Brett A. Krueger et al.

Patent Trials and Appeals Board

Dec 2, 2019

14739044 - (D) (P.T.A.B. Dec. 2, 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.
14/739,044 06/15/2015 Brett A. Krueger 238641-364878 4453
44200 7590 12/02/2019
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
12/02/2019 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
and KRAIG T. KRUEGER
___________

Appeal 2018-006162
Application 14/739,044
Technology Center 2100
_________________

Before JEAN R. HOMERE, JEREMY J. CURCURI, and
DAVID J. CUTITTA II, Administrative Patent Judges.

CUTITTA, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 3–11, and 13–30.2 We have
jurisdiction 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(a). Appellant identifies the real party in interest as Kruevio
LLC. Appeal Br. 2.
2 Claims 2 and 12 are cancelled. Appeal Br. 1.
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STATEMENT OF THE CASE
Invention
Appellant’s recited claims relate to receiving “inputs indicative of a
user state of a user,” determining “a collective user state based on the
received inputs and determining one or more possible activities for the user
and one or more predicted outcomes for each activity based on the collective
user state.” Spec. ¶ 4.3

Exemplary Claim
Claims 1 and 11 are independent. Independent claim 1 is exemplary
of the claimed subject matter and is reproduced below with claim element
labels added in brackets and limitations at issue italicized:
1. A method comprising:
[a] receiving, at data processing hardware, inputs
indicative of a user state of a user, the received inputs
comprising at least one of:
[a1] sensor inputs from one or more sensors in
communication with the data processing hardware;
[a2] application inputs received from one or more
software applications executing on the data processing
hardware or a remote device in communication with the
data processing hardware; or

3 We refer to: (1) the originally filed Specification filed June 15, 2015
(“Spec.”); (2) the Final Office Action mailed September 15, 2017 (“Final
Act.”); (3) the Appeal Brief filed February 13, 2018 (“Appeal Br.”); (4) the
Examiner’s Answer mailed March 29, 2018 (“Ans.”); and (5) the Reply
Brief filed May 29, 2018 (“Reply Br.”).
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[a3] user inputs received from a graphical user
interface;
[b] executing, by the data processing hardware, a
plurality of suggesters, [b1] each suggester being separately
instantiable and having a corresponding objective to promote
or dissuade a behavior of the user, [b2] each suggester having
an active state and an inactive state, [b3] each suggester
associated with one or more input types that trigger the active
state, [b4] each suggester 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 suggester;
[c] determining, by the data processing hardware,
whether any of the suggesters is in the active state; and
[d] when any of the suggesters is in the active state:
[d1] determining, by the data processing
hardware, candidate information based on the received
inputs and the corresponding objective of each suggester
in the active state, wherein each suggester in the active
state evaluates the candidate information based on
whether the candidate information promotes the
corresponding objective of the respective suggester to
render an evaluation; and
[d2] selecting, by the data processing hardware,
suggested information from the candidate information
based on the rendered evaluations of each suggester in
the active state.

Appeal Br. 12–13 (Appendix of Claims).

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REJECTIONS AND REFERENCES
The Examiner rejects claims 1, 3–11, and 13–30 under 35 U.S.C.
§ 101 as reciting patent-ineligible subject matter. Final Act. 4–7.
The Examiner rejects claims 1, 7–11, and 17–30 under 35 U.S.C.
§ 103 as obvious over Chau et al. (US 9,177,029 B1, issued Nov. 3, 2015)
(“Chau”), Zhang et al. (US 2013/0226856 A1, published Aug. 29, 2013)
(“Zhang”), and Chaudhri et al. (US 2013/0332721 A1, published Dec. 12,
2013) (“Chaudhri”). Id. at 7–15.
The Examiner rejects claims 3–6 and 13–16 under 35 U.S.C. § 103 as
obvious over Chau, Zhang, Chaudhri, and Winstead et al. (US
2010/0302004 A1, published Dec. 2, 2010) (“Winstead”). Id. at 15–18.

ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of Appellant’s arguments and evidence.
Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(iv) (2017).

Rejection under 35 U.S.C. § 101
I. Principles of Law
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the US 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. See, 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 Court’s two-step framework, described in Alice and Mayo.
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 recites. 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.”).
If the claim recites an abstract idea, we turn to the second step of the
Alice and Mayo framework, in which “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.
(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.
The Office published revised guidance on the application of § 101.
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) as revised by the recently issued October 2019 Patent
Eligibility Update (October 2019 Update) (together hereinafter
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“Guidance”).4 Under the Guidance, in determining whether a claim falls
within an excluded category, we first look to whether the claim recites:
(1) Step 2A — Prong One: 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
(2) Step 2A — Prong Two: additional elements that integrate the
judicial exception into a practical application (see MPEP5
§ 2106.05(a)–(c), (e)–(h)).
See Guidance, 84 Fed. Reg. 54–55 (“Revised Step 2A”). Only if a claim (1)
recites a judicial exception and (2) does not integrate that exception into a
practical application, do we then look to whether the claim (Step 2B):
(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.
See id. at 56 (“Step 2B: If the Claim Is Directed to a Judicial Exception,
Evaluate Whether the Claim Provides an Inventive Concept.”).

4 The Guidance, as revised by the October 2019 Update, supersedes previous
guidance memoranda. Guidance, 84 Fed. Reg. 51 (“All USPTO personnel
are, as a matter of internal agency management, expected to follow the
guidance.”).
5 All Manual of Patent Examining Procedure (“MPEP”) citations herein are
to MPEP, Rev. 08.2017, January 2018.
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II. The Examiner’s § 101 Rejection
The Examiner determines that exemplary6 claim 1 is directed to a
judicial exception: an abstract idea. Final Act. 4–6; Ans. 4–6. According to
the Examiner, “[r]epresentative claim 1 is directed to a method that presents
a user with suggested activities based on inputs and evaluations.” Final
Act. 5. The Examiner determines “[t]he underlying concept merely analyzes
raw data, organizes said data, and displays the organized data-this concept is
not meaningfully different than those concepts found by the courts to be
abstract.” Id. (citing Elec. Power Group, LLC v. Alstom S.A., 830 F.3d 1350
(Fed. Cir. 2016). The Examiner also determines that the “additional
elements (i.e. the electronic device and scheduling messages) when
considered both individually and as a combination, do not amount to
significantly more than the abstract idea because the limitations are merely
instructions to implement the abstract idea on a computer and require no
more than a generic computer.” Final Act. 4.

III. Appellant’s Arguments
We summarize Appellant’s arguments in favor of eligibility as
follows: (1) “the pending claims are also necessarily rooted in computer
technology” similar to the claims in DDR Holdings7 because “recitations of
executing a plurality of suggesters that each remain inactive until triggered
into the active state by receipt of an input . . . having an input type associated

6 Appellant argues claims 1, 3–11, and 13–30 as a group with respect to the
§ 101 rejection. Appeal Br. 6. We, thus, select independent claim 1 as
exemplary of the claims. See 37 C.F.R. § 41.37(c)(1)(iv).
7 Citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed.
Cir. 2014).
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with the respective action evaluator necessarily roots the claimed invention
in computer technology (Appeal Br. 6, 7); (2) “the step of receiving sensor
inputs from sensors clearly ties the claims to physical hardware. Receiving
application inputs from other software applications clearly ties the claims to
computer technology. Moreover, receiving user inputs from a GUI clearly
ties the claims to computer use by the user” (id. at 7); (3) “the claims recite
specific steps . . . rather than simply abstractly covering results” (id.)
(4) “when viewing each claim as a whole, the combination of all the
recitations together amount to significantly more than an abstract idea” (id.
at 8); (5) the claimed GUI is “tied to computer technology” (Reply Br. 1);
and (6) “the Examiner fails to provide any citation as evidence for his
contention that the claims merely equate to the human brain and human
activities, and are therefore well-known, routine, and conventional” (Reply
Br. 2).

IV. Our Review, Guidance, Step 1
We analyze the exemplary claim and the Examiner’s rejection in view
of the Guidance, and we adopt the nomenclature for the steps used in the
Guidance. As an initial matter, the claims must recite at least one of four
recognized statutory categories, namely, machine, process, article of
manufacture, or composition of matter. MPEP § 2106(I); see 35 U.S.C.
§ 101. Appellant’s independent claims 1 and 11 recite a method (i.e., a
“process”) and a system (i.e., a “machine”), respectively. Thus, the pending
claims recite a recognized statutory category of § 101 and we turn to the
two-step Alice/Mayo analysis applied in accordance with the Office
Guidance.
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V. Step 2A, Prong 1 in the Guidance (Alice/Mayo–Step 1)
(Judicial Exceptions)
Next, we determine whether claim 1, being directed to a statutory
class of invention, nonetheless recites a judicial exception. Guidance, 84
Fed. Reg. 51. At a high level, we agree with the Examiner that the steps in
claim 1 describe the concept of “present[ing] a user with suggested activities
based on inputs and evaluations.” Final Act. 5. Apart from additional
elements and extra-solution activity discussed separately below, claim 1,
under a broadest reasonable interpretation, recites “a method” including the
steps of: [b] “executing . . . a plurality of suggesters, [b1] each suggester
being separately instantiable and having a corresponding objective to
promote or dissuade a behavior of the user, [b2] each suggester having an
active state and an inactive state, [b3] each suggester associated with one or
more input types that trigger the active state, [b4] each suggester 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 suggester;”; [c] “determining . . . whether any
of the suggesters is in the active state”; and [d] when any of the suggesters is
in the active state: [d1] “determining . . . candidate information based on the
received inputs and the corresponding objective of each suggester in the
active state”; and [d2] “selecting . . . suggested information from the
candidate information based on the rendered evaluations.”
Aside from the additional limitations, the claimed invention is
analogous to a pre-computer transaction in which a person receives
suggestions, via sensory input, from a plurality of types of unique suggesters
to promote or dissuade a behavior of the user. We agree with the
Examiner’s hypothetical example of a person deciding between multiple
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activities based on input from different suggesters. Final Act. 6. In the
Examiner’s example, a person [b1] receives (1) a first type of sensory input
(feels) hunger, which promotes the objective of causing the person to eat and
(2) a second type of instantiable sensory input (sees) from a looming
thunderstorm, which promotes the objective of causing the person to stay
indoors rather than go for a run outdoors. Each [b2] suggester has an active
state and an inactive state, i.e., sometimes there are thunderstorms and
sometimes there are not. Each [b3] suggester is associated with one or more
input types that trigger the active state i.e., the sensation of hunger triggers
the person to consider eating and seeing thunderclouds triggers the person to
stay indoors. And each [b4] suggester 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 suggester, i.e., the person does not considering dining out until
feeling the sensation of hunger.
We therefore agree with the Examiner that these limitations recite
certain methods of organizing “human activities” such as managing personal
behavior or relationships or interactions between people including social
activities. Final Act. 6; Guidance, 84 Fed. Reg. 52. We also determine that
certain recited steps set forth a mental process because the steps include
“observations, evaluations, judgments, and opinions” that can be practically
performed in the mind. Guidance, 84 Fed. Reg. 52 n. 14. Claim 1,
therefore, recites a judicial exception, i.e., an abstract idea.

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VI. Step 2A, Prong Two in the Guidance
(Integration into a Practical Application)
Because claim 1 recites an abstract idea, we now determine whether
the claim is directed to the abstract idea itself or whether it is, instead,
directed to some technological implementation or application of, or
improvement to, this idea, i.e., is integrated into a practical application. See,
e.g., Alice, 573 U.S. at 223, discussing Diamond v. Diehr, 450 U.S. 175
(1981). We determine whether the recited judicial exception is integrated
into a practical application of that exception by: (a) identifying whether there
are any additional elements recited in the claim beyond the judicial
exception or exceptions; and (b) evaluating those additional elements
individually and in combination to determine whether they integrate the
exception into a practical application. 84 Fed. Reg. 54–55. This evaluation
requires an additional element or a combination of additional elements in the
claim to apply, rely on, or use 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 exception. See id.
The Examiner determines the additional elements do not integrate the
exception into a practical application because the claim “merely attempts to
computerize this [abstract] process using generic computer components and
result-oriented and unclaimed algorithms and is not improving upon the
algorithms themselves (or the sensors or any piece of claimed computer
technology for that matter).” Ans. 6.
Appellant argues that “the step[s] of receiving sensor inputs from
sensors,” “[r]eceiving application inputs from other software applications,”
and “receiving user inputs from a GUI clearly ties the claims to computer
use by the user” and thus is integral to the claim. Appeal Br. 7.
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We find this argument unpersuasive because additional limitations [a],
[a1], [a2], and [a3] broadly recite receiving various types of inputs and thus
are merely data gathering steps. A data gathering step is insignificant extra-
solution activity insufficient to render the claim patent-eligible. See In re
Bilski, 545 F.3d 943, 963 (Fed. Cir. 2008) (characterizing data gathering
steps as insignificant extra-solution activity).
Appellant argues the “executing a plurality of suggesters [limitation
[b]] . . . necessarily roots the claimed invention in computer technology”
similar to the claims in DDR Holdings. Appeal Br. 6, 7.
We are unpersuaded because apart from the additional limitation of
“the data processing hardware,” limitation [b] recites an abstract idea as
discussed above in Section V. With respect to the claimed data processing
hardware, Appellant’s Specification states “[the] terms ‘data processing
hardware’, ‘computing device’ and ‘computing processor’ encompass all
apparatus, devices, and machines for processing data, including by way of
example a programmable processor, a computer, or multiple processors or
computers.” Spec. ¶ 133. Thus, unlike the claims in DDR Holdings, the
solution offered by Appellant’s claim 1 is not rooted in any novel computer
technology, as evidenced by limitation [b]’s failure to recite anything other
than generic data processing hardware.
Next, Appellant argues claim 1, like the claims in McRO,8 “recite[s]
specific steps . . . rather than simply abstractly covering results.” Appeal
Br. 7.

8 Citing McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1313
(Fed. Cir. 2016).
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Appellant’s argument based on McRO is unpersuasive because
Appellant’s claim 1 is unlike the claims in McRO. The patent at issue in
McRO describes that, prior to the claimed invention, character animation and
lip synchronization were accomplished by human animators with the
assistance of a computer, and involved the use of a so-called “keyframe”
approach in which animators set appropriate parameters, i.e., morph weights,
at certain important times, i.e., in order to produce accurate and realistic lip
synchronization and facial expressions. McRO, 837 F.3d. at 1305.
Animators knew what phoneme a character pronounced at a given time from
a time-aligned phonetic transcription (a “timed transcript”). Id. In
accordance with the prior technique, animators, using a computer, manually
determined the appropriate morph weight sets for each keyframe based on
the phoneme timings in the timed transcript. Id.
Thus, in McRO, the improvement in computer animation was realized
by using “rules, rather than artists [i.e., human animators], to set the morph
weights and transitions between phonemes” (id. at 1313 (citation omitted)),
i.e., in McRO, the invention used “rules to automatically set a keyframe at
the correct point to depict more realistic speech, achieving results similar to
those previously achieved manually by animators.” Id. at 1307. The rules in
McRO, thus, allowed the computer to solve a technological problem by
producing accurate and realistic synchronization in animated characters that
could only previously be produced by humans.
In contrast with McRO, Appellant does not identify any specific rules
in the claim that are used to solve a technological problem, let alone identify
specific rules that act in the same way as the specific rules enabling the
computer in McRO to generate computer animated characters. Rather,
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Appellant’s claim 1 merely “presents a user with suggested activities based
on inputs and evaluations.” Final Act. 5. No technological rules are
identified in the claim; rather the claim broadly recites “executing . . . a
plurality of suggesters.” Appeal Br. 28. We, therefore, find insufficient
basis in the record before us to support Appellant’s argument that claim 1 is
similar to the claim in McRO, where computers were unable to make certain
subjective determinations, i.e., regarding morph weight and phoneme
timings, which could only be made prior to the McRO invention by human
animators.
Appellant argues claim 1 recites “executing a plurality of suggesters,
each having corresponding objectives and trigger states based on received
inputs, specifically designed to achieve a technological improvement in the
field of identifying context-relevant information relative to a current state of
a user and are not directed to a result or effect that itself is an abstract idea or
merely invokes generic processes and machinery.” Appeal Br. 7–8.
The problem addressed by Appellant’s claim 1 is not a technological
problem. Rather than addressing a problem unique to the technology in
which the solution is implemented, claim 1 merely automates, using generic
computer hardware, a process that “relates to suggesting information to a
user based on an assessment of the user’s current state.” Spec. ¶ 2. The
claim broadly recites a judgment, rather than any particular algorithm or
technical solution, for providing the suggestions based on the user’s state.
See Appeal Br. 12–13 (“each suggester in the active state evaluates the
candidate information based on whether the candidate information promotes
the corresponding objective”). Thus, we agree with the Examiner that claim
1 “is directed to a method that presents a user with suggested activities based
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on inputs and evaluations,” which is not an improvement to technology and
does not recite a particular solution to a technological problem or a
particular way to achieve a desired outcome by reciting an improvement to
technology. Final Act. 5; See MPEP § 2106.05(a). Considering the claim as
a whole, the additional limitations provide only a result-oriented solution
and lack details as to how the hardware performs the claimed abstract idea.
In addition, Appellant’s claimed additional elements do not transform
matter; at best, they transform information. That is, the claim simply
receives, selects, and manipulates data such as by suggesting activities based
on input data. See MPEP § 2106.05(c); see also Gottschalk v. Benson, 409
U.S. 63, 71–72 (1972) (holding that a computer based algorithm that merely
transforms data from one form to another is not patent-eligible). As such,
the claim has no other meaningful limitations (see MPEP § 2106.05(e)), and
merely recites instructions to execute an abstract idea on generic computer
hardware (see MPEP § 2106.05(f)), along with insignificant extra-solution
activity. See MPEP § 2106.05(g).
We, therefore, determine claim 1 is not directed to a specific asserted
improvement in computer-related technology or otherwise integrated into a
practical application and thus is directed to a judicial exception.

VII. Step 2B in the Guidance (Alice/Mayo, Step 2) (Inventive Concept)
Next, we determine whether the claim includes additional elements
that provide significantly more than the recited judicial exception, thereby
providing an inventive concept. Alice, 573 U.S. at 221 (quoting Mayo, 566
U.S. at 72–73). To determine whether the claim provides an inventive
concept, the additional elements are considered—individually and in
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combination—to determine whether they (1) add a specific limitation
beyond the judicial exception that is not “well-understood, routine,
conventional” in the field or (2) simply append well-understood, routine,
conventional activities previously known to the industry, specified at a high
level of generality, to the judicial exception. Guidance, 84 Fed. Reg. 56.
The Examiner determines that the additional elements, “when
considered both individually and as a combination, do not amount to
significantly more than the abstract idea because the limitations are merely
instructions to implement the abstract idea on a computer and require no
more than a generic computer to perform generic computer functions.”
Final Act. 6.
Appellant argues “the claims recite specific steps . . . rather than
simply abstractly covering results” and “when viewing [the] claim as a
whole, the combination of all the recitations together amount to significantly
more than an abstract idea.” Appeal Br. 7, 8.
We find this argument unpersuasive. Appellant fails to provide
specific arguments indicating which limitations, alone or in combination,
amount to more than the abstract idea. To the contrary, because receiving
limitation [a] recites “comprising at least one of” [a1], [a2], or [a3], under a
broadest reasonable interpretation, only one of [a1], [a2], or [a3] need be
considered. Representative limitation [a3] recites receiving “user inputs
received from a graphical user interface.” Appeal Br. 12. Appellant argues
the claimed GUI is “tied to computer technology.” Reply Br. 1. However,
reciting a graphical user interface with nothing more is merely well
understood, routine, and conventional data gathering activity. See
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1096 (Fed. Cir.
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2016) (noting that using generic computing components like a
microprocessor or user interface do not transform an otherwise abstract idea
into eligible subject matter). Moreover, as discussed above in Section VI,
Appellant’s Specification confirms the claimed data processing hardware is
merely a generic computing component used to perform the claimed abstract
idea. Spec. ¶ 133.
Neither does Appellant direct our attention to anything in the
Specification that indicates the claimed components, as an ordered
combination, perform anything other than well-understood, routine, and
conventional processing functions, such as manipulating and generating
data. See Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d
1372, 1378 (Fed. Cir. 2017) (holding that considering claims reciting data
retrieval, analysis, modification, generation, display, and transmission as an
“‘ordered combination”’ reveals that they “amount to ‘nothing significantly
more’ than an instruction to apply [an] abstract idea” using generic computer
technology) (internal citation omitted. In short, as previously noted, claim 1
does no more than use generic hardware to implement the claimed abstract
idea.
Appellant next argues that “the Examiner fails to provide any citation
as evidence for his contention that the claims merely equate to the human
brain and human activities, and are therefore well-known, routine, and
conventional.” Reply Br. 2 (citing Berkheimer v. HP Inc., 890 F.3d 1369,
1376 (Fed. Cir. 2018).
Appellant misapprehends the Examiner’s position. The Examiner
determines Appellant’s “claims are merely attempting to solve a problem
that arises in the human brain and human activities and do not propose a
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solution or overcome a problem ‘specifically arising in the realm of
computer [technology]’.” Ans. 5 (citing DDR Holdings). Here, rather than
making a factual finding that elements of the claim are well-known, routine,
and conventional, as alleged by Appellant, the Examiner instead justifies a
determination that the claim is directed to the abstract idea itself without a
technological implementation and thus fails to integrate the abstract idea into
a practical application. Appellant’s argument based on Berkheimer is not
persuasive because (1) patent eligibility under 35 U.S.C. § 101 is a question
of law that is reviewable de novo (see Dealertrack, Inc. v. Huber, 674 F.3d
1315, 1333 (Fed. Cir. 2012)); and (2) we are aware of no controlling
authority that requires the Office to provide factual evidence to support a
determination that a claim is directed to an abstract idea without integration
into a practical application.9
We, thus, conclude that claim 1 does not provide an inventive concept
because the additional elements recited in claim 1 do not provide
significantly more than the recited judicial exception. Accordingly, claim 1
does not recite patent-eligible subject matter. Because claim 1 is argued as
representative of the other claims, we also conclude that independent claim
11 and dependent claims 3–10 and 13–30, do not recite patent-eligible
subject matter. Therefore, we sustain the rejection of claims 1, 3–11, and

9 Berkheimer, 881 F.3d at 1366, holds that the question of whether certain
claim limitations represent well-understood, routine, conventional activity
under Alice step 2 may raise a disputed factual issue. That question,
however, is not at issue in this argument. As in Berkheimer, in determining
that the claims are directed to an abstract idea, the Examiner compared the
claims to claims held to be abstract in prior judicial decisions. Compare
Final Act. 5–6, with Berkheimer, 881 F.3d at 1366–67.
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13–30 under 35 U.S.C. § 101 as being directed to patent-ineligible subject
matter.
Rejections under 35 U.S.C. § 103
The Examiner finds the combination of Chau, Zhang, and Chaudri
teaches “executing, by the data processing hardware, a plurality of
suggesters, each suggester being separately instantiable and having a
corresponding objective to promote or dissuade a behavior of the user, each
suggester having an active state and an inactive state.” Specifically, the
Examiner finds Chau’s disclosure of a system that suggests activities to a
user based on the user’s mood teaches executing a suggester. Final Act. 8
(citing Chau 5:11–25, 6:3–15, 15:4–33 and Figs. 3A–3B, 5). The Examiner
finds Zhang disclosure of “multiple activity groups that can be analyzed,
including the ability to separately analyze the groups,” teaches “a plurality
of suggesters, each suggester being separately instantiable and having a
corresponding objective,” as recited in claim 1. Final Act. 8 (citing Zhang
¶¶ 47–52, Figs. 4, 5). The Examiner finds Chaudri teaches a suggester
having active and inactive states as claimed. Final Act. 10 (citing Chaudri
¶¶ 21–23, 35–37, 42–44, Figs. 1A–5). The Examiner determines that
motivation existed to apply the teachings of Zhang and Chaudri to Chau.
Final Act. 9–10.
Appellant disputes the Examiner’s factual findings, arguing Chau
never considers executing a plurality of separately instantiable suggesters for
evaluating the activities. Instead, only Chau’s single activity assistant
evaluates and scores every activity in an index of activities. Appeal Br. 8.
We agree with the Examiner that Appellant’s argument that “Chau
never considers executing a plurality of separately instantiable suggesters” is
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unpersuasive because it does not address the Examiner’s reliance on Chau
and Zhang to teach the separately instantiable suggesters. See Ans. 7
(“Examiner has cited Zhang to teach a plurality of action suggesters”).
Next, Appellant argues “[s]ince Chau’s activity assistant evaluates
and scores every activity in the index of activities, the ‘activity assistant’
cannot have an inactive state.” Appeal Br. 8.
We agree with the Examiner that Appellant’s argument directed to
Chau is unpersuasive because it does not address the Examiner’s reliance on
Chaudri to teach the aspect of the limitation relating to an active and inactive
state. See Ans. 8 (“Examiner notes that Chaudhri was cited to teach these
limitations of active/inactive states.”).
The Examiner finds the combination of Chau, Zhang, and Chaudri
teaches “determining, by the data processing hardware, candidate
information based on the received inputs and the corresponding objective of
each suggester in the active state,” as recited in claim 1. Specifically, the
Examiner finds Chau’s disclosure of an activity assistant that (1) evaluates a
user’s mood, (2) and presents a bunch of candidate activities that would
fulfill the objective to accomplish satisfying the user’s mood teaches
determining candidate information based on the received inputs and the
corresponding objective of each suggester. Final Act. 9 (citing Chau 5:11–
25, 6:3–15, 15:4–33 and Figs. 3A–3B, 5). The Examiner finds Zhang
disclosure of “multiple activity groups that can be analyzed, including the
ability to separately analyze the groups,” teaches “a plurality of suggesters,”
as recited in claim 1. Final Act. 8 (citing Zhang ¶¶ 47–52, Figs. 4, 5). The
Examiner finds Chaudri teaches a suggester having active and inactive states
as claimed. Final Act. 10 (citing Chaudri ¶¶ 21–23, 35–37, 42–44, Figs.
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1A–5). The Examiner determines that motivation existed to apply the
teachings of Zhang and Chaudri to Chau. Final Act. 9–10.
Appellant disputes the Examiner’s factual findings, arguing “Chau’s
activity assistant neither considers specific objectives of suggesters in the
active state nor renders evaluations accordingly.” Appeal Br. 9 (citing Chau
4:20–39). “Instead, the activity is merely ‘customized" to the user based on
his/her preferences.” Id.
We are unpersuaded because Appellant fails to address each of the
Examiner’s factual findings regarding Chau. For example, the Examiner
finds that Chau’s activity assistant presents “a bunch of candidate activities
. . . that would fulfill the objective to accomplish satisfying the user’s
mood.” Final Act. 8. A separate portion of Chau cited by the Examiner
states “the intelligence of the activity assistant is utilized to provide
‘suggested’ activities that are tailored to the particular user’s preferences,
tendencies, location, time table, associated other users, and/or mood at a
given point in time.” Chau 6:3–6. Appellant fails to show why Chau’s
evaluation of “user’s preferences, tendencies, location, time table, associated
other users, and/or mood” to suggest activities (Chau 6:3–6), fails to teach
“consider[ing] specific objectives of suggesters in the active state [or]
render[ing] evaluations accordingly” (Appeal Br. 9). Appellant also fails to
address the Examiner’s findings based on Chau’s Figures 3A–3B, and 5 and
columns 5 and 15 of Chau. Final Act. 8. Moreover, Appellant’s argument
directed to Chau does not address the Examiner’s reliance on Chaudri to
teach the aspect of the limitation relating to an active and inactive state.
Ans. 8.

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Next, Appellant argues “Chaudhri never considers the concept of
multiple suggesters, let alone suggesters to promote or dissuade a behavior
of the user.” Appeal Br. 10. This argument is unpersuasive because the
Examiner relies upon Zhang not Chaudhri to teach “a plurality of
suggesters,” as recited in claim 1. Final Act. 8 (citing Zhang ¶¶ 47–52,
Figs. 4, 5). In conclusion, Appellant’s arguments do not address the actual
reasoning of the Examiner’s rejection because, as the Examiner notes,
Appellant attacks the references singly for lacking teachings that the
Examiner relies on the combination of references to show. Ans. 8 (citations
omitted).
Lastly, Appellant argues Chaudhri fails to show individual action
suggesters can be toggled on and off but instead discloses a routine that
globally turns off all notifications, and “[i]f Chaudhri’s mobile device
disabled that routine, all notifications would be allowed.” Appeal Br. 10.
Moreover, “within the routine, if step[s] . . . were inactive, the routine would
no longer function for its intended purpose and would change its principle of
operation, rendering the reference insufficient to make the claims prima
facie obvious.” Id. (citations omitted).
The Examiner responds
Just because Chaudhri is disabling notifications does not mean
that all notifications have to be disabled or that this is a single
activity in the grand scheme of the rejection(s). A user can
selectively toggle certain applications, which one of ordinary
skill in the art would recognize translates to the activity/activities
of Chau/Zhang. Chaudhri is not teaching muting all notifications,
and therefore all activities, but is selectively muting
notifications, either through user input or automatic
determinations.
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Ans. 10 (citing Chaudri ¶¶ 21–23, 35–37, 42–44 and Figs. 1A–5).
Appellant, in turn, fails to persuasively rebut the Examiner’s findings. See
generally Reply Br. 3–5.
Appellant presents several additional arguments for the first time in
the Reply Brief including: (1) “the Examiner cites no motivations within the
cited references or explanations as to why a person of ordinary skill in the
art would look to Chaundhri”; and (2) “[t]he Examiner has indicated that
Chaundhri is relied upon for teaching turning on/off specific actions
(notifications), but fails to cite any motivation in the references to make such
a modification to Chau’s activity assistant, as modified in view of Zhang.
Reply Br. 3. These arguments are untimely and will not be considered due
to the absence of any good faith showing why they could not have been
timely presented in Appellant’s Appeal Brief. 37 C.F.R. § 41.41(b)(2)
(2017). Moreover, Appellant’s arguments that the combination lacks the
required motivation to incorporate the teachings of Chaudhri are not
persuasive of error because Appellant does not address the motivation
identified by the Examiner. Final Act. 10.
For these reasons, we sustain the Examiner’s 35 U.S.C. § 103
rejection of claim 1, and of independent claim 11, which is argued with
claim 1. Appeal Br. 8. Dependent claims 3–10 and 13–30 are not argued
separately and so we also sustain the Examiner’s 35 U.S.C. § 103 rejection
of these claims. Appeal Br. 8–10.

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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § References/Basis Affirmed Reversed
1, 3–11, 13–
30
101 Eligibility 1, 3–11,
13–30

1, 7–11, 17–
30
103 Chau, Zhang,
Chaudhri,
1, 7–11,
17–30

3–6, 13–16 103 Chau, Zhang,
Chaudhri, Winstead
3–6, 13–16
Overall
Outcome
1, 3–11,
13–30

TIME PERIOD FOR RESPONSE
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