United Parcel Service of America, Inc.

Patent Trials and Appeals Board

Jan 14, 2022

2021002033 (P.T.A.B. Jan. 14, 2022)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 13/921,406 06/19/2013 Thomas J. Buettner IPP201221966/289184 6312 143177 7590 01/14/2022 United Parcel Service, Inc. SHOOK, HARDY & BACON LLP Intellectual Property Department 2555 Grand Blvd. Kansas City, MO 64108-2613 EXAMINER NELSON, FREDA ANN ART UNIT PAPER NUMBER 3628 NOTIFICATION DATE DELIVERY MODE 01/14/2022 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): shbdocketing@shb.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte THOMAS J. BUETTNER ____________ Appeal 2021-002033 Application 13/921,406 Technology Center 3600 ____________ Before MICHAEL C. ASTORINO, JAMES A. WORTH, and BRADLEY B. BAYAT, Administrative Patent Judges. BAYAT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Thomas J. Buettner (Appellant)1 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1-6, 9-11, 14-20, 23-25, 28- 34, 37-39, and 42, which constitute all pending claims in the application, under 35 U.S.C. § 101 as directed to an abstract idea without significantly more. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as “United Parcel Service of America, Inc.” Appeal Br. 1. Appeal 2021-002033 Application 13/921,406 2 CLAIMED INVENTION “In general, embodiments of the present invention provide methods, apparatus, systems, computing devices, computing entities, and/or the like for determining the optimal selection of cartons a consigner should keep in stock.” Spec. ¶ 2. Process claim 1, apparatus claim 15, and computer program product claim 29 are the independent claims on appeal and recite substantially similar subject matter. Claim 1, reproduced below with added emphases, is representative of the claimed subject matter. 1. A method for programmatically determining a list of cartons for shipping items, the list having a configurable number or range of elements, the method comprising the steps of: (a) receiving, by a first computer processing component, a communication from a second computer processing component, the communication being the result of the second computer processing component's query of a memory associated with the second computer processing component and comprising electronic historical shipping data (i) corresponding to a time period, (ii) comprising data of one or more items that have been shipped during the time period and their respective dimensions, the data of the one or more items stored as item shipment records, and (iii) comprising a first list of carton sizes used to ship the one or more items that have been shipped during the time period, wherein the first computer processing component is remote from the second computer processing component; (b) determining, by the first computer processing component, that the first list of carton sizes exceeds a threshold; (c) in response to said determination, programmatically compiling, by the first computer processing component, and based on the data of the one or more items stored as item shipment records, a list of unique items (i) that have been shipped during the time period and respective dimensions of Appeal 2021-002033 Application 13/921,406 3 each of the unique items, and (ii) comprising no more than one instance of each item of the one or more items; (d) for each item of the list of unique items, programmatically determining, by the first computer processing component, a ranking for each of a plurality of carton sizes, wherein the ranking of a particular carton for a particular item is based at least in part on one or more of (i) at least one dimension of the particular carton, (ii) at least one dimension of the particular item, (iii) a volume of the particular carton, (iv) a volume of the particular item, or (v) a combination thereof; (e) associating, by the first computer processing component, a highest ranked carton size for each item of the list of unique items based at least in part on the determined ranking for the corresponding item and determining a list of cartons, wherein (i) the list of cartons comprises the highest ranked carton size for each of the one or more items, and (ii) the highest ranked carton size for a first item of the list of unique items is the carton size of the plurality of carton sizes that minimizes waste space within a carton of the carton size; (f) identifying, by the first computer processing component, at least one carton size, the at least one identified carton size being a carton size of the list of cartons having the fewest items of the list of unique items associated therewith, and (g) creating, by the first computer processing component, a second list of carton sizes by removing the at least one identified carton size from the first list of carton sizes, and storing the second list of carton sizes in a memory of the first computer processing component and providing the list of cartons for display via an interactive interface, the second list of carton sizes having fewer carton sizes than the first list of carton sizes. OPINION Under 35 U.S.C. § 101, an invention is patent eligible if it claims a “new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101 Appeal 2021-002033 Application 13/921,406 4 to include an implicit exception: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014). The Supreme Court, in Alice, reiterated the two-step framework previously set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012), “for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts.” Alice Corp., 573 U.S. at 217. The first step in that analysis is to “determine whether the claims at issue are directed to one of those patent-ineligible concepts.” Id. If the claims are not directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry ends. Otherwise, the inquiry proceeds to the second step where the elements of the claims are considered “individually and ‘as an ordered combination’” to determine whether there are additional elements that “‘transform the nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo, 566 U.S. at 78, 79). This is “a search for an ‘inventive concept’ - i.e., an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.’” Id. at 217-18 (alteration in original). The U.S. Patent and Trademark Office (the “USPTO”) has published revised guidance for use by USPTO personnel in evaluating subject matter eligibility under 35 U.S.C. § 101. 2019 REVISED PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50, 57 (Jan. 7, 2019) (the “2019 Revised Guidance”). That guidance revised the USPTO’s examination procedure with respect to the first step of the Alice framework by (1) “[p]roviding groupings of subject matter that [are] considered an abstract Appeal 2021-002033 Application 13/921,406 5 idea”; and (2) clarifying that a claim is not “directed to” a judicial exception if the judicial exception is integrated into a practical application of that exception. Id. at 50. We have reviewed the eligibility of the pending claims in accordance with the Supreme Court’s two-step framework and through the lens of the 2019 Revised Guidance, but we are not persuaded the Examiner erred in concluding that the pending claims are directed to an abstract idea without significantly more. The Appellant argues claims 1-6, 9-11, 14-20, 23-25, 28-34, 37-39, and 42 together as a group. See Appeal Br. 13-23. We select independent claim 1 as representative for the group, with claims 2-6, 9-11, 14-20, 23- 25, 28-34, 37-39, and 42 standing or falling therewith. 37 C.F.R. § 41.37(c)(1)(iv). The first step in the Alice framework, as mentioned above, is to determine whether the claims at issue are “directed to” a patent-ineligible concept, e.g., an abstract idea. Alice Corp., 573 U.S. at 217. This first step, as set forth in the 2019 Revised Guidance (i.e., Step 2A), is a two-prong test; in Step 2A, Prong 1, we look to whether the claim recites a judicial exception, e.g., one of the following three groupings of abstract ideas: (1) mathematical concepts; (2) certain methods of organizing human activity, e.g., fundamental economic principles or practices, commercial or legal interactions; and (3) mental processes. 2019 Revised Guidance, 84 Fed. Reg. at 54. If so, we next consider whether the claim includes additional elements, beyond the judicial exception, that “integrate the [judicial] exception into a practical application,” i.e., that apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the Appeal 2021-002033 Application 13/921,406 6 judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception (“Step 2A, Prong 2”). Id. at 54-55. Only if the claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application do we conclude that the claim is “directed to” the judicial exception, e.g., an abstract idea. The Federal Circuit has explained that “the ‘directed to’ inquiry applies a stage-one filter to claims, considered in light of the specification, based on whether ‘their character as a whole is directed to excluded subject matter.’” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). It asks whether the focus of the claims is on a specific improvement in relevant technology or on a process that itself qualifies as an “abstract idea” for which computers are invoked merely as a tool. See id. at 1335-36. Here, it is clear from the Specification and the claim language that the focus of claim 1 is on an abstract idea, and not on any improvement to technology. The Specification is entitled “CARTON INVENTORY OPTIMIZATION,” and states that the embodiments of the present invention “determin[e] the optimal selection of cartons a consigner should keep in stock.” Spec. ¶ 2. The Background section in paragraph 3 of Appellant’s Specification discloses: In some instances, cost of shipping an item may depend on the dimensions of the shipping carton. Additionally, if there is empty space in the shipping carton, the empty space often must be filled with packing peanuts, bubble wrap, or other packing material. Thus, when a shipper would like to ship a product, the shipper would like to use a shipping carton that includes minimal empty or waste space within the carton, therefore optimizing Appeal 2021-002033 Application 13/921,406 7 shipping efficiency and maintaining environmentally friendly practices. For frequent shippers, the carton used to ship the product is often selected from a supply of shipping cartons kept in stock in, for example, a shipper’s warehouse or storeroom. Thus, there is a need in the art for methods, systems, apparatus, and computer program products for determining which cartons a consigner should keep in stock in order to minimize the waste[d] space in the