International Business Machines Corporation

Patent Trials and Appeals Board

Oct 23, 2020

14834688 - (D) (P.T.A.B. Oct. 23, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/834,688 08/25/2015 Paul R. Bastide SVL920150105US1 1034
138363 7590 10/23/2020
IBM CORP. (WSM)
c/o WINSTEAD P.C.
P.O. BOX 131851
DALLAS, TX 75313
EXAMINER
PATEL, RONAK
ART UNIT PAPER NUMBER
2458
NOTIFICATION DATE DELIVERY MODE
10/23/2020 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):
patdocket@winstead.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PAUL R. BASTIDE, MATTHEW E. BROOMHALL, and
ROBERT E. LOREDO
____________

Appeal 2019-002892
Application 14/834,688
Technology Center 2400
____________

Before CAROLYN D. THOMAS, ERIC B. CHEN, and
IRVIN E. BRANCH, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 9–24. See Claim Appendix. We have
jurisdiction over the appeal 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. Appellant identifies the real party in interest as International
Business machines Corporation. Appeal Br. 1.
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The present invention relates generally to selecting content to display
on a computing device of a user during the user’s free time. See Abstract.
Independent claim 9, reproduced below, is representative of the
appealed claims:
9. A computer program product for utilizing a user’s free
time, the computer program product comprising a computer readable
storage medium having program code embodied therewith, the
program code comprising the programming instructions for:
identifying a period of free time for said user;
monitoring an application, view and/or folder to be
accessed by said user during said period of free time of said user;
detecting no content updates in said application, view
and/or folder accessed by said user during said period of free time of
said user in comparison to a prior time said user accessed said
application, view and/or folder;
selecting content to be presented to a computing device
of said user in response to said detection of no content updates in said
application, view and/or folder during said period of free time of said
user, wherein said selected content comprises one or more the
following: opportunistic content, existing content and advertising
content; and
displaying said selected content to said computing device
of said user during said period of free time of said user.

Appellant appeals the following rejections:2
R1. Claims 9–24 are rejected under 35 U.S.C. § 101 because the
claimed invention is directed to patent-ineligible subject matter. Final Act.

2 The Examiner provisionally rejected claims 9–24 under the judicially
created doctrine of obviousness-type double patenting in view of claims 1–8
of copending Application No. 15/141,300. See Final Act. 10–17. Appellant
submitted a terminal disclaimer to overcome this rejection. See Reply under
37 C.F.R. § 1.116 filed June 18, 2018. The Examiner withdrew the double
patenting rejection in light of the filed terminal disclaimer. See Advisory
Action mailed July 5, 2018.

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18–19.
R2. Claims 9–15 and 17–23 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Takahashi (JP 2006-040048 A, Feb. 9, 2006 (as
translated)) and Perry (US 2014/0201272 A1, July 17, 2014). Final Act. 20–
25.
R3. Claims 16 and 24 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Takahashi, Perry, and O’Shaugnessy (US 2009/0293013
A1, Nov. 26, 2009). Final Act. 25–26.
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).

RELATED APPEAL
Appellant identifies Application Serial No. 15/141,300 (Appeal No.
2019-002813) as a related appeal, which may be related to, directly affect,
be directly affected by, or have a bearing on, the Board’s decision in the
present appeal. See Appeal Br. 1. Therefore, we adopt and incorporate
herein by reference the Board’s related decision to the extent it applies to the
similar arguments and evidence made herein.

ANALYSIS
Rejection under § 101
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
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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 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 the 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.”). For example, 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,
69 (1972)).
The USPTO published revised guidance on the application of 35
U.S.C. § 101. USPTO’s 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Revised Guidance”), updated by
USPTO, October 2019 Update: Subject Matter Eligibility (available at
https://www.uspto.gov/sites/default/files/documents/
peg_oct_2019_update.pdf) (jointly referred to as “Revised Guidance”); see
also October 2019 Patent Eligibility Guidance Update, 84 Fed. Reg. 55942
(Oct. 18, 2019) (notifying the public of the availability of the October
update).
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Under the Revised Guidance “Step 2A,” the office first looks to
whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing human
activity such as a fundamental economic practice, or mental processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h)). 84 Fed. Reg. at
51–52, 55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, does the Office then
(pursuant to the Revised Guidance “Step 2B”) 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. 84 Fed. Reg. at 56.
Step 2A, Prong 1 (Does the Claim Recite a Judicial Exception?)
With respect to independent method claim 9, the Examiner determines
that the claims recite “monitoring and analyzing data . . . and/or gathering
and analyzing information . . . then displaying the results” (Final Act. 19),
which we conclude are mental processes, which is a type of abstract idea.
Examiner also determines that the claims recite “Certain Methods of
Organizing Human Activity” (Ans. 4.), which we conclude falls under the
sub-grouping of managing personal behavior. For at least the following
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reasons, we are persuaded that representative claim 9 recites plural abstract
ideas.
For at least the following reasons, we are persuaded that
representative claim 9 recites at least mental processes.
For instance, Appellant’s Specification discloses:
In one embodiment of the present invention, a period of free
time for the user is identified. For example, the user’s free time
may be identified by detecting the time that the user is free in
the user’s calendar application. A user’s request to access an
application (e.g., social media application, e-mail application,
instant messaging application, project management application,
forum), a view and/or a folder is monitored during the user’s
identified period of free time. In response to detecting no
content updates when the user accesses the application, view
and/or folder during the user’s identified period of free time,
content (e.g., opportunistic content, existing content,
advertising content) is selected to be displayed to the user
during the user’s free time. For example, opportunistic content,
such a password change notification, may be displayed to the
user five days prior to the normal time of notifying the user
regarding changing the user’s password. . . . As a result, the
user’s free time is more efficiently utilized.
Spec. ¶ 14. In other words, Appellant’s Specification illuminates that the
character of the present invention can be performed in the human mind,
including observing a user’s calendar for free time, observing when a user is
accessing an application, and evaluating whether a user has updated the
application. See also Ericsson Inc. v. TCL Commc’ns Tech. Holdings Ltd.,
955 F.3d 1317, 1325 (Fed. Cir. 2020) (“[T]he specification may be ‘helpful
in illuminating what a claim is directed to [but it] must always yield to the
claim language’ when identifying the ‘true focus of a claim.”’) (citation
omitted).
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Claim 9 recites at least the following limitations: (1) “identifying a
period of free time for said user,” (2) “monitoring an application, view
and/or folder . . . during said period of free time,” (3) “detecting no content
updates,” (4) “selecting . . . content to be presented,” (5) “displaying said
selected content.” Claim 1. These limitations, under their broadest
reasonable interpretation, recite at least mental processes because a claim
recites a mental process when the claim encompasses acts people can
perform using their minds or pen and paper. See, e.g., CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1372–73 (Fed. Cir. 2011)
(determining that a claim whose “steps can be performed in the human mind,
or by a human using a pen and paper” is directed to an unpatentable mental
process).
Under their broadest reasonable interpretation, the aforementioned
limitations encompass acts people can perform using their minds or pen and
paper because people can perform the “identifying,” “monitoring,”
“detecting,” and “selecting” steps by simply looking at the user’s calendar
for free time, evaluating whether an application has been accessed during
this free time, observing that no content has been updated, and looking at
and selecting content to give to the user during this free time. The
“displaying” step could be performed by a person using pen and paper to
illustrate the content.
Here, we note that although independent claim 9 recites additional
elements (this will be discussed further under Prong 2), e.g., “a computer
program product,” “a computer readable storage medium,” and “a
computing device” (see claim 9), courts have still found that the underlying
patent-ineligible invention could be performed in the human mind and/or via
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pen and paper. See, e.g., Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d
1306, 1335 (Fed. Cir. 2015); see also 2019 Eligibility Guidance 84 Fed.
Reg. at 52 n.14 (“If a claim, under its broadest reasonable interpretation,
covers performance in the mind but for the recitation of generic computer
components, then it is still in the mental processes category unless the claim
cannot practically be performed in the mind.”). Appellant fails to
demonstrate that the claim steps cannot practically be performed in the
mind.
Appellant merely states that “these claim limitations cannot be
performed in any reasonable amount of time and with any reasonable
expectation of accuracy without the use of a computer” (Appeal Br. 5),
without providing any persuasive evidence pertaining thereto. For example,
Appellant’s Specification merely discloses an embodiment wherein
“analysis engine 108 may detect a user’s navigation to a folder and monitor
the folder for the user to refresh the contents of the folder.” See Spec. ¶ 43.
One of ordinary skill in the art would recognize that such an act could
simply be observed by a user, and/or evaluated by seeing real-time data.
Similarly, the other recited steps above can be observed by a user.
As such, we find unavailing Appellant’s contention that “[t]he
Examiner is mischaracterizing Appellant’s claimed invention” (see Appeal
Br. 4) because the “claimed invention is directed to analysis engine 108
selecting content . . . [not] directed to delivering content selected by the
user” (see id.), given that the claimed invention, as illustrated above, still
covers performances in the mind, but for the recitation of generic computer
components.
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Furthermore, we determine that even if the claimed steps do not
explicitly recite “collecting data,” “maintaining data,” “querying data, “
and/or “matching or filtering data” (see Appeal Br. 4), as argued by
Appellant, Appellant fails to persuasively demonstrate that the claimed
steps, as highlighted above, cannot be performed in the mind and/or using
pen and paper.
Regarding the abstract concept of certain methods of organizing
human activity, we note that the claim features also illustrate managing a
user’s behavior during that user’s free time, e.g., managing personal
behavior, which is also an abstract concept. For example, claim 9 covers
employing programming instructions to perform functions such as
identifying, monitoring, detecting, selecting, and displaying. See claim 9.
These steps are comparable to other claims found to recite abstract ideas.
See, e.g., Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1353–
54 (Fed. Cir. 2016) (“collecting information, analyzing it, and displaying
certain results of the collection and analysis” are “abstract-idea processes”).
Furthermore, combining abstract ideas does not render the
combination any less abstract. RecogniCorp, LLC v. Nintendo Co., 855 F.3d
1322, 1327 (Fed. Cir. 2017) (“Adding one abstract idea . . . to another
abstract idea . . . does not render the claim non-abstract.”); cf. Shortridge v.
Found. Constr. Payroll Serv., LLC, No. 14-CV-04850-JCS, 2015 WL
1739256 (N.D. Cal. Apr. 14, 2015), aff’d, No. 2015-1898, 2016 WL
3742816 (Fed. Cir. July 13, 2016).
Therefore, for at least the aforementioned reasons, we agree with the
Examiner that claim 1 recites plural abstract ideas, which we conclude are
mental processes and certain methods of organizing human activity.
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Step 2A—Prong 2 (integration into Practical Application) 3
Under the Revised Guidance, we now must determine if additional
elements in the claims integrate the judicial exception into a practical
application (see MPEP § 2106.05(a)–(c), (e)–(h)).
Here, we consider the claim as a whole, i.e., “the limitations
containing the judicial exception as well as the additional elements in the
claim besides the judicial exception . . . evaluated together to determine
whether the claim integrates the judicial exception into a practical
application.” October 2019 Patent Eligibility Guidance Update, at 12,
available at http://www.uspto.gov/PatentEligibility.
Beyond the mental processes and certain methods of organizing
human activity noted above in the Prong-1 analysis, claim 9 also recites
several additional elements: “a computer program product,” “a computer
readable storage medium,” “an application, view, and/or folder,” and “a
computing device.” However, these additional elements do not: (1) improve
the functioning of a computer or other technology; (2) are not applied with
any particular machine (except for a generic computer); (3) do not effect a
transformation of a particular article to a different state; and (4) are not
applied in any 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. See MPEP §§ 2106.05(a)–(c), (e)–(h). In other words, the

3 We acknowledge that some of the considerations at Step 2A, Prong 2,
properly may be evaluated under Step 2 of Alice (Step 2B of the Office
revised guidance). For purposes of maintaining consistent treatment within
the Office, we evaluate them under Step 1 of Alice (Step 2A of the Office
revised guidance). See Revised Guidance, 84 Fed. Reg. at 55 n.25, 27–32.

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aforementioned additional element (or combination of elements) recited in at
least Appellant’s representative claim 9 do not integrate the judicial
exception into a practical application. See Revised Guidance, 84 Fed. Reg.
at 54–55 (“Prong 2”).
Appellant contends that the claimed invention “is directed to
improvements to another technology or technical field . . . [i.e.,] when the
user’s free time goes unutilized . . . Such a problem is a technical problem
since it could not arise without the use of computing technology.” Appeal
Br. 18–19. Appellant further contends that “[t]he claimed invention
addresses such a technical problem with a technical solution by utilizing the
user’s free time by displaying to the user . . . relevant content.” Id. at 19.
We disagree with Appellant.
For starters, we determine that the claimed “displaying said selected
content” is no more than a post-solution activity. This post-solution step—
even when performed on a computing device—is insufficient to integrate the
judicially excepted steps into a practical application. See Alice, 573 U.S. at
224 (“use of a computer to create electronic records, track multiple
transactions, and issue simultaneous instructions” is not an inventive
concept). Similarly, using a computer to display content is not an inventive
concept.
Appellant also contends that “the claimed invention improves the
efficiency in utilizing computing resources, and therefore, improves the
value of computing technology.” Appeal Br. 20. We disagree with
Appellant.
Appellant’s Specification states that “the user’s free time is more
efficiently utilized” (see Spec ¶ 14), not that the computer is running more
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efficiently. The court in Enfish emphasized that “the plain focus of the
claims is on an improvement to computer functionality itself, not on
economic or other tasks for which a computer is used in its ordinary
capacity.” See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed.
Cir. 2016). Here, Appellant also does not direct our attention to anything in
the Specification to indicate that the invention provides an improvement in
the computer’s technical functionality. Instead, the claimed features
improve personal efficiency, i.e., allowing a user to more efficiently use
their free time. That is, here the arguably innovative technique of the
appealed claims is inextricably a part of the abstract idea. Moreover,
nothing in the claims, understood in light of the Specification, requires
anything other than an off-the-shelf conventional computing device used for
monitoring, detecting, selecting, and displaying content. Therefore, unlike
Enfish, the claims are directed not to improvement in computer capabilities,
but to the results of applying an abstract idea.
Additionally, Appellant contends that claims 12, 13, 20, and 21 “focus
on queuing the selected content, prioritizing the queued selected content and
displaying the queued selected content in order of priority . . . to more
efficiently utilize computing resources and to more efficiently utilize the
user’s free time.” Appeal Br. 21. Again, we note that such improvements
are directed towards personal efficiency, i.e., allowing a user to more
efficiently use their free time, not technological efficiency.
For at least the reason noted supra, we determine that claim 9
(1) recites a judicial exception and (2) does not integrate that exception into
a practical application. Thus, representative claim 9 is directed to the
aforementioned abstract idea.
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Alice/Mayo—Step 2 (Inventive Concept)
Step 2B identified in the Revised Guidance
Turning to the second step of the Alice inquiry, we now look to
whether claim 1 contains any “inventive concept” or adds anything
“significantly more” to transform the abstract concept into a patent-eligible
application. Alice, 573 U.S. at 216. As recognized by the Revised
Guidance, an “inventive concept” under Alice step 2 can be evaluated based
on whether an additional element or combination of elements:
(1) adds a specific limitation or combination of limitations that are
not well-understood, routine, conventional activity in the field,
which is indicative that an inventive concept may be present; or
(2) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception, which is indicative
that an inventive concept may not be present.
See Revised Guidance, 84 Fed. Reg. at 56; see MPEP § 2106.05(d).
Appellant contends “the Examiner has not provided any evidence that
any of the claim limitations of Appellant’s claimed invention are routine,
conventional and well-understood . . . The Examiner is simply making
assertions without providing evidence to support such assertions.” Appeal
Br. 17.
Here, the Examiner determines that the additional elements “are
recited at a high level of generality and are recited as performing generic
computer functions routinely used in computer applications.” Final Act. 19.
To support the Examiner’s determination, the Examiner cites to Appellant’s
Specification to demonstrate the well-understood, routine, and conventional
nature of the additional elements. See Ans. 5.
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For example, Appellant’s Specification states:
Communication system 100 includes computing devices
101A-101C (identified as “Computing Device A,” “Computing
Device B,” and “Computing Device C,” respectively, in Figure
1) connected to a server 102 via a network 103. Computing
devices 101A-101C may collectively or individually be referred
to as computing devices 101 or computing device 101,
respectively.

Computing device 101 may be any type of computing
device (e.g., portable computing unit, Personal Digital Assistant
(PDA), smartphone, laptop computer, mobile phone, navigation
device, game console, desktop computer system, workstation,
Internet appliance and the like) configured with the capability
of connecting to network 103 and consequently communicating
with other computing devices 101 and server 102.
Spec. ¶¶ 16–17 (emphasis added).
The present invention may be a system, a method, and/or
a computer program product. The computer program product
may include a computer readable storage medium (or media)
having computer readable program instructions thereon for
causing a processor to carry out aspects of the present
invention.

The computer readable storage medium can be a tangible
device that can retain and store instructions for use by an
instruction execution device. The computer readable storage
medium may be, for example, but is not limited to, an
electronic storage device, a magnetic storage device, an optical
storage device, an electromagnetic storage device, a
semiconductor storage device, or any suitable combination of
the foregoing. . . . A computer readable storage medium, as
used herein, is not to be construed as being transitory signals
per se, such as radio waves or other freely propagating
electromagnetic waves, electromagnetic waves propagating
through a waveguide or other transmission media ( e.g., light
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pulses passing through a fiber-optic cable), or electrical signals
transmitted through a wire.
Spec. ¶¶ 31–32.
These computer readable program instructions may be
provided to a processor of a general purpose computer, special
purpose computer, or other programmable data processing
apparatus to produce a machine, such that the instructions,
which execute via the processor of the computer or other
programmable data processing apparatus, create means for
implementing the functions/acts specified in the flowchart
and/or block diagram block or blocks.
Spec. ¶ 36 (emphasis added).
In other words, Appellant’s Specification illustrates that the additional
elements can be any type of computing device, computer readable storage
medium, computer program product, and/or a processor of a general purpose
computer. Thus, the Examiner provides a rational basis for the conclusion
that the additional elements are recited at a high level of generality and are
recited as performing generic computer functions.
Such an analysis, particularly directing our attention to Appellant’s
Specification, is a factual determination. See Berkheimer v. HP Inc., 881
F.3d 1360, 1369 (Fed. Cir. 2018) (“Whether something is well-understood,
routine, and conventional to a skilled artisan at the time of the patent is a
factual determination.”).
Therefore, the Examiner’s noting the generic nature of the component
parts recited in the claims, and citing relevant portions of Appellant’s
specification, provides sufficient evidence of a generic computing device
used to implement the abstraction. See Credit Acceptance Corp. v. Westlake
Services, 859 F.3d 1044, 1057 (Fed. Cir. 2017) (“Significantly, the claims do
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not provide details as to any non-conventional software for enhancing the
financing process.). See Intellectual Ventures I LLC v. Capital One Fin.
Corp., 850 F.3d 1332, 1342 (Fed. Cir. 2017) (explaining that “[o]ur law
demands more” than claim language that “provides only a result-oriented
solution, with insufficient detail for how a computer accomplishes it”).
As such, we find no element or combination of elements recited in
Appellant’s claim 1 that contains any “inventive concept” or adds anything
“significantly more” to transform the abstract concept into a patent-eligible
application. Appellant has not adequately explained how claim 9 is
performed such that it is not a routine and conventional function of a generic
computer.
Because Appellant’s independent claim 9 is directed to a patent-
ineligible abstract concept, does not include additional elements that
integrate the judicial exception into a practical application, and does not add
a specific limitation beyond the judicial exception that is not “well-
understood, routine, and conventional,” we sustain the Examiner’s rejection
of the claims 9–24 under 35 U.S.C. § 101 as being directed to non-statutory
subject matter in light of Alice, its progeny, and the Revised Guidance.

Rejection under § 103(a)
Appellant contends that in Perry “[t]here is no language in the cited
passages that teaches or suggests selecting content . . . in response to the
detection of no content updates in the application, view and/or folder.”
Appeal Br. 24–25. We agree with Appellant.
For example, Perry discloses:
News feed display mechanism 104 is configured to adjust the
display of a social media update in a social networking feed to
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a particular degree of richness (i.e., a level of detail) based on
the level of importance of the social media update and/or the
current condition of the user’s environment as discussed in
further detail below.
Perry ¶ 21 (emphasis added).
[F]or example, the current condition of the user’s environment
may include a volume of other updates received over a time
frame, a current workload of the user, a current time or date,
etc.
Id. ¶ 39 (emphasis added). In other words, the above noted passages, and
other cited passages, in Perry are concerned with emphasizing social media
“updates,” i.e., by varying the degree of richness of the updates on a display.
However, claim 9 requires, inter alia, selecting . . . content to be presented
. . . in response to said detection of no content updates . . . during said
period of free time.
Stated differently, claim 9 requires detecting that there are no content
updates during a period of free time, and as a result, selecting content to be
presented to a computing device. In contrast to claim 9, Perry discloses
adjusting richness of social media updates, i.e., looking for important
updates and varying the degree of richness of said update on the display.
Perry further discloses “[i]f there are no user interactions with the
social network feed to indicate a need to update the display of a social media
updates, then, in step 407, display control 303 does not update the display of
the social media updates.” Perry ¶ 54. In other words, Perry merely
discloses that during idle time with the social network feed, Perry’s display
controller does not change the richness of social media updates, i.e., does not
select an update to enhance. Here, we find that the Examiner fails to
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demonstrate that Perry teaches selecting content to be presented in response
to detection of no content updates during the period of free time of said user.
Although Takahashi teaches “idle time” (see Takahashi p. 2–3), we
agree with Appellant that “the Examiner interprets the above-cited claim
limitation as two separate, independent thoughts, namely, monitoring an
application, view and/or folder to be accessed by the user and the concept of
free time of the user.” Appeal Br. 28.
Even if we assume arguendo (without deciding) that Takahashi
teaches “identifying a period of free time for a user,” we do not find, and the
Examiner has not established, that the cited combination of references
illustrate a nexus between Takahashi’s “period of free time for a user” and
Perry’s selecting content to be presented with varying richness. Not to
mention that the Examiner has not shown that Perry or Takahashi, alone or
in combination, teaches detecting no content updates in an application, view
and/or folder during a period of free time.
Like Appellant, we are troubled by the chain of causation that is split
between the two references in the Examiner’s proffered combination of
Takahashi and Perry. The Examiner also has not shown how O’Shaugnessy
cures this deficiency in the combination of Perry and Takahashi.
Because we agree with at least one of the arguments advanced by
Appellant, we need not reach the merits of Appellant’s other arguments.
Accordingly, we will not sustain the Examiner’s obviousness rejection of
claims 9–24.

Appeal 2019-002892
Application 14/834,688

19
CONCLUSION4
Appellant has demonstrated that the Examiner erred in rejecting
claims 9–24 as being unpatentable under 35 U.S.C. § 103.
However, the Examiner’s rejections of claims 9–24 under 35 U.S.C.
§ 101 is affirmed.
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
9–24 101 Eligibility 9–24
9–15, 17–23 103 Perry, Takahashi 9–15,
17–23
16, 24 103 Perry, Takahashi,
O’Shaugnessy
16, 24
Overall
Outcome
9–24

4 In the event of further prosecution, we leave it to the Examiner to consider
if the computer readable storage medium claim, claim 9, should additionally
be rejected under 35 U.S.C. § 101 because the ordinary and customary
meaning of “computer readable storage medium” to a person of ordinary
skill in the art is broad enough to encompass both non-transitory and
transitory media. Signals are not patentable eligible subject matter under
§ 101. In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007). See also MPEP
§ 2106(I) (8th ed. Rev. 9 Aug. 2012) and Ex parte Mewherter, 107 USPQ2d
1857 (PTAB 2013) (precedential). In short, Appellant’s non-exhaustive list
of examples in the Specification (see ¶ 32)—without a corresponding claim
amendment—fall short of overcoming any § 101 rejection of claim 9. See
id. (noting that adding the term “non-transitory” to a claim drawn to
computer readable medium that covers both transitory and non-transitory
embodiments can avoid a rejection under § 101). Accord Ex parte Busche,
No. 2009-007718, 2010 WL 5184640, at *5 (BPAI 2010) (non-
precedential).

Appeal 2019-002892
Application 14/834,688

20
No period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED