Telefonaktiebolaget LM Ericsson (publ)Download PDFPatent Trials and Appeals BoardApr 1, 20212020000231 (P.T.A.B. Apr. 1, 2021) 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. 15/941,566 03/30/2018 Volodya Grancharov 1009-2608 / P33275 US4 2073 102721 7590 04/01/2021 Murphy, Bilak & Homiller/Ericsson 1255 Crescent Green Suite 200 Cary, NC 27518 EXAMINER SAINT CYR, LEONARD ART UNIT PAPER NUMBER 2658 NOTIFICATION DATE DELIVERY MODE 04/01/2021 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): official@mbhiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte VOLODYA GRANCHAROV, SEBASTIAN NÄSLUND, and SIGURDUR SVERRISSON ____________ Appeal 2020-000231 Application 15/941,566 Technology Center 2600 ____________ Before JOHN A. JEFFERY, JAMES R. HUGHES, and JUSTIN BUSCH, 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 1–13. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Telefonaktiebolaget LM Ericsson (publ). Appeal Br. 2. Appeal 2020-000231 Application 15/941,566 2 STATEMENT OF THE CASE Appellant’s invention uses a “spectrum fill” technique that fills a transform coded audio signal’s non-coded residual sub-vectors with coefficients from virtual codebooks. This technique improves the signal’s perception upon decoding. See Spec. ¶¶ 26, 65. Claim 1 is illustrative: 1. An apparatus for filling non-coded residual sub-vectors of a transform coded audio signal, the apparatus comprising a processor and associated memory configured to: compress coded residual sub-vectors; reject compressed residual sub-vectors that do not fulfill a predetermined criterion; concatenate the remaining compressed residual sub- vectors to form a first virtual codebook; combine pairs of coefficients of the first virtual codebook to form a second virtual codebook; and fill non-coded residual sub-vectors below a predetermined frequency with coefficients from the first virtual codebook, and fill non-coded residual sub-vectors above the predetermined frequency with coefficients from the second virtual codebook; wherein the processor and associated memory are further configured to compress components 𝑋𝑋�(k) of the coded residual sub-vectors in accordance with: Appeal 2020-000231 Application 15/941,566 3 where Y(k) are the components of the compressed residual sub-vectors and T is a small positive number that controls the amount of compression. THE REJECTION The Examiner rejected claims 1–13 under 35 U.S.C. § 101 as ineligible. Final Act. 3–4; Ans. 3–4.2 FINDINGS, CONCLUSION, AND CONTENTIONS The Examiner determines that the claimed invention is directed to an abstract idea, namely a sequence of mathematical operations that are not integrated into a practical application. See Final Act. 3–4; Ans. 3–6. According to the Examiner, the additional recited computer elements, namely the recited processor and memory, perform generic computer 2 Throughout this opinion, we refer to (1) the Final Rejection mailed Dec. 10, 2018 (“Final Act.”); (2) the Appeal Brief filed April 8, 2019 (“Appeal Br.”); (3) the Examiner’s Answer mailed August 6, 2019 (“Ans.”); and (4) the Reply Brief filed October 7, 2019 (“Reply Br.”). Appeal 2020-000231 Application 15/941,566 4 functions that do not add significantly more to the abstract idea. See Final Act. 3–4; Ans. 6. Appellant argues that the claims are eligible because, among other things, the claims are not stand-alone recitations of mathematical operations, but instead are integrated into detailed processing steps or configurations through which the claimed spectrum filling improvement is realized. Appeal Br. 10–14. According to Appellant, the recited mechanism for filling in the non-coded residual sub-vectors is a practical improvement for processing transform coded audio signals by filling in its missing parts using coefficients, thus yielding perceptual improvements in any later decoded audio signal obtained from the transform coded audio signal. Reply Br. 1–5. Appellant adds that the Examiner fails to provide evidence that the recited limitations represent well-understood, routine, conventional activity. Appeal Br. 11, 16. ISSUE Under § 101, has the Examiner erred in rejecting claims 1–13 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—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 Appeal 2020-000231 Application 15/941,566 5 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 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 Appeal 2020-000231 Application 15/941,566 6 statutory does not become nonstatutory simply because it uses a mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as nothing more than a process for molding rubber products and not as an attempt to patent a mathematical formula.”). 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 (quotation marks omitted). “A claim that recites an abstract idea must include ‘additional features’ to ensure ‘that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].’” Id. (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. Under the subject matter eligibility guidance in the Manual of Patent Examining Procedure (MPEP) (9th ed. Rev. 10.2019, June 2020), we first look to whether the claim recites: Appeal 2020-000231 Application 15/941,566 7 (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) (see MPEP § 2106.04); and (2) additional elements that integrate the judicial exception into a practical application (see MPEP §§ 2106.04, 2106.04(d), 2106.05(a)–(c), (e)–(h)). 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 (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 MPEP § 2106.05. ANALYSIS Claims 1–13: Alice/Mayo Step One Representative independent claim 1 recites an apparatus for filling non-coded residual sub-vectors of a transform coded audio signal, the apparatus comprising a processor and associated memory configured to (1) compress coded residual sub-vectors; (2) reject compressed residual sub- vectors that do not fulfill a predetermined criterion; (3) concatenate the remaining compressed residual sub-vectors to form a first virtual codebook; (4) combine pairs of coefficients of the first virtual codebook to form a Appeal 2020-000231 Application 15/941,566 8 second virtual codebook; (5) fill non-coded residual sub-vectors below a predetermined frequency with coefficients from the first virtual codebook; (6) fill non-coded residual sub-vectors above the predetermined frequency with coefficients from the second virtual codebook; and (7) compress components of the coded residual sub-vectors according to the recited mathematical expressions. As the Specification explains, conventional transform coding techniques filled zero-bit residual sub-vectors with noise at the decoder. See Spec. ¶¶ 3–12. This noise-fill scheme, however, creates audible distortion in the reconstructed audio signal. Spec. ¶¶ 14, 54. The present invention overcomes these drawbacks by using a “spectrum fill” technique that fills a transform coded audio signal’s non- coded residual sub-vectors with coefficients from virtual codebooks. According to the Specification, this technique improves the signal’s perception upon decoding—an improvement consistent with the results of listening tests, where listeners preferred the spectrum fill procedure of the disclosed invention in 83% of the tests, but the noise-fill procedure was preferred in only 17% of the tests. See Spec. ¶¶ 26, 65. Turning to claim 1, we first note that the claim recites an apparatus and, therefore, falls within the machine 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 MPEP § 2106.04(II). If both elements are Appeal 2020-000231 Application 15/941,566 9 satisfied, the claim is directed to a judicial exception under the first step of the Alice/Mayo test. See id. The Examiner determines that claim 1 is directed to an abstract idea, namely a sequence of mathematical operations that are said to lack integration into a practical application. See Final Act. 3–4; Ans. 3–6. 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 groupings, namely, (a) mathematical concepts3; (b) certain methods of organizing human activity4; or (c) mental processes.5 Here, apart from the recited processor and memory, all of claim 1’s recited limitations fit squarely within at least one of the above categories of the USPTO’s eligibility guidelines. When read as a whole, the recited limitations are directed to filling a transform coded audio signal’s non-coded residual sub-vectors with coefficients from virtual codebooks. 3 Mathematical concepts include mathematical relationships, mathematical formulas or equations, and mathematical calculations. See MPEP §§ 2106.04(a), 2106.04(a)(2)(I). 4 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 MPEP §§ 2106.04(a), 2106.04(a)(2)(II). 5 Mental processes are concepts performed in the human mind including an observation, evaluation, judgment, or opinion. See MPEP §§ 2106.04(a), 2106.04(a)(2)(III). Appeal 2020-000231 Application 15/941,566 10 That is, apart from the recited processor and memory, the claimed limitations recite mental processes and mathematical concepts. See MPEP §§ 2106.04(I)–(III). That is, the limitations calling for (1) compressing coded residual sub- vectors; (2) rejecting compressed residual sub-vectors that do not fulfill a predetermined criterion; (3) concatenating the remaining compressed residual sub-vectors to form a first virtual codebook; (4) combining pairs of coefficients of the first virtual codebook to form a second virtual codebook; (5) filling non-coded residual sub-vectors below a predetermined frequency with coefficients from the first virtual codebook; (6) filling non-coded residual sub-vectors above the predetermined frequency with coefficients from the second virtual codebook; and (7) compressing components of the coded residual sub-vectors according to the recited mathematical expressions can not only be done entirely mentally by merely thinking about these vector-based operations or writing them down, but these vector-based operations also involve mathematical relationships, formulas, or equations associated with the recited operations. See In re Grams, 888 F.2d 835, 837 n.1 (Fed. Cir. 1989) (“Words used in a claim operating on data to solve a problem can serve the same purpose as a formula.”); Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016) (noting that analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, are essentially mental processes within the abstract idea category); Digitech Image Tech., LLC v. Electronics for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014) (“Without additional limitations, a process that employs mathematical algorithms to manipulate existing information to generate additional information is not patent Appeal 2020-000231 Application 15/941,566 11 eligible.”); Benson, 409 U.S. at 63 (holding ineligible claims involving a mathematical algorithm and directed to converting binary-coded-decimal (BCD) numerals into pure binary numerals for use with a computer); accord CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) (“That purely mental processes can be unpatentable, even when performed by a computer, was precisely the holding of the Supreme Court in [Benson].”). In short, the recited vector operations, including the recited concatenation, are effectively mathematical operations on a mathematical representation of an audio signal. Cf. Burnett v. Panasonic Corp., 741 F. App’x 777, 778–81 (Fed. Cir. 2018) (non-precedential) (noting that a recited concatenation limitation merely joined a string of numbers together and converted coordinate data into a new form of data); Coffelt v. NVIDIA Corp., 680 F. App’x 1010, 1010–11 (Fed. Cir. 2017) (non-precedential) (holding ineligible claim directed to abstract idea of calculating and comparing regions in space). We reach this conclusion noting that it is well settled that not only is standard encoding and decoding an abstract concept long utilized to transmit information, encoding and decoding can also be performed entirely mentally. See RecogniCorp, LLC v. Nintendo Co., Ltd., 855 F.3d 1322, 1326 (Fed. Cir. 2017) (“Morse code, ordering food at a fast food restaurant via a numbering system, and Paul Revere’s ‘one if by land, two if by sea’ signaling system all exemplify encoding at one end and decoding at the other end.”); see also Return Mail, Inc. v. U.S. Postal Service, 868 F.3d 1350, 1368 (Fed. Cir. 2017) (noting encoding and decoding information are processes that can—and have been—performed in the human mind); cf. Appeal 2020-000231 Application 15/941,566 12 CyberSource, 654 F.3d at 1372–73 (noting that a recited step that constructed a map of credit card numbers could be performed by merely writing down a list of credit card transactions made from a particular IP address). That the recited coded sub-vectors and coefficients partially represent an audio signal does not change our conclusion. First, the claim does not specify how or by what means the recited functions are performed, let alone via a particular machine or devices arranged in a particular way to realize that functionality. Rather, the recited operations are merely recited functionally at a high level of generality. Therefore, given the mathematical operations and mental processes associated with the recited limitations noted above, these limitations fall squarely within the mental processes and mathematical concepts categories of the USPTO’s eligibility guidelines and, therefore, recite an abstract idea. See MPEP §§ 2106.04(a), 2106.04(a)(2)(I), (III). Therefore, apart from the recited processor and memory, all of claim 1’s recited limitations fit squarely within at least one of the above categories of the USPTO’s eligibility guidelines and, therefore, recite an abstract idea. See MPEP §§ 2106.04(I)–(III). Notably, the processor and memory are the only recited elements beyond the abstract idea, but these additional elements, considered individually and in combination, do not integrate the abstract idea into a practical application when reading claim 1 as a whole. First, we are not persuaded that the claimed invention improves a computer or its components’ functionality or efficiency, or otherwise changes the way those devices function, at least in the sense contemplated Appeal 2020-000231 Application 15/941,566 13 by the Federal Circuit in Enfish LLC v. Microsoft Corporation, 822 F.3d 1327 (Fed. Cir. 2016), despite Appellant’s arguments to the contrary (Appeal Br. 11–12; Reply Br. 8). The claimed self-referential table in Enfish was a specific type of data structure designed to improve the way a computer stores and retrieves data in memory. Enfish, 822 F.3d at 1339. To the extent Appellant contends that the claimed invention uses such a data structure to improve a computer’s functionality or efficiency, or otherwise change the way that device functions, there is no persuasive evidence on this record to substantiate such a contention. To the extent that Appellant contends that the claimed invention is rooted in technology because it is ostensibly directed to a technical solution (see Appeal Br. 9–16; Reply Br. 2–8), we disagree. Even assuming, without deciding, that the claimed invention can fill a transform coded audio signal’s non-coded residual sub-vectors with coefficients from virtual codebooks faster or more efficiently than doing so manually, any speed or efficiency increase comes from the capabilities of the generic computer components— not the recited process itself. See FairWarning IP, LLC v. Iatric Systems, Inc., 839 F.3d 1089, 1095 (Fed. Cir. 2016) (citing Bancorp Services, LLC v. Sun Life Assurance Co., 687 F.3d 1266, 1278 (Fed. Cir. 2012) (“[T]he fact that the required calculations could be performed more efficiently via a computer does not materially alter the patent eligibility of the claimed subject matter.”)); see also Intellectual Ventures I LLC v. Erie Indemnity Co., 711 F. App’x 1012, 1017 (Fed. Cir. 2017) (non-precedential) (“Though the claims purport to accelerate the process of finding errant files and to reduce error, we have held that speed and accuracy increases stemming from the ordinary capabilities of a general-purpose computer ‘do not materially Appeal 2020-000231 Application 15/941,566 14 alter the patent eligibility of the claimed subject matter.’” (citation omitted)). Like the claims in FairWarning, the focus of claim 1 is not on an improvement in computer processors as tools, but on certain independently abstract ideas that use generic computing components as tools. See FairWarning, 839 F.3d at 1095. Nor is this invention analogous to that which the court held eligible in McRO, Inc. v. Bandai Namco Games America, Inc., 837 F.3d 1299 (Fed. Cir. 2016), despite Appellant’s arguments to the contrary (Appeal Br. 12; Reply Br. 8). There, the claimed process used a combined order of specific rules that rendered information in a specific format that was applied to create a sequence of synchronized, animated characters. McRO, 837 F.3d at 1315. Notably, the recited process automatically animated characters using particular information and techniques—an improvement over manual three- dimensional animation techniques that was not directed to an abstract idea. Id. at 1316. But unlike the claimed invention in McRO that improved how the physical display operated to produce better quality images, the claimed invention here fills a transform coded audio signal’s non-coded residual sub- vectors with coefficients from virtual codebooks. This generic computer implementation is not only directed to mental processes and mathematical concepts, but also does not improve a display mechanism as was the case in McRO. See SAP Am. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018) (distinguishing McRO). Nor is this a case involving eligible subject matter as in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014), despite Appellant’s arguments to the contrary (Appeal Br. 13). There, instead of a Appeal 2020-000231 Application 15/941,566 15 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, is directed to filling a transform coded audio signal’s non-coded residual sub-vectors with coefficients from virtual codebooks— albeit using computer-based components to achieve that end. The claimed invention here is not 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 various computer-based components as noted previously, the claimed invention does not solve a challenge particular to the computing components used to implement this functionality. In short, where, as here, the recited functionality (1) starts with data; (2) applies an algorithm; and (3) ends with a new form of data, such functionality is directed to an abstract idea. See Burnett, 741 F. App’x at 781. On this record, then, the claimed invention does not recite additional elements that (1) improve a computer itself; (2) improve another technology Appeal 2020-000231 Application 15/941,566 16 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 MPEP §§ 2106.04(d)(I), 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. In conclusion, although the recited functions may be beneficial by filling a transform coded audio signal’s non-coded residual sub-vectors with coefficients from virtual codebooks, a claim for a useful or beneficial abstract idea is still an abstract idea. See Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379–80 (Fed. Cir. 2015). We, therefore, agree with the Examiner that claim 1 is directed to an abstract idea. Claims 1–13: Alice/Mayo Step Two Turning to Alice/Mayo step two, claim 1’s additional recited elements, namely the recited processor and memory—considered individually and as an ordered combination—do not provide an inventive concept that amounts to significantly more than the abstract idea when reading claim 1 as a whole. See Alice, 573 U.S. at 221; see also MPEP § 2106.05. As noted above, the claimed invention merely uses generic computing components to implement the recited abstract idea. Appeal 2020-000231 Application 15/941,566 17 Here, the claimed processor and memory are the additional recited elements whose generic computing functionality is well-understood, routine, and conventional. See Fair Warning, 839 F.3d at 1096 (noting that using generic computing components like a microprocessor or user interface do not transform an otherwise abstract idea into eligible subject matter); accord Spec. ¶¶ 74–77 (disclosing various general-purpose computer components used to implement the invention); Ans. 4, 6 (citing this disclosure). To the extent that Appellant contends that the recited limitations other than the processor and memory, namely those detailed above in connection with Alice step one, add significantly more than the abstract idea to provide an inventive concept under Alice/Mayo step two (see Appeal Br. 11, 16), these limitations are not additional elements beyond the abstract idea, but rather are directed to the abstract idea as noted previously. 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 MPEP §§ 2106.05(II), 2106.05(d) (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). Rather, the claimed processor and memory are additional recited elements whose generic computing functionality is well-understood, routine, and conventional. See Mortgage Grader, Inc. v. First Choice Loan Servs. Appeal 2020-000231 Application 15/941,566 18 Inc., 811 F.3d 1314, 1324–25 (Fed. Cir. 2016) (noting that components such an “interface,” “network,” and “database” are generic computer components that do not satisfy the inventive concept requirement); accord Spec. ¶¶ 74– 77 (describing generic computer components used to implement the invention); Ans. 3–4 (determining that the recited processor and memory are additional elements that, as generic computing components, do not add significantly more than the abstract idea). Appellant’s contention that the Examiner allegedly did not comply with the USPTO’s evidentiary requirements for ineligibility rejections after Berkheimer v. HP, Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018) (Appeal Br. 11, 16) is unavailing. To be sure, the Examiner must show—with supporting facts—that certain claim elements are well-understood, routine, and conventional where such a finding is made. See Berkheimer, 881 F.3d at 1369 (noting that whether something is well-understood, routine, and conventional to a skilled artisan at the time of the invention is a factual determination). In light of this factual determination, the USPTO requires that Examiners support a finding that an additional element, or combination of additional elements, is well-understood, routine, and conventional. See MPEP § 2106.05(d)(I)(2). As noted previously, the recited processor and memory are additional recited elements whose generic computing functionality is well-understood, routine, and conventional. Therefore, to the extent that Appellant contends that the Examiner failed to provide evidence that all recited elements— including the recited compression, rejection, concatenation, coefficient combination, and filling functions—are well-understood, routine, and conventional (see Appeal Br. 11, 16), such an argument is not commensurate Appeal 2020-000231 Application 15/941,566 19 with the more limited scope of the Examiner’s finding in this regard. Rather, the Examiner’s finding is that the elements other than the abstract idea, namely the additional computer-based elements, provide generic computing functionality that is well-understood, routine, and conventional. See Ans. 3–4, 6 (noting that the recited additional elements are conventional generic computing components and, therefore, do not add significantly more than the abstract idea). As noted previously, there is ample evidence of this generic computing functionality in not only the cited case law, but also Appellant’s own Specification. See, e.g., FairWarning, 839 F.3d at 1096 (noting that using generic computing components like a microprocessor or user interface do not transform an otherwise abstract idea into eligible subject matter); Spec. ¶¶ 74–77 (disclosing various general-purpose computer components used to implement the invention); Ans. 4, 6 (citing this disclosure). In conclusion, the additional recited elements—considered individually and as an ordered combination—do not add significantly more to the abstract idea to provide an inventive concept under Alice/Mayo step two when reading claim 1 as a whole. See Alice, 573 U.S. at 221; see also MPEP § 2106.05. Therefore, we are not persuaded that the Examiner erred in rejecting claim 1, and claims 2–13 not argued separately with particularity. CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed 1–13 101 Eligibility 1–13 Appeal 2020-000231 Application 15/941,566 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)(iv). See 37 C.F.R. § 41.50(f). AFFIRMED Copy with citationCopy as parenthetical citation