2020002127 (P.T.A.B. Jul. 6, 2021)

Hillel Felman

Patent Trials and Appeals BoardJul 6, 2021

2020002127 (P.T.A.B. Jul. 6, 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. 15/807,709 11/09/2017 Hillel Felman FELMAN-105002CON1 1237 114903 7590 07/06/2021 Zeller IP Group PLLC 155 Water St. Suite 6-6 Brooklyn, NY 11201 EXAMINER SALAD, ABDULLAHI ELMI ART UNIT PAPER NUMBER 2456 NOTIFICATION DATE DELIVERY MODE 07/06/2021 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): eofficeaction@appcoll.com kyle@zellerip.com uspto@zellerip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte HILLEL FELMAN Appeal 2020-002127 Application 15/807,709 Technology Center 2400 ____________ Before RICHARD M. LEBOVITZ, ERIC B. CHEN, and DAVID J. CUTITTA II, Administrative Patent Judges. LEBOVITZ, Administrative Patent Judge. DECISION ON APPEAL The Examiner rejected claims 1–20 under 35 U.S.C. § 103(a) as obvious. Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject the claims. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM and set forth a new ground of rejection. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Hillel Felman. Appeal Br. 2. Appeal 2020-002127 Application 15/807,709 2 STATEMENT OF THE CASE The Examiner rejected claims 1–20 in the Final Office Action (“Final Act”) as follows: 1. Claims 1–7, 9–17, 19, and 20 under pre-AIA 35 U.S.C. § 103(a) as obvious in view of Salzfass et al. (U. S. Patent Application Publication No. 2002/0042815 A1, published Apr. 11, 2002) (“Salzfass”) and Benjamin et al. (U.S. Patent No. 7,010,572 B1, issued Mar. 7, 2006 (“Benjamin”). Final Act. 6. 2. Claims 8 and 18 under pre-AIA 35 U.S.C. § 103(a) as obvious in view of Salzfass, Benjamin, and Peltonen (U.S. Patent No. 6,393,274 B1, issued May 21, 2002) (“Peltonen”). Final Act. 12. 3. A new ground of rejection of claims 1–20 under 35 U.S.C. § 101 is set forth below pursuant to 37 C.F.R. § 41.50(b). There are two independent claims on appeal, claims 1 and 12. Claim 1 is directed to a method; claim 12 is directed to a system for carrying out substantially the same method recited in claim 1. Claim is representative and copied below. The claim is annotated with bracket numbers for reference to the claim limitations. 1. A method performed by a bridge website server associated with a bridge website and comprising at least one computer, the bridge website server in connection with a registration facility and a database containing personal contact information of a listing party comprising two or more of a name, a street address, a telephone number, a fax number, a pager number, a social security number, and an email address of the listing party, the method comprising: [1] at the bridge website server, receiving, over the Internet from a first device executing a web browser, [1a] a querying signal generated by the web browser in response to input provided by a querying party into the bridge website Appeal 2020-002127 Application 15/807,709 3 displayed by the web browser, [1b] the querying signal representing a request from the querying party for the personal contact information of the listing party contained in the database, [2] wherein the querying signal comprises: [2a] one or more search terms selected from the group consisting of the name, the street address, the telephone number, the fax number, the pager number, and the social security number of the listing party, and [2b] personal contact information of the querying party, [3] wherein the querying party is a first person, and [4] wherein the listing party is a second person; [5] at the bridge website server, storing the personal contact information of the querying party in the registration facility; [6] at the bridge website server, transmitting, over the Internet to a second device associated with the listing party, [6a] a query notification signal representing the request from the querying party for the personal contact information of the listing party, [7] wherein the query notification signal comprises the personal contact information of the querying party stored in the registration facility; [8] at the bridge website server, receiving, over the Internet from the second device associated with the listing party, [8a] a consent/no-consent signal indicating selected information to be transmitted to the querying party, [9] wherein the selected information is selected from the personal contact information of the listing party that is contained in the database, [10] wherein the selected information comprises at least some of the personal contact information of the listing party that is different than the one or more search terms, and [11] wherein the selected information does not comprise the email address of the listing party; and [12] at the bridge website server, transmitting, over the Internet, to the first device associated with the querying party, the selected information, Appeal 2020-002127 Application 15/807,709 4 [13] wherein the personal contact information of the listing party contained in the database that is not the selected information is not transmitted to the first device associated with the querying party. Appeal Br. 27, 28 (Claims App.). OBVIOUSNESS REJECTION BASED ON SALZFASS AND BENJAMIN The method of claim 1 involves interactions between a listing party and querying party, each of whom are persons (required by steps [3] and [4] of the claim). The method is performed by a “bridge website server.” As recited in the claim preamble, the server comprises a registration facility and database comprising personal contact information of the listing party.2 The method comprises a querying party searching for a listing party using personal contact information, and the listing party determining whether it wants to consent or not consent to providing the querying party with its contact information. We explain the steps in more detail below. Claim 1 comprises [1] a querying party, who is a person ([3]), requesting from a web browser the personal contact information of a listing party (who is also a person ([4])) and [6] transmitting the request to the listing party’s device. The listing party sends to the server a “[8a] consent/no-consent signal,” which indicates whether selected personal contact information can be transmitted to the querying party. The selected information is a name, a street address, a telephone number, a fax number, a pager number, or a social security number of the listing party (steps [9], 2 The preamble require that the personal contact information comprises “two or more of a name, a street address, a telephone number, a fax number, a pager number, a social security number, and an email address of the listing party.” Appeal 2020-002127 Application 15/807,709 5 [10], but not an email address (step [11]). The information is then [12] transmitted back to the querying party after consent is given by the listing party and the personal contact information to be sent back is selected. Thus, the listing party can determine whether to provide contact information to a querying party, and if consent is given to share the information, the querying party can decide the extent of personal contact information to share. REJECTION Salzfass describes a system and method “for routing an otherwise undeliverable e-mail message to an intended recipient.” Salzfass ¶ 12. Salzfass describes identifying the most current email of the recipient and routing the undeliverable email to that address. Id. ¶¶ 12, 58. The Examiner found that Salzfass describes all the steps in claim 1, except for not specifying that the personal contact information comprises “two or more of a name, a street address, a telephone number, a fax number, a pager number, a social security number, and an email address of the listing party” as recited in the preamble of claim 1. Final Act. 6–8. For this limitation, the Examiner further cited Benjamin, finding it obvious to incorporate Benjamin into Salzfass to “provide an improved system for dealing with undeliverable email messages by attempting to discern the likely correct email address based on the incorrect one supplied.” Id. at 8–9. Appellant argues that Salzfass does not describe steps [8]–[11] and [12]–[13] of the claim in which, when the listing party consents to send its personal information to the querying party, only selected information is transmitted to the device of the querying party and that information does not contain the email address. Appeal 2020-002127 Application 15/807,709 6 DISCUSSION We begin by looking at the pertinent disclosure in Salzfass cited by the Examiner because Salzfass is at the center of the dispute between the Examiner and Appellant. As set forth in more detail in the previous section, Salzfass describes a system and method for routing emails. Salzfass ¶ 1. In Salzfass’s system, there is a sender who sends an email to an intended recipient. Salzfass ¶ 17. The sender corresponds to the claimed “querying party” and the intended recipient corresponds to the claimed “listing party.” The intended recipient/listing party can enter into, or list in, a database its invalid and valid email addresses. Id. ¶¶ 16, 17. When a sender/querying party sends an email to an invalid email address of the intended recipient/listing party, the intended recipient/listing party has the option of having the e-mail forwarding server [DB+FS] forward the email to a valid email address of the intended recipient/listing party, which is listed in the database. Salzfass ¶ 61. Salzfass explains: The DB+FS 170 will send a notification message to the current e-mail address at the current (new) incoming e-mail server (recipient) 160 [“listing party”] . The notification message will include various information and at the very least the notification message will indicate that the e-mail message had been addressed to the prior [invalid] e-mail address and will list the sender’s [“querying party”] e-mail address. . . . The notification message can include an interactive dialog box that permits the intended recipient [“listing party”] to select whether the initial e- mail should be forwarded to the current e-mail address at the current (new) incoming e-mail server (recipient) 160. [“listing party”] The dialog box may simply consist of interactive yes and no buttons. Salzfass ¶ 61. Appeal 2020-002127 Application 15/807,709 7 Salzfass further discloses that, when the e-mail is forwarded to a valid email address of the intended recipient/listing party, the sender/querying party can be notified “that an address change has occurred and will include the current valid e-mail address of the intended recipient.” Salzfass ¶ 67. The intended recipient/listing party can also receive an e-mail from the sender/querying party, but can select a “confidential forward function” in which the sender/querying party is not notified of the intended recipient/listing party’s e-mail address: The DB+FS 170 may also be configured so that it includes another setting identified as a confidential forward function. Preferably, this is part of the on-demand function previously discussed and therefore will be provided in the form of an interactive button in the dialog box in addition to the yes and no interactive buttons. After having received the notification that an e-mail has been received and after knowing the sender [“querying party”] address, the intended recipient [“listing party”] may wish to receive the initial e-mail so as to be able to fully read the contents thereof, however, the intended recipient [“listing party”] does not want the sender [“querying party”] to be apprized of the current e-mail address of the intended recipient. If this is the case, the intended recipient [“listing party”] simply clicks on the confidential forward function and the initial e-mail is forwarded to the intended recipient [“listing party”]. This function permits the intended recipient [“listing party”] to read the contents of selected e-mails without automatically notifying the sender [“querying party”] of the address change. Salzfass ¶ 71 (emphasis and brackets added). Salzfass thus teaches that the intended recipient/listing party can consent to sending personal contact or not consent to it as in step [8a] of claim 1. Appeal 2020-002127 Application 15/807,709 8 Appellant argues that this disclosure does not meet the claim limitations, because the claim excludes, in step [11], the email address from the selected information that is transmitted to the sender/querying party. Appeal Br. 14. Appellant also argues that the system either sends all the contact information of the intended recipient/listing party to the sender/querying party, or sends no information. Id. at 14–15. For this reason, Appellant contends that Salzfass does not describe transmitting “selected information” to the sender/querying party, which “is selected from the personal contact information of the [sender/]listing party that is contained in the database” as recited in steps [8] and [9] of claim 1. The Examiner responded in the Answer (at page 6) by directing Appellant’s attention to paragraph 77 of Salzfass which discloses that “the present system permits the intended recipient to anonymously reply to the initial e-mail by routing the reply message through the DB+FS 170.” Salzfass explains “once the intended recipient commands the DB+FS 170 to deliver the e-mail to the current (new) incoming e-mail server (recipient) 160, the initial e-mail is not readdressed but rather, at step 510, the DB+FS 170 enters a unique tracking code to the routing information set forth in the profile of the e-mail.” Salzfass ¶ 77. Salzfass further discloses that “the sender receives a reply e-mail in which the reply sender information lists only the unique tracking code and does not reveal any personal address information concerning the sender of the reply (the original intended recipient).” Salzfass concludes that the “DB+FS 170 is thus designed to strip from the initial e-mail all personal address information relative to the intended recipient. Thus, this embodiment provides an anonymous method of replying to the sender of the initial e-mail.” Id. Appeal 2020-002127 Application 15/807,709 9 In the anonymous reply option, Salzfass discloses that “a unique tracking code” is transmitted to the sender/querying party. This option can be characterized as the “consent” in step [8a] because “consent” only requires a “signal indicating selected information to be transmitted to the [sender/] querying party.” Salzfass teaches that the email address is not sent to the sender/querying party and thus step [11] of the claim is met. The information is “selected” as required by steps [8] and [9] of the claim because, when the intended recipient/listing party decides to use the anonymous reply option, the unique tracking code is selected and sent to the sender/querying party. The only difference between the claim and Salzfass is the nature of the information that is transmitted. Specifically, in claim 1, the information must be “the personal contact information of the listing party,” which is listed in the preamble of claim 1 as “a name, a street address, a telephone number, a fax number, a pager number, a social security number, and an email address of the listing party.” However, we consider this information to be non-functional descriptive matter intended for human perception because there is no functional relationship between the information and any server, computer, device, web browser, etc., recited in the claim. In re Ngai, 367 F.3d 1336 (Fed. Cir. 2004); In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983); Ex parte Nehls, 88 USPQ2d 1883, 1889 (BPAI 2008) (precedential) (“[T]he nature of the information being manipulated does not lend patentability to an otherwise unpatentable computer-implemented product or process.”). The personal information that is transmitted to the sender/querying party, unlike the e-mail address that directs the e-mail to its destination, has no function other than just being information intended for Appeal 2020-002127 Application 15/807,709 10 human perception. Consequently, it is inadequate to distinguish the claimed subject matter from Salzfass.3 For the foregoing reasons, the obviousness rejection of claim 1 is affirmed. However, because our reasoning differs from the Examiner’s, we designate this affirmance as a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). Independent claim 12 has substantially the same limitations of claim 1 and is affirmed for the same reasons. Dependent claims 2–11, and 13–20 were not argued separately and fall with claims 1 and 12 and for the reasons set forth by the Examiner. 37 C.F.R.§ 41.37(c)(1)(iv). OBVIOUSNESS REJECTION BASED ON SALZFASS, BENJAMIN, AND PELTONEN The Examiner further cited Peltonen to meet limitations in dependent claim 8 and 18. Final Act. 12. Appellant argued that Peltonen does not meet the deficiencies in Salzfass and Benjamin described for claim 1, but does not provide separate arguments as to why Peltonen does not make claims 8 and 12 obvious in view of Salzfass and Benjamin. Appeal Br. 24–25. Consequently, the rejection of clam 8 and 18 is affirmed for the reason provided by the Examiner. 3 The Examiner did not give a reason why such information would have been obvious to send back the specific type of personal information recited in the claim. If prosecution is re-opened pursuant to § 41.50, the Examiner may want to consider the obviousness of transmitting this type of information back to the sender/querying party. While the Examiner cited Benjamin for disclosing such information, the Examiner did not explain why it would have been obvious to modify Salzfass with Benjamin to select and transmit the selected information to the sender as recited in limitations [8], [9], [10], and [12] of claim 1. Ans. 8. Appeal 2020-002127 Application 15/807,709 11 PATENT ELIGIBLITY UNDER 35 U.S.C. § 101 During prosecution, the Examiner had rejected the claims under 35 U.S.C. § 101 as directed to a judicial exception, which the Examiner described as a method for organizing human activity. Office Act. 2 (Feb. 27, 2018). Appellant responded that Examiner had mischaracterized the claim and not considered all its limitations when evaluating the scope of the claim. Response 11–12 (May 4, 2018). The Examiner withdrew the rejection, but provided no explanation. Final Act. 2 (Sept. 6, 2018). We have reconsidered the claim in view of the Eligibility Guidance published in 20194 after the Examiner withdrew the rejection. We have determined that a rejection under 35 U.S.C. § 101 is appropriate under this Guidance. This is a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). PRINCIPLES OF LAW 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.” However, not every discovery is eligible for patent protection. Diamond v. Diehr, 450 U.S. 175, 185 (1981). “Excluded from such patent protection are laws of nature, natural phenomena, and abstract ideas.” Id. The Supreme Court articulated a two-step analysis to determine whether a claim falls within an excluded category of invention. Alice Corp. v. CLS Bank Int’l, 573 4 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Eligibility Guidance”) (throughout this decision, we cite to the Federal Register where the Eligibility Guidance is published). Appeal 2020-002127 Application 15/807,709 12 U.S. 208 (2014); Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012). In the first step, it is determined “whether the claims at issue are directed to one of those patent-ineligible concepts.” Alice, 573 U.S. at 217. If it is determined that the claims are directed to an ineligible concept, then the second step of the two-part analysis is applied in which it is asked “[w]hat else is there in the claims before us?” Id. (alteration in original) (citation and quotation marks omitted). The Court explained that this step involves a search for an “‘inventive concept’”—i.e., an element or combination of elements that is “sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.” Alice, 573 U.S. at 217–18 (alteration in original) (citing Mayo, 566 U.S. at 75–77). Alice, relying on the analysis in Mayo of a claim directed to a law of nature, stated that in the second part of the analysis, “the elements of each claim both individually and ‘as an ordered combination’” must be considered “to determine whether the additional elements ‘transform the nature of the claim’ into a patent-eligible application.” Alice, 573 U.S. at 217 (citation omitted). The PTO’s Eligibility Guidance, 84 Fed. Reg. 50, provides additional direction on how to implement the two-part analysis of Mayo and Alice. Step 2A, Prong One, of the Eligibility Guidance, looks at the specific limitations in the claim to determine whether the claim recites a judicial exception to patent eligibility. In Step 2A, Prong Two, the claims are examined to identify whether there are additional elements in the claims that integrate the exception in a practical application, namely, is there a “meaningful limit on the judicial exception, such that the claim is more than Appeal 2020-002127 Application 15/807,709 13 a drafting effort designed to monopolize the judicial exception.” 84 Fed. Reg. 54 (Prong Two). If the claim recites a judicial exception that is not integrated into a practical application, then as in the Mayo/Alice framework, Step 2B of the 2019 Eligibility Guidance instructs us to determine whether there is a claimed “inventive concept” to ensure that the claims define an invention that is significantly more than the ineligible concept itself. 84 Fed. Reg. 56. With these guiding principles in mind, we proceed to determine whether the claimed subject matter in this appeal is eligible for patent protection under 35 U.S.C. § 101. DISCUSSION Claim 1 is directed to a method performed by a bridge website server. A method is also a “process,” one of the broad statutory categories of patent- eligible subject matter under 35 U.S.C. § 101. Therefore, we find that the claim is directed to a statutory class of invention, and proceed to Step 2A, Prong One, of the Eligibility Guidance. Step 2A, Prong One In Step 2A, Prong One, of the Eligibility Guidance, the specific limitations in the claim are examined to determine whether the claim recites a judicial exception to patent eligibility, namely, whether the claim recites an abstract idea, law of nature, or natural phenomenon. Each limitation in the claim must be searched to determine whether it recites a judicial exception. Eligibility Guidance, 84 Fed. Reg. at 54. Appeal 2020-002127 Application 15/807,709 14 The claimed method involves the exchange of personal contact information between a listing party that lists the information in a web-based database or directory and a querying party who seeks the information. As explained in the Specification, the “web-based directories operate on a common principal–the querying party goes to the appropriate website and then enters the name of the person they are trying to search (the listing party), and the search engine finds the listing party’s email (or other contact information such as residential address and telephone number) and displays it to the querying party.” Spec. ¶ 3. The Specification further discloses: What is needed is a way to be contacted by people by whom one wants to be contacted, while not being contacted by people sought to be avoided. What is needed is a way to allow listing parties to provide personal information to querying parties with whom the listing party desires to be contacted, while at the same time hiding the information from querying parties whom the listing party does not want to communicate. Spec. ¶ 10. Claim 1, as explained above, comprises [1] a querying party, who is a person ([3]), requesting from a web browser the personal contact information of a listing party (who is also a person ([4])) and [6] transmitting the request to the listing party’s device. The listing party sends to the server a “[8a] a consent/no-consent signal,” which indicates whether selected personal contact information can be transmitted to the querying party. The selected information is a name, a street address, a telephone number, a fax number, a pager number, or a social security number of the listing party. The information is then [12] transmitted back to the querying party after consent is given by the listing party and the personal contact information to be sent back is selected. Thus, the listing party can determine whether to provide Appeal 2020-002127 Application 15/807,709 15 contact information to a querying party, and if consent is given to share the information, the querying party can decide the extent of personal contact information to share. We consider the claim to be a method of organizing human activity, one of the broad categories of abstract ideas listed in the Eligibility Guidance, because it involves the exchange of personal contact information between two parties, both of whom are persons. See Eligibility Guidance, 84 Fed. Reg. at 52. Rejected claim 1 is similar to the claim in In re Abel, 838 Fed.Appx. 558 (Fed. Cir. 2021), which the court found was directed to the abstract idea of a method of organizing human activity. Claim 1 of Abel involved preparing a physical mailer by a sender where the sender’s access to the receiver’s mailer is controlled. Id. at 560. The court explained that the “focus is on using a generic computer as a tool to perform a communication practice—giving a message to an intermediary who, unlike the sender, knows the intended recipient’s location—that is familiar in the economic sphere and elsewhere.” Id. at 561. The same analysis applies here because, like in Abel, the claim allows a listing party to control access to its personal contact information. We next address the steps in the claim to determine which steps recite an abstract idea. In the first step [1] of the claim, the querying party requests the personal contact information of the listing party by sending from a “first device executing a web browser” [1b] a querying signal to the bridge website server. The querying signal comprises [2a] search terms from the personal contact information of the listing party and [2b] personal contact Appeal 2020-002127 Application 15/807,709 16 information of the querying party, which is [5] stored in the registration facility. The querying signal from the first device of the querying party is sent in step [6] to a second device of the listing party. The signal is the request from for the personal contact information of the listing party and is referred to as [6a] “a query notification signal.” The signal also comprises [7] the personal contact information of the querying party stored in the registration facility. Both steps [1] and [6], in which a request for personal contact information is made by the querying party and then transmitted to the listing party, are part of the method organizing human activity because these steps include commercial activity, for example, in which a telemarketer may be seeking the listing party’s information to market an item to them. See Spec. 5.5 The listing party in step [8] sends to the bridge website server from its second device “[8a] a consent/no-consent signal indicating selected information to be transmitted to the querying party.” The selected information [9] is selected from the personal contact information of the listing party that is contained in the database, [10] “comprises at least some of the personal contact information of the listing party that is different than the one or more search terms,” and [11] does not comprise the email address 5 “Like the person that keeps their telephone number unlisted in published telephone directories, these people refuse to have their email made available to the general public for fear of being barraged by unwanted emails, otherwise known as ‘spam.’ They are also afraid to have their residential addresses be made available for fear of obtaining junk mail, and their telephone numbers made available for fear of receiving unsolicited and undesired telephone calls from telemarketers.” Spec. ¶ 5. See also Spec. ¶ 6 (“The problem of unwanted contact is heightened by heavy marketing activities of commercial interests seeking to expand their customer bases.”) Appeal 2020-002127 Application 15/807,709 17 of the listing party.” Thus, the listing party can consent to sending information to the querying party or not consent to do so. When the listing party consents to send the information to the querying party, it is transmitted to the first device in step [12] of the claim, where [13] information that is not the selected information is not transmitted. The “consent/no-consent signal” of step [8] and then determining what information can be shared when consent is given to share information (also step [8]), and subsequently transmitting the information (step [12]) are each a part of the method of organizing human activity because the concept of requesting information and subsequently protecting the information from being shared are privacy concerns that have been characterized as an abstract idea. Abel, 838 Fed.Appx. at 561. In addition, the exchange of personal contact information between both parties to facilitate the formation of social networks, including “shielding” contact information, has also been characterized as the abstract idea of organizing human activity. NetSoc, LLC v. Match Group, LLC, 838 Fed.Appx. 544, 548 (Fed. Cir. 2020).6 While the steps of the method are performed on a server which comprises a computer, it is well-established that “[s]teps that do nothing more than spell out what it means to ‘apply it on a computer’ cannot confer patent-eligibility. Alice, 134 S. Ct. at 2359.” Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1370–71 (Fed. Cir. 2015). 6 “Moreover, the claimed invention of establishing a social network is an abstract idea ‘pertaining to methods of organizing human activity.’ . . . Namely, . . . “shielding” contact information . . . are all human activities that the claims more efficiently organize by applying them to a ‘network computer system.’ ’107 patent col. 17 ll. 15–48.” Appeal 2020-002127 Application 15/807,709 18 Because we conclude that claim 1 recites a judicial exception to patent eligibility, we proceed to Step 2A, Prong Two of the analysis. Step 2A, Prong Two Prong Two of Step 2A in the Eligibility Guidance asks whether there are additional elements that integrate the exception into a practical application. We must look at the claim elements individually and “as an ordered combination” to determine whether the additional elements integrate the recited abstract idea into a practical application. As explained in the Eligibility Guidance, integration may be found when an additional element “reflects an improvement in the functioning of a computer, or an improvement to other technology or technical field” or “applies or uses the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception.” Eligibility Guidance 84 Fed. Reg. at 55. The PEG Update7 further explains that “the specification should be evaluated to determine if the disclosure provides sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement.” PEG Update 12. We thus turn to the Specification. The Specification discloses that “due to privacy consideration, many people refuse to list their personal contact information on databases that can be publicly accessed.” Spec. ¶ 5. 7 Available at https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p df (last accessed Dec. 31, 2020) (“PEG Update”). Appeal 2020-002127 Application 15/807,709 19 The Specification states that listing contact information in web-based directories opens people to spam, unsolicited calls from telemarketers, telephone cold-calling, mass paper mailings, unwanted emails, etc. Spec. ¶¶ 5–7. For this reason, the Specification explains that a querying party “with whom the listing party would like to make contact have no way of making the contact since the contact information is not made generally available in a directory.” Spec. ¶ 9. The querying party “cannot find their lost friend's email, telephone number, address and other contact information.” Id. The Specification states that what is needed “is a way to be contacted by people by whom one wants to be contacted, while not being contacted by people sought to be avoided” and “a way to allow listing parties to provide personal information to querying parties with whom the listing party desires to be contacted, while at the same time hiding the information from querying parties whom the listing party does not want to communicate.” Spec. ¶ 10. The Specification, in its Summary, describes its invention to this problem: The invention is a method and apparatus for people who would like to list their information in directories (the ‘listing party’) to distribute their personal contact information (such as their personal email address, telephone number, pager number, and fax number) to only those people inquiring about their personal information (the ‘querying party’) by whom the listing party wants to be contacted. Spec. ¶ 11 The Specification discloses that the method “employs a bridge website as a directory for electronic mail addresses, telephone numbers, pager numbers, fax numbers, street addresses, and any combination thereof.” Appeal 2020-002127 Application 15/807,709 20 Spec. ¶ 11. The bridge website is created by a bridge website server. Spec. ¶ 21. The Specification does not disclose a technical improvement by which “the listing party approves or denies a request for personal contact information after the querying party who is seeking the personal contact information is identified” (Spec. ¶ 12). Moreover, the Specification describes the claimed bridge website server comprising at least one computer in the most general of terms, without any detail of it is structured or otherwise operate. Spec. ¶ 21.Thus, the technology of claim 1 merely evinces the use of generic computer technology to implement an otherwise abstract process on a server. Each of the steps recited in the claim state that a server is used to receive a querying signal (step [1]), store personal contact information (step [5]), transmit “the request from the querying party for the personal contact information of the listing party” (step [6]), receive the consent/no-consent signal “indicating selected information to be transmitted to the querying party” (step [8]) and transmit the selected information to the querying party (step [12]). The claim thus involves the transfer of information from a querying party to a listing party and a listing party to a querying party when consent is provided, but there is no recitation in the claim how the steps, or any other steps in the claim, are implemented by the server. As explained in McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1315 (Fed. Cir. 2016), we must “look to whether the claims . . . focus on a specific means or method that improves the relevant technology or are instead directed to a result or effect that itself is the abstract idea and merely invoke generic processes and machinery.” Dropbox, Inc. et al. v. Appeal 2020-002127 Application 15/807,709 21 Synchronoss Technologies, Inc., 815 Fed. Appx. 529, 533 (Fed. Cir. 2020) (nonprecedential), further summarized: The patent has to describe how to solve the problem in a manner that encompasses something more than the “principle in the abstract.” See [ChargePoint, Inc. v. SemaConnect, Inc., 920 F.3d 759, 769 (Fed. Cir. 2019)] (explaining that an invention may not be patent eligible if the “claims ‘were drafted in such a result- oriented way that they amounted to encompassing the ‘principle in the abstract’ no matter how implemented’” (quoting Interval Licensing LLC v. AOL, Inc., 896 F.3d 1335, 1343 (Fed. Cir. 2018))). Dropbox, 815 Fed.Appx. at 533. The steps described above for transferring the information between the parties are recited in a “result-oriented way” and therefore do not provide a specific technological solution to the claim beyond the judicial exception. Like the court found in Abel, 838 Fed.Appx. at 561, “nothing about the evident problem of recipient privacy is specific to a particular computer regimen, and in any event, nothing in the claim points to a specific improvement in computers in their communications role.” To the extent that step [8] provides the improvement, as explained under Step 2A, Prong One, it is part of the abstract idea and “[t]he abstract idea itself cannot supply the inventive concept.” Trading Tech. Int’l, Inc. v. IBG LLC, 921 F.3d 1378, 1385 (Fed. Cir. 2019). The additional steps in the claims beyond the judicial exception, such step [5] in which information is stored and steps [1], [2], and [7] which recite querying and querying notification signals, are also recited in a result- orient way without providing a technical improvement to how the information is stored or how the signals are generated and transmitted, and Appeal 2020-002127 Application 15/807,709 22 thus do not integrate the abstract idea into a practical application. See Eligibility Guidance 84 Fed. Reg. at 55 as discussed above. Because we find that the abstract idea is not integrated into a practical application under Step 2, Prong Two, we proceed to Step 2B of the analysis. Step 2B Step 2B of the Eligibility Guidance asks whether there is an inventive concept. In making this Step 2B determination, we must consider whether there are specific limitations or elements recited in the claim “that are not well-understood, routine, conventional activity in the field, which is indicative that an inventive concept may be present,” or whether the claim “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.” 84 Fed. Reg. 56 (footnote omitted). The steps when considered as a whole do not provide an inventive concept. As the court found in Abel, 561–562, “[t]he abstract idea itself encompasses most of what is found in claim 1. What remains is merely implementation on conventional computers.” Specifically, as explained under Step 2A, Prong One, we found that the receiving a querying signal (step [1]), storing personal contact information (step [5]), transmit “the request from the querying party for the personal contact information of the listing party” (step [6]), receive the consent/no-consent signal “indicating selected information to be transmitted to the querying party” (step [8]) and transmit the selected information to the querying party (step [12]) are integral to the method of organizing human activity because “these steps Appeal 2020-002127 Application 15/807,709 23 only explicate the necessary steps” of protecting personal contact information of the listing party. See BOOM! PAYMENTS, Inc. v. Stripe, Inc., 839 Fed. Appx. 528, 532–533 (Fed. Cir. 2021) (“[W]e agree with Stripe that these steps only explicate the necessary steps of an escrow arrangement and do not change the direction of the claims. Accordingly, we conclude that the claims are directed to an abstract idea at step one.”). The “bridge website server” is described in the Specification as “comprised of any computer, sub-component of a computer, or group of computers, or any combination thereof, that is available on the Internet.” Spec. ¶ 21. Thus, the server appears to be a generic computer that implements the abstract in well understood, routine, and conventional way that computers ordinary function. Consequently, we do not discern an inventive concept in how the abstract idea is implemented on the server. CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed New Grounds 1–7, 9– 17, 19, 20 103(a) Salzfass, Benjamin 1–7, 9– 17, 19, 20 1–7, 9– 17, 19, 20 8, 18 103(a) Salzfass, Benjamin, Peltonen 8, 18 1–20 Eligibility 1–20 Overall Outcome 1–20 Appeal 2020-002127 Application 15/807,709 24 TIME PERIOD FOR RESPONSE This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. . . . Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED; 37 C.F.R. 41.50(b)