Apple Inc.

Patent Trials and Appeals Board

May 20, 2020

14027069 - (D) (P.T.A.B. May. 20, 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.
14/027,069 09/13/2013 William E. Bull 090911-
P5425USD1-0888375
1070
65656 7590 05/20/2020
KILPATRICK TOWNSEND & STOCKTON LLP/Apple
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
FELTEN, DANIEL S
ART UNIT PAPER NUMBER
3692
NOTIFICATION DATE DELIVERY MODE
05/20/2020 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):
KTSDocketing2@kilpatrick.foundationip.com
ipefiling@kilpatricktownsend.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte WILLIAM E. BULL and POLICARPO WOOD
____________

Appeal 2020-000094
Application 14/027,069
Technology Center 3600
____________

Before JEAN R. HOMERE, CAROLYN D. THOMAS, and
ERIC B. CHEN, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 16–27, 29, 30, and 33–37. Claims
1–15, 28, 31, and 32 are canceled. See Claim Appendix. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Apple Inc.
Appeal Br. 4.
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The present invention relates generally to monitoring locations of a
mobile electronic device for a duration of time and then providing location-
specific information based on the locations of the device. See Spec. ¶ 5.
Independent claim 16, reproduced below, is representative of the
appealed claims:
16. A method for providing location-based
information to a mobile device, said method comprising:
receiving, at an electronic device comprising a
processor, a monitored geographic location of the mobile
device, the monitored geographic location having been
determined at least partially by the processor through a location
determining module of the mobile device upon detection of the
mobile device at the monitored geographic location;
incrementing, by the processor, a presence
indicator stored in a memory of the electronic device, wherein
the presence indicator specifies a number of visits of the mobile
device to the monitored geographic location over a time period;
obtaining, by the processor, location-based
information from an information server via a network
connection to the information server, wherein the location-
based information includes
at least one rule associated with the monitored geographic
location, and wherein the at least one rule specifies a threshold
number of visits over a threshold time period;
when the number of visits of the mobile device to
the monitored geographic location is greater than or equal to the
threshold number of visits and the time period is less than or
equal to the threshold time period, determining, by the
processor of the electronic device, at least a portion of the
location-based information that is related to the monitored
geographic location of the mobile device in accordance with the
at least one rule; and
in response to receiving the location-specific
information, automatically electronically transmitting, by the
processor of the electronic device, the at least a portion of the
location-based information to the mobile device for displaying
the at least a portion of the location based information on a
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display of the mobile device while the mobile device is at the
location.

Appellant appeals the following rejection:
R1. Claims 16–272, 29, 30, and 33–37 are rejected under 35 U.S.C.
§ 101 because the claimed invention is directed to patent-ineligible subject
matter. Final Act. 7–9.
R2. Claims 16–27, 29, 30, and 33–37 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Busch (US 2017/0193553 A1, July 6,
2017) and Minear (US 6,947,772 B2, Sept. 20, 2005). Final Act. 10–15.
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).

ANALYSIS
Rejection under § 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.
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. 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 the framework,

2 Claim 28 is canceled. See Claim Appendix A.
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we first determine what concept the claim is “directed to.” See Alice, 573
U.S. at 219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”). For example, 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,
69 (1972)).
The USPTO published revised guidance on the application of 35
U.S.C. § 101. USPTO’s 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Revised Guidance”). Updated
by USPTO, October 2019 Update: Subject Matter Eligibility (available at
https://www.uspto.gov/sites/default/files/documents/
peg_oct_2019_update.pdf) (jointly referred to as “Revised Guidance”); see
also October 2019 Patent Eligibility Guidance Update, 84 Fed. Reg. 55942
(Oct. 18, 2019) (notifying the public of the availability of the October
update).
Under the Revised Guidance “Step 2A,” the office first looks 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); and
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(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)-(c), (e)-(h)). 84 Fed. Reg. at
51–52, 55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, does the Office then
(pursuant to the Revised Guidance “Step 2B”) 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
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception. 84 Fed. Reg. at 56.
Step 2A, Prong 1 (Does the Claim Recite a Judicial Exception?)
With respect to independent method claims 16, 21, and 24, the
Examiner determines that the claims are directed to “techniques for
providing relevant information to mobile electronic devices . . . ‘an idea of
itself.’” (Final Act. 7) and “collecting information, analyzing it, and
displaying certain results” (id. at 8), which we conclude are mental
processes, which is a type of abstract idea.
For instance, claim 16 recites at least the following limitations:
(1) “receiving . . . a monitored geographic location of the mobile device,”
(2) “incrementing . . . a presence indicator,” (3) “obtaining . . . location-
based information . . . includ[ing] at least one rule,” (4) “determining . . . at
least a portion of the location-based information that is related to the
monitored geographic location of the mobile device,” and (5) “in response to
receiving the location-specific information, . . . transmitting . . . the location-
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based information.” These limitations, under their broadest reasonable
interpretation, recite mental processes because the limitations all can be
performed in the human mind or by using pen and paper. See, e.g.,
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372–73 (Fed.
Cir. 2011) (determining that a claim whose “steps can be performed in the
human mind, or by a human using a pen and paper” is directed to an
unpatentable mental process).
As noted by the Examiner, and we agree:
For example, tracking the number of visits (or surveillance of a
person-which would include identification of an individual, their
location and activities associated with that person), as well as
incrementing (or counting) a number of visits that person has made to
a particular location can be a mental activity. Law enforcement and
private investigators are people that are also trained to use their
mental capabilities to track/monitor, record and anticipate what an
individual of interest will do and where they will go in the course of a
certain period of time. It is maintained that the tracking/surveillance
of individuals has provided considerable mental activity before the
advent of the technical environment set forth by the Applicant.
Final Act. 7–8.
Additionally, we further determine that people can perform the
“receiving” and “obtaining” steps by simply observing the geographic
location and recognizing a rule associated with the location. People can
perform the “incrementing” and “determining” steps by using pen and paper
to note the number of visits to the location and identifying information that
is related to the location. Finally, people can perform the “transmitting” step
by writing the recited location-based information on a piece of paper and
passing it to another.
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Contrary to Appellant’s contention that “the Office Action provides
no explanation for why the claim limitations correspond to mental steps”
(see Appeal Br. 24), as noted supra, the Examiner compared the claimed
limitations to acts performed by Law enforcement and private investigators
trained to use their mental capabilities to track/monitor individuals.
Furthermore, we also illustrate the Examiner’s determinations with examples
as to how people can perform such steps.
As for Appellant’s contention that “[b]oth steps of receiving and
transmitting cannot be practically be performed in the mind [because]
[t]hese steps involve multiple instructions to a processor of an electronic
device be performed” (Appeal Br. 24), we highlight that a claim recites a
mental process when the claim encompasses acts people can perform using
their minds or pen and paper, even if the claim recites that a generic
computer component performs the acts. See, e.g., Versata Dev. Grp., Inc. v.
SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) (“Courts 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.”); see also Revised Guidance 84 Fed. Reg. at 52 n.14
(“If a claim, under its broadest reasonable interpretation, covers performance
in the mind but for the recitation of generic computer components, then it is
still in the mental processes category unless the claim cannot practically be
performed in the mind.”). As explained further below, Appellant’s claims
merely recite generic computer components performing such acts.
Therefore, for at least the aforementioned reasons, we agree with the
Examiner that claim 16 recites an abstract idea, which we conclude are
mental processes.
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Step 2A—Prong 2 (integration into Practical Application) 3
Under the Revised Guidance, we now must determine if additional
elements in the claims integrate the judicial exception into a practical
application (see MPEP § 2106.05(a)–(c), (e)–(h)).
Here, we consider the claim as a whole, i.e., “the limitations
containing the judicial exception as well as the additional elements in the
claim besides the judicial exception . . . evaluated together to determine
whether the claim integrates the judicial exception into a practical
application.” October 2019 Patent Eligibility Guidance Update, at 12,
available at http://www.uspto.gov/PatentEligibility.
We discern no additional element (or combination of elements)
recited in Appellant’s representative claim 16 that integrates the judicial
exception into a practical application. See Revised Guidance, 84 Fed. Reg.
at 54–55 (“Prong 2”). For example, Appellant’s claimed additional elements
(e.g., “a mobile device,” “an electronic device,” “ a processor,” “a location
determining module,” “a presence indicator,” “a memory,” and “a display”)
do not: (1) improve the functioning of a computer or other technology; (2)
are not applied with any particular machine (except for a generic computer);
(3) do not effect a transformation of a particular article to a different state;
and (4) are not applied in any meaningful way beyond generally linking the
use of the judicial exception to a particular technological environment, such

3 We acknowledge that some of the considerations at Step 2A, Prong 2,
properly may be evaluated under Step 2 of Alice (Step 2B of the Office
revised guidance). For purposes of maintaining consistent treatment within
the Office, we evaluate them under Step 1 of Alice (Step 2A of the Office
revised guidance). See Revised Guidance, 84 Fed. Reg. at 55 n.25, 27–32.

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that the claim as a whole is more than a drafting effort designed to
monopolize the exception. See MPEP §§ 2106.05(a)–(c), (e)–(h).
Additionally, we note that the claimed receiving geographic location
information from a location determining module of the mobile device is no
more than pre-solution activity. Further, the claimed transmitting location-
based information, by the processor of the electronic device, to the mobile
device for displaying on a display represents nothing more than post-
solution activity. See claim 16.
These pre- and post-solution steps—even when performed over a
computer network via communications between a host computer and a
mobile device—are insufficient to integrate the judicially excepted steps into
a practical application. See Alice, 573 U.S. at 224 (“use of a computer to
create electronic records, track multiple transactions, and issue simultaneous
instructions” is not an inventive concept).
Here, Appellant’s Specification merely describes generic computer
components performing generic computer functions that are routine and
conventional, and are performing the normal and basic functions of a
computer. See, e.g., Spec. ¶ 32 (“The data network 208 can include one or
more networks, whether wired or wireless, that are able to transmit data. . . .
As one example, the host computer 212 can pertain to a personal computer
and the mobile device 214 is a mobile telephone or a personal digital
assistant with network access capabilities.”); see also Spec. ¶¶ 33, 98, 101.;
see also Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1355
(Fed. Cir. 2016) (“Nothing in the claims, understood in light of the
specification, requires anything other than off-the-shelf, conventional
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computer, network, and display technology for gathering, sending, and
presenting the desired information.”).
Appellant contends that “[t]he claims do integrate . . . into a practical
application . . . [because] the method can evaluate user interest in receiving
information as determined by visiting the location frequently within a
defined period of time. . . . Improving the effectiveness of information (e.g.,
advertisements) is a practical implementation.” Appeal Br. 25. We
disagree.
Instead, we look to whether the claims focus on a specific means or
method that improves the relevant technology, as opposed to being directed
to a result or effect that itself is the abstract idea, and merely invoking
generic processes and machinery. See Enfish, LLC v. Microsoft Corp., 822
F.3d 1327, 1336 (Fed. Cir. 2016). The court put the question as being
“whether the focus of the claims is on [a] specific asserted improvement in
computer capabilities . . . or, instead, on a process that qualifies as an
‘abstract idea’ for which computers are invoked merely as a tool.” Id. at
1335–36. In Enfish, the court found that the “plain focus of the claims”
there was on “an improvement to computer functionality itself, not on
economic or other tasks for which a computer is used in its ordinary
capacity.” Id. at 1336. In contrast to Enfish, we determine that the plain
focus of the claimed invention is merely on economic tasks, i.e., improving
the effectiveness of advertisements.
Appellant further contends that “the claimed invention provides an
improved (implicit) user interface that can provide desired content . . . . This
new functionality is similar to McRo.” Appeal Br. 25–26. We disagree with
Appellant.
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In McRO, the Federal Circuit concluded that the claim, when
considered as a whole, was directed to a “technological improvement over
the existing, manual 3-D animation techniques” through the “use of limited
rules specifically designed to achieve an improved technological result in
conventional industry practice.” McRO, Inc. v. Bandai Namco Games Am.
Inc., 837 F.3d 1299, 1316 (Fed. Cir. 2016). Specifically, the Federal Circuit
found that the claimed rules allow computers to produce accurate and
realistic lip synchronization and facial expressions in animated characters
that previously could only be produced by human animators; and the rules
are limiting because they define morph weight sets as a function of phoneme
sub-sequences. Id. at 1313.
In contrast, here, Appellant has not identified any analogous improved
technological result attributable to the claimed invention. Although
providing information presented, based at least in part on repeated visits to a
particular location, may improve a business process, it does not achieve an
improved technological result. We see no parallel between the limiting rules
described in McRO and the results-based rules recited in Appellant’s claims.
Regarding Appellant’s contention that “claim 1 provides meaningful
limitation[s] that do not monopolize any judicial exception” (Appeal Br. 26),
we note that although pre-emption “‘might tend to impede innovation more
than it would tend to promote it,’ thereby thwarting the primary object of the
patent laws” (Alice, 573 U.S. at 216 (citing Mayo, 566 U.S. at 71)), “the
absence of complete preemption does not demonstrate patent eligibility”
(Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015)). Moreover, because we find the claimed subject matter covers
patent-ineligible subject matter, the pre-emption concern is necessarily
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addressed. “Where a patent’s claims are deemed only to disclose patent
ineligible subject matter under the Mayo framework, . . . preemption
concerns are fully addressed and made moot.” Ariosa Diagnostics, 788 F.3d
at 1379.
For at least the reason noted supra, we determine that claim 16
(1) recites a judicial exception and (2) does not integrate that exception into
a practical application. Thus, representative claim 16 is directed to the
aforementioned abstract idea.
Alice/Mayo—Step 2 (Inventive Concept)
Step 2B identified in the Revised Guidance
Turning to the second step of the Alice inquiry, we now look to
whether claim 1 contains any “inventive concept” or adds anything
“significantly more” to transform the abstract concept into a patent-eligible
application. Alice, 573 U.S. at 216. As recognized by the Revised
Guidance, an “inventive concept” under Alice step 2 can be evaluated based
on whether an additional element or combination of elements:
(1) adds a specific limitation or combination of limitations that are
not well-understood, routine, conventional activity in the field,
which is indicative that an inventive concept may be present; or
(2) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception, which is indicative
that an inventive concept may not be present.
See Revised Guidance, 84 Fed. Reg. at 56; see MPEP § 2106.05(d).
Appellant contends “[t]he Office has not established . . .‘incrementing
a presence indicator’ . . . are well-understood[,] routine[,] or conventional
activity. Even if Busch’s method is considered conventional, the methods
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recited herein are different . . . . None of the cited prior art discloses or even
remotely suggests such a technique.” Appeal Br. 28.
The Examiner provides a rational basis for his determination of the
claimed features being “well-understood, routine, and conventional” by
stating:
In the prior office action it was discussed that, [t]he claims recites
elements of a mobile device, electronic device and a server. Under the
broadest reasonable interpretation perform generic computer
functions which include receiving data, incrementing a number of
visits over a threshold time period, obtaining information, providing a
rule that specifies a threshold number of period, determining at least a
portion of the located-based information that is related to the
monitored geographic location ... and transmitting the location-based
information which is displayable on a display is similar to the
elements performing functions related to the idea of collecting
information, analyzing it, and displaying certain results, perform
computer functions that are based upon receiving processing and
storing data, that can be seen as electronic record keeping [see
Alice Corp., 134 S. Ct at 2360 and 2359, or Ultramercial, 772 F.3d at
716 (updating an activity log)].
Final Act. 5–6; 8–9; see also Ans. 17. Such an analysis is a factual
determination. See Berkheimer v. HP Inc., 881 F.3d 1360, 1369 (Fed. Cir.
2018) (“Whether something is well-understood, routine, and conventional to
a skilled artisan at the time of the patent is a factual determination.”). We
find the Examiner’s noting of generic nature of the component parts recited
in the claims provides sufficient evidence of a generic computer system used
to implement the abstraction. See Credit Acceptance Corp. v. Westlake
Services, 859 F.3d 1044, 1057 (Fed. Cir. 2017) (“Significantly, the claims do
not provide details as to any non-conventional software for enhancing the
financing process.). See Intellectual Ventures I LLC v. Capital One Fin.
Corp., 850 F.3d 1332, 1342 (Fed. Cir. 2017) (explaining that “[o]ur law
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demands more” than claim language that “provides only a result-oriented
solution, with insufficient detail for how a computer accomplishes it”). See
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (claims
merely reciting abstract idea of using advertising as currency as applied to
particular technological environment of the Internet not patent eligible).
We find no element or combination of elements recited in Appellant’s
claim 1 that contains any “inventive concept” or adds anything “significantly
more” to transform the abstract concept into a patent-eligible application.
Appellant has not adequately explained how claim 16 is performed such that
it is not a routine and conventional function of a generic computer.
Furthermore, a finding of novelty or non-obviousness does not require the
conclusion that the claimed subject matter is patent-eligible. Although the
second step in the Mayo/Alice framework is termed a search for an
“inventive concept,” the analysis is not an evaluation of novelty or
nonobviousness, but, rather, is 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,
573 U.S. at 216. “Groundbreaking, innovative, or even brilliant discovery
does not by itself satisfy the § 101 inquiry.” Ass’n. for Molecular Pathology
v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013). A novel and non-
obvious claim directed to a purely abstract idea is, nonetheless, patent-
ineligible. See Mayo, 566 U.S. at 90. See also Diamond v. Diehr, 450 U.S.
175, 188–89 (1981) (“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.”).
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Because Appellant’s independent claim 16 is directed to a patent-
ineligible abstract concept, does not include additional elements that
integrate the judicial exception into a practical application, and does not add
a specific limitation beyond the judicial exception that is not “well-
understood, routine, and conventional,” we sustain the Examiner’s rejection
of the claims 16–27, 29, 30, and 33–37 under 35 U.S.C. § 101 as being
directed to non-statutory subject matter in light of Alice, its’ progeny, and
the Revised Guidance.

Rejection under § 103(a)
We have reviewed Appellant’s arguments in the Briefs, the
Examiner’s rejection, and the Examiner’s response to the Appellant’s
arguments. We concur with Appellant’s conclusion that the Examiner erred
in finding that the combination of the references teaches or suggests “when
the number of visits of the mobile device to the monitored geographic
location is greater than or equal to the threshold number of visits . . .
determining . . . .” In other words, we agree with Appellant the Examiner
erred in finding that the combined prior art teaches that a threshold number
of visits for a particular mobile device, during a threshold time period,
would trigger any action.
As identified by Appellant, Busch’s “FIG. 16B depicts various
statistics associated with various advertisement campaigns including the
accumulated daily views, visits, return visits, sales and revenue for all
customers collectively and not for a specific user device.” Appeal Br. 16.
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Appellant further contends that “FIG. 16B, nor associated paras. ([0418],
[0419]), discussed above, teach anything about a ‘threshold’ where some
action is triggered when the threshold is crossed” (Appeal Br. 18), and
“Busch does not rely on a ‘threshold number of visits’ during a ‘threshold
time period’ prior to sending content.” Id. We agree with Appellant.
Busch discloses:
Location data is aggregated from all users to determine visitor
information associated with retail locations, branded retail chains, or
any other geographic location or set of locations. This may be used to
determine of the number of new visitors, and returning visitors during
a specified time period and location or set of locations. Businesses
are able to quickly determine the number of and type of customers
that are visiting their business locations.
Busch ¶ 386 (emphasis added). See also id. ¶¶ 387–388.
In other words, Busch discloses ascertaining and recording the
location of mobile devices. However, the Examiner has not shown where
Busch describes “when the number of visits of the mobile device to the
monitored geographic location is greater than or equal to the threshold
number of visits . . . determining . . . information,” as recited in claim 16.
See claim 16 (emphasis added). The cited portions of Busch describes a
total number of visits for all users during a time period (see Busch, Fig.
16B), as opposed to determining whether a particular device/user surpasses a
threshold amount of visits over a threshold time period. As such, we
disagree with the Examiner’s interpretation that “the threshold number of
visits is suggested by Busch by the total number of visits.” See Final Act. 3;
see also Ans. 14. Instead, we find that Busch’s “total number of visits” is
distinguishable from the claimed threshold number of visits over a threshold
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time period, because a “threshold” denotes a value, above which, something
will take place, whereas a “total” number merely denotes an entire quantity.
Thus, we disagree with the Examiner’s finding that Busch teaches the
aforementioned limitation, as recited in each of the independent claims. The
Examiner also has not shown that Minear teaches this feature. Because we
agree with at least one of the arguments advanced by Appellant, we need not
reach the merits of Appellant’s other arguments. Accordingly, we will not
sustain the Examiner’s obviousness rejection of claims 16–27, 29, 20, and
33–37.
CONCLUSION
Appellant has demonstrated that the Examiner erred in rejecting
claims 16–27, 29, 30, and 33–37 as being unpatentable under 35 U.S.C.
§ 103 over Busch and Minear.
However, the Examiner’s rejections of claims 16–27, 29, 30, and 33–
37 under 35 U.S.C. § 101 is affirmed.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed. See
37 C.F.R. § 41.50(a)(1).

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In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
16–27, 29, 30,
33–37
101 Eligibility 16–27, 29,
30, 33–37

16–27, 29, 30,
33–37
103 Busch, Minear 16–27, 29,
30, 33–37
Overall
Outcome
16–27, 29,
30, 33–37

No period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED