Neeran Karnik et al.Download PDFPatent Trials and Appeals BoardMay 28, 20202019006055 (P.T.A.B. May. 28, 2020) 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. 12/977,780 12/23/2010 Neeran Karnik 0081-213001/10-038-US 9979 93236 7590 05/28/2020 Brake Hughes Bellermann LLP P.O. Box 1077 Middletown, MD 21769 EXAMINER RACIC, MILENA ART UNIT PAPER NUMBER 3627 NOTIFICATION DATE DELIVERY MODE 05/28/2020 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): docketing@brakehughes.com uspto@brakehughes.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte NEERAN KARNIK and ABHAY GHAISAS ____________ Appeal 2019-006055 Application 12/977,780 Technology Center 3600 ____________ Before JOHN A. JEFFERY, CATHERINE SHIANG, and BETH Z. SHAW, Administrative Patent Judges. JEFFERY, Administrative Patent Judge. DECISION ON APPEAL Under 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–4, 6, 7, 9–14, 16, 17, and 20. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM and enter a new ground of rejection. 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 BladeLogic Inc. Appeal Br. 1. Appeal 2019-006055 Application 12/977,780 2 STATEMENT OF THE CASE Appellant’s invention uses clustering to generate and define logical groupings of Information Technology (IT) assets. See generally Abstract; Spec. ¶ 25. The logical group generation involves converting configuration data into numerical values and using those values in at least two cluster analyses. See Spec. ¶¶ 26–28, 41, 50. Each cluster analysis also uses a respective set of variables in a distance algorithm to compare the closeness of at least two IT assets. See id. ¶¶ 26, 33. Claim 1 is illustrative: 1. A method, comprising: registering a plurality of information technology assets in a computerized asset management system, the plurality of information technology assets being physical information technology assets; storing at least one configuration data variable for each of the plurality of information technology assets, an attribute of the at least one configuration data variable identifying a location of each one of the plurality of information technology assets; converting the at least one configuration data variable for each of the plurality of information technology assets into a set of numerical values, the one or more attributes associated with the at least one configuration data variables identifying a location of the information technology assets; performing a first cluster analysis on the plurality of information technology assets, the first cluster analysis using a distance algorithm with at least one first set of variables selected from the numerical values as an input, the first cluster analysis using the distance algorithm to compare a closeness of at least two of the plurality of information technology assets to each other based on the at least one first set of variables; performing a second cluster analysis on the plurality of information technology assets, the second cluster analysis using the distance algorithm with at least one second set of variables selected from the numerical values as an input, the second cluster analysis using the distance algorithm to compare a Appeal 2019-006055 Application 12/977,780 3 closeness of the at least two of the plurality of information technology assets to each other based on the at least one second set of variables; generating a plurality of clusters of information technology assets based on a comparison of a result of the first cluster analysis and a result of the second cluster analysis, each of the plurality of clusters of information technology assets including technology assets having similar configuration data; and adding a subset of the plurality of clusters of information technology assets as a logical group in the asset management system. THE REJECTIONS The Examiner rejected claims 1–4, 6, 7, 9–14, 16, 17, and 20 under 35 U.S.C. § 101 as directed to ineligible subject matter. Final Act. 2–8; Ans. 3– 11.2 The Examiner rejected claims 1–4, 6, 7, 9–14, 16, 17, and 20 under 35 U.S.C. § 103 as unpatentable over Birdwell (US 2010/0332475 A1; published Dec. 30, 2010) and Maiocco (US 2010/0229096 A1; published Sept. 9, 2010). Final Act. 8–13. THE INELIGIBILITY REJECTION The Examiner determines the claimed invention is directed to an abstract idea, namely, (1) mental processes pertaining to the recited registering, storing, and converting elements, and (2) certain methods of organizing human activity pertaining to the recited comparing, generating, 2 Throughout this opinion, we refer to (1) the Final Rejection mailed July 26, 2018 (“Final Act.”); (2) the Appeal Brief filed February 15, 2019 (“Appeal Br.”); (3) the Examiner’s Answer mailed June 12, 2019 (“Ans.”); and (4) the Reply Brief filed August 12, 2019 (“Reply Br.”). Appeal 2019-006055 Application 12/977,780 4 and adding elements. See Final Act. 4; Ans. 5–6. The Examiner determines the additional element “computerized asset management system” in claim 1 represents a generic computer component and therefore does not integrate the abstract idea into a practical application. Ans. 6–7; accord Final Act. 5– 6 (indicating that the use of generic computer components merely links the abstract idea to a technical environment). The Examiner further indicates the additional elements do not integrate the abstract idea into a practical application because they do not (1) reflect an improvement to the functioning of a computer or to an improvement to a technical field, (2) use the judicial exception with a particular machine, (3) transform or reduce a particular article to a different state or thing, or (4) use the judicial exception in a meaningful way that does not merely link it to a particular technological environment. Ans. 7; accord Final Act. 5 (indicating that the additional elements “amount to nothing more than a general link to a technological environment”). The Examiner adds that the claim as a whole does not impose a meaningful limit on the judicial exception and is therefore not integrated into a practical application. See Ans. 8. The Examiner further indicates the claims do not provide significantly more than the abstract idea because they amount to no more than mere instructions to apply the exception using a generic computer and do no more than link the exception to a technological environment. Ans. 8–9; Final Act. 5–6. According to the Examiner, the claimed invention contains elements that have been indicated by the courts as well-understood, routine, and conventional. Ans. 9; Final Act. 5. The Examiner adds that the claims do not provide an inventive concept when considered as an ordered combination. Ans. 9. The Examiner further indicates the claims represent Appeal 2019-006055 Application 12/977,780 5 conventional computer components that merely achieve the result “more efficiently” and therefore do not confer patent eligibility. Ans. 9–10; Final Act. 19–20. Appellant argues the claims are eligible because they do not recite any enumerated exception under the USPTO’s eligibility guidelines. Appeal Br. 11. According to the Appellant, the claims do not recite certain methods of organizing activity because they do not include any elements related to fundamental economic practices, commercial or legal interactions, personal behavior, and/or human activity. Id. at 11–12. Appellant further argues that all of the elements recited in the independent claims pertain to “information technology assets and not to human activity” and are therefore patent eligible. Id. at 12. Appellant further contends the claimed invention does not recite a judicial exception because the elements cannot be practically performed in the human mind. Appeal Br. 12–13. Appellant adds the recited registering cannot be performed in the human mind because it requires the use of a computerized management system. Id. at 12. According to Appellant, the human mind cannot practically perform the recited storing, converting, cluster analysis, and generating steps for tens of thousands of IT assets. See id. at 12–13. Appellant further argues the claims are patent eligible because, even if the claims were directed to an abstract idea, they integrate the exception into a practical application. Appeal Br. 13. According to Appellant, the recited cluster analysis and generation incorporate “any exception” into a practical application. Id. Appellant adds that the “practicality of the claims” is Appeal 2019-006055 Application 12/977,780 6 disclosed in the Specification paragraphs 6 and 23–25. See Appeal Br. 13– 14. Appellant further argues the claim elements recite significantly more than the abstract idea because they are “rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.” Appeal Br. 15 (quoting DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014)). According to Appellant, claim 1 is similar to the claims in DDR because claim 1 recites specific technical terms that include “how to generate logical groupings of IT assets managed by an enterprise computing system.” Appeal Br. 15. Appellant adds that generating groupings of IT assets managed by an enterprise computing system cannot be performed by conventional solutions. Id. Appellant further argues claim 1 recites a technical solution to a technical problem and includes “significant and meaningful limitations.” See id. Appellant also argues claim 1’s limitations are similar to those in Ex parte Blaho, Appeal No. 2016-007954 (PTAB Sept. 28, 2017) and thus do not recite human activity. See Appeal Br. 15–16. Appellant further contends claim 1’s limitations “involve novel and inventive features that improve the performance of the system itself” and “go beyond simply incorporating the alleged abstract idea.” Id. at 16. ISSUE Under § 101, has the Examiner erred in rejecting claims 1–4, 6, 7, 9– 14, 16, 17, and 20 as directed to ineligible subject matter? This issue turns on whether the claims are directed to an abstract idea and, if so, whether the recited elements—considered individually and as an ordered combination— Appeal 2019-006055 Application 12/977,780 7 transform the nature of the claims into a patent eligible application of that abstract idea. PRINCIPLES OF LAW An invention is patent-eligible if it claims a “new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101. However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. See, e.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014). 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. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework, we first determine what concept the claim is “directed to.” See Alice, 573 U.S. at 219 (“On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept of hedging, or protecting against risk.”). Concepts determined to be abstract ideas, and thus patent ineligible, include certain methods of organizing human activity, such as fundamental economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts determined to be patent eligible include Appeal 2019-006055 Application 12/977,780 8 physical and chemical processes, such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191 (1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. (15 How.) 252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 67 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). In Diehr, the claim at issue recited a mathematical formula, but the Supreme Court held that “[a] claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula.” Diehr, 450 U.S. at 176; see also id. at 191 (“We view respondents’ claims as nothing more than a process for molding rubber products and not as an attempt to patent a mathematical formula.”). That said, the Supreme Court also indicated that a claim “seeking patent protection for that formula in the abstract . . . is not accorded the protection of our patent laws, . . . and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.”). If the claim is “directed to” an abstract idea, we turn to the second step of the Alice and Mayo framework, where “we must examine the elements of the claim to determine whether it contains an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent eligible application.” Alice, 573 U.S. at 221 (internal quotation marks omitted). “A claim that recites an abstract idea must include ‘additional Appeal 2019-006055 Application 12/977,780 9 features’ to ensure ‘that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo, 566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[] fail[s] to transform that abstract idea into a patent- eligible invention.” Id. In January 2019, the United States Patent and Trademark Office (“USPTO”) published revised guidance on the application of § 101. See USPTO’s 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”).3 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 is not well-understood, routine, and conventional in the field (see MPEP § 2106.05(d)); or 3 See also October 2019 Update: Subject Matter Eligibility, https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p df. Appeal 2019-006055 Application 12/977,780 10 (4) simply appends well-understood, routine, and conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. See Guidance, 84 Fed. Reg. at 56. ANALYSIS Claims 1–4, 6, 7, 9–14, 16, 17, and 20: Alice/Mayo Step One Representative independent claim 1 recites the following: 1. A method, comprising: registering a plurality of information technology assets in a computerized asset management system, the plurality of information technology assets being physical information technology assets; storing at least one configuration data variable for each of the plurality of information technology assets, an attribute of the at least one configuration data variable identifying a location of each one of the plurality of information technology assets; converting the at least one configuration data variable for each of the plurality of information technology assets into a set of numerical values, the one or more attributes associated with the at least one configuration data variables identifying a location of the information technology assets; performing a first cluster analysis on the plurality of information technology assets, the first cluster analysis using a distance algorithm with at least one first set of variables selected from the numerical values as an input, the first cluster analysis using the distance algorithm to compare a closeness of at least two of the plurality of information technology assets to each other based on the at least one first set of variables; performing a second cluster analysis on the plurality of information technology assets, the second cluster analysis using the distance algorithm with at least one second set of variables selected from the numerical values as an input, the second cluster analysis using the distance algorithm to compare a Appeal 2019-006055 Application 12/977,780 11 closeness of the at least two of the plurality of information technology assets to each other based on the at least one second set of variables; generating a plurality of clusters of information technology assets based on a comparison of a result of the first cluster analysis and a result of the second cluster analysis, each of the plurality of clusters of information technology assets including technology assets having similar configuration data; and adding a subset of the plurality of clusters of information technology assets as a logical group in the asset management system. As the Specification explains, Appellant’s invention uses clustering to generate and define logical groupings of IT assets. See generally Abstract; Spec. ¶ 25. The generation of logical groups involves converting configuration data into numerical values and using those values in at least two cluster analyses. See Spec. ¶¶ 26–28, 41, 50. Each cluster analysis also uses a respective set of variables in a distance algorithm to compare the closeness of at least two IT assets. See id. ¶¶ 26, 33. Turning to claim 1, we first note that the claim recites a method, and, therefore, falls within the process category of § 101. But despite falling within this statutory category, we must still determine whether the claim is directed to a judicial exception, namely an abstract idea. See Alice, 573 U.S. at 217. To this end, we must determine whether the claim (1) recites a judicial exception and (2) fails to integrate the exception into a practical application. See Guidance, 84 Fed. Reg. at 52–55. If both elements are satisfied, the claim is directed to a judicial exception under the first step of the Alice/Mayo test. See id. In the rejection, the Examiner determines claim 1 is directed to an abstract idea, namely certain methods of organizing human activity, mental Appeal 2019-006055 Application 12/977,780 12 processes, and fundamental economic practices. Final Act. 4. In the Answer, the Examiner determines that the recited registering, storing, and converting limitations are mental processes, and that the cluster analysis, cluster generating, and subset addition limitations recite certain methods of organizing human activity. See Ans. 5–6. To determine whether a claim recites an abstract idea, we (1) identify the claim’s specific limitations that recite an abstract idea and (2) determine whether the identified limitations fall within certain subject matter grouping, namely, (a) mathematical concepts4; (b) certain methods of organizing human activity5; or (c) mental processes.6 Appellant argues claim 1 does not contain any elements related to fundamental economic practices or any other methods of organizing human activity. See Appeal Br. 11–12. We agree. None of the claim elements involves fundamental economic practices, commercial or legal interactions, or managing personal behavior, relationships, or interactions between people. See Guidance, 84 Fed. Reg. at 52. The claimed invention, however, 4 Mathematical concepts include mathematical relationships, mathematical formulas or equations, and mathematical calculations. See Guidance, 84 Fed. Reg. at 52. 5 Certain methods of organizing human activity include fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions). See Guidance, 84 Fed. Reg. at 52. 6 Mental processes are concepts performed in the human mind including an observation, evaluation, judgment, or opinion. See Guidance, 84 Fed. Reg. at 52. Appeal 2019-006055 Application 12/977,780 13 is nevertheless directed to an abstract idea, albeit for reasons different than those articulated by the Examiner. When read as a whole, the recited limitations are directed to (1) grouping registered IT assets based on their similarity, and (2) selecting a subset of the groups. Apart from the recited computerized asset management system, all of claim 1’s recited limitations fit squarely within the mental processes category of the USPTO’s guidelines because they can be performed entirely mentally or using pen and paper. See Guidance, 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) (“[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.”). Thus, although we agree with Appellant that the Examiner’s articulated basis for rejecting the claim as ineligible under § 101 is problematic, the claim is nonetheless directed to ineligible subject matter for different reasons. Turning to claim 1, the first element, “registering a plurality of information technology assets . . . being physical information technology assets,” recites mental processes in that a person can create a written register by merely observing each asset (e.g., a computer) and writing down each asset’s name. Cf. CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011) (noting that a person could construct a map of credit card numbers by merely writing down a list of credit card transactions made from a particular IP address); see also Spec. ¶ 30 (“Registration of the assets for purposes of this disclosure includes any technique for acquiring the configuration data . . . .”) (emphasis added). For example, a person can observe two computers and write down on paper the following: Appeal 2019-006055 Application 12/977,780 14 1. Computer A 2. Computer B Appellant’s contention that the human mind cannot register IT assets because the claim requires a “computerized management system” (see Appeal Br. 12) is unavailing. The “computerized management system” is a computer element that is analyzed in addition to the abstract idea in order to determine whether the claimed invention is patent eligible. 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”) (emphasis added); see also Guidance, 84 Fed. Reg. at 56 (instructing that additional recited elements should be evaluated in Alice/Mayo step two to determine whether they (1) add specific limitations that are not well-understood, routine, and conventional in the field, or (2) simply append well-understood, routine, and conventional activities previously known to the industry (citing MPEP § 2106.05(d)). That the claim happens to recite a generic computer component is not dispositive in determining patent eligibility. See Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017) (claim determined ineligible where generic computer elements were used “merely as a tool” for implementing the abstract idea); see also Guidance 84 Fed. Reg. at 55 (indicating that claim language that “merely includes instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea” does not integrate an abstract application into a practical application). Appeal 2019-006055 Application 12/977,780 15 Therefore, the recited registering element falls squarely within the mental processes category of the USPTO’s guidelines and, therefore, recites an abstract idea. See Guidance, 84 Fed. Reg. at 52, 53 nn.14–15 (listing mental processes as including observation, evaluation, and the use of pen and paper). The second claim element, “storing at least one configuration data variable7 for each of the plurality of information technology assets, an attribute of the at least one configuration data variable identifying a location of each one of the plurality of information technology assets,” recites mental processes in that a person can, through observation, write down the configuration data (i.e., attributes and location data) on a piece of paper and place it in a paper file. For example, the following information can be written down and placed in a paper file: 1. Computer A Configuration data: Disk attribute: 1 TB Manufacturer attribute: Company X Location attribute: Washington DC 2. Computer B Configuration data: 7 The Specification does not use the term “configuration data variable” explicitly. The Appeal Brief, however, indicates that support for this element is in the Specification’s paragraphs 32 and 40–44. See Appeal Br. 3. These paragraphs indicate that configuration data is converted to numerical form. See, e.g., Spec. ¶ 32. Thus, for purposes of this appeal, we assume that “configuration data” and “configuration data variable” are synonymous. Appeal 2019-006055 Application 12/977,780 16 Disk attribute: 800 GB Manufacturer attribute: Company X Location attribute: Washington DC Appellant’s contention that the human mind cannot store configuration data variables of “tens of thousands of IT assets” (see Appeal Br. 12) is unavailing. Not only is this contention unsubstantiated with persuasive evidence,8 it is not commensurate with the scope of the claim that does not require “tens of thousands” of IT assets. Rather, the claim requires only “a plurality” of those assets—a plurality that can be just two. Nevertheless, even if the claims required registering and storing information for thousands of assets (which it does not), this process—while arguably lengthy and tedious—could nevertheless be practically performed mentally because it merely requires observing information and writing it down. Cf. CyberSource, 654 F.3d at 1372 (noting that a person could construct a map of credit card numbers by merely writing down a list of credit card transactions made from a particular IP address). Therefore, the recited storing element falls squarely within the mental processes category of the USPTO’s guidelines and, therefore, recites an abstract idea. See Guidance, 84 Fed. Reg. at 52, 53 nn.14, 15 (listing mental processes as including observation, evaluation, and the use of pen and paper). 8 See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (noting that mere lawyer argument and conclusory statements that are unsupported by factual evidence are entitled to little probative value); see also Enzo Biochem, Inc. v. Gen-Probe, Inc., 424 F.3d 1276, 1284 (Fed. Cir. 2005) (“Attorney argument is no substitute for evidence.”). Appeal 2019-006055 Application 12/977,780 17 The third element, “converting the at least one configuration data variable for each of the plurality of information technology assets into a set of numerical values, the one or more attributes associated with the at least one configuration data variables identifying a location of the information technology assets,” can also be done entirely mentally by merely observing the recorded configuration data variable and mentally converting it to a number. For example, the claimed configuration data could simply include manufacturer’s name (see Spec. ¶ 41) and the claimed conversion could simply include a person observing a number in a list that corresponds to the manufacturer’s name. See id. Continuing with the example above, a human can convert the manufacturing and location attributes resulting in the following: 1. Computer A Configuration data: Disk attribute: 1 TB Manufacturer attribute: 1 Location attribute: 2 2. Computer B Configuration data: Disk attribute: 800 GB Manufacturer attribute: 1 Location attribute: 2 Appellant’s contention that this element is not a mental process because a human would be unable to convert “tens of thousands of IT assets” (see Appeal Br. 13) is unavailing. As indicated above, Appellant’s argument is not commensurate with the scope of claim that merely recites “a Appeal 2019-006055 Application 12/977,780 18 plurality” of those assets—a plurality that can be just two. Nevertheless, even if claim 1 recited thousands of IT assets—which it does not—this conversion volume would not make the claim patent eligible. The conversions would still only require observation, cognitive associations, and manual recordation, and thus could be entirely performed in the human mind using pen and paper. Cf. Benson, 409 U.S. at 64–74 (holding ineligible recited method for converting signals from binary coded decimal (BCD) form into binary form as directed to an abstract idea); see also id. at 67 (noting that converting BCD numerals to pure binary numerals can be done mentally); CyberSource, 654 F.3d at 1372 (noting that a person could construct a map of credit card numbers by merely writing down a list of credit card transactions made from a particular IP address); Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1142–52 (Fed. Cir. 2016) (holding ineligible recited method for converting logic circuit descriptions into logic circuit hardware components as directed to the abstract idea of translating a functional description of a logic circuit into an associated hardware component description—a conversion that could be done entirely mentally or with pencil and paper); EasyWeb Innovations, LLC v. Twitter, Inc., 689 F. App’x 969, 969–71 (Fed. Cir. 2017) (unpublished) (holding ineligible claims reciting a message publishing system that (1) converted a portion of a received message to a different format, and (2) published the converted portion only if the sender was identified as authorized); Burnett v. Panasonic Corp., 741 F. App’x 777, 778–81 (Fed. Cir. 2018) (unpublished) (holding ineligible recited geospatial media recorder that (1) converted geographic representations into numeric coordinate and measurement representations, and (2) concatenated the numeric representations into a single measurement Appeal 2019-006055 Application 12/977,780 19 representation as directed to an abstract idea); see also id. at 781 (noting that the recited conversion amounted to routine data processing); Univ. of Fla. Research Found., Inc. v. Gen. Elec. Co., 916 F.3d 1363, 1365–69 (Fed. Cir. 2019) (holding ineligible claim reciting method of integrating physiologic treatment data that (1) converted physiologic data received from at least two bedside machines into machine-independent data; (2) performed at least one programmatic action involving that data; and (3) presented results from that action upon a bedside GUI as directed to the abstract idea of collecting, analyzing, manipulating, and displaying data). Therefore, the recited converting element falls squarely within the mental processes category of the USPTO’s guidelines and, therefore, recites an abstract idea. See Guidance, 84 Fed. Reg. at 52, 53 nn.14, 15 (listing mental processes as including observation, evaluation, and using pen and paper). The fourth element recites “performing a first cluster analysis on the plurality of information technology assets,” where this analysis “us[es] distance algorithm with at least one first set of variables selected from the numerical values as an input,” and the distance algorithm is used “to compare a closeness of at least two of the plurality of information technology assets to each other based on the at least one first set of variables.” This limitation can also be done entirely mentally by observing the recorded numbers and performing the analysis cognitively. For example, a person can decide, based on observation, that two assets with the same manufacturer number should be grouped together in a cluster. Using the example above, the first cluster would contain Computer A and Computer B based on the number “1.” Cf. Bridge & Post, Inc. v. Verizon Comm’cns, Appeal 2019-006055 Application 12/977,780 20 Inc., 778 F. App’x 882 (Fed. Cir. 2019) (unpublished) (holding ineligible method that provided directed media to a user by (1) incorporating, in a user profile, group characteristics identifying a group with which the user is associated; and (2) assigning an identifier to the group based on usage patterns); Versata Dev. Grp. v. SAP America, Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) (holding ineligible recited product price determination that (1) arranged organizational and product group hierarchies, and (2) sorted retrieved pricing information according to those hierarchies). Appellant’s contention that this element is not a mental process because a human cannot practically perform cluster analysis on “tens of thousands of IT assets” (see Appeal Br. 13) is unavailing. Again, claim 1, when read broadly and consistently in light of the Specification, requires only “a plurality” of those assets—a plurality that can be just two. Nevertheless, the Examiner’s finding that this claim element is a certain method of organizing human activity (see Ans. 5–6) is problematic because it is inapposite here, particularly when the limitation is read in context of the claim as a whole. That is, the recited performing element does not involve economic principles, commercial or legal interactions, or managing personal behavior or interactions between people to justify placing this limitation in the certain methods of organizing human activity category of the USPTO’s guidelines as the Examiner has done here. See Guidance, 84 Fed. Reg. at 52. We do agree, however, with the Examiner at least to the extent that the claimed invention is directed to an abstract idea because, among other things, this element, when read individually and as an ordered combination, recites mental processes as indicated above. Thus, although we disagree Appeal 2019-006055 Application 12/977,780 21 with the Examiner that this element organizes human activity, the element is nonetheless directed to an abstract idea—albeit for different reasons. Therefore, the first recited performing element falls squarely within the mental processes category of the USPTO’s guidelines and, therefore, recites an abstract idea. See Guidance, 84 Fed. Reg. at 5253 nn.14–15 (listing mental processes as including observation, evaluation, and the use of pen and paper). The fifth element recites “performing a second cluster analysis on the plurality of information technology assets,” where this analysis “us[es] the distance algorithm with at least one second set of variables selected from the numerical values as an input,” and the distance algorithm is used “to compare a closeness of the at least two of the plurality of information technology assets to each other based on the at least one second set of variables.” This limitation can also be done entirely mentally by observing the recorded numbers and performing the second analysis in the human mind in a manner similar to the first cluster analysis limitation above. For example, a person could decide, based on observation, that two assets with the same location number should be grouped together in a cluster. Using the example above, the second cluster would contain Computer A and Computer B based on the number “2.” Appellant’s contention that the claim requires “tens of thousands” of assets and thus cannot be practically performed in the human mind (see Appeal. Br. 13) is unavailing for the reasons indicated above. But, as noted above regarding the first cluster analysis, the Examiner’s finding that the second cluster analysis limitation organizes human activity (see Ans. 5–6) is problematic because it is inapposite here, particularly when Appeal 2019-006055 Application 12/977,780 22 the limitation is read in context of the claim as a whole. As indicated above, the recited performing element does not organize human activity to justify placing this limitation in the certain methods of organizing human activity category of the USPTO’s guidelines as the Examiner has done here. See Guidance, 84 Fed. Reg. at 52. Nevertheless, we agree the Examiner at least to the extent that the claimed invention is directed to an abstract idea because, among other things, this element, when read individually and as an ordered combination, recites mental processes as indicated above. Thus, although we disagree with the Examiner that this element organizes human activity, the element is nonetheless directed to an abstract idea—albeit for different reasons. Therefore, the second recited performing element falls squarely within the mental processes category of the USPTO’s guidelines and, therefore, recites an abstract idea. See Guidance, 84 Fed. Reg. at 52–53 nn.14–15 (listing mental processes as including observation, evaluation, and using pen and paper). The sixth element, “generating a plurality of clusters of information technology assets based on a comparison of a result of the first cluster analysis and a result of the second cluster analysis, each of the plurality of clusters of information technology assets including technology assets having similar configuration data,” can also be performed by writing down the first and second clusters using pen and paper. Cf. Versata Dev. Grp. v. SAP America, Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) (holding ineligible recited product price determination that (1) arranged organizational and product group hierarchies, and (2) sorted retrieved pricing information according to those hierarchies); Appeal 2019-006055 Application 12/977,780 23 Furthermore, the Specification teaches that the clusters observed by a human being can be in a report format. See Spec. ¶ 46 (“Once the cluster analysis has identified clusters in the configuration data, the clusters may be rendered in a form that lets the administrator approve and accept the proposed logical groupings. In one embodiment, the groupings may be presented in a non-graphical report format.”) (emphasis added). Turning to the above example again, after the mental cluster analysis, a person could write down the following: Manufacturer Cluster 1: AB Location Cluster 2: AB. The Examiner’s contention that this claim element recites certain methods of human activity (see, e.g., Ans. 5) is problematic on the record. As Appellant indicates, there is nothing in this element or the other recited elements that reflects “fundamental economic principles or practices . . .; commercial or legal interactions . . . ; [and/or] managing personal behavior or relationships or interactions between people.” See Appeal Br. 11. The Examiner’s finding that this claim element sets forth “marketing and sales activity” and “business relations” (see Ans. 6) is inapposite here, particularly when the limitation is read in context of the claim as a whole. Generating clusters as claimed does not involve economic or commercial activity even when read broadly in light of the Specification. Nevertheless, we agree with the Examiner at least to the extent that the claimed invention is directed to an abstract idea because, among other things, this element, when read individually and as an ordered combination, recites mental processes as indicated above. Again, although we agree with Appellant that the Examiner’s finding that this element organizes human Appeal 2019-006055 Application 12/977,780 24 activity is problematic, the element is nonetheless directed to an abstract idea—albeit for different reasons. Therefore, the recited generating element falls squarely within the mental processes category of the USPTO’s guidelines and, therefore, recites an abstract idea. See Guidance, 84 Fed. Reg. at 52–53 nn.14–15 (listing mental processes as including observation, evaluation, and using pen and paper). The final element, “adding a subset of the plurality of clusters of information technology assets as a logical group in the asset management system,” could also be done entirely mentally or with pen and paper by observing the recorded clusters, selecting a subset, and adding it as a group. The Specification teaches that adding a subset of the clusters can be performed by an administrator mentally deciding to accept or reject a particular cluster or group. See Spec. ¶¶ 46, 48 (“Once the cluster analysis has identified clusters in the configuration data, the clusters may be rendered in a form that lets the administrator approve and accept the proposed logical groupings. . . . If the group suggested by the cluster analysis is rejected by the administrator, the group is not added to the IT asset management system.”) (emphasis added). Continuing with the above example, a person can mentally select one of the clusters and write it down as a final grouping, for example, “Final Location Cluster AB.” The Examiner finds that this element organizes human activity because it represents two people interacting with each other by one person telling another to move items. See Ans. 5–6. This finding is problematic because neither this element, nor the other elements in claim 1, recite a person instructing another to perform an activity. Again, while we disagree Appeal 2019-006055 Application 12/977,780 25 with the Examiner that this element organizes human activity, we nonetheless agree with the Examiner at least to the extent that the claim is directed to an abstract idea—albeit for different reasons. Therefore, apart from the recited computerized asset management system, all of claim 1’s limitations fall squarely within the mental processes category of the USPTO’s guidelines and, therefore, recite an abstract idea. See Guidance, 84 Fed. Reg. at 52 (listing exemplary mental processes including observation and evaluation). The recited computerized asset management system is the only recited element beyond the abstract idea, but this additional element, considered individually and in combination, does not integrate the abstract idea into a practical application when reading claim 1 as a whole. Appellant’s contention that the claims as a whole integrate the abstract idea into a practical application (see Appeal Br. 13–14; Reply Br. 2–4) is unavailing. According to Appellant, the cluster analyses and adding steps integrate the abstract idea into a practical application. See id. at 13. We disagree. Apart from reciting that the asset management system is “computerized,” the recited limitations reflect mental processes as indicated above. They are not additional elements beyond the abstract idea, but rather are directed at the abstract idea as noted previously. See Guidance, 84 Fed. Reg. at 54–55. Therefore, the fact that the recited asset management system is “computerized” does not integrate the abstract idea into a practical application. We also find unavailing Appellant’s contention that the claimed invention is integrated into a practical application based on the Appeal 2019-006055 Application 12/977,780 26 Specification paragraphs 6 and 23–25. See Appeal Br. 13–14. Paragraph 6’s discussion of “tens of thousands of IT assets” is not commensurate in scope with claim 1 and, therefore, does not does not integrate the claim into a practical application. Likewise, paragraphs 23– 25 are not commensurate in scope with any particular claim elements. On this record, then, the claimed invention does not recite additional elements that (1) improve a computer itself; (2) improve another technology or technical field; (3) implement the abstract idea in conjunction with a particular machine or manufacture that is integral to the claim; (4) transform or reduce a particular article to a different state or thing; or (5) apply or use the abstract idea in some other meaningful way beyond generally linking the abstract idea’s use to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception. See Guidance, 84 Fed. Reg. at 55 (citing MPEP §§ 2106.05(a), (c), (e)). In short, the claim’s additional elements do not integrate the abstract idea into a practical application when reading claim 1 as a whole. We, therefore, agree with the Examiner’s rejection that claim 1 is directed to an abstract idea—but for different reasons. Claims 1–4, 6, 7, 9–14, 16, 17, and 20: Alice/Mayo Step Two Turning to Alice/Mayo step two, claim 1’s additional element, namely the recited computerized asset management system—considered individually and as an ordered combination—does not provide an inventive concept such that this additional element amounts to significantly more than the abstract idea when reading claim 1 as a whole. See Alice, 573 U.S. at 221; see also Guidance, 84 Fed. Reg. at 56. The claimed invention merely appends a Appeal 2019-006055 Application 12/977,780 27 conventional computer component (i.e., a computerized management system) specified at a high degree of generality to the abstract idea. Appellant argues claim 1’s limitations “do not merely recite the performance of some business practice known from the pre-Internet world along with the requirement to perform it on the Internet, but rather [are] rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.” See Appeal Br. 15 (internal quotation marks omitted) (quoting DDR, 773 F.3d 1245). Appellant additionally argues claim 1’s limitations use specific, technical terms to describe how to generate logical groupings of IT assets managed by an enterprise computing system are likewise unavailing. See Appeal Br. 15 (citing DDR). These arguments are unavailing. In DDR, instead of a computer network operating in its normal, expected manner by sending a website visitor to a third-party website apparently connected with a clicked advertisement, the claimed invention in DDR generated and directed the visitor to a hybrid page that presented (1) product information from the third party and (2) visual “look and feel” elements from the host website. DDR, 773 F.3d at 1258–59. Given this particular Internet-based solution, the court held that the claimed invention did not merely use the Internet to perform a business practice known from the pre-Internet world, but rather was necessarily rooted in computer technology to overcome a problem specifically arising in computer networks. Id. at 1257. That is not the case here. As noted previously, Appellant’s claimed invention, in essence, (1) groups registered IT assets based on their similarity, and (2) selects a subset of the groups—albeit by using computer components to achieve that end. The claimed invention here is not Appeal 2019-006055 Application 12/977,780 28 necessarily rooted in computer technology in the sense contemplated by DDR where the claimed invention solved a challenge particular to the Internet. Although Appellant’s invention uses computing components, the claimed invention does not solve a challenge particular to those components that are used to implement this functionality. Appellant’s contention that“[c]onventional solutions . . . cannot generate logical groupings of IT assets managed by an enterprise computing system using the techniques recited in the claims” (Appeal Br. 15) is unpersuasive. Appellant’s Specification teaches “[w]hen IT asset management systems managed hundreds of IT assets, these manual groupings, while onerous, may have been feasible.” Spec. ¶ 6. Thus, when the scope of the claims is considered, Appellant’s own Specification teaches a conventional solution that generates logical groupings of IT assets managed by an enterprise computing system. Even if the claimed invention recited a previously unknown solution, this finding would not be dispositive in determining the separate statutory inquiry of patent eligibility. See Return Mail, Inc. v. United States Postal Serv., 868 F.3d 1350, 1370 (Fed. Cir. 2017). Although the second step in the Alice/Mayo test is a search for an “inventive concept,” the analysis is not directed to novelty or nonobviousness, but rather searches for elements sufficient to ensure that the claimed invention is directed to more than a patent ineligible concept, such as an abstract idea. See Alice, 573 U.S. at 217–18. “Groundbreaking, innovative, or even brilliant discovery does not by itself satisfy the § 101 inquiry.” Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013); see also Diehr, 450 U.S. at 188–89 (“The ‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance Appeal 2019-006055 Application 12/977,780 29 in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.”); Affinity Labs of Tex., 838 F.3d at 1263 n.3 (noting that an eligibility finding does not turn on the novelty of using a user-downloadable application for the particular purpose recited in the claims). Appellant’s additional arguments that claim 1 recites “significant and meaningful limitations” and provides “a technical solution to a technical problem” (see Appeal Br. 15; emphasis omitted) are likewise unavailing. As noted above, the recited limitations do not require a technical solution to a technical problem and can entirely be performed in the human mind using pen and paper. Appellant’s reliance on the non-precedential Board decision, Ex parte Blaho, on pages 15 and 16 of the Appeal Brief is likewise unavailing. Not only do the facts in that case differ from those at issue here, as a non- precedential decision, it is not binding on this panel in any event. See PTAB Standard Operating Procedure 2 (Rev. 10) § I(B), https://www.uspto.gov/sites/default/files/documents/SOP2%20R10%20FIN AL.pdf. Appellant’s contentions that claim 1’s limitations go beyond incorporating the abstract idea and involve “novel and inventive features” are also unavailing. See Appeal Br. 16. As indicated above, the only additional element, namely a computerized asset management system, does not provide an inventive concept to the abstract idea; it merely appends conventional computer components, specified at a high level of generality to the abstract idea. See Guidance, 84 Fed. Reg. at 56. Appeal 2019-006055 Application 12/977,780 30 In reaching this conclusion, we emphasize that Appellant’s characterizing the additional elements as including the cluster analysis, cluster generation, and cluster subset addition limitations (Reply Br. 4) is incorrect, and not commensurate with the scope of the Examiner’s more limited findings in this regard. See Final Act. 5 (finding that the additional elements include the recited computerized asset management system). Rather, as noted above, claim 1’s only additional element is the computerized asset management system. That is, the cluster analysis, generation, and subset addition limitations that Appellant contends are additional elements (Reply Br. 4) are, in fact, part of the abstract idea— not additional elements beyond that abstract idea. 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”) (emphasis added); see also Guidance, 84 Fed. Reg. at 56 (instructing that additional recited elements should be evaluated in Alice/Mayo step two to determine whether they (1) add specific limitations that are not well-understood, routine, and conventional in the field, or (2) simply append well-understood, routine, and conventional activities previously known to the industry (citing MPEP § 2106.05(d)). In conclusion, the additional recited elements9—considered individually and as an ordered combination—do not add significantly more 9 While not argued with particularity, claim 14’s “A non-transitory computer readable medium with instructions for a programmable control device stored thereon wherein the instructions cause a programmable control device to” Appeal 2019-006055 Application 12/977,780 31 than the abstract idea to provide an inventive concept under Alice/Mayo step two when reading the claims as a whole. See Alice, 573 U.S. at 221; see also Guidance, 84 Fed. Reg. at 56. We, therefore, agree with the Examiner to the extent that the claimed invention is directed to an abstract idea, but for different reasons. Accordingly, we sustain the Examiner’s ineligibility rejection of claims 1–4, 6, 7, 9–14, 16, 17, and 20. But because our rationale was not articulated by the Examiner, we designate our affirmance of the Examiner’s rejection of these claims under § 101 as a new ground of rejection. THE OBVIOUSNESS REJECTION With respect to claim 1, the Examiner finds Birdwell teaches, among other elements, the following: performing a first cluster analysis on the plurality of information assets, the first cluster analysis using a distance algorithm . . . with at least one first set of variables selected from the numerical values as an input, the first cluster analysis using the distance algorithm to compare a closeness of at least two of the plurality of assets to each other based on the at least one first set of variables; performing a second cluster analysis on the plurality of information assets, the second cluster analysis using the distance algorithm . . . with at least one second set of variables selected from the numerical values as an input, the second cluster analysis using the distance algorithm to compare a and claim 16’s “non-transitory computer readable medium with instructions for a programmable control device,” “computerized asset management system,” “processor,” and “program storage unit” are also generic computer components in addition to the abstract idea that do not integrate the abstract into a practical application or provide an inventive concept for similar reasons as those given for claim 1. Appeal 2019-006055 Application 12/977,780 32 closeness of the at least two of the plurality of information assets to each other based on the at least one second set of variables. Final Act. 9–10; Ans. 13–15 (emphasis added). The Examiner cites Birdwell’s paragraph 222 for teaching the first cluster analysis claim element, and paragraphs 47, 110, 115, and 222 for teaching the second cluster analysis claim element. Final Act. 9–10. The Examiner also cites Birdwell’s paragraphs 47–49, 53, 110, 115, 208–213, and 220 in connection with the first and second cluster analysis limitations. See Final Act. 21–23; Ans. 13–15. The Examiner emphasizes particular words in Birdwell such as “principal component analysis” and “clustering algorithms” as support for the teaching cluster analyses. See Final Act. 10, 22; Ans. 13. Appellant argues, among other things, that Birdwell teaches clusters of grouped objects, but does not teach the recited first and second cluster analyses each based on a first and second set of variables, respectively. See Appeal Br. 20. Appellant further argues Birdwell’s teaching of a search that uses a target object’s attributes does not describe two cluster analyses with two different sets of variables. See id. at 21. ISSUE Under § 103, has the Examiner erred in rejecting claim 1 by finding that Birdwell teaches or suggests the recited cluster analyses? ANALYSIS As noted above, the claimed invention requires (1) a first cluster analysis; (2) a distance algorithm; (3) a first set of variables; (3) a second cluster analysis; and (4) a second set of variables. Appeal 2019-006055 Application 12/977,780 33 The Examiner appears to map the first cluster analysis, distance algorithm, and the first set of variables to Birdwell’s paragraph 222. See Final Act. 9–10. Although Birdwell’s paragraph 222 teaches a shortest distance between two automatically grouped clusters, we fail to see—nor has the Examiner shown—how this disclosed functionality teaches a first cluster analysis with a closeness comparison based on a first set of variables. See Final Act. 9; Ans. 12–15. The Examiner’s response to arguments in the Answer fares no better in this regard, for the Examiner merely provides additional citations to Birdwell without explaining how they teach a first cluster analysis with a closeness comparison based on a first set of variables. See Ans. 12–15. The additional citations for the second cluster analysis and second set of variables are likewise unavailing. See Final Act. 9–10, 21–23; Ans. 13– 15. The Examiner emphasizes particular words from Birdwell, such as “principal component analysis” and “clustering algorithms,” as support for the recited second cluster analysis elements (see Final Act. 10, 22; Ans. 13), but again the Examiner fails to explain how these paragraphs teach a second cluster analysis with a second set of variables. Given Birdwell’s failure to teach or suggest the disputed claim elements, and the Examiner’s failure to explain how Birdwell teaches or suggests these limitations, we must resort to speculation in this regard. That we will not do. Appellant notes, among other things, that Birdwell fails to teach the recited first and second analyses and the associated first and second variable sets. See Appeal Br. 19–22. The Examiner, however, does not explain how Birdwell teaches either cluster analysis or either variable set apart from Appeal 2019-006055 Application 12/977,780 34 merely citing Birdwell’s paragraphs 47–49, 53, 110, 115, and 208–213. See Final Act. 22–23; Ans. 13–15. Again, while these various paragraphs mention “clustering algorithms” (Birdwell ¶ 48); “cluster of computer nodes” (id. ¶ 53), we fail to see how Birdwell teaches two cluster analyses each with respective closeness comparisjudyons based on their own set of variables. See Final Act. 9–10, 20–23; Ans. 13–15. “[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (alteration in original) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006); see also MPEP § 707.07(d) (“The burden is on the Office to establish any prima facie case of unpatentability . . . thus the reasoning behind any rejection must be clearly articulated.”). Because the Examiner fails to provide articulated reasoning with some rational underpinning as to how Birdwell teaches or suggests the recited cluster analyses, and that Maiocco cures that deficiency, we are persuaded that the Examiner erred in rejecting (1) independent claim 1; (2) independent claims 14 and 16 that recite commensurate limitations; and (3) the dependent claims for similar reasons. Because this issue is dispositive regarding our reversing the Examiner’s obviousness rejection of claims 1–4, 6, 7, 9–14, 16, 17, and 20, we need not address Appellant’s other associated arguments. Appeal 2019-006055 Application 12/977,780 35 CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s) /Basis Affirmed Reversed New Ground 1–4, 6, 7, 9–14, 16, 17, 20 101 Eligibility 1–4, 6, 7, 9– 14, 16, 17, 20 1–4, 6, 7, 9–14, 16, 17, 20 1–4, 6, 7, 9–14, 16, 17, 20 103 Birdwell, Maiocco 1–4, 6, 7, 9–14, 16, 17, 20 Overall Outcome 1–4, 6, 7, 9– 14, 16, 17, 20 1–4, 6, 7, 9–14, 16, 17, 20 1–4, 6, 7, 9–14, 16, 17, 20 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Section 41.50(b) also provides: When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, Appeal 2019-006055 Application 12/977,780 36 in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. AFFIRMED; 37 C.F.R. § 41.50(b) Copy with citationCopy as parenthetical citation