Ex Parte King et alDownload PDFPatent Trials and Appeals BoardJul 8, 201914050862 - (D) (P.T.A.B. Jul. 8, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/050,862 10/10/2013 909 7590 07/10/2019 Pillsbury Winthrop Shaw Pittman, LLP PO Box 10500 McLean, VA 22102 FIRST NAMED INVENTOR Guy Phillip William King 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 034250-0437005 9416 EXAMINER ANDREI, RADU ART UNIT PAPER NUMBER 3682 NOTIFICATION DATE DELIVERY MODE 07/10/2019 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): docket_ip@pillsburylaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GUY PHILLIP WILLIAM KING and CLARK GUO Appeal 2018-004985 1 Application 14/050,8622 Technology Center 3600 Before HUBERT C. LORIN, NINA L. MEDLOCK, and MATTHEWS. MEYERS, Administrative Patent Judges. MEYERS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's Final Rejection of claims 30-46, 48, and 49, which constitute all the claims pending in this Application. We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM. 1 Our decision references Appellants' Appeal Brief ("Appeal Br.," filed December 21, 2017) and Reply Brief ("Reply Br.," filed April 9, 2018), and the Examiner's Answer ("Ans.," mailed February 8, 2018) and Final Office Action ("Final Act.," mailed April 20, 2017). 2 Appellants identify "RetailMeN ot, Inc." as the real party in interest. Appeal Br. 2. Appeal 2018-004985 Application 14/050,862 CLAIMED INVENTION Appellants' claims "relate generally to methods and systems for ranking information items for display" and more particularly to "display of information items on a website according to a ranking determined for each of the items based on feedback input received in relation to the items." Spec. ,-i 1. Claims 30, 48, and 49 are the independent claims on appeal. Claim 30, reproduced below with bracketed notations added, is illustrative of the claimed subject matter: 30. A method of ranking or categorizing coupons and other promotional offers distributed over the Internet, the method compnsmg: [ 1] obtaining data describing a plurality of promotional offers, at least some of the promotional offers including a discount offered by a merchant that is redeemable at a website of the merchant by entering a coupon code in a checkout page of the website of the merchant; [2] obtaining, for each of the plurality of promotional offers, a plurality of values from consumers assessing the respective promotional offer, the plurality of values each having a respective age indicative of a time at which a consumer provided an assessment of the respective promotional offer; [3] calculating, with a processor, for each of the plurality of the promotional offers, a score for the respective promotional offer based, at least in part, on the respective plurality of values and ages of the respective plurality of values, wherein a contribution of a value among the respective plurality of values toward the score diminishes with the age of the value; and [ 4] ranking or categorizing the plurality of offers based on the calculated scores. 2 Appeal 2018-004985 Application 14/050,862 REJECTIONS Claims 30-46, 48, and 49 are rejected under 35 U.S.C. § 101 as directed to a judicial exception without significantly more. Claims 30-34, 37-39, 41-44, 46, 48, and 49 are rejected under 35 U.S.C. § 103 as unpatentable over Kast et al. (US 2013/0066822 Al, pub. Mar. 14, 2013) ("Kast"), Siegel, Jr. et al. (US 2002/0032629 Al, pub. Mar. 14, 2002) ("Siegel"), and Li et al. (US 2008/0270231 Al, pub. Oct. 30, 2008) ("Li"). Claims 35 and 36 are rejected under 35 U.S.C. § 103 as unpatentable over Kast, Siegel, Li, and Yoshida et al. (US 2008/0256002 Al, pub. Oct. 16, 2008). Claim 40 is rejected under 35 U.S.C. § 103 as unpatentable over Kast, Siegel, Li, and Masuyama et al. (US 2006/0200395 Al, pub. Sept. 7, 2006) ("Masuyama"). Claim 45 is rejected under 35 U.S.C. § 103 as unpatentable over Kast, Siegel, Li, and Rapoport (US 2008/0313551 Al, pub. Dec. 18, 2008). ANALYSIS Patent-Ineligible Subject Matter Independent Claims 30, 48, and 49, and Dependent Claims 31--42 and 44- 46 Appellants argue claims 30-42, 44-46, 48, and 49 as a group (Appeal Br. 4-12; Reply Br. 2-7). We select independent claim 30 as representative. Claims 31-42, 44-46, 48, and 49 stand or fall with claim 30. See 37 C.F.R. § 41.37(c)(l)(iv). 3 Appeal 2018-004985 Application 14/050,862 Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a "new and useful process, machine, manufacture, or composition of matter." 35 U.S.C. § 101. However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit exceptions: "[l]aws of nature, natural phenomena, and abstract ideas" are not patentable. E.g., Alice Corp. v. CLS Bankint'l, 573 U.S. 208,216 (2014). In determining whether a claim falls within an excluded category, we are guided by the Supreme Court's two-step framework, described in Mayo and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework, we first determine what concept the claim is "directed to." See id. at 219 ("On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk."); see also Bilski v. Kappas, 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 (Gottschalkv. Benson, 409 U.S. 63, 67 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 191 (1981 )); "tanning, dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores" (id. at 183 n.7 (quoting Corning v. Burden, 56 U.S. 4 Appeal 2018-004985 Application 14/050,862 252, 267-68 (1853))); 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 products and not as an attempt to patent a mathematical formula."). Having said that, the Supreme Court also indicated that a claim "seeking patent protection for that formula in the abstract ... is not accorded the protection of our patent laws, ... and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment." Id. ( citing Benson and Flook); see, e.g., id. at 187 ("It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection."). If the claim is "directed to" an abstract idea, we tum to the second step of the Mayo/Alice framework, where "we must examine the elements of the claim to determine whether it contains an 'inventive concept' sufficient to 'transform' the claimed abstract idea into a patent-eligible application." Alice, 573 U.S. at 221 (quotation marks omitted). "A claim that recites an abstract idea must include 'additional features' to ensure 'that the [claim] is more than a drafting effort designed to monopolize the [ abstract idea]."' Id. (alterations in original) (quoting Mayo, 566 U.S. at 77). "[M]erely requir[ ing] generic computer implementation[] fail[ s] to transform that abstract idea into a patent-eligible invention." Id. 5 Appeal 2018-004985 Application 14/050,862 The PTO recently published revised guidance on the application of § 101. USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) ("2019 Revised Guidance"). Under that 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 activity such as a fundamental economic practice, or mental processes); and (2) additional elements that integrate the judicial exception into a practical application, i.e., that "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." See 2019 Revised Guidance, 84 Fed. Reg. at 53; see also MPEP §§ 2106.05(a)-(c), (e)-(h). 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: (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 2019 Revised Guidance. Appellants argue that the Examiner's rejection is in error because "the Examiner applied the wrong test and has not established a prim a facie case of patent [in]eligibility." Appeal Br. 6; see also Reply Br. 2-3. According to Appellants, the Examiner only determined that the claims include an abstract idea, and did not "analyze whether the claims are directed to an abstract idea." Id. Appellants' arguments are not persuasive. 6 Appeal 2018-004985 Application 14/050,862 In rejecting the pending claims under 35 U.S.C. § 101, the Examiner analyzed the claims using the Mayo/Alice two-step framework. See Final Act. 2-6, 17-29; see also Ans. 3-6. The Examiner determined that the claims are "directed towards a method for ranking information items for display." Final Act. 2. The Examiner also determined that the claimed "steps can be performed mentally or with pen and paper" (Final Act. 20; see also Ans. 4), which the Examiner considered to be an abstract idea. The Examiner also determined that claim 30 "includes an additional abstract idea" (Final Act. 3) inasmuch as the claimed calculation of a score is similar to the abstract idea identified in Flook ( 437 U.S. at 594). The Examiner further determined that independent claim 30 does not include additional elements or a combination of elements sufficient to transform the claim into a patent-eligible application of the abstract idea. See Final Act. 20-21; see also Ans. 3-4. The Examiner, thus, has followed the two-part framework specified by the Supreme Court in Mayo/Alice consistent with Office guidelines. In this regard, the Examiner has articulated the reasons for the rejection and has notified Appellants of the reasons for the rejection "together with such information and references as may be useful in judging of the propriety of continuing the prosecution of [the] application." 35 U.S.C. § 132. And we find that, in doing so, the Examiner set forth a prima facie case of subject matter ineligibility. See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011); Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990) (Section 132 "is violated when a rejection is so uninformative that it prevents the applicant from recognizing and seeking to counter the grounds for rejection."). 7 Appeal 2018-004985 Application 14/050,862 When viewed through the lens of the 2019 Revised Guidance, the Examiner's analysis depicts the claimed subject matter as one of the ineligible "[ m Jental processes" that include "concepts performed in the human mind (including an observation, evaluation, judgment, opinion)," and, additionally, "[ m Jathematical concepts" such as "mathematical relationships, mathematical formulas or equations, mathematical calculations," and thus an abstract idea. See 2019 Revised Guidance, 84 Fed. Reg. at 52; see also Flook, 437 U.S. at 595 ("If a claim is directed essentially to a method of calculating, using a mathematical formula, even if the solution is for a specific purpose, the claimed method is nonstatutory." (internal citations omitted)). In response to the Examiner's determination, Appellants argue that "the Examiner misidentifies the subject matter to which the claims are directed because the alleged abstract idea fails to account for the character of the claims as a whole," and "[t]he alleged abstract idea (i.e., ranking items for display) does not reflect the problem solved or solution to that problem." Appeal Br. 6; see also Reply Br. 3-4. We cannot agree. Under the first prong of step 2A of the 2019 Revised Guidance, we first determine if the claims recite an abstract idea. In this regard, we note that the Specification is titled "METHOD AND SYSTEM FOR RANKING INFORMATION ITEMS FOR DISPLAY," and states that the disclosure relates to "methods and systems for ranking information items for display," and more particularly to "display of information items on a website according to a ranking determined for each of the items based on feedback input received in relation to the items." Spec. ,-J 1. The Background section of the Specification explains that "[i]n displaying information items on a 8 Appeal 2018-004985 Application 14/050,862 website, users navigating to the site may enjoy a better user experience if they are able to view information items for which the reliability or efficacy has had some previous endorsement, either in the positive or negative sense." Id. ,i 4. According to the Specification, "[t]he ranking score may be based on a product of the score of each information item with the number of votes received for that information item," "recency may be determined according to a time elapsed since the vote was received," and "recency may be determined according to a relative chronological order in which votes are received." Id. ,i 6. The Specification further describes that the score may include a "decay effect" based on a value called "Ad}Factor" which "is a constant chosen by administrators of server system 110 depending on how strong the decay effect is supposed to be." Id. ,i,i 59-60. According to the Specification, "Ad}Factor is applied to the weighting formula such that lower values of this variable imply a stronger decay effect, which means that votes from the past have relatively less importance." Id. ,i 60. Consistent with this description, independent claim 30 recites "[a] method of ranking or categorizing coupons and other promotional offers distributed over the Internet" including steps for "obtaining data describing a plurality of promotional offers," "obtaining, for each of the plurality of promotional offers, a plurality of values from consumers assessing the respective promotional offer," "calculating, with a processor, for each of the plurality of the promotional offers, a score for the respective promotional offer," and "ranking or categorizing the plurality of offers based on the calculated scores." Claim 30 further specifies that the calculating step is "based, at least in part, on the respective plurality of values and ages of the respective plurality of values, wherein a contribution of a value among the 9 Appeal 2018-004985 Application 14/050,862 respective plurality of values toward the score diminishes with the age of the value." Upon reviewing the Specification and the claim as whole, as summarized above, we agree with the Examiner that independent claim 30 is directed broadly to "ranking information items for display." Here, independent claim 30 receives information about items (i.e., obtaining data describing a plurality of promotional offers (limitation [ 1]) ), receives additional information about the items (i.e., obtaining a plurality of values (limitation [2])), performs a mathematical calculation (i.e., calculating a score for the promotional offers (limitation [3])), and then ranks or categorizes the items based on the calculation (limitation [ 4]). Understood in light of the Specification, independent claim 30 is directed to ranking information items by collecting and analyzing information (cf Ans. 4), and when viewed through the lens of the 2019 Revised Guidance, directed to ineligible subject matter which may be categorized as one of the "[ c Jertain methods of organizing human activity" and"[ m Jental processes" that include "concepts performed in the human mind (including an observation, evaluation, judgment, opinion)," and thus an abstract idea. See 2019 Revised Guidance, 84 Fed. Reg. at 52. We also note that the present claims are similar to certain methods of organizing human activities that our reviewing courts have found patent ineligible, such as "unpatentable mental processes" including "steps [that] can be performed in the human mind, or by a human using a pen and paper" in CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372-73 (Fed. Cir. 2011), "using an electronic device to obtain clinical trial data that would otherwise be collected by pen-and-paper diary, and analyzing the data to decide 10 Appeal 2018-004985 Application 14/050,862 whether to prompt action" in eResearchTechnology, Inc. v. CRF, Inc., 186 F.Supp.3d 463,473 (W.D.Pa. 2016), aff'd, 681 F. App'x. 964 (mem) (Fed. Cir. 2017) (citing OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1361-62 (Fed. Cir. 2015), and the concept of collecting information, analyzing it, and displaying certain results of the collection and analysis in Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016). We also agree with the Examiner that calculating a score for information items (promotional offers) may be categorized as "[ m Jathematical concepts" that include "mathematical relationships, mathematical formulas or equations, mathematical calculations." See 2019 Revised Guidance, 84 Fed. Reg. at 52. See also, e.g., Bilski, 561 U.S. at 611 ("The concept of hedging ... reduced to a mathematical formula ... is an unpatentable abstract idea[.]"); Diehr, 450 U.S. at 191 ("A mathematical formula as such is not accorded the protection of our patent laws") ( citing Benson, 409 U.S. 63); Flook, 437 U.S. at 594 ("[T]he discovery of [a mathematical formula] cannot support a patent unless there is some other inventive concept in its application."); Benson, 409 U.S. at 71-72 ( concluding that permitting a patent on the claimed invention "would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself'); Mackay Radio & Telegraph Co. v. Radio Corp. of Am., 306 U.S. 86, 94 (1939) ("[A] scientific truth, or the mathematical expression of it, is not patentable invention[.]"); SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018) (holding that claims to a "series of mathematical calculations based on selected information" are directed to abstract ideas); Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1350 (Fed. Cir. 2014) (holding that claims to a "process of 11 Appeal 2018-004985 Application 14/050,862 organizing information through mathematical correlations" are directed to an abstract idea); Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1280 (Fed. Cir. 2012) (identifying the concept of "managing a stable value protected life insurance policy by performing calculations and manipulating the results" as an abstract idea). Having concluded that claim 30 recites a judicial exception, i.e., an abstract idea, we tum to the second prong of step 2A of the 2019 Revised Guidance and determine whether the claim integrates the recited judicial exception into a practical application. Here we look to see if, for example, (i) any additional elements of the claim reflects an improvement in the functioning of a computer or to another technological field, (ii) an application of the judicial exception with, or by use of, a particular machine, (iii) a transformation or reduction of a particular article to a different state or thing, or (iv) a use of the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment. See 2019 Revised Guidance, 84 Fed. Reg. at 55; see also MPEP § 2106.05(a)-(c), (e)-(h). We find no indication in the Specification, nor do Appellants direct us to any indication, that the steps recited in independent claim 30 invoke any assertedly inventive programming, require any specialized computer hardware or other inventive computer components, i.e., a particular machine, or effect a transformation or reduction of a particular article to a different state or thing. Nor do we find anything of record, short of attorney argument, that attributes any improvement in computer technology and/or functionality to the claimed invention or that otherwise indicates that the claimed invention "appl[ies ], rel[ies] on, or us[ es] the judicial exception in a 12 Appeal 2018-004985 Application 14/050,862 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." See 2019 Revised Guidance, 84 Fed. Reg. at 55. Appellants argue that "the claims do not recite a process that people routinely have done in their mind" (Appeal Br. 9). See also id. at 10 ("These are not historically mental steps."). Appellants' argument is not persuasive of Examiner error because the question is not whether the claims encompass mental steps that have "routinely" or "historically" been performed in the human mind. See Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016) ("[W]ith the exception of generic computer- implemented steps, there is nothing in the claims themselves that foreclose them from being performed by a human, mentally or with pen and paper."); Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d. 1314, 1324 (Fed. Cir. 2016) (holding that computer-implemented method for "anonymous loan shopping" was an abstract idea because it could be "performed by humans without a computer"); Versata Dev. Grp. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) ("Courts have examined claims that required the use of a computer and still found that the underlying, patent-ineligible invention could be performed via pen and paper or in a person's mind."). Appellants have offered no persuasive argument or technical reasoning to refute the Examiner's position that the claimed steps can be performed mentally or with pen and paper. Final Act. 20. We also find no parallel between claim 30 and the claim at issue in McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016) (see Appeal Br. 10-12). Appellants assert that like the claims in McRO, independent claim 30 is patent-eligible because it recites "rules for 13 Appeal 2018-004985 Application 14/050,862 determining a score that are more specific than the rules that provided patent eligibility in McRO." Id. at 10. To support its argument, Appellants assert that "[t]he rules are designed to improve upon server systems processing 'a large number of promotional offers,' and for each of those offers, potentially processing timestamped data reflecting many respective user assessments." Id. at 11 (citing Spec. ,i,i 25, 27, 67). The Federal Circuit premised its determination that the claims in McRO were patent-eligible, not merely on the specificity of the claimed animation scheme, but rather on the fact that the claims, when considered as a whole, were directed to a technological improvement over the existing, manual 3-D animation techniques and used limited rules in a process specifically designed to achieve an improved technological result in conventional industry practice. We are not persuaded that a comparable situation is presented here. As our reviewing court has made clear, "relying on a computer to perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible." OIP Techs., 788 F.3d at 1363. We further note that claim 30 does not call for performing the method on "a large number of promotional offers," and Appellants' argument in that regard is not commensurate with the scope of the claim. See Accenture Glob. Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1345 (Fed. Cir. 2013) ("[T]he complexity of the implementing software or the level of detail in the specification does not transform a claim reciting only an abstract concept into a patent-eligible system or method."); see also Intellectual Ventures, 838 F.3d at 1322 ("The district court erred in relying on technological details set forth in the patent's specification and not set forth in the claims to find an inventive concept" ( citing Accenture, 728 F .3d 14 Appeal 2018-004985 Application 14/050,862 at 1345; Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat. Ass 'n, 116 F.3d 1343, 1346 (Fed. Cir. 2014))). We agree with the Examiner that the additional limitations of "calculating, with a processor ... " (Ans. 6) simply call for a generic computer to perform the claimed operations using generic computer functions. Cf Spec. ,-J,-J 20-28. Moreover, Appellants have not shown how the claimed subject matter is rooted in technology given that the Specification describes only the use of generic computer equipment used in a routine, conventional, and generic manner. In this regard, we note that the Specification identifies that "[ s ]ystem 100 comprises a server system 110 and a client computing device 120 in communication with each other over a network 115, such as the Internet" (Spec. ,-J 21 ), "[ c ]lient computing device 120 may comprise a desktop, mobile or handheld computing device having at least one processor ( e.g. CPU 206), one or more forms of memory 202, 204, an operating system 122 and a user interface" (id. ,-i 22), and "[s]erver system 110 comprises at least one processing device, and may comprise multiple processing devices operating in cooperation and/or parallel to operate web server functions 128 (e.g. using a hypertext transfer protocol daemon (HTTPD)), data processing functions and data storage and retrieval functions (e.g. using structured query language (SQL) support 132) in conjunction with database 130." Id. ,-i 26. Appellants further argue that the claims "avoid pre-empting all methods of performing the abstract idea with a computer" (Appeal Br. 12). However, Appellants' preemption argument does not alter our§ 101 analysis. Preemption concerns are fully addressed and made moot where a 15 Appeal 2018-004985 Application 14/050,862 patent's claims are deemed to disclose patent-ineligible subject matter under the two-part framework described in Mayo and Alice. Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). "While preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility." Id. Turning to Step 2B of the 2019 Revised Guidance, we determine whether the additional elements (1) add a specific limitation or combination of limitations that is not well-understood, routine, and conventional activity in the field, which is indicative that an inventive concept may be present or (2) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, which is indicative that an inventive concept may not be present. See 2019 Revised Guidance, 84 Fed. Reg. at 56. Appellants argue that the independent claims "add significantly more to the alleged abstract idea." Appeal Br. 10 (emphasis omitted). However, other than merely reproducing portions of independent claim 30 (see id. at 10-12), Appellants provide no further argument, such as how the elements are arranged in a non-generic or unconventional manner such that it is a technical improvement over prior art ways of determining "user assessments of promotional offers." Id. at 11; see BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1351 (Fed. Cir. 2016). We agree with the Examiner that the claims do not include a specific limitation or combination of limitations that amounts to an inventive concept. Appellants' other arguments, including those directed to now- superseded USPTO guidance, have been considered but are not persuasive of error. See 2019 Guidance, 84 Fed. Reg. at 51 ("Eligibility-related 16 Appeal 2018-004985 Application 14/050,862 guidance issued prior to the Ninth Edition, R-08.2017 of the MPEP (published Jan. 2018) should not be relied upon."). We are not persuaded, on the present record, that the Examiner erred in rejecting independent claim 30 under 35 U.S.C. § 101. Therefore, we sustain the Examiner's rejection of claim 30, and claims 31-42, 44-46, 48, and 49, which fall with independent claim 30. Dependent Claim 43 Dependent claim 43 depends from claim 30 and further recites "wherein calculating, for each of the plurality of the promotional offers, a score comprises: performing steps for calculating a score." Appeal Br. 26 (Claims Appendix). Appellants contend (id. at 12; see also Reply Br. 7), and we agree, that the phrase "steps for calculating" invokes 35 U.S.C. § 112, sixth paragraph. Appellants further contend, and we agree, that the corresponding structure in the Specification is an algorithm performed by ranking module 154.3 According to Appellants, ranking module 154 calculates a score using the following formulas described at paragraphs 59 through 61 and reproduced below: 3 See EON Corp. IP Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616, 621 (Fed. Cir. 2015) ("It is well-established that the corresponding structure for a function performed by a software algorithm is the algorithm itself.") (citing WMS Gaming, Inc. v. Int'! Game Tech., 184 F.3d 1339, 1348-49 (Fed. Cir. 1999)). 17 Appeal 2018-004985 Application 14/050,862 l fVelght(f).') is the weight as,o;::igned to vote f for infrm-n.at.ion itrn:n k, Age(l,k) is an ageing function of vote i for infiwnu.ttion item t and !10 depending on hovv strong the decay i.~ffoct is supposed to be. A,tfFactar is exactly the :same for all 'votes in the system. ). .. -: . '",·> .. ,·· ---· 1 ;~) .? .. , .. , .,(. ,·.· '·. *. f.· .. , ',' \-KUh·&(H ,, (k} ---- - ,,. H t.t~flP t. k) I ttlw., (1. k) . ' A(k) ·tr· ,.. \ . .. ·.. . . ,\' A(k) .:::::; Li'Ve(t;ht(i~k) fVeight(i):) is the v.:·cight assigned to vote i for infi)rnrntion itcrn k.. as computed in step 525, Value(l,k) is an assigned value of vote i for infbrmation item k This rnay he equal to 1 if the vote is positive~ and - J if the vote is negative. ';\l(k) is the niunbcr nf vntcs received fbr infi.1nnatkm item k. Appellants seemingly take the position that the phrase "steps for calculating a score" should be interpreted as requiring a ranking module that performs all of the mathematical calculations reproduced above. However, we note that the Specification describes these calculations in exemplary terms. As to the Weight formula reproduced above, the Specification 18 Appeal 2018-004985 Application 14/050,862 discloses, for example, that "the value of each vote may be weighted using the following formula." Spec.,i 59 ( emphasis added). We need not decide the propriety of Appellants' proposed claim interpretation in order to resolve the issue before us on appeal. More specifically, we need not decide precisely which mathematical calculations disclosed in the Specification correspond to the phrase "steps for calculating." This is so because, even if we agree with Appellants' position, claim 43 further limits claim 30 only in that it adds more specific mathematical calculations, i.e., the corresponding structure is a set of mathematical algorithms. To the extent Appellants argue that claim 43 is patent-eligible because it recites "more limited rules" (Appeal Br. 13) - in other words, a more "specific" calculation - we note that a specific abstract idea is still an abstract idea. Here, we note that "cases have not distinguished among different laws of nature according to whether or not the principles they embody are sufficiently narrow." Mayo, 566 U.S. at 88-89 (citing Flook, 437 U.S. 584) (holding a narrow mathematical formula unpatentable)); see also, e.g., Intellectual Ventures, 838 F.3d at 1321 ("A narrow claim directed to an abstract idea, however, is not necessarily patent- eligible"); BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1287 (Fed. Cir. 2018) ("[A] claim is not patent eligible merely because it applies an abstract idea in a narrow way."). Also, as the Court remarked in Flook, "[i]f a claim is directed essentially to a method of calculating, using a mathematical formula, even if the solution is for a specific purpose, the claimed method is nonstatutory." Flook, 437 U.S. at 595 (internal quotations omitted). 19 Appeal 2018-004985 Application 14/050,862 In view of the foregoing, we sustain the Examiner's rejection under 35 U.S.C. § 101 of claim 43. Obviousness We are persuaded by Appellants' argument that the Examiner erred in rejecting independent claims 30, 48, and 49 under 35 U.S.C. § 103(a) because Kast, upon which the Examiner relies, does not disclose a calculation "wherein a contribution of a value among the respective plurality of values toward the score diminishes with the age of the value," as recited by limitation [3] of independent claim 30, and similarly recited by independent claims 48 and 49. Appeal Br. 14-17; Reply Br. 7-9. The Examiner maintains the rejection is proper, and cites paragraphs 153-156 of Kast as disclosing the argued limitation. See Final Act. 7; Ans. 6-7. In particular, the Examiner focuses on the disclosure in paragraph 155 that "the first person to digg a story that is ultimately promoted may receive a higher increase to his user reputation score than the fifth digger, who also receives an increase to his score." Ans. 7. The Examiner states that "[t]his reads on a contribution which diminishes with the age of the value - the fifth digger comes in later than the first digger." Id. We have reviewed the cited portions of Kast, and agree with Appellants that none of the cited portions of Kast discloses or suggests the argued limitation. Kast is directed to "an environment for collecting and managing content contributions" (Kast ,-J 30). Although we agree with the Examiner that Kast discloses calculating user reputation scores based on a time that the user "diggs" a story (see, e.g., id. ,-i 154), we cannot agree with the Examiner that Kast's "a contribution of a value" of digging "toward the 20 Appeal 2018-004985 Application 14/050,862 score diminishes with the age of the value," as required by limitation [3] of independent claim 30, and similarly required by independent claims 48 and 49. The first digger in Kast diggs the story earlier in time, and thus is the oldest (least recent) digger. However, Kast discloses that "the first person to digg a story that is ultimately promoted may receive a higher increase to his user reputation score than the fifth digger." Kast ,i 15 5 ( emphasis added). Thus, the contribution to the user's reputation score increases with age of the digging event, which is the opposite of the claimed relationship. As such, we agree with Appellants that the Examiner has not shown how Kast discloses the argued limitation. In view of the foregoing, we do not sustain the Examiner's rejection of independent claims 30, 48, and 49 under 35 U.S.C. § 103(a). For the same reasons, we also do not sustain the Examiner's rejection of claims 31- 34, 37-39, 41-44, and 46 which depend therefrom. On the same basis, we do not sustain the obviousness rejections of dependent claims 35, 36, 40, and 45, as the additional references are not cited to remedy the aforementioned deficiency. DECISION The Examiner's rejection of claims 30-46, 48, and 49 under 35 U.S.C. § 101 is affirmed. The Examiner's rejections of claims 30-46, 48, and 49 under 35 U.S.C. § 103(a) are reversed. 21 Appeal 2018-004985 Application 14/050,862 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § l .136(a)(l )(iv). AFFIRMED 22 Copy with citationCopy as parenthetical citation