Kazunari ToyamaDownload PDFPatent Trials and Appeals BoardSep 23, 201914546907 - (D) (P.T.A.B. Sep. 23, 2019) Copy Citation 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. 14/546,907 11/18/2014 Kazunari TOYAMA KP-13566 1643 21254 7590 09/24/2019 MCGINN INTELLECTUAL PROPERTY LAW GROUP, PLLC 8321 OLD COURTHOUSE ROAD SUITE 200 VIENNA, VA 22182-3817 EXAMINER LE, UYEN T ART UNIT PAPER NUMBER 2157 MAIL DATE DELIVERY MODE 09/24/2019 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte KAZUNARI TOYAMA ____________ Appeal 2018-007725 Application 14/546,907 Technology Center 2100 ____________ Before KARA L. SZPONDOWSKI, SCOTT B. HOWARD, and STEVEN M. AMUNDSON, Administrative Patent Judges. AMUNDSON, Administrative Patent Judge. DECISION ON APPEAL Appellant1 seeks our review under 35 U.S.C. § 134(a) from a rejection of claims 1–15 and 18–22, i.e., all pending claims. Because the claims have been twice rejected, we have jurisdiction under 35 U.S.C. §§ 6(b) and 134(a). See Ex parte Lemoine, 46 USPQ2d 1420, 1423 (BPAI 1994) (precedential). 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 FujiFilm Corporation. Appeal Br. 1. Appeal 2018-007725 Application 14/546,907 2 STATEMENT OF THE CASE The Invention According to the Specification, the invention relates to “a repair information management apparatus, a repair information management system, and a repair information management method for managing repair information of medical equipment.” Spec. 1:14–17.2 The Specification explains that “it is extremely difficult to keep track of the regulations of many countries and perform the repairs of” medical equipment to comply with the regulations of different countries. Id. at 2:28–30. Hence, the invention endeavors to “facilitate and ensure a repair to be compliant with a regulation.” Id. at 3:1–5. Exemplary Claim Independent claim 1 exemplifies the claims at issue and reads as follows (with formatting added for clarity): 1. A repair information management apparatus for managing repair information of a medical equipment, the repair information management apparatus comprising: an operation screen distributor for distributing operation screens to a plurality of terminals through a network, the repair information being inputted through and displayed on the operation screen; and a database for storing predetermined regulations information related to predetermined regulations on the medical equipment or each part constituting the medical equipment, the predetermined regulations information being stored in the 2 This decision uses the following abbreviations: “Spec.” for the Specification, filed November 18, 2014; “Non-Final Act.” for the Non-Final Office Action, mailed October 6, 2017; “Appeal Br.” for the Appeal Brief, filed March 7, 2018; “Ans.” for the Examiner’s Answer, mailed June 29, 2018; and “Reply Br.” for the Reply Brief, filed July 23, 2018. Appeal 2018-007725 Application 14/546,907 3 database for the purpose of displaying whether the medical equipment or the part constituting the medical equipment is a compliant product that is compliant with the predetermined regulations or a non-compliant product that is not compliant with the predetermined regulations on the operation screen, wherein, when a determination is made that a repair of the medical equipment is compliant with the predetermined regulations, one of an indicator and a sign is assigned to a repair case indicating that the repair was made in compliance with the predetermined regulations, and wherein, when a determination is made that a repair of the medical equipment is not compliant with the predetermined regulations, one of an indicator and a sign is assigned to a repair case indicating that the repair was not made in compliance with the predetermined regulations. Appeal Br. 15 (Claims App.). The Prior Art Supporting the Rejections on Appeal As evidence of anticipation under 35 U.S.C. § 102 and obviousness under 35 U.S.C. § 103, the Examiner relies on the following prior art: The Rejections on Appeal Claims 1–15 and 18–22 stand rejected under 35 U.S.C. § 101 as directed to patent-ineligible subject matter. Non-Final Act. 4–6. Claims 1–9, 11–15, 18, and 19 stand rejected under 35 U.S.C. § 102 as anticipated by Hart. Non-Final Act. 8–13.3 3 Although the Examiner includes claim 10 in the list of claims rejected under § 102, the Examiner rejects claim 10 under § 103. Non-Final Act. 8, 13–14. We treat this as a harmless typographical error. Dellar et al. (“Dellar”) US 2003/0055753 A1 Mar. 20, 2003 Hart US 2004/0262387 A1 Dec. 30, 2004 Appeal 2018-007725 Application 14/546,907 4 Claim 10 stands rejected under 35 U.S.C. § 103 as unpatentable over Hart and Dellar. Non-Final Act. 13–14. ANALYSIS We have reviewed the rejections in light of Appellant’s arguments that the Examiner erred. For the reasons explained below, we agree with the Examiner’s conclusion concerning ineligibility under § 101. We adopt the Examiner’s findings and reasoning regarding the § 101 rejection in the Office Action and Answer. See Non-Final Act. 4–6; Ans. 4–6. But we disagree with the Examiner’s determinations under § 102 and § 103. We provide the following to address and emphasize specific findings and arguments. The § 101 Rejection of Claims 1–15 and 18–22 INTRODUCTION The Patent Act defines patent-eligible subject matter broadly: “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.” 35 U.S.C. § 101. In Mayo and Alice, the Supreme Court explained that § 101 “contains an important implicit exception” for laws of nature, natural phenomena, and abstract ideas. Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012); Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014); see Diamond v. Diehr, 450 U.S. 175, 185 (1981). In Mayo and Alice, the Court set forth a two-step analytical framework for evaluating patent-eligible subject matter. Mayo, 566 U.S. at 77–80; Alice, 573 U.S. at 217–18. Appeal 2018-007725 Application 14/546,907 5 Under Mayo/Alice step one, we “determine whether the claims at issue are directed to” a judicial exception, i.e., an abstract idea, a law of nature, or a natural phenomenon. Alice, 573 U.S. at 217. Step one involves looking at the “focus” of the claims at issue and their “character as a whole.” SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018). In January 2019, the PTO issued revised guidance for determining whether claims are directed to a judicial exception. See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019 Guidance”). The 2019 Guidance applies to the Board. Id. at 50–51, 57 n.42; see 35 U.S.C. § 3(a)(2)(A) (investing the Director with responsibility “for providing policy direction” for the PTO). Neither the Examiner nor Appellant had the benefit of the 2019 Guidance when presenting their respective positions concerning subject-matter eligibility. The 2019 Guidance specifies two prongs for the analysis under Mayo/Alice step one (PTO step 2A). 84 Fed. Reg. at 54–55. Prong one requires evaluating “whether the claim recites a judicial exception, i.e., an abstract idea, a law of nature, or a natural phenomenon.” Id. at 54. “If the claim does not recite a judicial exception, it is not directed to a judicial exception,” and it satisfies § 101. Id. “If the claim does recite a judicial exception, then it requires further analysis” under prong two. Id. Prong two requires evaluating “whether the claim as a whole integrates the recited judicial exception into a practical application of the exception.” Id. “When the exception is so integrated, then the claim is not directed to a judicial exception,” and it satisfies § 101. Id. “If the additional elements do not integrate the exception into a practical application, then the claim is directed Appeal 2018-007725 Application 14/546,907 6 to the judicial exception,” and it “requires further analysis” under Mayo/Alice step two (PTO step 2B). Id. Under Mayo/Alice step two, we “consider the elements of each claim both individually and ‘as an ordered combination’ to determine whether the additional elements” add enough to transform the “nature of the claim” into “significantly more” than the judicial exception. Alice, 573 U.S. at 217–18, 221–22 (quoting Mayo, 566 U.S. at 78–79). Step two involves the search for an “inventive concept.” Alice, 573 U.S. at 217–18, 221; Univ. of Fla. Research Found., Inc. v. Gen. Elec. Co., 916 F.3d 1363, 1366 (Fed. Cir. 2019). “[A]n inventive concept must be evident in the claims.” RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017). MAYO/ALICE STEP ONE: PTO STEP 2A PRONG ONE For Mayo/Alice step one, the Federal Circuit has noted 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). Here, the Examiner determines that the claims are directed to the abstract idea of “collection of data from different part[s] of medical equipment, analysis of said data by generation or displays/screens of the result of the analysis to obtain insight of the analyzed data in repairing medical equipment.” Ans. 5; see Non-Final Act. 4; Ans. 4. The Examiner reasons that the claims resemble the patent-ineligible claims in Electric Power directed to “collecting information, analyzing it, and displaying certain results of the collection and analysis.” Ans. 4–5 (citing Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016)); see Non-Final Act. 4. The Examiner explains that the claims automate “medical equipment repairing for what Appeal 2018-007725 Application 14/546,907 7 people can and do mentally (or with pen and paper) which is generally an abstract idea.” Ans. 5. Appellant asserts that the “claimed subject matter is clearly not an abstract idea.” Appeal Br. 8; see Reply Br. 1. In addition, Appellant contends that “if a claim is not drawn to an ‘abstract idea’ as that term is used in Alice, then the Alice test does not deem the claim to be patent ineligible-period.” Appeal Br. 8. We disagree that the Examiner errs under Mayo/Alice step one. In determining that the claims are directed to an abstract idea, the Examiner accurately assesses the “focus” of the claims and their “character as a whole.” See Non-Final Act. 4–5; Ans. 4–5; see also SAP Am., 898 F.3d at 1167. In addition, we determine that the claims recite abstract ideas falling within one of the three groupings of abstract ideas specified in the 2019 Guidance, i.e., “mental processes.” See 84 Fed. Reg. at 51–52. The 2019 Guidance describes “mental processes” as “concepts [practically] performed in the human mind,” such as “an observation, evaluation, judgment, [or] opinion.” Id. at 52 (footnote omitted). As explained below, each independent claim recites “mental processes” in various limitations. For instance, independent claims 1, 11, and 12 each recite the following limitations: ● “wherein, when a determination is made that a repair of the medical equipment is compliant with the predetermined regulations, one of an indicator and a sign is assigned to a repair case indicating that the repair was made in compliance with the predetermined regulations”; and Appeal 2018-007725 Application 14/546,907 8 ● “wherein, when a determination is made that a repair of the medical equipment is not compliant with the predetermined regulations, one of an indicator and a sign is assigned to a repair case indicating that the repair was not made in compliance with the predetermined regulations.” Appeal Br. 15, 17–18. The above-identified limitations encompass evaluations practically performed by a human mentally or with pen and paper. The Specification explains that “a user in the repair center” may “check . . . regulatory compliance information.” Spec. 11:4–5. The Specification also explains that (1) an “indicator ‘o’ is assigned to the repair in a case where the repair performed is in compliance with the regulation” and (2) an “indicator or sign ‘!’ is assigned to the repair in a case where the repair performed is not compliant with the regulation.” Id. at 12:17–19, 12:25–27. Hence, someone could mentally compare repair information and regulatory-compliance information. Based on that mental comparison, someone could mentally determine whether a repair did or did not comply with a predetermined regulation. And based on that mental determination, someone could assign, e.g., with pen and paper, an indicator or a sign to a “repair case” indicating whether the repair did or did not comply with the predetermined regulation. For instance, someone could assign, e.g., with pen and paper, the indicator “o” to denote compliance or assign the indicator “!” to denote noncompliance. For these reasons, the above-identified limitations encompass evaluations practically performed by a human mentally or with pen and paper. The 2019 Guidance identifies an evaluation practically performed by a human mentally or with pen and paper as a mental process, and thus an Appeal 2018-007725 Application 14/546,907 9 abstract idea. 84 Fed. Reg. at 52 & nn.14–15; see also Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016) (“Symantec”) (“[W]ith the exception of generic computer-implemented steps, there is nothing in the claims themselves that foreclose them from being performed by a human, mentally or with pen and paper.”). MAYO/ALICE STEP ONE: PTO STEP 2A PRONG TWO Because we determine that each independent claim recites abstract ideas, we consider whether each claim as a whole integrates the recited abstract ideas into a practical application. See 84 Fed. Reg. at 54–55. “Only when a claim recites a judicial exception and fails to integrate the exception into a practical application, is the claim ‘directed to’ a judicial exception . . . .” Id. at 51. As additional elements, the independent claims recite computer- system components. Appeal Br. 15, 17–18. Specifically, the claims recite a “database” and “terminals” connected through a “network.” Id. at 15, 17–18. The independent claims also recite data-collecting and data-presenting limitations. Id. at 15, 17–18. For instance, claim 1 recites the following data-collecting and data-presenting limitations: ● “distributing operation screens to a plurality of terminals”; ● “repair information being inputted through and displayed on the operation screen”; and ● “storing predetermined regulations information related to predetermined regulations on the medical equipment or each part constituting the medical equipment, the predetermined regulations information being stored . . . for the purpose of displaying whether the medical equipment or the part constituting the medical equipment Appeal 2018-007725 Application 14/546,907 10 is a compliant product that is compliant with the predetermined regulations or a non-compliant product that is not compliant with the predetermined regulations on the operation screen.” Id. at 15. Claims 11 and 12 recite similar data-collecting and data- presenting limitations. Id. at 17–18. We determine that each independent claim as a whole does not integrate the recited abstract ideas into a practical application because the additional elements do not impose meaningful limits on the abstract ideas. See 84 Fed. Reg. at 53–54; see also Non-Final Act. 4–5; Ans. 4–6. The Examiner correctly finds that the claimed computer-system components constitute generic computer-system components that perform generic computer functions. See Non-Final Act. 5–6; Ans. 5–6; see also Spec. 8:17–9:12. Further, the data-collecting and data-presenting limitations constitute insignificant extra-solution activity. See, e.g., Mayo, 566 U.S. at 79; Bilski v. Kappos, 561 U.S. 593, 611–12 (2010); Apple, 842 F.3d at 1241–42; OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363–64 (Fed. Cir. 2015); Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014); CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011); In re Grams, 888 F.2d 835, 839–40 (Fed. Cir. 1989). As an example of insignificant extra-solution activity, in Mayo the Supreme Court decided that measuring metabolite levels for later analysis constituted purely “conventional or obvious” pre-solution activity. Mayo, 566 U.S. at 79. Similarly, the Federal Circuit has held that mere data- gathering steps “cannot make an otherwise nonstatutory claim statutory.” CyberSource, 654 F.3d at 1370 (quoting Grams, 888 F.2d at 840). The Appeal 2018-007725 Application 14/546,907 11 Federal Circuit has also held that (1) presenting offers to potential customers and (2) gathering statistics concerning customer responses were “conventional data-gathering activities that d[id] not make the claims patent eligible.” OIP Techs., 788 F.3d at 1363–64. Consistent with those decisions, the Manual of Patent Examining Procedure (“MPEP”) identifies “gathering data” as an example of insignificant pre-solution activity. MPEP § 2106.05(g) (9th ed. rev. 08.2017 Jan. 2018). Here, the data-collecting limitations amount to mere data-gathering steps and require nothing unconventional or significant. See Classen Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057, 1067 (Fed. Cir. 2011) (analogizing “data gathering” to “insignificant extra-solution activity”). For example, the Specification explains that “the regulation information of a part subject to the regulation is inputted to the parts list” to associate each part “with the regulation information.” Spec. 13:5–14. The Specification also explains that a “tools and materials list” is “associated with the regulation information and updated when the regulation information is inputted.” Id. at 13:19–22. The Specification describes nothing unconventional concerning collecting and inputting information about regulations or parts used in medical equipment. Hence, the data-collecting limitations do not help integrate the recited abstract ideas into a practical application. Further, in Flook the Supreme Court decided that adjusting an alarm limit according to a mathematical formula was “post-solution activity” and insufficient to confer eligibility. Parker v. Flook, 437 U.S. 584, 590, 596–98 (1978). Similarly, the Federal Circuit has held that printing menu information constituted insignificant post-solution activity. Apple, 842 F.3d Appeal 2018-007725 Application 14/546,907 12 at 1241–42. Consistent with those decisions, the MPEP identifies printing “to output a report” as an example of insignificant post-solution activity. MPEP § 2106.05(g). Here, the data-presenting limitations require no particular presentation tool and nothing unconventional or significant. For example, the claims require nothing more than a generic “operation screen” for receiving and presenting information. Appeal Br. 15, 17–18. Just as printing menu information in Apple constituted insignificant post-solution activity, distributing and displaying a generic “operation screen” here constitutes insignificant post-solution activity. Hence, the data-presenting limitations do not help integrate the recited abstract ideas into a practical application. Appellant asserts that the claims recite “a technology-based solution (not an abstract-idea-based solution implemented with generic technical components in a conventional way) that includes an unconventional application.” Appeal Br. 10; Reply Br. 3. According to Appellant, the claimed invention provides a “new combination of elements [that] overcomes existing problems with other conventional methods and devices.” Appeal Br. 10; Reply Br. 3. In addition, Appellant analogizes the claims here to the claims in BASCOM. See Appeal Br. 9–10 (citing BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016)). BASCOM does not aid Appellant. In BASCOM, the claims recited a “specific method of filtering Internet content” requiring “the installation of a filtering tool at a specific location, remote from the end-users, with customizable filtering features specific to each end user.” BASCOM, 827 F.3d at 1345–46, 1350. The Federal Circuit decided that the claims Appeal 2018-007725 Application 14/546,907 13 satisfied § 101 under Mayo/Alice step two. Id. at 1349–51. The court reasoned that the claims covered “a technology-based solution . . . to filter content on the Internet that overcomes existing problems with other Internet filtering systems” and “improve[s] an existing technological process.” Id. at 1351 (citing Alice, 573 U.S. at 223); see Alice, 573 U.S. at 223 (explaining that “the claims in Diehr were patent eligible because they improved an existing technological process”). Unlike the claims in BASCOM, the claims here do not cover a technology-based solution that improves an existing technological process. See Non-Final Act. 5; Ans. 5–6. As the Examiner determines, “[t]here is no indication that the combination of elements improves the functioning of a computer or improves another technology.” Non-Final Act. 5; Ans. 5. Rather, as the Examiner reasons, the claims “provide an automatic tool to gain insight in repairing a medical equipment which is merely a field of use of the generic computer.” Ans. 5. Further, the Examiner correctly finds that the claims do not “enhance the processing speed/throughput of a computer by itself” or “resolv[e] any known issues in the medical equipment repairing” field. Ans. 6. For instance, the claims do not recite an advance in hardware or software that causes a database itself or a terminal itself to operate faster or more efficiently. Moreover, the claims do not require an unconventional arrangement of components or an uncommon network configuration. Instead, the claims use conventional computer-system components, i.e., a “database,” “terminals,” and a “network,” in their ordinary capacities to communicate, manipulate, and display data. See Appeal Br. 15, 17–18; Spec. 8:17–9:12. Appeal 2018-007725 Application 14/546,907 14 The 2019 Guidance identifies exemplary considerations indicating that additional elements in claims “may have integrated the [judicial] exception into a practical application.” 84 Fed. Reg. at 55 & nn.25–29 (citing MPEP §§ 2106.05(a)–(c), 2106.05(e)). As the above analysis indicates, we have evaluated Appellant’s arguments in light of those exemplary considerations. For the reasons discussed above, however, we determine that each independent claim as a whole does not integrate the recited abstract ideas into a practical application. Thus, each claim is directed to a judicial exception and does not satisfy § 101 under Mayo/Alice step one. MAYO/ALICE STEP TWO: PTO STEP 2B Because we determine that each independent claim is directed to a judicial exception, we “consider the elements of each claim both individually and ‘as an ordered combination’ to determine whether the additional elements” add enough to transform the “nature of the claim” into “significantly more” than the judicial exception. See Alice, 573 U.S. at 217–18, 221–22 (quoting Mayo, 566 U.S. at 78–79). Under Mayo/Alice step two, we “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 of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1258 (Fed. Cir. 2016) (quoting Elec. Power, 830 F.3d at 1353). An “inventive concept” requires more than “well-understood, routine, conventional activity already engaged in” by the relevant community. Rapid Litig. Mgmt. Ltd. v. CellzDirect, Inc., 827 F.3d 1042, 1047 (Fed. Cir. 2016) (quoting Mayo, 566 U.S. at 79–80). But a “non-conventional and non-generic arrangement Appeal 2018-007725 Application 14/546,907 15 of known, conventional pieces” may provide an “inventive concept” satisfying step two. BASCOM, 827 F.3d at 1350. As discussed above, the independent claims recite the following computer-system components: a “database” and “terminals” connected through a “network.” Appeal Br. 15, 17–18. As also discussed above, the Examiner correctly finds that the claimed computer-system components constitute generic computer-system components that perform generic computer functions. See Non-Final Act. 5–6; Ans. 5–6. As the Examiner explains, the “functions merely provide conventional computer implementations.” Non-Final Act. 5. Consistent with the Examiner’s findings, the Specification describes the claimed computer-system components generically and evidences their conventional nature. See, e.g., Spec. 8:17–9:12. As an example, the Specification describes a “user terminal” as “for example, a notebook personal computer” that communicates according to “a predetermined communications protocol such as HTTP (Hyper Text Transfer Protocol).” Spec. 8:17–20. The Specification explains that “[b]rowser software is installed on the user terminal.” Id. at 8:27. The Specification also explains that “the browser software is a standard one installed on a commercially available personal computer or the like.” Id. at 8:31–32. Simply implementing an abstract idea using conventional machines or devices “add[s] nothing of substance.” See Alice, 573 U.S. at 226–27; see also Mayo, 566 U.S. at 84–85 (explaining that “simply implementing a mathematical principle on a physical machine” does not suffice for patent eligibility) (citing Gottschalk v. Benson, 409 U.S. 63, 64–65, 71 (1972)). Appeal 2018-007725 Application 14/546,907 16 In addition, the claimed computer-system components operate to communicate, manipulate, and display data. Appeal Br. 15, 17–18; see Non-Final Act. 4–5; Ans. 5–6. Court decisions have recognized that generic computer-system components operating to communicate, manipulate, and display data are well understood, routine, and conventional to a skilled artisan. See, e.g., Alice, 573 U.S. at 226–27; SAP Am., 898 F.3d at 1164–65 & n.1, 1170; Apple, 842 F.3d at 1234, 1241–42; Symantec, 838 F.3d at 1316–20; Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334 (Fed. Cir. 2015); Ultramercial, 772 F.3d at 715–16; buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014). For example, the system claims in Alice recited a “data processing system” with a “communications controller” and a “data storage unit” comparable to the claimed “database” and “terminals” connected through a “network” here. Alice, 573 U.S. at 226. The Supreme Court decided that the system claims failed to satisfy § 101 because “[n]early every computer” includes those generic components for performing “basic calculation, storage, and transmission functions” and the system claims simply implemented the same abstract idea as the method claims. Id. at 226–27. The Supreme Court reasoned that (1) “the system claims are no different from the method claims in substance”; (2) “[t]he method claims recite the abstract idea implemented on a generic computer”; and (3) “the system claims recite a handful of generic computer components configured to implement the same idea.” Id. at 226. Here, the claimed computer-system components perform “basic calculation, storage, and transmission functions” that nearly every computer system performs. Appeal Br. 15, 17–18; see Non-Final Act. 5–6; Ans. 5–6. Appeal 2018-007725 Application 14/546,907 17 Hence, the claimed computer-system components do not satisfy the “inventive concept” requirement. See, e.g., Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324–25 (Fed. Cir. 2016) (holding that “generic computer components such as an ‘interface,’ ‘network,’ and ‘database’” did not satisfy the “inventive concept” requirement); FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1095–96 (Fed. Cir. 2016) (describing the claimed “microprocessor” and “user interface” as “generic computer elements”); Prism Techs. LLC v. T-Mobile USA, Inc., 696 F. App’x 1014, 1016–17 (Fed. Cir. 2017) (describing the claimed “authentication server,” “access server,” “Internet Protocol network,” “client computer device,” and “database” as “indisputably generic computer components”). We reach a similar conclusion concerning the data-collecting and data-presenting limitations. As discussed above, the data-collecting limitations amount to mere data-gathering steps and require nothing unconventional or significant. As also discussed above, the data-presenting limitations require no particular presentation tool and nothing unconventional or significant. Consequently, the claimed insignificant extra-solution activity does not satisfy the “inventive concept” requirement. See, e.g., Mayo, 566 U.S. at 79–80; Flook, 437 U.S. at 590; Apple, 842 F.3d at 1241–42; OIP Techs., 788 F.3d at 1363–64; CyberSource, 654 F.3d at 1370. Insofar as Appellant relies on the recited abstract ideas to satisfy the “inventive concept” requirement, Appellant wrongly does so. See, e.g., Appeal Br. 8–11; Reply Br. 2–5. A “claimed invention’s use of the ineligible concept,” e.g., an abstract idea, “cannot supply the inventive Appeal 2018-007725 Application 14/546,907 18 concept that renders the invention ‘significantly more’ than that ineligible concept.” BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018). “[U]nder the Mayo/Alice framework, a claim directed to a newly discovered” abstract idea “cannot rely on the novelty of that discovery for the inventive concept necessary for patent eligibility.” Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016). Based on Berkheimer, Appellant asserts that the Examiner “has the burden to demonstrate that it was conventional and well known in the art to apply the claimed mechanism.” Reply Br. 5 (citing Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018)). But PTO guidance4 about Berkheimer explains that citations to court decisions may demonstrate “the well- understood, routine, conventional nature of the additional element(s).” Apr. 19, 2018 PTO Mem. 4. As discussed above, court decisions have recognized that generic computer-system components operating to communicate, manipulate, and display data are well understood, routine, and conventional to a skilled artisan. See, e.g., Alice, 573 U.S. at 226–27; SAP Am., 898 F.3d at 1164–65 & n.1, 1170; Apple, 842 F.3d at 1234, 1241–42; Symantec, 838 F.3d at 1316–20; Versata, 793 F.3d at 1334; Ultramercial, 772 F.3d at 715–16; buySAFE, 765 F.3d at 1355. Appellant argues that the claimed invention “does not pre-empt each and every way to perform the abstract idea.” Appeal Br. 10; see id. at 9; Reply Br. 3–4. That argument does not persuade us of Examiner error. While preemption may denote patent ineligibility, its absence does not 4 USPTO Memorandum, Changes in Examination Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.) (Apr. 19, 2018). Appeal 2018-007725 Application 14/546,907 19 establish patent eligibility. See FairWarning, 839 F.3d at 1098. For claims covering a patent-ineligible concept, preemption concerns “are fully addressed and made moot” by an analysis under the Mayo/Alice framework. Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). “Whether a combination of claim limitations supplies an inventive concept that renders a claim ‘significantly more’ than an abstract idea to which it is directed is a question of law.” BSG Tech, 899 F.3d at 1290. Given the claimed generic computer-system components that perform generic computer functions and the claimed insignificant extra-solution activity, we conclude that the combination of limitations in each independent claim does not supply an “inventive concept” that renders the claim “significantly more” than an abstract idea. Thus, each claim does not satisfy § 101 under Mayo/Alice step two. SUMMARY FOR INDEPENDENT CLAIMS 1, 11, AND 12 For the reasons discussed above, each independent claim fails to satisfy § 101 under Mayo/Alice step one and step two. Hence, we sustain the § 101 rejection of the independent claims. DEPENDENT CLAIMS 2–10, 13–15, AND 18–22 We also sustain the § 101 rejection of dependent claims 2–10, 13–15, and 18–22 because Appellant does not argue eligibility separately for them. See Appeal Br. 8–11; Reply Br. 1–5; 37 C.F.R. § 41.37(c)(1)(iv). The § 102 Rejection of Claims 1––9, 11–15, 18, and 19 INDEPENDENT CLAIMS 1, 11, AND 12 As noted above, the § 102 rejection of claims 1, 11, and 12 rests on Hart. See Non-Final Act. 8–10, 12. Appellant argues that the Examiner Appeal 2018-007725 Application 14/546,907 20 erred in rejecting each claim because Hart does not describe the following limitations in each claim: ● “wherein, when a determination is made that a repair of the medical equipment is compliant with the predetermined regulations, one of an indicator and a sign is assigned to a repair case indicating that the repair was made in compliance with the predetermined regulations”; and ● “wherein, when a determination is made that a repair of the medical equipment is not compliant with the predetermined regulations, one of an indicator and a sign is assigned to a repair case indicating that the repair was not made in compliance with the predetermined regulations.” Appeal Br. 12; Reply Br. 5. Specifically, Appellant asserts that “there is no analysis in Hart of the compliance or storage of predetermined regulations of the medical equipment stored in a database.” Appeal Br. 12; Reply Br. 5. Appellant also asserts that “Hart relates to a pre-operation check of a fleet of equipment, not the database of specific components of medical devices.” Appeal Br. 12; Reply Br. 5. The Examiner finds that Hart discloses “a graphical user interactive interface including various options such as: daily inspection option, daily lubrication and others” and “various failing options such as investigating the failure mode in order to determine and carry out the appropriate repairs on the equipment and others.” Non-Final Act. 9–10 (citing Hart ¶¶ 27, 40–42, Figs. 6b–6c); see Ans. 10–12 (citing Hart ¶¶ 24–26, 28, 30, 39–41, 43, Figs. 1–2, 6b–6c). The Examiner also finds that Hart discloses “allow[ing] the user to determine the equipment repairing status and the compliance status of the regulations per merely look[ing] into the items that had been Appeal 2018-007725 Application 14/546,907 21 check[ed] off (or signed off) in the checklist per the graphic user interface application in a user device with Web Portal.” Ans. 12. Based on the record before us, we agree with Appellant that the Examiner has not adequately explained how the cited portions of Hart describe the disputed “wherein” limitations in claims 1, 11, and 12. Hart discloses an “equipment tracking system” that “provides a user with the ability to track and record equipment information related to the inspection, maintenance, service and repair of the user’s fleet of equipment.” Hart ¶ 28. Hart explains that “federal and state regulators” may “access inspection reports for the user’s fleet of equipment” through a web portal. Id. ¶ 27. Hart also explains that the system benefits both the regulating agency and the equipment owner because, among other things, “the relevant data can be formatted to agency’s needs” and “providing access to regulatory agencies will provide automated compliance, automatic archive quality backup of all data, and greater accuracy and accountability.” Id. Hence, Hart concerns automating regulatory-compliance activities. Hart does not, in the cited portions, describe determining whether a repair did or did not comply with a predetermined regulation and then assigning an indicator or a sign denoting compliance or noncompliance. Thus, we do not sustain the § 102 rejection of claims 1, 11, and 12. DEPENDENT CLAIMS 2–9, 13–15, 18, AND 19 Claims 2–9, 13, 15, 18, and 19 depend directly or indirectly from claim 1, while and claim 14 depends directly from claim 12. For the reasons discussed for claims 1 and 12, we do not sustain the § 102 rejection of claims 2–9, 13–15, 18, and 19. Appeal 2018-007725 Application 14/546,907 22 The § 103 Rejection of Claim 10 Claim 10 depends directly from claim 1. On this record, the Examiner has not shown how the additionally cited Dellar reference overcomes the deficiency in Hart discussed above for claims 1, 11, and 12. Thus, we do not sustain the § 103 rejection of claim 10. Because our determinations resolve the anticipation and obviousness issues for claims 1–15, 18, and 19, we need not address Appellant’s other arguments regarding Examiner error. See, e.g., Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (explaining that an administrative agency may render a decision based on “a single dispositive issue”). CONCLUSION We affirm the rejection of claims 1–15 and 18–22 under 35 U.S.C. § 101. We reverse the rejection of claims 1–9, 11–15, 18, and 19 under 35 U.S.C. § 102. We reverse the rejection of claim 10 under 35 U.S.C. § 103. Because we affirm at least one ground of rejection for each claim on appeal, we affirm the Examiner’s decision to reject all of the claims on appeal. See 37 C.F.R. § 41.50(a)(1). In summary: Claims Rejected Basis Affirmed Reversed 1–15 and 18–22 § 101 1–15 and 18–22 1–9, 11–15, 18, and 19 § 102 Hart 1–9, 11–15, 18, and 19 10 § 103 Hart, Dellar 10 Appeal 2018-007725 Application 14/546,907 23 Claims Rejected Basis Affirmed Reversed Overall Outcome 1–15 and 18–22 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 Copy with citationCopy as parenthetical citation