International Business Machines Corporation

Patent Trials and Appeals Board

Aug 26, 2020

2019002127 (P.T.A.B. Aug. 26, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/306,940 06/17/2014 Helen T. Chen SOM920000018US2_8152-0237 3810
73109 7590 08/26/2020
Cuenot, Forsythe & Kim, LLC
20283 State Road 7
Ste. 300
Boca Raton, FL 33498
EXAMINER
RIES, LAURIE ANNE
ART UNIT PAPER NUMBER
2176
NOTIFICATION DATE DELIVERY MODE
08/26/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HELEN T. CHEN, THOMAS R. MAGUIRE, and
JOHN F. SCHUMACHER

Appeal 2019-002127
Application 14/306,940
Technology Center 2100

Before JEAN R. HOMERE, ST. JOHN COURTENAY, III, and
THU A. DANG, Administrative Patent Judges.
HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

I. STATEMENT OF THE CASE1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 33–52. Appeal Br. 1. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.

1 We refer to the Specification, filed June 17, 2014 (“Spec.”); Final Office
Action, mailed Jan. 26, 2018 (“Final Act.”); Appeal Brief, filed June 26,
2018 (“Appeal Br.”); Examiner’s Answer, mailed Nov. 15, 2018 (“Ans.”);
and Reply Brief, filed Jan. 15, 2019 (“Reply Br.”).
2 We use the word “Appellant” to refer to “Applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as IBM
Corporation. Appeal Br. 1. This appeal relates to Appeal No. 2014-000212
(09/722,526, mailed Jan. 24, 2014) (“’212 Appeal”) in which we affirmed
the Examiner’s patent eligibility rejection of claims 53–62, and the
Appeal 2019-002127
Application 14/306,940
2
II. CLAIMED SUBJECT MATTER
According to Appellant, the claimed subject matter relates to a
computer program product and a hardware storage device including code for
creating transformation rule (208) useable to transform a source document
containing input data file (212) into a target document containing output data
file (214). Spec. ¶ 10, Fig. 2.
Figure 2, reproduced below, is useful for understanding the claimed
subject matter:

Figure 2 depicts a flow diagram for enabling visual transformation mapping
editor (204) to create transformation rule (208) from source metadata (202)
and target metadata (206). Spec. ¶ 13.

obviousness rejection of claims 42–52, but reversed the obviousness
rejection of claims 33–42, and 53–62. Dec. 9.
Appeal 2019-002127
Application 14/306,940
3
As depicted in Figure 2 above, upon receiving source data description
(202) of a first single field and target data description (206) of a second
single field, visual transformation mapping editor (204) creates meta
transformation rule (208) for transforming and mapping data between the
source document including input data (212) and the target document
including output data (214). Spec. ¶¶ 10, 46.
Claims 33 and 43 are independent. Claim 33, reproduced below with
disputed limitations emphasized in italics, is illustrative:
33. A computer program product, comprising:
a hardware storage device having stored therein computer
usable program code for creating a transformation rule usable to
transform an input data file including input data into an output
data file including output data,
the computer usable program code, which when
executed by a computer hardware system, causes the computer
hardware system to perform
receiving, prior to the transformation rule being
generated, a source data description of a single data
field of the input data file;
receiving, prior to the transformation rule being
generated, a target data description of a single data field
of the output data file;
receiving a meta rule configured to create a
transformation rule3; and
creating the transformation rule using the meta rule
with the source data description and the target data
description, wherein
each data field is to be populated by data having
parameters, and
each respective data description characterizes the
parameters of the data.

3 In the event of further prosecution, the Examiner should consider whether
the second recitation of “a transformation rule” renders the claim indefinite.
Appeal 2019-002127
Application 14/306,940
4
Appeal Br. 18, Claims App.

III. REFERENCES
The Examiner relies upon the following references.4
Name Number Publ’d/Issued
Williams US 5,251,314 Oct. 5, 1993
XML Spy 3.0,
1-60 (“XML
Spy”).
Available at
www.xmispy.com,
2000
Beckett US 2002/0199034 A1 Dec. 26, 2002

IV. REJECTIONS
The Examiner rejects claims 1–20 as follows:
1. Claims 33–52 are rejected under 35 U.S.C. § 101 as being directed to
patent ineligible subject matter without significantly more. Final Act. 2.
2. Claims 33−52 are rejected under 35 U.S.C. § 103 as being unpatentable
over the combination of XML Spy and Beckett. Final Act. 3–8.
3. Claims 33−52 are rejected under 35 U.S.C. § 103 as being unpatentable
over the combination of Williams, XML Spy and Beckett. Final Act. 8–
13.
V. ANALYSIS
We consider Appellant’s arguments in the order they are presented in the
Appeal Brief, pages 4–58, and the Reply Brief, pages 2–18.5

4 All reference citations are to the first named inventor only.
5 We have considered in this Decision only those arguments Appellant
actually raised in the Briefs. Arguments not made are waived. See
37 C.F.R. § 41.37(c)(1)(iv) (2014).
Appeal 2019-002127
Application 14/306,940
5
1. Patent Eligibility Rejection
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 U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to
include implicit exceptions: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573
U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-step framework, described in Mayo and Alice.
Alice, 573 U.S. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
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. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (Diehr, 450 U.S. at 182 n.7 (quoting Corning v.
Appeal 2019-002127
Application 14/306,940
6
Burden, 56 U.S. 252, 267–68 (1853))); and manufacturing flour (Benson,
409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
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.”). Having said that, the 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. (citation omitted)
(citing Benson and Flook), id. at 187 (“It is now commonplace that an
application of a law of nature or mathematical formula to a known structure
or process may well be deserving of patent protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221. “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.
Appeal 2019-002127
Application 14/306,940
7
The Office published revised guidance on the application of
Section 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84
Fed. Reg. 50 (Jan. 7, 2019) (“2019 PEG”). Recently, the Office published
an update to that guidance. October 2019 Patent Eligibility Guidance
Update, 84 Fed. Reg. 55,942 (hereinafter “PEG Update”). Under the 2019
PEG and PEG Update, 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 MPEP § 2106.05(a)–(c),
(e)–(h)).6

See 2019 PEG, 84 Fed. Reg. at 52, 55–56. Only if a claim: (1) recites a
judicial exception; and (2) does not integrate that exception into a practical
application, does the office then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception
that is not “well-understood, routine, conventional” in the
field (see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a
high level of generality, to the judicial exception.
See 2019 PEG, 84 Fed. Reg. at 56.
We analyze the patent-eligibility rejection with the principles
identified above in mind.
Examiner’s Findings and Conclusions
In the first part of the Alice inquiry, the Examiner determines that
claims 33–52 are directed to the abstract idea of creating/using a

6 All references to the MPEP are to 9th Ed., Rev. 08.2017 (Jan. 2018).
Appeal 2019-002127
Application 14/306,940
8
transformation rule incorporating descriptions of data, wherein the created
rule is never applied, and such creation can be performed in the human
mind. Ans. 16–18. According to the Examiner, the creation of this
transformation rule is similar to mental processes of comparing information
(“data descriptions”) and creating /using rules to identify options in
SmartGene,7 and obtaining/comparing intangible data in Cybersource.8
Final Act. 2.
In the second part of the Alice inquiry, the Examiner determines the
claims do not recite additional elements sufficient to amount to significantly
more than the abstract idea. Ans. 18–19. According to the Examiner,
Claim 33 requires generic computer product such as
hardware storage to perform basic computer functions of
storing and retrieving information, and/or manipulating that
information. Thus, the recited generic computer product
performs no more than basic computer functions. This adds
nothing that is not already present when the elements are taken
individually. Therefore, the claim does not amount to
significantly more than the recited abstract idea.
Claim 43 requires generic computer products such a
processor to perform basic computer functions of storing and
retrieving information, and/or manipulating that information.
Thus, the recited generic computer product performs no more
than basic computer functions. This adds nothing that is not
already present when the elements are taken individually.
Therefore, the claim does not amount to significantly more than
the recited abstract idea.

Final Act. 2.

7 SmartGene v. Advanced Biological Labs, 555 F. App'x 950 (Fed. Cir.
2014).
8Cybersource Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (Fed. Cir.
2011).
Appeal 2019-002127
Application 14/306,940
9
Appellant’s Arguments and Contentions
In the first part of the Alice inquiry, Appellant argues that the
Examiner’s prima facie case of patent ineligibility is in error because the
Examiner overgeneralized the claimed subject matter, and does not tie the
facts thereof to the cited case law. Appeal. Br. 9–13, Reply Br. 5–7.
Instead, Appellant argues that the claimed subject matter relates to a novel
methodology for transforming data stored in a document/file into data stored
in a different type of document/file. Appeal Br. 10. In particular, Appellant
alleges that the claimed subject matter pertains to utilizing meta rules, source
and target descriptions to generate a transformation rule, which is
subsequently used to transform input data into output data. Id. According to
Appellant, because the recited operations of receiving data and transforming
data are to be performed by a computer hardware system, the claimed
subject matter cannot be performed in the human mind. Id. at 12–13.
Therefore, Appellant submits that the claimed subject matter relates to an
improvement to computer technology used to transform data in one
document/file to another type of document/file. Id. at 14.
In the second part of the Alice inquiry, Appellant argues that the
Examiner failed to identify additional elements in the claimed subject
matter, and thereby reached the conclusory statement that the claim does not
amount to significantly more than the alleged abstract idea. Id. at 15.
Our Review
Applying the guidance set forth in the 2019 Updated PEG and
controlling case law, we determine whether the Examiner has erred in
rejecting the claims as directed to patent ineligible subject matter.
Appeal 2019-002127
Application 14/306,940
10
In revised step 1 of 2019 PEG, we consider whether the claimed
subject matter falls within the four statutory categories of patent-eligible
subject matter identified by 35 U.S.C. § 101: process, machine, manufacture,
or composition of matter. Because independent claim 33 recites a “program
product” including a hardware storage device for storing computer usable
code, claim 33 falls within the “manufacture” category of patent-eligible
subject matter. Because independent claim 43 recites a “computer hardware
system” including a processor for performing various functions, claim 43
falls within the “machine” category of patent-eligible subject matter.
In prong 1 of revised step 2A of the 2019 PEG, we determine whether
any judicial exception to patent eligibility is recited in the claims. The
guidance identifies three judicially-excepted groupings of abstract ideas:
(1) mathematical concepts; (2) certain methods of organizing human
activity, such as fundamental economic practices; and (3) mental processes.
As noted by Appellant, independent claims 33 and 43 recite, inter alia, a
computer hardware storage device and computer hardware system including
processor to create a transformation rule based on received source
description data, target description data, and meta rule. Appeal Br. 10. In
sum, the cited claim steps involve a processor, which:
1. receives a source metadata of an input data file;
2. receives a target metadata of an output data file;
3. receives a meta rule;
4. creates a transformation rule based on the source input
metadata file, target output metadata file, and meta rule.
At an initial matter, we note that independent claims 33 and 43 merely
recite creating a transformation rule without detailing any particular
Appeal 2019-002127
Application 14/306,940
11
hardware circuitry beyond a processor circuitry performing the operations to
execute steps 1 through 4 above. Such a manipulation of the input and
output metadata relates to the pre-Internet activity of manipulating data
descriptions to generate a mapping rule for converting input data into
equivalent output data. Spec. ¶¶ 6–9. As drafted, these claim limitations,
under their broadest reasonable interpretation, recite a mental process for
organizing information through data mapping and correlation that can be
performed in the human mind or using a pen and paper. See,
e.g., CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372–73
(Fed. Cir. 2011) (determining that a claim whose “steps can be performed in
the human mind, or by a human using a pen and paper” is directed to an
unpatentable mental process).
We thus agree with the Examiner that the claimed subject matter
merely relates to the basic concept of creating a transformation rule
incorporating data descriptions, which can be implemented as a mental
process for converting input data into equivalent output data. Ans. 16–18.
Consequently, we find the record before us adequately supports the
Examiner’s finding that the claims recite the mental process of generating a
transformation rule using received data descriptions. Id. Accordingly, we
find that independent claims 33 and 43 recite the judicial exception of a
mental process.
Having determined that the claims recite a judicial exception, our
analysis under the 2019 PEG turns now to determining whether there are
“additional elements that integrate the judicial exception into a practical
Appeal 2019-002127
Application 14/306,940
12
application.” See MPEP § 2106.05(a)–(c), (e)–(h).9 “Integration into a
practical application” requires an additional element or a combination of
additional elements in the claim to apply, rely on, or use the judicial
exception in a manner that imposes a meaningful limit on the judicial
exception, such that the claim is more than a drafting effort designed to
monopolize the exception. 84 Fed. Reg. at 53.
Appellant’s claims 33 and 43 recite computer-related limitations (e.g.,
computer hardware system, processor). Appellant argues that the claimed
creation of a transformation rule pertains to an improvement to computer
technology used to transform data in one document/file to another type of
document/file. Appeal Br.14.
We do not find the recited computer-related limitations are sufficient
to integrate the judicial exception into a practical application. Although the
claim nominally requires these steps to be performed by a computer
hardware system including a processor, this computer implementation of a
mental process is insufficient to take the invention out of the realm of
abstract ideas. Versata Dev. Grp. v. SAP Am., Inc., 793 F.3d 1306, 1335

9 Specifically, we determine whether the claims recite:
(i) an improvement to the functioning of a computer [(or a mobile
device)];
(ii) an improvement to another technology or technical field;
(iii) an application of the abstract idea with, or by use of, a particular
machine;
(iv) a transformation or reduction of a particular article to a different
state or thing; or
(v) other meaningful limitations beyond generally linking the use of
the abstract idea to a particular technological environment.
Id.
Appeal 2019-002127
Application 14/306,940
13
(Fed. Cir. 2015) (“Courts have examined claims that required the use of a
computer and still found that the underlying, patent-ineligible invention
could be performed via pen and paper or in a person’s mind.”); Alice, 573
U.S. at 223 (“Stating an abstract idea while adding the words ‘apply it with a
computer’” is insufficient to confer eligibility.). Further, the Specification
does not provide additional details about the computer hardware
system/processor that would distinguish them from any generic processing
devices to convert input data from one type to another. Although we do not
dispute that the processing circuitry includes specific instructions for
performing the recited functions, Appellant has not explained persuasively
how the derived content transforms the received data into a new state or
thing. See MPEP § 2106.05(a). Rather, the claims merely adapt the mental
process of generating a data transformation rule for converting an input data
into an equivalent output data. See Credit Acceptance Corp. v. Westlake
Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017) (“Our prior cases have made
clear that mere automation of manual processes using generic computers
does not constitute a patentable improvement in computer technology.”); see
also Bancorp Services, L.L.C. v. Sun Life Assurance Co. of Canada (U.S.),
687 F.3d 1266, 1278 (Fed. Cir. 2012) (A computer “employed only for its
most basic function . . . does not impose meaningful limits on the scope of
those claims.”).
Further, Appellant’s identified improvements are to the abstract idea
itself, not improvements to a technology or computer functionality. That is,
the cited claim limitations do not improve the functionality of the processing
devices by performing operations generating a transformation rule for
converting input data into equivalent output data, nor do they achieve an
Appeal 2019-002127
Application 14/306,940
14
improved technological result in conventional industry practice. See McRO,
Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299, 1316 (Fed. Cir.
2016). Thus, we agree with the Examiner that the claims do not recite an
additional element reflecting an improvement in the functioning of a
computer, or an improvement to other technology or technical field. Ans.
18.
As correctly noted by the Examiner, the claims do not recite an
additional element that implements the abstract idea with a particular
machine or manufacture that is integral to the claim. Id. Instead, the claim
limitations only recite result-based functional steps that do not describe how
to achieve the data transformation in a non-abstract way. Prior to the
Internet, such activities were widely practiced, and became computerized to
facilitate the creation of a transformation rule for converting input data into
equivalent output of a different type. See OIP Technologies, Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1364 (Fed. Cir. 2015).
Because the claimed subject matter outlined above does not (1)
provide any technical solution to a technical problem as required by DDR
Holdings;10 (2) provide any particular practical application as required by
BASCOM; or (3) entail an unconventional technological solution to a

10 The Federal Circuit found DDR’s claims are patent-eligible under
35 U.S.C. § 101 because DDR’s claims: (1) do not merely recite “the
performance of some business practice known from the pre-Internet world”
previously disclosed in Bilski and Alice; but instead (2) provide a technical
solution to a technical problem unique to the Internet, i.e., a “solution . . .
necessarily rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer networks.” DDR Holdings, 773
F.3d at 1257.
Appeal 2019-002127
Application 14/306,940
15
technological problem as required by Amdocs,11 we agree with the
Examiner’s determination that Appellant’s claims 33 and 43 are directed to
an abstract idea that is not integrated into a practical application.
Alice/Mayo—Step 2B (Inventive Concept)
Turning to step 2B of the 2019 PEG, we look to whether the claim:
(a) recites a specific limitation or combination of limitations that are not
well-understood, routine, conventional activity in the field; or (b) simply
appends well-understood, routine, conventional activities previously known
to the industry, specified at a high level of generality, to the judicial
exception. 84 Fed. Reg. 56; see Alice, 573 U.S. at 217 (“[W]e consider the
elements of each claim both individually and ‘as an ordered combination’”
to determine whether the claim includes “significantly more” than the
ineligible concept); see also BASCOM, 827 F.3d at 1350 (“[A]n inventive
concept can be found in the non-conventional and non-generic arrangement
of known, conventional pieces.”).
We discern no additional element or combination of elements recited
in Appellant’s independent claims 33 and 43 that contain any “inventive
concept” or add anything “significantly more” to transform the abstract
concept into a patent-eligible application. Alice, 573 U.S. at 221. We are
not persuaded by Appellant’s remarks, noted above, alleging the claims are
directed to a non-routine and unconventional system because it allegedly
recites a new methodology for creating a transformation rule for converting
input data into equivalent output data. Appellant has failed to establish on
this record how converting input data into equivalent output data is

11 See Amdocs Ltd. v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016).
Appeal 2019-002127
Application 14/306,940
16
distinguished from the conventional processor-implemented creation of a
transformation rule to convert input data into output data of a different type.
Further, Appellant does not direct our attention to any portion of the
Specification indicating that the claimed processing circuitry performs
anything other than well-understood, routine, and conventional functions,
such as receiving, processing, and displaying data. See Elec. Power Group,
LLC v. Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016) (“Nothing in the
claims, understood in light of the [S]pecification, requires anything other
than off-the-shelf, conventional computer, network, and display technology
for gathering, sending, and presenting the desired information.”); see also
Alice, 573 U.S. at 224–26 (receiving, storing, sending information over
networks insufficient to add an inventive concept); buySAFE, Inc. v. Google,
Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (“That a computer receives and
sends the information over a network—with no further specification—is not
even arguably inventive.”).
Instead, Appellant’s claimed subject matter simply uses a generic
processing circuitry to perform the abstract idea of creating a transformation
rule for converting input data from one form to another. As noted above, the
use of a generic computer does not alone transform an otherwise abstract
idea into patent-eligible subject matter. As our reviewing court has
observed, “after Alice, there can remain no doubt: recitation of generic
computer limitations does not make an otherwise ineligible claim patent-
eligible.” DDR, 773 F.3d at 1256 (citing Alice, 573 U.S. at 223).
Because the discussed claim elements only recite generic computer
functions that are well-understood, routine, and conventional, individually
and in combination, the claim is devoid of an inventive concept. See Alice,
Appeal 2019-002127
Application 14/306,940
17
573 U.S. at 217. “[T]he ‘inventive concept’ [under the second part of the
Mayo/Alice test] cannot be the abstract idea itself” and “Berkheimer . . .
leave[s] untouched the numerous cases from [the Federal Circuit] which
have held claims ineligible because the only alleged ‘inventive concept’ is
the abstract idea.” Berkheimer v. HP Inc., 890 F.3d 1369, 1374 (Fed. Cir.
2018) (Moore, J., concurring). “It has been clear since Alice that a claimed
invention’s use of the ineligible concept to which it is directed cannot supply
the inventive concept that renders the invention ‘significantly more’ than
that ineligible concept.” BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1281,
1290 (Fed. Cir. 2018).
Therefore, the computer functions recited in the claims are, in fact,
generic, and are met by numerous precedent establishing that using a generic
computer to expedite and automate processes traditionally performed
manually, or that are otherwise abstract, is a well-understood, routine, and
conventional use of such computers. See also, e.g., Intellectual Ventures I
LLC v. Symantec Corp., 838 F.3d at 1321 (utilizing an intermediary
computer to forward information); Bancorp Services, L.L.C., 687 F.3d at
1278 (“The computer required by some of Bancorp’s claims is employed
only for its most basic function, the performance of repetitive calculations,
and as such does not impose meaningful limits on the scope of those
claims.”).
Therefore, we conclude that claim 33’s elements, both individually
and as an ordered combination, do not provide an inventive concept. See 84
Fed. Reg. 56; see also Berkheimer, 881 F.3d at 1370 (“The limitations
amount to no more than performing the abstract idea of parsing and
comparing data with conventional computer components.”); Bancorp, 687
Appeal 2019-002127
Application 14/306,940
18
F.3d at 1278 (“[T]he use of a computer in an otherwise patent-ineligible
process for no more than its most basic function—making calculations or
computations—fails to circumvent the prohibition against patenting abstract
ideas and mental processes.”).
To the extent Appellant argues the claims necessarily contain an
“inventive concept” based on their alleged novelty or non-obviousness over
the cited references, Appellant misapprehends the controlling precedent.
Although the second part in the Alice/Mayo framework is termed a search
for an “inventive concept,” the analysis is not an evaluation of novelty or
non-obviousness, but, rather, a search for “an element or combination of
elements that is ‘sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [ineligible concept] itself.’” Alice,
573 U.S. at 217–218 (quoting Mayo, 566 U.S. 72–73). A novel and
nonobvious claim directed to a purely abstract idea is, nonetheless, patent-
ineligible. See Mayo, 566 U.S. at 90.
In many cases, “relying on a computer to perform routine tasks more
quickly or more accurately is insufficient to render a claim patent eligible.”
OIP Techs., 788 F.3d at 1363 (citing Alice, 573 U.S. at 224) (“[U]se of a
computer to create electronic records, track multiple transactions, and issue
simultaneous instructions” is not an inventive concept.); see also, e.g.,
Intellectual Ventures I LLC v. Capital One Bank, 792 F.3d at 1370
(“[M]erely adding computer functionality to increase the speed or efficiency
of the process does not confer patent eligibility on an otherwise abstract
idea.”). Therefore, the functions recited in independent claims 33 and 43 do
not add meaningful limitations beyond generally linking the abstract idea to
the particular technological environment.
Appeal 2019-002127
Application 14/306,940
19
Appellant’s arguments asserting that the claims do not block others
from using the abstraction do not persuade us that the claims are directed to
patent eligible material. Appeal Br. 14. Pre-emption is not a separate test
for eligibility.
To be clear, the proper focus is not preemption per se, for
some measure of preemption is intrinsic in the statutory right
granted with every patent to exclude competitors, for a limited
time, from practicing the claimed invention. See 35 U.S.C.
§ 154. Rather, the animating concern is that claims should not
be coextensive with a natural law, natural phenomenon, or
abstract idea; a patent-eligible claim must include one or more
substantive limitations that, in the words of the Supreme Court,
add “significantly more” to the basic principle, with the result
that the claim covers significantly less. See Mayo[, 566 U.S. at
72–73]. Thus, broad claims do not necessarily raise § 101
preemption concerns, and seemingly narrower claims are not
necessarily exempt.
CLS Bank Int’l v. Alice Corp. Pty. Ltd., 717 F.3d 1269, 1281 (Fed.
Cir. 2013) (Lourie, J., concurring), aff’d, 573 U.S. 208; see also Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)
(“While preemption may signal patent ineligible subject matter, the absence
of complete preemption does not demonstrate patent eligibility.”). Because
we find the claimed subject matter covers patent-ineligible subject matter,
the pre-emption concern is necessarily addressed. “Where a patent’s claims
are deemed only to disclose patent ineligible subject matter under the Mayo
framework, . . . preemption concerns are fully addressed and made moot.”
Ariosa Diagnostics, 788 F.3d at 1379.
Because Appellant’s claims 33 and 43 are directed to a patent-
ineligible abstract concept and do not recite something “significantly more”
Appeal 2019-002127
Application 14/306,940
20
under the second prong of the Alice analysis, we sustain the Examiner’s
rejection of independent claims 33 and 43 under 35 U.S.C. § 101.
Regarding dependent claims 34–42 and 44–52, Appellant argues that
the Examiner has not offered any individual analysis to notify Appellant as
to why the additional limitations in the cited claims do not render these
claims patent eligible. Appeal Br. 16. This argument is not persuasive. The
Examiner explains that because the additional limitations recited in the
dependent claims further pertain to the processor circuitry performing
conventional operations to execute steps 1 through 4 discussed above in the
rejection of independent claims 33 and 43, they do not take the claims out of
the realm of patent ineligible subject matter. Ans. 19. We agree with the
Examiner. Accordingly, we sustain the Examiner’s 35 U.S.C. § 101
rejection of dependent claims 34–42 and 44–52.

2. Obviousness Rejections
a. XML Spy and Beckett
Appellant argues that independent claim 33 in the present appeal is
substantially similar to independent claim 33 in the ’212 Appeal. Appeal.
Br. 17–18. According to Appellant, the Board previously reversed the
Examiner’s obviousness rejection of claim 33 over the same combination of
XML Spy and Bennett because the cited combination does not teach
receiving both the input metadata and output metadata prior to creating the
transformation rule. Id. at 19–21. Appellant submits that because in the
Final Office Action, the Examiner reproduced a nearly identical rejection as
in the ’212 Appeal, the board should reverse the rejection for the afore-cited
Appeal 2019-002127
Application 14/306,940
21
reasons, which Appellant repeats in the Appeal Brief. Id. at 19–55. We
agree with Appellant.
At the outset, we note the Examiner does not dispute Appellant’s
assertions that the rejection and the claims at issue in this appeal are nearly
identical to the claims and rejection reversed in the ’212 Appeal.
Accordingly, we summarily reverse the rejection of claims 32–52 for the
same reasons articulated in the ’212 Appeal, which are included in the cited
pages of Appellant’s Appeal Brief.
b. Williams, XML Spy, and Beckett
Appellant argues that Williams does not cure the noted deficiencies of
the XML Spy-Beckett combination. Appeal Br. 55–56. According to
Appellant, Williams teaches at most receiving a source object, which is
transformed into a target object, as opposed to receiving a source metadata
and a target metadata to create a transformation rule. Id. at 56. We agree
with Appellant.
The Examiner relies upon Williams’ abstract, and Background,
paragraph 3, to teach the cited limitations. Final Act. 8–9. However, as
persuasively argued by Appellant, the cited portions of Williams relate to
transforming a source object into a target object of a different type. Appeal
Br. 56. Because Appellant has shown one reversible error in the Examiner’s
rejection of claim 33, we do not reach Appellant’s remaining arguments.
We likewise reverse the rejection of claims 33–52, which also recite
the disputed limitations.
Appeal 2019-002127
Application 14/306,940
22
VI. CONCLUSION
We reverse the Examiner’s obviousness rejections of claims 32−52
under 35 U.S.C. § 103. However, we affirm the Examiner’s patent
eligibility rejection of claims 32–52 under 35 U.S.C. § 101.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed. See 37
C.F.R. § 41.50(a)(1).

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§ Reference(s)/Basis Affirmed Reversed
32–52 101 Eligibility 32–52
32–52 103
XML Spy, Beckett

32–52
32–52 103
Williams, XML Spy,
Beckett

32–52
Overall
Outcome 32–52

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