shipping cartons of shipped products. To that end, claim 1 recites a method for determining a list of cartons for shipping items reciting the steps of: (a) receiving a communication comprising historical shipping data (i) corresponding to a time period, (ii) data of items shipped during the time period and their dimensions, and (iii) a first list of carton sizes used to ship the items that have shipped during the time period and their dimensions stored as item shipment records; (b) determining that the first list of carton sizes exceeds a threshold; (c) compiling, based on the data of the items stored as item shipment records, a list of unique items (i) that have been shipped during the time period and the dimensions of each of the unique items, and (ii) no more than one instance of each item of the items; (d) determining for each items of the list of unique items a ranking for each of the plurality of carton sizes, wherein the ranking of a particular carton for a particular item is based in part on one or more (i) dimension of the particular carton or (ii) the particular item, (iii) a volume of the carton or (iv) the particular item or (v) a combination thereof; (e) associating a highest ranked carton size for each item of the list of unique items based at least in part on the determined ranking for the corresponding item and determining a list of cartons, wherein (i) the list of cartons comprises the highest ranked carton size for each of the one or more items, and (ii) the highest ranked carton size for a first item of Appeal 2021-002033 Application 13/921,406 8 the list of unique items is the carton size of the plurality of carton sizes that minimizes waste space within a carton of the carton size; (f) identifying at least one carton size, the at least one identified carton size being a carton size of the list of cartons having the fewest items of the list of unique items associated therewith, and (g) creating a second list of carton sizes by removing the at least one identified carton size from the first list of carton sizes, and storing the second list of carton sizes and providing the list of cartons, the second list of carton sizes having fewer carton sizes than the first list of carton sizes. See claim 1 supra. Under the broadest reasonable interpretation, the Examiner determines the above steps when considered “as a whole recite a ‘Method of Organizing Human Activity’ (e.g. ‘Commercial or Legal Interactions’) which includes subject matter relating to agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors, and business relations.” Ans. 3; Non-Final Act. 12. The Examiner also determines that each of steps (b), (d), (e), and (f) individually “as drafted, is a process that, under the broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components.” Non-Final Act. 13. According to the Examiner, each of those steps “falls within the ‘Mental Processes’ grouping of abstract ideas” because each of the determining, associating, and identifying steps can be performed in the human mind. Id. at 14. The Appellant argues that “the claims do not recite elements that place them within these categories, at least because the claimed elements bear no resemblance to the enumerated sub-groupings under ‘certain methods of organizing human activity,’ and because the claimed solution Appeal 2021-002033 Application 13/921,406 9 recites interfaces between computer processing components, not interactions between people, and therefore does not constitute ‘mental processes.’” Appeal Br. 14. In particular, the Appellant argues that nothing in the claim resembles any sales activities or behaviors and is not limited to human activities because the steps are performed by a computer processing component and displayed via an interactive interface. Id. at 14-15. The Examiner responds: “If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation by commercial or legal interactions (e.g. determining which cartons a co[n]signer should keep in stock in order to minimize wasted space in shipping cartons used to ship products) but for the recitation of generic computer components, then it falls within the ‘Certain Methods of Organizing Human Activity’ grouping of abstract ideas.” Ans. 7. We are not persuaded by the Appellant’s arguments because claim 1 recites actions taken to determine the optimal cartons2 of different sizes a sender3 should consider keeping in stock. See Spec. ¶ 3 (“a method for determining the optimal cartons for a consigner to keep in stock”). These actions could be performed by a consigner receiving historical shipping data including a first list of carton sizes used to ship items during a time period (step (a)), determining that the first list of carton sizes exceeds a threshold 2 “‘Carton’ may refer to any shipping container, bag, sleeve, covering, package, box, carton, envelope and/or the like that can be used for shipping an item.” Spec. ¶ 17. 