Hsiao, Sissie Ling-Ie. et al.

Patent Trials and Appeals Board

May 12, 2020

13070038 - (D) (P.T.A.B. May. 12, 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.
13/070,038 03/23/2011 Sissie Ling-Ie Hsiao 16113-2176001 1234
26192 7590 05/12/2020
FISH & RICHARDSON P.C.
PO BOX 1022
MINNEAPOLIS, MN 55440-1022
EXAMINER
KOLOSOWSKI-GAGER, KATHERINE
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
05/12/2020 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):
PATDOCTC@fr.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SISSIE LING-IE HSIAO, CHAO CAI, ERIC W. EWALD,
CAMERON M. TANGNEY, ROBERT A. WALKER II, JAPJIT TULSI,
MING LEI, and ZHIMIN HE
____________

Appeal 2019-002926
Application 13/070,038
Technology Center 3600
____________

Before JOSEPH L. DIXON, MAHSHID D. SAADAT, and
ELENI MANTIS MERCADER, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 3–6, 9–13, 16–20, and 22–26, which
are all the claims pending in this application.2 We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

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 Google,
LLC. Appeal Br. 1.
2 Claims 2, 7, 8, 14, 15, and 21 have been canceled.
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STATEMENT OF THE CASE
Introduction
Appellant’s disclosure is directed to methods and systems for
providing reports to a content provider that “specify conversion path
performance measures that measure user interactions with content provided
by the advertiser and that occurred prior to a conversion,” which are “a total
quantity of interactions between the advertiser’s content and a user prior to
the user performing an action that constitutes a conversion.” See Spec. 2:5–
11. Claim 1 is illustrative of the invention and reads as follows:
1. A method performed by a data processing
apparatus, the method comprising:
obtaining, for a particular advertiser, user
interaction data for a plurality of conversions;
for each conversion among the plurality of
conversions:
creating, within a table that stores data for a
plurality of different advertisers in multiple rows of the table, a
row that is indexed to a conversion identifier that uniquely
identifies the conversion and the particular advertiser;
storing, within the row that is indexed to the
conversion identifier, a set of the user interaction data for a user
that performed the conversion identified by the conversion
identifier, wherein the set of the user interaction data is the user
interaction data representing user interactions of the user that
were performed within a specified amount of time prior to the
conversion, wherein the storing includes:
storing, within a same cell of the row,
user interaction data for multiple different user actions of a
same interaction type along with timestamps for each of the
different user interactions;
identifying, from the rows having a conversion
identifier that identifies the particular advertiser, a set of
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conversions including conversions that were performed by
multiple different users;
accessing, within cells of the rows having the
conversion identifier that identifies the particular advertiser, the
user interaction data that specify an identifier corresponding to
a user that performed the conversion and one or more
advertisements from the particular advertiser that the user
interacted with prior to performing the conversion;
determining, by one or more data processing
apparatus, for each conversion, and using the user interaction
data, how many of the one or more advertisements from the
particular advertiser were clicked by the user that performed the
conversion prior to the conversion being performed by the user
based on a number of user interactions of the same interaction
type that are specified by the user interaction data included in
the same cell that includes the user interaction data for user
clicks;
determining, by one or more data processing
apparatus and for each of various different particular numbers
of user clicks of the one or more advertisements, how many of
the conversions from the set of conversions were performed by
a corresponding user after the corresponding user clicked the
particular number of the one or more advertisements;
receiving, through a campaign user interface presented to
a provider of the one or more advertisements at a client device,
a request for a path length report;
in response to receiving the request, dynamically
generating a report user interface that includes the path length
report, wherein, for each of the particular number of user clicks,
the path length report specifies how many conversions were
performed by users after those users performed the particular
number of user clicks of the one or more advertisements;
updating the campaign user interface to incorporate a
presentation of the report user interface that is presented to the
provider at the client device;
detecting, through the report user interface presented to
the provider of the one or more advertisements, interaction with
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a conversion type selection control presented in the report user
interface, wherein interaction with the conversion type selection
control initiates a request for an updated path length report that
specifies path length measures for a specific type of conversion;
and
dynamically updating, based on the client side
interaction, a presentation of the report user interface, presented
to the provider of the one or more advertisements, to modify the
path length report based on the specific type of conversion
selected through the interaction with the conversion type
selection control, wherein the dynamic updating causes the path
length report to visually present path length measures for the
specific type of conversion.
Appeal Br. 20–22 (Claims App.).
The Examiner’s Rejection
Claims 1, 3–6, 9–13, 16–20, and 22–26 stand rejected under 35 U.S.C.
§ 101 as directed to a judicial exception, without significantly more. Final
Act. 3–5.3
ANALYSIS
Rejection and Arguments
The Examiner determines “the claimed invention is directed to a
judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract
idea) without significantly more.” Final Act. 3. The Examiner specifically
determines “the independent claims describe fundamental economic
practices that the courts have deemed abstract” and provides a list of court
cases relating to the subject matter similar to Appellant’s claims as follows:
These steps describe the concept which corresponds to concepts
identified as abstract ideas by the courts, such as collecting and
comparing known information (Classen), collecting information,

3 The Examiner withdrew the final rejection of claims 1, 3–6, 9–13, 16–20,
and 22–26 under 35 U.S.C. § 103. See Ans. 3.
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analyzing it, and displaying certain results of the collection an
analysis (Electric Power), obtaining and comparing intangible
data (CyberSource), and providing user-selected media to
portable devices (Affinity Labs). These concepts relate to an
“idea” as well as “certain methods of organizing human activity”.
These steps further describe the concept of advertising, which
corresponds to concepts identified as abstract ideas by the courts,
such as displaying of advertising (Ultramercial). The concept
described the claims above is not meaningfully different than
those “idea” as well as “organizing human activity” found by the
courts to be abstract ideas.
Id. The Examiner finds “[i]n the instant case, the majority of the limitations
are drawn to what the courts have recognized to be computer functions that
are well-understood, routine, and conventional functions and/or devices.”
Final Act. 3–4. The Examiner also finds “the additional limitations of one or
more ‘data processing apparatus’ which is/are used to execute the limitations
of the claim including stored user interactions, accessing data, and
determining conversion information,” the “client device” of claim 1, “the
use of a system and a data store (claim 13), as well as a non-transitory
storage media embodying software operable when executed (claim 26) in
order to execute the claimed limitations” are “recited at a high level of
generality and are recited as performing generic computer functions
routinely used in computer applications” with no indication that their
combination “improves the functioning of a computer or improves any other
technology. Their collective functions merely provide conventional
computer implementation.” Final Act. 4.
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Appellant contends the claimed invention is not directed to an abstract
idea because, similar to the claims in McRO,4 improves an existing
technological process such as “efficient storage and retrieval of
information from a table to facilitate the efficient creation of a report,
thereby improving the functioning of the computer itself.” Appeal Br. 10.
Appellant argues “the claims present previously unknown, specific and
concrete solutions to problems that have been faced by those skilled in the
art, such as how to efficiently manage immense amounts of data in a way
that will allow reports to be generated within a reasonable amount of time.”
Appeal Br. 11 (citing Spec. pp. 7, 8, 122, 124). Referring to the holding in
Enfish,5 Appellant argues “the focus of the claims is on improvement to
computer functionality itself” because “the present claims recite a specific
technique for storing and accessing data that provides for faster updates to
the data, faster searching of the data, and faster report generation than would
be possible using other techniques.” Appeal Br. 12; see also Reply Br. 1–2.
Lastly, Appellant argues that the pending claims do not preempt all ways of
implementing the idea because they recite “a specific combination of
features that provide ‘a particular solution to a problem or a particular way
to achieve a desired outcome.’ (MPEP § 2106.07(b))” and “‘specific
limitation[s] other than what is well-understood, routine, conventional
activity in the field,’ and ‘unconventional steps that confine the claim to a
particular useful application.’ (MPEP § 2106.05(I)(A)(v)).” Appeal Br. 14–
15.

