Ex Parte Schulz et al

Patent Trials and Appeals BoardMar 28, 2019

13715167 - (D) (P.T.A.B. Mar. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/715, 167 12/14/2012 106592 7590 04/01/2019 Klarquist Sparkman, LLP (SAP) 121 SW Salmon Street, Suite 1600 Portland, OR 97204 FIRST NAMED INVENTOR Thomas Schulz 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. 8880-100974-01 9457 EXAMINER ERB,NATHAN ART UNIT PAPER NUMBER 3628 NOTIFICATION DATE DELIVERY MODE 04/01/2019 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): docketing@klarquist.com AS CChair@klarquis t. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte THOMAS SCHULZ, KATHRIN DYCKERHOFF, THOMAS ENGELMANN, and CHRISTOPH ECKERT Appeal2018-001787 Application 13/715, 167 Technology Center 3600 Before JOHN A. JEFFERY, JOHN P. PINKERTON, and BETH Z. SHAW, Administrative Patent Judges. JEFFERY, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. Â§ 134(a) from the Examiner's decision to reject claims 1-20. We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm. STATEMENT OF THE CASE Appellants' invention optimizes routing freight or other objects by altering or editing a selected shipping path based on certain criteria. See generally Abstract;~~ 1, 50--54. Claim 1 is illustrative: 1 Appellants identify the real party in interest as SAP SE. App. Br. 2. Appeal2018-001787 Application 13/715, 167 1. A method comprising: receiving, by a processor, a request to transport a current freight unit from a current source location to a current destination location; selecting, by a processor, a prior shipment path based upon a similarity, as defined by a set of predefined criteria, between the current freight unit and a prior freight unit, the prior shipment path being selected from a stored previous optimization associated with a shipment path used to transport the prior freight unit, the prior shipment path including at least one intermediate location between the current source location and the current destination location and two or more sub-paths connecting the intermediate location, the two or more sub-paths having an associated transportation type by which the current freight unit is to be transported; initializing, by a processor, a shipment path improver with the prior shipment path, the shipment path improver being communicatively coupled to a route information storage including a plurality of route data; and generating, by a processor, via the shipment path improver, a current shipment path for the current freight unit from the current source location to the current destination location, wherein the shipment path improver is configured to iteratively change one of the two or more sub-paths by altering one of the at least one intermediate location, the two or more sub-paths or the associated transportation type during each iteration to generate the current shipment path based upon the prior shipment path and the plurality of route data including a carrier capacity and a carrier fee, and the current shipment path becomes the prior shipment path for a next iteration of the shipment path improver. 2 Appeal2018-001787 Application 13/715, 167 THE REJECTION The Examiner rejected claims 1-20 under 35 U.S.C. Â§ 101 as directed to ineligible subject matter. Final Act. 3--4. 2 CONTENTIONS The Examiner determines that the claims are directed to an abstract idea, namely generating a shipment path, which is said to optimize planning a human activity. Final Act. 3. The Examiner adds that the claims do not include elements that add significantly more than the abstract idea, but merely recite conventional generic computer functions. Id. 3--4. Based on these determinations, the Examiner concludes that the claims are ineligible under Â§ 101. Id. Appellants argue that the claimed invention is not directed to an abstract idea. App. Br. 5-10; Reply Br. 2-5. According to Appellants, the Examiner's rejection is not only based on unsupported opinion and conclusory statements, it also oversimplifies and ignores various recited limitations that are said to improve computer-related technology. App. Br. 5-10; Reply Br. 3--4. Appellants add that not only does the claimed invention not preempt all shipment path generation applications, it also adds an inventive concept because the claims were not rejected over prior art. See App. Br. 10-11; Reply Br. 4--5. 2 Throughout this opinion, we refer to (1) the Final Rejection mailed January 13, 2017 ("Final Act."); (2) the Appeal Brief filed June 6, 2017 ("App. Br."); (3) the Examiner's Answer mailed October 19, 2017 ("Ans."); and (4) the Reply Brief filed December 7, 2017 ("Reply Br."). 3 Appeal2018-001787 Application 13/715, 167 ISSUE Under Â§ 101, has the Examiner erred in rejecting claims 1-2 0 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. Â§ 101. However, the Supreme Court has long interpreted 35 U.S.C. Â§ 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 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 4 Appeal2018-001787 Application 13/715, 167 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 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 5 Appeal2018-001787 Application 13/715, 167 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 ofÂ§ 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) Â§Â§ 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: (3) adds a specific limitation beyond the judicial exception that is not well-understood, routine, and conventional in the field (see MPEP Â§ 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. 6 Appeal2018-001787 Application 13/715, 167 See Guidance, 84 Fed. Reg. at 56. ANALYSIS Claims 1-20: Alice/Mayo Step One Independent claim 1 recites a method where a processor performs four main steps. In the first two steps, the processor (1) receives a request to transport a current ''freight unit"3 from a source location to a destination location; and (2) selects a prior shipment path based on a similarity between the current freight unit and prior freight unit, where the path is selected from a stored previous optimization associated with a shipment path used to transport the prior freight unit, where this path includes (a) at least one intermediate location between the current source and destination locations, and (b) two or more sub-paths connecting the intermediate location and having an associated transportation type. 4 In the last two steps, the processor (3) initializes a "shipment path improver" with the prior shipment path, where the "improver" is communicatively coupled to a route information storage including route data, and (4) generates, via the improver, a current shipment path for the current freight unit from to the current source location to the current destination location. Regarding step (4), the claims add that the improver is configured to change one sub-path iteratively by altering one of (a) an 3 According to the Specification's paragraph 15, a "freight unit" includes any object or thing that is to be shipped, transported, or moved from a source or initial location to a destination location. 4 Unless otherwise indicated, we italicize text associated with various recited limitations for emphasis and clarity. 7 Appeal2018-001787 Application 13/715, 167 intermediate location, (b) the sub-paths, or ( c) the associated transportation type during each iteration to generate the current shipment path based on (i) the prior shipment path and (ii) route data including a carrier capacity and fee. The claim adds that the current shipment path becomes the prior shipment path for the improver's next iteration. As the Specification explains, the invention optimizes routing freight or other objects by, among other things, using a "shipment path improver" to generate an improved shipping path by altering or editing an initial shipping path based on certain criteria-alterations that can occur iteratively. See Spec. ,r,r 1, 50-54. For example, the improver can replace certain segments of the initial shipment path dictating truck transport from ( 1) point "C" to point "D," and (2) point "D" to point "E," with a new segment dictating plane transport from point "C" to "E." Spec. ,r 53. An example of this rerouting is shown in Appellants' Figure 2, where a freight unit is transported from Lisbon 202 to Madrid 203 by train, and then from Madrid to Barcelona by 204 by truck, and then from Barcelona to Instanbul 208 by boat. See Spec. ,r,r 58---60. In Figure 3, the freight unit is transported to Barcelona the same way as in Figure 2, but is instead flown from Barcelona to Instabul via Munich 207. See id. ,r,r 61---63. Figure 4 shows an optimization of this shipment path, where the freight unit is again transported by train to Madrid, but then flown to Instanbul via Munich. See id. ,r,r 64---66. Turning to claim 1, we first note that the claim recites a method and, therefore, falls within the process category ofÂ§ 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. 8 Appeal2018-001787 Application 13/715, 167 at 21 7. To this end, we must determine whether ( 1) the claim 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 1 is directed to an abstract idea, namely generating a shipment path, which is said to optimize planning a human activity. Final Act. 3. 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 concepts5; (b) certain methods of organizing human activity6; or ( c) mental processes. 7 Here, apart from the recited (1) "processor"; (2) "stored previous optimization"; (3) "communicatively coupl[ing] the improver to route information storage including a plurality of route data"; and (4) "shipment 5 Mathematical concepts include mathematical relationships, mathematical formulas or equations, and mathematical calculations. See Guidance, 84 Fed. Reg. at 52. 6 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. 7 Mental processes are concepts performed in the human mind including an observation, evaluation, judgment, or opinion. See Guidance, 84 Fed. Reg. at 52. 9 Appeal2018-001787 Application 13/715, 167 path improver," every limitation of claim 1 recites an abstract idea, namely organizing human activity, by changing a planned shipment path-including its sub-paths, intermediate locations, and transportation types-based on certain criteria. Because this criteria-based shipment path change involves commercial interactions, following rules or instructions, and fundamental economic practices, the recited limitations fit squarely within the human activity organization category of the agency's guidelines. See Guidance, 84 Fed. Reg. at 52 (listing exemplary methods of organizing human activity, including fundamental economic practices, commercial interactions, and following rules or instructions). That is, apart from using a processor and storage, the recited steps could be performed solely by a human that determines the best way to transport freight to a destination according to certain criteria. Indeed, such iterative shipment path improvements have long been a part of commerce, including rerouting ships sailing between American ports on the Atlantic and Pacific oceans through the Panama Canal instead of around South America-a rerouting that considerably reduced the time and distance required to transport goods between those ports. See generally Anderson v. Pacific Coast S.S. Co., 225 U.S. 187, 192 ( 1912) ( discussing steam vessel traffic using these alternate routes between American ports). In addition to falling in the certain methods of organizing human activity category under the agency's guidelines, apart from using a processor and storage, the recited steps also fall in the mental processes category as well. See Guidance, 84 Fed. Reg. at 52 (listing exemplary mental processes including observations, evaluations, and judgments). That is, apart from using a processor and storage, the recited steps could also be performed 10 Appeal2018-001787 Application 13/715, 167 entirely mentally by merely remembering a prior shipment path, and improving that path by changing its aspects based on certain criteria, and repeating that mental process. Therefore, in addition to organizing human activity, the recited steps, apart from their performance via a processor and storage, also fall within the mental processes category of the agency's guidelines. See Guidance, 84 Fed. Reg. at 52 (listing exemplary mental processes including observations, evaluations, and judgments); see also CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011 ). That the recited optimization does not yield an ideal or perfect result as acknowledged in the Specification's paragraph 20 only underscores that such improvements over former results can be obtained by a human planner, albeit perhaps imperfectly. Although the claim recites an abstract idea based on these methods of organizing human activity and mental processes, 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. Here, the recited (1) "processor"; (2) "stored previous optimization"; (3) "communicatively coupl[ing] the improver to route information storage including a plurality of route data"; and (4) "shipment path improver" are the only recited elements beyond the abstract idea, but those additional 11 Appeal2018-001787 Application 13/715, 167 elements do not integrate the abstract idea into a practical application when reading claim 1 as a whole. 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 Enfzsh LLC v. Microsoft Corporation, 822 F.3d 1327 (Fed. Cir. 2016), despite Appellants' arguments to the contrary (App. Br. 7-10). The claimed self-referential table in Enfzsh was a specific type of data structure designed to improve the way a computer stores and retrieves data in memory. Enfzsh, 822 F.3d at 1339. To the extent Appellants contend 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. 7-10), there is no persuasive evidence on this record to substantiate such a contention. To the extent that Appellants contend the claimed invention is rooted in technology because it is ostensibly directed to a technical solution (see App. Br. 9-10), we disagree. Even assuming, without deciding, that claimed invention can change a planned shipment path, including its sub-paths, intermediate locations, and transportation types, based on certain criteria faster than doing so manually, any speed increase comes from the capabilities of the generic computer components-not the recited process itself. See FairWarning 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, 12 Appeal2018-001787 Application 13/715, 167 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 1 is not on an improvement in computer processors as tools, but on certain independently abstract ideas that use generic computing components as tools. See FairWarning, 839 F.3d at 1095 ( citations and quotation marks omitted). The court's decision in Return Mail, Inc. v. United States Postal Service, 868 F.3d 1350 (Fed. Cir. 2017) is also relevant here. There, the court held ineligible a claim reciting a method for processing undeliverable mail items including, among other things, (1) receiving items from a sender, where each item included a written addressee and encoded data indicating whether the sender wanted a corrected address to be provided for the addressee; (2) identifying items returned after mailing as undeliverable; (3) decoding the encoded data incorporated in at least one of the undeliverable mail items; ( 4) creating output data that included a customer number of the sender and at least a portion of the decoded data; and ( 5) determining the sender wanted a corrected address provided for intended recipients based on the decoded data. Return Mail, 868 F.3d at 1367. The claim also recited that if the sender wanted to provide a corrected address, information was electronically transferred to the sender for the identified intended recipients to enable the sender to update the sender's mailing address files. Id. But if the sender did not want to provide a corrected address, the claim added that 13 Appeal2018-001787 Application 13/715, 167 return mail data records were posted on a network to enable the sender to access the records. Id. In reaching its ineligibility conclusion, the court in Return Mail held that (1) receiving mail items from a sender; (2) identifying undeliverable items; (3) decoding the undeliverable items' encoded data; and (4) creating output data that included, among other things, at least part of the encoded data were directed to an abstract idea. Id. at 1368. Notably, the court emphasized that encoding and deciding mail recipient information- including whether the sender wants a corrected address-are processes that can, and have been, performed in the human mind. Id. Ultimately, the court held that the claims simply recite that existing business practice with the benefit of generic computing technology. Id. The facts in Return Mail are analogous here, at least to the extent that the invention in that case involved improving a shipment path of undeliverable items by enabling the sender to correct the mailing address for the intended recipients. See id. Appellants' reliance on DDR Holdings, LLC v. Hotels.Com, L.P., 773 F.3d 1245 (Fed. Cir. 2014) (App. Br. 10) is unavailing. There, instead of a computer network operating in its normal, expected manner by sending a website visitor to a third-party website apparently connected with a clicked advertisement, the claimed invention in DDR generated and directed the visitor to a hybrid page that presented ( 1) product information from the third party, and (2) visual "look and feel" elements from the host website. DDR, 773 F.3d at 1258-59. Given this particular Internet-based solution, the court held that the claimed invention did not merely use the Internet to perform a business practice known from the pre-Internet world, but rather was 14 Appeal2018-001787 Application 13/715, 167 necessarily rooted in computer technology to overcome a problem specifically arising in computer networks. Id. at 1257. That is not the case here. As noted previously, Appellants' claimed invention, in essence, organizes human activity by changing a planned shipment path-including its sub-paths, intermediate locations, and transportation types-based on certain criteria. Despite Appellants' arguments to the contrary (see App. Br. 7-10), the claimed invention here is not necessarily rooted in computer technology in the sense contemplated by DDR where the claimed invention solved a challenge particular to the Internet. Although the Appellants' invention uses various computer-based components, including the recited (1) processor; (2) stored previous optimization; (3) communicatively coupling the improver to route information storage including route data; and ( 4) shipment path improver, the claimed invention does not solve a challenge particular to the computer or the network used to implement this functionality. Appellants' reliance on McRO, Inc. v. Bandai Namco Games America, Inc., 837 F.3d 1299 (Fed. Cir. 2016) (App. Br. 10) 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 15 Appeal2018-001787 Application 13/715, 167 invention here merely uses generic computing components to change a planned shipment path, including its sub-paths, intermediate locations, and transportation types, based on certain criteria. This generic computer implementation is not only directed to fundamental human activity organization and mental processes, but also does not improve a display mechanism as was the case in McRO. See SAP Am. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018) (distinguishing McRO). Although the claimed invention requires computer components, it is the incorporation of those components-not a claimed rule-that purportedly improves the existing process. Cf Fair Warning IP, LLC v. Iatric Systems, Inc., 839 F.3d 1089, 1095 (Fed. Cir. 2016). In short, the claimed invention does not focus on improving computers as tools, but rather certain independently abstract ideas that use computers as tools. See 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); see also Guidance, 84 Fed. Reg. at 55 ( citing MPEP Â§ 2106.05([)). 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 Â§ 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 Â§ 2106.05([)). Therefore, the recited additional elements, namely the (1) processor; (2) stored previous 16 Appeal2018-001787 Application 13/715, 167 optimization; (3) communicatively coupling the improver to route information storage including route data; and (3) shipment path improver do not integrate the abstract idea into a practical application when reading claim 1 as a whole. In addition, not only is the recited receiving step implemented via generic computing components to achieve those ends, but it is also a data gathering function that constitutes insignificant extra-solution activity insufficient to integrate the abstract idea into a practical application. See In re Bilski, 545 F.3d 943, 963 (Fed. Cir. 2008) (en bane), aff'd on other grounds, 561 U.S. 593 (2010) (characterizing data gathering steps as insignificant extra-solution activity); see also Guidance, 84 Fed. Reg. at 55 (citing MPEP Â§ 2106.05(g)). Lastly, we find unavailing Appellants' contention that the claimed invention does not preempt using the alleged abstract idea in all fields. See App. Br. 10; Reply Br. 4--5. Where, as here, the claims cover a patent- ineligible concept, preemption concerns "are fully addressed and made moot" by an analysis under the Alice framework. See Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). In conclusion, although the claimed invention may be beneficial by changing a planned shipment path according to certain criteria, a claim for a useful or beneficial abstract idea is still an abstract idea. See Ariosa, 788 F.3d at 1379-80. We, therefore, agree with the Examiner that claim 1 is directed to an abstract idea. 17 Appeal2018-001787 Application 13/715, 167 Claims 1-20: Alice/Mayo Step Two Turning to Alice/Mayo step two, claim 1 's additional recited elements, namely the recited (1) "processor"; (2) "stored previous optimization"; (3) "communicatively coupl[ing] the improver to route information storage including a plurality of route data"; and (4) "shipment path improver"- 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. To the extent that Appellants contend that the recited limitations, including the additional elements' particular recited functionality, add significantly more than the abstract idea to provide an inventive concept under Alice/Mayo step two (see App. Br. 5-11; Reply Br. 2-5), 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 Â§ 2106.05(d)). Rather, the (1) "processor"; (2) "stored previous optimization"; (3) "communicatively coupl[ing] the improver to route information storage including a plurality of route data"; and ( 4) "shipment path improver" are the additional recited elements whose generic computing functionality is well-understood, routine, and conventional. Accord Final Act. 3--4; Ans. 18 Appeal2018-001787 Application 13/715, 167 17-19 (finding that the claims' additional computer elements provide conventional computer functionality that do not add significantly more than the abstract idea). Appellants' arguments in this regard (see App. Br. 5-11; Reply Br. 2-5) are, therefore, unpersuasive. Despite Appellants' arguments to the contrary (App. Br. 11 ), the fact that the Examiner did not reject the claims as anticipated or obvious over prior art is not dispositive to patent eligibility-a separate statutory inquiry. See Return Mail, 868 F.3d at 1370. Although the second step in the Alice test is a search for an "inventive concept," the analysis is not directed to novelty or nonobviousness, but rather searches for elements sufficient to ensure that the claimed invention is directed to more than a patent ineligible concept, such as an abstract idea. See Alice, 134 S. Ct. at 2355. "Groundbreaking, innovative, or even brilliant discovery does not by itself satisfy theÂ§ 101 inquiry." Ass 'nfor Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013); see also Diamond v. Diehr, 450 U.S. 175, 188-89 (1981) ("The '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 the Â§ 101 categories of possibly patentable subject matter."); Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1263 n.3 (Fed. Cir. 2016) (noting that an eligibility finding does not tum on the novelty of using a user-downloadable application for the particular purpose recited in the claims). In conclusion, we do not find that the additional recited elements- considered individually and as an ordered combination-add significantly more than the abstract idea to provide an inventive concept under 19 Appeal2018-001787 Application 13/715, 167 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 1, and claims 2-20 not argued separately with particularity. CONCLUSION The Examiner did not err in rejecting claims 1-20 underÂ§ 101. DECISION We affirm the Examiner's decision to reject claims 1-20. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 20