” and computer implemented “instructions,” and generic
automation of operations performable in the human mind or with pen and
paper. Thus, the claim’s limitations are not indicative of “integration into a
practical application.” See Revised Guidance, 84 Fed. Reg. at 54–55.
Rather, the memory, input/output devices, and processor are readily
available computing elements using their already available basic functions as
tools in executing the claimed operations for configuring a supply chain.
See SAP Am., Inc. v. InvestPic LLC, 898 F.3d 1161 (Fed. Cir. 2018).
Appellant argues claim 1 is not directed to an abstract idea but
directed to a practical application (as required by the Revised Guidance) for
the reasons that: (i) “configuring a supply chain in the claimed manner does
not constitute ‘merely linking the alleged abstract concept to a technological
concept’ nor do the combination of elements recited in the claims seek to
monopolize practice of the alleged abstract concept” (Appeal Br. 9–10); and
(ii) “the claimed limitations reflect an improvement to the technology of
supply chain optimization” by “considering multiple product lines
simultaneously,” thereby reducing oscillation in the supply chain (Reply Br.
6; Appeal Br. 11–13).
We remain unpersuaded by Appellant’s arguments, for the following
reasons. Appellant explains the claims address a problem of “conventional
supply chain optimization techniques [that] tend to configure each
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manufacturing facility to provide one product line exclusively,” such that
“a supply chain which supplies multiple product lines and which is
configured using the conventional optimization techniques [is] almost bound
to have oscillation due to the geographical misalignment between the
production capacities and customer demands.” (Reply Br. 6 (citing Spec.
¶¶ 85–86); Appeal Br. 11.) Appellant asserts the claimed limitations
substantially reduce such oscillation by “considering multiple product lines
simultaneously.” (Reply Br. 6 (citing Spec. ¶ 87); see also Appeal Br. 11–
13.) We are unpersuaded because the broad language of claim 1 does not
evidence differences from conventional supply chain optimization
techniques—for example, claim 1 does not preclude configuring “each
manufacturing facility to provide one product line exclusively,” and does
not require resolving for “geographical misalignment between the
production capacities and customer demands” as Appellant argues (see id.;
Ans. 5.) Appellant argues claim 1 “manages production capabilities by
considering multiple product lines simultaneously,” but the broad claim
language merely requires determining network parameters “for supplying a
plurality of product lines” and transforming network parameters to generate
neutral-space representations measured in “units that are common across
different product lines.” (See Appeal Br. 11, 18 (claim 1 (emphases
added)).) The broadly claimed “neutral-space representations,” “neutral-
space optimized network model,” and “transformation” (of network
parameters), and the broadly recited references to “product lines” in claim 1,
fail to capture how the claim would reduce supply chain oscillation “by
considering multiple product lines simultaneously.” (See Reply Br. 6.)
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Appellant also argues “[o]scillation in the neutral-space optimized
network model is substantially reduced,” however, claim 1 does not require
or specify such characteristics or effects of the network model (or of its
application). (Appeal Br. 12 (emphases added).) Thus, Appellant’s
argument fails because the argument is not commensurate with the scope of
claim 1. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (“[A]ppellant’s
arguments fail from the outset because . . . they are not based on limitations
appearing in the claims.”); see also In re Hiniker Co., 150 F.3d 1362, 1369
(Fed. Cir. 1998) (“[The] proffered facts . . . are not commensurate with the
claim scope and are therefore unpersuasive.”). The broad language of claim
1 merely specifies a neutral-space optimized network model based on
neutral-space representations of network parameters, real-space supply-
demand relationships based on the neutral-space optimized network model,
and a supply chain configured based on the real-space supply-demand
relationships.
We are therefore unpersuaded by Appellant’s arguments that claim 1
provides “non-abstract improvements to the technology of reducing
oscillation in a supply chain.” (Appeal Br. 13; see also Appeal Br. 10
(arguing that “configuring a supply chain in the claimed manner does not
constitute ‘merely linking the alleged abstract concept to a technological
concept’”), Reply Br. 8 (arguing a “technical improvement”).) The claimed
computing infrastructure is “merely a simple implementation of
computerization or automation to otherwise abstract steps.” (Ans. 4.) Claim
1’s computer components are used in an ordinary manner, and for their
ordinary functions, and the claim does not evidence any improvement to
those components themselves. See MPEP § 2106.05(a). Claim 1 merely
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uses the computer components to store, provide, and analyze data. Hence,
instead of a technical improvement, the claimed determining, transforming,
and configuring improve modelling of supply chain parameters using
operations readily performable in the human mind. (Ans. 5–6.) Such an
improvement does not integrate the abstract idea into a practical application.
See 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.”).
Appellant also argues the “claims do not preempt all ways of
performing the alleged abstract idea.” (Appeal Br. 15; see also Reply Br. 8.)
While claim 1 may not entirely preempt the abstract idea recited therein,
claim 1 poses significant preemption concerns because of its broad
limitations. (See Ans. 7.) For example, the claimed “neutral-space
representations,” “neutral-space optimized network model,” transformation
(of network parameters), and determination (of real-space supply-demand
relationships) encompass broad classes and combinations of models,
representations, and supply-demand relationships. As the McRO court
explicitly recognized, “the absence of complete preemption does not
demonstrate patent eligibility.” (See McRO, Inc. v. Bandai Namco Games
Am. Inc., 837 F.3d 1299, 1315 (Fed. Cir. 2016) (quoting Ariosa Diagnostics,
Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)); Ans. 7.)
Furthermore, “[w]here a patent’s claims are deemed only to disclose patent
ineligible subject matter” under the Alice/Mayo framework, “preemption
concerns are fully addressed and made moot.” Ariosa, 788 F.3d at 1379.
For these reasons, we determine representative claim 1, and grouped
claims 2–20, do not integrate a judicial exception into a practical
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application, and are directed to a judicial exception (a mental process of
modelling parameters for a supply chain) identified as an abstract idea in the
Revised Guidance. Therefore, we proceed to Step 2B, The Inventive
Concept.
Alice/Mayo—Step 2 (Inventive Concept)
Step 2B identified in the Revised Guidance

As recognized by the Revised Guidance, an “inventive concept” under
Alice step 2 can be evaluated based on whether an additional element or
combination of elements:
(1) “[a]dds a specific limitation or combination of limitations
that are not well-understood, routine, conventional activity
in the field, which is indicative that an inventive concept
may be present;” or
(2) “simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a
high level of generality, to the judicial exception, which is
indicative that an inventive concept may not be present.”
See Revised Guidance, 84 Fed. Reg. at 56.
We now determine whether representative independent claim 1 recites
any elements additional to the abstract idea that are not well-understood,
routine, or conventional. See MPEP § 2106.05(d). We do not find any
recited in the claims.
The Examiner asserts,
The claims do not include additional elements that are sufficient
to amount to significantly more than the judicial exception
because the machines claimed to implement the abstract idea are
merely generic computer components, including memory,
input/output devices, user interface, processor, and a computer-
readable medium, implementing the steps of creating a model
that has neutral space (or a generically universally applicable
model) for a supply chain optimization. . . . Taking the elements
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both individually and as a combination, the computer
components at each step of the abstract idea perform purely
generic computer functions.
(Final Act. 6–7.)
Appellant argues claim 1 recites “significantly more” because: (i) the
Examiner “has not supported the rejection with one of the . . . four categories
of evidence required by the Berkheimer Memo” and “has not provided any
support showing that the subject matter of claim 1 . . . [is] ‘well-understood,
routine or conventional’” (Reply Br. 7–8; Appeal Br. 14–16 (citing
USPTO Memorandum, “Changes in Examination Procedure Pertaining to
Subject Matter Eligibility, Recent Subject Matter Eligibility Decision
(Berkheimer v. HP, Inc.),” published on April 19, 2018 (“Berkheimer
Memo”))); (ii) “the claimed combination of elements are not well-
understood, routine, or conventional,” and “the Office Action expressly
admitted that the []quoted limitations [of transforming, and determining a
neutral-space optimized network model] of claims 1, 8, and 16, ‘are neither
taught nor suggested, singularly or in combination, by the prior art of
record’” (Appeal Br. 15–16); and (iii) similar to the claims in BASCOM,
“the pending claims recite a non-conventional non-generic arrangement of
steps for configuring a supply chain” and “steps formed by the processor
[that] are neither routine nor conventional” (Appeal Br. 8, 13–15 (citing
BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341,
1353 (Fed. Cir. 2016)); Reply Br. 8).
Appellant’s arguments are not persuasive. Particularly, we are not
persuaded that the Examiner has failed to produce factual support or
evidence that claim 1 is routine and conventional. The Examiner has noted
that Appellant’s claim 1 requires generic computer components performing
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generic computer functions. (See Final Act. 6–7; Ans. 6–7 (citing Versata
Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334 (Fed. Cir. 2015)
(receiving, storing, retrieving, sorting, and eliminating information is well
known); OIP Techs., 788 F.3d at 1363 (noting that storing data is well-
understood, routine, and conventional)); see also Elec. Power Grp., 830 F.3d
at 1355 (finding that use of “conventional computer, network, and display
technology for gathering, sending, and presenting the desired information”
does not add significantly more to the claimed abstract idea); Spec. ¶¶ 28–
30, 38–39.) The claimed data analysis operations automate manually
performable steps using basic computer functions, previously known to the
industry. However, “the use of generic computer elements like a
microprocessor or user interface” to perform conventional computer
functions “do not alone transform an otherwise abstract idea into patent-
eligible subject matter.” FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d
1089, 1096 (Fed. Cir. 2016) (citing DDR Holdings, LLC, v. Hotels.com,
L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014)).
Additionally, Appellant’s abstract idea (of a mental process of
modelling parameters for a supply chain) applied to generic computing
infrastructure, does not provide any particular practical application as
required by BASCOM. (Ans. 6; see BASCOM, 827 F.3d at 1350, 1352.) For
example, BASCOM’s patent-eligible ordered combination of claim
limitations contains an “inventive concept [that] harnesses [a] . . . technical
feature of network technology in a filtering system by associating individual
accounts with their own filtering scheme and elements while locating the
filtering system on an ISP [(Internet Service Provider)] server.” See
BASCOM, 827 F.3d at 1350. BASCOM’s claimed ordered combination
Appeal 2020-001823
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“improve[s] the performance of the computer system itself” with a
“technology-based solution . . . to filter content on the Internet that
overcomes existing problems with other Internet filtering systems.” See
BASCOM, 827 F.3d at 1351–52 (internal citation omitted). Appellant’s
abstract idea using generically-claimed computing elements does not
provide any particular practical application as required by BASCOM, or
entail an unconventional technological solution to a technological problem
as required by Amdocs. See Amdocs (Isr.) Ltd. v. Openet Telecom, Inc., 841
F.3d 1288, 1300, 1302 (Fed. Cir. 2016). Claim 1’s elements, considered as
an ordered combination, do not improve the functioning of a computer itself,
or effect an improvement in another technology or technical field. (Ans. 6.)
Instead, claim 1 amounts to nothing significantly more than an instruction to
apply the abstract idea using a generic processor. (Id.) That is not enough to
transform an abstract idea into a patent-eligible invention.
Appellant also argues claim 1 recites “significantly more” because
unconventional claimed limitations are not taught or suggested by prior art
of record. (Appeal Br. 15–16.) This argument improperly conflates the test
for 35 U.S.C. § 101 with the separate tests for 35 U.S.C. §§ 102 and 103.
See, e.g., Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed.
Cir. 2016) (“[U]nder the Mayo/Alice framework, a claim directed to a newly
discovered law of nature (or natural phenomenon or abstract idea) cannot
rely on the novelty of that discovery for the inventive concept necessary for
patent eligibility.”). As the Supreme Court emphasizes, “[t]he ‘novelty’ of
any element or steps in a process, or even of the process itself, is of no
relevance in determining whether the subject matter of a claim falls within
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Application 14/684,229
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the § 101 categories of possibly patentable subject matter.” Diehr, 450 U.S.
at 188–89 (emphasis added).
Because Appellant’s representative claim 1, and grouped claims 2–20
are directed to a patent-ineligible abstract concept and do not recite an
“inventive concept” under the second step of the Alice analysis, we sustain
the Examiner’s § 101 rejection of claims 1–20.
DECISION SUMMARY
The Examiner’s rejection of claims 1–20 under 35 U.S.C. § 101 is
AFFIRMED.
In summary:
Claims
Rejected
35 U.S.C.
§ 
Reference(s)/
Basis
Affirmed Reversed
1–20 101 Eligibility 1–20
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