Fisher, Michelle

Patent Trials and Appeals Board

Jun 16, 2020

2019004734 (P.T.A.B. Jun. 16, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/867,328 09/28/2015 Michelle Fisher BLZMP0010C2 7424
12120 7590 06/16/2020
Michelle Fisher
2930 Domingo Ave
Suite 123
Berkeley, CA 94705
EXAMINER
CHAKRAVARTI, ARUNAVA
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
06/16/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
mfisher@blazemobile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MICHELLE FISHER
____________

Appeal 2019-004734
Application 14/867,328
Technology Center 3600
____________

Before JAMES B. ARPIN, MIRIAM L. QUINN, and ADAM J. PYONIN,
Administrative Patent Judges.

ARPIN, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Pursuant to 37 C.F.R. § 41.52, Appellant1 filed a Request for
Rehearing (“Req. Reh’g”), dated May 8, 2020,2 accompanied by a Statement
of Delay Due to COVID-19 Outbreak (Form PTO/SB/449), seeking
reconsideration of our Decision on Appeal mailed February 28, 2020
(“Dec.”), in which we reversed the Examiner’s rejections of claims 1–30
under 35 U.S.C. § 103(a) as rendered obvious over the teachings of Barnes,

1 “Appellant” here refers to “applicant” as defined in 37 C.F.R. § 1.42.
Appellant identifies the real party-in-interest as Michelle Fisher. Appeal
Br. 3.
2 Appellant filed Rehearing Requests on April 27, 2020, and May 6, 2020,
which are superseded by the Rehearing Request filed May 8, 2020. Req.
Reh’g 1.
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alone or in combination with the teachings of Pond3 (Final Act. 6–134), but
we affirmed the Examiner’s rejection of claims 1–30 under 35 U.S.C. § 101
as directed to patent ineligible subject matter without significantly more
(Dec. 4–22). For the reasons given below, we deny Appellant’s request for
rehearing.
STATEMENT OF THE CASE
Appellant’s claimed methods, systems, and computer-readable media
“relate[] to data communications and wireless devices.” Spec. ¶ 2. As noted
above, claims 1–30 are pending. Claims 1, 10, and 19 are independent.
Appeal Br. 63 (claim 1), 64–65 (claim 10), 66 (claim 19) (Claims App.).
Claims 2–9 and 21–25 depend directly or indirectly from claim 1, claims
11–18 and 26–30 depend directly or indirectly from claim 10, and claim 20
depends directly from claim 19. Id. at 63–68.
Claim 10 recites “[a] remote management server for sending a digital
artifact, comprising: a remote management server transceiver . . . ; a remote
management server processor . . . ; and a remote management server
transceiver,” which perform functions, substantially as recited in claim 1.
Id. at 63, 64–65 (emphasis added). Claim 19 recites “[a] non-transitory

3 In our Decision, we provide a table identifying the references upon which
the Examiner relies. Dec. 3.
4 In this Decision, we again refer to Appellant’s Supplemental Appeal Brief
(“Appeal Br.,” filed January 21, 2019) and Reply Brief (“Reply Br.,” filed
May 24, 2019); the Final Office Action (“Final Act.,” mailed September 27,
2018), the Advisory Action (“Adv. Act.,” mailed November 26, 2018), and
the Examiner's Answer (“Ans.,” mailed March 28, 2019); and the
Specification (“Spec.,” filed September 28, 2015). Rather than repeat the
Examiner's findings and determinations and Appellant's contentions in their
entirety, we refer to these documents and to the Request for Rehearing.
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computer readable medium for sending a digital artifact, comprising:
computer code for” performing functions, substantially as recited in claim 1.
Id. at 64, 66 (emphasis added). The Examiner relies on the same findings
and reasoning in rejecting claims 2–9, 11–18, and 20–30 (Final Act. 2), and
Appellant contests the rejection of claims 22–29 separately from the
independent claims (Req. Reh’g 26–29; see Appeal Br. 50).
Claim 1, with disputed limitations emphasized, is representative.
1. A method for sending a digital artifact, comprising:
receiving at a remote management server a request for the
digital artifact from a non-browser based mobile application,
wherein the request is automatically triggered when a user
browses a specific non-browser based mobile application
generated screen, the non-browser based mobile application is
not browser based with a graphical user interface and is
preinstalled or downloaded and installed on a mobile device, the
mobile device comprising a mobile device display, a mobile
device processor, a mobile device radio interface, and a mobile
device wireless fidelity (Wi-Fi) interface, the specific non-
browser based mobile application generated screen corresponds
to a specific screen, scene, or area of the non-browser based
mobile application;
selecting, by the remote management server, the digital
artifact based on one or more targeting parameters stored at the
remote management server, and
sending, by the remote management server, the digital
artifact from the remote management server to the non-browser
based mobile application for a display within the specific non-
browser based mobile application generated screen.
Id. at 63 (emphases added).
ANALYSIS
“The panel . . . reviews the . . . rejection for error based upon the
issues identified by appellant, and in light of the arguments and evidence
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produced thereon.” Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential). Pursuant to 37 C.F.R. § 41.50(a)(1), “[t]he Board, in its
decision, may affirm or reverse the decision of the examiner in whole or in
part on the grounds and on the claims specified by the examiner.”
(Emphasis added.) Under 37 C.F.R. § 41.52(a)(1),
The request for rehearing must state with particularity the
points believed to have been misapprehended or overlooked by
the Board. Arguments not raised, and Evidence not previously
relied upon, pursuant to §§ 41.37, 41.41, or 41.47 are not
permitted in the request for rehearing except as permitted by
paragraphs (a)(2) through (a)(4) of this section.
(Emphasis added.)
Appellant contends that we misapprehended or overlooked
contentions or evidence, or both, presented in Appellant’s briefing in our
determination that the claims are directed to an abstract idea without
significantly more. Dec. 4–22. Appellant does not contend that we
misapprehended or overlooked contentions or evidence, or both, presented in
Appellant’s briefing in our determination that the claims are directed to
recognized statutory categories (Step 1) or that the claims recite an abstract
idea (Step 2A, Prong One). Instead, Appellant requests rehearing of our
Decision for two reasons. Req. Reh’g 2–41. First, Appellant contends we
misapprehended or overlooked the elements of the claims, which integrate
the identified abstract idea into a practical application (Step 2A, Prong Two).
Id. at 2–35. Second, Appellant contends that we misapprehended or
overlooked deficiencies in the Examiner’s findings or the Specification’s
description of elements in determining that the additional elements recited in
the claims are well-understood, conventional, and routine (Step 2B). Id. at
36–41.
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With regard to Appellant’s first reason, Appellant identifies four
instances in which we allegedly misapprehended or overlooked Appellant’s
contentions or evidence. First, Appellant contends that we misapprehended
or overlooked differences between browser and non-browser applications.
Id. at 2–8. Second, Appellant contends that we misapprehended or
overlooked the inherent recitation of “relevant digital artifacts” in
independent claims 1, 10, and 19. Id. at 9–27. Third, Appellant contends
that we misapprehended or overlooked improvements to computer
technology recited in dependent claims 22–29. Id. at 27–29, 43–59; see
Appeal Br. 50. Fourth, Appellant contends that we misapprehended or
overlooked evidence that the independent claims recite non-conventional
elements and an ordered combination of non-conventional elements. Req.
Reh’g 29–36. For the reasons below, we are not persuaded that we
misapprehended or overlooked Appellant’s contentions or evidence, and we
deny the request for rehearing.
A. Appellant’s First Reason: Step 2A, Prong Two, Analysis
1. Support for Non-Browser Based Application With
Graphical User Interface
a. “With a Graphical User Interface”
In the Reply Brief, Appellant contends that the claims are limited to a
“non-browser based application [that] is a mobile operating system platform
non-browser based application with a graphical user interface that is
preinstalled or downloaded and installed on the mobile communications
device, wherein the graphical user interface includes a graphical icon.”
Reply Br. 23. Appellant demonstrates that the non-browser application is
disclosed in patent publications incorporated by reference into the
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Specification. Req. Reh’g 3–4. Thus, Appellant contends that the claims
implement or use the identified abstract idea “in conjunction with, a
particular machine or manufacture that is integral to the claim.” Id. (citing
MPEP § 2106.05(b)).
In determining patent eligibility, we focus on the language of the
claims. In re Morris, 127 F.3d 1048, 1053 (Fed. Cir. 1997) (“[T]he PTO
applies to the verbiage of the proposed claims the broadest reasonable
meaning of the words in their ordinary usage as they would be understood
by one of ordinary skill in the art, taking into account whatever
enlightenment by way of definitions or otherwise that may be afforded by
the written description contained in the applicant’s specification.”). “It is the
applicants’ burden to precisely define the invention, not the USPTO’s.” Id.
at 1056.
In our Decision, we noted, “the pending claims do not recite, ‘the
graphical user interface includes a graphical icon.’” Dec. 15 (quoting Appeal
Br. 63–68). Instead, claim 1 recites, “the non-browser based mobile
application is not browser based with a graphical user interface and is
preinstalled or downloaded and installed on a mobile device.” Appeal
Br. 63 (Claim App.) (emphasis added). Independent claims 10 and 19
include corresponding limitations. The phrase “graphical user interface”
only appears in pending claims 1, 10, and 19, and, in each of those claims,
Appellant recites, “the non-browser based mobile application is not browser
based with a graphical user interface.” Id. (emphases added). Because
claim terms generally are used consistently throughout a patent, the usage of
a term, in one claim may illuminate the meaning of the same term in other
claims. See Rexnord Corp. v. Laitram Corp., 274 F.3d 1336, 1342 (Fed. Cir.
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2001).
Appellant shows where the incorporated publications may disclose a
non-browser application with a graphical user interface including a graphical
icon. Req. Reh’g 5–8. Nevertheless, we do not read limitations from the
Specification into the claims, and, as we understand it, the recited non-
browser application is not limited to ones having “a mobile operating system
platform non-browser based application with a graphical user interface that
is preinstalled or downloaded and installed on the mobile communications
device, wherein the graphical user interface includes a graphical icon.”
Reply Br. 23. Therefore, we are not persuaded we misapprehended or
overlooked contentions or evidence presented in Appellant’s briefing that
the non-browser based application must have a graphical user interface
graphical including a graphical icon, and that the presence of a graphical
user interface graphical including a graphical icon in the non-browser
application implements or claimed invention uses the recited abstract idea in
conjunction with, a particular machine or manufacture that is integral to the
claim.
b. “Non-Browser Based Application”
In our Decision, we determined,
the Specification describes the recited methods as applying to
applications broadly and does not differentiate between browser
and non-browser applications in the functioning of the disclosed
methods. See Spec. ¶ 28 (“In operation, a user opens an
application ([e.g.], a web-browser) on a computing device (a
mobile communication device). The application queries the
management Server for an artifact, providing pageId (scene
identifier) and userId, where the pageId can represent a specific
screen, scene or real-estate property. The query can be
initiated/triggered via following mechanisms, but not limited to:
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Browsing a particular screen/web page that specify unique real-
estate; leveraging proximity services (NFC/Contactless, etc.)
that specify unique code or identifier; geographic location (LBS,
Bluetooth, etc.).”); see also id. ¶¶ 4–6 (discussing "applications"
generally).
Dec. 15 (emphasis added).
Regarding the disclosure of “screen/web page,” Appellant contends,
“[t]hose skilled in the art know that, ‘Slashes are commonly used to signify
alternatives as in ‘and/or’ and ‘his/her,’ and they can also appear in place of
the word ‘and,’ as in ‘She’s a writer/producer/actor.’ Source:
https://www.dictionary.com/e/slash/”. Req. Reh’g 2. This interpretation
was not presented in Appellant’s briefing, but, even if accepted, it does not
alter our analysis. If we interpret a “slash” as “and/or,” the Specification
discloses, “browsing” a screen, a web page, or a screen and a web page.
We are not persuaded that Appellant’s recitation of a non-browser
based application integrates the claimed methods, servers, or computer-
readable media into a practical application of the abstract idea for two
reasons. First, although browser and non-browser applications may be
different embodiments, browsing screens and web pages are disclosed as
alternatives. Moreover, neither the claims nor the Specification
differentiates between browser and non-browser applications in the
functioning of the disclosed methods. See Spec. ¶ 28 (“In operation, a user
opens an application (e.g, a web-browser) on a computing device (a mobile
communication device).” (emphasis added)). Second, independent claim 1
recites,
receiving at a remote management server a request for the digital
artifact from a non-browser based mobile application, wherein
the request is automatically triggered when a user browses a
specific non-browser based mobile application generated
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screen, . . . the specific non-browser based mobile application
generated screen corresponds to a specific screen, scene, or area
of the non-browser based mobile application; . . . and
sending, by the remote management server, the digital artifact
from the remote management server to the non-browser based
mobile application for a display within the specific non-browser
based mobile application generated screen.
Appeal Br. 63 (Claims App.). Each of the remaining independent claims
contain limitations commensurate in scope. Although a browser based
application calls up a web page and a non-browser based application
generates a screen, the claims merely describe the screen in terms of where
the request is triggered from, what content appears on the screen, and where
the digital artifacts are displayed. Thus, in the context of these claims, the
screen is merely an interface through which the user triggers performance of
or receives the results from the method steps. On this record, we are not
persuaded that we misapprehended or overlooked contentions or evidence
demonstrating the use of a non-browser application, as opposed to a browser
application, implements or uses the recited abstract idea in conjunction with,
a particular machine or manufacture that is integral to the claim.
2. “Relevant” Digital Artifacts
In our Decision, we determined, “although the Specification recites
that ‘relevant’ digital artifacts may be identified and distributed, the claims
do not recite that only ‘relevant’ digital artifacts are requested, selected, or
sent/or display.” Dec. 16; see Req. Reh’g 9. Appellant disagrees.
Initially, we note only independent claims 1, 10, and 19 recite “digital
artifacts,” but none of those claims recites “relevant digital artifacts.” E.g.,
Appeal Br. 63 (Claims App.). As noted above, we give the recited claim
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terms their broadest reasonable interpretation “taking into account whatever
enlightenment by way of definitions or otherwise that may be afforded by
the written description contained in the applicant’s specification.” Morris,
127 F.3d at 1053. Here, the Specification describes “artifacts” as “one or
more of an advertisement, receipt, ticket, coupon, media, or content” (Spec.
¶ 5) and “digital artifacts” as “payment information and other digital
artifacts (e.g., receipts, tickets, coupons, etc.)” (id. ¶ 18). The Specification
further describes “artifacts . . . more relevant to the likes and tastes of the
user, and which are more likely to be acted upon by the user” (id. ¶ 19
(emphasis added); see id. ¶ 24), as well as “relevant artifacts” (id. ¶¶ 21, 23
(emphasis added)). Thus, the Specification distinguishes the meanings of
these terms in the Specification. Consequently, we do not limit the term
“digital artifacts,” as recited in claims 1, 10, and 19, to “relevant digital
artifacts.” See Dec. 16.
Appellant contends that we misapprehended or overlooked that the
ordinary and customary meaning of digital artifacts is “relevant digital
artifacts” (Req. Reh’g 9–10) or, alternatively, that “relevant” is inherent in
the recitation of “digital artifacts” (id. at 10–12). In particular, Appellant
contends:
Clearly, the ordinary and customary meaning of “relevant”
digital artifact is evidenced by the words of the specification
which states that when the management server sends artifacts,
“based on user profile information and/or a transaction history
(or payment trends) associated with a user of the mobile
communication device 102”, the artifacts are relevant. Since
relevant is inherent, it is respectively submitted that Claims
need not be amended to include this adjective.
Id. at 10. Nevertheless, Appellant only relies on the Specification’s
disclosure to support these contentions. As noted above, the Specification
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distinguishes between “artifacts,” “digital artifacts,” “more relevant
artifacts,” and “relevant artifacts” and does not support either of Appellant’s
contentions.
Because Appellant relies on limitations that are not recited in the
independent claims and distinctions between claimed and unclaimed
embodiments that are not supported by the Specification, we do not reach
Appellant’s remaining contentions, which are based on Appellant’s proposed
interpretation of the claims language. Req. Reh’g 12–26. Appellant does
not persuade us that we misapprehended or overlooked contentions or
evidence demonstrating the independent claims integrate the abstract idea
into a practical application.
3. Improvement to Computer Technology
Appellant contends that each of dependent claims 22–29 recites
methods or servers, which achieve improvements to computer technology.
Req. Reh’g 26–28. In particular, Appellant contends that the methods and
servers of claims 22–29 “improve[] efficiency, usability, reliability, [and]
flexibility.” Id.; see id. at 43–54. Appellant contends that we
misapprehended or overlooked either the limitations of these claims or the
improvements to computer technology that they achieve, or both.
Nevertheless, these contentions were addressed in our Decision.
Dec. 16–18. We determined the claims do not recite how these alleged
improvements are achieved. In particular, we determined,
the claims do not recite how the method achieves faster
processing, less CPU utilization and memory utilization,
improved reliability, and security; and we do not find an
explanation of how these advantages are achieved in the
Specification. See Final Act. 16 (“Regarding reliability, security
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and flexibility, Examiner first notes that none of these features
have been recited in the claims and hence Applicant’s arguments
are inapplicable to the current set of claims.”); Ans. 27 (“[W]ith
regard to assertions of reliability, flexibility, performance, user
experience, etc., Examiner notes that none of the above terms
have been recited in the appealed claims and therefore they have
no relevance to the present appeal. In the case of reliability,
Appellant merely repeats previous arguments of online mode and
retransmitting tickets — which, as pointed out above, are
inherent properties of digital communication.”); see also Am.
Axle & Mfg., Inc. v. Neapco Holdings LLC, 939 F.3d 1355, 1363
(Fed. Cir. 2019) (“We have repeatedly held that features that are
not claimed are irrelevant as to step 1 or step 2 of the Mayo/Alice
analysis.”).
Id. at 16–17; see id. at 16 n.11. Appellant does not persuade us that we
misapprehended or overlooked contentions or evidence demonstrating these
dependent claims integrate the abstract idea into a practical application.
4. Unconventional Components in an Ordered Combination
In our Decision, we determined:
Although Appellant contends that the claims recite “an
unconventional ordered combination unlike the prior art,” the
contention conflates the novelty and obviousness analyses with
the eligibility analysis. The claims merely recite generic
hardware and software components performing their known
functions in a logical order, namely, receiving a request for an
artifact, selecting the artifact according to predetermined
parameters in response to that request, and sending the selected
artifact for display. See Ans. 22 (“The claimed features of
receiving digital content, selecting digital content and sending
digital content from a server to a client device are focused on
using computers and networks expressly what they were
designed for.”). Consequently, taken individually or as an
ordered combination, the claim limitations recite an abstract idea,
and the computer technology recited in the claims is generic and
merely serves to tie the abstract idea to a technological
environment.
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Dec. 18; see Req. Reh’g 28–29. Appellant contends we misapprehended or
overlooked contentions or evidence demonstrating that the mobile devices,
applications, and techniques recited in the claims are unconventional and
recitations of an ordered combination satisfying an industry need. Req.
Reh’g 28–35.
As we noted in our Decision, however, the Examiner found:
Figure 2 [of the application] discloses generic mobile
communication devices (see, e.g., Spec. ¶ 5 (“The mobile
communication device can be a cellular phone or a wireless
personal digital assistant (PDA).”)); Figure 9 discloses generic
computing devices (see, e.g., Spec. ¶28 (“In operation, a user
opens an application ([e.g.], a web-browser) on a computing
device (a mobile communication device).”)); and Figures 5 and
6 disclose flowcharts describing the conventional steps of
updating user targeting parameters and sending artifacts to users
based on target parameters. Ans. 19–20; see Final Act. 5.
Dec. 20–21; see id. at 15 (discussing the disclosure of Spec. ¶ 28), 18 (“The
claims merely recite generic hardware and software components performing
their known functions in a logical order, namely, receiving a request for an
artifact, selecting the artifact according to predetermined parameters in
response to that request, and sending the selected artifact for display.”).5
Although the Specification, via the incorporated patent publication
disclosures, may describe deficiencies in “conventional wireless mobile
devices” and “conventional application[s]” (id. at 29–30), Appellant does
not indicate where the claims recite “unconventional” mobile devices or
applications. Instead, we note that the claims merely recite, “the non-
browser based mobile application is not browser based with a graphical user

5 See Dec. 14 n.10.
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interface and is preinstalled or downloaded and installed on a mobile
device.” E.g., Appeal Br. 63 (Claim App.). Moreover, the “techniques”
appear merely to refer to the results of the recited methods. See Req.
Reh’g 11, 30, 31, 34, 35, 39, 40.
Further, Appellant contends that the Specification distinguishes
between the recited “mobile devices” and “conventional systems.” Req.
Reh’g 30. In particular, Appellant notes the Specification discloses:
Updating the targeting parameters in a user profile permits
more relevant artifacts to be sent to a user based on transactions
made by a user through a mobile communication device. In
general, as usage of mobile communication devices for payment
transactions increases in everyday use, the techniques described
herein will permit more relevant artifacts to be sent to users
than conventional systems.
Id. at 30 (quoting Spec. ¶ 23; Appellant’s emphases). Nevertheless, as
discussed above, this distinction relies on sending “relevant” digital artifacts,
and the claims are not so limited. See supra Section A.2.; see also Dec. 16
(“[A]lthough the Specification recites that ‘relevant’ digital artifacts may be
identified and distributed, the claims do not recite that only ‘relevant’ digital
artifacts are requested, selected, or sent for display. See Appeal Br. 63-68
(Claims App.); Spec. ¶¶ 19, 21, 23, 24 . . .” (citation omitted)).
Appellant also contends, “since the Specification positively recites
elements that are NON-CONVENTIONAL and thus they represent a
NON-CONVENTIONAL and non-generic arrangement of
NONCONVENTIONAL the elements which the courts have ruled is
patent eligible.” Req. Reh’g 31 (Appellant’s emphasis). Further, Appellant
relies on our determination that “we are not persuaded that the Examiner
has shown that Barnes teaches or suggests all of the limitations of claim 1,
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as well as those of claims 10 and 19” to demonstrate that the claims recite
an unconventional, ordered combination of elements. Id. at 33 (quoting
Dec. 28; Appellant’s emphasis).
For the reasons given above and in our Decision, Appellant does not
persuade us that we misapprehended or overlooked contentions or evidence
demonstrating that the recited claim elements are non-conventional. Further,
Appellant’s reliance on our reversal of the Examiner’s obviousness
rejections of the pending claims is misplaced. First, we do not conflate the
patent eligibility analysis with the obviousness analysis. Synopsys, Inc. v.
Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (“[A] claim
for a new abstract idea is still an abstract idea. The search for a § 101
inventive concept is thus distinct from demonstrating § 102 novelty.”);
Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1315 (Fed.
Cir. 2016) (same for obviousness). Second, we determined only that the
Examiner fails to demonstrate that Barnes teaches or suggests a single
limitation. Dec. 27 (“Thus, Appellant contends Barnes discloses delivering
advertisements to the Advertisements Store and delivering advertisements to
the non-browser application/ram the Advertisements Store. Appeal Br. 10;
Reply Br. 5, 7. This is different from what is recited in claim 1.”). Third,
we determined only that the Examiner erred in finding the pending claims
are obvious on this record. Consequently, Appellant does not persuade us
that we misapprehended or overlooked contentions or evidence
demonstrating the claims recite unconventional devices, applications or
techniques or an unconventional ordered combination of such elements, such
that the claims integrate the abstract idea into a practical application.
For the reasons given above, we are not persuaded by Appellant’s first
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reason for requesting rehearing.
B. Appellant’s Second Reason: Step 2B Analysis
In our Decision, we determined, “[c]laims 1, 10, and 19 recite generic
computer components performing generic computer and software functions,
which, considered individually or as an ordered combination, are well-
understood, routine, and conventional; and these claims do not recite
‘significantly more’ than the identified abstract idea. Final Act. 4–6;
Ans. 19–21.” Dec. 21. Appellant disagrees and contends (1) that the
Examiner bases the determination that the claim element are well-
understood, routine, and conventional on conclusory findings (Req.
Reh’g 36–38) and (2) that we misapprehended or overlooked that the claims
recite unconventional mobile devices, applications, and techniques in an
unconventional ordered combination (id. at 38–41).
As the Office has explained:
A citation to an express statement in the specification . . . that
demonstrates the well-understood, routine, conventional nature
of the additional element(s). A specification demonstrates the
well-understood, routine, conventional nature of additional
elements when it describes the additional elements as well-
understood or routine or conventional (or an equivalent term), as
a commercially available product, or in a manner that indicates
that the additional elements are sufficiently well-known that the
specification does not need to describe the particulars of such
additional elements to satisfy 35 U.S.C. § 112(a).
USPTO Memorandum of April 19, 2018, ‘‘Changes in Examination
Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter
Eligibility Decision (Berkheimer v. HP, Inc.)’’ 3–4 (Apr. 19, 2018),
available at https://www.uspto.gov/sites/default/files/documents/memo-
berkheimer-20180419.PDF. With respect to Appellant’s first contention
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regarding the nature of the Examiner’s findings, we determined the
Examiner found that the Specification shows that the additional elements are
well-understood, routine, and conventional. Dec. 20–21 (citing Ans. 19–20;
see, e.g., Spec. ¶¶ 5 (describing known applications and devices), 19–21
(describing known applications), 28 (describing known applications and
devices). Here, we are persuaded that the Specification adequately
demonstrates that the components of the claimed methods, computer
program products, or computer systems are well-understood, conventional,
and routine, and we determined the Examiner’s findings were sufficient to
support the conclusion that the additional elements recited in the claimed
methods, servers, and computer-readable media were well-understood,
routine, and conventional. Dec. 20–21 (citing Berkheimer v. HP Inc., 881
F.3d 1360 (Fed. Cir. 2018)). Thus, Appellant does not persuade us that we
misapprehended or overlooked the conclusory nature of the Examiner’s
findings.
With respect to Appellant’s second contention that the claims recite
unconventional mobile devices, applications, and techniques in an
unconventional ordered combination, we addressed that contention above.
See supra Section A.4. Similar to our analysis under Step 2A, Prong Two,
Appellant does not persuade us that we misapprehended or overlooked
contentions or evidence demonstrating the claims recite unconventional
devices, applications or techniques or an unconventional ordered
combination of such elements, such that the claims amount to significantly
more than the abstract idea.
For the reasons given above, we are not persuaded by Appellant’s
second reason for requesting rehearing.
Appeal 2019-004734
Application 14/867,328

18

DECISION
Appellant’s Request for Rehearing is denied.
Outcome of Decision on Rehearing:
Claims
Rejected
35 U.S.C. § Basis/Reference(s) Affirmed Reversed
1–30 101 Eligibility 1–30
1, 2, 4, 6–
11, 13, 15–
30
103 Barnes 1, 2, 4, 6–11,
13, 15–30
3, 5, 12, 14 103 Barnes, Pond 3, 5, 12, 14
Overall
Outcome
1–30
Final Outcome of Appeal after Rehearing:
Claims
Rejected
35 U.S.C. § Basis/Reference(s) Affirmed Reversed
1–30 101 Eligibility 1–30
1, 2, 4, 6–
11, 13, 15–
30
103 Barnes 1, 2, 4, 6–11,
13, 15–30
3, 5, 12, 14 103 Barnes, Pond 3, 5, 12, 14
Overall
Outcome
1–30

DENIED