International Business Machines Corporation

Patent Trials and Appeals Board

Mar 24, 2020

15332490 - (D) (P.T.A.B. Mar. 24, 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.
15/332,490 10/24/2016 Anni R. Coden YOR920161266US1
(34004)
3763
48233 7590 03/24/2020
SCULLY, SCOTT, MURPHY & PRESSER, P.C.
400 GARDEN CITY PLAZA
SUITE 300
GARDEN CITY, NY 11530
EXAMINER
ORTIZ ROMAN, DENISSE Y
ART UNIT PAPER NUMBER
3687
NOTIFICATION DATE DELIVERY MODE
03/24/2020 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):
IBMPAIRENotify@ssmp.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

Ex parte ANNI R. CODEN, HANI T. JAMJOOM, DAVID M.
LUBENSKY, JUSTIN G. MANWEILER, KATHERINE VOGT, and
JUSTIN D. WEISZ

Appeal 2019-001333
Application 15/332,490
Technology Center 3600

Before JOHNNY A. KUMAR, LINZY T. McCARTNEY, and MICHAEL
T. CYGAN, Administrative Patent Judges.

CYGAN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 2, 4–10, 12–17, and 19–23. Appeal
Br. 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. Appellant identifies the real party in interest as
International Business Machines Corporation. Appeal Br. 2.
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Application 15/332,490

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CLAIMED SUBJECT MATTER
The claimed invention generally relates to modifying a personalized
recipe based on restaurant profiles and contracting out the preparation of the
recipe to a selected restaurant. Appeal Br. 3–9. Independent claim 1 is
illustrative:
1. A computer implemented method for automatically
modifying a personalized recipe based on restaurant profiles
stored in a database comprising the steps of:
storing in a first database a user personal profile, the user
personal profile comprising one or more of user dietary
requirements, user culinary preferences, user medical
conditions and user location information;
storing in a second database per-restaurant profiles for a
plurality of restaurants, each per-restaurant profile comprising
one or more of types of cuisines, recipe ingredients, location
information and reputation wherein a cognitive computer has
access to the first database and the second database;
generating by the cognitive computer a first personalized recipe
based on user culinary selections and the user profile in the first
database, the first personalized recipe comprising a first list of
ingredients;
determining by the cognitive computer whether there are one or
more first type candidate restaurants that are able to prepare the
first personalized recipe based on the per-restaurant profiles in
the second database, the first type candidate restaurant being
determined to be able to prepare the first personalized recipe
based on the first list of ingredients;
determining by the cognitive computer that no first type
candidate restaurants are able to prepare the personalized
recipe;
automatically modifying the personalized recipe, based on the
determination by the cognitive computer that there is no first
type candidate restaurant able to prepare the personalized
recipe, to create a first modified personalized recipe having at
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least one ingredient different from the ingredients in the first
list of ingredients, the cognitive computer providing the first
modified personalized recipe that meets the user profile and
have similar taste to the first personalized recipe, prior to the
step of receiving a selection;
providing by the cognitive computer a historical price range of
recipes that have been accepted by the user for the first
modified personalized recipe and for at least one second
modified personalized recipe, the at least one second modified
personalized recipe having at least one ingredient different from
the ingredients in the first list of ingredients;
determining by the cognitive computer a similarity between the
first modified personalized recipe and the at least one second
modified personalized recipe;
automatically selecting by the cognitive computer one or more
of the first modified personalized recipe and the at least one
second modified personalized recipe that are within a range of
similarity to the personalized recipe;
determining by the cognitive computer whether there are one or
more second type candidate restaurants that are able to prepare
the selected one or more of the first modified personalized
recipe and the at least one second modified personalized recipe
based on the per-restaurant profiles in the second database;
automatically selecting one of the second type candidate
restaurants based on the similarity; and
contracting out the preparation of the personalized recipe to the
selected restaurant.
Appeal Br. 26–27 (Claims App.).
Independent claims 9 and 16 recite a system and a storage medium,
respectively, which are similar in scope with claim 1. Id. at 29–33.
Dependent claims 2, 4–8, 10, 12–15, 17, and 19–23 each incorporate the
limitations of their respective independent claims. Id. at 27–34. Claims 3,
11, and 18 have been cancelled during prosecution. Id. at 27, 30, 33.
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REJECTION
Claims 1, 2, 4–10, 12–17, and 19–23 are rejected under 35 U.S.C.
§101 as being ineligible subject matter.

OPINION
Patent-eligible subject matter is defined in 35 U.S.C. § 101 of the
Patent Act, which recites:
Whoever 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.
There is, however, an implicit, longstanding exception to patent-
eligible subject matter in 35 U.S.C. § 101: “[l]aws of nature, natural
phenomena, and abstract ideas are not patentable.” Alice Corp. v. CLS Bank
Int’l, 573 U.S. 208, 216 (2014) (citation omitted). This exception precludes
patenting of “the basic tools of scientific and technological work” from
which all inventions spring. Id. at 216–17 (quotation marks and citation
omitted). Invention or discovery under § 101 is distinguished as being the
application of such tools to an end otherwise satisfying the requirements of
the patent statutes. See Gottschalk v. Benson, 409 U.S. 63, 67 (1972).
The Supreme Court has established a framework for this eligibility
determination. Where a claim is directed towards a law of nature, natural
phenomena, or abstract idea, the elements of the claim as a whole must
ensure that the claim, in practice, amounts to significantly more than a patent
on the law of nature, natural phenomena, or abstract idea itself. Alice, 573
U.S. at 217–18. In applying this eligibility analysis, our reviewing court has
stated, “the decisional mechanism courts now apply is to examine earlier
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cases in which a similar or parallel descriptive nature can be seen[,] . . . the
classic common law methodology for creating law when a single governing
definitional context is not available.” Amdocs (Isr.) Ltd. v. Openet Telecom,
Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) (citation omitted).
To address the growing body of precedent, the USPTO recently
published revised examination guidance on the application of § 101. 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 50
(Jan. 7, 2019) (hereinafter 2019 Guidance). The 2019 Guidance seeks to
improve the clarity of the subject matter eligibility analysis and improve
consistency of this analysis across the USPTO. Id.
Under the 2019 Guidance, we first look to whether the claim is
directed to a judicial exception because:
(1) the claim recites a law of nature, natural phenomenon, or abstract
idea, the last of which includes certain groupings, identified as
mathematical concepts, certain methods of organizing human activity
and mental processes; and
(2) the claim as a whole fails to recite additional elements that
integrate the judicial exception into a practical application (see
MANUAL OF PATENT EXAMINATION PROCEDURE (hereinafter “MPEP”)
§ 2106.05(a)–(c), (e)–(h)).
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:
adds a specific limitation beyond the judicial exception that are not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or instead,
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simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See 2019 Guidance, passim.
A. Analysis
We have reviewed the Examiner’s subject matter eligibility rejection
(Final Act. 3–11; Ans. 3–5) in light of Appellant’s contentions that the
Examiner has erred (Appeal Br. 9–25; Reply Br. 2–9). We are not
persuaded by Appellant’s contention of Examiner error in rejecting claims 1,
2, 4–10, 12–17, and 19–23 under 35 U.S.C. § 101. Because Appellant does
not argue any claim separately, we select claim 1 as representative of the
grouping, and claims 2, 4–10, 12–17, and 19–23 stand or fall with claim 1.
37 C.F.R. § 41.37(c)(1)(iv).
1. “Recites an Abstract Idea”
The Examiner finds claim 1 directed to meal planning. Final Act. 3.
Specifically, the Examiner finds claim 1 to recite an abstract idea in the form
of the following identified abstract concepts: “storing a user personal
profile,” “storing per-restaurants profiles,” “connecting and interacting with
a cognitive computer,” “generating a personalized recipe,” “determining a
restaurant from a first type candidate restaurants for preparing the
personalized recipe,” “determining that no first type candidate restaurants
are able to prepare the recipe,” “modifying the personalized recipe to create
a modified personalized recipe,” “providing historical price range of
recipes,” “determining similarity between the recipes,” “selecting recipes,”
“determining one or more second type candidate restaurants for preparing
the modified personalized recipe,” “receiving a selection of a selected
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restaurant from the first type candidate restaurant or the second type
candidate restaurant,” and “contracting out the preparation of the
personalized recipe to the selected restaurant.” Id. at 4–5.
The Examiner has found these limitations to be similar to concepts
previously identified by the courts as abstract, such as mental steps or a
method of organizing human activity. Id. at 6–7. Appellant argues that the
concepts described by the Examiner are over-generalized because they are
not restricted to “generating a personal recipe.” Appeal Br. 9. Appellant
instead argues that the claims are “directed to a computer implemented
invention for automatically modifying a personalized recipe based on
restaurant profiles stored in a database.
The USPTO’s 2019 Guidance states that the abstract idea exception
includes mental processes “when recited as such in a claim limitation(s) (that
is when recited on their own or per se).” 2019 Guidance, 84 Fed. Reg. at 52.
Examples of mental processes in the 2019 Guidance include an
“observation, evaluation, judgment, [and] opinion.” Id. In particular,
Updated Guidance issued by the USPTO in October 2019 characterizes “a
claim to collecting and comparing known information” as a mental process,
where such can be practically performed in the human mind. October 2019
Update: Subject Matter Eligibility 7–8, accessible at https://www.uspto.gov/
sites/default/files/documents/peg_oct_2019_update.pdf.
We agree with the Examiner’s determination that claim 1’s limitations
involving storing user data, restaurant data, creating recipes, determining an
ability to prepare the recipe, providing historical pricing data, and
determining and selecting a restaurant able to prepare a modified recipe,
form the type of observation, evaluation, judgment, and opinion that can be
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practically performed in the human mind, or with the assistance of pen and
paper. We further agree with the Examiner’s determination that claim 1’s
limitations involving contracting with a restaurant are the type of
commercial, economic interaction characteristic of those certain methods of
organizing human activity that have been identified as abstract ideas.
October 2019 Update at 4–6. We consider the multiple limitations together
as an abstract idea for Step 2A, Prong Two, and Step 2B. October 2019
Update at 2. Consequently, we agree with the Examiner that claim 1 recites
an abstract idea.
a) “Directed to an Abstract Idea”
Having determined that claim 1 recites an abstract idea, we next
determine, under Step 2A, Prong 2 of the 2019 Guidance, whether the claims
are directed to that abstract idea, or whether the claims have additional
elements that integrate the abstract idea into a practical application of that
abstract idea. 84 Fed. Reg. at 54.
The Examiner finds claim 1 to have elements additional to those
limitations reciting an abstract idea; namely, a database and a cognitive
computer. Final Act. 4. The Examiner further determines these to amount
to no more than “generically recited computer elements.” Id. at 4, 8.
Appellant argues that the claimed invention “improves computer
technology, e.g., automatically modifying a recipe, determining a restaurant
capable of preparing the modified recipe, and automatically selecting one or
more first and second modified personalized recipes that are within a range
of similarity of a personalized recipe.” Id at 12. Appellant characterizes the
claimed invention as “provid[ing] a technical solution for improving
computer decision making capabilities based on several inputs and
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consideration of two or more restaurants capable of providing a prepared
meal in a manner that was not done previously in a manual manner.” Id.
Appellant draws an analogy to the eligible invention at issue in McRO, Inc.
v. Bandai Namco Games America, Inc., 837 F.3d 1299 (Fed. Cir. 2016).
An improvement to a technology or technical field may be indicative
that an additional element or combination of elements integrates the
exception into a practical application. 84 Fed. Reg. at 55. However, an
additional element that merely includes instructions to implement an abstract
idea on a computer, or merely uses a computer as a tool to perform an
abstract idea, may be indicative that the judicial exception is not integrated
into a practical application. Id.
Here, the described improvement is to improve the effectiveness of
ordering prepared meals by considering two or more restaurants and the use
of several inputs. Spec. ¶ 4. The additional elements of database and
computer are described as modules to gather data (inputs) and to compare
data with the goal of identifying a restaurant capable of preparing a desired
meal. Spec ¶¶ 16–17. The modules themselves are not described in
technological detail beyond the tasks they perform. Appellant has not
explained how the alleged improvement to decision making capabilities
necessarily results from the involvement of the claimed technological
components, rather than from the tasks themselves that the Examiner has
identified as the abstract idea.
With respect to Appellant’s invocation of McRO, the decision in
McRO relied, in part, on a determination that the computer performed a
function in a distinctly different manner from a subjective mental process,
such that the computer was not merely used as a tool for automating
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subjective mental activity. McRO, 837 F.3d at 1305–1307 (explaining in
detail the prior art method and its differences from the claimed method),
1314. Appellant alleges, but does not explain, how the claimed invention
functions in a distinctly different manner from a subjective mental process,
so as to provide a technological improvement to the computer itself. Appeal
Br. 12–13; Reply Br. 4. Accordingly, the facts before us are distinguishable
from those presented in McRO.
Furthermore, Appellant has not argued how the additional limitations;
i.e., the generically recited database and cognitive computer, act to improve
any computer or specific technology or technical field. Petitioner has
merely alleged a “technical advantage,” but has not shown that the
particularly claimed manner of assembling data improves a particular
technology or technical field. Our reviewing court provides further
guidance: “‘[t]he mere automation of manual processes using generic
computers’ . . . ‘does not constitute a patentable improvement in computer
technology.’” Trading Techs. Int’l v. IBG LLC, 921 F.3d 1378, 1384 (Fed.
Cir. 2019) (quoting Credit Acceptance Corp. v. Westlake Servs., 859 F.3d
1044, 1055 (Fed. Cir. 2017)). USPTO examination procedure also requires
that “the claim must include more than mere instructions to perform the
method on a generic component or machinery to qualify as an improvement
to an existing technology.” MPEP § 2106.05(a). Consequently, we are not
persuaded that the additional elements of claim 1 reflect an improvement in
the functioning of a computer, or an improvement to another technology or
technical field.
We instead agree with the Examiner’s determination that the
additional elements of claim 1 are instructions to implement the particularly
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claimed technique of assembling data to make decisions on recipes and
restaurants on a generic computer, in effect, using a computer as a tool to
determine and select an appropriate recipe and restaurant.
For these reasons, we are not persuaded that claim 1 is directed to any
improvement in a computer, a technology or technological field so as to
show error in the Examiner’s determination that the additionally-recited
elements are not more than a processing tool that aids in the above-identified
judicially excepted mental process. Consequently, we are not persuaded of
error in the Examiner’s determination that claim 1 is directed to an abstract
idea.
b) Significantly More Than an Abstract Idea
The Examiner has determined that the additional elements of database
and computer do not amount to significantly more than the abstract idea
when considered both individually and as a combination, since they amount
to no more than a generic computer performing generic computer functions
that would be routine, conventional and well-understood to one of ordinary
skill in the computer art. Final Act. 8. The Examiner relies on prior court
recognition that such well-understood, routine, and conventional computer
functions include “performing repetitive calculations, receiving, processing,
and storing data, electronically scanning or extracting data from a physical
document, electronic recordkeeping, automating mental tasks, and receiving
or transmitting data over a network, e.g., using the Internet to gather data.”
Id. at 8–9.
The Examiner identifies the following claimed functions, when
performed by a computer, as routine, conventional, and well-understood:
“storing in a first database a user personal profile,” “storing in a second
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database per-restaurants profiles,” “connecting and interacting with a
cognitive computer,” “generating by the cognitive computer a personalized
recipe,” “determining by the cognitive computer a restaurant from a first
type candidate restaurants for preparing the personalized recipe,” “
determining by the cognitive computer that no first type candidate
restaurants are able to prepare the recipe,” “modifying by the cognitive
computer the personalized recipe to create a modified personalized recipe,” “
providing by the cognitive computer historical price range of recipes,”
“determining by the cognitive computer a similarity between the recipes,”
“selecting by the cognitive computer recipes,” “determining by the cognitive
computer one or more second type candidate restaurants for preparing the
modified personalized recipe,” “receiving by the cognitive computer
selection of a selected restaurant or the second type candidate restaurant,”
and “contracting by the cognitive computer out the preparation of the
personalized recipe to the selected restaurant.” Id. at 9–11.
Appellant argues that certain steps are not routine, including “the non-
routine step of determining whether a first type candidate restaurant is able
to prepare the personalized recipe based on the first list of ingredients
associated with those recipes,” “the non-routine step of creating a first
modified personalized recipe having at least one ingredient different from
the ingredients in the first list of ingredients and then determining one or
more second type of restaurants based on the first personalized recipe,” and
“providing a historical price range of recipes that have been accepted by the
user for two modified personal recipes, determining the similarity of those
two modified personal recipes to the original recipe and automatically select
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one of the modified personal recipes based on the similarity to the original
recipe.” Appeal Br. 17.
The steps identified by Appellant as non-routine are elements that the
Examiner has identified as part of the abstract idea. Appellant has not
addressed the elements additional to the abstract idea; i.e., the computer and
database. Accordingly, Appellant has not shown the Examiner erred in
finding, based on statements by the courts, that the additional elements of
computer and database are merely routine, conventional, and well-
understood for their claimed functions.
Appellant further argues that the Examiner has not based such a
determination on a fact as required by the USPTO’s Berkheimer
memorandum. Appeal Br. 22–24. However, the Berkheimer memorandum
provides for a “citation to one or more of the court decisions discussed in
MPEP § 2106.05(d)(II) as noting the well-understood, routine, conventional
nature of the additional element(s).” The Examiner has cited a list of well-
understood, routine, conventional elements, taken from court decisions, to
support the Examiner’s determination. Final Act. 8–9 (citing examples
taken from MPEP § 2106.05(d)(II)). Appellant has not explained
persuasively why the Examiner’s characterization of the functions of the
computer and database, based on computer functions found in prior court
cases to be well-understood, routine, conventional, is in error.
Furthermore, generically claimed elements of computers and
computer databases have been found to be no more than well-understood,
routine, and conventional activity in the context of gathering and assembling
data. See, e.g., Berkheimer v. HP Inc., 890 F.3d 1369, 1370 (Fed. Cir. 2018)
(“The conventional limitations of claim 1, combined with limitations of
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analyzing and comparing data and reconciling differences between the data .
. . amount to no more than performing the abstract idea of parsing and
comparing data with conventional computer components); Ultramercial, Inc.
v. Hulu, LLC, 772 F.3d 709, 716 (updating an activity log by computer is
well-understood, routine, conventional activity). As explained by the
Supreme Court, the presence of a generic computer performing generic
computer functions, such as calculation and transmission of data, is not
enough to transform an abstract idea into a patent-eligible invention. Alice
Corp. v. CLS Bank, 573 U.S. 208, 225–226 (2014). Here, the database and
computer function as computational tools to store data (pertaining to user,
recipes and restaurants), generate data (pertaining to recipe ingredients)
based on user selections, compare data (determining if a match between
recipe data and restaurant profile data exists), and to enable communication
(contracting with a restaurant). Under our governing case law, this is not
enough to show that the database and computer cause claim 1 to be
significantly more than the identified abstract idea. Accordingly, we are not
persuaded by Appellant’s argument.
In view of the foregoing, under the 2019 Guidance, informed by our
governing case law concerning 35 U.S.C. § 101, Appellant has not shown
the Examiner erred in concluding claim 1 is directed to a judicial exception,
i.e., an abstract idea, without significantly more, and thus is patent-ineligible
under § 101. We therefore sustain the Examiner’s rejection of claim 1.
Since claims 2, 4–10, 12–17, and 19–23 stand or fall with claim 1, we
therefore sustain the Examiner’s rejection of those claims.

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CONCLUSION
For the above-described reasons, we affirm the Examiner’s rejection
of claims 1, 2, 4–10, 12–17, and 19–23 as lacking subject matter eligibility
under 35 U.S.C. §101.
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).
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Grounds Affirmed Reversed
1, 2, 4–10,
12–17,
19–23
101 Eligibility 1, 2, 4–10,
12–17,
19–23

AFFIRMED