Kazunari Toyama

Patent Trials and Appeals Board

Sep 23, 2019

14546907 - (D) (P.T.A.B. Sep. 23, 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.
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.
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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.
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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
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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.
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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
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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
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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
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● “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
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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
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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
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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
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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
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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.
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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
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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)).
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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.
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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
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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).
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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
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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
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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.
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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
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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