AirWatch LLC

Patent Trials and Appeals Board

Dec 2, 2020

2020004894 (P.T.A.B. Dec. 2, 2020)

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.
14/502,654 09/30/2014 Pratik Jagad W047 (500102-1110) 5589
152577 7590 12/02/2020
Thomas | Horstemeyer, LLP (VMW)
3200 Windy Hill Road, SE
Suite 1600E
Atlanta, GA 30339
EXAMINER
RAVETTI, DANTE
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
12/02/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing@thomashorstemeyer.com
ipadmin@vmware.com
uspatents@thomashorstemeyer.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PRATIK JAGAD and MANMEET KAUR
____________

Appeal 2020-004894
Application 14/502,6541
Technology Center 3600
____________

Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and
BIBHU R. MOHANTY, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 15–21. We have jurisdiction under 35 U.S.C.
§ 6(b).

SUMMARY OF DECISION
We AFFIRM.

1 Appellant identifies VMWare, Inc., which owns 100% of Airwatch LLC,
as the real party in interest. Appeal Br. 2.
Appeal 2020-004894
Application 14/502,654

2

THE INVENTION
Appellant states, “[t]he present disclosure is directed towards systems
and methods for facilitating the management of digital application licenses
associated with applications that are installed on users’ devices within an
enterprise system.”
Spec. ¶ 9.
Claim 15, reproduced below, is representative of the subject matter on
appeal.
15. A method comprising:
obtaining, using at least one computing device, a pool of
digital application licenses through an application programming
interface (API) call to a third-party application repository, the
pool of digital application licenses being associated with an
application;
receiving, in the at least one computing device, a request
to install the application on a client device, the client device
being associated with a first user account and a second user
account, the first user account being associated with the third-
party application repository;
determining that the first user account is not associated
with a digital application license for the application;
identifying, based upon a plurality of group memberships
of the second user account, a highest priority user group from
among a plurality of user groups that is associated with a
balance of digital application licenses for the application;
associating, by the at least one computing device, one of
the digital application licenses from the identified user group
with the first user account, the second user account, and the
client device;
transmitting, by the at least one computing device, to the
third-party application repository a hashed value corresponding
to the first user account with an indication that the first user
account has been assigned the digital application license for the
application;
Appeal 2020-004894
Application 14/502,654

3

removing, by the at least one computing device, a license
from the pool of digital application licenses; and
initiating, by the at least one computing device,
installation of the application.

Appeal Brief 18 (Claims Appendix).
THE REJECTION
The following rejections are before us for review.
A. Claim(s) 15–21 are rejected under 35 U.S.C. § 112(a) or 35 U.S.C.
§ 112 (pre-AIA), first paragraph, as failing to comply with the
written description requirement.
B. Claim(s) 15–21 is/are rejected under 35 U.S.C. § 101 because the
claimed invention is directed to an abstract idea without
significantly more.
FINDINGS OF FACT
We adopt the Examiner’s findings as set forth on pages 4–27 in
the Final Office Action2 and on pages 4–14 in the Examiner’s
Answer, concerning only the 35 U.S.C. § 101 rejection.

ANALYSIS
35 U.S.C. § 112(a) REJECTION
The Examiner rejected claim(s) 15–21 under 35 U.S.C. § 112(a) or 35
U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with the
written description requirement.3

2 All references to the Final Office Action refer to the Final Office Action
mailed on August 15, 2019.
3 The Examiner withdraws the rejection of claims 15 and 19 under 35 U.S.C.
§ 112(b) or 35 U.S.C. § 112 (pre-AIA), first second paragraph. (Answer 4).
Appeal 2020-004894
Application 14/502,654

4

Concerning claim 15, the Examiner focuses on the limitation,
“receiving, in the at least one computing device, a request to install the
application on a client device, the client device being associated with a first
user account and a second user account, the first user account being
associated with the third-party application repository.” Citing to paragraph
31 of the Specification, the Examiner found,
Here, in reference to accounts being associated, Applicant's
Specification recites that “user accounts” maybe associated to,
“application distribution environment.” Therefore, Applicant's
Specification is silent the computer and the algorithm (e.g., the
necessary steps and/or flowcharts) that perform the claimed
function in sufficient detail such that one of ordinary skill in the
art can reasonably conclude that the inventor invented the
claimed subject matter.
(Final Act. 21–22).

Appellant argues,
paragraph [0049] of Appellant’s specification states that “[a]t
box 605, the license allocation application 126 can receive a
request to distribute an application to a client device 106.
Such a request can be obtained from a user wishing to enroll a
device with the device management system 119 or install a
particular application 129 on a client device, or a request can
be obtained from a system administrator indicating that a
particular application 129 should be installed on a user's
client device 106.” See also, FIG. 6 (605), FIG. 1 (117, 126,
155). Accordingly, Appellant’s Specification reasonably
conveys, to one skilled in the art, possession of the elements of
claim 15 including “receiving, in the at least one computing
device, a request to install the application on a client device,”
and provides sufficient detail for one skilled in the art to
understand how to perform these elements.
(Appeal Br. 12).
Appeal 2020-004894
Application 14/502,654

5

We agree with Appellant. We note that claim 1 does not require
installation of the application, merely initiating it. The term “initiate” means
“to cause or facilitate the beginning of: set going.”4 The Specification at
paragraph 49 speaks only desirously that, “A request can be obtained from
a user wishing to enroll a device.” Thus, based on the generality of the
Specification and the broad scope of the claims, we do not find the
Specification lacking in terms of the written description requirement, at least
as to the scope of what is being claimed. This is because the independent
claim 15 does not actually claim installation to completion.
Concerning claim 19, the Examiner focuses on the phrase, “pushing
the installation of the application to the client device without user
intervention.”
Citing to paragraph 24 of the Specification the Examiner found,
Applicant's Specification is silent, “without user intervention
....” Therefore, Applicant's Specification is silent the computer
and the algorithm (e.g., the necessary steps and/or flowcharts)
that perform the claimed function in sufficient detail such that
one of ordinary skill in the art can reasonably conclude that the
inventor invented the claimed subject matter.
(Final Act. 3).

Appellant argues, most significantly,

Appellant's Specification at paragraph [0029] states that “the
agent application 131 may run as a background process in the
client device 106. In other words, the agent application 131
may execute and/or run without user intervention.”…
Appellant's Specification at paragraph [0024] states “a systems
administrator may designate, via the management console 123,
that a particular application should be installed on a client

4 https://www.merriam-webster.com/dictionary/initiate
Appeal 2020-004894
Application 14/502,654

6

device 106 of the user which can cause the device management
system 119 to push a copy of the application 129 for
installation on the client device 106 to the client device 106.”
(Appeal Br. 14).
We are not persuaded by Appellant’s arguments. The fact that
an agent application may run as a background process still leaves a
large leap to “pushing the installation of the application to the client
device without user intervention.” Items, such as, protocols as to what
events cause the push process to be set into motion, are all left
unanswered by the Specification.
Accordingly, we will not sustain the rejection of claim 15 under 35
U.S.C. § 112(a) and sustain the rejection of claim 19 under 35 U.S.C.
§ 112(a) or 35 U.S.C. § 112 (pre-AIA), first paragraph.

35 U.S.C. § 101 REJECTION
We will affirm the rejection of claims 15–21 under 35 U.S.C. § 101.
The Appellant argues claims 15–21 as a group. (Appeal Br. 4).
We select claim 1 as the representative claim for this group, and so the
remaining claims stand or fall with claim 15. See 37 C.F.R.
§ 41.37(c)(1)(iv) (2015).
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. E.g., Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573
U.S. 208, 216 (2014).
Appeal 2020-004894
Application 14/502,654

7

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. Alice, 573 U.S. 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.”).
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.
252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. 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
Appeal 2020-004894
Application 14/502,654

8

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.” 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.
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“Guidance”).5 “All USPTO personnel are, as a matter of internal agency

5 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (the “October
Appeal 2020-004894
Application 14/502,654

9

management, expected to follow the guidance.” Id. at 51; see also October
2019 Update at 1.6
Under the 2019 Revised Guidance and the October 2019 Update, we
first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes) (“Step 2A, Prong One”); 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)) (“Step 2A, Prong Two”).7
Guidance, 84 Fed. Reg. at 52–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
Step 2B, to whether the claim:

2019 Update”) (available at https://www.uspto.gov/sites/default/files/
documents/peg_oct_2019_update.pdf).
6 The 2019 Revised Guidance supersedes MANUAL OF PATENT EXAMINING
PROCEDURE (“MPEP”) § 2106.04 and also supersedes all versions of the
USPTO’s “Eligibility Quick Reference Sheet Identifying Abstract Ideas.”
See Guidance, 84 Fed. Reg. at 51 (“Eligibility-related guidance issued prior
to the Ninth Edition, R-08.2017, of the MPEP (published Jan. 2018) should
not be relied upon.”). Accordingly, Appellant’s arguments challenging the
sufficiency of the Examiner’s rejection will not be addressed to the extent
those arguments are based on now superseded USPTO guidance.
7 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See Guidance - Section III(A)(2), 84 Fed. Reg. at 54–
55.
Appeal 2020-004894
Application 14/502,654

10

(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
(4) simply appends 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 52–56. The U.S. Court of Appeals for the Federal
Circuit has explained that “the ‘directed to’ inquiry applies a stage-one filter
to claims, considered in light of the [S]pecification, 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 Enfish,
822 F.3d at 1335–36.
In so doing, as indicated above, we apply a “directed to” two
prong test: 1) evaluate whether the claim recites a judicial exception,
and 2) if the claim recites a judicial exception, evaluate whether the
claim “appl[ies], rel[ies] on, or use[s] the judicial exception in a
manner that imposes a meaningful limit on the judicial exception,
such that the claim is more than a drafting effort designed to
monopolize the judicial exception.” Guidance, 84 Fed. Reg. at 53; see
also MPEP §§ 2106.04–2106.05.
Accordingly, we find:
The Specification states:
A client device may be owned outright by a user, or the user
may be issued (permitted to use) the client device if owned by
Appeal 2020-004894
Application 14/502,654

11

an enterprise. In either case, a systems administrator for the
enterprise may want to make a particular application available
to the user and obtain a set of digital application licenses from
an application repository for the particular application. The
licenses can then be issued to users designated by the systems
administrator. These digital application licenses may be
obtained on volume licensing terms from the application
repository and then assigned by an enterprise to its users as the
enterprise sees fit. Accordingly, embodiments of the system
and method described herein facilitate assignment of licenses
for applications obtained from an application repository to
client devices that may be managed by the enterprise or be
managed by users who have enrolled their devices to receive
applications via the enterprise under a volume purchasing plan
that the enterprise may have in place with the application
repository.
Specification ¶ 10.

A systems administrator may assign licenses for a particular
application to various groups of users within an enterprise. For
example, users may be grouped into different user groups based
upon the user's role within an enterprise, a location of the user,
a labor category of the user, or other attribute of a user.
Licenses can then be assigned to a particular user when a
request to deploy or transmit the application to a client device
of the user is received and where the license is obtained from a
pool of licenses that are assigned to a group with which the user
is associated. In one embodiment, an optimal user group is
identified from which a license may be obtained for assignment
to the user, wherein the optimal user group is identified based at
least in part on an optimality parameter. An optimality
parameter can include a priority that is specified by an
administrator. For example, a user may be assigned to multiple
user groups that are allocated licenses for an application.
Accordingly, a priority can be assigned to user groups of which
a user is a member such that a license for an application for a
user is obtained from an allocation of a higher priority user
group before a lower priority user group.
Specification ¶ 11.
Appeal 2020-004894
Application 14/502,654

12

Understood in light of the Specification claim 15 recites in pertinent
part,
obtaining, …, a pool of digital application licenses…, the pool
of digital application licenses being associated with an
application;
receiving, …a request to install the application on a client
device, the client device being associated with a first user
account and a second user account, the first user account being
associated with the third-party application repository;
determining that the first user account is not associated with a
digital application license for the application; identifying, based
upon a plurality of group memberships of the second user
account, a highest priority user group from among a plurality of
user groups that is associated with a balance of digital
application licenses for the application; associating, …. one of
the digital application licenses from the identified user group
with the first user account, the second user account, and the
client device; transmitting, …, to the third-party application
repository a hashed value corresponding to the first user
account with an indication that the first user account has been
assigned the digital application license for the application;
removing, …, a license from the pool of digital application
licenses; and initiating, …, installation of the application.
Appeal Br. 18.

The Examiner found “the claim(s) are directed to the mental process
of electronic/digital licensing.” (Final Act. 9).
Accordingly, all this intrinsic evidence shows that claim 15 recites a
license allocation granting scheme associating a desired license from a user
group with plural accounts and a client device. This is consistent with the
Examiner’s determination. Limitations such as, “determining that the first
user account is not associated with a digital application license for the
application,” and “identifying, based upon a plurality of group memberships
Appeal 2020-004894
Application 14/502,654

13

of the second user account, a highest priority user group from among a
plurality of user groups that is associated with a balance of digital
application licenses for the application,” are commercial or legal interactions
which are one of certain methods of organizing human activity that are
judicial exceptions. Guidance, 84 Fed. Reg. at 52.
Turning to the second prong of the “directed to” test, claim 1 only
generically requires “at least one computing device,” “an application
programming interface (API)” and a “client device.” These components are
described in the Specification at a high level of generality. See Spec. ¶¶ 13–
16, Fig. 1. We fail to see how the generic recitations of these most basic
computer components and/or of a system so integrates the judicial exception
as to “impose[] a meaningful limit on the judicial exception, such that the
claim is more than a drafting effort designed to monopolize the judicial
exception.” Guidance at 53.
Thus, we find that the claims recite the judicial exception of a certain
method of organizing human activity.
That the claims do not preempt all forms of the abstraction or may be
limited to license allocation, does not make them any less abstract. See OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362–63 (Fed. Cir. 2015)
(“And that the claims do not preempt all price optimization or may be
limited to price optimization in the e-commerce setting do not make them
any less abstract.”).
Turning to the second step of the Alice analysis, because we find that
the claims are directed to abstract ideas/judicial exceptions, the claims must
include an “inventive concept” in order to be patent-eligible, i.e., there must
be an element or combination of elements sufficient to ensure that the claim
Appeal 2020-004894
Application 14/502,654

14

in practice amounts to significantly more than the abstract idea itself. See
Alice, 573 U.S. at 217–18 (quoting Mayo Collaborative Servs., 566 U.S. at
72–73).
Concerning this step the Examiner found the following:
The additional elements of claim(s) 15 do not change
the analysis as claim(s) 15 do not include additional elements
that are sufficient to amount to significantly more than the
judicial exception because alone, the elements do not amount to
significantly more than the abstract idea. The additional
elements of claim(s) 15 taken together, as an ordered
combination, as a whole, also do not amount to significantly
more than the abstract idea.

Final Act. 16. We agree with the Examiner. “[T]he relevant question is
whether the claims here do more than simply instruct the practitioner to
implement the abstract idea . . . on a generic computer.” Alice, 573 U.S.
at 225. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to retrieve, select, and apply decision criteria to data and modify
the data as a result amounts to electronic data query and retrieval—one of
the most basic functions of a computer. Limitations such as, “obtaining,
using at least one computing device, a pool of digital application licenses
through an application programming interface (API) call to a third-party
application repository, the pool of digital application licenses being
associated with an application,” are but a recitation of data characterization,
viz. an expectation, which is aspirational. All of these computer functions
are well-understood, routine, conventional activities previously known to the
industry. See Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354
Appeal 2020-004894
Application 14/502,654

15

(Fed. Cir. 2016); see also In re Katz Interactive Call Processing Patent
Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011) (“Absent a possible narrower
construction of the terms ‘processing,’ ‘receiving,’ and ‘storing,’ . . . those
functions can be achieved by any general purpose computer without special
programming”). In short, each step does no more than require a generic
computer to perform generic computer functions. The claims do not, for
example, purport to improve the functioning of the computer itself. In
addition, as we stated above, the claims do not effect an improvement in any
other technology or technical field. The Specification spells out different
generic equipment and parameters that might be applied using this concept
and the particular steps such conventional processing would entail based on
the concept of information access under different scenarios (see, e.g., Spec.
¶¶ 13–16, Fig. 1). Thus, the claims at issue amount to nothing significantly
more than instructions to apply the abstract idea using some unspecified,
generic computer. Under our precedents, that is not enough to transform an
abstract idea into a patent-eligible invention. See Alice, 573 U.S. at 225–
226.
Considered as an ordered combination, the computer components of
Appellant’s claims add nothing that is not already present when the steps are
considered separately. The sequence of data reception-analysis
(obtaining/receiving/determining/identifying/associating/transmitting/execut
ing/initiating) and storing is equally generic and conventional or otherwise
held to be abstract. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715
(Fed. Cir. 2014) (sequence of receiving, selecting, offering for exchange,
display, allowing access, and receiving payment recited an abstraction),
Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378
Appeal 2020-004894
Application 14/502,654

16

(Fed. Cir. 2017) (holding that sequence of data retrieval, analysis,
modification, generation, display, and transmission was abstract), Two-Way
Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1339 (Fed.
Cir. 2017) (holding sequence of processing, routing, controlling, and
monitoring was abstract). The ordering of the steps is, therefore, ordinary
and conventional.
The remaining method claims merely describe process parameters.
We conclude that the method claims at issue are directed to a patent-
ineligible concept itself, and not to the practical application of that concept.
We have reviewed all the arguments Appellant has submitted
concerning the patent eligibility of the claims before us that stand rejected
under 35 U.S.C. § 101. (Appeal Br. 12–29). We find that our analysis
above substantially covers the substance of all the arguments, which have
been made. But, for purposes of completeness, we will address various
arguments in order to make individual rebuttals of same.
Appellant argues:
The human mind is not equipped to, “obtain[] a pool of
digital licenses through an application programming interface
(API) call to a third-party application repository,” “receiv[ e] a
request to install the application on a client device,” “transmit[]
to the third-party application repository a hashed value
corresponding to the first user account with an indication that
the first user account has been assigned the digital application
license for the application,” “remov[ e] a license from the pool
of digital application licenses,” and “initiat[ e] installation of
the application.”
(Appeal Br. 6).

Although we agree with Appellant that a human mind is not equipped
with an application programming interface (API), human brains are not
Appeal 2020-004894
Application 14/502,654

17

machines as understood in 35 U.S.C. § 1018. The issue is whether absent
the device limitations, is the human mind capable of performing the claimed
steps?9 We find that the steps enumerated above are intrinsically abstract in
nature and hence can be performed by the human mind. Namely, obtaining
a pool of digital licenses is merely data collection. Receiving a request to
install the application on a client device is cognizant. Transmitting a hashed
value corresponding to the first user account with an indication that the first
user account has been assigned the digital application license for the
application is communication of data. Removing a license from the pool of
digital application licenses is decision making. See supra e.g., In re TLI
Commc’ns LLC Patent Litig., 823 F.3d 607; FairWarning IP, 839 F.3d
1089.
As early as Parker v. Flook, the Supreme Court held that calculations,
while “primarily useful for computerized calculations producing automatic
adjustments in alarm settings,” “can [still] be made by pencil and paper
calculations.” Parker, 437 U.S. at 586. As such, the Court did not deem the
alleged primacy of computer implementation to be persuasive in its 35
U.S.C. § 101 analysis. Appellant here has not produced evidence showing
that the claimed computations cannot be made by human interaction using a
pen and paper. Instead, Appellant appears to be relying on attorney

8 “Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title.” 35 U.S.C. § 101

9 The step of “initiating… installation of the application,” is a post solution
activity. Parker v. Flook, 437 U.S. 584, 588-90 (1978) (insignificant post-
solution activity step found to be insufficient to impart patentability).

Appeal 2020-004894
Application 14/502,654

18

argument alone. It is well settled merely using a computer to perform more
efficiently what could otherwise be accomplished manually does not confer
patent-eligibility. See Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Can.,
687 F.3d 1266, 1279 (Fed. Cir.2012) (“Using a computer to accelerate an
ineligible mental process does not make that process patent-eligible.”);
MySpace, Inc. v. GraphOn Corp., 672 F.3d 1250, 1267 (Fed. Cir.2012)
(“While running a particular process on a computer undeniably improves
efficiency and accuracy, cloaking an otherwise abstract idea in the guise of a
computer-implemented claim is insufficient to bring it within section 101.”).
We also disagree that the claims before us (Appeal Br. 8) are similar to
the Federal Circuit’s findings in Bascom Global Internet v. AT&T Mobility
LLC, 827 F.3d 1341 (Fed. Cir. 2016)). The key fact in Bascom was the
presence of a structural change in “installation of a filtering tool at a specific
location, remote from the end-users, with customizable filtering features
specific to each end user. This design gives the filtering tool both the
benefits of a filter on a local computer and the benefits of a filter on the ISP
server.” Bascom, 827 F.3d at 1350. The instant claims have no analogous
structural benefit.
Appellant’s citation to Data Engine Technologies v. Google, No. 2017-
1135 (Fed. Cir. 2018), Finjan, Inc. v. Blue Coat System, Inc., 879 F.3d 1299
(Fed. Cir. 2018) and Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc.,
880 F.3d 1356, 1363 (Fed. Cir. 2018). (Appeal Br. 8–9) is not persuasive
because the claims before us here do not constitute a specific improvement
in computer functionality. In Finjan, for example, the Court held that claims
to a “behavior-based virus scan” were a specific improvement in computer
functionality and hence not directed to an abstract idea. Finjan, 879 F.3d at
Appeal 2020-004894
Application 14/502,654

19

1304. The claimed technique of scanning enabled “more flexible and
nuanced virus filtering” and detection of potentially dangerous code. Id.
This was done by “scanning a downloadable and attaching the results of that
scan to the downloadable itself in the form of a ‘security profile.’” Id. at
1303. The security profile included the information about potentially hostile
operations produced by a “behavior-based” virus scan, as distinguished from
traditional, “code-matching” virus scans that are limited to recognizing the
presence of previously-identified viruses, typically by comparing the code in
a downloadable to a database of known suspicious code. Id. at 1304. This
behavior-based scan was a new type of file that when attached to a
downloadable allowed the computer to do more to protect itself than in the
past.
The instant claims present no such new type of processing to create a file
that improves computer performance. Instead, the claims are conventional
data processing of data. They may improve the efficiency of the license
authentication process, but this is not an improvement to the computer
technology.
Appellant argues, “The present claims, when viewed in light of the
specification, involve an improved technological process that defines a
specific technological process that assigns a license from a pool of digital
application licenses associated with the user's enterprise credentials and
allows an application to be installed on a user's device.” (Appeal Br. 10).
But, Appellant has offered no persuasive argument or technical
reasoning to demonstrate that the “assign[ing] a license from a pool of
digital application licenses associated with the user's enterprise credentials
and allow[ing] an application to be installed on a user's device” step recited
Appeal 2020-004894
Application 14/502,654

20

in claim 1 involves more than well-understood, routine, and conventional
computer activities, i.e., generic computer functions. Cf. In re Katz
Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir.
2011). Simply programming a general-purpose computer or generic
circuitry to perform an abstract idea does not provide an “inventive concept”
such that the claim amounts to significantly more than that abstract idea.
See Alice, 573 U.S. at 221–227 (applying an abstract idea, such as an
algorithm, on a general purpose computer is not enough to transform a
patent-ineligible abstract idea into a patent-eligible invention.); EON Corp.
IP Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616, 623 (Fed. Cir. 2015)
(“A general purpose computer is flexible – it can do anything it is
programmed to do.”).
For the reasons identified above, we determine there are no
deficiencies in the Examiner’s prima facie case of patent ineligibility of the
rejected claims. Therefore, we will sustain the Examiner’s § 101 rejection
of claims 15–21.

CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 15–21 under
35 U.S.C. § 101.
We conclude the Examiner erred in rejecting claim 15 under 35
U.S.C. § 112(a), but did not err in rejecting claim 19 under 35 U.S.C.
§ 112(a).
Appeal 2020-004894
Application 14/502,654

21

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
15–21 101 Eligibility 15–21
15–21 112(a) Written
Description
19 15
Overall
Outcome
15–21

DECISION
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