John Casey. Laird et al.

Patent Trials and Appeals Board

Sep 26, 2019

14942829 - (D) (P.T.A.B. Sep. 26, 2019)

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.
14/942,829 11/16/2015 John Casey Laird 17707.0003US01 9450
23552 7590 09/26/2019
MERCHANT & GOULD P.C.
P.O. BOX 2903
MINNEAPOLIS, MN 55402-0903
EXAMINER
PADOT, TIMOTHY
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
09/26/2019 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):
USPTO23552@merchantgould.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte JOHN CASEY LAIRD, DAVID PAUL ZECKSER,
WILLIAM BRANDON RIDENOUR, CRAIG SMITH, and
ANDREW TILEY
__________

Appeal 2018-009127
Application 14/942,8291
Technology Center 3600
__________

Before DONALD E. ADAMS, RICHARD M. LEBOVITZ, and
RACHEL H. TOWNSEND, Administrative Patent Judges.

TOWNSEND, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a method
for facilitating a communication session between a consumer and a service
provider, which have been rejected as being directed to patent ineligible
subject matter. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
Appellant’s Specification states:

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
HomeAdvisor, Inc. (Appeal Br. 2.)
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There are many service providers that are willing to provide
their services to consumers. Likewise, there are many
consumers that are looking for various services and/or products
provided by various service providers. However, it may be
difficult for consumers to identify reliable and trustworthy
service providers. Likewise, it may be difficult for service
providers to find and contact consumers that have jobs and
projects that the service providers are qualified for and are
interested in pursuing.
(Spec. ¶ 2.) The claims on appeal “relate generally to facilitating
communication sessions between a consumer and a service provider.”
(Spec. ¶ 1.)
Claims 1–15, 17, 18, and 20–22 are on appeal. Claim 1 is
representative and reads as follows:
1. A method for facilitating a communication session
between a consumer and a service provider, comprising:
receiving, at a remote computing device, an inquiry about
service from a consumer, the inquiry originating from a
computing device connected to a network;
obtaining from the inquiry, one or more items of
information about the service;
determining, at the remote computing device and based
on the one or more items of information, a plurality of service
providers that can perform the service;
determining, by the remote computing device using a
scoring algorithm, a subset of service providers from the
plurality of service providers, wherein the scoring algorithm is
used to determine a score associated with each service provider
in the plurality of service providers and wherein the score is
based, at least in part, on historical acceptance rates of each
service provider in the plurality of service providers and on a
number of times each service provider of the plurality of
services providers has instantly connected with past consumers;
ranking, by the remote computing device, the subset of
service providers using the score determined by the scoring
algorithm;
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identifying, by the remote computing device, a service
provider from the subset of service providers based, at least in
part, on the ranking;
automatically determining, by the remote computing
device, whether the service provider is currently available for a
communication session;
providing, by the remote computing device, a notification
that the service provider has been identified and is currently
available for the communication session, the notification being
transmitted to the computing device and including a selectable
element that enables the consumer to be instantly connected
with the identified service provider via a communication
session; and
automatically initiating the communication session
between the identified service provider and the consumer when
the selectable element is selected.
(Appeal Br. 26.)
The following ground of rejection by the Examiner is before us on
review:
Claims 1–15, 17, 18, and 20–22 under 35 U.S.C. § 101 as being
directed to patent ineligible subject matter.
DISCUSSION
The Examiner finds that the claims are directed to a judicial exception
because they
describe the abstract idea of using a third-party intermediary to
help facilitate a transaction between two parties (i.e., a
consumer and a service provider), which is similar to the
concept of intermediated settlement (using a third-party
intermediary) as discussed by the Court in Alice, which is a
fundamental economic practice long prevalent in our system of
commerce. See Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573
U.S., 134 S. Ct. 2347 (2014).
(Final Action 6.) The Examiner further finds that
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the claims do not include additional elements or a combination
of elements that amount to significantly more than the judicial
exception because the additional elements are merely directed
to instructions to implement the idea on a generic computer
and/or computer implemented functions that are well-
understood, routine, and conventional activities previously
known to the art.
(Id.at 7.) The Examiner notes that the additional limitations include
remote computing device (for implementing several claim
steps), a computing device connected to a network (from which
the consumer inquiry originated); and including a selectable
element that enables the consumer to be instantly connected
with the identified service provider (for initiating the
communication session when the selectable element is
selected).
(Id.) The Examiner indicates that the limitations describing the computer-
implementation are recited at a high level of generality. Id. The Examiner
further explains that the determining step, ranking step, identifying step, and
including a selectable element
describe well-understood, routine, and conventional activities in
the art, and even when implemented by a computer, involve
nothing more than automating mental tasks, which has been
noted by courts as well-understood, routine, and conventional.
(Id. at 8.) The Examiner notes that “inclusion of a selectable element that
enables the consumer to be instantly connected with the identified service
provider . . . encompasses routine and conventional prior art activity” and
cites a number of references in support of that position. (Id.)
The Examiner further finds that
when taken as an ordered combination, the ordered combination
adds nothing that is not already present as when the elements
are taken individually. There is no indication that the
combination of elements improves the functioning of a
computer or improves any other technology. Their collective
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functions merely provide conventional computer
implementation.
(Id. at 9.) Thus, the Examiner concludes that the “additional claim elements
do not provide meaningful limitations to transform the abstract idea into a
patent eligible application of the abstract idea such that the claims amount to
significantly more than the abstract idea itself.” (Id.)
We agree with the Examiner’s conclusion that the claims are directed
to patent ineligible subject matter for the reasons discussed below.
ANALYSIS
35 U.S.C. § 101 defines patent eligible subject matter. The Supreme
Court has carved out exceptions to what would otherwise appear to be
within the literal scope of § 101. Alice Corp. v. CLS Bank Int’l, 573 U.S.
208, 216 (2014). One of these exceptions are claims “directed to” an
abstract idea. Id. at 217. This appeal involves the abstract idea exception to
patent eligibility under section 101.
The Supreme Court has established a 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.” Id. “First, we determine whether the claims at issue are directed
to” a patent-ineligible concept. Id. If so, “we consider the elements of each
claim both individually and ‘as an ordered combination’ to determine
whether the additional elements ‘transform the nature of the claim’ into a
patent-eligible application.” Id. (quoting Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 78–79 (2012)).
The United States Patent and Trademark Office (PTO) issued the
2019 Revised Patent Subject Matter Eligibility Guidance (“Guidance”),
indicating how the PTO would analyze patent eligibility under the Supreme
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Court’s two-step framework. 84 Fed. Reg. 50–57 (January 7, 2019).
Applying the Guidance, we agree with the Examiner that the pending claims
are directed to patent ineligible subject matter.
STEP 2A, Prong One:
Under the Guidance, in determining what concept a claim is “directed
to” in step one of the Supreme Court’s two-step framework, we first look to
whether the claim recites any judicial exceptions, such as a mathematical
concept (including mathematical relationships, mathematical formulas or
equations, mathematical calculations), methods of organizing human activity
(such as advertising, marketing or sales activities or behaviors, and business
relations, as well as managing interactions between people), and/or a mental
process (concepts performed in the mind, including an observation,
evaluation, judgment or opinion) Guidance, 84 Fed. Reg. at 52, 54 (Step
2A, Prong One). Concepts performed in the mind include performance in
the mind but for the recitation of generic computer components. Id. at 52
n.14. These types of judicial exceptions are deemed abstract ideas. Id. at
51–52.
Claim 1 recites steps that detail a process that identifies service
providers based on a received request from a consumer and after
determining through a scoring algorithm2 that the service providers meet
particular criteria from a list of such providers, ranking those providers, and
automatically determining whether a ranked providers are available for
communication with the consumer. In particular, claim 1 recites at least the

2 As the Specification explains, the scoring algorithm is a probability
calculation. (See spec. ¶¶ 34–35, 53–55.)
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following steps: “determining . . . a subset of service providers from the
plurality of service providers” based on a score that considers “historical
acceptance rates of each service provider in the plurality of service providers
and on a number of times each service provider of the plurality of services
providers has instantly connected with past consumers,” “ranking . . . the
subset of service providers using the score”, “identifying . . . a service
provider from the subset of service providers based, at least in part, on the
ranking”, and “automatically determining . . . whether the service provider is
currently available for a communication session.” We find that these steps
each individually recite mental processes because but for the recitation of the
use of a generic “computing device,” they cover steps that can be performed
in the mind.3
Finally, while we agree with Appellant that the claim is not directed to
a fundamental economic practice like the concepts in Alice, Bilski, or Benson
(Appeal Br. 11–13; Reply Br. 2–3), we find that the steps of claim 1,
collectively as an ordered combination, recite a method of organizing human
activity, e.g., managing interactions between a potential customer and
potential service provider. We agree with the Examiner that claim 1
describes the involvement of a third-party intermediary—a computer—to
facilitate a transaction between two parties of a transaction. (Final Action 2,
7.) Appellant does not disagree on that point stating:

