Janet Tibberts

Patent Trials and Appeals Board

Jun 10, 2020

14930643 - (D) (P.T.A.B. Jun. 10, 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.
14/930,643 11/02/2015 Janet Lynn Tibberts Tibberts-2 4954
32132 7590 06/10/2020
LAMORTE & ASSOCIATES P.C.
P.O. BOX 434
YARDLEY, PA 19067
EXAMINER
MCCORMICK, GABRIELLE A
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
06/10/2020 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):
mail@uspatlaw.com
malamorte@verizon.net
uspatlaw1@verizon.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parteJANET LYNN TIBBERTS
Appeal 2020-000138
Application 14/930,643
Technology Center 3600
Before JOHNNY A. KUMAR, LARRY J. HUME, and
MATTHEW J. MCNEILL, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision rejecting claims 1–6, and 8–17, which are all rejections
pending in the application. Appellant has canceled claim 7. See Final
Act. 2. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. The subject application was not assigned. Accordingly, the Real
Party in Interest is the inventor Janet Tibberts. Appeal Br. 2.
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STATEMENT OF THE CASE2
The claims are directed to a system and method of scheduling classes
for a timely matriculation. See Spec. (Title). In particular, Appellant’s
disclosed embodiments and claimed invention “relate[] to software
applications that are used to schedule classes in an institution of learning,
such as a college or university. More particularly, the present invention
relates to systems that track a student’s progress in matriculating toward a
selected degree in order to achieve the degree in the shortest, most cost
efficient manner.” Spec. 1. 6–13.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
Appeal (emphases added to contested prior-art limitations):
1. A system for scheduling courses at an institution,
wherein said institution offers a variety of courses in different
semesters and has various course requirements for graduation,
said system comprising:
an administrative computer that maintains a computer
database, wherein said computer database contains said variety
of courses and said course requirements for graduation;
a computer network for providing access to said
administrative computer to students of said institution;
a student computer accessible by a student that has a
major, a graduation date, and has previously completed some of

2 Our decision relies upon Appellant’s Appeal Brief (“Br.,” filed
Mar. 25, 2019); Examiner’s Answer (“Ans.,” mailed July 23, 2019); Final
Office Action (“Final Act.,” mailed Sept. 5, 2018); and the original
Specification (“Spec.,” filed Nov. 2, 2015). Appellant did not file a Reply
Brief in response to the factual findings and legal conclusions in the
Examiner’s Answer.
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a variety of courses offered by said institution, wherein said
student computer accesses said computer database through said
computer network, and wherein said student computer has a
display;
said student computer being programmed to schedule
courses for an upcoming semester, wherein said student
computer initially filters said variety of courses available for
selection by eliminating courses that have been completed by
the student, eliminates courses that do not serve as one of said
course requirements for said major of the student, and
eliminates courses that have prerequisites yet unattained by the
student, therein creating filtered course offerings;
wherein the student uses the student computer to select
courses from said filtered course offerings, therein creating
scheduled courses, wherein said student computer automatically
updates said filtered course offerings after each selection of a
course to eliminate any of said variety of courses that conflict in
date and time with scheduled courses; and
wherein said student computer generates a graphical
indication on said display that indicates whether or not said
scheduled courses are sufficient to complete said course
requirements for graduation by said graduation date and how
many credits should be taken in the semester being scheduled to
complete said course requirements for graduation by said
graduation date.
REFERENCES
The prior art relied upon by the Examiner as evidence is:
Name Reference Date
Shaver US 2006/0105315 A1 May 18, 2006
Adams US 2010/0223194 A1 Sept. 2, 2010
Liu et al. (“Liu”) US 2016/0089572 A1 Mar. 31, 2016
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REJECTIONS3
R1. Claims 1–6, and 8–17 stand rejected under 35 U.S.C. § 101
because the claimed invention is directed to a judicial exception (i.e., a law
of nature, a natural phenomenon, or an abstract idea) without significantly
more. Final Act. 2.
R2. Claims 1–6, and 8–9 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Adams, Shaver, and Liu. Final
Act. 5.
R3. Claims 10, and 13–15 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Adams. Final Act. 7.
R4. Claims 11 and 12 stand rejected under 35 U.S.C. § 103 as being
unpatentable over the combination of Adams and Shaver in view of the
Examiner’s taking of Official Notice. Final Act. 8.
R5. Claim 16 stands rejected under 35 U.S.C. § 103 as being
unpatentable over the combination of Adams and Shaver. Final Act. 9.
R6. Claim 17 stands rejected under 35 U.S.C. § 103 as being
unpatentable over the combination of Adams and Shaver in view of the
Examiner’s taking of Official Notice. Id.

3 We note the Examiner has withdrawn the indefiniteness rejection of
claims 1–6, 8, 9, and 16–17 under 35 U.S.C. § 112(b). See generally
Advisory Action mailed Mar. 1, 2019.
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CLAIM GROUPING
Based on Appellant’s arguments (Br. 6–18) and our discretion under
37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of patent-ineligible subject
matter Rejection R1 of claims 1–6, and 8–17 on the basis of representative
claim 1; we decide the appeal of obviousness Rejection R2 of claims 1–6
and 8–9 on the basis of representative claim 1; we decide the appeal of
obviousness Rejection R3 of claims 10 and 13–15 on the basis of
representative claim 10; and we decide the appeal of obviousness Rejection
R4 of claims 11 and 12 on the basis of representative claim 11.
We address Rejections R5 and R6 of remaining claims 16, and 17,
infra.4
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellant. To the extent Appellant has not
advanced separate, substantive arguments for particular claims, or other
issues, such arguments are waived. 37 C.F.R. § 41.37(c)(1)(iv).
We disagree with Appellant’s arguments with respect to claims 1–6
and 8–17 and, unless otherwise noted, we incorporate by reference herein
and adopt as our own: (1) the findings and reasons set forth by the Examiner

4 “Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately.” 37 C.F.R. § 41.37(c)(1)(iv).
In addition, when Appellant does not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
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in the action from which this appeal is taken, and (2) the reasons and
rebuttals set forth in the Examiner’s Answer in response to Appellant’s
arguments. We highlight and address specific findings and arguments
regarding claims 1 and 10 for emphasis as follows.
1. § 101 Rejection R1 of Claims 1–6, 8–17
Issue 1
Appellant argues (Br. 7–9) the Examiner’s rejection of claim 1 under
35 U.S.C. § 101 as being directed to patent-ineligible subject matter is in
error. These contentions present us with the following issue:
Under the USPTO’s Revised Guidance, informed by our governing
case law concerning 35 U.S.C. § 101, is claim 1 patent-ineligible under
§ 101?
Principles of Law
A. 35 U.S.C. § 101
An invention is patent-eligible if it is a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.5
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. Mayo Collaborative Servs. v. Prometheus Labs.,

5 This threshold analysis of whether a claim is directed to one of the four
statutory categories of invention, i.e., a process, machine, manufacture, or
composition of matter, is referred to as “Step 1” in the USPTO’s patent-
eligibility analysis under § 101. MPEP § 2106.
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Inc., 566 U.S. 66, 70 (2012) (brackets in original) (citing Diamond v. Diehr,
450 U.S. 175, 185 (1981)).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014)
(citing Mayo, 566 U.S. at 75–77). In accordance with that framework, we
first determine what concept the claim is “directed to.” See Alice, 573 U.S.
at 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” (Diehr, 450 U.S. at 191); “tanning,
dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores”
(id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267–68 (1853)));
and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v.
Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held “[a] claim drawn to subject matter otherwise statutory
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does not become nonstatutory simply because it uses a mathematical
formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We view
respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, and this principle cannot be circumvented by attempting
to limit the use of the formula to a particular technological environment.”
Id. (citation omitted) (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.”).
Abstract ideas may include, but are not limited to, fundamental
economic practices, methods of organizing human activities, and
mathematical formulas or relationships. Alice, 573 U.S. at 217–21. Under
this guidance, we must therefore ensure at step one that we articulate what
the claims are directed to with enough specificity to ensure the step one
inquiry is meaningful. Id. at 217 (“[W]e tread carefully in construing this
exclusionary principle lest it swallow all of patent law.”).
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 (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
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[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. USPTO Revised Guidance
The PTO published revised guidance in the Federal Register
concerning the application of § 101. 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50 (January 7, 2019) (hereinafter
“Revised Guidance”) (https://www.govinfo.gov/content/pkg/FR-2019-01-
07/pdf/2018-28282.pdf).
Under the Revised 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);6 and
(2) additional elements that integrate the judicial
exception into a practical application (see Manual for Patent
Examining Procedure (“MPEP”) §§ 2106.05(a)–(c), (e)–(h)).7
See Revised Guidance 52–53.
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:

6 Referred to as “Revised Step 2A, Prong 1” in the Revised Guidance
(hereinafter “Step 2A(i)”).
7 Referred to as “Revised Step 2A, Prong 2” in the Revised Guidance
(hereinafter “Step 2A(ii)”).
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(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.8
See Revised Guidance 56.
Step 2A(i) – Abstract Idea
Informed by our judicial precedent, the Revised Guidance extracts and
synthesizes key concepts identified by the courts as abstract ideas to explain
that the abstract idea exception includes the following groupings of subject
matter, when recited as such in a claim limitation:
(a) Mathematical concepts—mathematical relationships,
mathematical formulas or equations, mathematical calculations;
(b) Certain methods of organizing human activity —
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); and
(c) Mental processes—concepts performed in the human
mind (including an observation, evaluation, judgment, opinion).
Revised Guidance 52 (footnotes omitted).
Under the Revised Guidance, if the claim does not recite a judicial
exception (a law of nature, natural phenomenon, or subject matter within the

8 Items (3) and (4) continue to be collectively referred to as “Step 2B” of the
Supreme Court’s two-step framework, described in Mayo and Alice.
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enumerated groupings of abstract ideas above), then the claim is patent-
eligible at Step 2A(i). This determination concludes the eligibility analysis,
except in situations identified in the Revised Guidance.9
However, if the claim recites a judicial exception (i.e., an abstract idea
enumerated above, a law of nature, or a natural phenomenon), the claim
requires further analysis for a practical application of the judicial exception
in Step 2A(ii).
Step 2A(ii) – Practical Application
If a claim recites a judicial exception in Step 2A(i), we determine
whether the recited judicial exception is integrated into a practical
application of that exception in Step 2A(ii) by: (a) identifying whether there
are any additional elements recited in the claim beyond the judicial
exception(s); and (b) evaluating those additional elements individually and
in combination to determine whether they integrate the exception into a
practical application.
The seven identified “practical application” sections of the MPEP,10
cited in the Revised Guidance under Step 2A(ii), are:

9 In the rare circumstance in which an examiner believes a claim limitation
that does not fall within the enumerated groupings of abstract ideas should
nonetheless be treated as reciting an abstract idea, the procedure described in
of the Guidance for analyzing the claim should be followed. See Revised
Guidance, Section III.C.
10 See MPEP §§ 2106.05(a)–(c), (e)–(h). Citations to the MPEP herein refer
to revision [R-08.2017]. Sections 2106.05(a), (b), (c), and (e) are indicative
of integration into a practical application, while §§ 2106.05(f), (g), and (h)
relate to limitations that are not indicative of integration into a practical
application.
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(1) MPEP § 2106.05(a) Improvements to the Functioning of
a Computer or To Any Other Technology or Technical
Field
(2) MPEP § 2106.05(b) Particular Machine
(3) MPEP § 2106.05(c) Particular Transformation
(4) MPEP § 2106.05(e) Other Meaningful Limitations
(5) MPEP § 2106.05(f) Mere Instructions To Apply An
Exception
(6) MPEP § 2106.05(g) Insignificant Extra-Solution Activity
(7) MPEP § 2106.05(h) Field of Use and Technological
Environment
See Revised Guidance 55.
If the recited judicial exception is integrated into a practical
application as determined under one or more of the MPEP sections cited
above, then the claim is not directed to the judicial exception, and the patent-
eligibility inquiry ends. See Revised Guidance 54. If not, then analysis
proceeds to Step 2B.
Step 2B – “Inventive Concept” or “Significantly More”
Under our reviewing courts’ precedent, it is possible that a claim that
does not “integrate” a recited judicial exception under Step 2A(ii) is
nonetheless patent eligible. For example, the claim may recite additional
elements that render the claim patent eligible even though one or more claim
elements may recite a judicial exception.11 The Federal Circuit has held
claims eligible at the second step of the Alice/Mayo test (USPTO Step 2B)
because the additional elements recited in the claims provided “significantly
more” than the recited judicial exception (e.g., because the additional

11 See, e.g., Diehr, 450 U.S. at 187.
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elements were unconventional in combination).12 Therefore, if a claim has
been determined to be directed to a judicial exception under Revised Step
2A, we must also evaluate the additional elements individually and in
combination under Step 2B to determine whether they provide an inventive
concept (i.e., whether the additional elements amount to significantly more
than the exception itself).13
Under the Revised Guidance, we must consider in Step 2B whether an
additional element or combination of elements: (1) “Adds a specific
limitation or combination of limitations that are not well-understood,
routine, conventional activity in the field, which is indicative that an
inventive concept may be present;” or (2) “simply appends well-understood,
routine, conventional activities previously known to the industry, specified
at a high level of generality, to the judicial exception, which is indicative
that an inventive concept may not be present.” See Revised Guidance,
Section III.B.14

