International Business Machines Corporation

Patent Trials and Appeals Board

Mar 26, 2021

2020005099 (P.T.A.B. Mar. 26, 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.
14/632,185 02/26/2015 Jorge A. Arroyo RSW920140052US2 4288
75949 7590 03/26/2021
IBM CORPORATION
C/O: Fabian Vancott
215 South State Street
Suite 1200
Salt Lake City, UT 84111
EXAMINER
FRUNZI, VICTORIA E.
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
03/26/2021 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):
patents@fabianvancott.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JORGE A. ARROYO, STEPHEN P. KRUGER,
PATRICK J. O’SULLIVAN and
LUCIANO MARTINS PEREIRA DA SILVA
___________

Appeal 2020-005099
Application 14/632,185
Technology Center 3600
____________

Before CARL W. WHITEHEAD JR., JASON V. MORGAN and
MICHAEL J. STRAUSS, Administrative Patent Judges.

WHITEHEAD JR., Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE1
Appellant2 is appealing the final rejection of claims 1–14 under
35 U.S.C. § 134(a). Appeal Brief 4. Claims 1, 8 are independent. We have
jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.

1 Rather than reiterate Appellant’s arguments and the Examiner’s
determinations, we refer to the Appeal Brief (filed March 17, 2020), the
Reply Brief (filed June 29, 2020), the Final Action (mailed October 15,
2019) and the Answer (mailed April 29, 2020), for the respective details.
2 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies International Business Machines Corporation
as the real party in interest. Appeal Brief 2. This appeal is related to 2020–
005086. See Appeal Brief 3.
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2

Introduction
According to Appellant:
The present invention relates to notifying a user about
relevant data, and more specifically, to notifying a user about
relevant data for opportunities.
A customer relationship management (CRM) system uses
techniques and methods to gather, organize, automate, and
synchronize sales, for marketing, customer service, and technical
support. The CRM system stores this information in a database.
Further, this information is retrieved from the database and
analyzed to allow a company to better target various customers.
Specification ¶¶ 1, 2.

Representative Claim3
Claim 1 is reproduced below for reference (bracketed step lettering
added):
1. A method for notifying a user about relevant data for
opportunities, the method comprising:
[a] obtaining, from a database, opportunities, each
opportunity corresponding to a record structure in the database
with a number of fields of metadata;
[b] analyzing, with an analyzing engine, the metadata
associated with different opportunities including comparing the
metadata from more mature opportunities with metadata from
less mature opportunities to identify patterns for the
opportunities;

3 Appellant argues claims 1–14 as a group for 35 U.S.C. § 101 rejection
(Appeal Brief 11) and highlights claim 1 for the 35 U.S.C. § 103 rejection
(Appeal Brief 18). We select independent claim 1 as the representative
claim for the rejections. See 37 C.F.R. § 41.37(c)(1)(iv).
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[c] determining a common footprint, based on
overlapping metadata, between opportunities at different
maturity levels;
[d] identifying, based on the patterns discovered by the
analyzing engine, correlations for the opportunities that identify
when data from a more mature opportunity is determined as
relevant to a less mature opportunity; and
[e] notifying, based on the correlations, a user associated
with the less mature opportunity of the relevant data from the
more mature opportunity that was that was [sic] determined as
relevant for the less mature opportunity by the analyzing engine
so that the relevant data from the more mature opportunity is
made available to the user to guide progress in the less mature
opportunity.

References
Name4 References Date
Sabharwal US 2012/0323639 A1 December 20, 2012
Jones US 2013/0080344 A1 March 28, 2013
Wagner US 2015/0170163 A1 June 18, 2015

Rejections on Appeal
Claims 1–14 stand rejected under 35 U.S.C. § 101 as being directed to
a judicial exception without significantly more. Final Action 2–4.
Claims 1–14 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Wagner, Sabharwal and Jones. Final Action 4–25.

USPTO Section 101 Guidance
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. 2019 Revised Patent

4 All reference citations are to the first named inventor only.
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Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (January 7, 2019)
(“2019 Revised Guidance”).5 “All USPTO personnel are, as a matter of
internal agency management, expected to follow the guidance.” Id. at 51;
see also October 2019 Update at 1.
Under the 2019 Revised Guidance and the October 2019 Update, 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 One”); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th
ed. Rev. 10.2019, June 2020)) (“Step 2A, Prong Two”).6
2019 Revised Guidance at 52–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
Step 2B, to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, conventional” in the field (see
MPEP § 2106.05(d)); or

5 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (the “October
2019 Update”) (available at https://www.uspto.gov/sites/default/files/
documents/peg_oct_2019_update.pdf).
6 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See 2019 Revised Guidance at 54–55.
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(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
2019 Revised Guidance at 52–56.

ANALYSIS
35 U.S.C. § 101 Rejection
The Examiner determines claims 1–14 are patent ineligible under
35 U.S.C. § 101. See Final Action 2–4; Alice, 573 U.S. at 217 (describing
the two-step framework “for distinguishing patents that claim laws of nature,
natural phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts”).
We are not persuaded the Examiner’s rejection is in error. Unless
otherwise indicated, we adopt the Examiner’s findings and conclusions as
our own. We add the following primarily for emphasis and clarification
with respect to the Revised Guidance.

Step 2A—Prongs 1 and 2 identified in the 2019 Revised Guidance
Prong One
The Examiner determines the limitations fall into the category of a
method of organizing human activity—“commercial or legal interactions
(including agreements in the form of contracts; legal obligations;
advertising, marketing or sales activities or behaviors; business relations).
Final Action 2.
The Specification discloses:
As noted above, the customer relationship management
(CRM) system uses techniques and methods to organize,
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automate, and synchronize sales, for marketing, customer
service, and technical support. This information that the CRM
system gathers is stored in a database. Further, this information
may be categorized as opportunities in the database. A user
associated with a company may view the opportunities gather by
the CRM system to allow the company to better target various
customers.
Specification ¶ 23.
Claim 1 recites a method for notifying a user about data
relevant for opportunities for the user. Claim 1 also recites analyzing
and comparing the maturity of opportunities to identify patterns for
the opportunity while determining a common footprint at different
maturity levels in limitations [a]–[c]. Claim 1 further recites
identifying the relevancy of the opportunities from a more mature
opportunity to a less mature opportunity in limitation [d]. Claim 1
recites notifying the user associated with the less mature opportunity
about the relevant data from the more mature opportunity based upon
correlations from mature opportunities data relevancy in limitation
[e].
These steps recite commercial or legal interactions (including
agreements in the form of contracts; legal obligations; advertising,
marketing or sales activities or behaviors; business relations) and thus, the
claim recites the judicial exception of “[c]ertain methods of organizing
human activity.” 2019 Revised Guidance at 52.
Further, our reviewing court has found claims to be directed to
abstract ideas when they recited similar subject matter. See Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed Cir. 2014) (holding that claim
“describ[ing] only the abstract idea of showing an advertisement before
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delivering free content” is patent ineligible); see also buySAFE, Inc. v.
Google, Inc., 765 F.3d. 1350, 1355 (Fed. Cir. 2014) (holding that concept of
“creating a contractual relationship—a ‘transaction performance guaranty’”
is an abstract idea (citation omitted)).
Therefore, we conclude the claims recite a judicial exception pursuant
to Step 2A, Prong One, of the 2019 Revised Guidance.

Prong Two
Under Prong Two of the 2019 Revised Guidance, we must determine
“whether the claim as a whole integrates the recited judicial exception into a
practical application of the exception.” 2019 Revised Guidance, Section
III(A)(2). We note that a “claim that integrates a judicial exception into a
practical application will apply, rely on, or use the judicial exception in a
manner that imposes a meaningful limit on the judicial exception, such that
the claim is more than a drafting effort designed to monopolize the judicial
exception.” 2019 Revised Guidance, Section III(A)(2).
Appellant argues, the “specification clearly illustrates how the subject
matter therein improves the functioning of the computer and/or technology.”
Appeal Brief 13. Appellant further argues, that similar to Example 407:
The present claims by limiting metadata comparison to just more
mature opportunities, avoid excess processing bandwidth and
thus provide a similar specific improvement over prior systems
that results in improved computing device processing speed.
That is, similar to Example 40 from the PEG Examples, this

7 Example 40—Adaptive Monitoring of Network Traffic Data, Subject
Matter Eligibility Examples: Abstract Ideas, 1–5, available at
https://www.uspto.gov/sites/default/files/documents/101_examples_37to42_
20190107.pdf
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provides a specific improvement of avoiding excess data
processing traffic. Therefore, similar to Example 40, the present
claims are patent eligible as they indicate integration into a
practical application.
Appeal Brief 14.
We do not find Appellant’s argument persuasive because the claimed
subject matter is distinguishable from the subject matter in Example 40.
Claim 1 recites, “comparing the metadata from more mature opportunities
with metadata from less mature opportunities.” We find there is no
recitation in claim 1 that limits metadata comparison as Appellant contends.
There is no constraint or boundary recited in claim 1 that limits the boundary
of the more or less mature opportunities. Claim 1’s subject matter does not
improve the functioning of a device nor is it an improvement to a technology
or technical field. See 2019 Revised Guidance at 55.
Appellant further argues that, “claim 8 explicitly states that ‘the
database [is updated] with the correlations and the relevant data associated
with the less mature opportunity to prevent constant database analysis.”
Appeal Brief 14. Appellant contends that, “without this recitation each
opportunity would be analyzed each time, such that the database would be
analyzed for large periods of time, which obviously is a significant load on
the processing resources of the system.” Appeal Brief 14. Appellant
surmises that “such constant analysis consumes a certain percentage of the
bandwidth of the system” and “by updating information so as to prevent
constant database analysis and comparing less mature opportunities with just
a subset of the overall opportunities, i.e., the more mature opportunities, the
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present claims clearly improve the functioning of the computer as processing
usage is reduced and bandwidth is freed up.” Appeal Brief 14.
We do not find Appellant’s arguments persuasive because any alleged
improvement to the efficiency, speed, and accuracy, arise out of the
conventional advantages of using the claimed computing device as a tool,
and not a particular improvement to the computing device itself (see
Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363,
1370 (Fed. Cir. 2015) (“[M]erely adding computer functionality to increase
the speed or efficiency of the process does not confer patent eligibility on an
otherwise abstract idea”)); see 2019 Revised Guidance at 55; see also
Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1084, 1090 (Fed. Cir. 2019)
(“This invention makes the trader faster and more efficient, not the
computer. This is not a technical solution to a technical problem.”).
Further, as the Federal Circuit has explained, a “claim for a new abstract idea
is still an abstract idea.” Synopsis, Inc. v. Mentor Graphics Corp., 839 F.3d
1138, 1151 (Fed. Cir. 2016). Even assuming the technique claimed was
“[g]roundbreaking, innovative, or even brilliant,” that would not be enough
for the claimed abstract idea to be patent eligible. See Ass’n for Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013).
Appellant contends the “claims nor specification are ‘designed to
monopolize the exception’ whatever that exception may be. Rather they very
clearly describe a particular application.” Appeal Brief 17. We do not find
Appellant’s reasoning persuasive because as the Supreme Court has
described “the concern that drives this exclusionary principle [i.e., the
exclusion of abstract ideas from patent eligible subject matter] as one of pre-
emption.” Alice, 573 U.S. at 216. However, characterizing preemption as a
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driving concern for patent eligibility is not the same as characterizing
preemption as the sole test for patent eligibility. As our reviewing court has
explained, “[t]he Supreme Court has made clear that the principle of
preemption is the basis for the judicial exceptions to patentability,” and
“[f]or this reason, questions on preemption are inherent in and resolved by
the § 101 analysis.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d
1371, 1379 (Fed. Cir. 2015) (citing Alice, 573 U.S. at 216). And, although
“preemption may signal patent ineligible subject matter, the absence of
complete preemption does not demonstrate patent eligibility.” Id.
Moreover, “[w]here a patent’s claims are deemed only to disclose patent
ineligible subject matter under the [Alice/Mayo] framework . . ., preemption
concerns are fully addressed and made moot.” Id.; see also OIP Techs., Inc.
v. Amazon.com, Inc., 788 F.3d 1359, 1362–63 (Fed. Cir. 2015) (“[T]hat the
claims do not preempt all price optimization or may be limited to price
optimization in the e-commerce setting do not make them any less
abstract.”).
Accordingly, we determine that neither claim 1 nor claim 8 integrates
the recited judicial exception into a practical application. See 2019 Revised
Guidance at 54.

Step 2B identified in the 2019 Revised Guidance
In Step 2B, we consider whether an additional or combination of
elements, “[a]dds 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 “simply appends
well-understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception,
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which is indicative that an inventive concept may not be present.”
2019 Revised Guidance at 56.
We first note that in Bascom, our reviewing court found that while the
claims of the patent were directed to a judicial exception, the patentee
alleged an “inventive concept can be found in the ordered combination of
claim limitations that transform the abstract idea of filtering content into a
particular, practical application of that abstract idea.” Bascom Global
Internet Services, Inc., v. AT&T Mobility LLC, 827 F.3d 1341, 1352 (Fed.
Cir. 2016). In particular, the patent in Bascom claimed “a technology-based
solution (not an abstract-idea-based solution implemented with generic
technical components in a conventional way) to filter content on the Internet
that overcomes existing problems with other Internet filtering systems.”
Bascom at 1351.
We find independent claims 1 and 8 are distinguishable, as they
recites an abstract-idea-based solution, that is, a method for notifying users
about relevant opportunities, in a conventional way. See generally
Specification. Therefore, we are not persuaded that ordered combination of
limitations in claims 1 and 8 provides an inventive concept, and we find the
claims simply append a well-understood, routine, and conventional activity
to the judicial exception. See 2019 Revised Guidance at 56.
Accordingly, we conclude claims 1–14 are directed to “commercial
or legal interactions (including agreements in the form of contracts; legal
obligations; advertising, marketing or sales activities or behaviors; business
relations)” and thus, the claims are directed to the judicial exception of
“[c]ertain methods of organizing human activity” and further, the claims
recite the judicial exception while failing to recite limitations that amount to
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significantly more than the abstract idea itself. See 2019 Revised Guidance
at 52, 54–56. Therefore, we sustain the Examiner’s § 101 rejection of
claims 1–14.

35 U.S.C. § 103 Rejection
Appellant contends:
[C]laim 1 describes a method wherein a maturity level is
determined for a variety of opportunities. Metadata from more
mature opportunities is compared with metadata from a less
mature opportunity. A common footprint is determined between
the two and relevant data from the more mature opportunity is
provide to a user associated with the less mature opportunity.
Wagner, Sabharwal, and Jones in any combination fail to teach
or suggest this subject matter.
Appeal Brief 18.
We find Appellant’s arguments are persuasive of Examiner error.
Appellant argues that Jones’ Figure 9 “does not depict maturity of
opportunities, let alone the metadata associated with different opportunities,
let alone ‘a common footprint, based on overlapping metadata.’ (Claim 1).”
Appeal Brief 21. The Examiner relies upon Jones to teach, “determining a
common footprint, based on overlapping metadata” because “[b]etween
opportunities at different maturity levels (Shown in Figure 9; where each
document has a set of characteristics scored and then each has an
overall maturity where each of the characteristic ratings intersect
independent of the overall maturity rating).” Final Action 10. Appellant
further argues, “That is, at most, Fig. 9 of Jones depicts certain
characteristics of certain documents, but does not teach or suggest
overlapping metadata.” Appeal Brief 21; see Reply Brief 9–11. Here, we
find Appellant’s arguments persuasive of Examiner error because Jones’
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Figure 9 does not appear to disclose “determining a common footprint,
based on overlapping metadata, between opportunities at different maturity
levels” as recited in claim 1. Further, the Examiner provides no support for
the Jones finding other than directing us to Figure 9. See Final Action 10;
see also Answer 10. Accordingly, as we are constrained by the record, we
reverse the Examiner’s obviousness rejection of claim 1, as well as
independent claim 8, commensurate in scope. We also reverse the
Examiner’s obviousness rejection of dependent claims 2–7 and 9–14.
CONCLUSION
Claim(s)
Rejected
35
U.S.C. §
Reference(s)/
Basis
Affirmed Reversed
1–14 101 Eligibility 1–14
1–14 103 Wagner,
Sabharwal,
Jones
1–14
Overall
Outcome
1–14

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). See 37 C.F.R.
§ 1.136(a)(1)(v).

AFFIRMED