Ex Parte LeeDownload PDFPatent Trials and Appeals BoardJun 28, 201913619151 - (D) (P.T.A.B. Jun. 28, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/619,151 09/14/2012 23400 7590 07/02/2019 POSZ LAW GROUP, PLC 12040 SOUTH LAKES DRIVE SUITE 101 RESTON, VA 20191 FIRST NAMED INVENTOR Eugene M. Lee 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 ATTORNEY DOCKET NO. CONFIRMATION NO. l 13708.12l_CON8 3404 EXAMINER YOUNG, MICHAEL C ART UNIT PAPER NUMBER 3689 NOTIFICATION DATE DELIVERY MODE 07/02/2019 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): mailbox@poszlaw.com dposz@poszlaw.com tvarndell @poszlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte EUGENE M. LEE Appeal2018-006242 Application 13/619, 151 Technology Center 3600 Before JOHN A. JEFFERY, ST. JOHN COURTENAY III, and CAROLYN D. THOMAS, Administrative Patent Judges. JEFFERY, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's decision to reject claims 21--47. Claims 1-20 were canceled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm and enter a new ground of rejection. STATEMENT OF THE CASE Appellant's invention is an intellectual property (IP) analysis, searching, and access system that provides, among other things, an initial patent claim analysis. Spec. 1, 22. To this end, a IP analyzer application 1 Appellant identifies the real party in interest as Eugene M. Lee. App. Br. 5. Appeal2018-006242 Application 13/619,151 104 can (1) break down patent claims into constituent elements; (2) identify keywords in those elements; (3) search a patent's specification for the keywords; and ( 4) populate the claim analysis for each element with reference to a preliminarily determined relevant section of the specification. Spec. 22. In one aspect, the IP analyzer can generate claim charts by separating claims into key phrases that are then linked automatically to portions of a patent Specification's text and related images. Spec. 42--43. Claim 21 is illustrative: 21. A computer system for generating an initial patent claim analysis, comprising: an interface to a display that provides visual information to a user; and a processor cooperatively operable with the interface, and that loads and executes instructions to facilitate: breaking down a patent claim of one patent document into legally cognizable claim elements that constitute the patent claim, wherein the patent document is a patent application or a patent and includes at least a specification and patent claims separate from the specification; identifying, for each of the claim elements, at least one keyword which appears therein; searching the specification of a different patent document for each at least one keyword which was identified, to preliminarily determine a relevant section of the different patent document that provides disclosure for each of the claim elements; generating, without manual intervention, a claim chart for the patent claim of the patent document, that quotes each of the claim elements in the claim chart and refers to the preliminarily determined relevant section of the different patent document that provides disclosure for each of the claim elements; and causing the display to visually provide the claim chart that quotes the claim elements with a reference to each of the preliminarily determined relevant sections as providing disclosure relevant for each of the claim elements. 2 Appeal2018-006242 Application 13/619,151 App. Br. 59 (Claims Appendix). RELATED APPEALS On page 5 of the Appeal Brief, Appellant cites nine related appeals. We decided the appeals in eight of those applications, where one application (10/229,273) involved multiple appeals. See Ex parte Lee, No. 2009-010022 (BPAI Apr. 22, 2011); Ex parte Lee, No. 2014-009230 (PTAB Aug. 5, 2016), reh 'g denied (PTAB Nov. 15, 2016). The appeals in Applications 13/599,206, 13/599,415, 13/599,517, 13/599,639, 13/618,979, 13/619,486, 13/803,691, and 13/338,098 have also been decided, the latter by a different panel of this Board. See Ex parte Lee, No. 2014-009364 (PTAB Mar. 20, 2017); Ex parte Lee, No. 2014-003734 (PTAB Mar. 2, 2017); Ex parte Lee, No. 2016-003036 (PTAB Apr. 3, 2017); Ex parte Lee, No. 2014-009733 (PTAB Mar. 21, 2017); Ex parte Lee, No. 2014-008495 (PTAB Mar. 15, 2017); Ex parte Lee, No. 2014-008498 (PTAB Mar. 15, 2017); Ex parte Lee, No. 2015-001993 (PTAB Mar. 29, 2017); and Ex parte Lee, No. 2016- 001439 (PTAB Aug. 14, 2017) ("Lee '1439"). THE REJECTIONS The Examiner rejected claims 21--4 7 under 3 5 U.S. C. § 101 as directed to ineligible subject matter. Non-Final Act. 8-13. 2 2 Throughout this opinion, we refer to (1) the Non-Final Rejection mailed August 31, 2017 ("Non-Final Act."); (2) the Appeal Brief filed November 30, 2017 ("App. Br."); (3) the Examiner's Answer mailed April 5, 2018 ("Ans."); and (4) the Reply Brief filed May 29, 2018 ("Reply Br."). 3 Appeal2018-006242 Application 13/619,151 The Examiner rejected claims 21-23, 26-31, 34--39, and 42--47 under 35 U.S.C. § 103 as unpatentable over Rivette (US 5,623,679; issued Apr. 22, 1997) ("Rivette '679") and Stobbs (US 2004/0181427 Al; published Sept. 16, 2004). Non-Final Act. 14--26. The Examiner rejected claims 24, 25, 32, 33, 40, and 41 under 35 U.S.C. § 103 as unpatentable over Rivette '679, Stobbs, and Rivette (US 5,991,751; issued Nov. 23, 1999) ("Rivette '751"). Non-Final Act. 26-30. THE INELIGIBILITY REJECTION The Examiner determines that the claims are directed to an abstract idea, including receiving and analyzing data, and displaying results of the analysis. Non-Final Act. 8-10; Ans. 4--12. The Examiner adds that the claims do not include elements that add significantly more than the abstract idea, but merely recite, among other things, generic computer components. See Non-Final Act. 11-12; Ans. 13-14. Appellant argues that the claimed invention is eligible because, among other things, it provides a particular means to solve a technical problem of generating an initial patent claim analysis that is not solved by conventional search tools, nor does the claimed invention automate a manual process. App. Br. 11-26; Reply Br. 3. Appellant adds that despite not being directed to an abstract idea, the recited limitations nonetheless add significantly more to the purported abstract idea by, among other things, reciting (1) a "transformative result" by providing a quick initial claim chart via the recited functions, and (2) limitations that are not well-understood, routine, and conventional. App. Br. 26-28; Reply Br. 3-7. Regarding the latter point, Appellant contends that the Examiner's findings to the contrary lack 4 Appeal2018-006242 Application 13/619,151 evidentiary support and, therefore, do not comport with USPTO procedure requiring such evidence. Reply Br. 4--7. Appellant adds that the invention recited in claims 45 to 4 7 provides an additional technical solution, and is well beyond a mere "embellishment" of the independent claims as the Examiner contends. App. Br. 32-33; Reply Br. 8-9. ISSUE Under§ 101, has the Examiner erred in rejecting claims 21--47 as directed to ineligible subject matter? This issue turns on whether the claims are directed to an abstract idea and, if so, whether recited elements- considered individually and as an ordered combination-transform the nature of the claims into a patent-eligible application of that abstract idea. PRINCIPLES OF LAW An invention is patent-eligible if it claims 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. See, e.g., Alice Corp. Pty. Ltd. 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. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework, we first determine what concept the claim is "directed to." See Alice, 573 U.S. at 219 ("On their face, the claims before us are drawn to the concept of 5 Appeal2018-006242 Application 13/619,151 intermediated settlement, i.e., the use of a third party to mitigate settlement risk."); see also Bilski v. Kappas, 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 (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 192 (1981 )); "tanning, dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores" (id. at 184 n.7 (quoting Corning v. Burden, 56 U.S. (15 How.) 252, 267---68 (1854))); 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 176; 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."). That said, 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 6 Appeal2018-006242 Application 13/619,151 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 tum 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 ( quotation marks and 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. In January 2019, the USPTO published revised guidance on the application of§ 101. See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) ("Guidance"). Under that guidance, we first look to whether the claim 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, Jan. 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: 7 Appeal2018-006242 Application 13/619,151 (3) adds a specific limitation beyond the judicial exception that is not well-understood, routine, and conventional in the field (see MPEP § 2106.05(d)); or ( 4) simply appends well-understood, routine, and conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. See Guidance, 84 Fed. Reg. at 56. ANALYSIS Claims 21-44: Alice/Mayo Step One Representative independent claim 21 recites [a] computer systemfor generating an initial patent claim analysis, comprising: an interface to a display that provides visual information to a user; and a processor cooperatively operable with the interface, and that loads and executes instructions to facilitate: breaking down a patent claim of one patent document into legally cognizable claim elements that constitute the patent claim, wherein the patent document is a patent application or a patent and includes at least a specification and patent claims separate from the specification; identifying, for each of the claim elements, at least one keyword which appears therein; searching the specification of a different patent document for each at least one keyword which was identified, to preliminarily determine a relevant section of the different patent document that provides disclosure for each of the claim elements; 8 Appeal2018-006242 Application 13/619,151 generating, without manual intervention, a claim chart for the patent claim of the patent document, that quotes each of the claim elements in the claim chart and refers to the preliminarily determined relevant section of the different patent document that provides disclosure for each of the claim elements; and causing the display to visually provide the claim chart that quotes the claim elements with a reference to each of the preliminarily determined relevant sections as providing disclosure relevant for each of the claim elements. 3 As the disclosure explains, Appellant's invention is an intellectual property (IP) analysis, searching, and access system that provides, among other things, an initial patent claim analysis. Spec. 1, 22. To this end, an IP analyzer application 104 can (1) break down patent claims into constituent elements; (2) identify keywords in those elements; (3) search a patent's specification for the keywords; and ( 4) populate the claim analysis for each element with reference to a preliminarily determined relevant section of the specification. Spec. 22. In one aspect, the IP analyzer can generate claim charts by separating claims into key phrases that are then linked automatically to portions of a patent Specification's text and related images. Spec. 42--43. Turning to claim 1, we first note that the claim recites a system and, therefore, falls within the machine category of§ 101. But despite falling within this statutory category, we must still determine whether the claim is directed to a judicial exception, namely an abstract idea. See Alice, 573 U.S. 3 Unless otherwise indicated, we italicize or quote text associated with various recited limitations for emphasis and clarity. 9 Appeal2018-006242 Application 13/619,151 at 217. To this end, we must determine whether the claim (1) recites a judicial exception, and (2) fails to integrate the exception into a practical application. See Guidance, 84 Fed. Reg. at 52-55. If both elements are satisfied, the claim is directed to a judicial exception under the first step of the Alice/Mayo test. See id. In the rejection, the Examiner determines that claim 21 is directed to an abstract idea, namely receiving and analyzing data, and displaying results of the analysis, which is said to include mental processes. See Non-Final Act. 8-11; Ans. 4--12. To determine whether a claim recites an abstract idea, we (1) identify the claim's specific limitations that recite an abstract idea, and (2) determine whether the identified limitations fall within certain subject matter groupings, namely (a) mathematical concepts4; (b) certain methods of organizing human activity5; or ( c) mental processes. 6 Here, apart from the recited ( 1) computer system; (2) interface; (3) display; ( 4) processor cooperatively operable with the interface, and that 4 Mathematical concepts include mathematical relationships, mathematical formulas or equations, and mathematical calculations. See Guidance, 84 Fed. Reg. at 52. 5 Certain methods of organizing human activity include 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 Guidance, 84 Fed. Reg. at 52. 6 Mental processes are concepts performed in the human mind including an observation, evaluation, judgment, or opinion. See Guidance, 84 Fed. Reg. at 52. 10 Appeal2018-006242 Application 13/619,151 loads and executes instructions; and (5) generating a claim chart without manual intervention, all of claim 21 's recited limitations, which collectively are directed to ( 1) searching keywords associated with a patent claim in other patent documents; and (2) associating the search results to the claim's recited elements, fit squarely within at least one of the above categories of the USPTO' s guidelines. First, (1) breaking down a patent claim ... into legally cognizable claim elements ... ; (2) identifying, for each of the claim elements, at least one keyword which appears therein; (3) searching the specification of a different patent document . .. to preliminarily determine a relevant section of the different patent document that provides disclosure for each of the claim elements; (4) generating ... a claim chart for the patent claim of the patent document, that quotes each of the claim elements in the claim chart and refers to the preliminarily determined relevant section of the different patent document that provides disclosure for each of the claim elements; and (5) visually provid[ing] the claim chart . .. could be done entirely mentally by merely (1) reading a patent document; (2) looking for certain words in that document; (3) noting the associated sections in that document containing those words; and (4) organizing the results of that search either mentally or by writing this information down-processes that involve mere observation and logical reasoning. Cf CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011) (noting that limitation reciting obtaining information about transactions that have used an Internet address identified with a credit card transaction can be performed by a human who simply reads records of Internet credit card transactions from a pre-existing database); see also id. (noting that a recited step that utilized a 11 Appeal2018-006242 Application 13/619,151 map of credit card numbers to determine the validity of a credit card transaction could be performed entirely mentally by merely using logical reasoning to identify a likely instance of fraud by merely observing that numerous transactions using different credit cards all originated from the same IP address). Notably, the above-noted recited functions are strikingly similar to those that have long been performed by Patent Examiners at the USPTO when searching prior art references for instances of terms and keywords associated with an invention claimed in a patent application----even before computer-assisted searching. That is, these searches and patentability determinations were performed largely by Examiners reading individual paper copies of patents classified according to their subject matter. See MANUAL OF PATENT EXAMINING PROCEDURE (MPEP) § 904 (5th ed. Rev. 13 Nov. 1989) ("MPEP 5th ed.") 7 ("The examiner, after having obtained a thorough understanding of the invention disclosed and claimed in the application, then searches the prior art as disclosed in patents and other printed documents.") ( emphases added); see also id. at§ 904.02 (instructing examiners to conduct a search commensurate with the limitations appearing in the most detailed claims in the case);§ 901.07 (noting the arrangement of U.S. patents in "shoes" bearing appropriate labels showing the associated 7 This version of the MPEP ( and other earlier editions) are available from the USPTO's web site at https ://www. uspto. gov /web/ offices/pac/mpep/ o ld/index.htm. As noted above, we refer to the 5th edition of the MPEP as "MPEP 5th ed." to distinguish it from the latest version of the MPEP that is simply abbreviated "MPEP." 12 Appeal2018-006242 Application 13/619,151 class, subclass, and range of patent numbers in a particular shoe). In this sense, then, the cited limitations also organize human activity, at least to the extent that they not only organize information for analysis, but also comport with standard examination procedure for searching prior art and, therefore, pertain to following associated rules or instructions outlined in the Fifth Edition of the MPEP noted above. See Guidance, 84 Fed. Reg. at 52. That the claim also calls for generating a claim chart does not change our conclusion. As another panel of this Board noted in a related appeal, a "claim chart" is a table having a column indicating the elements of one or more claims, and one or more additional columns indicating corresponding information regarding the claim elements including prior art, that corresponds to those claim elements. Lee '1439, at 6. As with searching prior art based on recited claim elements, ( 1) mapping individual elements of a claim to particular disclosure in searched-for patents, and (2) presenting that information in a claim chart was not only done routinely in reexamination proceedings, but is also standard examination procedure. See MPEP 5th ed. § 2214 (listing exemplary reexamination request showing unpatentability of claim 3 of the Smith patent, where ( 1) each claim element is listed in the first column and is assigned a different row, and (2) corresponding disclosure in a prior art patent to Berridge meets each respective element in a second column); see also MPEP § 2262 (9th ed. Rev. 08.2017, Jan. 2018) (allowing Examiners to incorporate reexamination request claim charts in their Office Actions). Such tables merely organize data in rows and columns, such that the intersection of a particular column and row identifies a corresponding cell with information pertaining to both the associated column and row, as in a spreadsheet. See, e.g., Enfzsh LLC v. 13 Appeal2018-006242 Application 13/619,151 Microsoft Corp., 822 F.3d 1327, 1340 (Fed. Cir. 2016) (discussing data representing rows and columns in a table in Microsoft Excel 5.0--a version of a well-known spreadsheet program). Such a table and its associated data can be visualized and processed mentally or with pen and paper. Although the claim recites an abstract idea based on these mental processes and methods of organizing human activity, we nevertheless must still determine whether the abstract idea is integrated into a practical application, namely whether the claim applies, relies on, or uses the abstract idea in a manner that imposes a meaningful limit on the abstract idea, such that the claim is more than a drafting effort designed to monopolize the abstract idea. See Guidance, 84 Fed. Reg. at 54--55. To this end, we (1) identify whether there are any additional recited elements beyond the abstract idea, and (2) evaluate those elements individually and collectively to determine whether they integrate the exception into a practical application. See id. First, we are not persuaded that the claimed invention improves the computer or its components' functionality or efficiency, or otherwise changes the way those devices function, at least in the sense contemplated by the Federal Circuit in Enfish, despite Appellant's arguments to the contrary (App. Br. 14). The claimed self-referential table in Enfish was a specific type of data structure designed to improve the way a computer stores and retrieves data in memory. Enfish, 822 F.3d at 1339. To the extent Appellant contends that the claimed invention uses such a data structure to improve a computer's functionality or efficiency, or otherwise change the way that device functions (see App. Br. 7), there is no persuasive evidence on this record to substantiate such a contention. 14 Appeal2018-006242 Application 13/619,151 As the Enfzsh court emphasized, the claims were not directed to any form of storing tabular data, but were instead directed to a self-referential table for a computer database. Enfzsh, 822 F.3d at 1337. Notably, the court explained that the table stored information related to each column in rows of that very table, such that new columns can be added by creating new rows in the table. Id. at 1338. To the extent that Appellant contends that the recited claim chart is similar to the self-referential table in Enfzsh (see App. Br. 14), we disagree. To the extent Appellant contends that the claimed invention is rooted in technology because it is ostensibly directed to a technical solution (see App. Br. 11-13; Reply Br. 3), we disagree. Even assuming, without deciding, that the claimed invention can analyze patent claims faster than doing so manually, any speed increase comes from the capabilities of the generic computer components-not the recited process itself. See Fair Warning IP, LLC v. Iatric Systems, Inc., 839 F.3d 1089, 1095 (Fed. Cir. 2016) (citing Bancorp Services, LLC v. Sun Life Assurance Co., 687 F.3d 1266, 1278 (Fed. Cir. 2012) ("[T]he fact that the required calculations could be performed more efficiently via a computer does not materially alter the patent eligibility of the claimed subject matter.")); see also Intellectual Ventures I LLC v. Erie Indemnity Co., 711 F. App'x 1012, 1017 (Fed. Cir. 2017) (unpublished) ("Though the claims purport to accelerate the process of finding errant files and to reduce error, we have held that speed and accuracy increases stemming from the ordinary capabilities of a general- purpose computer do not materially alter the patent eligibility of the claimed subject matter."). Like the claims in Fair Warning, the focus of claim 21 is not on an improvement in computer processors as tools, but on certain 15 Appeal2018-006242 Application 13/619,151 independently abstract ideas that use generic computing components as tools. See FairWarning, 839 F.3d at 1095 (citations and quotation marks omitted). As with the ineligible claimed invention in BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1284--91 (Fed. Cir. 2018), the claimed invention does not improve a computer's functionality or that of its associated components, but rather the benefits flow from performing the abstract idea in conjunction with those generic computer components. See BSG, 899 F.3d at 1288 ("While the presentation of summary comparison usage information to users improves the quality of the information added to the database, an improvement in the information stored by a database is not equivalent to an improvement in the database's functionality."). Appellant's reliance on McRO, Inc. v. Bandai Namco Games America, Inc., 837 F.3d 1299 (Fed. Cir. 2016) (App. Br. 13, 17; Reply Br.) is likewise unavailing. There, the claimed process used a combined order of specific rules that rendered information in a specific format that was applied to create a sequence of synchronized, animated characters. McRO, 837 F.3d at 1315. Notably, the recited process automatically animated characters using particular information and techniques-an improvement over manual three-dimensional animation techniques that was not directed to an abstract idea. Id. at 1316. But unlike the claimed invention in McRO that improved how the physical display operated to produce better quality images, the claimed invention here merely uses generic computing components to perform the recited functions. This generic computer implementation is not only directed to fundamental human activity organization and mental processes as 16 Appeal2018-006242 Application 13/619,151 noted above, but also does not improve a display mechanism as was the case inMcRO. See SAP Am. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018) ( distinguishing McRO). We also find unavailing Appellant's reliance on Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc., 880 F.3d 1356 (2018) (Reply Br. 3--4). There, the court held eligible claims reciting a computing device that could display an application summary window that was not only reachable directly from the main menu, but could also display a limited list of selectable functions while the application was in an un-launched state. Core Wireless, 880 F.3d at 1360-63. Upon selecting a function, the device would then launch the application and initiate the selected function. Id. at 1360. In reaching its eligibility conclusion, the court noted that the claimed invention was directed to an improved user interface for computing devices that used a particular manner of summarizing and presenting a limited set of information to the user, unlike conventional user interface methods that displayed a generic index on a computer. Id. at 1362---63. That is not the case here. To the extent that Appellant contends that the claimed invention is directed to such improvements in computer capabilities (see Reply Br. 3--4), there is no persuasive evidence on this record to substantiate such a contention. Therefore, we do not find that the claim recites additional elements improving (1) the computer itself, or (2) another technology or technical field. See Guidance, 84 Fed. Reg. at 55 (citing MPEP § 2106.05(a)). Rather, the above-noted additional elements merely (1) apply the abstract idea on a computer; (2) include instructions to implement the abstract idea 17 Appeal2018-006242 Application 13/619,151 on a computer; or (3) use the computer as a tool to perform the abstract idea. See Guidance, 84 Fed. Reg. at 55 (citing MPEP § 2106.05([)). To the extent that Appellant contends that the claimed invention is eligible because it satisfies the machine-or-transformation test by reciting a "transformative result" (see App. Br. 27), we disagree. To be sure, a claim that transforms a particular article to another state or thing or is tied to a particular machine to satisfy the machine-or-transformation test can be a "useful clue" to eligibility in the Alice/Mayo framework. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014) (quoting Bilski v. Kappas, 561 U.S. 593, 594 (2010)); see also In re Bilski, 545 F.3d 943, 954 (Fed. Cir. 2008), aff'd sub nom. Bilski, 561 U.S. at 593. Despite not being the sole eligibility test, the machine-or-transformation test can nevertheless indicate whether additional elements integrate the exception into a practical application. See Guidance, 84 Fed. Reg. at 55 ( citing MPEP §§ 2106.05(b ), (c)). But that is not the case here. The recited functions that are said to produce the alleged "transformative result," namely ( 1) identifying the keywords in each claim element; (2) searching those keywords in a patent document; and (3) generating the recited claim chart (see App. Br. 27), do not transform a particular article into a different state or thing, but rather merely recite an abstract idea, namely mental processes and methods of organizing human activity as noted above. We add that the step calling for causing the display to visually provide the claim chart . .. in the claim's last clause not only uses generic computing components to perform the abstract idea as noted above, but this display function is also insignificant extra-solution activity that merely 18 Appeal2018-006242 Application 13/619,151 displays the result of the patent claim analysis of the recited abstract idea and, therefore, does not integrate the exception into a practical application for that additional reason. See In re Bilski, 545 F.3d 943, 963 (Fed. Cir. 2008) (en bane), ajf'd on other grounds, 561 U.S. 593 (2010). Accord Guidance, 84 Fed. Reg. at 55 (citing MPEP § 2106.05(g)). In conclusion, although the recited functions may be beneficial by (1) searching keywords associated with a patent claim in other patent documents; and (2) associating the search results to the claim's recited elements, a claim for a useful or beneficial abstract idea is still an abstract idea. See Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379- 80 (Fed. Cir. 2015). We, therefore, agree with the Examiner that claim 21 is directed to an abstract idea. Claims 21--44: Alice/Mayo Step Two Turning to Alice/Mayo step two, claim 21 's additional recited elements, namely the recited ( 1) computer system; (2) interface; (3) display; ( 4) processor cooperatively operable with the interface, and that loads and executes instructions; and ( 5) generating a claim chart without manual intervention----considered individually and as an ordered combination----do not provide an inventive concept such that these additional elements amount to significantly more than the abstract idea. See Alice, 573 U.S. at 221; see also Guidance, 84 Fed. Reg. at 56. As noted above, the claimed invention merely uses generic computing components to implement the recited abstract idea. 19 Appeal2018-006242 Application 13/619,151 To the extent Appellant contends that the recited limitations, including those detailed above in connection with Alice step one, add significantly more than the abstract idea to provide an inventive concept under Alice/Mayo step two (see App. Br. 15-16, 27-28; Reply Br. 3-9), these limitations are not additional elements beyond the abstract idea, but rather are directed to the abstract idea as noted previously. See Guidance, 84 Fed. Reg. at 56 (instructing that additional recited elements should be evaluated in Alice/Mayo step two to determine whether they (1) add specific limitations that are not well-understood, routine, and conventional in the field, or (2) simply append well-understood, routine, and conventional activities previously known to the industry (citing MPEP § 2106.05(d)). Rather, the recited (1) computer system; (2) interface; (3) display; and ( 4) processor cooperatively operable with the interface, and that loads and executes instructions; and (5) generating a claim chart without manual intervention are the only additional recited elements whose generic computing functionality is well-understood, routine, and conventional. See Intellectual Ventures, 792 F.3d at 1368 (noting that a recited user profile (i.e., a profile keyed to a user identity), database, and communication medium are generic computer elements); Fair Warning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1096 (Fed. Cir. 2016) (noting that using generic computing components like a microprocessor or user interface do not transform an otherwise abstract idea into eligible subject matter); Mortgage Grader Inc. v. First Choice Loan Services, Inc., 811 F.3d 1314, 1324-25 (Fed. Cir. 2016) (noting that components such an "interface," "network," and "database" are generic computer components that do not satisfy the inventive concept requirement); Internet Patents Corp. v. Active Network, 20 Appeal2018-006242 Application 13/619,151 Inc., 790 F.3d 1343, 1343--49 (Fed. Cir. 2015) (holding ineligible claims reciting providing an intelligent user interface to an online application comprising (1) furnishing plural hyperlinked icons on a displayed web page, and (2) displaying a dynamically generated online application form set responsive to activating an icon as directed to the abstract idea of retaining information in navigating online forms); buySAFE 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."). Accord Spec. 20, 68-70 (describing generic computer components used to implement the invention); Non-Final Act. 11; Ans. 4 ( concluding that the claims' generic computer functions do not add significantly more than the abstract idea). Appellant's contention that the Examiner allegedly did not comply with the evidentiary requirements under the April 2018 US PTO memorandum mandating these requirements for ineligibility rejections after Berkheimer v. HP, Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018) (Reply Br. 4-- 7) is unavailing. To be sure, the Examiner must show-with supporting facts-that certain claim elements are well-understood, routine, and conventional where such a finding is made. See Berkheimer, 881 F.3d at 1369 (noting that whether something is well-understood, routine, and conventional to a skilled artisan at the time of the invention is a factual determination). In light of this factual determination, the USPTO issued a memorandum requiring that Examiners support a finding that an additional element of a claim is well-understood, routine, and conventional. Robert W. Bahr, Changes in Examination Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP, 21 Appeal2018-006242 Application 13/619,151 Inc.), USPTO, Apr. 19, 2018 ("Berkheimer Memo."), at 2-3 (noting that the Berkheimer decision clarifies the inquiry whether an additional element ( or combination of additional elements) represents well-understood, routine, and conventional activity). As noted previously, the recited ( 1) computer system; (2) interface; (3) display; (4) processor cooperatively operable with the interface, and that loads and executes instructions; and (5) generating a claim chart without manual intervention are the only additional recited elements whose generic computing functionality is well-understood, routine, and conventional. Therefore, leaving aside the fact that many of the recited limitations reflect standard examination procedure for patent claim analysis as noted previously, to the extent that Appellant contends that the Examiner failed to provide evidence that all recited elements are well-understood, routine, and conventional (see Reply Br. 4--7), such an argument is not commensurate with the more limited scope of the Examiner's finding in this regard, namely that the elements other than the abstract idea, namely the additional computer-based elements whose generic computing functionality is well- understood, routine, and conventional. See Non-Final Act. 11-12. As noted previously, there is ample evidence of this generic computing functionality in not only the case law cited previously, but also Appellant's own Specification. See, e.g., Fair Warning, 839 F.3d at 1096 (noting that using generic computing components like a microprocessor or user interface do not transform an otherwise abstract idea into eligible subject matter); Internet Patents, 790 F.3d at 1343--49 (holding ineligible claims reciting providing an intelligent user interface to an online application comprising (1) furnishing plural hyperlinked icons on a 22 Appeal2018-006242 Application 13/619,151 displayed web page, and (2) displaying a dynamically generated online application form set responsive to activating an icon as directed to the abstract idea of retaining information in navigating online forms); Spec. 20, 68-70 ( describing generic computer components used to implement the invention). Therefore, the additional recited elements do not add significantly more than the abstract idea to render the claim patent-eligible. We reach a similar conclusion regarding the recited insignificant extra-solution activity, namely causing the display to visually provide the claim chart . . . . That the display can visually provide the claim chart does not mean that this function is performed in an unconventional way to add significantly more than the abstract idea to provide an inventive concept under Alice/Mayo step two. See Guidance, 84 Fed. Reg. at 56. Given this limitation's (1) high level of generality, and (2) use of generic computing components whose functionality is well-understood, routine, and conventional for the reasons noted previously, the recited extra-solution activity does not add significantly more than the abstract idea to provide an inventive concept under Alice/Mayo step two. To the extent Appellant contends otherwise (see App. Br. 15-16, 26-28), we disagree. In conclusion, the additional recited elements----considered individually and as an ordered combination----do not add significantly more than the abstract idea to provide an inventive concept under Alice/Mayo step two. See Alice, 573 U.S. at 221; see also Guidance, 84 Fed. Reg. at 56. Therefore, we are not persuaded that the Examiner erred in rejecting claim 21 and claims 22--44 not argued separately with particularity. 23 Appeal2018-006242 Application 13/619,151 Claims 45-47: Alice/Mayo Step One We also sustain the Examiner's rejection of dependent claim 45 reciting, in pertinent part, preliminarily determining a plurality of patent documents, including the different patent document, which are included in a project based on a commonality data assigned to each of the patent documents; and linking the project to the one patent document for the patent claim analysis as a target for legal analysis of the one patent document; wherein the processor executes instructions to perform, responsive to the linking of the project to the one patent document for the patent claim analysis, with respect to the plurality of patent documents preliminarily determined to be included in the project including the different patent document, the breaking down, identifying, searching, generating, and causing limitations. According to Appellant, the claimed invention provides an additional technical solution that enables a user to tie a group of documents together as a target for analysis-a problem that is ostensibly prevalent for large data sets. See App. Br. 29-32 ( citing Spec. 3). We find this argument unavailing. Apart from the recited processor and other additional elements of independent claim 21 noted previously, every recited function of claim 45 can be performed entirely mentally by merely ( 1) thinking about which patents are associated with a particular project based on some "commonality" data; (2) cognitively associating the project to a particular patent document as a target for the patent claim analysis; and (3) performing the recited breaking down, identifying, searching, generating, and causing limitations with respect to the documents in the project-functions involving mere observation and logical reasoning, 24 Appeal2018-006242 Application 13/619,151 and that can be performed entirely mentally or using pen and paper as noted previously. Cf CyberSource, 654 F.3d at 1372 (noting that limitation reciting obtaining information about transactions that have used an Internet address identified with a credit card transaction can be performed by a human who simply reads records of Internet credit card transactions from a pre-existing database); see also id. (noting that a recited step that utilized a map of credit card numbers to determine the validity of a credit card transaction could be performed entirely mentally by merely using logical reasoning to identify a likely instance of fraud by merely observing that numerous transactions using different credit cards all originated from the same IP address). These limitations also organize human activity, at least to the extent that they not only organize information, but also comport with standard examination procedure for searching prior art and determining patentability and, therefore, pertain to following associated rules or instructions outlined in the Fifth Edition of the MPEP noted above. See Guidance, 84 Fed. Reg. at 52. Therefore, apart from the previously-noted additional elements, the limitations of claim 45 fall squarely within the mental processes and methods of organizing human activity categories of the agency's guidelines and, therefore, recite an abstract idea. See Guidance, 84 Fed. Reg. at 52 (listing exemplary (1) mental processes including observation and evaluation, and (2) methods of organizing human activity, including personal interactions and following rules or instructions). For the foregoing reasons and given the recited limitations' high level of generality, we are not persuaded that the claimed invention improves the computer or its components' functionality or efficiency, or otherwise changes the way those devices function. Even assuming, without deciding, 25 Appeal2018-006242 Application 13/619,151 that the claimed invention can perform the recited functions faster or more efficiently than doing so manually, any speed increases or efficiencies come from the capabilities of the generic computer components-not the recited process itself. See FairWarning, 839 F.3d at 1095 ("[T]he fact that the required calculations could be performed more efficiently via a computer does not materially alter the patent eligibility of the claimed subject matter."). Therefore, we do not find that the claim recites additional elements improving (1) the computer itself, or (2) another technology or technical field. See Guidance, 84 Fed. Reg. at 55 (citing MPEP § 2106.05(a)). Rather, the above-noted additional elements merely (1) apply the abstract idea on a computer; (2) include instructions to implement the abstract idea on a computer; or (3) use the computer as a tool to perform the abstract idea. See Guidance, 84 Fed. Reg. at 55 (citing MPEP § 2106.05(±)). We, therefore, agree with the Examiner that claim 45 is directed to an abstract idea. Claims 45--47: Alice/Mayo Step Two Turning to Alice/Mayo step two, claim 45's additional recited elements, namely the recited (1) computer system; (2) interface; (3) display; (4) processor cooperatively operable with the interface, and that loads and executes instructions; and ( 5) generating a claim chart without manual intervention----considered individually and as an ordered combination----do not provide an inventive concept such that these additional elements amount to significantly more than the abstract idea. See Alice, 573 U.S. at 221; see also Guidance, 84 Fed. Reg. at 56. As noted above, the claimed invention 26 Appeal2018-006242 Application 13/619,151 merely uses generic computing components to implement the recited abstract idea. To the extent Appellant contends that the recited limitations, including those detailed above in connection with Alice step one, add significantly more than the abstract idea to provide an inventive concept under Alice/Mayo step two (see App. Br. 32-33; Reply Br. 8-9), these limitations are not additional elements beyond the abstract idea, but rather are directed to the abstract idea as noted previously. See Guidance, 84 Fed. Reg. at 56 (instructing that additional recited elements should be evaluated in Alice/Mayo step two to determine whether they (1) add specific limitations that are not well-understood, routine, and conventional in the field, or (2) simply append well-understood, routine, and conventional activities previously known to the industry (citing MPEP § 2106.05(d)). Rather, the recited (1) computer system; (2) interface; (3) display; ( 4) processor cooperatively operable with the interface, and that loads and executes instructions; and ( 5) generating a claim chart without manual intervention are the only additional recited elements whose generic computing functionality is well-understood, routine, and conventional as noted previously. In conclusion, the additional recited elements----considered individually and as an ordered combination----do not add significantly more than the abstract idea to provide an inventive concept under Alice/Mayo step two. See Alice, 573 U.S. at 221; see also Guidance, 84 Fed. Reg. at 56. Therefore, we are not persuaded that the Examiner erred in rejecting claim 45 and claims 46 and 4 7 not argued separately with particularity. 27 Appeal2018-006242 Application 13/619,151 THE OBVIOUSNESS REJECTION OVER RIVETTE '679 AND STOBBS The Examiner finds that Rivette '679 discloses many recited elements of claim 21 including (1) identifying at least one keyword; (2) searching a patent's Specification for the identified keyword to determine a relevant section that provides disclosure for each claim element; and ( 4) generating and displaying the recited claim chart. Non-Final Act. 14--21. Although the Examiner acknowledges that Rivette '679 does not break down a patent claim into legally cognizable claim elements, the Examiner cites Stobbs for teaching this feature in concluding that the claim would have been obvious. Non-Final Act. 21-22. Appellant argues that the Examiner's interpretation of the recited "claim elements" and "claim chart" is unreasonable, and the cited prior art does not teach or suggest these limitations under their broadest reasonable interpretation. App. Br. 36-39. Appellant adds that the cited prior art also does not teach or suggest, among other things, ( 1) identifying for each claim element, at least one keyword appearing therein, and (2) generating a claim chart that quotes each claim element and refers to a preliminarily determined relevant section of the different patent document that provides disclosure for each claim element. App. Br. 36-53; Reply Br. 10-14. ISSUE Under§ 103, has the Examiner erred in rejecting claim 21 by finding that Rivette '679 and Stobbs collectively would have taught or suggested (1) identifying, for each claim element, at least one keyword which appears therein, and (2) generating and displaying a claim chart that quotes each claim element and refers to a preliminarily determined relevant section of 28 Appeal2018-006242 Application 13/619,151 the different patent document that provides disclosure for each claim element? ANALYSIS As noted above, a key aspect of this dispute is whether the prior art teaches or suggests identifying, for each legally cognizable claim element of a patent claim, at least one keyword appearing therein. Our emphasis underscores that every recited element of a patent claim must have at least one identified keyword that appears in that element to satisfy this limitation. Despite this "all elements" requirement, the Examiner's rejection is not a model of clarity in this regard. Although the Examiner finds that Rivette '679 teaches "identifying at least one keyword which appears therein," the Examiner omits the critical requirement that this identification is for each claim element, thus suggesting that Rivette '679 lacks that crucial "all elements" requirement. See Non-Final Act. 17-18. To be sure, the Examiner cites Stobbs for teaching breaking down a patent claim into legally cognizable claim elements (Non-Final Act. 21; Ans. 19), but it is still unclear how a keyword is generated for each claim element under the Examiner's proposed combination, let alone generating a claim chart (1) quoting each of those elements, and (2) referring to the relevant preliminarily determined patent document sectionfor each element as claimed. Accord App. Br. 42--44 (noting this deficiency). That the Examiner fails to respond to Appellant's arguments in this regard in the Answer only further undermines the propriety of the Examiner's findings and conclusions in this regard. For this reason alone, the Examiner's obviousness rejection is problematic on this record. 29 Appeal2018-006242 Application 13/619,151 The Examiner's rejection is problematic for yet another reason. In the rejection, the Examiner refers to (1) Rivette '679's word list dialog box 310 in Figure 24, and (2) Search Results box 320 in Figure 26 in connection with the recited claim chart generation limitation. See Non-Final Act. 19. In the Answer, the Examiner refers to Rivette '679's generating a "report (charts)" indicating relevant sections of various disclosures that are said to relate to specific claim language, citing various passages of Rivette '679 without further explanation. See Ans. 19-21. Our emphasis on the Examiner's term "report (charts)" underscores the Examiner's apparent mapping of a "report" in Rivette '679 to the recited claim chart. The Examiner, however, does not explain how this apparent construction of the term "claim chart" comports with the Board's construction of the term in a related proceeding, namely Lee' 14398-a construction that, notably, is the "law of the case" in this related proceeding and, therefore, binding here. See MPEP § 706.07(h)(XI)(A) (noting that the Board's decision becomes the "law of the case" in that it is controlling on the application under appeal and later related applications). As another panel of this Board noted in Lee' 1439: A "claim chart" is understood by a person of ordinary skill in the art to be a table having a column indicating the elements of one or more claims, and one or more additional columns indicating corresponding information regarding the claim elements, for example, the features of a product or service, or prior art, that correspond to those claim elements. 8 This opinion is cited in full in the "Related Appeals" section of this opm10n. 30 Appeal2018-006242 Application 13/619,151 Lee' 1439, at 6. Accord App. Br. 38; Reply Br. 11-12 (noting this construction). To the extent that the Examiner finds that Rivette '679's relied-upon functionality satisfies this construction, we cannot say given the Examiner's silence in this regard. That the Examiner did not acknowledge this binding construction----despite Appellant's explicit reference to it on page 38 of the Appeal Brief----only further undermines the propriety of the Examiner's rejection. Therefore, we are persuaded that the Examiner erred in rejecting (1) independent claim 21; (2) independent claims 29 and 37 which recite commensurate limitations; and (3) dependent claims 22, 23, 26-28, 38-31, 34--36, 38, 39, and 42--47 for similar reasons. Because this issue is dispositive regarding our reversing the Examiner's obviousness rejection of these claims, we need not address Appellant's other associated arguments. THE OTHER OBVIOUSNESS REJECTION Because the Examiner has not shown that the cited prior art cures the deficiencies noted above regarding the rejection of the independent claims, we will not sustain the obviousness rejection of dependent claims 24, 25, 32, 33, 40, and 41 (Non-Final Act. 26-30) for similar reasons. NEW GROUND OF REJECTION We newly reject independent claims 21, 29, and 37 under 35 U.S.C. § 103 as obvious over Rivette '679. First, it is undisputed that Rivette '679 discloses the recited interface and processor cooperatively operable with the interface as claimed. Although Rivette '679 does not state explicitly that (1) a patent claim can be 31 Appeal2018-006242 Application 13/619,151 broken down into legally cognizable claim elements, and (2) at least one keyword can be identified for each claim element, these functions would have nevertheless been obvious to ordinarily skilled artisans, particularly since breaking down patent claims into legally cognizable elements is fundamental to claims analysis-a key aspect of patentability determinations, including those performed by Patent Examiners at the USPTO. See MPEP 5th ed.§ 904 ("The examiner, after having obtained a thorough understanding of the invention disclosed and claimed in the application, then searches the prior art as disclosed in patents and other printed documents.") (emphases added); see also id. at§ 904.02 (instructing examiners to conduct a search commensurate with the limitations appearing in the most detailed claims in the case). Notably, such an element-by-element analysis can occur even for claims with just one claim element. For example, claim 1 of U.S. Patent 3,156,523 consists of only two words: "Element 95." Therefore, this claim has only one legally cognizable element, namely "Element 95," with two keywords appearing therein, namely "Element" and "95." To determine what patents disclose this element, these keywords could be searched either individually or together (e.g., as the phrase "Element 95") using, for example, Rivette '679's Search Library dialog box 302 in Figure 23 to find all occurrences of the search string in other patents, as was done for the 23 patents containing the search term "data" in Figure 26. See Rivette '679, col. 30, 1. 10- col. 32, 1. 57. By searching the full text of patents for the string "Element 95" and its two constituent keywords, at least one relevant section of a patent disclosing this claim element would be determined, namely at least the 32 Appeal2018-006242 Application 13/619,151 patent's specification and abstract containing the searched-for text. See Rivette '679, col. 32, 11. 42--45 (noting that users can navigate to each "hit" of the search term in the patent text by activating the right arrow button 3 51 ). Such sections containing the searched-for text could also include particular columns of the patent identified by number. See id. col. 32, 11. 45- 58 ( discussing navigating and displaying patents by column number). Performing such a search to determine whether patents disclose a claim element, such as "Element 95" in the example above, would have been obvious to, among other things, determine patentability of a claimed invention based on that disclosure ( or lack thereof). See MPEP 5th ed. § 904 ("The examiner, after having obtained a thorough understanding of the invention disclosed and claimed in the application, then searches the prior art as disclosed in patents and other printed documents.") ( emphases added); see also id. at§ 904.02 (instructing examiners to conduct a search commensurate with the limitations appearing in the most detailed claims in the case). Using a computer-based text search tool to achieve that end, such as that disclosed in Rivette '679's Figures 26 and 28, would have likewise have been obvious as part of that patentability determination to, among other things, identify patents containing a claim element or its constituent keywords, such as "Element 95," quickly and easily by merely entering the keywords----or the claim element itself-in the search tool and viewing the results. Such an automated tool would preclude the need to manually scan through the entire text of each patent to identify the occurrences of the claim element or its keywords, and the associated section of the patent ( e.g., Specification, Abstract, etc.) containing those occurrences. 33 Appeal2018-006242 Application 13/619,151 Summarizing the results of this search by organizing the results in a table, such as a claim chart, would have likewise been obvious to map the claim elements to the corresponding prior art disclosure. As another panel of this Board noted in a related appeal, a "claim chart" is a table having a column indicating the elements of one or more claims, and one or more additional columns indicating corresponding information regarding the claim elements including prior art, that corresponds to those claim elements. Lee '1439, at 6. As with searching prior art based on recited claim elements, (1) mapping individual elements of a claim to particular disclosure in searched- for patents, and (2) presenting that information in a claim chart is standard examination procedure. See MPEP § 2262 ( allowing Examiners to incorporate reexamination request claim charts in their Office Actions). Such tables merely organize data in rows and columns, such that the intersection of a particular column and row identifies a corresponding cell with information pertaining to both the associated column and row, as in a spreadsheet. See, e.g., Enfzsh, 822 F.3d at 1340 (discussing data representing rows and columns in a table in Microsoft Excel 5.0--a version of a well-known spreadsheet program that was in public use at latest by early 1994). For example, if the sole claim element "Element 95" of claim 1 of U.S. Patent 3,156,523 were searched for (along with its two keywords) using Rivette '679's above-noted search functionality, and the search yielded two occurrences, the results for that claim element could be summarized as follows designating the disclosing patents' respective relevant sections: 34 Appeal2018-006242 Application 13/619,151 Claim Element "Element 95" "Element 95" Relevant Section Disclosing Claim Element U.S. Patent X,XXX,XXX9 (Specification) U.S. Patent Y,YYY,YYY (Abstract) Table 1: Exemplary claim chart summarizing search results Another possible example summarizing these search results with column- based section designations is shown below: Relevant Section Disclosing Claim Claim Element Element "Element 95" U.S. Patent X,XXX,XXX (col.#) "Element 95" U.S. Patent Y,YYY,YYY (col.#) Table 2: Exemplary claim chart summarizing search results with column designations 9 In these hypothetical examples, we omit actual patent numbers, but rather designate patent numbers with letters for illustrative purposes only. We likewise designate column numbers with a number symbol(#). 35 Appeal2018-006242 Application 13/619,151 Not only could a searcher, such as a Patent Examiner, summarize these search results in a table with pen and paper to merely organize the data in rows and columns as shown above, but the search results could also be entered into a spreadsheet program, such as Microsoft Excel, to organize the data similarly and display the results on a computer automatically. See, e.g., Enfish, 822 F.3d at 1340 (discussing data representing rows and columns in a table in Microsoft Excel 5.0). That the USPTO routinely encouraged using claim charts to map particular recited claim elements to corresponding disclosure in prior art patents only underscores that generating claim charts to summarize similar patent search results would have been obvious. See MPEP 5th ed. § 2214 (listing exemplary reexamination request showing unpatentability of claim 3 of the Smith patent, where ( 1) each claim element is listed in the first column and is assigned a different row, and (2) corresponding disclosure in a prior art patent to Berridge meets each respective element in a second column); see also MPEP § 2262 (allowing Examiners to incorporate reexamination request claim charts in their Office Actions). Such an enhancement merely predictably uses prior art elements according to their established functions-an obvious improvement. KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,417 (2007). Notably, a spreadsheet program, such as Microsoft Excel, would generate a spreadsheet-based claim chart automatically from the associated data by, among other things, formatting and displaying the chart in a particular way, printing the chart, etc. Even assuming, without deciding, that some manual intervention would be involved to enter the data on which the chart is based, the program itself would nonetheless generate the chart automatically based on that data. That Appellant's claim 21 does not specify 36 Appeal2018-006242 Application 13/619,151 how the claim chart is generated, apart from merely lacking manual intervention, only underscores the breadth of this limitation and its high level of generality. Nevertheless, even if generating the recited claim chart using a spreadsheet program, such as Microsoft Excel, required some manual intervention (which it does not), it is well settled that merely replacing manual activity with automatic means to accomplish the same result is an obvious improvement. See In re Venner, 262 F.2d 91, 95 (CCPA 1958). And even if some manual steps were required to generate a claim chart via this technique, that is not dispositive here, for the term "without manual intervention" does not preclude at least some manual steps, so long as other steps are automatic. See CollegeNet, Inc. v. Apply Yourself, Inc., 418 F.3d 1225, 1235 (Fed. Cir. 2005). Nor has Appellant shown that performing these functions automatically in lieu of at least some manual interaction would have been uniquely challenging or otherwise beyond the level of ordinarily skilled artisans. See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161---62 (Fed. Cir. 2007) ("Applying modem electronics to older mechanical devices has been commonplace in recent years."). To the extent Appellant contends otherwise, there is no persuasive evidence on this record to substantiate such a contention. So even assuming, without deciding, that generating claim charts involved at least some manual intervention, such a fact is not dispositive here, particularly in view of modem electronic updates to older manual techniques that are consistent with similar electronic updates noted by the court in Leapfrog. For the foregoing reasons, then, claim 21 would have obvious over Rivette '679 alone. We reach the same conclusion regarding independent 37 Appeal2018-006242 Application 13/619,151 claims 29 and 3 7 that recite commensurate limitations. Although we decline to reject all claims here, no inference should be drawn from our declining to exercise our discretion in that regard. See MPEP § 1213.02 ("Since the exercise of authority under 37 C.F.R. 4I.50(b) is discretionary, no inference should be drawn from a failure to exercise that discretion."). Rather, we merely leave the patentability determination of the remaining claims to the Examiner. CONCLUSION The Examiner did not err in rejecting claims 21--47 under§ 101, but erred in rejecting those claims under§ 103. We newly reject claims 21, 29, and 37 under§ 103. DECISION We affirm the Examiner's decision to reject claims 21--47. Because the rejection of each appealed claim is affirmed on at least one of the grounds specified in the Office Action from which the appeal was taken, the Examiner's decision to reject claims 21--47 is affirmed. See 37 C.F.R. § 4I.50(a)(l). This decision contains a new ground of rejection pursuant to 37 C.F.R. § 4I.50(b). Section 4I.50(b) provides "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." Section 41.50(b) also provides: When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise one of the following 38 Appeal2018-006242 Application 13/619,151 two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure§ 1214.01. AFFIRMED 37 C.F.R. § 4I.50(b) 39 Copy with citationCopy as parenthetical citation