4 McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299 (Fed. Cir.
2016).
5 Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016).
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Legal Principles
“Whether a claim is drawn to patent-eligible subject matter is an issue
of law that we review de novo.” SiRF Tech., Inc. v. Int’l Trade Comm’n,
601 F.3d 1319, 1331 (Fed. Cir. 2010).
Section 101 of the Patent Act provides “[w]hoever invents or
discovers any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof, may
obtain a patent therefor, subject to the conditions and requirements of this
title.” 35 U.S.C. § 101. However, the Supreme Court has long interpreted
35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural
phenomena, and abstract ideas” are not patentable. E.g., Alice Corp. Pty.
Ltd. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (internal quotation marks
and citation omitted).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See 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.”).
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);
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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))).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a
patent-eligible application.” Alice, 573 U.S. at 221 (citation 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. (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.
The PTO published revised guidance on the application of § 101.
USPTO, 2019 REVISED PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE, 84
Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the Guidance, we first look
to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes) (Step 2A, Prong 1); and
(2) additional elements that integrate the judicial exception into
a practical application (see MANUAL OF PATENT EXAMINING
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PROCEDURE (“MPEP”) § 2106.05(a)–(c), (e)–(h)) (9th Ed., Rev.
08.2017, 2018) (Step 2A, Prong 2).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, conventional” in the field (see
MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception. (Step 2B.)
See Guidance, 84 Fed. Reg. at 54–56.
Abstract Idea
Independent claim 1 recites an abstract idea because the claim recites
a method of organizing human activities, one of the abstract idea groupings
listed in the Guidance. See, 84 Fed. Reg. at 52, 53 (listing “[c]ertain
methods of organizing human [activities] such as fundamental economic
principles or practices (including mitigating risk) and commercial or legal
interactions (including marketing or sales activities or behaviors; business
relations) as one of the “enumerated groupings of abstract ideas”).
The Specification at page 10 states that the invention generally relates
to providing reports of user interactions to advertisers including conversion
path performance measures, such as a total quantity of interactions between
the content and a user. Examples of the user actions that constitute a
conversion are “downloading a white paper, navigating to at least a given
depth of a website, viewing at least a certain quantity of web pages,
spending at least a predetermined amount of time on a website or web page,
or registering on a website.” Spec. 10:15–19. An advertiser tracks
conversions by including “a portion of code that monitors user interactions
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(e.g., page selections, content item selections, and other interactions) with
advertiser’s website, and can detect a user interaction (or series of user
interactions) that constitutes a conversion” in their web pages. Spec. 10:25–
29.
Claim 1 recites functions related to the concept of creating a table,
storing user interaction data with the search system in a browser related to
different user actions, accessing and determining multiple aspects of the user
interactions with respect to a transaction, and updating the entries to
generate a report. See Appeal Br. 20–22 (Claims App.). Claims 13 and 26
recite a system and a computer storage medium encoded with instructions,
respectively, that perform functions similar to the method steps recited in
claim 1. Determining and storing user interaction data in a database or table
and using the collected information to focus advertising efforts does not
require a machine, let alone a particular machine, to implement, and
therefore fits squarely within the human activity organization category of the
agency’s guidelines. See Guidance, 84 Fed. Reg. at 52 (listing exemplary
methods of organizing human activity including (1) fundamental economic
principles or practices, and (2) commercial or legal interactions).
Additionally, the recited methods are abstract similar to collecting and
analyzing information which was determined to be an abstract idea in
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089 (Fed. Cir. 2016) and
how organizing and manipulating information through mathematical
correlations was an abstract idea in Digitech Image Techs., LLC v. Elecs. for
Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014). Courts have also found
claims directed to collecting, recognizing, and storing data in a computer
memory to be directed to an abstract idea. Content Extraction and
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Transmission LLC v. Wells Fargo Bank, National Association, 776 F.3d
1343 (Fed. Cir. 2014). Similar to buySAFE, Inc. v. Google, Inc., 765 F.3d
1350 (Fed. Cir. 2014), functions performed according to a created
contractual relationship are abstract. Thus, we determine that the claim
relates to the judicial exception identified above.
Although claim 1 recites an abstract idea based on these methods of
organizing human activity, we nevertheless must still determine whether the
abstract idea is integrated into a practical application, namely whether the
claim applies, relies on, or uses the abstract idea in a manner that imposes a
meaningful limit on the abstract idea, such that the claim is more than a
drafting effort designed to monopolize the abstract idea. See Guidance, 84
Fed. Reg. at 54–55. The Revised Guidance references the Manual of Patent
Examining Procedure (“MPEP”) §§ 2106.05(a)–(c) and (e)–(h). We
therefore (1) identify whether there are any additional recited elements
beyond the abstract idea, and (2) evaluate those elements individually and
collectively to determine whether they integrate the exception into a
practical application. See id.
Here, the claims do not improve computer functionality, improve
another field of technology, utilize a particular machine, or effect a
particular physical transformation. Rather, we determine that nothing in the
claims imposes a meaningful limit on the judicial exception, such that the
claims are more than a drafting effort to monopolize the judicial exception.
For example, in claim 1 the steps of (1) “obtaining, for a particular
advertiser, user interaction data,” which are arranged in a table (2)
“identifying, . . ., a set of conversions,” (3) “accessing, . . ., the user
interaction data” (4) “determining, . . . ., how many of the one or more
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advertisements from the particular advertiser were clicked by the user,” (5)
“determining, . . ., how many of the conversions from the set of conversions
were performed by a corresponding user,” (6) dynamically generating and
updating a report in response to a request, (7) “detecting, . . ., interaction
with a conversion type selection control presented in the report user
interface,” (8) and “dynamically updating, . . ., presentation of the report
user interface” are merely steps performed by a generic computer that do not
improve computer functionality. That is, these recited steps (1)–(8) “do not .
. . purport to improve the functioning of the computer itself” but are merely
generic functions performed by a conventional processor. Alice, 573 U.S. at
255. Likewise, these same steps (1)–(8) listed above do not improve the
technology of the technical field and merely use generic computer
components and functions to perform the steps. Also, the recited method
steps (1)–(8) above do not require a “particular machine” and can be utilized
with a general purpose computer, and the steps performed are purely
conventional. In this case, the general purpose computer is merely an object
on which the method operates in a conventional manner. See Fig. 3B; Spec.
35:5–14 (describing a table portion 331 including data values related to time
lag ranges for conversions); Fig. 4B; Spec. 49:17–25 (describing a table
portion 431 including data values related to conversion path lengths).
Further, the claim as a whole fails to effect any particular transformation of
an article to a different state. The recited steps (1)–(8) fail to provide
meaningful limitations to limit the judicial exception and rather are mere
instructions to apply the method to a generic computer.
We disagree with Appellant (Appeal Br. 12; Reply Br. 2–5) that the
focus of claims 1, 13, and 26 is on a technical improvement. The mere
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recitation of obtaining, storing, accessing, and determining/identifying data
in claim 1 and other independent claims does not embody an improvement
in computer capabilities as in Enfish. See 822 F.3d at 1336. We are not
persuaded that the claimed invention improves the computer or its
components’ functionality or efficiency, or otherwise changes the way those
devices function, at least in the sense contemplated by the Federal Circuit in
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016). The
claimed self-referential table in Enfish was a specific type of data structure
designed to improve the way a computer stores and retrieves data in
memory. Enfish, 822 F.3d at 1339. To the extent Appellant contends that
the claimed invention uses such a data structure to improve a computer’s
functionality or efficiency, or otherwise change the way that device
functions, there is no persuasive evidence on this record to substantiate such
a contention. In that regard, we agree with the Examiner that
The table as claimed is centered on a single piece of information,
the conversion identifier itself, with the bulk of the limitations
directed to the types of data stored rather than the manner in
which it was stored, as was found to be the improvement in
Enfish. There is no “new type” of table being created, rather, the
table consists of standard rows and cells. This is more analogous
to filling in a spreadsheet with multiple types of variables as in,
say, Excel.
Ans. 4. Additionally, the Examiner properly finds, similar to the data
presented in a spread sheet, “when multiple columns and rows of data are
stored together, it is possible to manipulate the table itself in a variety of
ways: one can arrange a single column to show in descending or ascending
order, and determine if the row itself follows the reorganization or remains
unchanged.” Ans. 5.
Additionally, we are not persuaded that “[l]ike McRO, in the present
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case it is ‘the incorporation of the particular claimed rules’ that ‘improve
[the] existing technological process, unlike cases such as Alice where a
computer was merely used as a tool to perform an existing process.’ (MPEP
§ 2106.0S(a)(II).” See Appeal Br. 10. The claimed invention is not tied to a
machine, or improves the computer or its components’ functionality or
efficiency, or otherwise changes the way those devices function. In another
words, contrary to Appellant’s assertion (see above) and unlike the claimed
invention in McRO that improved how the physical display operated to
produce better quality images, the claimed invention here merely uses
generic computing components to collect and store user interaction data for
analysis. See Ans. 3–4. This generic computer implementation is not only
directed to an abstract idea, but also does not improve a display mechanism
as was the case in McRO. See McRO, Inc. v. Bandai Namco Games Am.
Inc., 837 F.3d 1299, 1314–15 (Fed. Cir. 2016) (finding claims not abstract
because they “focused on a specific asserted improvement in computer
animation”); see also SAP Am. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed.
Cir. 2018) (distinguishing McRO).
In other words, contrary to Appellant’s assertion (Appeal Br. 10–12;
Reply Br. 2–5), even assuming, without deciding, that the claimed invention
includes “a specific technique for storing and accessing data that provides
for faster updates to the data, faster searching of the data, and faster report
generation than would be possible using other techniques,” any speed
increase or efficiency comes from the capabilities of the generic computer
components—not the recited process itself. See FairWarning IP, LLC v.
Iatric Sys., Inc., 839 F.3d 1089, 1095 (Fed. Cir. 2016) (citing Bancorp
Servs., L.L.C. v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1278
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(Fed. Cir. 2012) (“[T]he fact that the required calculations could be
performed more efficiently via a computer does not materially alter the
patent eligibility of the claimed subject matter.”)). Like the claims in
FairWarning, the focus of claim 1 is not on an improvement in computer
processors as tools, but on certain independently abstract ideas that use
generic computing components as tools. See FairWarning, 839 F.3d at 1095
(citations and quotation marks omitted). Simply adding generic hardware
and computer components to perform abstract ideas does not integrate those
ideas into a practical application. See Guidance, 84 Fed. Reg. at 55
(identifying “merely includ[ing] instructions to implement an abstract idea
on a computer” as an example of when an abstract idea has not been
integrated into a practical application).
Considering the elements of the claim both individually and as “an
ordered combination,” the functions performed by the computer system at
each step of the process are purely conventional. Each step of the claimed
method, or each of the functions performed by the system claims, does no
more than require a generic computer to perform a generic computer
function. Thus, the claimed elements have not been shown to integrate the
judicial exception into a practical application as set forth in the Revised
Guidance which references the MPEP §§ 2106.05(a)–(c) and (e)–(h).
Inventive Concept
Because we determine claim 1 is “directed to” an abstract idea, we
consider whether claim 1 recites an “inventive concept” sufficient to
“transform” the abstract nature of the claim into a patent-eligible application.
The Examiner finds that claim 1 does not recite an inventive concept
because Appellant’s disclosure shows the components for performing the
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recited functions include the “the additional limitations of one or more ‘data
processing apparatus’ which is/are used to execute the limitations of the
claim including stored user interactions, accessing data, and determining
conversion information as claimed,” and more specifically, “recites a ‘client
device’ at which the campaign information/path report is received/sent, and
the interface is updated.” Ans. 4. The Examiner finds “[c]laims 13, 26
recite similar limitations, and also include the use of a system and a data
store (claim 13), as well as a non-transitory storage media embodying
software operable when executed (claim 26) in order to execute the claimed
limitations.” Id. The Examiner explains
The courts have found that functions similar to those of
Applicants claims of “receiving, processing, and storing data”
(See Alice Corp., 134 S. Ct. at 2360. But see Example 4 (Al-4:
global positioning system) and “receiving or transmitting data
over a network, e.g., using the Internet to gather data” (See
Ultramercial, 772 F.3d at 716-17; buySAFE, Inc. v. Google, Inc.,
765 F.3d 1350, 1355 (Fed. Cir. 2014) to be well-understood,
routine, and conventional functions when they are claimed in a
merely generic manner. Courts have held computer-
implemented processes not to be significantly more than an
abstract idea (and thus ineligible) where the claim as a whole
amounts to nothing more than generic computer functions
merely used to implement an abstract idea.
Id.
We agree. The additional elements recited in the claim include the
steps of creating a row in the table, string user interaction data in the row,
receiving a request to generate a report user interface, and dynamically
updating the report based on some selected conversion data, which are
recited at a high level of generality, and the written description indicates that
these steps are performed by generic computer components. See, e.g., Fig.
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11, Spec. pp. 136–140 (describing generic computer components performing
generic computer functions using generic software modules). Using generic
computer components to perform abstract ideas does not provide the
necessary inventive concept. See Alice, 573 U.S. at 223 (“[T]he mere
recitation of a generic computer cannot transform a patent-ineligible abstract
idea into a patent-eligible invention.”). Thus, these elements, taken
individually or together, do not amount to “significantly more” than the
abstract ideas themselves.
Contrary to Appellant’s contention that “it is the use of data stored in
the self-referential table that provides the faster search capabilities rather
than the mere creation of the self-referential table,” and referring to the
arguments made with respect to the withdrawn § 103 rejection (Reply Br. 3–
5), these elements form part of the recited abstract ideas and thus are not
“additional elements” that “‘transform the nature of the claim’ into a patent-
eligible application.” Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S. at 78);
see also Guidance, 84 Fed. Reg. at 55 n.24 (“USPTO guidance uses the term
‘additional elements’ to refer to claim features, limitations, and/or steps that
are recited in the claim beyond the identified judicial exception.” (Emphasis
added)). Rather the claim uses well-understood, routine, and conventional
data processing activities previously known in the art and they are recited at
a high level of generality. The Specification, at pages 136–140 for example,
describes using conventional computer components shown in Figure 11,
such as a processor, memory, interface, and software modules in a
conventional manner. Similarly, as found by the Examiner (see Final Act.
4), relevant court decisions provide examples of such additional elements,
which are determined as generic components. Claims 13 and 26 specifically
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include recitations for a computer and memory or a computer storage
medium to implement the method, but these components are all used in a
manner that is well-understood, routine, and conventional in the field. In
response to the Examiner’s specific findings (see Final Act. 2–5; Ans. 3–6),
Appellant has not provided any rebuttals nor shown these claimed generic
computer components which are used to implement the claimed method are
not well-understood, routine, or conventional in the field. Here, the claim
has not been shown to be “significantly more” than the abstract idea.
Preemption
Appellant’s argument that the claims “do not preempt all applications
of the alleged abstract idea” because “the claims recite a specific
combination of features that provide ‘a particular solution to a problem or a
particular way to achieve a desired outcome.’ (MPEP § 2106.07(b)).”
Appeal Br. 14–15.
While preemption may signal patent ineligible subject
matter, the absence of complete preemption does not
demonstrate patent eligibility. . . . Where a patent’s claims are
deemed only to disclose patent ineligible subject matter under the
Mayo framework, as they are in this case, preemption concerns
are fully addressed and made moot.
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed.
Cir. 2015); see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359,
1362–63 (Fed. Cir. 2015).
Conclusion
For at least the above reasons, we agree with the Examiner that claim
1 is “directed to” an abstract idea and does not recite an “inventive concept.”
Accordingly, we sustain the Examiner’s rejection of claim 1 and the
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Application 13/070,038

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remaining claims which fail to include additional elements that add
significantly more to the abstract idea, under 35 U.S.C. § 101.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3–6, 9–13,
16–20, 22–
26
101 Eligibility 1, 3–6, 9–13,
16–20, 22–
26

Overall
Outcome
1, 3–6, 9–13,
16–20, 22–
26

FINALITY AND RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED