Ex parte Kimizuka

Informative decision only: persuasive authority, not binding precedent. Applying the 2019 Revised Patent Subject Matter Eligibility Guidance, when a claim recites a judicial exception (here, a mental process) and its additional elements (a generic processor, a database, and a data-measuring step) do not integrate the exception into a practical application, the Board treats the claim as "directed to" the exception and then asks whether those elements add a specific limitation that is not well-understood, routine, conventional or merely append such activity at a high level of generality. A claim whose determinations can practically be performed in the mind or with pen and paper, run on a general-purpose processor, is ineligible under § 101. No prior precedent directly addressed this issue in the text; the Board applies the 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, as its framework: step one asks whether the claim recites an exception and whether additional elements integrate it into a practical application, and only then is the well-understood, routine, conventional inquiry reached. For the examiner, the decision shows a rejection can be sustained by showing each recited determination is an evaluation or judgment practicable in the mind, using the specification's own examples (a lookup table, a subtraction, an addition), and by supporting a routine and conventional finding with cited references. For the applicant, reciting a processor, a database, or specifically defined data fields does not by itself integrate a mental process, and a claimed novel "rule" is still the abstract idea. The Board relied on Supreme Court and Federal Circuit authority including Alice, Mayo, Diehr, Versata, Ultramercial, Accenture, CyberSource, SAP v. InvestPic, and BASCOM. LEGAL TEST OR STANDARD: Under the Guidance, the Board first looks to whether the claim recites (1) any judicial exceptions, including certain groupings of abstract ideas (mathematical concepts, certain methods of organizing human activities such as a fundamental economic practice, or mental processes); and (2) additional elements that integrate the judicial exception into a practical application. Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, does the Board look to whether the claim (3) adds a specific limitation beyond the judicial exception that is not well-understood, routine, conventional in the field; or (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. TRIGGERING FACTS: Claim 7 is a golf-club fitting method that creates a hit ball result database, measures a subject's head speed, dynamic loft and blow angle with a reference club, and determines by a processor a suitable dynamic loft, a dynamic loft difference, and a recommended loft angle. The determinations used a small, table-like dataset (Table 24), a subtraction and an addition. The processor may be a general-purpose computer, the reference club may be the golfer's own club, and the claim recites no improvement to how the processor, database or measurements work and does not transform a physical object. The Examiner cited patents and publications showing the processor is conventional in club fitting. KEY QUOTE: "When a claim recites a judicial exception and fails to integrate the exception into a practical application, the claim is “directed to” the judicial exception." (p. 10) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The Board applies the 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (USPTO Jan. 7, 2019), and distinguishes Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016), McRO, Inc. v. Bandai Namco Games Am., 837 F.3d 1299 (Fed. Cir. 2016), and BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016). PRACTICE TIP: In an appeal brief, do not rely on the recitation of a processor, a database, or detailed data definitions to show practical application. Identify a specific technical improvement in how the processor, database or measurements operate, or a specific arrangement of components, and address the claim's mental-process character directly, since a new rule governing the determinations remains the abstract idea.