3 “‘Sender’ or ‘Consignor’ may refer to an individual, company, entity, party, or location sending a package containing an item for a recipient.” Id. ¶ 19. Appeal 2021-002033 Application 13/921,406 10 (step (b)),4 compiling, based on the shipping data, a list of unique items and their dimensions shipped during the time period (step (c)), determining a ranking for each of the carton sizes (step (d)), associating a highest ranked carton size for each of the unique items (step (e)), identifying at least a carton size having the fewest items of the list of unique items (step (f)), and creating a second list a carton sizes by removing the at least one identified carton size from the first list of carton sizes pertain to sales activities or behaviors. See Spec. ¶ 64 (“For example, an item may be associated with a carton size the same number of times as the number shipped associated with the item, the shipping frequency associated with the item, an expected number shipped or shipping due to future sales, or some other number of times.”). The activity recited in claim 1, under the broadest reasonable interpretation, describes steps taken by a consigner or “individual” managing inventory of shipping cartons to be kept in stock to minimize the wasted space in the shipping cartons of shipped products “for sending a package containing an item to a recipient” (id. ¶ 19), which is related to sales activities or behaviors and, thus, an abstract idea. In a recent parallel case, the court held that collecting, organizing, grouping, and storing data by conducting a survey is a method of organizing human activity, and the server and database are tools for organizing human activity. In re Jobin, 811 F. App’x 633, 637 (Fed. Cir. 2020). We also agree with the Examiner that individually, steps (b), (d), (e), and (f) describe abstract processes that can be performed in the human mind. 4 We note that the Summary of Claimed Subject Matter does not identify support in the Specification for this limitation (see Appeal Br. 6) and we have been unable to locate any reference to a threshold in the Specification, drawings, and original claims. Appeal 2021-002033 Application 13/921,406 11 Determining that the first list of carton sizes exceeds a threshold, determining a ranking for each of a plurality of carton sizes based on the dimension of the carton or item, associating a highest ranked carton size for each item of the list of unique items, and identifying a carton sizes can be performed in the human mind by observation and evaluation and are considered mental processes even if performed on a computer and displayed on a computer interface. See Revised Guidance 84 Fed. Reg. at 52 (Mental processes-concepts performed in the human mind (including an observation, evaluaton, judgment, opinion”)); see also CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011) (“[A] method that can be performed by human thought alone is merely an abstract idea.”); and accord Versata Dev. Grp. Inc. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015). We disagree with the Appellant’s argument that the claim “involve[s] a complex analysis of historical data comprising a variety of metrics to determine the optimal carton inventory for a consignee and is not capable of being performed in the mind” (Appeal Br. 16) because the scope of claim 1 is merely limited to “one or more items stored as item shipment records” and “at least one carton size” (claim 1 supra). Accordingly, we are not persuaded the Examiner erred in determining that claim 1 recites a judicial exception under Prong One of Step 2A. Having concluded that claim 1 recites a judicial exception, i.e., an abstract idea (Step 2A, Prong One), we next consider whether the claim recites additonal elements that integrate the judicial exception into a practical application (Step 2A, Prong Two). 2019 Revised Guidance, 84 Fed. Reg. at 51. When a claim recites a judicial exception and fails to integrate the exception into a practical application, the claim is “directed to” Appeal 2021-002033 Application 13/921,406 12 the judicial exception. Id. Claim 1 may integrate the judicial exception when, for example, it reflects an improvement to technology or a technical field. Id. at 55. The additional elements recited in claim 1 supra are italicized. These additional elements are “computer processing component[s]”; “memory”; and “an interactive interface” (Non-Final Act. 14), all of which are disclosed in the Specification at a high degree of generality, i.e., as generic computer components (see Spec. ¶¶ 26-28, 40). For example, the Specification indicates that such components, devices, or systems refer to, for example, one or more computers, computing entities, computing devices, mobile phones, desktops, tablets, notebooks, laptops, distributed systems, servers, blades, gateways, switches, processing devices, processing entities, relays, routers, network access points, base stations, the like, and/or any combination of devices or entities adapted to perform the functions, operations, and/or processes Spec. ¶ 27. The Examiner determines that “these additional elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea.” Non-Final Act. 14. The Appellant argues that claim 1 does clearly integrate any alleged recited judicial exception into a practical application “because the elements of the current claims provide a particular improvement over prior art systems, at least based on the lack of prior art rejections raised in the Office Action.” Appeal Br. 18. Appellant draws a parallel to CardioNet LLC v. InfoBionic Inc., 955 F.3d 1358 (Fed. Cir. 2020) because “the Court found the claims to be directed to a practical application because the ‘written Appeal 2021-002033 Application 13/921,406 13 description identifies a number of advantages gained by the elements recited in the claimed ... device.’” Id. The Examiner responds that “novelty and non-obviousness is not the test for patent eligibility” and “unlike Cardionet v. lnfobionic, Appellant’s claims do not provide a technical solution to a technical problem or technology. Instead, Appellant appears to be referencing a business solution in the shipping/inventory business.” Ans. 11. We agree. “The ‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.” Diamond v. Diehr, 450 U.S. 175, 188-89 (1981). Even if the steps are groundbreaking, innovative, or brilliant, that is not enough for eligibility. See Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013); accord SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (“No matter how much of an advance in the finance field the claims recite, the advance lies entirely in the realm of abstract ideas, with no plausibly alleged innovation in the non-abstract application realm. An advance of that nature is ineligible for patenting.”). See also Western Express Bancshares v. Green Dot Corp., No. 2020-1079, 2020 WL 3967855, at *3 (Fed. Cir. July 14, 2020) (“But the absence of the exact invention in the prior art does not prove the existence of an inventive concept.”). Therefore, the fact that the Examiner has not rejected the claims under §§ 102 or 103 over the prior art is not determinative of patent eligibility, i.e., a specific ventricular beat detector device. We also find no parallel with CardioNet’s device for detecting and reporting the presence of atrial fibrillation or atrial flutter in a patient and claim 1, which does not recite any similar technology. Appeal 2021-002033 Application 13/921,406 14 The focus of the invention here is not on an improvement in computers as tools but on improving an abstract idea that uses the properties and capabilities of computers as tools. See Ans. 14-15. The Appellant does not specifically point to an improvement in the functioning of a computer or an improvement to other technology or technical field and therefore these aspects of the invention do not integrate the judicial exception into a practical application. Rather, the Appellant argues that the improvements described in the Specification lead to “automating the process and providing clear advantages over conventional stocking systems” by applying “a specific set of rules, the optimal packages a co[n]signer should keep in stock speeds up the process of determining what packages to keep in stock and performs the optimizing of packages more accurately and more efficiently than prior systems.” Appeal Br. 21. But “relying on a computer to perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible.” OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (citing Alice, 134 S. Ct. at 2359); see also Univ. of Fla. Research Found., Inc. v. Gen. Elec. Co., 916 F.3d 1363, 1367 (Fed. Cir. 2019) (The Federal Circuit held that replacing manual entry of portions of flowsheets with automation, even if that would eliminate transcription errors, was not sufficient to render abstract ideas patent eligible.) We are not apprised of any operation recited in claim 1 that invokes any assertedly inventive programming, requires any specialized computer hardware or other inventive computer components, i.e., a particular machine, or that the claimed invention is implemented using other than generic computer components to perform generic computer functions. See DDR Holdings, 773 F.3d at 1256 (“[A]fter Alice, there can remain no doubt: Appeal 2021-002033 Application 13/921,406 15 recitation of generic computer limitations does not make an otherwise ineligible claim patent-eligible.”). We find no indication in the Specification that the claimed invention effects a transformation or reduction of a particular article to a different state or thing. Nor do we find anything of record that attributes an improvement in computer technology and/or functionality to the claimed invention or that otherwise indicates that the claimed invention integrates the abstract idea into a “practical application,” as that phrase is used in the 2019 Revised Guidance.5 We conclude that claim 1 recites an abstract idea, and the additional elements recited in the claim are no more than generic components used as tools to perform the recited abstract idea. As such, they do not integrate the abstract idea into a practical application. See Alice Corp., 573 U.S. at 223- 24 (“[W]holly generic computer implementation is not generally the sort of ‘additional featur[e]’ that provides any ‘practical assurance that the process is more than a drafting effort designed to monopolize the [abstract idea] itself.’”) (alterations in original) (quoting Mayo, 566 U.S. at 77). Accordingly, we agree with the Examiner that claim 1 is directed to an abstract idea. Having determined under step one of the Alice framework that claim 1 is directed to an abstract idea, we next consider under Step 2B of the 2019 5 The 2019 Revised Guidance references MPEP § 2106.05(a)-(c) and (e) in describing the considerations that are indicative that an additional element or combination of elements integrates the judicial exception, e.g., the abstract idea, into a practical application. 2019 Revised Guidance, 84 Fed. Reg. at 55. If the recited judicial exception is integrated into a practical application, as determined under one or more of these MPEP sections, the claim is not “directed to” the judicial exception. Appeal 2021-002033 Application 13/921,406 16 Revised Guidance, the second step of the Alice framework, whether claim 1 includes additional elements or a combination of elements that provides an “inventive concept,” i.e., whether the additional elements amount to “significantly more” than the judicial exception itself. 2019 Revised Guidance, 84 Fed. Reg. at 56. The Examiner finds that claim 1 “does not include additional elements that asre sufficient to amount to significantly more than the judicial exception.” Non-Final Act. 14. The Appellant first argues that “the claims recite elements that are not well-understood, routine, or conventional activity at least because the elements of independent claims 1, 15, and 29 are not disclosed, taught, or suggested by any prior art.” Appeal Br. 22. Second, the Appellant argues: The elements of the claims, taken as a whole, allow for receiving, electronic historical shipping data the data of the one or more items stored as item shipment records; determining, that the first list of carton sizes exceeds a threshold; in response to said determination, compiling, a list of unique items (i) that have been shipped during the time period and respective dimensions of each of the unique items, and (ii) comprising no more than one instance of each item of the one or more items; determining a ranking for each of a plurality of carton sizes; associating, a highest ranked carton size for each item of the list of unique items based at least in part on the determined ranking for the corresponding item and determining a list of cartons; identifying, at least one carton size, the at least one identified carton size being a carton size of the list of cartons having the fewest items of the list of unique items associated therewith and creating, a second list of carton sizes by removing the at least one identified carton size from the first list of carton sizes. These elements are not merely a "mere instruction to apply it" because the elements as a combination allow the claimed solution to be achieved. The claims therefore recite elements that amount to significantly more than any alleged judicial exception, itself. Appeal 2021-002033 Application 13/921,406 17 Id. at 22-23. First, as discussed above, neither a finding of novelty nor a non- obviousness determination automatically leads to the conclusion that the claimed subject matter is patent eligible. See Ans. 16. Although the second step in the Alice framework is termed a search for an “inventive concept,” the analysis is not an evaluation of novelty or non-obviousness, but rather, a search for “an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.’” Alice Corp., 573 U.S. at 217-18. Second, the Appellant’s argument is not persuasive at least because these steps are part of the abstract idea itself; they are not additional elements to be considered in determining whether claim 1 includes additional elements or a combination of elements sufficient to amount to significantly more than the judicial exception. It could not be clearer from Alice, that under step two of the Alice framework, the elements of each claim are considered both individually and “as an ordered combination” to determine whether the additional elements, i.e., the elements other than the abstract idea itself, “transform the nature of the claim” into a patent-eligible application. Alice Corp., 573 U.S. at 217 (citation omitted); see Mayo, 566 U.S. at 72-73 (requiring that “a process that focuses upon the use of a natural law also contain other elements or a combination of elements, sometimes referred to as an ‘inventive concept,’ sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the natural law itself” (emphasis added) (citation Appeal 2021-002033 Application 13/921,406 18 omitted)). In other words, the inventive concept under step two of the Alice test cannot be the abstract idea itself: It is clear from Mayo that the “inventive concept” cannot be the abstract idea itself, and Berkheimer . . . leave[s] untouched the numerous cases from this court which have held claims ineligible because the only alleged “inventive concept” is the abstract idea. Berkheimer v. HP Inc., 890 F.3d 1369, 1374 (Fed. Cir. 2018) (Moore, J., concurring); see also BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) (“It has been clear since Alice that a claimed invention’s use of the ineligible concept to which it is directed cannot supply the inventive concept that renders the invention ‘significantly more’ than that ineligible concept.”). We are not persuaded, on the present record, that the Examiner erred in rejecting independent claim 1 under 35 U.S.C. § 101. Accordingly, we sustain the rejection of independent claim 1 under 35 U.S.C. § 101, including claims 2-6, 9-11, 14-20, 23-25, 28-34, 37-39, and 42 which fall with claim 1. CONCLUSION The rejection of claims 1-6, 9-11, 14-20, 23-25, 28-34, 37-39, and 42 under 35 U.S.C. § 101 is AFFIRMED. Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-6, 9-11, 14-20, 23- 25, 28-34, 37-39, 42 101 Eligibility 1-6, 9-11, 14-20, 23- 25, 28-34, 37-39, 42 Appeal 2021-002033 Application 13/921,406 19 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED