J¿Rgen Herrmann et al.

Patent Trials and Appeals Board

Dec 30, 2019

13120194 - (D) (P.T.A.B. Dec. 30, 2019)

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.
13/120,194 03/22/2011 J¿rgen Herrmann 40047-056US1 8232
69713 7590 12/30/2019
OCCHIUTI & ROHLICEK LLP
50 Congress Street
Suite 1000
Boston, MA 02109
EXAMINER
KESSIE, DANIEL
ART UNIT PAPER NUMBER
2836
NOTIFICATION DATE DELIVERY MODE
12/30/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
INFO@ORPATENT.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JURGEN HERRMANN and ALOIS MONZEL
Appeal 2018-003391
Application 13/120,194
Technology Center 2800
Before THU A. DANG, ELENI MANTIS MERCADER, and
HUNG H. BUI, Administrative Patent Judges.
DANG, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeal from the
Examiner’s Final Rejection to reject claims 1–13, and 16–29. App. Br. 1.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “Applicant[s]” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as KHS GmbH.
Appeal Br. 1.
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CLAIMED SUBJECT MATTER
According to Appellant, the invention “relates to a method and a
device for identifying objects, in particular, machines, consumer items such
as bottles as well as parts hereof,” wherein “a surface of the relevant object
is scanned entirely or at least in the region of a part surface and at least one
result is derived herefrom.” Spec. 1.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method comprising[:]
identifying an object,
[1] wherein identifying said object comprises scanning
at least part of a surface of the object,
[2] wherein said at least part of a surface comprises a
plurality of points,
[3] wherein each point in said plurality of points has
an associated value of a physical property,
[4] wherein said at least part of a surface defines a
domain of a physical property function,
[5] wherein a range of said physical property function
is the set of all possible values of said physical property,
[6] wherein said physical-property function is defined
by values of said physical property at each point in said
domain,
[7] wherein said values are randomly distributed such
that, given a first subset of said domain and a second subset of
said domain,
[8] wherein said first subset and said second subset are
disjoint, locations of said first and second subsets cannot be
identified based only on said values of said physical property
within each subset,
[9] wherein scanning comprises measuring values of
a physical property at a plurality of points within said at least
part of a surface,
[10] wherein measuring values of a physical property at
a plurality of points within said at least part of a surface
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comprises measuring said physical property at a first point, and
then, after having measured said physical property at a first
point, measuring said physical property at a second point,
deriving at least one result from the scanning,
[11] wherein said at least one result is based at least in
part on said values of said physical properties, converting the at
least one result into characteristic digital values representative
of a natural surface of the object; and combining the
characteristic digital values together to form at least one key
that uniquely identifies the object,
[12] wherein said object is a member of a set of objects,
wherein each object in said set of objects has an associated key,
wherein each object in said set of objects has a different value
of said associated key.
App. Br. 31 (Claim App.) (bracketing added for clarity).

REJECTIONS
Claims 1–13, and 16–29 stand rejected under 35 U.S.C. § 112(a) for
lack of written description. Final Act. 6–8.
Claims 20, and 24–29 stand rejected under 35 U.S.C. § 112(a) for lack
of enablement. Final Act. 8–9.
Claims 1–13, and 16–29 stand rejected under 35 U.S.C. § 112(b) as
being indefinite. Final Act. 9–11.
Claims 1–13, 17–22, and 25 stand rejected under 35 U.S.C. § 101 as
being directed to a judicial exception (i.e., a law of nature, a natural
phenomenon, or an abstract idea); and not directed to significantly more than
the abstract idea itself. Final Act. 4–6.
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ANALYSIS
Except where indicated, we adopt the Examiner’s findings in the
Answer and Final Office Action and we add the following primarily for
emphasis. We note that if Appellant failed to present arguments on a
particular rejection, we decline to review unilaterally those uncontested
aspects of the rejection. See Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI
2010) (precedential); Hyatt v. Dudas, 551 F.3d 1307, 1313–14 (Fed. Cir.
2008) (the Board may treat arguments Appellant failed to make for a given
ground of rejection as waived).

Rejection of claims 1–13, and 16–29 under 35 U.S.C. § 112 (Lack of Written
Description)
The Examiner rejects claims 1–13, and 16–29 as lacking of written
description in the Specification as originally filed. Ans. 20. In particular,
“the amended language which attempts to convey the idea of ‘randomness’
is not taught or implied by the specification.” Id. According to the
Examiner, “the word ‘random’ itself does not appear to be used in the
specification, nor does a discussion of the disjoint subsets and whether or not
locations of the subsets can be identified based on the physical properties
within each subset.” Id. at 21. Although the Examiner acknowledges that
“Fig. 3, as drawn, appears somewhat random,” the Examiner finds that
“there does not appear to be a suggestion that the Applicant had possession
of the concept of the specific property of randomness now claimed.” Id.
In order to satisfy the written description requirement, “the
specification must describe an invention understandable to [a] skilled artisan
and show that the inventor actually invented the invention claimed.” Ariad
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Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en
banc). Id. Compliance with the written description requirement set forth
in 35 U.S.C. § 112 does not require that the claimed subject matter be
described identically in the Specification. In re Kaslow, 707 F.2d 1366,
1375 (Fed. Cir. 1983). The drawings in an application can be relied upon to
show that an inventor was in possession of the claimed invention as of the
filing date. See Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1565 (Fed. Cir.
1991) (“[D]rawings alone may be sufficient to provide the ‘written
description of the invention’ required by § 112, first paragraph.”).
Here, Appellant contends that “the randomness limitation is a precise
and mathematically rigorous statement of what the inventor had in his
possession all along.” Appeal Br. 10. According to Appellant, “[t]he
randomness limitation describes a common variation in nature, perhaps in
the most common.” Id. Thus, Appellants contend “[u]pon a fair reading of
the entire specification, . . . the ordinary artisan would have recognized that
what the inventor was describing could be expressed mathematically by
claim 1’s randomness limitation.” Id. at 15.
We are not persuaded by Appellant’s arguments.
By contending that “the ordinary artisan would have recognized that
what the inventor was describing could be expressed mathematically by
claim 1’s randomness limitation” (Appeal Br. 15 (emphasis added)),
Appellant appears to be arguing that, given the disclosure in the
Specification, it would have been obvious to a skilled artisan that Appellant
had possession of the contested limitations at the filing of the application.
However, a Specification which merely renders obvious the claimed
invention (i.e., which relies on possession or reduction to practice outside of
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the Specification) is not sufficient to satisfy the written description
requirement. Our reviewing court guides “actual ‘possession’ or reduction
to practice outside of the specification is not enough. Rather, . . . it is the
specification itself that must demonstrate possession.” Ariad Pharm, 598
F.3d at 1352; see also PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d
1299, 1306–07 (Fed. Cir. 2008) (explaining that § 112, ¶ 1 “requires that the
written description actually or inherently disclose the claim element”).
[I]t is ‘not a question of whether one skilled in the art might be
able to construct the patentee’s device from the teachings of the
disclosure. . . . Rather, it is a question whether the application
necessarily discloses that particular device.’ . . . A description
which renders obvious the invention for which an earlier filing
date is sought is not sufficient.
Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997)
(quoting Jepson v. Coleman, 314 F.2d 533, 536 (CCPA 1963).
Applying this reasoning here, we are not persuaded by Appellant’s
statements that “[u]pon a fair reading of the entire specification, . . . the
ordinary artisan would have recognized that what the inventor was
describing could be expressed mathematically by claim 1’s randomness
limitation.” Appeal Br. 15 (emphasis added). In particular, although we
understand that 35 U.S.C. § 112 does not require that the claimed subject
matter be described identically in the Specification and that Appellant can
rely on the drawings to show that an inventor was in possession, we find no
clear support in the Specification for randomly distributed values that define
a physical-property function at each point in the domain, as required in the
claim. See claim 1.
Thus, we are persuaded by the Examiner’s determination that the
limitation “said physical-property function is defined by values of said
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physical property at each point in said domain,” wherein “said values are
randomly distributed” (claim 1) is not supported by the disclosure as
originally filed. Ans. 21. That is, “the amended language which attempts to
convey the idea of ‘randomness’ is not taught or implied by the
specification.” Id. at 20.
On this record, we sustain the Examiner’s rejection of representative
claim 1, and claims 2–13, and 16–29, not separately argued and thus falling
therewith, under 35 U.S.C. § 112(a) for failing to comply with the written
description requirement.
Rejection of claims 20, and 24–29 under 35 U.S.C. § 112 (Lack of
Enablement)
The Examiner rejects claims 20, and 24–29 as lacking of enablement.
Ans. 22. In particular, according to the Examiner, “[t]he claim recites
evaluating the object’s surface finishing, color, transparency, strength,
ohmic resistance, or capacitance and structural conditions,” but “the
specification does not disclose the process, if any, or the steps used to
evaluate the object’s surface finishing, color, transparency, strength, ohmic
resistance, or capacitance.” Final Act. 8.
The Examiner concedes that the Specification discloses:
The characteristics of the surface of the object to be examined
scanned in this manner can, for example, be its structural
conditions, its surface finish or surface finish parameters, the
colour or colour combination, the reflection behaviour, the
transparency of the object, its strength, etc. In principle, along
with these optical and mechanical characteristics described,
electrical characteristics can also be evaluated such as the ohmic
and also capacitive resistance of the surface or at least of a part
surface. Determining the chemical characteristics of the surface
and its characterisation thereby is also conceivable. Thus, for
example, the adsorption capacity or even the oxidation capacity
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can be evaluated and be utilized for the unique characteristic
identification in terms of the key.
Final Act. 8–9 (citing Spec. ¶ 9).
In particular, the Examiner concedes that “[t]here is sufficient
disclosure in the specification to allow one of ordinary skill in the art to
make and use the invention of claim 1, in the embodiment related to the
roughness of the surface or its form and shape,” wherein a POSITA “would
know how to make the required measurements at a necessary level of
precision and, without experimentation, convert this data into a unique
identifying key.” Ans. 22. However, the Examiner asserts that “the
specification does not appear to be enabling for use with the other physical
properties recited” because, although “[t]hese other properties can be readily
measured, but it does not appear that one would have been able, based on the
Applicant’s disclosure and without undue experimentation, to use such
measurements of the natural surface of an object to form a key that uniquely
identifies the object.” Ans. 22–23.
“[T]o be enabling, the specification of a patent must teach those
skilled in the art how to make and use the full scope of the claimed invention
without ‘undue experimentation.’” In re Wright, 999 F.2d 1557, 1561 (Fed.
Cir. 1993).
The enablement requirement ensures that the public knowledge
is enriched by the patent specification to a degree at least
commensurate with the scope of the claims. . . . The scope of
enablement, in turn, is that which is disclosed in the specification
plus the scope of what would be known to one of ordinary skill
in the art without undue experimentation.
National Recovery Techs. Inc. v. Magnetic Separation Sys., Inc., 166 F.3d
1190, 1195–96 (Fed Cir. 1999).
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The Examiner bears the burden of explaining why the scope of . . .
claimed is not adequately enabled by the description of the invention
provided in the specification including, “providing sufficient reasons for
doubting any assertions in the specification as to the scope of enablement.”
In re Wright, 999 F.2d 1557, 1561–62 (Fed. Cir. 1993). However, on this
record, the Examiner has not carried this burden.
In particular, as Appellant contends, the Examiner merely states that
“it does not appear that one of ordinary skill in the art would simply be able
to take the general idea of forming unique identifiers and apply it to each of
the physical properties recited without undue experimentations” (Reply Br.
16 (citing Ans. 24)), but the Examiner is making a “conclusory” statement.
Id. That is, although “[t]he examiner states that it does not ‘appear’ that a
particular task would be possible to do without undue experimentation,” the
Examiner “does not offer any intrinsic difference.” Id.
As Appellant points out, “[t]he specification does offer (see page3)
the fact that an area of about a square centimeter has been determined to be
sufficient to reduce the probability of two identical keys to essentially zero.”
Id. at 27. According to Appellant, “[t]his specification does not distinguish
between the various properties,” which “would suggest that this value would
be useful to them” and thus “the same length scales are applicable to all of
them.” Id.
A disclosure does not have to describe a claimed method in all its
particulars in order to be enabling wherein some additional research and
development is expected. (Id. at 7–8). See Amgen, Inc. v. Hoechst Marion
Roussel, Inc. 314 F.3d 1313, 1334 (Fed. Cir. 2003) (“The specification need
not explicitly teach those in the art to make and use the invention; the
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requirement is satisfied if, given what they already know, the specification
teaches those in the art enough that they can make and use the invention
without ‘undue experimentation.’”). Here, as the Examiner finds, the
claimed subject matter is in an old and well developed technology of making
“required measurements” and “convert[ing] this data into a unique
identifying key,” wherein there is a high level of predictability in the art.
Ans. 22–23. Accordingly, we find the Examiner does not provide
“sufficient reasons for doubting” Appellants’ assertion that the Specification
provides enabling support for using measurements of all physical properties
recited to form a unique identifying key. In re Wright, 999 F.2d at 1561–62.
Given the developed technology, high predictability in the art, and the
description in the Specification, the Examiner has not shown persuasively
that undue experimentation would have been required to make and use the
claimed invention. Thus, we do not sustain the rejection of claims 11–13,
15, 17–20, and 24–44 for lack of enablement.
Rejection of claims 1–13, and 16–26 under 35 U.S.C. § 112(b)
(Indefiniteness)
The Examiner rejects claims 1–13, and 16–29 as being indefinite.
Final Act. 9–11. In particular, the Examiner finds that the term “natural
surface” is “unclear.” Id. at 10. In particular, the Examiner contends that
“the specification is unclear what makes up that natural surface.” Id.
However, as the Examiner points out, “[t]he specification states that
[‘natural surface’] means ‘the surface originating during its actual
production process.’” Id. In light of this particular definition of “natural
surface,” a person of ordinary skill in the art would understand the metes and
bounds of the term as used in the claims to be the originated surface during
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the production process. In other words, by not specifying “what makes up
that natural surface” (Final Act. 10), the claim is merely broad, not
indefinite.
For the foregoing reasons, we do not sustain the indefiniteness
rejection of claims 1–13, and 16–29 under 35 U.S.C. § 112(b).
Claims 1–13, 17–22, 25 rejected under 35 U.S.C. § 101
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, 216–218 (2014)
(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 (1) certain methods of organizing human activity, such as
fundamental economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S.
at 611); (2) mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95
(1978)); and (3) mental processes (Gottschalk v. Benson, 409 U.S. 63, 69
(1972)).
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-
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eligible application.” Alice, 573 U.S. at 221 (internal citation omitted). “A
claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
The PTO recently published revised guidance on the application of
§ 101. USPTO’s January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance (“Memorandum”). Under that
guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see Manual of Patent Examining
Procedure (MPEP) § 2106.05(a)–(c), (e)–(h) (9th Ed., Rev.
08.2017, Jan. 2018)).
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that
are not “well-understood, routine, conventional” in the field (see
MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See Revised Guidance, 84 Fed. Reg. 56.

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Revised Guidance Step 1
Step 1 of the Revised Guidance asks whether the claimed subject
matter falls within the four statutory categories of patentable subject matter
identified by 35 U.S.C. § 101: process, machine, manufacture, or
composition of matter. Independent claim 1 recites a “method comprising
identifying an object.” Independent claim 8 recites an “apparatus for
identifying an object.” Here, claim 1 falls within the process category and
claim 8 falls within the machine category.
Revised Guidance Step 2A, Prong 1
Under Step 2A, Prong 1 of the Revised Guidance, we determine
whether the claims recite 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). See Revised Guidance.
The Examiner determines claim 1 recites “an algorithm for identifying
an object” which includes limitations that are similar to “organizing
information through mathematical correlations” (Digitech), and “[a]n
algorithm for calculating parameters indicating an abnormal condition” (In
re Grams). Final Act. 4; Ans. 3 (citing Digitech Image Techs., LLC v. Elecs.
for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014); In re Grams, 888
F.2d 835, 840 (Fed. Cir. 1989)). The Examiner reasons that these limitations
are considered (1) “an idea of itself,” i.e., mental processes that can be
performed by the human mind, or with pen and paper, and (2) “a
mathematical algorithm, in which results obtained from the scanning (a
process which is recited at a high level of generality) are converted through a
fixed and deterministic process . . . to obtain a unique key.” Ans. 3–4.
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Independent claim 1 recites, in relevant part, “identifying an object”
which comprises “scanning” part of the object which in turn comprises
“measuring” values, “deriving” a result, and “combining” the values.
Independent claim 8 recites an “apparatus” comprising a “scanning unit”
being configured to perform steps similar to those in claim 1.
We agree with the Examiner that these limitations, under their
broadest reasonable interpretation, recite “an algorithm for identifying an
object.” Final Act. 4. That is, these limitations are directed to a scanning
step which merely comprises measuring, deriving and combining various
data, constituting an evaluation or judgment. We agree that the scanning
step can be identified as an exemplary mathematical concept or “a mental
process which can be performed by the human mind, and it is a
mathematical calculation” in the Revised Guidance. See Ans. 3–4; Revised
Guidance, 84 Fed. Reg. at 52.
In particular, these steps of measuring, deriving and combining data
constitute mental steps because they involve merely making a mental
observation of data and evaluating/judging the data, which can be carried out
either in the human mind (e.g., in the form of noting an observation) or with
the aid of pencil and paper. See 2019 Guidance 52 n.14; see CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372–73 (Fed. Cir. 2011)
(“[A] method that can be performed by human thought alone is merely an
abstract idea and is not patent-eligible under § 101.”); see also In re
Comiskey, 554 F.3d 967, 979 (Fed. Cir. 2009) (“[M]ental processes—or
processes of human thinking—standing alone are not patentable even if they
have practical application.”); Gottschalk v. Benson, 409 U.S. 63, 67 (1972)
(“Phenomena of nature, . . . mental processes, and abstract intellectual
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concepts are not patentable, as they are the basic tools of scientific and
technological work.” (Emphasis added)). Additionally, mental processes
remain unpatentable even when automated to reduce the burden on the user
of what once could have been done with pen and paper. CyberSource, 654
F.3d at 1375 (“That purely mental processes can be unpatentable, even when
performed by a computer, were precisely the holding of the Supreme Court
in Gottschalk v. Benson.”). Acts that can be performed in the human mind
fall within the abstract idea exception subgrouping of mental processes.
Furthermore, measuring and deriving various data is also mathematical
calculation, a mathematical concept falling within the abstract idea
exception.
Thus, under the broadest reasonable interpretation, we conclude
claims 1 and 8 recite an evaluation or judgment of data, which falls within
the mental processes category as well as the mathematical concept category,
identified in the Revised Guidance.
Revised Guidance Step 2A, Prong 2
Under Step 2A, Prong 2 of the Revised Guidance, we next determine
whether the claims recite additional elements that integrate the judicial
exception into a practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h)).
However, we discern no additional element (or combination of elements)
recited in Appellant’s claims 1 and 8 that integrates the judicial exception
into a practical application. See Revised Guidance, 84 Fed. Reg. at 54–55
(“Prong Two”).
Although claim 8 recites a “scanning unit” and “identification unit,”
these elements do not (1) improve the functioning of a computer or other
technology, (2) are not applied with any particular machine (except for
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generic computer components), (3) do not effect a transformation of a
particular article to a different state, and (4) are not applied in any
meaningful way beyond generally linking the use of the judicial exception to
a particular technological environment, such that the claim as a whole is
more than a drafting effort designed to monopolize the exception. See
MPEP §§ 2106.05(a)–(c), (e)–(h).
Appellants contend that “the claimed method recites a practical
solution to a difficult technical problem, namely the problem of detecting
counterfeit bottles.” App. Br. 7. Thus, according to Appellants, “[t]he claim
involves using an actual machine, i.e., a scanner, to interact with an actual
physical object.” Id. We are not persuaded by Appellants’ arguments.
Notably, Appellant has not persuasively explained how claim 1 and/or
claim 8 recites improvements to any technology or technical field (see
MPEP § 2106.05(a)), improves a particular machine (see MPEP
§ 2106.05(b)), transforms or reduces a particular article to a different state or
thing (see MPEP § 2106.05(c)), or describes a process or product that
applies the exception in a meaningful way, such that it is more than a
drafting effort designed to monopolize the exception (see MPEP
§ 2106.05(e)). See App. Br. 7‒8 (emphasis added).
Appellant argues the claimed invention is directed using a scanner to
interact with an object, and to use the result for detecting counterfeit bottles.
Id. at 7. However, claim 1 recites a scanning step but does not recite any
scanner to interact with an object, and in fact, does not recite any step of
using a scanning result for detecting counterfeit bottles. See claim 1.
Although claim 8 does recite a “scanning unit” and “identification unit,” the
claim does not recite any mechanism to use the result for detecting
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counterfeit bottles. See claim 8. As the Examiner explains, the claimed
elements “are recited at a high level of generality and do not sufficiently
narrow the claim as a whole to a particular application of the abstract idea.”
Final Act. 5–6.
For these reasons, we are not persuaded that claims 1 and 8 recite
“additional elements” that integrate the abstract idea into a practical
application. As such, we agree with the Examiner that the claims are
“directed to” an abstract idea.
Revised Guidance Step 2B
Under Step 2B of the Revised Guidance, 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 adds a specific limitation
beyond the judicial exception that is not “well-understood, routine,
conventional” in the field (see MPEP § 2106.05(d)); or, simply appends
well-understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception.
See 2019 Revised Guidance, 84 Fed. Reg. at 56. However, we find no
element or combination of elements recited in Appellant’s claims 1 and 8,
either individually or “as an ordered combination,” recite an “inventive
concept” or add anything “significantly more” to transform the abstract idea
into a patent-eligible application. Alice, 573 U.S. at 221.
Appellant does not identify any specific limitation of claims 1 and 8
beyond the judicial exception that is not “well-understood, routine,
conventional’ in the field” as per MPEP § 2106.05(d). Instead, Appellant
contends that the claimed method “is not some business method that
involves doing nothing but moving data between bank accounts,” but rather,
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“[t]he claim involves using an actual machine, i.e., a scanner, to interact with
an actual physical object, and to use the result of that interaction to
accomplish a useful result, i.e. detecting counterfeit bottles.” App. Br. 7.
According to Appellant, “the existing technological process is that of object
identification,” and the invention “represents an improvement because it
simplifies the task of key generation.” Reply Br. 5. However, we are not
persuaded by Appellant’s argument.
To the extent Appellant contends that the recited limitations add
significantly more than the abstract idea (id.), generating key/data is not an
additional element beyond the abstract idea, but rather is part of the abstract
idea itself. See BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290
(Fed. Cir. 2018) (explaining that the Supreme Court in Alice “only assessed
whether the claim limitations other than the invention’s use of the ineligible
concept to which it was directed were well understood, routine and
conventional”).
We briefly look to whether any additional limitations in claims 1 and
8 include an inventive concept. Here, although Appellant contends that
“[t]he claim involves using an actual machine, i.e., a scanner” (App. Br. 7),
limitations of “scanning” which comprises “measuring,” “deriving” and
“combining” various data, even if performed using “an actual machine,” as
set forth in claims 1 and 8, do not individually or as an order combination
define ways of measuring, deriving, and combining that is different than any
of the myriad conventional ways in which a computer can measure, derive
and combine data, and thus do not provide an inventive concept. See, e.g.,
buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (“That
a computer receives and sends the information over a network—with no
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further specification—is not even arguably inventive.”). The focus of claims
1 and 8 is not on an improvement in computer processors as tools, but on
certain independently abstract ideas that use generic computing components
as tools. See FairWarning IP, LLC v. IA, 839 F.3d 1089, 1095 (Fed. Cir.
2016). As with the ineligible claimed invention in BSG, the elements in the
claims both individually and “as an ordered combination” do not improve a
computer’s functionality or that of its associated components, but rather the
benefits flow from performing the abstract idea in conjunction with those
generic computer components. See BSG, 899 F.3d at 1288 (“While the
presentation of summary comparison usage information to users improves
the quality of the information added to the database, an improvement [in] . . .
the information stored by a database is not equivalent to an improvement in
the database’s functionality.”).
Therefore, claims 1 and 8 do not recite an inventive concept.
Accordingly, we agree with the Examiner that independent claims 1 and 8,
and claims depending respectively therefrom and not specifically argued
separately, are directed to patent-ineligible subject matter.
CONCLUSION
The Examiner’s rejection of claims 1–13, and 16–29 under 35 U.S.C.
§ 112(a) for lack of written description is affirmed.
The Examiner’s rejection of claims 20, and 24–29 under 35 U.S.C.
§ 112(a) for lack of enablement is reversed.
The Examiner’s rejection of claims 1–13, and 16–29 under 35 U.S.C.
§ 112(b) as being indefinite is reversed.
The Examiner’s rejection of claims 1–13, 17–22, and 25 under
35 U.S.C. § 101 as being directed to a judicial exception (i.e., a law of
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nature, a natural phenomenon, or an abstract idea); and not directed to
significantly more than the abstract idea itself is affirmed.

DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis  Affirmed Reversed
1–13, 16–29 112(a) Written description 1–13, 16–29
20, 24–29 112(a) Enablement  20, 24–29
1–13, 16–29 112(b) Indefiniteness 1–13, 16–29
1–13, 17–22, 25 101 Eligibility 1–13, 17–22, 25
Overall Outcome: 1–13, 16–29

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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED