Brett A. Krueger

Patent Trials and Appeals Board

Nov 26, 2019

14691624 - (D) (P.T.A.B. Nov. 26, 2019)

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.
14/691,624 04/21/2015 Brett A. Krueger 238641-364877 2349
44200 7590 11/26/2019
HONIGMAN LLP
650 Trade Centre Way
Suite 200
Kalamazoo, MI 49002-0402
EXAMINER
KLICOS, NICHOLAS GEORGE
ART UNIT PAPER NUMBER
2142
MAIL DATE DELIVERY MODE
11/26/2019 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BRETT A. KRUEGER
____________

Appeal 2018-006225
Application 14/691,624
Technology Center 2100
____________

Before JASON V. MORGAN, JON M. JURGOVAN,
and MICHAEL M. BARRY, Administrative Patent Judges.

BARRY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1–30, which constitute all pending claims. See Final Act. 1; Appeal
Br. 13–21 (Claims App’x). We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use “Appellant” to refer to the “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies Kruevio LLC as the real party in interest.
Appeal Br. 2.
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Introduction
Appellant’s “disclosure relates to suggesting activities to a user based
on an assessment of the user’s current state.” Spec. ¶ 2.
Claim 1 is representative:
1. A method comprising:
[1] receiving, at a computing device, inputs indicative of
a user state of a user, the received inputs comprising:
sensor inputs from one or more sensors in
communication with the computing device; and/or
user inputs received from a graphical user
interface;
[2] executing, by the computing device, a plurality of
action evaluators, each action evaluator having a corresponding
objective to promote or dissuade an action relative to the user,
each action evaluator having an active state and an inactive
state, each action evaluator associated with one or more input
types that trigger the active state, each action evaluator
remaining in the inactive state until triggered into the active
state when one or more of the received inputs corresponds to
the respective one or more input types associated with the
respective action evaluator;
[3] determining, by the computing device, whether any of
the action evaluators is in the active state; and
when any of the action evaluators is in the active state:
[4] determining, by the computing device,
candidate actions based on the received inputs and the
corresponding objective of each action evaluator in the
active state, wherein each action evaluator in the active
state evaluates each candidate action based on whether
the candidate action promotes or achieves the
corresponding objective of the respective action
evaluator to render an evaluation;
[5] selecting, using the computing device, at least
one suggested action from the candidate actions based on
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the evaluations of each action evaluator in the active
state; and
[6] executing or outputting, by the computing
device, the at least one suggested action.
Appeal Br. 13–14 (Claims App’x) (bracketed reference numbers added).
References
Name Reference Date
Chau et al.
Majumdar et al.
Chaudhri et al.
Winstead et al.
US 9,177,029 B1
US 2014/0100835 A1
US 2013/0332721 A1
US 2010/0302004 A1
Nov. 3, 2015
Apr. 10, 2014
Dec. 12, 2013
Dec. 2, 2010
Rejections
Claims 1–30 stand rejected under 35 U.S.C. § 101 as directed to an
abstract idea, without reciting significantly more. Final Act. 4–6.
Claims 1, 2, 7–12, and 17–30 stand rejected under 35 U.S.C. § 103 as
unpatentable over Chau, Majumdar, and Chaudhri. Id. at 7–15.
Claims 3–6 and 13–16 stand rejected under 35 U.S.C. § 103 as
unpatentable over Chau, Majumdar, Chaudhri, and Winstead. Id. at 15–18.
ANALYSIS
A. The § 101 Rejection
1. 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. The
Supreme Court, however, 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).
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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 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.”).
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)). 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 176; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
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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 also 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 (internal citation 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. (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.
After the docketing of this Appeal, the PTO published revised
guidance on the application of § 101. 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50–57 (Jan. 7, 2019) (“Guidance”).
Under the 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 interactions 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)).2
See Guidance, 84 Fed. Reg. at 52, 55–56. Only if a claim (1) recites a
judicial exception and (2) does not integrate that exception into a practical
application, does the office then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that are 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.
See Guidance, 84 Fed. Reg. at 56.
2. Analysis
For the § 101 rejection, Appellant argues claims 1–30 together as a
group. Appeal Br. 6–8. We select claim 1 as representative. 37 C.F.R.
§ 41.37(c)(1)(iv). We are not persuaded the Examiner erred in the § 101
rejection. As consistent with our discussion below, which primarily is for
emphasis and clarification with respect to the Guidance, we adopt the
Examiner’s eligibility-related findings and conclusions as our own.
(i) Guidance Step 2A, Prong One
For our prong one analysis, we put aside the generic limitations for
performing the method using “a computing device” and “a graphical user
interface,” which we consider in our prong two and Alice/Mayo step two
(Guidance step 2B) analysis. Also, because claim 1 recites “and/or” for the
two alternatives for the “received inputs comprising” limitation, we consider
only the “user inputs received from a graphical user interface” alternative;

2 All references to the MPEP are to Rev. 08.2017 (Jan. 2018).
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i.e., we do not consider the “sensor inputs from one or more sensors in
communication with the computing device” limitation.
Claim 1’s first step recites “receiving . . . inputs indicative of a user
state of a user, the received inputs comprising . . . user inputs.” This is
essentially the same as “receiving user inputs indicative of a user state.”
These limitations, under their broadest reasonable interpretation, encompass
the human activity of one person providing “user state” inputs (e.g., an input
that indicates an emotional state or hunger status (see Spec. ¶¶ 54, 62)) to
another person.
The second step recites
executing . . . a plurality of action evaluators, each action
evaluator having a corresponding objective to promote []3 an
action relative to the user, each action evaluator having an
active state and an inactive state, each action evaluator
associated with one or more input types that trigger the active
state, each action evaluator remaining in the inactive state until
triggered into the active state when one or more of the received
inputs corresponds to the respective one or more input types
associated with the respective action evaluator.
These limitations encompass human activity and/or mental processes, such
as the activity of requesting advice from multiple people (providing “input”
to the “evaluators”), which causes each human evaluator to consider the
request (“triggers” them from an “inactive state” to the “active state”).4
Step three’s limitations of “determining . . . whether any of the action
evaluators is in the active state” similarly encompasses human activity.

3 We redact “or dissuade,” which is unnecessary for the performance of
claim 1.
4 With respect to the “objective to promote” limitation, we note people often
have an objective to promote some particular action related to a request, e.g.,
because people often have an incentive or bias for promoting that action.
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Continuing with the previous example, a person performs this step when
they observe any of the human evaluators in the process of responding to the
request for advice.
Claim 1’s fourth step recites “determining . . . candidate actions based
on the received inputs and the corresponding objective of each action
evaluator in the active state, wherein each action evaluator in the active state
evaluates each candidate action based on whether the candidate action
promotes []5 the corresponding objective of the respective action evaluator
to render an evaluation.” This describes how the human evaluators (of the
example discussed above) determine their responses. Thus, this step also
encompasses human activity and/or mental processes.
Finally, the fifth and sixth steps recite “selecting . . . at least one
suggested action from the candidate actions based on the evaluations of each
action evaluator in the active state and “outputting . . . the at least one
suggested action.” Continuing with the human evaluators example, these
steps encompass the activity of a person receiving multiple suggested
recommendations from other people and stating her or his selection from
those recommendations, i.e., a mental process and/or human activity.
As the Guidance explains, limitations such as the foregoing are
abstract because they encompass (recite) concepts of (a) “observation,
evaluation, judgement, opinion,” which are mental processes, and
(b) “managing personal behavior or relationships or interactions between
people,” which are in the category of certain methods of organizing human
activity.” Memorandum, 84 Fed. Reg. at 52. “Adding one abstract idea . . .

5 We redact “or achieves,” which is unnecessary for the performance of
claim 1.
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to another abstract idea . . . does not render the claim non-abstract.”
RecogniCorp, LLC v. Nintendo Co. LTD., 855 F.3d 1322, 1327 (Fed. Cir.
2017); see also FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089,
1093–94 (Fed. Cir. 2016) (patent-ineligible claims recited and were directed
to a combination of abstract ideas). Thus, claim 1 recites a judicial
exception in the form of an abstract idea, and our analysis proceeds to prong
two under the Guidance.
(ii) Guidance Step 2A, Prong Two
To determine whether this judicial exception is integrated into a
practical application, we identify whether there are “any additional elements
recited in the claim beyond the judicial exception(s)” and evaluate those
elements to determine whether they integrate the judicial exception into a
practical application. Guidance, 84 Fed. Reg. at 54–55 (emphasis added);
see also MPEP § 2106.05(a)–(c), (e)–(h).
Here, the additional limitations in claim 1 are the requirements for
performance of each step “by a computing device,” and for the receipt of
user inputs “from a graphical user interface.” Claim 1 does not, however,
recite any improvement to a computing device or to a graphical user
interface, nor does claim 1 require any particular computing device or user
interface. Instead, as the Examiner finds, and we agree, the underlying
technology necessary to implement the functionality of the abstract
limitations was well understood and basic. See Final Act. 6 and Ans. 4–7;
see also Spec. ¶¶ 40–46 (broadly describing, in a non-limiting manner,
exemplary standard technology for carrying out the method).
Thus, we determine claim 1 does not improve the functioning of a
computer or any other technology or technical field, and neither does it
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apply the judicial exception with any particular machine. See MPEP
§ 2106.05(a)–(b). Claim 1 also does not effect a particular transformation of
any recited articles, which are used for their ordinary purposes, nor does it
add any other meaningful (technological) limitations beyond “linking the
use” of the method to generically recited technology; thus, the technological
limitations amount to no more than instructions to implement the abstract
idea using general computer-related technology. See MPEP § 2106.05(c),
(e)–(f); see also id. at (g)–(h) (use of well-known limitations beyond the
judicially excepted matter constitutes “insignificant extra-solution activity”
(g) and claim limitations “merely indicating a field of use or technological
environment in which to apply a judicial exception do not amount to
significantly more” (h)). Thus, we conclude claim 1 does not integrate the
recited judicial exception into a practical application and, accordingly, claim
1 is “directed to” its recited judicial exception. Guidance, 84 Fed. Reg. at
53.
(iii) Guidance Step 2B
In step 2B under the Guidance, we consider whether there are
additional limitations that, individually or as an ordered combination, ensure
the claims amount to “significantly more” than the abstract idea. Alice, 573
U.S. at 217–18 (citing Mayo, 566 U.S. at 72–73, 77–79). As stated in the
Guidance, many of the considerations to determine whether the claims
amount to “significantly more” under step two of the Alice framework are
already considered as part of determining whether the judicial exception has
been integrated into a practical application. Guidance, 84 Fed. Reg. at 56.
Thus, at this point of our analysis, we determine if claim 1 adds a specific
limitation, or combination of limitations, that is not well-understood, routine,
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conventional activity in the field; or whether, in addition to the recited
judicial exception, they recite only well-understood, routine, conventional
activities at a high level of generality. Id.
Here, beyond the limitations describing the abstract idea, claim 1 does
not recite any limitations (or combination of limitations) that are not well-
understood, routine, and conventional. The Examiner finds, and we agree,
that the additional limitations constitute use of technology that was well
known to those of ordinary skill prior to the invention. Final Act. 6.
Appellant discloses and discusses the technology relevant to the claims at a
generic level. See, e.g., Spec. ¶¶ 3, 40–47. There is no discussion of any
special functionality or considerations for a technological aspect of any
technological component recited in the independent claims. Thus,
Appellant’s contention that the Examiner errs because claim 1 recites “clear
and specific technological details for carrying out the invention” (Reply Br.
2) is unpersuasive. Also unpersuasive is Appellant’s contention that claim 1,
“as a whole presents a technological improvement in the field of executing
context-relevant actions relative to a current state of a user.” Appeal Br. 6.
The premise of this contention is flawed, because claim 1 requires
“executing or outputting” a suggested (context-relevant) action.
Appellant also contends that, similar to the patent eligible claim at
issue in DDR Holdings,6 claim 1 is “necessarily rooted in computer
technology.” Appeal Br. 6; see also id. at 7 (arguing “receiving user inputs
from a GUI clearly ties the claims to computer use” and “executing on a
computing device a plurality of action evaluators that each remain inactive
until triggered into the active state by receipt of an input . . . having an input

6 DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014).
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type associated with the respective action evaluator necessarily roots the
claimed invention in computer technology”). This contention is
unpersuasive. The claim at issue in DDR Holdings recited specific
hyperlink technology to accomplish a result to address a technological
challenge “arising from” the Internet that did not have a non-technological
analogue. See 773 F.3d at 1258–59. Appellant’s claim 1 merely recites
using generic GUI and computing device technology for their basic and
ordinary purposes. Moreover, the claimed use of “triggers” merely limits
the scope of underlying abstract idea without representing an additional
recitation that transforms the abstract idea into a patent-eligible invention by,
e.g., necessarily rooting the claimed invention in computer technology.
Appellant also unpersuasively argues McRO7 and Enfish8 compels a
determination that claim 1 is patent eligible because it is “specifically
designed to achieve a technological improvement in the field of executing
context-relevant actions relative to a current state of a user and [is] not
directed to a result or effect that itself is an abstract idea or merely invokes
generic processes and machinery.” Appeal Br. 7–8 (also citing Spec. ¶¶ 2,
71). McRO provided a particular technical solution using phoneme streams
to a particular technical problem with computer animation and Enfish
entailed claims directed to an improved use of a particular use of database
technology (self-referential databases). Appellant’s claim 1 offers no such
technological feature.

7 McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir.
2016).
8 Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016).
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Appellant’s reliance on Berkheimer is also misplaced. See Reply Br.
2–3. The exemplary claim limitation at issue in Berkheimer was “storing a
reconciled object structure in the archive without substantial redundancy,”
which the court found was “directed to [an] arguably unconventional
inventive concept described in the specification.” 881 F.3d at 1370. There
was no evidence in the record that this limitation described well-understood,
routine, and conventional technology. Id. at 1368. The Berkheimer court
held there was a “genuine issue of material fact” and that “fact questions
created by the specification’s disclosure” precluded summary judgment of
invalidity under step two of the Alice/Mayo framework. Id. Here, however,
as discussed above, the only limitations not reciting a part of the abstract
idea are “a computing device” and “a graphical user interface.” The
Examiner made a finding in the record that this technology is well-
understood, routine and conventional. Final Act. 6. Thus, Berkheimer is
inapposite, because the record before us (including, as discussed above,
Appellant’s Specification) supports the finding that, beyond the abstract
idea, claim 1 recites only well-understood, routine, and conventional
technology.
(iv) § 101 Conclusion
Accordingly, we sustain the § 101 rejection of claims 1–30.
B. The § 103 Rejections
Appellant argues claims 1, 2, 7–12, and 17–30 together as a group,
and presents no substantively separate arguments for claims 3–6 and 13–16.
Appeal Br. 8–10. We select independent claim 1 as representative of all
pending claims for the § 103 rejections. 37 C.F.R. § 41.37(c)(1)(iv).
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We have reviewed the Examiner’s § 103 rejection of claim 1 in light
of Appellant’s contentions of reversible error. We disagree with Appellant’s
conclusions. Instead, as consistent with our discussion below, we adopt the
Examiner’s findings and reasons as set forth in the Final Office Action from
which this appeal is taken and as set forth in the Answer. We highlight the
following for emphasis.
Appellant contends Chau “never considers executing a plurality of
evaluators” and “fails to disclose or suggest executing a plurality of action
evaluators, each action evaluator having a corresponding objective to
promote or dissuade an action relative to a user.” Appeal Br. 8. The
rejection, however, does not rely on Chau for teaching a plurality of action
evaluators. Final Act. 9 (explaining that “while Chau allows for numerous
activities, Chau does not explicitly teach a plurality of action evaluators”).
The Examiner finds Majumdar teaches the recited plurality action
evaluators. Id. One cannot show nonobviousness by attacking references
individually when the rejection is based on a combination of references. In
re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The relevant
inquiry is whether the claimed subject matter would have been obvious to
those of ordinary skill in the art in light of the combined teachings of those
references. In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Appellant also contends that because “Chau’s ‘activity assistant’
(singular) scores every activity,” Chau’s activity assistant “cannot have an
inactive state,” as recited. Appeal Br. 8. Appellant further contends that
modifying Chau so as “not [to] evaluate the activities while in an inactive
state” would change Chau’s principle of operation and render Chau
unsatisfactory for its intended purpose. Id. at 8–9. These arguments are also
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unpersuasive. The rejection does not propose to modify Chau’s “singular”
activity assistant to have an inactive state. As discussed above, the rejection
first modifies Chau’s activity assistant to include a plurality of action
evaluators, as taught by Majumdar. The rejection then relies on Chaudhri to
modify the plurality of action evaluators, as taught by the combination of
Chau and Majumdar, so that “each action evaluator ha[s] an active state and
an inactive state,” as recited. Final Act. 9–10. Thus, the premise of
Appellant’s argument—that it would render Chau unsatisfactory for its
intended purpose and change its principle of operation to modify Chau’s
“singular” activity assistant to use active/inactive states—is flawed. The
rejection does not propose to modify Chau’s “singular” activity assistant to
have active/inactive states.
Appellant further contends that Chau fails to teach claim 1’s recited
step of
determining . . . candidate actions based on the received inputs
and the corresponding objective of each action evaluator in the
active state, wherein each action evaluator in the active state
evaluates each candidate action based on whether the candidate
action promotes or achieves the corresponding objective of the
respective action evaluator to render an evaluation,
because “Chau’s activity assistant neither considers specific objectives of
action evaluators in the active state nor renders evaluations accordingly.”
Appeal Br. 9. This is unpersuasive, because the rejection does not find that
Chau’s activity assistant teaches all features argued by Appellant. Merck,
800 F.2d at 1097; Keller, 642 F.2d at 425. In particular, as discussed above,
the rejection relies on Majumdar (in view of Chau) for teaching multiple
evaluators and on Chaudhri (in view of Chau and Majumdar) for teaching
active and inactive states for each evaluator.
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Appellant further argues:
neither Chau nor [Majumdar], separately or in combination
disclose executing a plurality of action evaluators, where each
action evaluator has an active state and an inactive state, each
action evaluator is associated with one or more input types that
trigger the active state, and each action evaluator remains in
the inactive state until triggered into the active state when one
or more of the received inputs corresponds to the respective
one or more input types associated with the respective action
evaluator.
Appeal Br. 9–10 (emphasis added). This is unpersuasive because the
rejection relies on Chaudhri for teaching the argued features shown in italics
in the foregoing quote.
Appellant further contends that because “Chaudhri never considers the
concept of multiple action evaluators as claimed,” necessary modifications
of Chaudhri necessary would render it unfit “for its intended purpose and
would change its principle of operation” and, thus, “Chaudhri fails to cure
the deficiencies of Chau and [Majumdar].” Appeal Br. 10. This argument is
unpersuasive. The rejection does not propose to modify the teachings of
Chaudhri. Instead, as discussed above, the rejection uses the teachings of
Chaudhri to modify the combined teachings of Chau and Majumdar.
Appellant also argues that “[w]ithout citing any motivations within
the references, the Examiner attempts to modify the cited references using
impermissible hindsight.” Reply Br. 3 (contending the Examiner “mak[es] a
number of technological leaps”). Appellant further argues the Examiner
“fails to cite any motivation in the references” to modify the combined
teachings of Chau and Majumdar with Chaudhri’s “teaching [of] turning
on/off specific actions.” Id. These arguments are unpersuasive.
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“Any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning, but so long as it takes into
account only knowledge which was within the level of ordinary skill at the
time the claimed invention was made and does not include knowledge
gleaned only from applicant’s disclosure, such a reconstruction is proper.” In
re McLaughlin, 433 F.2d 1392, 1395 (CCPA 1971). Further, while a reason
to combine teachings from the prior art “may be found in explicit or implicit
teachings within the references themselves,” it also may come from “the
ordinary knowledge of those skilled in the art, or from the nature of the
problem to be solved.” WMS Gaming Inc. v. Int’l Game Tech., 184 F.3d
1339, 1355 (Fed. Cir. 1999) (citing In re Rouffet, 149 F.3d 1350, 1357 (Fed.
Cir. 1998)); see also Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d
1324, 1329 (Fed. Cir. 2009) (explaining that “an analysis of obviousness . . .
may include recourse to logic, judgment, and common sense available to the
person of ordinary skill that do not necessarily require explication in any
reference”).
Ultimately, “rejections on obviousness grounds cannot be sustained
by mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006); see also KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting Kahn). Here,
consistent with Kahn and KSR, the Examiner persuasively explains why
ordinarily skilled artisans would have been motivated to combine and
modify the references as proposed:
One of ordinary skill in the art at the time the invention
was filed would have been motivated to combine Chau with the
multiple evaluators of Majumdar, with such a modification
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being obvious because both references predict and recommend
activities to a user based on various inputs, and Majumdar
enhances the user experience by taking into account a variety of
factors to best recommend and predict activities.
One of ordinary skill in the art at the time the invention
was filed would have been motivated to combine Chau with the
activity states of Chaudhri, with such a modification being
obvious because both references predict and recommend
activities to a user based on various inputs, and Chaudhri
enhances the user experience by improving user feedback
options when deciding activities.
Final Act. 9, 10 (citing Chau 5:11–57, 6:3–15, 12:16–51, 15:4–33, Figs.
3A–B, 5; Majumdar ¶¶ 32–35; Fig. 4; Chaudhri ¶¶ 21–23, 35–37, 42–44,
Figs. 1A–5).
Regarding the technological issues Appellant raises regarding the
combination and modification of the references as proposed by the
Examiner, we note “[t]he test for obviousness is not whether the features of
a secondary reference may be bodily incorporated into the structure of the
primary reference.” Keller, 642 F.2d at 425 (citations omitted); see also In
re Nievelt, 482 F.2d 965, 968 (CCPA 1973) (“Combining the teachings of
references does not involve an ability to combine their specific structures.”)
(emphasis omitted). In view of the “inferences and creative steps that a
person of ordinary skill in the art would employ” (KSR, 550 U.S. at 418),
Appellant does persuade us that combining the teachings of Chau,
Majumdar, and Chaudhri as proposed by the Examiner would have been
uniquely challenging or otherwise unobvious. See Leapfrog Enters. Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550
U.S. at 418–19). Nor has Appellant provided objective evidence of
secondary considerations which our reviewing court guides “operates as a
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beneficial check on hindsight.” Cheese Sys., Inc. v. Tetra Pak Cheese and
Powder Sys., 725 F.3d 1341, 1352 (Fed. Cir. 2013). We are persuaded the
claimed subject matter exemplifies the principle that “[t]he combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” KSR, 550 U.S. at 416.
Accordingly, we sustain the § 103 rejection of claims 1 and 11. We
also, accordingly, sustain the § 103 rejections of claims 2–10 and 12–30, for
which Appellant proffers no argument substantively separate from the
independent claims.
DECISION
We affirm the Examiner’s 35 U.S.C. § 101 rejection of claims 1–30.
We affirm the Examiner’s 35 U.S.C. § 103 rejection of claims 1–30.

In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–30 101 Nonstatutory Subject
Matter
1–30
1, 2, 7–12, 17–30 103 Chau, Majumdar,
Chaudhri
1, 2, 7–12,
17–30

3–6, 13–16 103 Chau, Majumdar,
Chaudhri, Winstead
3–6, 13–
16

Overall
Outcome
1–30
Appeal 2018-006225
Application 14/691,624

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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