12 See, e.g., Amdocs, Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1300,
1304 (Fed. Cir. 2016); BASCOM Global Internet Services, Inc. v. AT&T
Mobility LLC, 827 F.3d 1341, 1349–52 (Fed. Cir. 2016); DDR Holdings v.
Hotels.com, L.P., 773 F.3d 1245, 1257–59 (Fed. Cir. 2014).
13 The patent eligibility inquiry may contain underlying issues of fact.
Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325
(Fed. Cir. 2016). In particular, “[t]he question of whether a claim element or
combination of elements is well-understood, routine and conventional to a
skilled artisan in the relevant field is a question of fact.” Berkheimer v. HP
Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018).
14 In accordance with existing Step 2B guidance, an Examiner’s finding that
an additional element (or combination of elements) is well understood,
routine, conventional activity must be supported with at least one of the four
specific types of evidence required by the USPTO Berkheimer
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In the Step 2B analysis, an additional element (or combination of
elements) is not well-understood, routine or conventional unless the
examiner finds an evidentiary basis, and expressly supports a rejection in
writing with, one or more of the following:
1. A citation to an express statement in the
specification or to a statement made by an applicant during
prosecution that demonstrates the well-understood, routine,
conventional nature of the additional element(s). . . .
2. A citation to one or more of the court decisions
discussed in MPEP § 2106.05(d)(II) as noting the well-
understood, routine, conventional nature of the additional
element(s).
3. A citation to a publication that demonstrates the
well-understood, routine, conventional nature of the additional
element(s). . . .
4. A statement that the examiner is taking official
notice of the well-understood, routine, conventional nature of
the additional element(s). . . .
See Berkheimer Memo 3–4.
If the Examiner or the Board determines under Step 2B that the
element (or combination of elements) amounts to significantly more than the
exception itself, the claim is eligible, thereby concluding the eligibility
analysis.

Memorandum, as shown above. For more information concerning evaluation
of well-understood, routine, conventional activity, see MPEP § 2106.05(d),
as modified by the USPTO Berkheimer Memorandum (USPTO
Commissioner for Patents Memorandum dated Apr. 19, 2018, “Changes in
Examination Procedure Pertaining to Subject Matter Eligibility, Recent
Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.)” (hereinafter
“Berkheimer Memo”).
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However, if a determination is made that the element and combination
of elements do not amount to significantly more than the exception itself, the
claim is ineligible under Step 2B, and the claim should be rejected for lack of
subject matter eligibility.
Analysis
Step 1 – Statutory Category
Claim 1, as a system (machine) claim, recites one of the enumerated
categories of eligible subject matter in 35 U.S.C. § 101. Therefore, the issue
before us is whether it is directed to a judicial exception without
significantly more.
Step 2A(i): Does the Claim Recite a Judicial Exception?
The Examiner determined that the limitations of claim 1 “recite a
process that, under its broadest reasonable interpretation, covers
performance of the limitations in the mind but for the recitation of generic
computer components. . . .[because] nothing in the claim elements precludes
the steps from practically being performed in the mind.” Final Act. 4.
Further, “creating a schedule of courses for a semester is a mental concept
(and a certain method of organizing human activities (i.e., a way to create a
course schedule for a student)) that students and/or guidance counsellors
have traditionally performed.” Final Act. 4–5.
We conclude claim 1 does not recite the judicial exceptions of either
natural phenomena or laws of nature. We evaluate, de novo, whether
claim 1 recites an abstract idea based upon the Revised Guidance.
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First, we look to the Specification to provide context as to what the
claimed invention is directed to. In this case, the Specification discloses that
the invention “relates to software applications that are used to schedule
classes in an institution of learning, such as a college or university. More
particularly, the present invention relates to systems that track a student’s
progress in matriculating toward a selected degree in order to achieve the
degree in the shortest, most cost efficient manner.” Spec. 1, ll. 6–13.
Appellant’s Abstract describes the invention as:
A system and software for scheduling courses at an
institution that offers a variety of courses in different semesters.
Scheduling software is provided that is accessible to a student
through a computer network. The scheduling software filters
courses being offered by eliminating courses that have been
previously completed by the student. Courses that do not serve
as one of the student’s course requirements are also filtered.
Likewise, courses that have prerequisites yet unattained by the
student are filtered. After the initial filtering process, the
student is presented with filtered course offerings. The student
selects courses from the filtered course offerings, therein
creating scheduled courses. The scheduling software
automatically updates the filtered course offerings after each
selection of a course to eliminate any of the offered courses that
conflict in date and time with scheduled courses.
Spec. 28 (Abstract).
In TABLE I below, we identify in italics the specific claim limitations
in claim 1 that we conclude recite an abstract idea. We additionally identify
in bold the additional (non-abstract) claim limitations that are generic
computer components and techniques, and underline limitations representing
extra or post-solution activity:
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TABLE I
Independent Claim 1 Revised Guidance
A system for scheduling courses at
an institution, wherein said
institution offers a variety of
courses in different semesters and
has various course requirements
for graduation, said system
comprising:
A system (machine) is a statutory
subject matter class. See 35 U.S.C.
§ 101. See 35 U.S.C. § 101
(“Whoever invents or discovers any
new and useful process, machine,
manufacture, or composition of
matter, or any new and useful
improvement thereof, may obtain a
patent therefor, subject to the
conditions and requirements of this
title.”).
[L1] an administrative computer
that maintains a computer
database, wherein
[L1a] said computer database
contains said variety of courses
and said course requirements for
graduation;
A computer database is a generic
computer component.

Storing information (i.e., the
“database contains . . . courses and .
. . requirements”) is insignificant
extra-solution activity. 2019
Revised Guidance; see also MPEP
§ 2106.05(g).
[L2] a computer network for
providing access to said
administrative computer to
students of said institution;
A computer network is a generic
computer component or construct.
[L3] a student computer
accessible by a student that has a
major, a graduation date, and has
previously completed some of a
variety of courses offered by said
institution,
[L3a] wherein said student
computer accesses said computer
database through said computer
network, and
As claimed, a student computer is a
generic computer component.

See buySAFE, Inc. v. Google, Inc.,
765 F.3d 1350, 1355 (Fed. Cir.
2014) (computer receives and sends
information over a network).
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Independent Claim 1 Revised Guidance
[L4] wherein said student
computer has a display;
As claimed, a display is a generic
computer component.
said student computer being
programmed to
[L5] schedule courses for an
upcoming semester,

“[S]chedul[ing] courses” is an
abstract idea, i.e., a certain method
of organizing human activity in the
form of managing interactions
between people, including teaching.
See Revised Guidance 52.
[L6] wherein said student
computer initially filters said
variety of courses available for
selection by eliminating courses
that have been completed by the
student, eliminates courses that do
not serve as one of said course
requirements for said major of the
student, and eliminates courses
that have prerequisites yet
unattained by the student, therein
creating filtered course offerings;
“[I]nitially filter[ing] said variety of
courses” to eliminate courses that
have already been completed or
which have prerequisites is an
abstract idea, i.e., an observation,
evaluation, judgment, opinion”
which could be performed as a
mental process. See Revised
Guidance 52.
wherein the student uses the
student computer to
[L7] select courses from said
filtered course offerings, therein
creating scheduled courses,

“[S]elect[ing] courses from . . .
filtered course offerings . . . [and]
creating scheduled courses” is an
abstract idea, i.e., a certain method
of organizing human activity in the
form of managing interactions
between people, including teaching.
See Revised Guidance 52.
wherein said student computer
automatically
[L8] updates said filtered course
offerings after each selection of a

“[U]pdat[ing] . . . filtered course
offerings” to avoid scheduling
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Independent Claim 1 Revised Guidance
course to eliminate any of said
variety of courses that conflict in
date and time with scheduled
courses; and
conflicts is an abstract idea, i.e., an
observation, evaluation, judgment,
opinion” which could be performed
as a mental process. See Revised
Guidance 52.
wherein said student computer
[L9] generates a graphical
indication on said display that
indicates whether or not said
scheduled courses are sufficient
to complete said course
requirements for graduation by
said graduation date and how
many credits should be taken in
the semester being scheduled to
complete said course
requirements for graduation by
said graduation date.

Rendering information or an
indication for display is insignificant
post-solution activity. Revised
Guidance 55, n.31; see also MPEP
§ 2106.05(g).
Br. 19–20 (Claims App.)(bracketed labeling added).
Under the broadest reasonable interpretation standard,15 and aside
from any claimed computer-related aspects, we conclude limitations [L5]
through [L8] identified in TABLE I above, recite abstract functions that
would ordinarily be executed when selecting and scheduling courses at an

15 During prosecution, claims must be given their broadest reasonable
interpretation when reading claim language in light of the specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard,
we interpret claim terms using “the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant’s specification.” In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997).
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institution, whether initiated person-to-person, on paper, or using a
computer. See Final Act. 2.
We determine that claim 1, overall, recites certain methods of
organizing human activity in the form of managing personal relationships or
interactions between people, including following rules or instructions. This
type of activity, i.e., filtering and selecting courses to meet graduation
requirements, as recited in limitations L1 through L9, for example, and aside
from any computer-related aspects, includes longstanding conduct that
existed well before the advent of computers and the Internet, and could be
carried out by a human with pen and paper. See CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) (“That purely mental
processes can be unpatentable, even when performed by a computer, was
precisely the holding of the Supreme Court in Gottschalk v. Benson.”).
Thus, under Step 2A(i), while we generally agree with the Examiner
that claim 1 recites an abstract idea, we disagree as to the specific
categorization of the various abstract ideas recited in claim 1, and to the
specific characterization of claim 1, as a whole. In particular, we determine
that claim 1’s “system for scheduling courses at an institution, wherein said
institution offers a variety of courses in different semesters and has various
course requirements for graduation,” while reciting mental processes, may
overall be characterized as a certain method of organizing human activity, as
discussed above. 16 We conclude claim 1, under our Revised Guidance,

16 Our reviewing court recognizes that “[a]n abstract idea can generally be
described at different levels of abstraction.” Apple, Inc. v. Ameranth, Inc.,
842 F.3d 1229, 1240 (Fed. Cir. 2016). That need not and, in this case does
not, “impact the patentability analysis.” Id. at 1241. Further, “[t]he Board’s
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recites a judicial exception of selecting and scheduling courses at an
institution, i.e., a certain method of organizing human activity, and thus
recites an abstract idea.
Step 2A(ii): Judicial Exception Integrated into a Practical Application?
If the claims recite a judicial exception, as we conclude above, we
proceed to the “practical application” Step 2A(ii) in which we determine
whether the recited judicial exception is integrated into a practical
application of that exception by: (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception(s); and
(b) evaluating those additional elements individually and in combination to
determine whether they integrate the exception into a practical application.
As to the specific limitations, we find limitations [L1a] and [L3a]
recite insignificant extra-solution activity, and limitation [L9] recites
insignificant post solution activity. The Supreme Court guides that the
“prohibition against patenting abstract ideas ‘cannot be circumvented by’ . . .
adding ‘insignificant postsolution activity.’” Bilski, 561 U.S. at 610–11
(quoting Diehr, 450 U.S. at 191–92). On this record, we are of the view that
Appellant’s claims do not operate the recited generic computer components

slight revision of its abstract idea analysis does not impact the patentability
analysis.” Id. Moreover, merely combining several abstract ideas does not
render the combination any less abstract. RecogniCorp, LLC v. Nintendo
Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017) (“Adding one abstract idea (math)
to another abstract idea . . . does not render the claim non-abstract.”); see
also FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94 (Fed.
Cir. 2016) (determining the pending claims were directed to a combination
of abstract ideas).
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(limitations [L1] through [L4]) in an unconventional manner to achieve an
improvement in computer functionality. See MPEP § 2106.05(a).
We find each of the limitations of claim 1 either recite abstract ideas,
extra-solution activity, or generic computer components as identified in Step
2A(i), supra (see TABLE I), and none of the limitations integrate the judicial
exception of scheduling courses at an institution into a practical application
as determined under one or more of the MPEP sections cited above. The
claim as a whole merely uses instructions to implement the abstract idea on a
computer or, alternatively, merely uses a computer as a tool to perform the
abstract idea.
Under analogous circumstances, the Federal Circuit has held that
“[t]his is a quintessential ‘do it on a computer’ patent: it acknowledges that
[such] data . . . was previously collected, analyzed, manipulated, and
displayed manually, and it simply proposes doing so with a computer. We
have held such claims are directed to abstract ideas.” Univ. of Fla. Research
Found., Inc. v. Gen. Elec. Co., 916 F.3d 1363, 1367 (Fed. Cir. 2019); see
also Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1351 (Fed.
Cir. 2016) (“Though lengthy and numerous, the claims do not go beyond
requiring the collection, analysis, and display of available information in a
particular field, stating those functions in general terms, without limiting
them to technical means for performing the functions that are arguably an
advance over conventional computer and network technology.”).
We determine the claim as a whole merely uses instructions to
implement the abstract idea on a computer or, alternatively, merely uses a
computer as a tool to perform the abstract idea. Thus, on this record,
Appellant has not shown an improvement or practical application under the
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guidance of MPEP section 2106.05(a) (“Improvements to the Functioning of
a Computer or to Any Other Technology or Technical Field”) or section
2106.05(e)(“Other Meaningful Limitations”).
Therefore, we conclude the abstract idea is not integrated into a
practical application, and thus the claim is directed to the judicial exception.
Step 2B – “Inventive Concept” or “Significantly More”
If the claims are directed to a judicial exception, and not integrated
into a practical application, as we conclude above, we proceed to the
“inventive concept” step. For Step 2B we must “look with more specificity
at what the claim elements add, in order to determine ‘whether they identify
an “inventive concept” in the application of the ineligible subject matter’ to
which the claim is directed.” Affinity Labs, 838 F.3d at 1258.
In applying step two of the Alice analysis, our reviewing court guides
we must “determine whether the claims do significantly more than simply
describe [the] abstract method” and thus transform the abstract idea into
patentable subject matter. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709,
715 (Fed. Cir. 2014). We look to see whether there are any “additional
features” in the claims that constitute an “inventive concept,” thereby
rendering the claims eligible for patenting even if they are directed to an
abstract idea. Alice, 573 U.S. at 221. Those “additional features” must be
more than “well-understood, routine, conventional activity.” Mayo, 566
U.S. at 79.
Limitations referenced in Alice that are not enough to qualify as
“significantly more” when recited in a claim with an abstract idea include, as
non-limiting or non-exclusive examples: adding the words “apply it” (or an
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equivalent) with an abstract idea17; mere instructions to implement an
abstract idea on a computer18; or requiring no more than a generic computer
to perform generic computer functions that are well-understood, routine and
conventional activities previously known to the industry.19
Evaluating representative claim 1 under step 2 of the Alice analysis,
we conclude it lacks an inventive concept that transforms the abstract idea of
scheduling courses at an institution into a patent-eligible application of that
abstract idea.
The patent eligibility inquiry may contain underlying issues of fact.
Mortg. Grader, 811 F.3d at 1325. In particular, “[t]he question of whether a
claim element or combination of elements is well-understood, routine and
conventional to a skilled artisan in the relevant field is a question of fact.”
Berkheimer, 881 F.3d at 1368.
As required under Berkheimer, the Examiner provides a particular
type of evidence of the well-understood, routine, and conventional nature of
the recited computer function20 by concluding, “[t]he courts have recognized
the following computer functions as well-understood, routine, and
conventional functions when they are claimed in a merely generic manner

17 Alice, 573 U.S. at 221–23.
18 Alice, 573 U.S. at 222–23, e.g., simply implementing a mathematical
principle on a physical machine, namely a computer.
19 Alice, 573 U.S. at 225 (explaining using a computer to obtain data, adjust
account balances, and issue automated instructions involves computer
functions that are well-understood, routine, conventional activities).
20 See Berkheimer Memo 4 (“A citation to one or more of the court
decisions discussed in MPEP § 2106.05(d)(II) as noting the well-understood,
routine, conventional nature of the additional element(s)”).
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(e.g., at a high level of generality) or as insignificant extra-solution activity
(See MPEP 2106.05(d)).” Ans. 5, 6 (case law citations omitted).
As further evidence of the conventional nature of the recited
“administrative computer,” “student computer,” “computer network,”
“computer database,” and “display” in system claim 1; and similarly for
system claim 10, the Specification discloses:
Referring to Fig. 1, the system requirements of the
present invention system and software 10 are shown. Most
institutes of higher learning have computer databases that
contain information about the students enrolled at that
institution. The databases also contain information regarding
the courses offered by that institution and the matriculation
requirements for various majors and minors. The administration
computers 12 and the administration databases 14,
communicate with one or more servers 16. The servers 16 run
the server-end of specialized scheduling software 18 that will
be described. The software 18 run by the servers 16 is accessed
by students over a computer network 19 using student
computers 20, such as a laptop, a tablet computer, or smart
phone, that run the user end of the same software 18. The
students typically access the server 16 through a password
protected student portal. In this manner, only a student can
access his/her own information at any time.
Spec. 7, l. 12–8, l. 7.
Thus, because the Specification describes the additional elements in
general terms, without describing the particulars, we conclude the claim
limitations may be broadly but reasonably construed as reciting conventional
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computer components and techniques, particularly in light of Appellants’
Specification, as quoted above.21
With respect to this step of the analysis, Appellant argues:
Applicant claims that the computer system initially filters the
variety of courses available for selection by eliminating courses
that have been completed by the student, eliminates courses that
do not serve as one of the course requirements for the major of
the student, and eliminates courses that have prerequisites yet
unattained by the student. Using the near parallel case of
Bascom . . . as precedent, it can be seen that the present
invention claims a specific, discrete implementation of the
abstract idea of filtering content. Therefore, the [ ] claims pass
step two of Alice’s two-part framework.
Br. 8–9 (citing Bascom Global Internet Services, Inc. v. AT&T Mobility
LLC, 827 F.3d 1341, 1352 (Fed. Cir. 2016)).
In Bascom, the claims were directed to the inventive concept of
providing customizable Internet-content filtering which, under Step 2 of the
Alice analysis, was found to transform the abstract idea of filtering content
into a patent-eligible invention. Although the underlying idea of filtering
Internet content was deemed to abstract, under Step 2 of the Alice analysis,
the claims carved out a specific location for the filtering system, namely a
remote Internet service provider (ISP) server, and required the filtering
system to give users the ability to customize filtering for their individual
network accounts. Bascom, 827 F.3d at 1349.

21 Claim terms are to be given their broadest reasonable interpretation, as
understood by those of ordinary skill in the art and taking into account
whatever enlightenment may be had from the Specification. In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
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In response to Appellant’s reliance upon Bascom, supra, there is no
evidence of record to substantiate the assertion that the claims recite non-
conventional and non-generic arrangement of known, conventional
elements, as in Bascom. Moreover, we find no analogy between Appellant’s
claimed system for selecting and scheduling courses at an institution and the
Internet content filtering claims in Bascom.
The MPEP, based upon our precedential guidance, provides additional
considerations with respect to analysis of the well-understood, routine, and
conventional nature of the recited computer-related components.
Another consideration when determining whether a claim
recites significantly more than a judicial exception is whether
the additional elements amount to more than a recitation of the
words “apply it” (or an equivalent) or are more than mere
instructions to implement an abstract idea or other exception on
a computer. As explained by the Supreme Court, in order to
transform a judicial exception into a patent-eligible application,
the additional element or combination of elements must do
“‘more than simply stat[e] the [judicial exception] while adding
the words ‘apply it’”. Alice Corp. v. CLS Bank, 573 U.S. __,
134 S. Ct. 2347, 2357, 110 USPQ2d 1976, 1982-83 (2014)
(quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 72, 101 USPQ2d 1961, 1965). Thus, for example,
claims that amount to nothing more than an instruction to apply
the abstract idea using a generic computer do not render an
abstract idea eligible. Alice Corp., 134 S. Ct. at 2358, 110
USPQ2d at 1983. See also 134 S. Ct. at 2389, 110 USPQ2d at
1984 (warning against a § 101 analysis that turns on “the
draftsman’s art”) . . . .
In Alice Corp., the claim recited the concept of
intermediated settlement as performed by a generic computer.
The Court found that the recitation of the computer in the claim
amounted to mere instructions to apply the abstract idea on a
generic computer. 134 S. Ct. at 2359-60, 110 USPQ2d at 1984.
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The Supreme Court also discussed this concept in an earlier
case, Gottschalk v. Benson, 409 U.S. 63, 70, 175 USPQ 673,
676 (1972), where the claim recited a process for converting
binary-coded decimal (BCD) numerals into pure binary
numbers. The Court found that the claimed process had no
substantial practical application except in connection with a
computer. Benson, 409 U.S. at 71-72, 175 USPQ at 676. The
claim simply stated a judicial exception (e.g., law of nature or
abstract idea) while effectively adding words that “apply it” in a
computer. Id.
MPEP § 2106.05(f) (“Mere Instructions To Apply An Exception”).
With respect to the Step 2B analysis, we conclude, similar to Alice, the
recitation of a “system for selecting and scheduling courses at an institution”
that includes an “administrative computer,” “student computer,” “computer
network,” “computer database,” and “display,” as argued by Appellants, and
similarly for system claim 10, is simply not enough to transform the patent-
ineligible abstract idea here into a patent-eligible invention under Step 2B.
See Alice, 573 U.S. at 221 (“[C]laims, which merely require generic
computer implementation, fail to transform [an] abstract idea into a patent-
eligible invention.”).
We conclude the claims fail the Step 2B analysis because claim 1, in
essence, merely recites various computer-based elements along with no
more than mere instructions to implement the identified abstract idea using
the computer-based elements.
Therefore, in light of the foregoing, we conclude, under the Revised
Guidance, that each of Appellant’s claims 1–6 and 8–17, considered as a
whole, is directed to a patent-ineligible abstract idea that is not integrated
into a practical application and does not include an inventive concept.
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Accordingly, we sustain the Examiner’s § 101 rejection of independent
claim 1, and grouped claims 2–6 and 8–17 which fall therewith. See Claim
Grouping, supra.
2. § 103 Rejection R2 of Claims 1–6, 8, 9
Issue 2
Appellant argues (Br. 9–15) the Examiner’s rejection of claim 1 under
35 U.S.C. § 103 as being obvious over the combination of Adams, Shaver,
and Liu is in error. These contentions present us with the following issues:
(1) Did the Examiner err in finding the cited prior art combination
teaches or suggests “[a] system for scheduling courses at an institution,
wherein said institution offers a variety of courses in different semesters and
has various course requirements for graduation,” wherein the student
computer:
(a) “[is] programmed to schedule courses for an
upcoming semester,”
(b) “initially filters said variety of courses available for
selection by eliminating courses that have been completed by
the student,”
(c) “eliminates courses that do not serve as one of said
course requirements for said major of the student,” and
(d) “eliminates courses that have prerequisites yet
unattained by the student, therein creating filtered course
offerings,”
“wherein the student uses the student computer to select courses from said
filtered course offerings,” as recited in claim 1?
(2) Did the Examiner err in combining the prior art in the manner
suggested because Liu is allegedly non-analogous art?
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(3) Did the Examiner err in rejecting claim 1 by not providing
proper motivation to combine Adams, Shaver, and Liu?
Principles of Law
During prosecution, claims must be given their broadest reasonable
interpretation when reading claim language in light of the specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard,
we interpret claim terms using “the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant’s specification.” In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997).
“[O]ne cannot show non-obviousness by attacking references
individually where . . . the rejections are based on combinations of
references.” In re Keller, 642 F.2d 413, 426 (CCPA 1981). “The test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference . . . . Rather,
the test is what the combined teachings of those references would have
suggested to those of ordinary skill in the art.” Id. at 425.
In KSR, the Court stated “[t]he combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398,
416 (2007).
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When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill. . . . [A] court
must ask whether the improvement is more than the predictable
use of prior art elements according to their established
functions.
Id. at 417.
Further, the relevant inquiry is whether the Examiner has set forth
“some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006) (cited with approval in KSR, 550 U.S. at 418).
“Two separate tests define the scope of analogous prior art:
(1) whether the art is from the same field of endeavor, regardless of the
problem addressed and, (2) if the reference is not within the field of the
inventor’s endeavor, whether the reference still is reasonably pertinent to the
particular problem with which the inventor is involved.” In re Klein, 647
F.3d 1343, 1348 (Fed. Cir. 2011).
Analysis
Issue (1): All Limitations are Taught or Suggested
The Examiner finds Adams teaches or suggests the contested
limitations quoted above in paragraphs 76, 77, 116, 118, and 119. Final
Act. 5.
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Appellant contends “[t]he Examiner selectively combines the
elements of three references in forming the rejection. In the cited
combination, the primary prior art reference is the Adams Publication. . . .
[and t]he Adams Publication makes no disclosure of filtering and
categorizing the courses, as claimed the Applicant.” Appeal Br. 10.
Appellant further argues:
The Adams Publication discloses that there is need to
optimize a curriculum in accordance with a student’s
preferences. However, it does not disclose a system that
satisfies this goal in a manner consistent with Claim 1. The
Adams Publication discusses the courses needed to graduate in
paragraphs [0059] through [0062]. . . . The Adams Publication
makes no disclosures concerning filtering the course offerings
as claimed by the Applicant. Rather, the Adams Publication
merely states that the “system may determine a next set of
courses to be taken by the student”. This is not a teaching of
filtering by eliminating courses that do not serve as course
requirements for the major of the student. Likewise, this is not a
teaching of filtering by eliminating courses that have
prerequisites yet unattained by the student.
Appeal Br. 11.
The Examiner responds to this argument in the Answer by citing to
Adams in paragraph 8322 for the proposition that courses that do not serve as
course requirements are eliminated by filtering, and to paragraph 114 for
showing relationships between requirements, i.e., prerequisites. Ans. 7.

22 Upon review, it appears citation to paragraph 83 may be a typographical
error because we find paragraph 84 of Adams actually teaches or suggests
“[t]he presentation module 200 may further present to a student, a degree
tree structure 180 and courses 126 used to satisfy requirements within the
tree structure 180.”
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The Examiner further responds by finding Adams in paragraph 85
teaches that the created schedule is optimized to the student’s preferences,
and that the processing module of Adams processes information on course
schedules and degree programs, among other things, and optimizes that
information to fit a particular student’s degree tree structure and preferences.
Id. “It is obvious that the optimizing would result in the elimination of
conflicting courses in order to optimize a schedule using course schedule
information and student schedule requirements as no student would schedule
him/herself to take two courses at the same time, thus any schedule that
produced two courses scheduled for the same time period would not be
optimized.” Id.
We agree with the Examiner’s finding that Adams teaches or at least
suggests the contested limitations of claim 1, and further note Appellant
does not respond to the Examiner’s supporting findings and legal
conclusions in the Answer by filing a Reply Brief.23
Issue (2): Liu is Analogous Art
The Examiner relies upon Liu for teaching or suggesting a graphical
progress indication on a display showing progress toward a goal, including
the use of a color (green) “to indicate that a user is easily on track to reach a
goal and red if the user is far behind pace to reach the goal.” Final Act. 6.

23 Appellant further argues that the secondary Shaver reference “does not
disclose the filtering aspects of Claim 1 that are lacking in the Adams
Publication.” Appeal Br. 12. We are not persuaded by this argument because
we agree with the Examiner that Adams teaches or at least suggests the
disputed limitations of claim 1, whereas Appellant is merely arguing the
references separately. See Keller, 642 F.2d at 426.
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“Therefore, it would have been obvious to one of ordinary skill in the art . . .
to have included graphical indications with respect to goal progress, as
disclosed by Liu in the system disclosed by Adams, for the motivation of
providing a user-friendly visual indications of progress.” Final Act. 7.
Appellant’s argument focuses on whether the prior art references are
analogous. A rejection under 35 U.S.C. § 103 cannot be based on non-
analogous art. Innovention Toys, LLC, v. MGA Entertainment, Inc., 637
F.3d 1314, 1321 (Fed. Cir. 2011); In re Bigio, 381 F.3d 1320, 1325 (Fed.
Cir. 2004); In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992).
Art is analogous when it is: (1) from the same field of endeavor as the
claimed invention; or (2) reasonably pertinent to the particular problem
faced by the inventor, if the art is not from the same field of endeavor.
Bigio, 381 F.3d at 1325–26. However, “[t]he Supreme Court’s decision in
KSR . . . directs us to construe the scope of analogous art broadly.” Wyers v.
Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010). “The field of
endeavor of a patent is not limited to the specific point of novelty, the
narrowest possible conception of the field, or the particular focus within a
given field.” Unwired Planet, LLC v. Google Inc., 841 F.3d 995, 1001 (Fed.
Cir. 2016).
Specifically, Appellant argues Liu “discloses a fitness watch that
tracks exercise goals,” and thus is non-analogous art. Appeal Br. 13.
Appellant further contends:
In the present case, an exercise watch is not in the same
field of endeavor as a computer system that schedules classes
for a student. Likewise, an exercise watch is not reasonably
pertinent to the problem faced by the inventor. Accordingly, the
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Lui [sic] Publication fails both prongs of the Bigio test and is
improperly cited.
This is a reversible error.
Regardless of whether the Lui [sic] is analogous or non-
analogous, the Lui [sic] Publication does not address the
deficiencies of the Adam/Shafer combination as previously
applied to Claim 1.
Appeal Br. 13.
We disagree because, as found by the Examiner:
Liu seeks to solve the same problem as Appellant, i.e., to
provide a visual indication of progress toward a goal. In
Appellant’s case, the system tracks progress in matriculating
toward a selected degree. Liu teaches goal assessment that
includes color-coded graphical progress. The Examiner asserts
that it would have been obvious to one of ordinary skill in the
art before the effective filing date of the claimed invention to
have included graphical indications with respect to goal
progress, as disclosed by Liu in the system disclosed by Adams,
for the motivation of providing user-friendly visual
indications of progress.
Ans. 7–8.
While we agree with Appellant that Liu is not from the same field of
endeavor as Appellant’s claimed invention or Adams, we agree with the
Examiner that Liu satisfies the second prong of the Bigio test, i.e., Liu is
reasonably pertinent to the particular problem faced by the inventor, because
Liu provides a visual indication of progress.
Issue (3): The Examiner Provides Motivation to Combine the References
Appellant alleges “the Examiner has failed to provide any articulated
reasoning [for combining Adams, Shaver, and Liu].” Appeal Br. 14. “In the
present application, the Examiner understands that none of the cited
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references disclosure the use of a computer system that filters and compiles
schedules courses in the manner of the present invention. However, the
Examiner has not articulated any reasoning of why a person would use the
teachings of the prior art to arrive at the matter being claimed. Nor is the
reason apparent.” Id.
We disagree with Appellant’s contention that “the Examiner has not
articulated any reasoning” (id. (emphasis added)), and further find the
Examiner’s stated motivation to combine is proper, i.e., “it would have been
obvious to one of ordinary skill in the art . . . to have included displaying the
number of credits needed per semester to meet graduation goals as disclosed
by Shaver, in the system disclosed by Adams, for the motivation of
providing a method of designing a curriculum for obtaining a degree that is
optimized in accordance with a student's preferences, goals, limitations and
needs.” Final Act. 6 (citing Adams ¶ 16). The Examiner also finds “it
would have been obvious to one of ordinary skill in the art . . . to have
included graphical indications with respect to goal progress, as disclosed by
Liu in the system disclosed by Adams, for the motivation of providing a
user-friendly visual indications of progress.” Final Act. 7.
We find these motivational statements meet the requirements of Kahn
and KSR. See Kahn, 441 F.3d 977 at 988; KSR, 550 U.S. at 418.
Based upon the findings above, on this record, we are not persuaded
of error in the Examiner’s reliance on the cited prior art combination to teach
or suggest the disputed limitations of claim 1, nor do we find error in the
Examiner’s resulting legal conclusion of obviousness. Therefore, we sustain
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the Examiner’s obviousness rejection of independent claim 1, and grouped
claims 2–6 and 8–9 which fall therewith. See Claim Grouping, supra.
3. § 103 Rejection R3 of Claims 10, 13–15
Issue 3
Appellant argues (Br. 15–17) the Examiner’s rejection of claim 10
under 35 U.S.C. § 103(a) as being obvious over Adams is in error. These
contentions present us with the following issue:
Did the Examiner err in finding that Adams teaches or suggests “[a]
system for scheduling courses at an institution that offers a variety of
courses in different semesters and has various course requirements for
graduation,” wherein, inter alia, the student computer carries out the
dispositive limitation of “assign[ing] priorities to said topics of study;
wherein said student computer prompts the student to select courses from
said filtered course offerings using said priorities,” as recited in claim 10?24
Analysis
Appellant contends “[t]he Adams Publication also does not disclose or
suggest the claimed [dispositive limitation identified above and] . . . . fails to
disclose the matter set forth in Claim 10. It is, therefore, respectfully
requested that the Board reverse the Examiner and withdraw the 35 USC
[§] 103 rejections as applied to Claim 10 and its dependent claims.” Appeal
Br. 17.

24 Appellant makes further arguments regarding the dispositive limitation of
claim 1, also recited in claim 10, not being taught or suggested by Adams.
Appeal Br. 15–16. For the reasons discussed above in Issue 2 concerning
claim 1, we are not persuaded by Appellant’s argument.
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The Examiner responds by finding “Adams teaches categorizing
courses into topics of study (Fig. 5; [0024] and [0065]: degree program
requirements, university requirements, etc.) and prioritizing the categories
([0084]: the system presents courses to the student to satisfy degree
requirements (thus prioritizing those categories of courses) and [0117]: the
scheduler optimizes based on student preferences, such as location, thus
courses in a given preferred location category will be prioritized over
courses in a non-preferred category.)” Ans. 8–9. Appellant does not
respond to the Examiner’s findings and conclusion regarding claim 10 by
filing a Reply Brief.
Moreover, we determine that mere attorney arguments and conclusory
statements that are unsupported by factual evidence are entitled to little
probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see
also In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); and Ex parte
Belinne, No. 2009-004693, slip op. at 7-8 (BPAI Aug. 10, 2009)
(informative), available at https://www.uspto.gov/sites/default/files/
ip/boards/bpai/decisions/inform/fd09004693.pdf. See In re Lovin, 652 F.3d
1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the Board reasonably
interpreted Rule 41.37 to require more substantive arguments in an appeal
brief than a mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art.”); cf. In re
Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the
function of this court to examine the claims in greater detail than argued by
an appellant, looking for [patentable] distinctions over the prior art.”).
Arguments not made are therefore waived. See 37 C.F.R. § 41.37(c)(1)(iv).
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Based upon the findings above, on this record, we are not persuaded
of error in the Examiner’s reliance on the cited prior art to teach or suggest
the dispositive limitation of claim 10, nor do we find error in the Examiner’s
resulting legal conclusion of obviousness. Therefore, we sustain the
Examiner’s obviousness rejection of independent claim 10, and grouped
claims 13–15 which fall therewith. See Claim Grouping, supra.
4. § 103 Rejection R4 of Claims 11, 12
Issue 4
Appellant argues (Br. 17–18) the Examiner’s rejection of claim 11
under 35 U.S.C. § 103(a) as being obvious over Adams, Shaver, and the
Examiner’s taking of Official Notice is in error. These contentions present
us with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests the system of claim 10, “wherein said student computer creates a
visual display that indicates how many course credits are required in each of
said topics of study to obtain said course requirements for graduation for
said major of the student,” as recited in claim 11, because the Examiner
allegedly erred in taking Official Notice that visual displays are old and
well-known?
Analysis
Appellant argues “[t]he Adams publication makes no disclosure of a
display. The Shafer publication may suggest use of a display. However, it
makes no disclosure whatsoever concerning displaying credits required for
graduation per topic of study. . . . [and therefore, t]he Examiner’s statement
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that the material lacking in the Adams/Shafter confirmation is obvious in
view of Official Notice is wrongful.” Appeal Br. 17 (emphasis added).
In support of the Examiner’s position, we note that Official notice
unsupported by documentary evidence should only be taken by the
Examiner where the facts asserted to be well-known, or to be common
knowledge in the art are capable of instant and unquestionable
demonstration as being well-known. As noted by the court in In re Ahlert,
424 F.2d 1088, 1091 (CCPA 1970), the notice of facts beyond the record
which may be taken by the Examiner must be “capable of such instant and
unquestionable demonstration as to defy dispute” (citing In re Knapp
Monarch Co., 296 F.2d 230 (CCPA 1961)). In Ahlert, the court held that the
Board properly took judicial notice that “it is old to adjust intensity of a
flame in accordance with the heat requirement.” See also In re Fox, 471
F.2d 1405, 1407 (CCPA 1973) (the court took “judicial notice of the fact
that tape recorders commonly erase tape automatically when new ‘audio
information’ is recorded on a tape which already has a recording on it”).
In this Appeal, we find that the use of visual displays is old and well-
known, and is capable of “instant and unquestionable demonstration as being
well-known.” Furthermore, the contested limitation in dependent claim 11
is an old and well known expedient in the art even without the support of
documentary evidence because the facts so noticed are of notorious
character and serve only to “fill in the gaps” in the evidentiary showing
made by the Examiner to support a particular ground of rejection. In re
Zurko, 258 F.3d 1379, 1385, (Fed. Cir. 2001); Ahlert, 424 F.2d at 1092.
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In reviewing the record, Appellant has not properly traversed the
Examiner’s finding by stating that the purported well-known fact is not
considered to be common knowledge or well-known in the art. See MPEP
§ 2144.03(C) (“To adequately traverse such a finding, an applicant must
specifically point out the supposed errors in the examiner’s action, which
would include stating why the noticed fact is not considered to be common
knowledge or well-known in the art. See 37 CFR 1.111(b).” (emphasis
added)). An adequate rebuttal of the Examiner’s taking of Official Notice
must contain sufficient information or argument to create on its face a
reasonable doubt regarding the circumstances justifying the Examiner’s
notice of what is well known to one of ordinary skill in the art. In re Boon,
439 F.2d 724, 728 (CCPA 1971). In this case, Appellant has failed to meet
this threshold requirement to traverse the taking of Official Notice.
Furthermore, “where the claim as a whole is directed conveying a
message or meaning to a human reader independent of the intended
computer system, and/or the computer-readable medium merely serves as a
support for information or data, no functional relationship exists.”).25 See
Manual for Patent Examining Procedure (MPEP) § 2111.05 III [R-08-2017]

25 Although not relied upon in our Decision, in the event of further
prosecution, we invite the Examiner’s attention as to whether the recited
type of information displayed, e.g., credits required for graduation per topic
of study, lends patentability, or whether such displayed information is
merely non-functional descriptive material. Here, the information is intended
to be presented to an end user/human viewer, but the informational content
is not positively recited as actually being used to: (1) change or affect any
machine or computer function, or (2) alter how the information will be
obtained or displayed.
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Accordingly, because Appellant did not adequately traverse the
Examiner’s taking of Official Notice, we are not persuaded of error in the
Examiner’s reliance on the cited prior art combination and the taking of
Official Notice to teach or suggest the disputed limitation of claim 11, nor
do we find error in the Examiner’s resulting legal conclusion of obviousness.
Therefore, we sustain the Examiner’s obviousness rejection of dependent
claim 11, and grouped claim 12, which falls therewith. See Claim Grouping,
supra.
5. § 103 Rejections R5 and R6 of Claims 16, 17
In view of the lack of any substantive or separate arguments directed
to obviousness Rejections R5 and R6 of claims 16 and 17 under § 103 (see
Br. 18), we sustain the Examiner’s rejection of these claims. Arguments not
made are waived.26
CONCLUSIONS
(1) Under our Revised Guidance, governed by relevant case law,
claims 1–6 and 8–17 are patent-ineligible under 35 U.S.C. § 101, and we
sustain the rejection.

26 Appellant merely argues, “the Shafer Publication does not address the
lack of the Adams Publication to disclose the filtered course offerings being
claimed. As such, the Shafer Publication does not address the deficiencies of
the Adams Publication as applied to Claim 10. Claims 16 and Claim 17 are
therefore believed to be allowable since it depends from and further defines
and [sic] allowable base claim.” Appeal Br. 18.
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(2) The Examiner did not err with respect to obviousness
Rejections R2 through R6 of claims 1–6 and 8–17 under 35 U.S.C. § 103
over the cited prior art combinations of record, and we sustain the rejections.
DECISION SUMMARY
Claims
Rejected
35 U.S.C.
§
Basis /
References Affirmed Reversed
1–6, 8–17 101
Subject
Matter
Eligibility
1–6, 8–17
1–6, 8, 9 103
Obviousness
Adams,
Shaver, Liu
1–6, 8, 9
10, 13–15 103
Obviousness
Adams 10, 13–15
11, 12 103
Obviousness
Adams,
Shaver,
Official
Notice
11, 12
16 103
Obviousness
Adams,
Shaver
16
17 103
Obviousness
Adams,
Shaver,
Official
Notice
17
Overall
Outcome 1–6, 8–17
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FINALITY AND RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED