Ex parte Kimizuka

OCR transcription for search; preserved printed pages are authoritative

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. | CONEIRMATION NO. |
13/871,055 04/26/2013 Wataru KIMIZUKA 6845-0102PUS1 4197
127226 7590 05/15/2019
EXAMINER
BIRCH, STEWART, KOLASCH & BIRCH, LLP | |
8110 Gatehouse Road STANCZAK, MATTHEW BRIAN
Suite 100 East
Falls Church, VA 22042-1248 | ART UNIT | PAPER NUMBER |
3711
| NOTIFICATION DATE | DELIVERY MODE |
05/15/2019 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):

mailroom @bskb.com

PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WATARU KIMIZUKA and MASAHIDE ONUKI
Appeal2018-001081
Application 13/871,055
Technology Center 3700
Before MICHAEL P. TIERNEY, Vice ChiefAdministrative Patent Judge,
JASON M. REPKO and MICHAEL T. CYGAN, Administrative Patent
Judges.
REPKO, Administrative Patent Judge.
DECISION ON APPEAL

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STATEMENT OF THE CASE

Appellants! appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 7, 8, and 13. Br. 17.7 Claims 1-6 are withdrawn.
Claims 9-12 are canceled. We have jurisdiction under 35 U.S.C. § 6(b).

We affirm.

THE INVENTION

Appellants’ invention is a golf-club fitting method. Spec. 1:10—12.
Fitting refers to selecting a club adapted to a player. /d. at 1:15—-16. The
invention is concerned with selecting a club with a suitable loft angle.
Id. at 1:20-22. A club’s loft angle relates to the orientation of its face and
influences a hit ball’s flight distance. /d. at 1:19-25. The invention
recommends a suitable loft angle and corresponding golf club using data
about hit balls. See id. at 3:18, 4:21-29.

Independent claim 7 is reproduced below with modified formatting:

7. A fitting method of a golf club, comprising the following steps
of:

creating a hit ball result database based on ball initial
velocity prediction data, launch angle prediction
data, and back spin prediction data,

the ball initial velocity prediction data being data
capable of predicting a ball initial velocity
based on the dynamic loft and the blow angle,

' According to Appellants, the real party in interest is Dunlop Sports Co.
Ltd. Br. 1.

? Throughout this opinion, we refer to the Final Office Action (“Final Act.”)
mailed February 9, 2016; the Advisory Action (“Adv. Act.”) mailed August
30, 2016; the Appeal Brief (“Br.”’) filed October 7, 2016; and the Examiner’s
Answer (“Ans.”) mailed November 17, 2016.

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the launch angle prediction data being data capable
of predicting a launch angle based on the
dynamic loft and the blow angle, and

the backspin prediction data being data capable of
predicting a backspin based on the dynamic
loft and the blow angle,

wherein the hit ball result database is obtained by
actual measurement and/or a simulation;

measuring a subject’s head speed, dynamic loft, and blow
angle using a reference club;

determining, by a processor, a suitable dynamic loft based
on only the measured head speed, the measured
dynamic loft, and the measured blow angle,

the suitable dynamic loft being defined as a
dynamic loft achieving a predetermined hit
ball result,

wherein the hit ball result database is used for
determining the suitable dynamic loft,

the hit ball result database includes correlation data
between the dynamic loft and the blow angle
which are created for each head speed, and

the hit ball results in the dynamic lofts in the
measured blow angle are compared using the
hit ball result database;

determining a dynamic loft difference from the suitable
dynamic loft and the measured dynamic loft; and

determining a recommended loft angle based on a loft
angle of the reference club and the dynamic loft
difference,

wherein the hit ball result includes a flight distance.

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THE REJECTION
Claims 7, 8, and 13 stand rejected under 35 U.S.C. § 101 as directed
to patent-ineligible subject matter. Adv. Act. 2;> Ans. 2-4.

ANALYSIS
I. 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. L.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 id. 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.”’).

> The Examiner entered an amendment filed after the Final Office Action
and explained how the newly entered claims are rejected in the Advisory
Action. See Adv. Act. 1-2.

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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, 67-68 (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 183 n.7 (quoting Corning v. Burden, 56
U.S. (15 How.) 252, 267-68 (1854))); and manufacturing flour (Benson, 409
USS. at 69 (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 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.”). Having
said that, 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.” /d. (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.”).

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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. “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].’” Jd.
(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.” Jd.
The PTO recently published revised guidance on the application of
§ 101. See 2019 Revised Patent Subject Matter Eligibility Guidance, 84
Fed. Reg. 50 (USPTO Jan. 7, 2019) (“Guidance”). 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 activities such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see 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, conventional” in the field (see MPEP

§ 2106.05(d)); or

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(4) simply appends well-understood, routine, 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.

II. The Examiner’s Rejection

The Examiner determines that, although representative‘ claim 7 is a
process, the claim is directed to a judicial exception: an abstract idea.
Adv. Act. 2; Ans. 3. According to the Examiner, claim 7 is similar to a
claim that the Federal Circuit has determined to be directed to a mental
process. See Adv. Act. 2 (citing SmartGene, Inc. v. Advanced Biological
Labs., SA, 555 F. App’x. 950 (Fed. Cir. 2014) (non-precedential)); Ans. 3.
In concluding that claim 7 is ineligible, the Examiner finds that the

additional elements are well-understood, routine, and conventional in the

field. Ans. 4, 7.

III. Does the claim recite a judicial exception?

Viewing the Examiner’s rejection through the lens of the Guidance,
we first consider whether the claim recites a judicial exception. Guidance,
84 Fed. Reg. at 51. The PTO has synthesized the key concepts identified by
the courts as abstract ideas into three primary subject-matter groupings:

mathematical concepts, certain methods of organizing human activities (e.g.,

+ Appellants argue claims 7 and 8 as a group. See Br. 17 (“In view of the

above, it is submitted that claim 7 and its dependent claims are directed to
patent-eligible subject matter... .”). So we select independent claim 7 as
representative of claims 7 and 8. See 37 C.F.R. § 41.37(c)(1)(iv).

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a fundamental economic practice), and mental processes. Jd. at 52. For the
reasons discussed below, claim 7 recites an abstract idea that falls in the
Guidance’s mental-processes grouping.”

A, Overview of Claim 7

Claim 7 recites a fitting method of a golf club. Under the broadest
reasonable interpretation of claim 7, the recited determinations can be
practically performed in the mind. See Ans. 3 (discussing SmartGene). In
this way, claim 7 recites a judicial exception: an abstract idea within the
Guidance’s mental-process grouping. Next, we explain how each recited
determination is an evaluation or judgment that can practically be performed
in the mind or with the assistance of pen and paper. See Guidance, 84 Fed.
Reg. at 52 n. 14 (collecting cases).

B. “determining, by a processor, a suitable dynamic loft”

Claim 7 recites, in part, that the dynamic-loft determination requires
“the measured head speed, the measured dynamic loft, and the measured
blow angle, the suitable dynamic loft being defined as a dynamic loft
achieving a predetermined hit ball result.” The claim further recites “the hit
ball result database is used for determining the suitable dynamic loft.”

To perform the recited determination, only a small amount of data
needs to be analyzed. In fact, “the hit ball result database may be a list
(table).” Spec. 28:31. For example, Table 24, reproduced below, shows
predetermined hit-ball results. /d. at 59.

> The Examiner analogizes claim 7 to other types of abstract ideas. See
Ans. 3. But this reasoning is cumulative and in the alternative. See id.
Here, it is sufficient to say that claim 7 at least recites a mental process.

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Table 24 shows a ball’s flight distance in yards—.e., the hit-ball
results—when head speed is 50 m/s for a blow angle and dynamic loft. /d.
Like Table 24, claim 7 recites “the hit ball result database includes
correlation data between the dynamic loft and the blow angle which are
created for each head speed.” Thus, the dataset is small enough to be
mentally analyzed by reading Table 24.

As for this analysis, claim 7 recites that, in the suitable dynamic-loft
determination, “the hit ball results in the dynamic lofts in the measured blow
angle are compared using the hit ball result database.” To perform the
recited comparison, a human can compare the flight distances, dynamic
lofts, and blow angles by looking up the values in Table 24. In this way, the
suitable dynamic-loft determination is an evaluation that can practically be
performed in the mind.

C. “determining a dynamic loft difference”

Claim 7 further recites that the dynamic-loft difference is determined

“from the suitable dynamic loft and the measured dynamic loft.” This can

be calculated by formula Fl: Ld = Lx—Lm. /d. at 25:16-24. In F1, Lx is

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the optimal dynamic loft, and Lm is the measured dynamic loft. /d. That is,
the dynamic-loft difference only requires a subtraction, which is also an
evaluation that can practically be performed in the mind. See id.

D. “determining a recommended loft angle”

Claim 7 further recites that the recommended loft angle is determined
“based on a loft angle of the reference club and the dynamic loft difference.”
The recommended loft angle Lr can be calculated using formula F2: Lr = Ls
+ Ld. /d. at 25:30-26:3. In F2, Ls is the reference club’s loft angle, and Ld
is the dynamic-loft difference. /d. That is, the recommended loft-angle
determination only requires an addition, which is also an evaluation that can
practically be performed in the mind. See id.

Claim 7 recites an evaluation that, when considered in the context of
the claim as a whole, can practically be performed in the mind. Thus, claim
7 recites a concept that falls within the Guidance’s mental-processes
grouping. Guidance, 84 Fed. Reg. at 52 nn.14 & 15.

For all the above reasons, claim 7 recites an abstract idea.

IV. Is the claim “directed to” the recited judicial exception?

Because claim 7 recites an abstract idea, we now proceed to determine
whether the recited judicial exception is integrated into a practical
application. 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” the judicial exception. Jd.

The claim may integrate the judicial exception when, for example, it
reflects an improvement to technology or a technical field. /d. at 55. Here,

the described improvement is to “club fitting accuracy via more accurate

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determining of a recommended loft angle.” Br. 10. Essentially, the
disclosed invention helps the user select a club that fits the player’s needs.
Spec. 1:19-25. To solve this non-technical problem, claim 7 uses the
collected data to recommend a golf club that has a desirable loft angle.
Claim 7 does not, for example, improve how the measurements are taken or
improve how the golf club is manufactured. In this way, claim 7 is unlike
the technology-based integrations cited by Appellants. See Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1337 (Fed. Cir. 2016) (holding that the
patent-eligible claim was directed to a self-referential table to improve
computer databases), cited in Br. 6; McRO, Inc. v. Bandai Namco Games
Am., 837 F.3d 1299 (Fed. Cir. 2016) (explaining that the patent-eligible
claim focused on a specific asserted improvement in computer animation),
cited in Br. 10. Considering the claim as a whole, Appellants’ invention
lacks a technical solution to a technical problem.

The mere presence of a database or a processor here does not
necessarily indicate a technical solution. Essentially, Appellants argue that,
because the claim uses a database and a processor, it is not directed to a
mental process. See Br. 9-12. For example, Appellants argue that the
processor and database provide a “specific and tangible implementation,”
which indicates that the claimed subject matter is patent eligible. See
id. at9. But “[c]ourts have examined claims that required the use of a
computer and still found that the underlying, patent-ineligible invention
could be performed via pen and paper or in a person’s mind.” Versata Dev.
Grp. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015), guoted in
Guidance, 84 Fed. Reg. at 52 n.14. So although claim 7 recites a processor

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and a database, this does not preclude the claim from being directed to the
recited mental process.

Here, the processor and database are additional elements. We use the
term “additional elements” for “claim features, limitations, and/or steps that
are recited in the claim beyond the identified judicial exception.” See
Guidance, 84 Fed. Reg. at 55 n.24. Claim 7’s additional elements also
include the step of creating a hit-ball database, and the step of measuring a
subject’s head speed, dynamic loft, and blow angle. See Ans. 4 (discussing
the processor, reference club, and database); see also Final Act. 3. In the
analysis below, we consider these additional elements—individually and in
combination—and conclude that claim 7 as a whole does not integrate the
recited judicial exception into a practical application. See Guidance, 84
Fed. Reg. at 55 nn.25 & 27-32 (citing MPEP §§ 2106.05(a)c), (eHh)).

A, “by a processor”

An additional element may integrate a judicial exception into a
practical application when, for example, the “additional element implements
a judicial exception with, or uses a judicial exception in conjunction with, a
particular machine or manufacture that is integral to the claim.” /d. at 55. In
this case, claim 7 lacks such a machine. At best, the processor simply
executes the mental process described above. Notably, the recited processor
can be a general-purpose computer. Spec. 8:2—3. But a general-purpose
processor that merely executes the judicial exception is not a particular
machine. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716-17 (Fed. Cir.
2014), cited in MPEP § 2106.05(b)(1).

Considering the processor in combination with the other recited

limitations, the processor is merely a token addition. To be sure, the recited

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processor may perform the calculations faster than a human could mentally.
Yet using a computer to achieve a solution more quickly may not be
sufficient to show an improvement to computer technology. See Versata,
793 F.3d at 1335; see also MPEP § 2106.05(a)(II) (instructing examiners
that a “commonplace business method being applied on a general purpose
computer” may not be sufficient to show an improvement). Here, claim 7
broadly recites determining the values without any particular technical
improvement to how the processor carries out these operations. In this way,
the recited processor is merely used to perform calculations that, for the
reasons discussed above, can practically be performed in the mind.

For all these reasons, the claimed method does not use the processor
in a way that indicates that the judicial exception has been integrated into a
practical application.

B. “creating a hit ball result database”

Claim 7 recites “creating a hit ball result database based on ball initial
velocity prediction data, launch angle prediction data, and back spin
prediction data.” In Appellants’ view, “claim 7 integrates the particular
defined hit ball result database into a specific practical application.” Br. 12.
Appellants argue that claim 7 “clearly defined the particular hit ball result
database” by reciting that the database is created with specific values.

Id. at 13.

It is true that the recited steps define the database’s contents with
some specificity. In the database-creation step, several fields are defined by
what they are “capable of predicting.” Specifically, claim 7 recites

the ball initial velocity prediction data being data capable of
predicting a ball initial velocity based on the dynamic loft and
the blow angle, the launch angle prediction data being data

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capable of predicting a launch angle based on the dynamic loft
and the blow angle, and the backspin prediction data being data
capable of predicting a backspin based on the dynamic loft and
the blow angle.

This limitation defines the database’s values—.e., ball initial-velocity,
launch-angle, and backspin-prediction data. Although the recited values are
defined by what they are “capable of predicting,” the prediction is not part of
this step.

The database’s specificity does not remove claim 7 from the abstract
realm. Rather, claim 7 recites “the hit ball result database is obtained by
actual measurement and/or a simulation” (emphasis added). The
“simulation” can use the trajectory equation. Spec. 30:12—13. The database
merely stores the results. Accord id. at 28:31 (“[T]he hit ball result database
may be a list (table).”). Appellants have not disclosed a technical
improvement to a database—e.g., an improvement to the way that the
database stores or retrieves information. Apart from data storage, claim 7
does not use any particular database feature. Using a database to store data
in its ordinary capacity, without more, may not integrate the abstract idea.
See, e.g., Accenture Glob. Servs. GmbH v. Guidewire Software, Inc., 728
F.3d 1336, 1343-44 (Fed. Cir. 2013) (explaining that the generic database
components did not make the claims patent eligible in that case).

For all these reasons, the recited database does not indicate that the
judicial exception has been integrated into a practical application.

C. “measuring a subject’s head speed, dynamic loft, and blow angle
using a reference club”

Although claim 7 recites “measuring a subject’s head speed, dynamic
loft, and blow angle using a reference club,” we disagree with Appellants

that claim 7 recites how to measure. Br. 16. At most, claim 7 recites what

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values are measured. Apart from these values, claim 7 broadly recites
“measuring” without any technical detail. The claim does not recite any
technical improvement to how the measurements themselves are obtained.

Although the step recites “using a reference club,” the club can be the
golfer’s. Spec. 12:4—-5. The club itself imposes no meaningful limitations
because measuring the recited values from a golfer’s swing would require a
club. For all these reasons, the recited measuring step is nothing more than
insignificant data collection.

Thus, the recited measurement does not indicate that claim 7
integrates the abstract idea into a practical application. See CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011)
(explaining that obtaining transaction data for later verification was
insufficient to render the claim eligible in that case), cited in MPEP
§ 2106.05(g); see also Guidance, 84 Fed. Reg. at 55 (discussing insignificant
extra-solution activity).

D. — Other Indicia of Integration

The Guidance lists other indicia of integration. Guidance, 84 Fed.
Reg. at 55. None are present in claim 7.

For example, “[t]ransformation and reduction of an article ‘to a
different state or thing’ is the clue to patentability of a process claim that
does not include particular machines.” Bilski, 561 U.S. at 604 (emphasis
added), quoted in MPEP § 2106.05(c). Yet “not all transformations...
infuse an otherwise ineligible claim with an ‘inventive concept.’” DDR

Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014).

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Claim 7’s method does not transform a physical object or substance.
In this way, the claim is unlike the transformations found in some eligible
claims. See, e.g., Diehr, 450 U.S. at 184 (a process that transforms rubber).
On this record, claim 7 is directed to the identified abstract idea. See

Ans, 4—5.

V. Does the claim provide an inventive concept?

To determine whether a claim provides an inventive concept, the
additional elements are considered—individually and in combination—to
determine whether they (1) add a specific limitation beyond the judicial
exception that is not “well-understood, routine, conventional” in the field or
(2) simply append well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception. Guidance, 84 Fed. Reg. at 56. Also, we reevaluate
our conclusions about the additional elements discussed in the previous step.
Id.

Appellants argue that, viewing the claim as a whole, the claim
specifies how to create the hit-ball result, how to measure the data, how to
use the data, how to use the results, and how to select the loft angle. Br. 16.
In Appellants’ view, these limitations are more than well-understood,
routine, and conventional activities. /d. at 15. We disagree.

A, “by a processor”

Using a computer “only for its most basic function, the performance
of repetitive calculations,” may not impose meaningful limits on the claim’s
scope. Bancorp Servs. v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d
1266, 1278 (Fed. Cir. 2012). Similarly, the MPEP instructs examiners that

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courts recognize that using a computer for performing repetitive calculations
may be well-understood, routine, and conventional when claimed
generically. MPEP § 2106.05(d)CI)(it) (citing Flook, 437 U.S. at 594;
Bancorp, 687 F.3d at 1278).

Claim 7’s method uses the processor for calculating. The Examiner
finds that the processor is well-understood, routine, and conventional in the
field of club fitting. Ans. 4 (citing several patents and publications in
support of this finding). We agree with the Examiner’s findings, which are
adequately supported by this record. Specifically, the recited calculations
cover operations that can be performed mentally, which suggests that the
method only requires a computer with basic functions. In fact, the processor
itself may be a general-purpose computer. Spec. 8:3. Essentially, the claim
uses a general-purpose processor to execute the abstract idea. For these
reasons, the recited processor adds nothing more than well-understood,
routine, conventional activities, specified at a high level of generality, to the
abstract mental process. See MPEP § 2106.05(d)(Dqi).

We also reevaluate our conclusions about whether the recited
processor integrates the abstract idea into a practical application. See supra
§ IV.A. Because the recited processor adds nothing more than well-
understood, routine, conventional activities, those conclusions stand.
Considering both our previous conclusions and the findings about well-
understood, routine, and conventional activity, we determine that the
claimed method does not use the processor in a way that indicates that the

claim provides an inventive concept. See Ans. 3-4; Final Act. 3.

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B. “a hit ball result database”

The Federal Circuit has recognized that a generic database may not
satisfy the inventive-concept requirement. Mortg. Grader, Inc. v. First
Choice Loan Servs. Inc., 811 F.3d 1314, 1324-25 (Fed. Cir. 2016). Also,
the MPEP instructs examiners that courts recognize that storing and
retrieving information in memory may be well-understood, routine, and
conventional when claimed generically. MPEP § 2106.05(d)(D(v) (citing
Versata, 793 F.3d at 1334; OIP Techs., Inc. vy. Amazon.com, Inc., 788 F.3d
1359, 1363 (Fed. Cir. 2015)).

In claim 7, the recited database stores data and may be a list or table.
Spec. 28:31. Although the stored values are defined with particularity, claim
7 merely recites creating a database with this data. Claim 7, for example,
does not use any specific technical features of database technology in an
unconventional way. In this regard, the claim uses the database generically
for data storage and retrieval. Thus, the recited database is well-understood,
routine, and conventional. See MPEP § 2106.05(d)(D(iv).

We also reevaluate our conclusions about whether the recited database
integrates the abstract idea into a practical application. See supra § IV.B.
Because the recited database adds nothing more than well-understood,
routine, conventional activities, those conclusions stand. Considering both
our previous conclusions and the findings about well-understood, routine,
and conventional activity, we determine that the claimed method does not
use the database in a way that indicates that the claim provides an inventive

concept. See Ans. 3-4; Final Act. 3.

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C. “measuring a subject’s head speed, dynamic loft, and blow angle using a
reference club”

Similarly, the measuring step is not claimed with any particularity to
distinguish it from routine data collection. Rather, claim 7 simply recites
“measuring” using the reference club. In fact, the Specification states that
“the reference club is not particularly limited.” Spec. 12:3-4. “For
example, a club usually used by the subject may be the reference club.”

Id. at 12:45. Measuring the recited values from a golfer’s swing would
require aclub. Also, the Specification discloses that collecting data from a
golfer’s swing is conventional. See id. at 1:27 (“Data is generally measured
from a golf player’s swing.”).

We also reevaluate our conclusions about whether the recited
measurements integrate the abstract idea into a practical application. See
supra § IV.C. Because the recited measurements add nothing more than
well-understood, routine, conventional activities, those conclusions stand.
Considering both our previous conclusions and the findings about well-
understood, routine, and conventional activity, we determine that the recited
measurements do not indicate that the claim provides an inventive concept.
See Ans. 3—4; Final Act. 3.

D. The Combination

“[A] new combination of steps in a process may be patentable even
though all the constituents of the combination were well known and in
common use before the combination was made.” Diehr, 450 U.S. at 188.
For example, the claims in BASCOM Global Internet Services, Inc. v. AT&T
Mobility LLC involved an inventive distribution of function between a local
computer and a server. See 827 F.3d 1341, 1350-51 (Fed. Cir. 2016). The

Federal Circuit noted “[t]he inventive concept described and claimed in the

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’606 patent is the installation of a filtering tool at a specific location, remote
from the end-users, with customizable filtering features specific to each end
user.” /d. at 1350. “Because the filtering tool on the ISP server contains
each user’s customized filtering mechanism, the filtering tool working in
combination with the ISP server can apply a specific user’s filtering
mechanism to the websites requested by that user.” Jd. at 1345.

Appellants do not identify any inventive concept in the recited
combination of steps here or any specific arrangement of computing
components. Indeed, the claim’s focus is club fitting, not a specific
configuration of the processor and database. In the claimed arrangement, the
processor simply reads values from a database and uses them in the recited
calculations.

Appellants argue that the claim recites specific features to improve
club fitting. Br. 11-12. In Appellants’ view, claim 7 recites a “rule” that “is
not used conventionally by any people who select golf clubs for their
customers.” /d. at 13 (emphasis omitted).

Yet the claimed “rule” is the abstract idea itself. “What is needed is
an inventive concept in the non-abstract application realm.” SAP Am., Inc.
v. InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018). “[A] claim for a
new abstract idea is still an abstract idea.” Synopsys, Inc. v. Mentor
Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016). Here, the limitations
on the mental process itself—.e., the “rules” governing the determinations
(see Br. 12-13)—do not make claim 7 any less abstract. None of these
limitations provide an inventive concept in the non-abstract application

realm. Unlike BASCOM, claim 7 is simply an “abstract-idea-based solution

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implemented with generic technical components in a conventional way.”
827 F.3d at 1351.
On this record, the limitations—considered individually and in

combination—do not provide an inventive concept. Ans. 3-4; Final Act. 3.

VI. Other Arguments
Appellants argue that claim 7 does not preempt approaches that use
“rules of a different structure or different techniques.” Br. 12. “While
preemption may signal patent ineligible subject matter, the absence of
complete preemption does not demonstrate patent eligibility.” Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
“TQ|uestions on preemption are inherent in and resolved by the § 101

analysis,” which has been applied here. /d.

VII. Conclusion
We sustain the rejection of representative claim 7 under 35 U.S.C.
§ 101. We also sustain the rejection of claim 8, which is argued together

with claim 7. See supra n.4.

VII. Claim 13
Claim 13 depends from claim 7 and recites, in part, “the step of
selecting a recommended golf club for the subject based on the
recommended loft angle.”
Appellants argue that claim 13 is eligible because it recites a “tangible

result”—.e., a selected golf club. Br. 17.

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The Specification states that “[t]he selection may be performed by a
fitter” or the processor. Spec. 15:18—-19. The recommended club can be
selected from a list of clubs. See, e.g., id. at 12:5—6; 28:31. In fact, the
golfer’s usual club—e., the reference club—imay be one of the clubs in the
list. Id. at 12:5—6. Because the recited selection covers activities performed
by a processor or the fitter, we do not interpret claim to require a physical
act, as Appellants’ argument suggests. See Br. 17. Rather, claim 13’s
selection can practically be performed in the fitter’s mind. For example, the
recited selection covers a fitter’s judgment or decision to recommend the
club “usually used by” the golfer. See Spec. 12:3-6; 15:18-19; 28:31.

Apart from limiting the mental process recited in claim 7 to include
this selection, claim 13 does not recite additional elements outside the
abstract realm. So claim 13 does not integrate the abstract idea into a
practical application or supply an inventive concept. See SAP, 898 F.3d at
1168.

Thus, we sustain the rejection of claim 13 under 35 U.S.C. § 101.

DECISION
We affirm the Examiner’s decision to reject claims 7, 8, and 13.

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).

AFFIRMED

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