David Morin et al.

Patent Trials and Appeals Board

Oct 23, 2019

13620096 - (D) (P.T.A.B. Oct. 23, 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.
13/620,096 09/14/2012 David Morin 26295-21775 1367
87851 7590 10/23/2019
Facebook/Fenwick
Silicon Valley Center
801 California Street
Mountain View, CA 94041
EXAMINER
AGWUMEZIE, CHINEDU CHARLES
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
10/23/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
fwfacebookpatents@fenwick.com
ptoc@fenwick.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DAVID MORIN,
JOSHUA E. ELMAN,
VISHU GUPTA,
and BLAISE A. DIPERSIA
____________

Appeal 2018-006020
Application 13/620,096
Technology Center 3600
____________

Before ANTON W. FETTING, MICHAEL C. ASTORINO, and
CYNTHIA L. MURPHY, Administrative Patent Judges.

FETTING, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2018-006020
Application 13/620,096

2

STATEMENT OF THE CASE1
David Morin, Joshua E. Elman, Vishu Gupta, and Blaise A. DiPersia
(Appellant2) seeks review under 35 U.S.C. § 134 from a final rejection of
claims 1–15, 17–30, 32, and 33, the only claims pending in the Application
on Appeal. We have jurisdiction over the Appeal pursuant to
35 U.S.C. § 6(b).3

The Appellant invented a way for creating software applications that
allow multiple users to interact. Spec., para. 2.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A method comprising:
[1] storing, by a social networking system, connections between
user accounts;
[2] receiving a purchase request from a first user for an
interactive game hosted by an application provider;
[3] responsive to receiving the purchase request from the first
user:

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed March 12, 2018) and Reply Brief (“Reply Br.,” filed May 22,
2018), and the Examiner’s Answer (“Ans.,” mailed April 18, 2018), and
Final Action (“Final Act.,” mailed August 15, 2017).
2 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 Facebook,
Inc. (Appeal Br. 2).

3 As indicated by the Appellant, Appeal 2018-005476 (Application
12/623,400) is related to the application on appeal. See Appeal Br. 2.
Appeal 2018-006020
Application 13/620,096

3

[4] providing a license to the first user to play the interactive
game provided by the application provider, and
providing at least one sublicense to the first user to
distribute to at least one other user to interact with the
first user through the interactive game provided by the
application provider;
[5] receiving a request from the first user to distribute a
sublicense of the at least one sublicense to a second user;
[6] verifying the second user is eligible to receive the sublicense
based on a length of a relationship between the first user
and the second user in the social networking system;
[7] responsive to verifying that the second user is eligible to
receive the sublicense,
providing the sublicense to the second user,
the sublicense enabling the second user to interact with
the first user through the interactive game;
[8] receiving a request from the first user to access the
interactive game;
[9] providing the first user access to play the interactive game;
[10] receiving, from the second user, a request to interact with
the first user through the interactive game;
[11] responsive to determining that the second user has a sub-
license and a connection with the first user stored in the social
networking system, providing,
by the application provider,
the second user access to interact with the first user
through the interactive game;
and
[12] providing,
to the first and second users,
content of the interactive game,
Appeal 2018-006020
Application 13/620,096

4

the content comprising interactions between the first and
second user.

The Examiner relies upon the following prior art:
Name Reference Date
Asayama US 2004/0010447 A1 Jan. 15, 2004
Jung US 2008/0046509 A1 Feb. 21, 2008
McCaskey US 2008/0234043 A1 Sept. 25, 2008
Snyder US 2011/0112895 A1 May 12, 2011

Claims 1–15, 17–30, 32, and 33 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over McCaskey and Asayama.
Claims 1–15, 17–30, 32, and 33 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over McCaskey and Asayama, and Jung and
Snyder.
ISSUES
The issues of obviousness turn primarily on whether the prior art
describes the criteria for second user being eligible to receive the sublicense
as based on a length of a relationship between the first user and the second
user in the social networking system, and whether it is deserving of
patentable weight.

Appeal 2018-006020
Application 13/620,096

5

FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to the Prior Art
McCaskey
01. McCaskey is directed to automatically generating guest passes
to video games for elective distribution by a user. McCaskey,
para. 1.
02. McCaskey describes determining and providing of one or more
guest passes for temporary access to one or more video games to a
first player that was previously granted membership to a platform
that offers access to playing these video games. One or more
different determinations are made on information related to the
first player and/or available video games to generate one or more
guest passes for a video game that is at least somewhat relevant to
the first player. In at least one embodiment, one or more of the
different determinations can be intrinsically and/or extrinsically
weighted to further refine the generation of a guest pass for a
video games that is at least somewhat relevant to the first player,
and thereby more likely to be offered by the first player to a
second player. Also, the platform is provided to enable the
determining and generating of the one or more guest passes to the
one or more video games for the first player. McCaskey, para. 20.
03. McCaskey describes a guest pass that enables a first player to
provide a second player with an opportunity to obtain a unique
guest license for temporary access to play at least a portion of a
Appeal 2018-006020
Application 13/620,096

6

video game. The guest pass and/or the guest license can include
one or more conditions, including, but not limited to, when and/or
who can provide it to another player, a type of player that it can be
offered to, full or partial access to “guest” play a video game, the
number of times that a video game can be “guest” accessed by the
second player, amount of time that the video game is available for
“guest” access once a unique guest license is obtained by the
second player. McCaskey, para. 21.
04. McCaskey describes providing the guest pass invitation
message to the second player through one or more modes of
communication, including but not limited to a telephone call,
email, text message, instant message, physically mailed guest pass
invitation, and the like. In at least one embodiment, the platform
verifies and authenticates the membership of the first player and
determines if the second player is also a member of the platform.
If the second player is also a member of the platform, a unique
guest pass license to the video game is provided on behalf of the
first player to the second player. The second player can
subsequently redeem the guest pass license with the platform,
either locally or remotely over a network, to enable access and/or
an install of the video game as limited by the terms of the guest
pass license. McCaskey, para. 23.
05. McCaskey describes guest pass invitation behavior recognition
being communicated directly to the first player's contacts, lists,
and/or social networks. McCaskey, para. 27.
Appeal 2018-006020
Application 13/620,096

7

06. McCaskey describes generating a guest pass for a video game
for a player. Both the type of player and the type of the player's
membership are determined. McCaskey, para. 71.
07. McCaskey describes determining other players as those listed in
the player's contact lists, friend's lists, buddy lists, social networks.
McCaskey, para. 72.
08. McCaskey describes a full or partial list of the guest passes
generated for the first player to offer to other players could be
accessed or directly provided by the platform to other players that
are in the first player's contacts, lists, and/or social networks.
McCaskey, para. 81.
Asayama
09. Asayama is directed to increasing the retention and conversion
rates for membership in a program offering goods or services. In
particular, a retention and conversion system that offers an
incentive to its members to motivate the members to participate in
their membership and maintain their membership, wherein the
opportunity for achieving the incentive is related to particulars of
the membership. Asayama, para. 2.
10. Asayama describes the number of entry opportunities to the
raffle is related to the type and length of membership maintained
by the user. Asayama, para. 16, claims 5, 8.
Jung
11. Jung is directed to transmitting information indicating content
to at least one remote user, receiving a request for a specific
instance of said content from said at least one remote user,
Appeal 2018-006020
Application 13/620,096

8

transmitting at least a portion of said specific instance of said
content to said at least one remote user, recording information
indicating that said at least a portion of said specific instance of
said content was transmitted to said at least one remote user, and
receiving data indicative of a credit transfer for transmitting said
at least a portion of said specific instance of said content to said at
least one remote user. Jung, para. 5.
Snyder
12. Snyder is directed to a user that has purchased a game may
wish to play or share the game with other players who the user
knows well or who are proximal to the user. In implementations
described herein, a system may allow such a user to easily share
the game with other players. Snyder, para. 32.

ANALYSIS
The sole argument is that no reference describes the criterion for the
second user being eligible to receive the sublicense in limitation 6, viz. a
length of a relationship between the first user and the second user in the
social networking system. The Examiner cites Asayama as describing
basing eligibility for an incentive being based on length of membership.
Final Act. 6; Ans. 4. We agree with Appellant (App. Br. 6–8) this is not
using a length of a relationship between the first user and the second user in
the social networking system.

Appeal 2018-006020
Application 13/620,096

9

NEW GROUND OF REJECTION
The following new ground of rejection is entered pursuant to
37 C.F.R. § 41.50(b). Claims 1–15, 17–30, 32, and 33 are rejected under
35 U.S.C. § 101 as directed to a judicial exception without significantly
more.
STEP 14
Claim 1, as a method claim, nominally recites one of the enumerated
categories of eligible subject matter in 35 U.S.C. § 101. The issue before us
is whether it is directed to a judicial exception without significantly more.
STEP 2
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, . . .
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. If so, we then ask, “[w]hat
else is there in the claims before us? To answer that question, .
. . consider the elements of each claim both individually and “as
an ordered combination” to determine whether the additional
elements “transform the nature of the claim” into a patent-
eligible application. [The Court] described step two of this
analysis as a search for an “‘inventive concept’”—i.e., 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 Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014) (citations
omitted) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,

4 For continuity of analysis, we adopt the steps nomenclature from 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) (“Revised Guidance”).
Appeal 2018-006020
Application 13/620,096

10

566 U.S. 66 (2012)). To perform this test, we must first determine what the
claims are directed to. This begins by determining whether the claims recite
one of the judicial exceptions (a law of nature, a natural phenomenon, or an
abstract idea). Then, if claims recite a judicial exception, determining
whether the claims at issue are directed to the recited judicial exception, or
whether the recited judicial exception is integrated into a practical
application of that exception, i.e., that the claims “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 judicial exception.” Revised Guidance, 84 Fed. Reg. at
54. If the claims are directed to a judicial exception, then finally
determining whether the claims provide an inventive concept because the
additional elements recited in the claims provide significantly more than the
recited judicial exception.
STEP 2A Prong 1
At a high level, and for our preliminary analysis, we note that method
claim 1 recites storing data representing account connections, receiving
request data, providing data representing a license and sublicense, receiving
another request data, verifying a user meets eligibility criteria, providing the
sublicense data, receiving another request data, providing access to a game;
receiving another request data, Providing access to interact with users and
the game, and providing interactive content data. Providing access to a
game, it’s content, and users playing the game is generic processing of the
game. Providing data is data transmission. Verifying that criteria are met is
rudimentary computer analysis. Thus, claim 1 recites retrieving, analyzing,
updating, storing, and processing data. None of the limitations recite
Appeal 2018-006020
Application 13/620,096

11

technological implementation details for any of these steps, but instead recite
only results desired by any and all possible means.
From this we see that claim 1 does not recite the judicial exceptions of
either natural phenomena or laws of nature.
Under Supreme Court precedent, claims directed purely to an abstract
idea are patent in-eligible. As set forth in the Revised Guidance, which
extracts and synthesizes key concepts identified by the courts, abstract ideas
include (1) mathematical concepts5, (2) certain methods of organizing
human activity6, and (3) mental processes7. Among those certain methods of
organizing human activity listed in the Revised Guidance are managing
personal behavior or relationships or interactions between people. Like
those concepts, claim 1 recites the concept of license routing. Specifically,
claim 1 recites operations that would ordinarily take place in advising one to
provide interaction access between users to a game after one user purchases
a sublicense and distributes it to the second user and then determining the
one user is sublicensed after that user requests interaction. The advice to
provide interaction access between users to a game after one user purchases

5 See, e.g., Gottschalk v. Benson, 409 U.S. 63, 71–72 (1972); Bilski v.
Kappos, 561 U.S. 593, 611 (2010); Mackay Radio & Telegraph Co. v. Radio
Corp. of Am., 306 U.S. 86, 94 (1939); SAP Am., Inc. v. InvestPic, LLC, 898
F.3d 1161, 1163 (Fed. Cir. 2018).
6 See, e.g., Bilski, 561 U.S. at 628; Alice, 573 U.S. at 219-20; Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014); Smart Sys.
Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1383 (Fed. Cir.
2017); In re Marco Guldenaar Holding B.V., 911 F.3d 1157, 1160–61 (Fed.
Cir. 2018).
7 See, e.g., Benson, 409 U.S. at 67; CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1371–72 (Fed. Cir. 2011); Intellectual Ventures I LLC
v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016).
Appeal 2018-006020
Application 13/620,096

12

a sublicense and distributes it to the second user and then determining the
one user is sublicensed after that user requests interaction involves
interaction between users, which is a social activity, and purchasing a
sublicense, which is an act ordinarily performed in commercial interaction.
For example, claim 1 recites “providing the first user access to play the
interactive game” and “providing . . . the second user access to interact with
the first user through the interactive game,” which is an activity that would
take place whenever one is engaging in a game as social interaction.
Similarly, claim 1 recites “responsive to receiving the purchase request from
the first user . . . providing at least one sublicense to the first user to
distribute to at least one other user,” which is characteristic of commercial
social interaction.
The preamble to claim 1 does not recite what it is to achieve, but the
steps in claim 1 result in granting access by a sublicensed user to an
application absent any technological mechanism other than a conventional
computer for doing so.
As to the specific limitations, limitations 2, 3, 5, 8, and 10 recite data
retrieval. Limitation 6 recites rudimentary criteria based analysis to make
some determination. Limitations 3, 7, and 11 similarly recite rudimentary
binary decision operations in the form of being responsive to meeting
criteria. Limitations 1, 4, 6, 7, 9, 11, and 12 recite conventional analyzing,
updating, storing, and processing of licensing data and game play, which
advise one to apply generic functions to get to these results. The limitations,
thus, recite advice for providing interaction access between users to a game
after one user purchases a sublicense and distributes it to the second user and
then determining the one user is sublicensed after that user requests
Appeal 2018-006020
Application 13/620,096

13

interaction. To advocate providing interaction access between users to a
game after one user purchases a sublicense and distributes it to the second
user and then determining the one user is sublicensed after that user requests
interaction is conceptual advice for results desired and not technological
operations.
The Specification at paragraph 2 describes the invention as relating to
creating software applications that allow multiple users to interact. Thus, all
this intrinsic evidence shows that claim 1 is directed to routing data
representing a license, i.e. license routing.
This in turn is an example of managing personal behavior or
relationships or interactions between people as a certain method of
organizing human activity because routing licenses for interaction is a way
to manage personal behavior or relationships or interactions between people.
The concept of license routing by providing interaction access between users
to a game after one user purchases a sublicense and distributes it to the
second user and then determining the one user is sublicensed after that user
requests interaction is one idea for how to manage this interaction. The
steps recited in claim 1 are part of how this might conceptually be premised.
Our reviewing court has found claims to be directed to abstract ideas
when they recited similar subject matter. Interval Licensing LLC v. AOL,
Inc., 896 F.3d 1335, 1338 (Fed. Cir. 2018) (Managing control over content
usage).
Alternately, this is an example of concepts performed in the human
mind as mental processes because the steps of retrieving, analyzing,
updating, storing, and processing data mimic human thought processes of
observation, evaluation, judgment, and opinion, perhaps with paper and
Appeal 2018-006020
Application 13/620,096

14

pencil, where the data interpretation is perceptible only in the human mind.
See In re TLI Commc’ns LLC Pat. Litig., 823 F.3d 607, 611 (Fed. Cir.
2016); FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94
(Fed. Cir. 2016). Claim 1, unlike the claims found non-abstract in prior
cases, uses generic computer technology to perform data retrieval, analysis,
update, storage, and processing and does not recite an improvement to a
particular computer technology. See, e.g., McRO, Inc. v. Bandai Namco
Games Am. Inc., 837 F.3d 1299, 1314–15 (Fed. Cir. 2016) (finding claims
not abstract because they “focused on a specific asserted improvement in
computer animation”). As such, claim 1 is directed to retrieving, analyzing,
updating, storing, and processing data, and not a technological
implementation or application of that idea.
From this we conclude that claim 1 recites an abstract idea.
Specifically, claim 1 recites license routing by providing interaction access
between users to a game after one user purchases a sublicense and
distributes it to the second user and then determining the one user is
sublicensed after that user requests interaction, which is a way of managing
personal behavior or relationships or interactions between people identified
in the Revised Guidance and, thus, an abstract idea.
STEP 2A Prong 2
The next issue is whether claim 1 not only recites, but is more
precisely directed to this concept itself or whether it is instead directed to
some technological implementation or application of, or improvement to,
this concept i.e. integrated into a practical application.8

8 See, e.g., Alice, 573 U.S. at 223, discussing Diamond v. Diehr, 450 U.S.
175 (1981).
Appeal 2018-006020
Application 13/620,096

15

At the same time, we tread carefully in construing this
exclusionary principle lest it swallow all of patent law. At
some level, “all inventions . . . embody, use, reflect, rest upon,
or apply laws of nature, natural phenomena, or abstract ideas.”
Thus, an invention is not rendered ineligible for patent simply
because it involves an abstract concept. “[A]pplication[s]” of
such concepts “ ‘to a new and useful end,’ ” we have said,
remain eligible for patent protection. Accordingly, in applying
the § 101 exception, we must distinguish between patents that
claim the “ ‘buildin[g] block[s]’ ” of human ingenuity and those
that integrate the building blocks into something more.
Alice, 573 U.S. at 217 (citations omitted).
Taking the claim elements separately, the operation performed by the
computer at each step of the process is expressed purely in terms of results,
devoid of implementation details. Steps 2, 3, 5, 8, and 10 are pure data
gathering steps. Limitations describing the nature of the data do not alter
this. Steps 1, 4, 6, 7, 9, 11, and 12 recite generic computer processing
expressed in terms of results desired by any and all possible means and so
present no more than conceptual advice. All purported inventive aspects
reside in how the data is interpreted and the results desired, and not in how
the process physically enforces such a data interpretation or in how the
processing technologically achieves those results.
Viewed as a whole, Appellant’s claim 1 simply recites the concept of
license routing by providing interaction access between users to a game after
one user purchases a sublicense and distributes it to the second user and then
determining the one user is sublicensed after that user requests interaction as
performed by a generic computer. This is no more than conceptual advice
on the parameters for this concept and the generic computer processes
Appeal 2018-006020
Application 13/620,096

16

necessary to process those parameters, and do not recite any particular
implementation.
Claim 1 does not, for example, purport to improve the functioning of
the computer itself. Nor does it affect an improvement in any other
technology or technical field. The 18+ pages of Specification do not bulge
with disclosure, but only spell out different generic equipment9 and
parameters that might be applied using this concept and the particular steps
such conventional processing would entail based on the concept of license
routing by providing interaction access between users to a game after one
user purchases a sublicense and distributes it to the second user and then
determining the one user is sublicensed after that user requests interaction
under different scenarios. They do not describe any particular improvement
in the manner a computer functions. Instead, claim 1 at issue amounts to
nothing significantly more than an instruction to apply license routing by
providing interaction access between users to a game after one user
purchases a sublicense and distributes it to the second user and then
determining the one user is sublicensed after that user requests interaction
using some unspecified, generic computer. Under our precedents, that is not
enough to transform an abstract idea into a patent-eligible invention. See
Alice, 573 U.S. at 225–26.
None of the limitations reflect an improvement in the functioning of a
computer, or an improvement to other technology or technical field, applies
or uses a judicial exception to effect a particular treatment or prophylaxis for

9 The Specification describes a computer terminal, a personal digital
assistant (PDA), a wireless telephone, or various other user devices capable
of connecting to the network, and a general-purpose computer. Spec., paras.
12, 40.
Appeal 2018-006020
Application 13/620,096

17

a disease or medical condition, implements a judicial exception with, or uses
a judicial exception in conjunction with, a particular machine or manufacture
that is integral to the claim, effects a transformation or reduction of a
particular article to a different state or thing, or applies or uses the judicial
exception in some other meaningful way beyond generally linking the use of
the judicial exception to a particular technological environment, such that
the claim as a whole is more than a drafting effort designed to monopolize
the exception.
We conclude that claim 1 is directed to achieving the result of license
routing by advising one to provide interaction access between users to a
game after one user purchases a sublicense and distributes it to the second
user and then determining the one user is sublicensed after that user requests
interaction, as distinguished from a technological improvement for achieving
or applying that result. This amounts to managing personal behavior or
relationships or interactions between people, which fall within certain
methods of organizing human activity that constitute abstract ideas. The
claim does not integrate the judicial exception into a practical application.
Thus, claim 1 not only recites, but is directed to, an abstract idea.

STEP 2B
The next issue is whether claim 1 provides an inventive concept
because the additional elements recited in the claim provide significantly
more than the recited judicial exception.
The introduction of a computer into the claims does not generally alter
the analysis at Mayo step two.
Appeal 2018-006020
Application 13/620,096

18

the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea “while adding the words ‘apply it’” is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological environment.’”
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implemen[t]” an abstract idea
“on . . . a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the pre-emption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of “additional
featur[e]” that provides any “practical assurance that the
process is more than a drafting effort designed to monopolize
the [abstract idea] itself.”
Alice, 573 U.S. at 223–24 (citations omitted).
“[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea . . . on a
generic computer.” Alice, 573 U.S. at 225. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer for retrieving, analyzing, updating, storing, and processing data
amounts to electronic data query and retrieval—one of the most basic
functions of a computer. All of these computer functions are generic,
routine, conventional computer activities that are performed only for their
conventional uses. See Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d
1350, 1353 (Fed. Cir. 2016); see also In re Katz Interactive Call Processing
Pat. Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011) (“Absent a possible
narrower construction of the terms ‘processing,’ ‘receiving,’ and ‘storing,’ . .
. those functions can be achieved by any general purpose computer without
Appeal 2018-006020
Application 13/620,096

19

special programming”). None of these activities is used in some
unconventional manner nor do any produce some unexpected result. See
e.g., Spec. ¶¶ 37–42. Appellant does not contend they invented any of these
activities. In short, each step does no more than require a generic computer
to perform generic computer functions. As to the data operated upon, “even
if a process of collecting and analyzing information is ‘limited to particular
content’ or a particular ‘source,’ that limitation does not make the collection
and analysis other than abstract.” SAP Am., 898 F.3d at 1168.
Considered as an ordered combination, the computer components of
Appellant’s claim 1 add nothing that is not already present when the steps
are considered separately. See e.g., Spec. Figs. 1–4. The sequence of data
retrieval- analysis-update-storage-processing is equally generic and
conventional. See Ultramercial, 772 F.3d at 715 (sequence of receiving,
selecting, offering for exchange, display, allowing access, and receiving
payment recited an abstraction); Inventor Holdings, LLC v. Bed Bath &
Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017) (sequence of data
retrieval, analysis, modification, generation, display, and transmission);
Two-Way Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329,
1339 (Fed. Cir. 2017) (sequence of processing, routing, controlling, and
monitoring). The ordering of the steps is, therefore, ordinary and
conventional.
We conclude that claim 1 does not provide an inventive concept
because the additional elements recited in the claim do not provide
significantly more than the recited judicial exception.
Appeal 2018-006020
Application 13/620,096

20

REMAINING CLAIMS
Claim 1 is representative. The remaining method claims merely
describe process parameters. We conclude that the method claims at issue
are directed to a patent-ineligible concept itself, and not to the practical
application of that concept.
As to the structural claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long “warn[ed] . . . against” interpreting §
101“in ways that make patent eligibility ‘depend simply on the
draftsman’s art.’”
Alice, 573 U.S. at 226. As a corollary, the claims are not directed to any
particular machine.
LEGAL CONCLUSION
From these determinations we further determine that the claims do not
recite an improvement to the functioning of the computer itself or to any
other technology or technical field, a particular machine, a particular
transformation, or other meaningful limitations. From this we conclude the
claims are directed to the judicial exception of the abstract idea of certain
methods of organizing human activity as exemplified by the managing
personal behavior or relationships or interactions between people of license
routing by providing interaction access between users to a game after one
user purchases a sublicense and distributes it to the second user and then
determining the one user is sublicensed after that user requests interaction,
without significantly more.

Appeal 2018-006020
Application 13/620,096

21

CONCLUSIONS OF LAW
The rejection of claims 1–15, 17–30, 32, and 33 under 35 U.S.C.
§ 103(a) as unpatentable over McCaskey and Asayama is improper.
The rejection of claims 1–15, 17–30, 32, and 33 under 35 U.S.C.
§ 103(a) as unpatentable over McCaskey and Asayama, and Jung and
Snyder is improper.
A new ground of rejection is entered pursuant to 37 C.F.R. § 41.50(b).
Claims 1–15, 17–30, 32, and 33 are rejected under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more.
CONCLUSION
The rejection of claims 1–15, 17–30, 32, and 33 is reversed.
A new ground of rejection is entered pursuant to 37 C.F.R. § 41.50(b).
Claims 1–15, 17–30, 32, and 33 are rejected under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more.
In summary:
Claims
Rejected
35 U.S.C. § Basis  Affirmed Reversed New Ground
1–15, 17–30,
32, 33
103 McCaskey and
Asayama 
1–15, 17–30,
32, 33

1–15, 17–30,
32, 33
103 McCaskey,
Asayama,
Jung, and
Snyder 
1–15, 17–30,
32, 33

1–15, 17–30,
32, 33
101 Eligibility  1–15, 17–30,
32, 33
Overall
Outcome
1–15, 17–30,
32, 33
1–15, 17–30,
32, 33

Our Decision is not a final agency action.
Appeal 2018-006020
Application 13/620,096

22

This Decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new Evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the prosecution will be remanded to
the examiner. The new ground of rejection is binding upon the
examiner unless an amendment or new Evidence not previously
of Record is made which, in the opinion of the examiner,
overcomes the new ground of rejection designated in the
decision. Should the examiner reject the claims, appellant may
again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same Record. The request
for rehearing must address any new ground of rejection and
state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can
be found in the Manual of Patent Examining Procedure § 1214.01.

REVERSED
37 C.F.R. § 41.50(b)