Florence Adam et al.

Patent Trials and Appeals Board

Sep 2, 2021

2020004969 (P.T.A.B. Sep. 2, 2021)

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.
11/923,003 10/24/2007 Florence Adam GB920060044US1 8855
11480 7590 09/02/2021
IBM Corporation - Patent Center
1701 North Street
B/256-3
Endicott, NY 13760
EXAMINER
EVANS, KIMBERLY L
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
09/02/2021 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):
edciplaw@us.ibm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FLORENCE ADAM, PETER BRIAN MASTERS,
ANDREW JAMES OSBORNE, and MARTIN JAMES ROWE
Appeal 2020-004969
Application 11/923,003
Technology Center 3600
BEFORE ANTON W. FETTING, JOSEPH A. FISCHETTI, and
MEREDITH C. PETRAVICK, Administrative Patent Judges.
PETRAVICK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 41–49 and 51–59. We have jurisdiction
under 35 U.S.C. § 6(b).

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as International
Business Machines Corporation. Appeal Br. 2.
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We first saw this application in Appeal No. 2012-002144, in which
affirmed the Examiner’s rejection of claims 21–40. Claims 21–40 are no
longer pending.
We AFFIRM.
CLAIMED SUBJECT MATTER
The claims are directed to “a data processing system which distributes
messages from suppliers (publishers) of data messages to consumers
(subscribers) of such messages.” Spec. 1:5–8. Claim 41, reproduced below,
is illustrative of the claimed subject matter:
41. A publish/subscribe access control method utilizing a
message broker comprising:
enveloping a message broker with a security layer;
authenticating a client seeking a connection to the
message broker and upon authenticating the client, connecting
the client to the message broker in association with a
connection identifier and assigning the client a token;
intercepting a request in the security layer from the client
to post a message to the message broker;
mapping the request to a topic string for one of a
multiplicity of topics;
identifying in connection with the request within the
message broker, at least one template rule governing access to
posting to the message broker;
determining whether the template rule includes a user
option and if so, also determining if the topic string includes a
user identifier and failing the at least one template rule on
condition that the template rule includes a user option and the
topic string does not include a user identifier, but otherwise
extracting the user identifier and comparing the extracted user
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identifier with an identifier associated with the connection to
the conferencing system; and,
posting the the [sic] message to the message broker on
behalf of the client only if the user identifier matches the
connection identifier and if the rule governing access to posting
to the message broker is satisfied, but otherwise failing the at
least one template rule.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Thompson et al. US 2006/0146999 A1 July 6, 2006
Carter et al. US 2007/0179834 A1 Aug. 2, 2007
Darugar et al. US 7,349,980 B1 Mar. 25, 2008
Garcia US 7,380,120 B1 May 27, 2008

REJECTIONS
Claims 41–49 and 51–59 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Claims 51–59 stand rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.
Claims 41–49 and 51–59 stand rejected under 35 U.S.C. § 101 as
being directed to non-statutory subject matter.
Claims 41–44, 46–49, 51–54, and 56–59 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Darugar in view of Garcia
and Thompson.
Claims 45 and 55 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Darugar in view of Garcia, Thompson, and Carter.
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OPINION
The rejection of claims 41–49 and 51–59 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
The Examiner rejects claims 41–49 and 51–59 under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement. Final Act. 10. Appellant presents argument to the sufficiency
of the written description of these claims as a group. Appeal Br. 5–6; Reply
Br. 2–3. We select claim 41 as representative, and claims 42–49 and 51–59
stand or fall with claim 41. See 37 C.F.R. § 41.37(c)(1)(iv).
In rejecting the claims, the Examiner finds that the recited claim term
of “message broker” lacks written description support. Final Act. 10.
According to the Examiner, the recited “message broker” is “merely a
nominal recitation of a general purpose or generic computer.” Id. The
Examiner finds, however, that the Specification “is vague and does not
distinctly describe a computer processor or the components of the
publish/subscribe hardware system.” Id. Particularly, the Examiner finds
that, although the claims “define the invention in functional language
specifying a desired result,” the Specification “provides no description of
sufficiently definite structure that performs the claimed function.” Id. at 10–
11.
Appellant disagrees and argues that “a ‘message broker’ is a specific
well understood feature, [and] a person having ordinary skill in the art would
understand and be aware of the need for components required for
implementation of the ‘message broker’ including a processor and other
hardware.” Reply Br. 3. Appellant supports this assertion by providing
what appears to be a screenshot of a recent search of published U.S. patent
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applications using the search term “message broker,” which Appellant
purports “reveal[s] more than 1,000 granted patents as can be seen.” Appeal
Br. 5–6; Reply Br. 2–3. Additionally, Appellant contends that the
Specification nevertheless includes a disclosure describing the “message
broker.” Appeal Br. 5 (citing Spec. 1:12–32); Reply Br. 2 (same).
As required by 35 U.S.C. § 112, first paragraph, “[t]he specification
shall contain a written description of the invention.” To satisfy the written
description requirement, the disclosure must reasonably convey to skilled
artisans that the patentee possessed the claimed invention as of the filing
date. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir.
2010) (en banc). The written description requirement is not met if the
specification merely describes a “desired result.” Id. at 1349. At the same
time, the requirement does not demand that the specification recite the
claimed invention verbatim. Id. at 1352 (citations omitted). “The
descriptive text needed to meet these requirements varies with the nature and
scope of the invention at issue, and with the scientific and technologic
knowledge already in existence.” Capon v. Eshhar, 418 F.3d 1349, 1357
(Fed. Cir. 2005). “Because the specification is viewed from the perspective
of one of skill, in some circumstances, a patentee may rely on information
that is ‘well-known in the art’ for purposes of meeting the written
description requirement.” Boston Sci. Corp. v. Johnson & Johnson, 647
F.3d 1353, 1366 (Fed. Cir. 2011).
We find persuasive Appellant’s argument that the specification
provides adequate written description support for the claimed “message
broker.” The Specification references Figure 1, which “illustrates a typical
publish/subscribe data processing system according to the prior art.” Spec.
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1:26–27. This prior art system includes a “message broker 15,” which
suggests to some extent that “message brokers” have been used previously
and are known in the art. See id. at 1:27–32, Fig. 1. Appellant also provides
evidence in the form of a screenshot of a search of published U.S. patent
applications using the phrase “message broker.” Appeal Br. 5–6; Reply Br.
2–3. Appellant cites specifically to one example patent produced from the
search that similarly describes a “general purpose messaging system” that
includes “a component known as a message broker.” Appeal Br. 6 (citing
U.S. Patent No. 10,397,174 B2, 2:10–20 (filed Nov. 12, 2015)). Though this
patent was filed around eight years after the filing of the instant application,
the search and the cited excerpt provide at least some evidence that
“message brokers” are messaging system components that have been well-
known in the art and that Appellant therefore had possession of the
“message broker” at the time of filing.
The Specification itself goes even further by providing a description
of the message broker’s components as well as how these components carry
out the functions. The Specification describes a message broker 15 as
having an input mechanism 20, “which may be, for example, an input queue
or a synchronous input node.” Spec. 1:27–30. The Specification also
describes the message broker 15 as further including a controller 40 that
fetches a published message from the input mechanism, a matching engine
30 that matches the message to a topic string, and an output mechanism 50
that sends the message to a subscriber wishing to receive messages that
include the topic string. Id. at 1:30–2:5. Furthermore, the Specification
links the message broker and its components and functions to computer
software by stating explicitly that “[t]he invention may be implemented in
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computer software.” Id. at 4:21. Indeed, such functions of receiving,
processing, and outputting data are well-known, routine, and conventional
functions of generic computer technology. Cf. Elec. Power Grp. LLC v.
Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016)). By describing with
detail the components and the steps taken by the message broker to carry out
its functions, the Specification thus describes more than simply the “desired
result” and therefore demonstrates that Appellant had possession of the
“message broker.”
For these reasons, we do not sustain this rejection of claims 41–49 and
51–59.

The rejection of claims 51–59 under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.
Separately from the above rejection, the Examiner rejects claims 51–
59 under 35 U.S.C. § 112, first paragraph, as failing to comply with the
written description requirement. Final Act. 11. Appellant presents argument
to the sufficiency of the written description of these claims as a group.
Appeal Br. 6–7; Reply Br. 3–4. We select claim 51 as representative, and
claims 52–59 stand or fall with claim 51. See 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner finds that the recitation of “a non-transitory computer
readable storage medium having program instructions embodied therewith,
the program instructions executable by a device to cause the device to
perform a method” lacks written description support. Claim 51. Similar to
the above rejection, the Examiner finds that “Appellant’s [S]pecification
does not provide[] adequate disclosure regarding the device as it relates to
publish/subscribe access control, a message broker and the conferencing
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system.” Final Act. 7. According to the Examiner, “the disclosure fails to
teach a computer, processor or the hardware/software for publish/subscribe
access control . . . to cause the device to perform the limitations as recited in
claim 51.” Id. at 12.
Appellant responds that “computer software is computer program
instructions that execute in a device to cause the device to perform steps of a
process.” Appeal Br. 6 (emphasis added). Appellant argues that the
Examiner “once again fails to acknowledge a person having ordinary skill in
the art would understand the necessary components (i.e.[,] a generic
computer, including a processor and memory) to implement ‘program
instructions.’” Reply Br. 3.
We find Appellant’s argument persuasive. No apparent difference
exists between computer software that executes on a general purpose
computer and “program instructions that execute in a device to cause the
device to perform steps of a process.” Appeal Br. 6. Furthermore, as
explained above, the Specification links the components and functions of the
“message broker” to computer software. The Specification also links the
other steps and components of the claim to computer software, as the
Specification states that, as a whole, “[t]he invention may be implemented in
computer software.” Spec. 4:21 (emphasis added). Thus, the Specification
demonstrates that Appellant possessed implementing the invention in
computer software, i.e., a non-transitory computer readable storage medium
having program instructions that execute in a device that cause the device to
perform steps of a process.
For these reasons, we do not sustain this rejection of claims 51–59.

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The rejection of claims 41–49 and 51–59 under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter.
The Examiner rejects claims 41–49 and 51–59 under 35 U.S.C. § 101
as being directed to patent-ineligible subject matter. Final Act. 15.
Appellant presents argument for the patentability of these claims as a group.
Appeal Br. 7–12; Reply Br. 4–6. We select claim 41 as representative, and
claims 42–49 and 51–59 stand or fall with claim 41. See 37 C.F.R.
§ 41.37(c)(1)(iv).
Principles of Law
A. Section 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 U.S. 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 Bank Int’l, 573
U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-part framework, described in Mayo and Alice.
Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 75–77 (2012)). In accordance with that framework, we first
determine what concept the claim is “directed to.” See Alice, 573 U.S. at
219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
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Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 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 182 n.7 (quoting Corning v. Burden, 56 U.S.
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
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 187; 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 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. (citation omitted)
(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 turn to the second part
of the Alice and Mayo framework, where “we must examine the elements of
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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.
B. USPTO § 101 Guidance
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101.2 The Manual of
Patent Examining Procedure (“MPEP”) now incorporates this revised
guidance and subsequent updates at § 2106 (9th ed. Rev. 10.2019, rev. June
2020).3
Under MPEP § 2106, 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

2 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (“2019 Revised Guidance”). In response to received public
comments, the Office issued further guidance on October 17, 2019,
clarifying the 2019 Revised Guidance. USPTO, October 2019 Update:
Subject Matter Eligibility (the “October 2019 Update”). “All USPTO
personnel are, as a matter of internal agency management, expected to
follow the guidance.” 84 Fed. Reg. at 51; see also October 2019 Update at
1.
3 All references to the MPEP are to the Ninth Edition, Revision 10.2019
(Last Revised June 2020), unless otherwise indicated.
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human activity such as a fundamental economic practice, or mental
processes) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into a
practical application (“Step 2A, Prong Two”).4
MPEP § 2106.04(a), (d).
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application,5 do we then look, under
Step 2B, to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional activity” in the field; 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.6
MPEP § 2106.05(d).

4 “Examiners evaluate integration into a practical application by
(a) identifying whether there are any additional elements recited in the claim
beyond the judicial exception, and (b) evaluating those additional elements
individually and in combination to determine whether the claim as a whole
integrates the exception into a practical application.” MPEP
§ 2106.04(d)(II).
5 This corresponds to Alice part one where it is determined whether the claim
is “directed to” an abstract idea. See Alice, 573 U.S. at 219. If a claim is
“not directed to an abstract idea under part one of the Alice framework, we
do not need to proceed to step two.” Enfish, LLC v. Microsoft Corp., 822
F.3d 1327, 1339 (Fed. Cir. 2016).
6 This corresponds to Alice part two where it is determined whether the
claim “contains an ‘inventive concept’ sufficient to ‘transform’ the claimed
abstract idea into a patent-eligible application.” Alice, 573 U.S. at 221.
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Analysis
A. Step 1
Step 1 asks whether the claimed subject matter falls within the four
statutory categories of patentable subject matter identified by 35 U.S.C.
§ 101: process, machine, manufacture, or composition of matter.
Claim 41 recites “[a] publish/subscribe access control method
utilizing a message broker” and corresponding steps. Claim 41, thus, falls
within the process category.
B. Step 2A, Prong One
Under Step 2A, Prong One, we determine whether the claims recite
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).
Pointing to the steps of claim 41, the Examiner determined that claim
41 recites a method of posting a message via a publish/subscribe access
control/message broker, which is a certain method of organizing human
activity. See Final Act. 15–18, Ans. 10–12.
Claim 41 recites a publish/subscribe access control method utilizing a
message broker that includes steps of:
enveloping a message broker with a security layer;
authenticating a client seeking a connection to the
message broker and upon authenticating the client, connecting
the client to the message broker in association with a
connection identifier and assigning the client a token;
intercepting a request in the security layer from the client
to post a message to the message broker;
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mapping the request to a topic string for one of a
multiplicity of topics;
identifying in connection with the request within the
message broker, at least one template rule governing access to
posting to the message broker;
determining whether the template rule includes a user
option and if so, also determining if the topic string includes a
user identifier and failing the at least one template rule on
condition that the template rule includes a user option and the
topic string does not include a user identifier, but otherwise
extracting the user identifier and comparing the extracted user
identifier with an identifier associated with the connection to
the conferencing system; and,
posting the [] message to the message broker on behalf of
the client only if the user identifier matches the connection
identifier and if the rule governing access to posting to the
message broker is satisfied, but otherwise failing the at least
one template rule.
The combination of these steps recite the concept of using a message broker
to post or not-post a message is a template rule requires that a user identifier
of a topic string matches and an identifier associated with a connection.
This concept is one of certain methods of organizing human activity—
managing personal behavior or relationship or interaction between people—
that is an abstract idea.

C. Step 2A, Prong Two
Under Step 2A, Prong Two, if a claim recites a judicial exception, we
determine whether the recited judicial exception is integrated into a practical
application of that exception by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception(s); and
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(b) evaluating those additional elements individually and in combination to
determine whether they integrate the exception into a practical application.
If the recited judicial exception is integrated into a practical application, the
claim is not directed to the judicial exception.
The Examiner determined that the additional elements of a message
broker and a conferencing system do not integrate the abstract idea into a
practical application because they do not impose any meaningful limits on
practicing the abstract idea. See Ans. 12–19; Final Act. 17. According to
the Examiner, the claimed message broker and conferencing system are
recited at a high level of generality and are merely invoked as tools to
perform the abstract idea and merely link the abstract idea to a particular
field of use. Ans. 12–19.
Appellant responds:
Applicants’ claim language of
the determination of whether the template rule includes a user
option and if so, also determining if the topic string includes a
user identifier and failing the at least one template rule on
condition that the template rule includes a user option and the
topic string does not include a user identifier, but otherwise
extracting the user identifier and comparing the extracted user
identifier with an identifier associated with the connection to the
conferencing system
reflected “an improvement to the technical field of
publish/subscribe access control by not requiring identification
information to actually identify a client while still ensuring that
when the client makes a request and includes an identifier the
information remains consistent with information associated with
the connection of the client as stated at page 14, lines 18 through
23 of the original specification.”
Appeal Br. 8; see also Reply Br. 4–5.
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We agree with the Examiner. The additional elements of a message
broker and a conferencing system do not integrate the abstract idea into a
practical application because they do not impose any meaningful limits and
merely invoked as tools to perform the abstract idea. As the Examiner
determined the claimed message broker and conferencing system are recited
at a high level of generality and merely link the abstract idea to a particular
technological environment (i.e., a computer environment). See Appeal Br.
12 (“Appellants’ claim language as seen herein, recites almost no ‘computer
components’ conventional or otherwise.”). “The mere recitation of a generic
computer cannot transform a patent-ineligible abstract idea into a patent-
eligible invention . . . [I]if a patent’s recitation of a computer amounts to a
mere instruction to ‘implemen[t]’ an abstract ‘on . . . a computer,’ . . . that
addition cannot impart patent eligibility.” Alice, 573 U.S. at 223 (citation
omitted).
Appellant’s argument is misplaced because any improvement found in
the claimed determining step is to the method of performing the abstract
idea, itself. Newly discovered or novel judicial exceptions are still
exceptions. Flook, 437 U.S. at 591–92 (“[T]he novelty of the mathematical
algorithm is not a determining factor at all.”); Ass’n for Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 589, 591 (2013)
(“Groundbreaking, innovative, or even brilliant discovery does not by itself
satisfy the § 101 inquiry.”). The focus of claim 41 is not a technical
improvement in computers, but rather the performance of an abstract idea
for which the computer is merely invokes as a tool. See Enfish LLC v.
Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
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Appellant, thus, does not persuade us that the Examiner in
determining that claim 41 fails to recite additional elements that integrate the
abstract idea into a practical application of that abstract idea. We agree with
the Examiner that claim 41 is directed to an abstract idea.
D. Step 2B
Under Step 2B, 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, [and] 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.
The Examiner determined that the additional elements of a message
broker and a conferencing system, individually and in combination, simply
appends well-understood, routine, conventional activities previously known
to the industry, specified at a high level of generality, to the abstract idea.
Final Act. 20–22; Ans. 19–22.
Appellant argues that the Examiner provides no evidence that
Appellant’s claims are merely routine, well-understood, and conventional, as
required by Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018). Appeal
Br. 9–12; Reply Br. 5–6.
We agree with the Examiner. First, the Federal Circuit in
Berkheimer made clear that “not every § 101 determination contains genuine
disputes over the underlying facts material to the § 101 inquiry.”
Berkheimer, 881 F.3d at 1368. In fact, the Federal Circuit in Berkheimer did
not require evidentiary support for independent claim 1 because “[t]he
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limitations [of claim 1] amount to no more than performing the abstract idea
of parsing and comparing data with conventional computer components.”
Id. at 1370.
Second, the additional recitations of a message broker and a
conferencing system, individually and in combination, simply appends well-
understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the abstract idea. The
Specification describes “typical publish/subscribe data processing sytem[s]”
as having a message broker. Spec. 1:11–38, 3:19–21, Figs. 1–2 (depicting a
prior art systems); see also Appeal Br. 5–6 (“Appellants additionally note
that the general notation of a message broker is widely understood.”).
Third, Appellant’s argument is misplaced because an analysis of
whether a claim limitation is “well-understood, routine, conventional” only
applies to elements additional to the abstract idea. Alice Corp., 573 U.S. at
217–18 (citing Mayo, 566 U.S. at 72–73) (the second part of the Mayo test is
to determine whether the claim recites additional elements that amount to
significantly more than the judicial exception). “A claimed invention’s use
of the ineligible concept to which it is directed cannot supply the inventive
concept that renders the invention ‘significantly more’ than that ineligible
concept.” BSG Tech. LLC v. Buyseasons, Inc., 899 F.3d, 1281, 1290 (Fed.
Cir. 2018). A novel and nonobvious claim directed to a purely abstract idea
is, nonetheless, patent-ineligible. See Mayo, 566 U.S. at 90.
For these reasons, we sustain this rejection of claims 41–49 and 51–
59.

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The rejection of claims 41–44, 46–49, 51–54, and 56–59 under 35 U.S.C.
§ 103(a) as being unpatentable over Darugar in view of Garcia and
Thompson.
The Examiner rejects claims 41–44, 46–49, 51–54, and 56–59 under
35 U.S.C. § 103(a) as being unpatentable over Darugar in view of Garcia
and Thompson. Final Act. 15. Appellant presents argument for the
patentability of these claims as a group. Appeal Br. 13–15; Reply Br. 6–7.
We select claim 41 as representative, and claims 42–44, 46–49, 51–54, and
56–59 stand or fall with claim 41. See 37 C.F.R. § 41.37(c)(1)(iv).
Appellant’s presented argument challenges solely the Examiner’s
finding that the “determining” limitation of claim 41 is taught by Darugar.
See Appeal Br. 13–15; Reply Br. 6–7. The limitation is reproduced below:
determining whether the template rule includes a user option and
if so, also determining if the topic string includes a user identifier
and failing the at least one template rule on condition that the
template rule includes a user option and the topic string does not
include a user identifier, but otherwise extracting the user
identifier and comparing the extracted user identifier with an
identifier associated with the connection to the conferencing
system; . . . .
Appeal Br. 16 (Claims App.). Specifically, Appellant argues that Darugar
does not teach the initial step of “determining whether the template rule
includes a user option.” Id. at 13–15; Reply Br. 6–7.
The Specification provides further context on this limitation and
explains that a “template rule” is unique from an “Access Control List
(ACL).” Spec. 7:6–8. With respect to ACLs, the Specification states that, in
publish/subscribe systems, “[i]t is known in the prior art to control which
users may subscribe and/or publish on a certain topic via the use of Access
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Control Lists (ACLs).” Id. at 2:8–10. However, the Specification identifies
an issue with using ACLs in dynamic publish/subscribe environments such
as conferencing systems, namely that “ACLs are statically defined and
consequently each one needs to be individually updated. There may be
thousands of publishers and subscribers connecting to a conferencing system
with each one needing to be individually added and then later removed from
appropriate ACLs. Working in this way is simply not scalable.” Id. at 3:7–
9.
As a solution to this issue, the Specification teaches that, rather than
have an ACL associated with each topic, “template rules,” can be used for
authorizing users that request access to topics. Spec. 7:6–8. When a user
requests access to a topic, such as when the user attempts to post to a
particular chatroom within the conferencing system, a “template rule”
matching the requested topic is fully examined. Id. at 7:18–21. This
involves comparing the credentials of the user with the credentials that may
be required for access to the topic. See id. at 8:15–17. For example, the
template rule may specify “backend” such that the requestor must be a
backend system, such as an administrator, in order for the rule to be passed.
Id. at 8:17–19. If the template rule is passed, then publication on the topic is
permitted; otherwise, publication is rejected. Id. at 7:10–12.
Furthermore, the Specification explains that the “provenance” of a
user requesting access to a topic may be important in certain situations.
Spec. 8:23–24. One situation described in the Specification is where a user
identifies themselves to other users in a particular way, but the user is really
an impostor. Id. at 8:24–26. When provenance is an issue, the template rule
will include a “‘user’ option.” Id. at 8:6–7. When a template rule includes
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such a user option, the user must append a “userid” to the user’s request to
access the topic. Id. at 8:28–33, 9:10–14. Furthermore, this userid must
match an identifier assigned to the user at the time the user initially
connected to the publish/subscribe system. Id. at 9:15–17, 9:22–27; see also
id. at 6:18–19. If all of these requirements are met, then the template rule is
passed. Id. at 9:27–29. By contrast, if a userid is not included in the user’s
request, or if the included userid does not match the identifier previously
assigned to the user when the user initially connected to the system, then the
template rule is failed. Id. at 9:14, 9:27–29.
The Specification indicates however that provenance is not always an
issue. See Spec. 8:14–15. In situations where provenance is not an issue, a
userid will not be required from the user when requesting access to the topic,
and the template rule will be passed so long as the remaining requirements
are met. Id. at 8:14–17; see also id. at Fig. 4d.
Turning to the rejection, the Examiner finds that the overall
“determining” limitation recited in claim 41 is taught by Darugar and quotes
numerous passages from Darugar as support. Final Act. 26–29 (quoting
Darugar 5:22–33, 5:62–6:34, 13:56–66, 23:43–45, 23:59–24:22, 24:49–57,
27:62–28:4); Ans. 25–30 (quoting Darugar 13:56–66, 23:43–24:11, 24:49–
57, 8:24–30, 29:36–38, 3:3–40, 3:14–20, 3:33–40, 13:34–43, 13:48–51,
16:64–67, 17:1–10, 12:25–67, 20:35–41). Appellant disagrees. See Appeal
Br. 14–15 (addressing Final Act. 26–27 (quoting Darugar 5:22–33, 5:62–
6:34)); Reply Br. 7 (addressing Ans. 26–27 (quoting Darugar 13:56–66,
23:43–24:22)). Appellant, after discussing these passages, concludes that
Darugar does not teach the initial step of “determining whether the template
rule includes a user option.” Appeal Br. 13–15; Reply Br. 6–7.
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We find Appellant’s arguments persuasive that Darugar does not
teach the initial step of “determining whether the template rule includes a
user option.” Appeal Br. 13–15; Reply Br. 6–7. Similar to the claims here,
Darugar is related to publish/subscribe systems and the “routing” of
messages from publishers to subscribers. Darugar 1:17–21, 7:54–61. In the
passages cited by the Examiner, Darugar discusses the use of user
identification information, such as a “Subscriber ID” and a “publisher_id,”
to facilitate the distribution of messages. E.g., id. at 23:58–62 (“Subscriber
ID (a unique routing entity identification generated when the organization is
registered on the network; for a service action request, the Subscriber ID
identifies the subscriber to an action/service; in the context of a topic, this
identifies the entity publishing messages to a topic).”), 24:13–14
(“publisher_id (a unique routing entity identification corresponding to the
publisher of the service) . . . .”), 14:56–67 (“[A] topic is a named abstraction
for a particular subject of interest. A topic includes a subscription list,
including at least one subscription representing an agreement to receive
information concerning a particular topic. Each subscription usually
contains all data required for a system to deliver appropriate information to
those who require it, such as the address of the recipient. In one
embodiment, each topic also includes at least one of two access control lists:
1) a list defining the publishers and/or end-users who may publish messages
to a topic, and 2) a list defining the subscribers and/or end-users who may
subscribe to a topic.”). Furthermore, the passages indicate that a failure to
provide valid user identification information will result in an error. Id. at
24:51–57 (“For service action requests (whether associated with a normal
Web service or a topic), the routing nodes (e.g., engine 54 or switch 56)
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perform error checks on the service action request. For example and in one
embodiment, the routing node returns an error XML response, if 1) it cannot
parse the XML request, 2) the request does not contain sufficient key
information for a routing entry lookup, or 3) a key is invalid (e.g., a key
value could not have been generated by the network).”).
However, the Examiner has not pointed to any passages in Darugar
that teach performing an initial determination on whether this user
identification information is needed in the first place, i.e., “determining
whether the template rule includes a user option” as recited in claim 41. The
cited passages from Darugar explain how the provided user identification
information is used to distribute messages, which shows the steps to be taken
after the user identification information is first determined to be needed.
But, from the passages provided by the Examiner, Darugar does not appear
to disclose performing the initial step of determining whether the user
identification information is needed in the first place.
For these reasons, we do not sustain this rejection of claims 41–49
and 51–59.

The rejection of claims 45 and 55 under 35 U.S.C. § 103(a) as being
unpatentable over Darugar in view of Garcia, Thompson, and Carter.
The Examiner rejects claims 45 and 55 under 35 U.S.C. § 103(a) as
being unpatentable over Darugar in view of Garcia, Thompson, and Carter.
Final Act. 15. Appellant’s argument discussed above regarding the rejection
of claims 41–44, 46–49, 51–54, and 56–59 under 35 U.S.C. § 103(a) does
not address claims 45 and 55 separately. Appeal Br. 13–15; Reply Br. 6–7.
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Therefore, claims 45 and 55 stand or fall with claim 41. See 37 C.F.R.
§ 41.37(c)(1)(iv).
For the same reasons as above, we do not sustain this rejection of
claims 45 and 55.
CONCLUSION
The Examiner’s rejections of claims 41–49 and 51–59 under
37 U.S.C. § 112, first paragraph, are reversed.
The Examiner’s rejections of claims 41–49 and 51–59 under
35 U.S.C. § 101, first paragraph, are affirmed.
The Examiner’s rejections of claims 41–49 and 51–59 under
35 U.S.C. § 103(a) are reversed.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed.
See 37 C.F.R. § 41.50(a)(1).

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
41–49, 51–
59
112 Written
Description
41–49, 51–
59
51–59 112 Written
Description
51–59
41–49, 51–
59
101 Eligibility 41–49, 51–
59

41–44, 46–
49, 51–54,
56–59
103(a) Darugar, Garcia,
Thompson
41–44, 46–
49, 51–54,
56–59
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Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
45, 55 103(a) Darugar, Garcia,
Thompson, Carter
45, 55
Overall
Outcome
41–49, 51–
59

No time period for taking any subsequent action in connection with
the appeal may be extended under 37 U.S.C. § 1.136(a).
AFFIRMED