3 Claim 5, which Appellant mentions separately in the Appeal Brief, but
does not argue independently from claim 1 (see, e.g., Appeal Br. 12, 14–15),
likewise recites identifying a service provider, namely “another service
provider in the subset . . . when the communication session between the
identified service provider and the consumer cannot be established.” Like
the identifying step in claim 1, this step recites a mental process.
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[T]he claims of the present application describe the technical
details of how to facilitate a communication session between a
consumer and a service provider. More specifically, the
independent claims are directed to receiving a request from a
consumer to find a service provider that has the skill to assist
with a particular project. Once the request is received, a
scoring algorithm is used to select a service provider that: 1)
has the required skill set to complete the requested service, 2)
has a determined historical acceptance rate of accepting
projects, and 3) has, in the past, been available to discuss the
particular project with a consumer at the time the consumer has
submitted the original request.
Once the service provider has been identified and
selected, the computing device generates a notification and a
selectable element that enables a communication session to be
instantly initiated between the computing device of the service
provider and the computing device of the consumer.
(Appeal Br. at 11–12.)
The Examiner contends that these features “for establishing a
connection/communication session between a consumer and service provider
[are] performed for the very purpose of facilitating a transaction between the
consumer and service provider.” (Final Action 2–3.) As the Examiner
notes, the scoring algorithm and the elements “from which scoring is derived
(i.e., historical acceptance rate, number of times service provider has
connected with past consumers)” “are directed to business or customer-
service related elements.” (Ans. 4–5.) We agree and conclude that the
claim recites a number of abstract ideas, including mental processes and a
method of organizing human activity—even though we agree with Appellant
that the activity is not a fundamental economic practice (Appeal Br. 12–13).
STEP 2A, Prong Two:
Having made the determination that claim 1 recites abstract ideas,
under the Guidance, we next examine whether there are additional elements
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beyond the determining, ranking, and identifying, and the organizing of a
connection/communication session between a consumer and service provider
that integrate those judicial exceptions into a practical application. Under
the Guidance, this is referred to as the “Prong Two” inquiry under “Step
2A.” Guidance, 84 Fed. Reg. at 54–55. That is, under the Prong Two
analysis we look to whether the claim as a whole “appl[ies], rel[ies] on, or
use[s] the judicial exception in a manner that imposes a meaningful limit on
the judicial exception.” Id.
One of the “examples in which a judicial exception has not been
integrated into a practical application” is when “[a]n additional element . . .
merely includes instructions to implement an abstract idea on a computer, or
merely uses a computer as a tool to perform an abstract idea.” Id. at 55. See
also buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1354 (Fed. Cir. 2015)
(stating that “[t]he Court in Alice made clear that a claim directed to an
abstract idea does not move into section 101 eligibility territory by ‘merely
requir[ing] generic computer implementation’”) (alteration in original).
We find that claim 1 does not integrate the recited abstract ideas into a
practical application.4 The claim limitations that are “in addition to” the
recited abstractions are the collection of data to be used in the determination,
i.e., receiving an inquiry about service, obtaining more granular information
about the service from the inquiry, and providing a notification with a
selectable element that when selected will automatically initiate a
communication session between consumer and service provider.

4 Our analysis applies equally to claim 5, which Appellant argues together
with claim 1.
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The claim’s recitation of receiving certain information and refining
the granularity of that information (see Spec. ¶ 3 (“The inquiry [received
from a consumer] is parsed to determine one or more items of information
about the particular product or service”)) is mere data-gathering and recites
the type of extra-solution activity (i.e., in addition to the judicial exception)
the courts have determined insufficient to transform judicially excepted
subject matter into a patent-eligible application. See MPEP § 2106.05(g);
Guidance at 55, 55 n.31; see Bilski v. Kappos, 561 U.S. 593, 612 (holding
the use of well-known techniques to establish inputs to the abstract idea as
extra-solution activity that fails to make the underlying concept patent
eligible); SAP Am., Inc. v. Invest Pic, LLC, 898 F.3d 1161, 1168 (Fed. Cir.
2018) (“[E]ven if a process of collecting and analyzing information is
‘limited to particular content’ or a particular ‘source,’ that limitation does
not make the collection and analysis other than abstract.”); Elec. Pwr. Grp.,
LLC v. Alstom S.A., 830 F.3d 1350, 1353–54 (Fed. Cir. 2016) (holding that
steps of collecting information, even when limited to particular content
(which does not change its character as information), do not make claims
patent eligible).
As the Examiner noted, “the limitations describing computer-
implementation of the claim steps/functions (e.g., remote computing device,
computing device connected to a network) are recited at a high level of
generality.” (Final Action 7–8.) Moreover, we agree with the Examiner that
Appellant’s “Specification indicates the computer(s) relied on to implement
the invention may be virtually any conventional computing device (e.g.,
general purpose computer), as suggested in at least paragraphs [0028] and
[0107] of the Specification.” (Id. at 8 (alteration original).) The computing
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device by which the remote computing device receives the inquiry from a
consumer and to which the remote computing device delivers the
notification with a selectable element is likewise any conventional
computing device. (See, e.g., Spec. ¶¶ 21, 37, 44, 45, 49, 50.) Because the
claim merely implements the claimed method on general purpose computers,
performing normal computer functions in analyzing data, providing output
notifications and initiating communication sessions based on a selection
input, the claimed method does not reflect “an improvement in the
functioning of a computer.” Guidance at 55. The remote computing device
and computing device connected to a network are merely invoked as tools to
perform the claimed method.
The method does not concern an improvement to a technology
because, while the method is executed on a computer, the purported
improvement is not on any particular technology but on improvement to the
efficiency of service provider referral systems in which the improvement is
in data analysis and the consequent steps to facilitate communication
between consumer and available service provider, which themselves are
abstract ideas. We are not convinced that the fact that the customer is
provided with a selectable element and that the communication can be
automatically initiated when selected is an improvement to computer
technology. While this may be a business improvement, there is no
assertion that claim 1 requires any specific improvement to graphical user
interfaces or otherwise that provides the selectable element for the customer
or in the automation to connect the service provider with the consumer when
the selectable element is selected. Rather, Appellant only contends that a
specific, structured graphical user interface is required that provides a
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selectable element. (Appeal Br. 14.) As will be discussed below, such an
element is not novel.
The claim limitations as a whole are directed at facilitating a
communication session between a consumer and a service provider by
automating a previously performed manual process in which a consumer
looked up potential service providers, talked with friends to find out the
ability of those service providers or otherwise researched the capability of
the collection of potential service providers identified in its research and
contacted the service providers one-by-one to determine ability to perform
task. Appellant explains that: “As discussed in the present specification, it is
difficult for consumers to identify reliable and trustworthy service providers
let alone find service providers that are qualified and immediately available
for a communication session.” (Reply Br. at 5.) This identified problem
does not address a technological problem but rather is a business concern,
and the solution does not improve a technological system. “[R]elying on a
computer to perform routine tasks more quickly or more accurately is
insufficient to render a claim patent eligible.” OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015)). The method
merely implements a purported improvement to organizing human behavior
on general purpose computers.
Appellant does not provide any specific showing, either in the claim
language or the Specification, of an improvement in the computer
components, or that these components are being used in a unique or
unconventional manner different from their ordinary purpose. Indeed, the
Specification makes it clear that the steps involve general purpose computer
operations. (See, e.g., Spec. ¶¶ 21, 29–52 (explaining that information
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provided to a computer by a consumer through a computer (be it a tablet,
smartphone or other computer device) is processed by the computer where
databases that store information are accessed analyzed and information is
transmitted).) In other words, the claim is not focused on an improvement to
computers or software as tools, but rather uses computers and software to
execute the judicial exception. Indeed, Appellant notes the improvement is
simply one of improving “the efficiency of referral systems in which a
consumer may have had to attempt to contact multiple different service
providers before even speaking to a service provider let alone finding a
suitable match.” (Appeal Br. 15.) Such automation of manual processes
does not reflect “an improvement to other technology or technical field.”
Guidance at 55; see also Credit Acceptance Corp. v. Westlake Servs., 859
F.3d 1044, 1055 (Fed. Cir. 2017) (indicating that our reviewing court has
“made clear that mere automation of manual processes using generic
computers does not constitute a patentable improvement in computer
technology”).
The claim does not require a specialized machine or manufacture, and
does not transform an article to a different state. Guidance at 55; BASCOM
Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1348
(Fed. Cir. 2016) (“An abstract idea on ‘an Internet computer network’ or on
a generic computer is still an abstract idea”). The claimed method does not
improve the speed or operation efficiency of the computer or the accuracy of
computer operations, even if it may improve the efficiency of connecting a
qualified service provided with a consumer in need of service (Appeal Br.
15). The claim, as a whole, describes how to generally apply or execute the
concept as a “computer-implemented method.” In other words, the claim
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merely links the recited abstract idea generally to a computer environment,
and thus does no more than represent a drafting effort to monopolize the
abstract idea in a computer implementation. Guidance at 55. As such, we
conclude that the many identified judicial exceptions of claim 1 are not
integrated into a practical application. Thus, we conclude that the claim is
directed to an abstract idea.
Appellant’s argument that the claim is similar to those in the non-
precedential decision Trading Technologies International, Inc. v. CQG, Inc.,
675 F. App’x 1001 (Fed. Cir. 2017) (Appeal Br. 13; Reply Br. 7) is not
persuasive. In Trading Technologies the patented claims recited a method
and system for displaying market information on a graphical user interface
(“GUI”). Trading Techs. Int’l, Inc. v. CQG, Inc., No. 05-cv-4811, 2015 WL
774655 *4 (N.D. Ill. Feb. 24, 2015). The district court found that with prior
art GUIs, the best bid and best ask prices changed based on updates received
from the market; therefore, there was a risk with these GUIs that a trader
would miss her intended price as a result of prices changing from under her
pointer at the time she clicked on the price cell on the GUI. The patents-in-
suit provided a system and method whereby traders could place orders at a
particular, identified price level, not necessarily the highest bid or the lowest
ask price by keeping the prices static in position, and allowing the quantities
at each price to change. Id. The Federal Circuit affirmed the district court’s
holding that the patented claims were not directed to an abstract idea
because the district court found, and the Federal Circuit agreed, that the
challenged patents did not simply claim displaying information on a
graphical user interface; instead, the claims required “a specific, structured
graphical user interface paired with a prescribed functionality directly
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related to the graphical user interface’s structure that is addressed to and
resolves a specifically identified problem in the prior state of the art.”
Trading Technologies International, Inc. v. CQG, Inc., 675 F. App’x at
1004. No graphical user interface improvement is asserted to be involved
here, just that a selectable element is provided. (Appeal Br. 14.) But as
discussed below, the provision of such selectable elements on a GUI to
immediately connect consumers with an available service provider are
known in the art. (See Final Action 8, 11 (citing Lurie, US 2003/0126205);
Ans. 8.)
We also do not find Appellant’s argument that the claim at issue here
is “similar to the concepts” in McRO, Inc. v. Bandai Namco Games Am. Inc.,
837 F.3d 1299 (Fed. Cir. 2016). (Appeal Br. 14–15; Reply Br. 7–8.) The
claimed invention in McRO was patent-eligible because it was directed to a
“technological improvement over the existing, manual 3-D animation
techniques,” McRO, 837 F.3d at 1316. It was not just automating a process
that had previously been done manually, but an improvement in “how the
physical display operated (to produce better quality images).” SAP Am., Inc.
v. Investpic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018) (contrasting the
claims at issue in SAP with those in McRO); see also Solutran, Inc. v.
Elavon, Inc., 931 F.3d 1161, 1167 (Fed. Cir. 2019) (noting that in McRO, the
claims were “‘limited to rules with specific characteristics’ to create a
technical effect.”). Here, on the other hand, there is no such technological
improvement or use of specific rules that achieve a technical effect. As
discussed above, the claim invokes generic processes and computers and is
merely a generic computer implementation of managing interactions
between people.
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We are also unpersuaded by Appellant’s argument that because the
claims “cannot possibly prevent or preempt all uses” of automatically
establishing a communication session, they cannot be considered abstract
(Appeal Br. 16). “[T]he absence of complete preemption does not
demonstrate patent eligibility.” Ariosa Diagnostics, Inc. v. Sequenom, Inc.,
788 F.3d 1371, 1379 (Fed. Cir. 2015). “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.” 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.”).
STEP 2B:
We next turn to Step 2B to evaluate whether claim 1 provides an
inventive concept. Guidance at 54. Neither a finding of novelty nor a non-
obviousness determination automatically leads to the conclusion that the
claimed subject matter is patent-eligible. Although the second step in the
Mayo/Alice framework is termed a search for an “inventive concept,” the
analysis is not an evaluation of novelty or non-obviousness, but rather, a
search for “an element or combination of elements that is ‘sufficient to
ensure that the patent in practice amounts to significantly more than a patent
upon the [ineligible concept] itself.”’ Alice, 573 U.S. at 217–18 (citation
omitted). “Groundbreaking, innovative, or even brilliant discovery does not
by itself satisfy the § 101 inquiry.” Ass’n for Molecular Pathology v.
Myriad Genetics, Inc., 569 U.S. 576, 591 (2013). A novel and non-obvious
claim directed to a purely abstract idea is, nonetheless, patent-ineligible. See
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Mayo, 566 U.S. at 90; see also Diamond v. Diehr, 450 U.S. 175, 188–89
(1981) (“The ‘novelty’ of any element or steps in a process, or even of the
process itself, is of no relevance in determining whether the subject matter of
a claim falls within the § 101categories of possibly patentable subject
matter.”).
Step 2B requires that we look to whether the claim “adds a specific
limitation” beyond the judicial exception that is not “well-understood,
routine, conventional activity in the field.” Guidance at 56. Data gathering
for use in mathematical calculations does not suffice to render claims
statutory subject matter. See, e.g., In re Richman, 563 F.2d 1026, 1030
(1977) (“[N]otwithstanding that the antecedent steps are novel and
unobvious, they merely determine values for the variables used in the
mathematical formulae used in making the calculations. [They] do not
suffice to render the claimed methods, considered as a whole, statutory
subject matter.”). Furthermore, 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.”); see also SAP, 898 F.3d at 1163, 1170 (finding that the
invocation of such computers for use in carrying out improved mathematical
calculations amounts to recitation of what is well-understood, routine, and
conventional). Also, “steps that do nothing more than spell out what it
means to ‘apply it on computer’ cannot confer eligibility.” Intellectual
Ventures I LLC v. Capital One Bank, 792 F.3d 1363, 1370 (Fed. Cir. 2015).
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We do not find persuasive Appellant’s argument that the “claim
elements cause the various components of a computing device to operate in
an unconventional manner” because claim 1
requires the generation and display of a notification that
indicates that a service provider has been identified and is
currently available for a communication session. The
notification is generated based on results of a scoring algorithm.
The notification also includes a selectable element that enables
the consumer to be instantly connected with the identified
service provider via a communication session.
(Appeal Br. 21.) The foregoing does not describe unconventional operation
of the components of a computing device. Using a computer to retrieve,
select, and apply decision criteria to data and modify the data as a result
amounts to electronic data query and retrieval—one of the most basic
functions of a computer. There is nothing unconventional about providing a
user of a computer with a notification of results based on a user query.
Moreover, that the notification includes a selectable element that enables
instant connection regarding the retrieved results was also not
unconventional at the time of Appellant’s application date, e.g., November
16, 2015, as the Examiner explained (Final Action 8, 10–12, Ans. 6, 7–8).
For example, the Examiner explains, and Appellant does not dispute, that
Lurie, US 2003/0126205,
discloses scheduling live advice with a selected service
provider, including determining which service providers in the
plurality of service providers are currently available to be
instantly connected to the consumer (paragraphs 115-119 and
Fig. 3: e.g., Fig. 3 showing a listing of service providers and
their respective availability for a communication session, i.e.,
available for Live Advice, Away from phone, On the Phone,
etc.); and an opportunity for each currently available service
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provider to be instantly connected to the consumer, via the
communication session (Fig. 3 and paragraphs 15 and115-119).
(Final Action 11; Ans. 8.) The fact that the selectable element and
notification are only provided to the consumer “when it is determined that
‘the service provider has been identified and is currently available for the
communication session’” (Reply Br. 11) does not change the fact that the
provision of a selectable element that enables communication once selected
is not unconventional. When the selectable element is provided to the
customer, i.e., when it is “automatically determin[ed], by the remote
computing device, whether the service provider is currently available for a
communication session,” simply goes to the use of the algorithm and data
analysis to identify providers that are currently available. (See, e.g., Spec. ¶¶
74–76 (describing the communication module having an availability module
that has access to calendaring applications associate with or used by the
various service providers).) That this data processing might be a novel way
for the computing device to analyze the data does not change the fact that
the computing device is operating in a conventional manner, i.e., data
processor.5
Moreover, the Examiner does not dispute that the claims that require
using the specifically recited scoring algorithm to determine a subset of
service providers for which a selectable element that enables communication
with a particular provider is novel. (Final Action 10.) Novelty of the
abstract idea of the algorithm used to identify service providers to the

5 For these reasons, we do not agree with Appellant that the Examiner “has
failed to satisfy the requirements set forth in Berkheimer in showing that the
elements of the claim[] are well-understood, routine and conventional”
(Reply Br. 11; Appeal Br. 25).
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consumer and managing the interactions between a potential customer and
potential service provider based on availability of the service provider, does
not render the claims to the abstract idea patent-eligible subject matter. See
Mayo, 566 U.S. at 90; Diehr, 450 U.S. at 188–89 (“[t]he ‘novelty’ of any
element or steps in a process, or even of the process itself, is of no relevance
in determining whether the subject matter of a claim falls within the §
101 categories of possibly patentable subject matter.”).6
We also do not find persuasive Appellant’s argument that claim 1 is
like those claims found patent-eligible in DDR Holdings, AmDocs and
Bascom (Appeal Br. 19–22; Reply Br. 9).

6 Appellant argues that the facts of Ex parte Blaho, Appeal No. 2016-
007954, 2017 WL 4418917, (PTAB 2017) and this case are substantially
similar such that a finding of patent eligibility is warranted. (Appeal Br. 15;
Reply Br. 8–9.) We disagree. In Blaho, the question was whether a claim
directed to network of gaming devices recited to use specific steps involving
rendering and displaying images over the network to various users/gamers
can be considered management of human activity and thus renders the
claims directed to a judicial exception. 2017 WL 4418917 *2. The Board
determined that “the system and method claimed herein deals with
processing and displaying images in a specific manner among the three
devices over a network” and that the claims are “directed to ‘execut[ing] a
game on one device which is remotely viewed on another’. . . not merely m
anaging relationships or transactions between people as in
Dealertrack(processing loan information), Bancorp (managing an insurance
policy), or Planet Bingo (managing a game of bingo while allowing a player
to repeatedly play the same sets of numbers in multiple sessions). Id. Claim
1 at issue here does not concern a similar method of coordinating display
between multiply networked devices, but rather, concerns managing the
interaction between consumer and service provider through networked
devices, which is identified in the Guidance as an abstract idea, Guidance at
52.

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In DDR Holdings, LLC v. Hotels.com, L.P. 773 F.3d 1245 (Fed. Cir.
2014), the Court evaluated the eligibility of claims “address[ing] the
problem of retaining website visitors that, if adhering to the routine,
conventional functioning of Internet hyperlink protocol, would be instantly
transported away from a host’s website after ‘clicking’ on an advertisement
and activating a hyperlink.” Id. at 1257. The claims addressed a problem
that was rooted in computer technology. The Court found that the claims
were patent eligible because they transformed the manner in which a
hyperlink typically functions to resolve a problem that had no “pre-Internet
analog.” Id. at 1258. Claim 1 at issue here does not address a problem
rooted in computer technology, much less solve that problem. Indeed, the
Specification describes only the use of generic computer equipment
performing routine, conventional, and generic tasks. The generation of a
notification and a selectable element is not an internet problem that is
solved. Rather, the solution/improvement is in the identification of a service
provider that has both a particular score as identified by the algorithm and
that is available for immediate communication. That improvement is better
data analysis not the solution to an internet-centric problem whose solution
is rooted in computer technology.
For this same reason, we do not find persuasive Appellant’s argument
that claim 1 is patent eligible for similar reasons that claim 2 of Example 21
of the USPTO’s 2015 Update on Subject Matter Eligibility was deemed
patent eligible (Appeal Br. 22–23; Reply Br. 9–10). Claim 1 of Example 21
was considered ineligible and claim 2, which addressed “the Internet-centric
challenge of alerting a subscriber with time sensitive information when the
subscriber’s computer is offline” by a transmission of an alert to an
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application that “cause[d] the alert to display and enable[d] the connection of
the remote subscriber computer to the data source over the Internet when the
remote subscriber computer comes online,” was considered eligible. See
July 2015 Update Appendix 4. Thus, claim 2 was similar to DDR Holdings
in solving an Internet-centric problem with a solution necessarily rooted in
computer technology. Id.
In Amdocs Ltd. v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir.
2016), the unconventional arrangement of components (network devices,
gatherers, ISMs, a central event manager, a central database, a user interface
server, and terminals or clients) creating a distributed architecture provided a
technological solution that “improved the performance of the system itself.”
Id. at 1300–1302. Similarly, in Bascom, the Federal Circuit held “[t]he
inventive concept described and claimed in the ‘606 patent is the installation
of a filtering tool at a specific location, remote from end-users, with
customizable filtering features specific to each end user.” Bascom, 827 F.3d
at 1350. In determining that this feature was patent eligible, the Federal
Circuit explained that the remote location of a filtering tool having
customizable user-specific filtering features provided the filtering tool both
the benefits of a filter on a local computer and the benefits of a filter on the
ISP server, and was a technical improvement over prior art ways of filtering
content. Id. at 1350–51. Claim 1 at issue here does not recite an
unconventional arrangement of computer components, as discussed above.
We are also not persuaded by Appellant’s argument that claim 1 “can
. . . be likened to those in Core Wireless Licensing S.A.R.L v. LG
Electronics[, 880 F.3d 1356 (Fed. Cir. 2019),] that were also deemed patent
eligible.” (Appeal Br. 24; Reply Br. 10.) In Core Wireless, the claimed
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invention was “to an improved interface for computing devices” and the
claim included limitations requiring a “specific manner of displaying a
limited set of information to the user, rather than using conventional user
interface methods to display a generic index on a computer.” 880 F.3d at
1362–63. The prior art taught that small-screen electronic interfaces
required users to scroll through and switch views to find desired data and
functions. 880 F.3d at 1363. The Court stated that “[a]lthough the generic
idea of summarizing information certainly existed prior to the invention,
[Core Wireless’] claims are directed to a particular manner of summarizing
and presenting information in electronic devices,” which results in “an
improved user interface for electronic devices,” and “an improvement in the
functioning of computers,” not to an abstract idea. Id. at 1363. Claim 1 at
issue here does not address an improved GUI.
Under Step 2B, we are not persuaded that the Examiner erred in
determining that the limitations of claim 1 do not transform the claim into
significantly more than the abstract idea. Claim 1 amounts to nothing
significantly more than instructions to apply the abstract ideas of a certain
method of organizing human activity using unspecified, generic computer
components. Under our precedents, that is not enough to transform an
abstract idea into a patent-eligible invention. See Alice, 573 U.S. at 225-26.
Claims 2–4, 6–11, 13–15, 17, 20, and 22 have not been argued
separately and therefore fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv).
Appellant asserts that independent claims 12 and 18, and dependent
claim 21, contain similar features to claim 1 and contends that the same
arguments made with respect to claim 1 are applicable to those claims.
(Appeal Br. 16–17.) Thus, these claims are not separately argued. See e.g.,
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In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011). For the reasons
discussed, therefore, claims 12 and 18 fall with claim 1. 37 C.F.R.
§ 41.37(c)(1)(iv).

SUMMARY
In summary:
Claims
Rejected
Basis Affirmed Reversed
1–15, 17, 18, and
20–22
§ 101 1–15, 17, 18,
and 20–22

Overall Outcome 1–15, 17, 18,
and 20–22

TIME PERIOD FOR 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).

AFFIRMED