Jon M. Banks et al.

Patent Trials and Appeals Board

Jun 1, 2020

2018006503 (P.T.A.B. Jun. 1, 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.
13/872,470 04/29/2013 Jon M. Banks END920130085US1 4426
30449 7590 06/01/2020
SCHMEISER, OLSEN & WATTS
22 CENTURY HILL DRIVE
SUITE 302
LATHAM, NY 12110
EXAMINER
GUILIANO, CHARLES A
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
06/01/2020 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):
30449@IPLAWUSA.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JON M. BANKS, JAMES E. VARAN, JEFFREY L. WILSON,
and ANDREW P. WHITE

Appeal 2018-006503
Application 13/872,470
Technology Center 3600
____________

Before ELENI MANTIS MERCADER, DAVID C. McKONE,
and NORMAN H. BEAMER, Administrative Patent Judges.

BEAMER, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1–9 and 13–15. Claims 10–12 are cancelled. We
have jurisdiction over the pending rejected claims under 35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as
International Business Machines Corporation. (Appeal Br. 1.)
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THE INVENTION
Appellant’s disclosed and claimed invention is directed to assigning
parts to storage locations in a warehouse. (Abstract.)
Independent claim 1, reproduced below, is illustrative of the subject
matter on appeal:
1. A method for determining an optimum storage location in a
warehouse for storing a part, storing the part in the optimum
storage location, and picking the part from the optimum storage
location, the method comprising the steps of:
receiving a multiplicity of ratings of a respective
multiplicity of parts having respective pick frequencies of
the parts, wherein the parts with higher pick frequencies
have higher ratings than the parts with lower pick
frequencies;
determining a multiplicity of grades of a respective
multiplicity of storage locations in the warehouse based
[on] a total number of the storage locations and a relative
grade of the storage locations, wherein the relative grade
of the storage locations is based on an ordering of the
storage locations according to a sort based on
accessability rating, strike, and load sequence of the
storage locations, and wherein respective accessibilities
of the storage locations to a loading dock or another
collection point for the parts are based in part on load
sequence and put sequence, and are relatively higher for
storage locations closer to a floor than for storage
locations further from the floor because the parts are to
be picked from the storage locations by a forklift;
receiving, by one or more processors, respective
ranges of grades of the storage locations that satisfy
storage location criteria of the respective multiplicity of
ratings of the parts such that each part whose rating is
higher than the rating of another part has a range of
grades of satisfactory storage locations that is narrower
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than a range of grades of satisfactory storage locations
that the other part has;
determining, for each combination of part and
storage location, a location grade match score based on
how closely the part's rating matches the storage
location’s grade;
determining, for each combination of part and
storage location, a location size score based on how
closely a planned stock quantity (PSQ) of the part
matches the storage location’s size;
determining, for each combination of part and
storage location, a final score based, at least in part, on
the location grade match score and the location size
score;
determining, for one part of the multiplicity of
parts, an optimum storage location of the multiplicity of
storage locations to store the one part, by selecting an
empty storage location at which the final score with
respect to the one part is higher than the final score for all
other empty locations with respect to the one part;
assigning the one part to the optimum storage
location;
storing the one part in the optimum storage
location; and
picking the one part, by the forklift, from the
optimum storage location.

REJECTION
The Examiner rejected claims 1–9 and 13–15 under 35 U.S.C. § 101
as being directed to patent-ineligible subject matter. (Final Act. 17–20.)
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ISSUE ON APPEAL
Appellant’s arguments present the following dispositive issue:2
Whether the Examiner erred in concluding claims 1–9 and 13–15 are
directed to patent-ineligible subject matter. (Appeal Br. 10–28.)
ANALYSIS
The Examiner concludes claims 1–9 and 13–15 are patent-ineligible
under 35 U.S.C. § 101 because:
[The claims] are directed to the abstract idea of a mathematical
algorithm for assigning parts to optimum storage locations
based on the pick frequency of the parts, the grade for storage
locations, the total number of storage locations, the relative
grade of the storage locations, the location grade match score,
the location size score, the planned stock quantity of the part,
and the size of the storage location. The claims do not include
additional elements that are sufficient to amount to significantly
more than the judicial exception because the additional
elements provide no more than mere instructions to implement
the idea using generic computer components, recitations of
generic computer structure to perform computer functions that
are well-understood, routine, and conventional, and recitations
of insignificant post-solution activity.
(Final Act. 17.) The Examiner also concludes claims 3, 4, 8, and 14 are
directed to non-statutory subject matter pursuant to In re Nuijten, 500 F.3d
1346, 1356–57 (Fed. Cir. 2007), because the “broadest reasonable
interpretation of a claim drawn to a computer-readable hardware storage
device includes transitory propagating signals.” (Id. at 20.)

2 Rather than reiterate the arguments of Appellant and the positions of the
Examiner, we refer to the Appeal Brief (filed Dec. 26, 2017); the Reply
Brief (filed June 4, 2018); the Final Office Action (mailed June 27, 2017);
and the Examiner’s Answer (mailed Apr. 3, 2018) for the respective details.
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Appellant acknowledges that the claim requirements directed to
determining an optimum storage location recite a mathematical algorithm,
which is an abstract idea. (Appeal Br. 13.) However, Appellant argues that
the claims as a whole are not directed to an abstract idea because they also
include the “storing” and “picking” steps, which “provide utility to claims 1,
3 and 5,” the independent claims. (Id. at 14.) Appellant also argues:
Although claims 1, 3 and 5 involve collecting and analyzing
information, claims 1, 3 and 5 are not directed to collecting and
analyzing information, but rather are directed to determining an
optimum storage location for storing a part, storing the part in
the optimum storage location, and picking the part from the
optimum storage location, which is not an abstract idea.
(Id. at 14–15.) Furthermore, argues Appellant, for the same reason (i.e., the
requirements of storing and picking), “claims 1, 3 and 5 cannot be
performed entirely in the human mind and are thus not directed to an idea of
itself.” (Id. at 15.)
Appellant further argues that, in addition to not being directed to an
abstract idea, the claims “recite significantly more than the abstract idea.”
(Id. at 16.) In particular, argues Appellant: (i) the claims are similar to those
of Bascom Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d
1341 (Fed. Cir. 2016), as directed to a technological improvement (here,
“optimizing storage locations for parts in a warehouse.”); (ii) the claims
perform an improved filtering function like those of Bascom; and (iii) the
claims embody rules to improve technology like those of McRO, Inc. v.
Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016). (Id. at
16–23.) In addition, Appellant argues the claims have specificity and thus
“do not preempt significant inventive activity for assigning parts to optimum
storage locations.” (Id. at 23.) Finally, Appellant argues that the recitation
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of a forklift in claims 1, 3, and 5, and of ROMS in claims 13–15, transform
the claims into something significantly more than an abstract idea. (Id. at
25–28.) In this connection, Appellant asserts the Examiner failed to meet
the standards of Berkheimer v. HP Inc., 881 F.3d 1360, 1369 (Fed. Cir.
2018), regarding the factual support required for a finding that claimed
subject matter was well-understood, routine, and conventional. (Reply
Br. 10–12.)
As set forth below, we are not persuaded the Examiner erred. An
invention is patent-eligible if it claims a “new and useful process, machine,
manufacture, or composition of matter.” 35 U.S. C. § 101. Here,
independent claim 1 and its dependent claims relate to a method,
independent claim 3 and its dependent claims relate to a computer program
product; and independent claim 5 and its dependent claims relate to a system
— i.e., a process, manufacture, or machine, respectively.3 However, the
Supreme Court has long held that “[l]aws of nature, natural phenomena, and
abstract ideas are not patentable.” Alice Corp. v. CLS Bank Int’l, 573 U.S.
208, 216 (2014) (quoting Assoc. for Molecular Pathology v. Myriad
Genetics, Inc., 569 U.S. 576, 598–99 (2013)). The “abstract ideas” category

3 We do not agree with the Examiner that claims 3, 4, 8, and 14 are directed
to non-statutory subject matter pursuant to In re Nuijten. These claims
specify a computer program product comprising “program code stored in the
one or more computer-readable hardware storage devices,” and the
Specification limits such devices to “not encompass signal propagation
media such as copper cables, optical fibers and wireless transmission
media.” (Spec. ¶ 28.) See Ex parte Mewherter, 107 USPQ2d 1857, 1862
(PTAB 2013) (precedential) (factors to conclude claim avoids encompassing
a non-statutory signal include “express intent in applicant’s specification to
limit the term.”)
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embodies the longstanding rule that an idea, by itself, is not patentable.
Alice, 573 U.S. at 216–17.
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.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Court held that “a claim drawn to subject matter otherwise statutory does not
become nonstatutory simply because it uses a mathematical formula.”
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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 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.”).
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 (quotation marks omitted). An
“inventive concept” is “an element or combination of elements that is
‘sufficient to ensure that the patent in practice amounts to significantly more
than a patent upon the [ineligible concept] itself.’” 573 U.S. at 217–18.
“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].’” 573 U.S. at 221 (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.
Further to the Alice/Mayo analytical framework, after the mailing of
the Answer and the filing of the Briefs in this case, in January 2019, the U.S.
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Patent and Trademark Office (USPTO) published revised guidance on the
application of § 101. 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019 Revised Guidance”).4 “All
USPTO personnel are, as a matter of internal agency management, expected
to follow the guidance.” Id. at 51; see also October 2019 Update at 1.
Under the 2019 Revised Guidance and the October 2019 Update, we
first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th
ed. Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).5
2019 Revised Guidance, 84 Fed. Reg. at 52–55.

4 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (the “October
2019 Update”) (available at https://www.uspto.gov/sites/default/files/
documents/peg_oct_2019_update.pdf).
5 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See 2019 Revised Guidance — Section III(A)(2), 84
Fed. Reg. 54–55.
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Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
Step 2B, 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.
2019 Revised Guidance, 84 Fed. Reg. at 52–56.
In evaluating the claims at issue here, we consider claim 1 as
representative, consistent with how Appellant and the Examiner analyze the
claims. See 37 C.F.R. § 41.37(c)(1)(iv)(2017). Regarding Step 2A Prong 1
of the 2019 Revised Guidance, as Appellant admits (and we agree), the bulk
of claim 1 recites a mathematical algorithm to determine an optimum storage
location:
1. A method for determining an optimum storage location in a
warehouse for storing a part . . . the method comprising the
steps of:
receiving a multiplicity of ratings of a respective
multiplicity of parts having respective pick frequencies of
the parts, wherein the parts with higher pick frequencies
have higher ratings than the parts with lower pick
frequencies;
determining a multiplicity of grades of a respective
multiplicity of storage locations in the warehouse based a
total number of the storage locations and a relative grade
of the storage locations, wherein the relative grade of the
storage locations is based on an ordering of the storage
locations according to a sort based on accessability
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rating, strike, and load sequence of the storage locations,
and wherein respective accessibilities of the storage
locations to a loading dock or another collection point for
the parts are based in part on load sequence and put
sequence, and are relatively higher for storage locations
closer to a floor than for storage locations further from
the floor because the parts are to be picked from the
storage locations by a forklift;
receiving, [by one or more processors,] respective
ranges of grades of the storage locations that satisfy
storage location criteria of the respective multiplicity of
ratings of the parts such that each part whose rating is
higher than the rating of another part has a range of
grades of satisfactory storage locations that is narrower
than a range of grades of satisfactory storage locations
that the other part has;
determining, for each combination of part and
storage location, a location grade match score based on
how closely the part’s rating matches the storage
location's grade;
determining, for each combination of part and
storage location, a location size score based on how
closely a planned stock quantity (PSQ) of the part
matches the storage location’s size;
determining, for each combination of part and
storage location, a final score based, at least in part, on
the location grade match score and the location size
score;
determining, for one part of the multiplicity of
parts, an optimum storage location of the multiplicity of
storage locations to store the one part, by selecting an
empty storage location at which the final score with
respect to the one part is higher than the final score for all
other empty locations with respect to the one part;
assigning the one part to the optimum storage
location. . . .
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(Appeal Br. 13, 31–32 (“Appellants acknowledge that determining an
optimum storage location, by itself, is implemented via a mathematical
algorithm which, according to Alice, is an abstract idea”).) As the Examiner
concludes, other than the reference to processors (from which information
used by the algorithm is received), all of the above steps are part of an
expressed mathematical algorithm and also are capable of being performed
in the human mind. (Final Act. 17–18; Ans. 9.) To that we would add that
the entirety of claim 1 — including the additional requirements of “storing
the one part in the optimum storage location; and picking the one part, by the
forklift, from the optimum storage location” — recites a method of
inventory control, which is a method of organizing human activity. See
Automated Tracking Sols., LLC v. The Coca-Cola Co., 723 F. App’x 989
(Fed. Cir. 2018) (non-precedential). As stated in the 2019 Revised
Guidance, abstract ideas include mathematical concepts, mental processes,
and certain methods of organizing human activity. (2019Revised Guidance,
84 Fed. Reg. at 52). Therefore, we agree with the Examiner that the subject
matter of claim 1 recites abstract ideas, as do the remaining claims.
Further pursuant to Step 2A, Prong 2 of the 2019 Revised Guidance,
we consider whether there are additional elements set forth in claim 1 that
integrate the judicial exception into a practical application. 2019 Revised
Guidance, 84 Fed. Reg. at 54–55. Here, Appellant argues that the abstract
idea of claim 1 additionally involves the “very important . . . . ‘storing’ and
‘picking’ steps [which] provide utility to claims 1, 3 and 5.” (Appeal Br.
14.) Appellant argues that, because of these additional steps, the claimed
steps “cannot be performed entirely in the human mind.” (Id. at 15.)
However, we agree with the Examiner that these steps “are merely
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insignificant post-solution activity.” (Ans. 7.) “[T]he prohibition against
patenting abstract ideas ‘cannot be circumvented by attempting to limit the
use of the formula to a particular technological environment’ or [by] adding
‘insignificant post solution activity.’” Bilski v. Kappos, 561 U.S. 593
(2010), (quoting Diamond v. Diehr, 450 U.S. 175, 191–92 (1981)).
Moreover, the “storing” and “picking” steps are themselves part of the
abstract idea of the inventory control human activity (method of organizing
human activity) as recited in the claims, and as such cannot form the basis
for concluding that the recited abstract idea is integrated into a practical
application. 2019 Revised Guidance, 84 Fed. Reg. 54–55 (“evaluate
integration into a practical application by: (a) Identifying whether there are
any additional elements recited in the claim beyond the judicial
exception(s)”); 2019 Revised Guidance, fn. 24 (“USPTO guidance uses the
term ‘additional elements’ to refer to claim features, limitations, and/or steps
that are recited in the claim beyond the identified judicial exception.”).
Appellant also relies on the claimed “processor,” from which is
received the “ranges of grades of the storage locations” used in the claimed
mathematical algorithm, and, in dependent claims 13–15, a read-only
memory (ROM) that stores computer program code. (Appeal Br. 19, 27.)
However, “merely requir[ing] generic computer implementation[] fail[s] to
transform that abstract idea into a patent-eligible invention.” Alice, 573 U.S.
at 221.
Appellant further argues that the claimed subject matter improves
“parts storage technology.” (Appeal Br. 16.) However, unlike Enfish, LLC
v. Microsoft Corp., 822 F.3d 1337 (Fed. Cir. 2016), on which Appellant
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relies, there is no improvement to technology, but rather application of
preexisting technology to implement the abstract idea itself.
Nor does the subject matter of claim 1 contain additional elements
that implement the judicial exception with a “particular machine,” because
the claims do not specify any details in regard to inventory control beyond
the recited algorithm. See MPEP § 2106.05 (b). Further, the method
does not transform matter; at best it transforms information. See MPEP
§ 2106.05(c). Nor does claim 1 have any other meaningful limitations
(MPEP § 2106.05 (e)), or any of the other considerations set forth in the
2019 Revised Guidance regarding a determination of whether additional
elements integrate the judicial exception into a practical application. See
2019 Revised Guidance, 84 Fed. Reg. at 55. Accordingly, we conclude that
the subject matter of claim 1 (and the remaining claims) is directed to
mathematical concepts, mental processes, and a method of organizing
human activity — inventory control — and thus is directed to abstract ideas,
and there are no additional elements recited therein that would integrate the
abstract ideas into a practical application.
Turning to the second step of the Alice inquiry (Step 2B of the 2019
Revised Guidance), we consider the elements of the claims “individually and
‘as an ordered combination”’ to determine whether there are additional
elements that “‘transform the nature of the claim’ into a patent-eligible
application.” 573 U.S. at 217 (quoting Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 79, 78 (2012)). We do not agree with
Appellant that there are any additional elements of claim 1, whether taken
individually or in combination, that would add “significantly more” to the
recitation of claim 1 sufficient to transform the claimed abstract idea into a
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patent-eligible application. Alice, 573 U.S. at 223 (“[T]he mere recitation of
a generic computer cannot transform a patent-ineligible abstract idea into a
patent-eligible invention.”). Other than using generic computer technology,
the claimed improvement consists of the mathematical concepts and mental
processes of the claimed abstract idea itself. “It is clear from Mayo that the
‘inventive concept’ cannot be the abstract idea itself.” Aatrix Software, Inc.
v. Green Shades Software, Inc., 890 F.3d 1354, 1359 (Fed. Cir. 2018).
Moreover, “[p]atent law does not protect claims to an ‘asserted advance in
the realm of abstract ideas . . . no matter how groundbreaking the advance.’”
890 F.3d at 1359.
As discussed above, Appellant argues that the subject matter of the
claims embodies an improvement in technology, relying on Bascom and
McRO. (Appeal Br. 18–20.) But Appellant has not shown that claim 1 is
sufficiently similar to the claims in those cases. In Bascom, the court held
eligible claims directed to a technology-based solution to filter Internet
content that overcame existing problems with other Internet filtering systems
by making a known filtering solution—namely a “one-size-fits-all” filter at
an Internet Service Provider (ISP)—more dynamic and efficient via
individualized filtering at the ISP. Bascom, 827 F.3d at 1351. Notably, this
customizable filtering solution improved the computer system’s performance
and, therefore, was patent-eligible. See id. But, unlike the filtering system
improvements in Bascom that added significantly more to the abstract idea
in that case, the claimed invention here uses generic computing components
to implement abstract ideas as noted previously.
In McRO, the claimed process used a combined order of specific rules
that rendered information in a specific format that was applied to create a
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sequence of synchronized, animated characters. 837 F.3d at 1315. Notably,
the recited process automatically animated characters using particular
information and techniques — an improvement over manual three-
dimensional animation techniques that was not directed to an abstract idea.
Id. at 1316. But, unlike the claimed invention in McRO that improved how
the physical display operated to produce better quality images, the claimed
invention here merely obtains information and uses generic computer
technology to determine an optimum storage location in a warehouse for
storing a part. The claimed subject matter is directed to mental processes
and mathematical concepts, and does not improve technology as was the
case in McRO.
Appellant argues the specific steps of the claims “do not preempt
significant inventive activity for assigning parts to optimum storage
locations.” (Appeal Br. 23.) However, “[w]hile preemption may signal
patent ineligible subject matter, the absence of complete preemption does
not demonstrate patent eligibility.” Ariosa Diagnostics, Inc. v. Sequenom,
Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
Appellant also argues the claims recite significantly more than an
abstract idea given the requirement of “special purpose hardware, namely a
forklift, to perform the step of picking the one part, by the forklift, from the
optimum storage location.” (Appeal Br. 25.) Consistent with the USPTO
“Berkheimer” guidance, we agree with the Examiner’s finding:
[T]he recitation of “picking the one part, by the forklift, from
the optimum storage location” is recited at a high level of
generality and is a well-understood, routine, and conventional
activity previously known in the field of managing warehouse
storage locations, which is not sufficient to transform an
abstract idea into a patent-eligible invention. . . . [I]n the field
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of managing warehouse storage locations, it is common for a
person to pick a part from a storage location in the warehouse
using a forklift in response to a recommendation.
(Ans. 18.) This finding by the Examiner is an instance where there can be
no dispute that “additional element(s) represents well-understood, routine,
conventional activity engaged in by those in the relevant art, in that the
additional elements are widely prevalent or in common use in the relevant
field, comparable to the types of activity or elements that are so well-known
that they do not need to be described in detail in a patent application to
satisfy 35 U.S.C. 112(a).”6
Accordingly, we sustain the Examiner’s 35 U.S.C. § 101 rejection of
claim 1. Appellant provides no arguments that would differentiate the
remaining claims from claim 1. Thus, the foregoing analysis of claim 1 is
exemplary of that for claims 2–9 and 13–15. See 37 C.F.R.
§ 41.37(c)(1)(iv). Therefore, we also sustain the Examiner’s 35 U.S.C.
§ 101 rejection of those claims.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. §  References/
Basis
Affirmed Reversed
1–9, 13–15 101  Eligibility 1–9, 13–15

6 April 19, 2018 USPTO Memorandum, “Changes in Examination Procedure
Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility
Decision (Berkheimer v. HP, Inc.),” p. 4.
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TIME PERIOD FOR 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).

AFFIRMED