International Business Machines Corporation

Patent Trials and Appeals Board

Mar 1, 2022

2021000288 (P.T.A.B. Mar. 1, 2022)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 15/237,516 08/15/2016 Malous M. Kossarian AUS1P027/ AUS920150442US1 6957 50548 7590 03/01/2022 ZILKA-KOTAB, PC- IBM 1155 N. 1ST ST. SUITE 104 SAN JOSE, CA 95112 EXAMINER HASTY, NICHOLAS ART UNIT PAPER NUMBER 2178 NOTIFICATION DATE DELIVERY MODE 03/01/2022 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): zk-uspto@zilkakotab.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MALOUS M. KOSSARIAN ___________ Appeal 2021-000288 Application 15/237,516 Technology Center 2100 _________________ Before RICHARD M. LEBOVITZ, MICHAEL J. STRAUSS, and JAMES B. ARPIN, Administrative Patent Judges. ARPIN, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) the Examiner’s rejection of claims 1, 3-11, 13-15, and 17-22. Final Act. 2; see infra note 4 (discussing claim 16).2 Claims 2 and 12 are canceled. Appeal Br. 19, 22 (Claims App.). We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part and enter a new ground of rejection. 1 Appellant refers to “applicant” as defined in 37 C.F.R. § 1.42 (2012). Appellant identifies the real party-in-interest as International Business Machines (IBM) Corporation. Appeal Br. 2. 2 In this Decision, we refer to Appellant’s Appeal Brief (“Appeal Br.,” filed April 15, 2020) and Reply Brief (“Reply Br.,” filed August 17, 2020); the Final Office Action (“Final Act.,” mailed November 29, 2019) and the Examiner’s Answer (“Ans.,” mailed July 23, 2020); and the Specification (“Spec.,” filed August 15, 2016). Rather than repeat the Examiner’s findings and Appellants’ contentions in their entirety, we refer to these documents. Appeal 2021-000288 Application 15/237,516 2 STATEMENT OF THE CASE Appellant’s recited methods, computer program products, and systems “relate[] to textual analysis, and more specifically, this invention relates to performing textual analysis from a chemical reaction perspective.” Spec. ¶ 1. As noted above, claims 1, 3-11, and 13-22 are pending. Claims 1, 11, and 20 are independent. Appeal Br. 19 (claim 1), 21-22 (claim 11), 24- 25 (claim 20) (Claims App.). Claims 3-10, 16-19, 21, and 22 depend directly from claim 1; and claims 13-15 depend directly from claim 11. Id. at 19-25. Claim 1, reproduced below with disputed limitations emphasized, is illustrative. 1. A computer-implemented method, comprising: identifying a textual document; determining a chemical reaction within the textual document; extracting a plurality of chemical components from the chemical reaction; determining characteristics of the plurality of chemical components; calculating one or more scores, utilizing the characteristics, where the one or more scores are calculated for one or more of the plurality of chemical components, and include a reactiveness score that is calculated by analyzing an aromaticity and aqueousness of the chemical component, in addition to analyzing one or more previous successful reactions involving the chemical component; storing the chemical reaction as an object within a data store; and storing the one or more scores as annotation metadata in association with the object. Appeal 2021-000288 Application 15/237,516 3 Id. at 19 (emphases added). Each of independent claims 11 and 20 recites limitations corresponding to the disputed limitations of claim 1. Id. at 21, 25. REFERENCES AND REJECTIONS The Examiner relies upon the following references: Name3 Reference Publ’d/Issued Filed Bunin US 2002/0077757 A1 June 20, 2002 Nov. 28, 2001 Lawson US 2005/0246316 A1 Nov. 3, 2005 Apr. 30, 2004 Paxson US 7,844,431 B2 Nov. 30, 2010 Feb. 20, 2004 Hawizy ChemicalTagger: A tool for semantic text-mining in chemistry, Journal of Cheminformatics, 3:17 2011 O’Boyle Open Babel: An open chemical toolbox, Journal of Cheminformatics, 3:33 2011 The Examiner rejects: 1. claims 1, 11, and 20 under 35 U.S.C. § 101 as directed to a judicial exception without significantly more (Final Act. 2); 2. claims 1, 3-11, 13-15, 17, 18, and 20-224 under 35 U.S.C. § 103 as obvious over the combined teachings of Lawson, Bunin, O’Boyle, and Paxson (id. at 3-10); and 3. claim 19 under 35 U.S.C. § 103 as obvious over the combined teachings of Lawson, Bunin, O’Boyle, Paxson, and Hawizy (id. at 3 All reference citations are to the first named inventor or author only. 4 The Examiner withdraws the obviousness rejection of claim 16. Ans. 3; see Final Act. 7-8. However, claim 16 depends from a rejected base claim. Appeal 2021-000288 Application 15/237,516 4 10-11). We conduct a limited de novo review of the appealed eligibility rejection, and we review the appealed obviousness rejections for error based upon the issues identified by Appellant, and in light of the contentions and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). Appellant and the Examiner focus their contentions and findings, respectively, on claim 1, so we do as well. See Appeal Br. 20- 26; Ans. 3-6. Arguments not made are forfeited.5 Unless otherwise indicated, we adopt the Examiner’s findings in the Final Office Action and the Answer as our own and add any additional findings of fact for emphasis. We address the rejections below. ANALYSIS I. Patent Ineligibility A. Section 101 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). 5 See In re Google Tech. Holdings LLC, 980 F.3d 858, 863 (Fed. Cir. 2020) (“Because Google failed to present these claim construction arguments to the Board, Google forfeited both arguments.”); 37 C.F.R. § 41.37(c)(1)(iv) (2019) (“Except as provided for in §§ 41.41, 41.47 and 41.52, any arguments or authorities not included in the appeal brief will be refused consideration by the Board for purposes of the present appeal.”). Appeal 2021-000288 Application 15/237,516 5 In determining whether a claim falls within an excluded category, we are guided by the Court’s two-part 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. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept of hedging, or protecting against risk.”). According to the Court, 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)). In Diamond v. 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.” Diamond v. Diehr, 450 U.S. 175, 187 (1981). 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. at 191 (citing Benson and Flook). Nevertheless, the Court noted that “[i]t is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be Appeal 2021-000288 Application 15/237,516 6 deserving of patent protection.” Id. at 187; see also BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1352 (Fed. Cir. 2016) (Even if the individual components were known, “an inventive concept can be found in the ordered combination of claim limitations that transform the abstract idea of filtering content into a particular, practical application of that abstract idea” (emphasis added).). If the claim is “directed to” an abstract idea, we next “must examine the elements of the claim to determine whether it contains an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent- eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted). “A claim that recites an abstract idea must include ‘additional features’ to ensure ‘that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].’” Id. (alterations in original) (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. B. Office Patent Eligibility Guidance In an effort to achieve clarity and consistency in how the Office applies the Court’s two-part test, the Office published revised guidance on the application of § 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (hereinafter “101 Guidance”).6 In 6 This guidance supersedes previous guidance memoranda. 101 Guidance, 84 Fed. Reg. at 51 (“All USPTO personnel are, as a matter of internal agency management, expected to follow the guidance.”); see also October 2019 Update: Subject Matter Eligibility, 2 (Oct. 17, 2019) (hereinafter “October 2019 Update”) (“[A]ll USPTO personnel are expected to follow the guidance.”). Appeal 2021-000288 Application 15/237,516 7 Step One of our analysis, we look to see whether the claims, as written, fall within one of the four statutory categories identified in § 101. Id. at 53 (“Examiners should determine whether a claim satisfies the criteria for subject matter eligibility by evaluating the claim in accordance with the criteria discussed in MPEP 2106, i.e., whether the claim is to a statutory category (Step 1) and the Alice/Mayo test for judicial exceptions (Steps 2A and 2B)”). Under the guidance, we then look to whether the claim recites: (1) Step 2A - Prong One: 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) Step 2A - Prong Two: additional elements that integrate the judicial exception into a practical application (see MPEP7 § 2106.05(a)-(c), (e)-(h)). See 101 Guidance, 84 Fed. Reg. at 54-55 (“Revised Step 2A”). Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look to whether the claim: (3) adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field (see MPEP § 2106.05(d)); or (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. See id. at 56 (“Step 2B: If the Claim Is Directed to a Judicial Exception, Evaluate Whether the Claim Provides an Inventive Concept.”). 7 All Manual of Patent Examining Procedure (“MPEP”) citations herein are to MPEP, 9th ed., Rev. 10.2019, Last Rev’d June 2020. Appeal 2021-000288 Application 15/237,516 8 C. Step One - Claims Directed to Statutory Categories Appellant’s independent claims 1, 11, and 20, and their associated dependent claims, are directed to methods (i.e., a “process”), computer program products comprising a computer readable storage medium (i.e., a “composition of matter”), and systems (i.e., a “machine”), respectively. Appeal Br. 19-25 (Claims App.). Thus, the pending claims are directed to recognized statutory categories. D. Two-Part Alice/Mayo Test 1. Step 2A, Prong One - Claims Recite An Abstract Idea Applying the first part of the Alice/Mayo analysis (Step 2A), the Examiner concludes, as recited in claim 1, “[t]he limitation of calculating one or more scores, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for recitation of generic computer components.” Final Act. 2 (emphases added). Claim 1 generally recites identifying a text document and determining a chemical reaction written in the document (“identifying a textual document; [and] determining a chemical reaction within the textual document”), identifying the chemical components that make up the written reaction and determining those components’ characteristics (“extracting a plurality of chemical components from the chemical reaction; [and] determining characteristics of the plurality of chemical components”), using those characteristics to calculate at least a reactiveness score by analyzing the component’s aromaticity and aqueousness and previous reactions involving those components (“calculating one or more scores, utilizing the characteristics, where the one or more scores are calculated for one or more Appeal 2021-000288 Application 15/237,516 9 of the plurality of chemical components, and include a reactiveness score that is calculated by analyzing an aromaticity and aqueousness of the chemical component, in addition to analyzing one or more previous successful reactions involving the chemical component”), and remembering the determined chemical reaction and remembering the scores as an annotation (“storing the chemical reaction as an object within a data store; and storing the one or more scores as annotation metadata in association with the object.”). Final Act. 2 (“The claim(s) recite(s) extracting chemical components from an identified chemical reaction, calculating one or more scores, and storing the scores as an annotation.”). At their core, the independent claims recite methods, computer program products, and systems for reading documents, identifying specific subject matter of interest, analyzing that subject matter, and remembering results of that analysis. See Content Extraction and Transmission LLC v. Wells Fargo Bank, Nat. Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (“Applying Mayo/Alice step one, we agree with the district court that the claims of the asserted patents are drawn to the abstract idea of 1) collecting data, 2) recognizing certain data within the collected data set, and 3) storing that recognized data in a memory. The concept of data collection, recognition, and storage is undisputedly well- known. Indeed, humans have always performed these functions.”). Per the Office’s 101 Guidance, “[m]ental processes [are] concepts performed in the human mind (including an observation, evaluation, judgment, opinion).” 84 Fed. Reg. at 52. If a claim, under its broadest reasonable interpretation, covers performance in the mind but for the recitation of generic computer components, then it is still in the mental processes category unless the claim cannot practically be performed in the Appeal 2021-000288 Application 15/237,516 10 mind. See Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016) (‘‘[W]ith the exception of generic computer-implemented steps, there is nothing in the claims themselves that foreclose them from being performed by a human, mentally or with pen and paper.’’). Id. at 52 n.14 (emphasis added). Thus, the Examiner finds claim 1 recites an abstract idea, namely, a mental process. Final Act. 12 (“However the claims describe steps that can be done on a pen and paper, examining a chemical reaction described by a chemical equation, determining its characteristics such as aqueousness and aromaticity, and storing the information.” (emphasis added)); see Electric Power Group, LLC v. ALSTOM SA, 830 F.3d 1350, 1355 (Fed. Cir. 2016) (“But merely selecting information, by content or source, for collection, analysis, and display does nothing significant to differentiate a process from ordinary mental processes, whose implicit exclusion from § 101 undergirds the information-based category of abstract ideas.”). Appellant contends that “claims that do not recite subject matter that falls within these enumerated groupings of abstract ideas should not be treated as reciting abstract ideas.” Appeal Br. 7; Reply Br. 4. In particular, Appellant contends: In the present application, the claims require “calculating . . . a reactiveness score . . . by analyzing an aromaticity and aqueousness of the chemical component, in addition to analyzing one or more previous successful reactions involving the chemical component,” “storing the chemical reaction as an object within a data store,” and “storing the one or more scores as annotation metadata in association with the object” (emphasis added), which clearly does not fall within the aforementioned groupings of abstract ideas. Appeal 2021-000288 Application 15/237,516 11 Appeal Br. 7-8; Reply Br. 4. However, Appellant does not explain why these steps could not be performed in the human mind, with or without the use of pen and paper, and, thus, Appellant’s unsupported assertions are not persuasive. October 2019 Update at 7 (“Claims do not recite a mental process when they do not contain limitations that can practically be performed in the human mind, for instance when the human mind is not equipped to perform the claim limitations.”). It is well settled that arguments of counsel cannot take the place of factually supported objective evidence. See, e.g., In re Huang, 100 F.3d 135, 139-40 (Fed. Cir. 1996); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). We are persuaded the Examiner correctly finds claim 1 recites an abstract idea, namely, a mental process. 2. Step 2A, Prong Two - Abstract Idea Not Integrated Into Practical Application To determine whether the claims integrate the abstract idea into a practical application, we consider the additional elements recited in the claims, i.e., those components, features, limitations, or steps that the claim recites beyond the abstract idea itself. 101 Guidance, 84 Fed. Reg. at 55 n.24. The Examiner finds the recited mental process “is not integrated into a practical application because the [claim] only recites one additional element, being ‘computer implemented’.” Final Act. 2. In claim 1, because “[a] computer-implemented method” is recited, the additional component is a “computer” capable of performing the various method steps of “identifying,” “determining,” “extracting,” and “calculating” and means, e.g., a memory, for “storing” the chemical reaction as an object and “one or more scores as annotation metadata in association with the object.” Appeal Br. 19 (Claims Appeal 2021-000288 Application 15/237,516 12 App.); see Spec. ¶¶ 24 (“Such user devices 116 may include a desktop computer, lap-top computer, handheld computer, printer or any other type of logic. It should be noted that a user device 111 may also be directly coupled to any of the networks, in one embodiment.”), 33 (“For example, each data storage tier may include the same type of storage memory media, such as HDDs, SSDs, sequential access media (tape in tape drives, optical disk in optical disk drives, etc.), direct access media (CD-ROM, DVD-ROM, etc.), or any combination of media storage types.”). From claims 11 and 20, we know that the computer may include a “processor” (Appeal Br. 21-22, 24 (Claims App.)), and, from claim 11, we know that such “processors” may be operable with “a computer readable storage medium” (id. at 21). See Spec. ¶ 28 (“Such figure illustrates a typical hardware configuration of a workstation having a central processing unit 210, such as a microprocessor, and a number of other units interconnected via a system bus 212.”). Such “computers,” “processors,” and “memories” are generic; and the Specification does not describe these components as meaningful limitations beyond generally linking the use of the abstract idea to a particular technological environment. Nevertheless, Appellant contends the language of claim 1 “represents an improvement in the functioning of a computer or technical field.” Appeal Br. 9; Reply Br. 4. In particular, Appellant contends, by calculating a reactiveness score and storing such score as annotation metadata in association with a chemical reaction, a comprehensive knowledge base of components and reactions may be built utilizing calculated metadata. This may minimize experimentation to determine a viability of chemical reactions, which may in turn minimize data storage and processing necessary to perform such experimentation, which may improve Appeal 2021-000288 Application 15/237,516 13 a performance of associated data storage and processing hardware. Appeal Br. 9 (emphases added); see Reply Br. 4-5. As our reviewing court notes, however, “our precedent is clear that merely adding computer functionality to increase the speed or efficiency of the process does not confer patent eligibility on an otherwise abstract idea.” Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1370 (Fed. Cir. 2015). Here, Appellant merely asserts that such improvements in speed or efficiency “may” occur. Thus, we are persuaded that the independent claims recite no more than the application of an abstract idea to a particular technological environment. 101 Guidance, 84 Fed. Reg. at 55 n.32 (citing MPEP § 2106.05(h)). In view of Appellant’s claims and Specification and consistent with the Examiner’s findings, we are persuaded the rejected claims do not recite: (i) an improvement to the functioning of a computer; (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. See MPEP § 2106.05(a)-(c), (e)-(h). Thus, the rejected claims do not integrate the judicial exception into a practical application, and we conclude the claims are directed to an abstract idea. 3. Step 2B - Not Significantly More Than the Abstract Idea Finally, we consider whether claim 1 has an inventive concept, that is, whether any additional claim elements “‘transform the nature of the claim’ Appeal 2021-000288 Application 15/237,516 14 into a patent-eligible application.” Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S. at 78, 79). This requires us to evaluate whether the additional claim elements add “a specific limitation or combination of limitations that are not well-understood, routine, conventional activity in the field” or “simply append[] well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality.” 101 Guidance, 84 Fed. Reg. at 56. The Examiner finds, the “[c]laims do not describe significantly more than collecting data, recognizing certain data within the collected data set and storing the recognized data in memory.” Final Act. 12; see Ans. 3. Appellant responds, if the Examiner concludes, under the Guidance, that an additional element is insignificant extra-solution activity, they should reevaluate that conclusion in Step 2 of the Alice test. If such reevaluation indicates that the element is unconventional or otherwise more than what is well-understood, routine, conventional activity in the field, this finding may indicate that an inventive concept is present and that the claim is thus eligible. Appeal Br. 9 (underlining added); see Reply Br. 5. Nevertheless, the Examiner makes no finding that any additional elements of claim 1 are “insignificant extra-solution activity.” Thus, Appellant’s response does not address the Examiner’s findings. Appellant further contends, as shown above, appellant specifically claims the calculation and storage of a reactiveness score, as well as the storage of such score as annotation metadata in association with a chemical reaction object. Therefore, such language constitutes an improvement to the technical field of knowledge base creation and implementation, and also includes a specific limitation other than what is well-understood, routine and conventional in the Appeal 2021-000288 Application 15/237,516 15 field of knowledge base creation and implementation, and is therefore significantly more than an abstract idea. Reply Br. 5 (italics added). Appellant’s contention is not persuasive for two reasons. First, the contention conflates the determination that the claim recites a practical application of the abstract idea and that the claim recites “a specific limitation or combination of limitations that are not well-understood, routine, conventional activity in the field.” Second, similar to the discussion above, Appellant provides no support for the assertion that the identified steps are not well-understood, routine, and conventional in the field of knowledge base creation and implementation, such that they are significantly more than the identified, abstract idea. See, e.g., Huang, 100 F.3d at 139-40; De Blauwe, 736 F.2d at 705. In addition to this, the steps identified by Appellant as adding significantly more to the abstract idea, constitute the abstract idea, itself, namely, the mental process identified by the Examiner under Step 2A, Prong One. “The abstract idea itself cannot supply the inventive concept.” Trading Tech. Int’l, Inc. v. IBG LLC, 921 F.3d 1378, 1385 (Fed. Cir. 2019). We agree with the Examiner that the additional elements do not amount to significantly more than the abstract idea. Final Act. 12; see Ans. 3. As noted above, the Specification makes clear that the computers, the processors, and the memories are well-understood, routine, and conventional components. Spec. ¶¶ 31 (describing various memories “and/or others noted herein or known in the art” (emphasis added)), 32 (“The storage system manager 312 and/or any other component of the storage system 300 may be implemented in hardware and/or software, and may make use of a processor (not shown) for executing commands of a type Appeal 2021-000288 Application 15/237,516 16 known in the art, such as a central processing unit (CPU), a field programmable gate array (FPGA), an application specific integrated circuit (ASIC), etc.” (emphasis added)), 37 (“Illustrative processors include, but are not limited to, a central processing unit (CPU), an application specific integrated circuit (ASIC), a field programmable gate array (FPGA), etc., combinations thereof, or any other suitable computing device known in the art.” (emphasis added)); see supra Section D.2.; Electric Power Group, 830 F.3d at 1354 (finding that use of “conventional computer, network, and display technology for gathering, sending, and presenting the desired information” does not add significantly more to the claimed abstract idea). In addition, claim 1 recites, “determining a chemical reaction within the textual document; [and] extracting a plurality of chemical components from the chemical reaction.” Appeal Br. 19 (Claims App.). The Specification discloses the chemical component and the reaction knowledge bases are well-understood, routine, and conventional. Spec. ¶¶ 39 (“In yet another embodiment, the textual document may describe one or more known chemical reactions.” (emphasis added)), 71 (“For example, the knowledge base 506 may include an identification and description of all known periodic elements, all known common compounds, all known metabolic pathways, all known chemical and molecular properties, all known chemical pathway relationships, all known chemical targets, etc.” (emphases added)); see Content Extraction and Transmission, LLC v. Wells Fargo Bank, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (discussing that data collection, recognition, and storage are well-known). We discern nothing in claim 1 or the Specification suggesting that the additional elements are anything but the abstract idea itself or generic computer components performing well-understood, routine, Appeal 2021-000288 Application 15/237,516 17 and conventional activities. See Trading Tech., 921 F.3d at 1385 (quoted above). As a result, considering claim 1 as a whole, we determine that the additional elements recited in claim 1 do not provide “a specific limitation or combination of limitations that are not well-understood, routine, conventional activity in the field.” 101 Guidance, 84 Fed. Reg. at 56. Accordingly, we agree with the Examiner that claim 1 does not have an inventive concept. Based on the record before us, we are not persuaded the Examiner errs in determining claim 1 is directed to patent ineligible subject matter without significantly more. Appellant does not challenge the patent ineligibility rejection of the other independent claims, separately. Therefore, we sustain the Examiner’s rejection of claims 1, 11, and 20 as directed to patent ineligible subject matter. II. Obviousness As noted above, the Examiner rejects claim 1 as obvious over the combined teachings of Lawson, Bunin, O’Boyle, and Paxson. Final Act. 3- 5. The Examiner finds that Lawson teaches or suggests the majority of the limitations of claim 1. Id. at 3 (citing Lawson ¶¶ 49, 67, 72, 74). However, the Examiner finds that Lawson does not teach or suggest calculating one or more scores, utilizing the characteristics, where the one or more scores are calculated for one or more of the plurality of chemical components, and include a reactiveness score that is calculated by analyzing an aromaticity and aqueousness of the chemical component, in addition to analyzing one or more previous successful reactions involving the chemical component; . . . and storing the one or more scores as annotation metadata in association with the object. Appeal 2021-000288 Application 15/237,516 18 Id. at 3-4. Nevertheless, the Examiner finds Bunin teaches or suggests, “calculating one or more scores, utilizing the characteristics, where the one or more scores are calculated for one or more of the plurality of chemical components.” Final Act. 4 (citing Bunin ¶ 85). In particular, Bunin discloses: After the current logical reaction is completed and incorporated into the current record, a decision is made as to whether or not another reaction is to be added to the protocol. . . . If no more reactions are to be added, then the current protocol is completed and another decision is made as to whether or not another protocol is to be created in the record. Bunin ¶ 85 (emphases added). In addition, the Examiner finds O’Boyle teaches or suggests the scores “include a reactiveness score that is calculated by analyzing an aromaticity and aqueousness of the chemical component, in addition to analyzing one or more previous successful reactions involving the chemical component.” Final Act. 4 (citing O’Boyle, Pg. 3 (“Bond Perception and Atom Typing”), Para. 3). In particular, O’Boyle discloses: After bond connectivity is determined, if needed or requested by the user, bond order perception is performed on the basis of bond angles and geometries. The method is similar to that proposed by Roger Sayle [20] and uses the average bond angle around an un-typed atom to determine sp and sp2 hybridized centers. 5-membered and 6-membered rings are checked for planarity to estimate aromaticity. Finally, atoms marked as unsaturated are checked for an unsaturated neighbor to give a double or triple bond. After this initial atom typing, known functional groups are matched, followed by aromatic rings, followed by remaining unsatisfied bonds based on a set of heuristics for short bonds, atomic electronegativity, and ring membership. Appeal 2021-000288 Application 15/237,516 19 O’Boyle, Pg. 3, Para. 3 (emphases added). The Examiner further finds a person of ordinary skill in the relevant art would have had reason to combine the teachings of Bunin and O’Boyle with those of Lawson to achieve the “calculating” step of claim 1 that is missing from Lawson. Final Act. 4. In particular, the Examiner finds a person of ordinary skill in the relevant art would have had reason to combine “the chemical data extraction method of Lawson et al. with the reaction database of Bunin et al. in order to identify similar compounds.” Id. (citing Bunin ¶ 7). Further, the Examiner finds a person of ordinary skill in the relevant art would have had reason to combine “the chemical data extraction method of Lawson et al. with the analysis method of O’Boyle et al. in order to convert and analyze data about molecular models.” Id. (citing O’Boyle, Pg. 1 (“Introduction”), Para. 3). The Examiner also finds neither Lawson nor Bunin nor O’Boyle, alone or in combination, teaches or suggests “storing the one or more scores as annotation metadata in association with the object.” Final Act. 4. However, the Examiner finds Paxson teaches or suggests this limitation. Id. (citing Paxson, 11:36-41). In particular, Paxson discloses: The annotation tool 416 allows users to add notes and annotations to various parts of the block diagram. The annotations may appear in a notes or annotation column when the model is viewed in a tabular format. When viewed in graphical format, the notes may appear close to annotated block or they may be hidden. Paxson, 11:36-41 (emphasis added). Although Paxson discloses storing annotations regarding chemical reactions, Paxson does not expressly disclose storing those annotations as metadata. Further, the Examiner finds a person of ordinary skill in the relevant art would have had reason to Appeal 2021-000288 Application 15/237,516 20 combine “the chemical data extraction method of Lawson et al. with the reaction analysis method of Paxson et al. on order to correlate information from multiple sources” to achieve the methods of claim 1. Id. (citing Paxson, 1:52-2:2). Appellant challenges the rejection of claim 1 for two reasons. Appeal Br. 15-17; Reply Br. 8-11. For the reasons given below, we do not sustain the obviousness rejection of claim 1. First, Appellant contends the Examiner fails to show that the combination of Bunin and O’Boyle teaches or suggests the “calculating” step of claim 1. Appeal Br. 15-16. In particular, Appellant contends “Bunin discloses that ‘[a]fter [a] current logical reaction is completed [it is] incorporated into the current record . . .,’” and “O’Boyle discloses that ‘bond order perception is performed on the basis of bond angles and geometries,’ where ‘5-membered and 6-membered rings are checked for planarity to estimate aromaticity.’” Id. at 15. Appellant contends the Examiner fails to show that the combination of Bunin and O’Boyle teaches or suggests “calculating one or more scores, utilizing the characteristics, where the one or more scores . . . include a reactiveness score that is calculated by analyzing an aromaticity and aqueousness of the chemical component, in addition to analyzing one or more previous successful reactions involving the chemical component,” as recited in claim 1. Id. As noted above, the Examiner does not direct us to where Bunin teaches or suggests calculating a score. See Bunin ¶ 85. Bunin discloses deciding whether or not to add a reaction to the protocol, but not calculating a score, as asserted by the Examiner. Appeal 2021-000288 Application 15/237,516 21 Moreover, although O’Boyle discloses “estimat[ing] aromaticity,” the Examiner fails to show where O’Boyle teaches or suggests a “reactiveness score” calculated by analyzing both “aromaticity and aqueousness of the chemical component” and “one or more previous successful reactions.” Final Act. 4, 12 (citing O’Boyle, Pg. 3 (“Bond Perception and Atom Typing”), Para. 3). Rather, O’Boyle discloses matching known functional groups, aromatic rings, and remaining unsatisfied bonds based on a set of heuristics for short bonds, atomic electronegativity, and ring membership. In response to Appellant’s challenge, the Examiner substantially repeats the response to arguments presented in the Final Office Action. Ans. 3-4; cf. Final Act. 12. The Examiner’s response presents no new findings or new evidence supporting the previous findings and does not overcome the Appellant’s challenge. Thus, we are persuaded the Examiner errs in finding the combination of Bunin and O’Boyle teaches or suggests the “calculating” step of claim 1. Second, Appellant contends the Examiner fails to show that Paxson teaches or suggests the second “storing” step of claim 1. Appeal Br. 16-17. The Examiner finds, Lawson et al. as modified by Bunin et al., O'Boyle et al. and Paxson et al. substantially discloses storing the one or more scores as annotation metadata in association with the object (Paxson et al. col11 ln36-41, stores information as annotation metadata associated with an object, Bunin et al. para[0058], stores information about chemical reaction as annotation). Ans. 4; see Final Act. 13. Because the “storing” step recites the storing of the calculated “scores as annotation metadata,” the Examiner’s failure to show that Bunin and O’Boyle teach or suggest “calculating one or more scores” means that Paxson’s teachings in combination with those of Bunin Appeal 2021-000288 Application 15/237,516 22 and O’Boyle cannot teach or suggest “storing the one or more scores as annotation metadata.” Reply Br. 10 (“However, adding notes and above annotations to parts of a block diagram, as in Paxson, and including annotations within chemical information, as in Bunin, fails to teach ‘storing the one or more scores as annotation metadata in association with the object’ (emphasis added), as claimed by appellant.”); see Appeal Br. 16. Thus, we need not decide whether the Examiner shows that Paxson teaches or suggests “annotation metadata” to be persuaded that the Examiner fails to show that the combined teachings of the applied references teach or suggest the second “storing” step, as recited in claim 1. For the above reasons, we are persuaded the Examiner fails to show that claim 1 is obvious over the combined teachings of Lawson, Bunin, O’Boyle, and Paxson; and we do not sustain the obviousness rejection of claim 1. Appellant challenges the obviousness rejections of claims 3-11, 13-15, and 17-22 for the same reasons as claim 1. See Appeal Br. 17-18; Ans. 4, Reply Br. 11-12. Moreover, although the Examiner rejects claim 19 as obvious over the combined teachings of Lawson, Bunin, O’Boyle, Paxson, and Hawizy, the Examiner does not find that Hawizy teaches or suggests the limitations of claim 1 that are not taught or suggested by the combined teachings of Lawson, Bunin, O’Boyle, and Paxson. Therefore, we also do not sustain the obviousness rejections of claims 3-11, 13-15, and 17-22. NEW GROUND OF REJECTION OF CLAIM 3 UNDER 37 C.F.R. § 41.50(B) We make the following new grounds of rejection: Appeal 2021-000288 Application 15/237,516 23  Claim 3 is rejected under 35 U.S.C. § 101, as directed to a judicial exception without significantly more. Claim 3 depends directly from rejected independent claim 1 and recites: The computer-implemented method of Claim 1, wherein determining the chemical reaction within the textual document includes: parsing the textual document and identifying the plurality of chemical components, associated reaction terms, and relationships within the textual document; identifying one or more data corpora including known chemical information; and analyzing the one or more data corpora to determine matching chemical components, reaction terms, and relationships to determine a viability of the chemical reaction. Appeal Br. 19 (Claims App.) We analyze the patent eligibility of this claim under 35 U.S.C. § 101 according to the 101 Guidance in the same manner that we analyzed the Examiner’s rejection of claims 1, 11, and 20 above. See supra Section I. A. Step 1 As noted above, Appellant’s independent claim 1 and its associated dependent claims are directed to methods (i.e., a “process). See supra Section I.C. Thus, claim 3 is directed to recognized statutory category. B. Step 2A 1. Abstract Idea As noted above, the Examiner finds that independent claim 1 recites an abstract idea, namely, a mental process. See supra Section I.D.1. (“Step 2A, Prong One”). We find that dependent claim 3 also recites a Appeal 2021-000288 Application 15/237,516 24 mental process. 101 Guidance, 84 Fed. Reg. at 52 (“Mental processes [are] concepts performed in the human mind (including an observation, evaluation, judgment, opinion).”). Claim 3 generally recites, in claim 1’s step of “determining the chemical reaction within the textual document,” reading the document and identifying information disclosed in the document (“parsing the textual document and identifying the plurality of chemical components, associated reaction terms, and relationships within the textual document”), identifying a compilation of data including known information (“identifying one or more data corpora including known chemical information”); and analyzing the compilation of data to determine information about the chemical reaction (“analyzing the one or more data corpora8 to determine matching chemical components, reaction terms, and relationships to determine a viability of the chemical reaction”). Thus, dependent claim 3 recites methods for reading documents to identify information about a chemical reaction, identifying sources of known chemical information, and analyzing the identified information using the known chemical information. See Content Extraction, 776 F.3d at 1347 (discussing that data collection, recognition, and storage are well-known). The Specification provides little in the way of explanation of the limitations of this claim apart from repeating the language of claim 3. Spec. ¶ 41. Thus, we discern nothing in claim 3 that prevents the recited method “from being performed by a human, mentally or with pen and paper.” 8 See, e.g., RANDOM HOUSE WEBSTER’S COLLEGE DICTIONARY, 298, 299 (2nd Random House ed. 1999) (“corpus” (plural: “corpora”) is “a large or complete collection of writings”). Appeal 2021-000288 Application 15/237,516 25 Intellectual Ventures I, 838 F.3d at 1318; see Electric Power Group, 830 F.3d 1355 (quoted above). Therefore, we determine claim 3 recites an abstract idea, namely, a mental process. 2. Practical Application As noted above, to determine whether the claims integrate the abstract idea into a practical application, we consider the additional elements recited in claims, i.e., those components, features, limitations, or steps that the claim recites beyond the abstract idea itself. 101 Guidance, 84 Fed. Reg. at 55 n.24. Here, however, claim 3 recites little if anything beyond the abstract idea and, in particular, little if anything beyond the additional elements of claim 1, which did not rise to a practical application of claim 1. See supra Section I.D.2. (“Step 2A, Prong Two”). The significant additional element specifically recited in claim 3 that was not recited in claim 1 is “identifying one or more data corpora including known chemical information; and analyzing the one or more data corpora . . ..” Appeal Br. 19 (Claims App.). As discussed above, however, even if consulting existing sources of known information increased the speed or efficiency of the analysis of information read in a document, such improvements would not integrate the recited abstract idea of claim 3 into a practical application. In view of Appellant’s claim language and Specification, we do not determine that claim 3 recites: (i) an improvement to the functioning of a computer; (ii) an improvement to another technology or technical field; (iii) an application of the abstract idea with, or by use of, a particular machine; Appeal 2021-000288 Application 15/237,516 26 (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. See MPEP § 2106.05(a)-(c), (e)-(h). Thus, claim 3 does not integrate the judicial exception into a practical application, and we conclude the claim is directed to an abstract idea. C. Step 2B Finally, we consider whether claim 3 has an inventive concept, that is, whether any additional claim elements “‘transform the nature of the claim’ into a patent-eligible application.” Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S. at 78, 79). This requires us to evaluate whether the additional claim elements add “a specific limitation or combination of limitations that are not well-understood, routine, conventional activity in the field” or “simply append[] well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality.” 101 Guidance, 84 Fed. Reg. at 56. As discussed above, claim 3 merely recites the additional elements of identifying and utilizing known data sources to analyze information read in a document. Consequently, we find the additional elements recited in claim 3 are well-understood, routine, and conventional and that they are not significantly more than the identified, abstract idea. See Content Extraction, 776 F.3d at 1347-48 (“For the role of a computer in a computer- implemented invention to be deemed meaningful in the context of this analysis, it must involve more than performance of ‘well-understood, Appeal 2021-000288 Application 15/237,516 27 routine, [and] conventional activities previously known to the industry.’” (internal citation omitted)). In addition to this, the additional elements constitute the abstract idea, itself, namely, the mental process identified under Step 2A, Prong One. “The abstract idea itself cannot supply the inventive concept.” Trading Tech., 921 F.3d at 1385. As a result, considering claim 3 as a whole, we determine that the additional elements recited in claim 3 do not provide “a specific limitation or combination of limitations that are not well-understood, routine, conventional activity in the field.” 101 Guidance, 84 Fed. Reg. at 56. Therefore, claim 3 does not have an inventive concept. Accordingly, we reject dependent claim 3 under 35 U.S.C. § 101, as directed to a judicial exception without significantly more. If prosecution resumes, we leave it for the Examiner to assess the patent eligibility of the remaining dependent claims under 35 U.S.C. § 101. CONCLUSION 1. The Examiner does not err in rejecting independent claims 1, 11, and 20 under 35 U.S.C. § 101 as directed to a judicial exception without significantly more. 2. The Examiner errs in rejecting: (a) claims 1, 3-11, 13-15, 17, 18, and 20-22 under 35 U.S.C. § 103 as obvious over the combined teachings of Lawson, Bunin, O’Boyle, and Paxson; and (b) claim 19 under 35 U.S.C. § 103 as obvious over the combined teachings of Lawson, Bunin, O’Boyle, Paxson, and Hawizy. Appeal 2021-000288 Application 15/237,516 28 3. We enter a new ground rejecting dependent claim 3 under 35 U.S.C. § 101 as directed to a judicial exception without significantly more. DECISION We affirm the patent eligibility rejection of claims 1, 11, and 20; reverse the obviousness rejections of claims 3-10, 13-15, 17-19, 21, and 22; and enter a new ground rejecting dependent claim 3 as directed to a judicial exception without significantly more. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed New Ground 1, 11, 20 101 Patent Eligibility 1, 11, 20 3 1, 3-11, 13-15, 17, 18, 20-22 103 Lawson, Bunin, O’Boyle, Paxson 1, 3-11, 13-15, 17, 18, 20-22 19 103 Lawson, Bunin, O’Boyle, Paxson, Hawizy 19 Overall Outcome 1, 11, 20 3-10, 13- 15, 17-19, 21, 229 3 TIME PERIOD FOR RESPONSE This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of 9 Like claim 16, each of claims 3-10, 13-15, 17-19, 21, and 22 depends directly from a patent ineligible base claim. See supra note 4. Appeal 2021-000288 Application 15/237,516 29 rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following 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. . .. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. . .. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. AFFIRMED-IN-PART; 37 C.F.R. § 41.50