KENEXA TECHNOLOGY, LLC

Patent Trials and Appeals Board

May 4, 2020

15137436 - (D) (P.T.A.B. May. 4, 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.
15/137,436 04/25/2016 David S. de Hilster CAM920125001US9_8150-0708 1551
112978 7590 05/04/2020
Cuenot, Forsythe & Kim, LLC
20283 State Road 7, Suite 300
Boca Raton, FL 33498
EXAMINER
RUIZ, ANGELICA
ART UNIT PAPER NUMBER
2158
NOTIFICATION DATE DELIVERY MODE
05/04/2020 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):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DAVID S. DE HILSTER, ALAN G. PORTER,
and JOHN REESE
____________

Appeal 2019-001571
Application 15/137,436
Technology Center 2100
____________

Before JOSEPH L. DIXON, MAHSHID D. SAADAT, and JOYCE CRAIG,
Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 1–24. 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 states the real party in interest is Kenexa
Technology NY, Inc. Appeal Br. 1.
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STATEMENT OF THE CASE
Introduction
Appellant’s Specification is directed to “data processing systems for
entering information into and accessing information from large structured
databases and in particular to those systems which allow multiple
independent users to enter information from nonuniformly formatted
documents/files and to interact with the system to assure the accuracy of the
database entries.” See Spec. p. 8.
Exemplary claim 1 under appeal reads as follows;
1. A method for facilitating via an interactive path a
transfer of resume data to a service provider, the method
comprising:
(a) receiving, by a service provider via an interactive path
with a job applicant, digital data comprising a resume of the job
applicant, the interactive path provided via a remote
communication interface;
(b) extracting, by the service provider, a plurality of data
strings from the resume;
(c) sending, by the service provider via the interactive
path to the job applicant, an inquiry form asking the job
applicant a supplemental question;
(d) receiving, by the service provider via the interactive
path from the job applicant, a data string responsive to the
supplemental question; and
(e) sending, by the service provider via the interactive
path to the job applicant, a structured form comprising a
plurality of fields, a first field of the plurality of fields
accommodating an extracted data string from the resume and a
second field of the plurality of fields accommodating the data
string responsive to the supplemental question.
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Rejection on Appeal
Claims 1–24 stand rejected under 35 U.S.C. § 101, as being directed
to a judicial exception, without significantly more. Ans. 3–8 (in “NEW
GROUNDS OF REJECTION” section of the Examiner’s Answer).
Claims 1–24 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Taylor (US 5,832,497; iss. Nov. 3, 1998) and
Sobotka (US 5,197,004; iss. Mar. 23, 1993). Final Act. 8–22.

ANALYSIS
“Whether a claim is drawn to patent-eligible subject matter is an issue
of law that we review de novo.” SiRF Tech., Inc. v. Int’l Trade Comm’n,
601 F.3d 1319, 1331 (Fed. Cir. 2010). Arguments Appellant could have
made, but chose not to make, are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(l)(iv).
We review the appealed rejections for error based upon the issues
Appellant identifies, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections.”). After considering the
argued claims in light of the case law presented in this Appeal and each of
Appellant’s arguments, we are not persuaded of Examiner error in rejecting
claims 1, 4–11, and 14–23 under 35 U.S.C. § 101, however, we are
persuaded that the Examiner erred in rejecting claims 1, 4–11, and 14–23
under pre-AIA 35 U.S.C. § 103(a).
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REJECTION UNDER 35 U.S.C. § 101
Rejection and Arguments
The Examiner concludes
Claim(s) 1 and 13 and respective dependent claims
thereof, are directed to receiving information extracting and
analyzing the mentioned information which is substantially
similar to the court recognized abstract ideas such as collecting
information, analyzing it, and displaying certain results of the
collection and analysis, (Electric Power Group), Fundamental
economic practices, processing an application for financing a
purchase (Credit Acceptance), and/or Data recognition and
storage (Content Extraction).
The claim(s) do not include additional elements that are
sufficient to amount to significantly more than the judicial
exception when considered individually and in combination
because the additional elements, which are recited at a high
level of generality, provide conventional functions that do not
add meaningful limits to practicing the abstract idea.
Ans. 3–4. The Examiner specifically finds the method steps recited in
claims 1 and 13 claims “analyze and display the results of the collection of
employee and employer information for further analysis similar to the
collecting information, analyzing, and displaying certain results of the
collection and analysis, (Electric Power Group).” Ans. 4–5. The Examiner
further finds “[t]he claims are similar to long-prevalent practices, such as an
assistant entering raw information, seeking clarification on certain points,
and then inputting that information into a standardized form” and cites
“Credit Acceptance, being directed to a similar process in which loan
applications were processed through an automated system to generate a loan
package (like the automated processing of a resume) and Content
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Extraction, being directed to recognizing information in one format and
storing it in another (i.e., on disk).” Ans. 5. The Examiner also finds the
additional elements are not sufficient to amount to significantly more than
the judicial exception. Ans. 5–6.
Appellant contends the invention addresses a specific problem related
to entering and accessing information from large structured databases
“using, in part, ‘a structured form comprising a plurality of fields, a first
field of the plurality of fields accommodating an extracted data string from
the resume and a second field of the plurality of fields accommodating the
data string responsive to the supplemental question.’” Reply Br. 2.
Appellant also argues that the claims are not directed to a judicial exception
because the claims do not “recite ‘displaying certain results of the collection
and analysis’” or “involve the processing of an application for financing a
purchase nor are simply directed to data recognition and storage.” Reply Br.
5. Referring to the court decisions cited by the Examiner, Appellant argues
the Examiner’s analysis is based on overbroad description of those cases and
mischaracterization of the instant claims as a whole. Reply Br. 7–10.
Further, Appellant contends, in asserting the additional elements do not
amount to significantly more than the judicial exception, the Examiner did
not identify any additional elements in the claims. Reply Br. 11. With
respect to “preemption,” Appellant argues “[e]ven assuming, for sake of
argument, that the claimed invention is directed to the abstract idea of
‘collecting information, analyzing it, and displaying certain results of the
collection and analysis,’ like the patent at issue in BASCOM,2 Appellants

2 BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341
(Fed. Cir. 2016).
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are not looking to monopolize (or preempt) the alleged abstract idea.” Reply
Br. 13.
Legal Principles
Section 101 of the Patent Act provides “[w]hoever invents or
discovers any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof, may
obtain a patent therefor, subject to the conditions and requirements of this
title.” 35 U.S.C. § 101. However, the Supreme Court has long interpreted
35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural
phenomena, and abstract ideas” are not patentable. E.g., Alice Corp. Pty.
Ltd. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (internal quotation marks
and citation omitted).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See Alice, 573
U.S. at 219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and, thus, patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
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mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (citation omitted). “A claim
that recites an abstract idea must include ‘additional features’ to ensure ‘that
the [claim] is more than a drafting effort designed to monopolize the
[abstract idea].’” Id. (quoting Mayo, 566 U.S. at 77). “[M]erely requir[ing]
generic computer implementation[] fail[s] to transform that abstract idea into
a patent-eligible invention.” Id.
In January 2019, the PTO published revised guidance on the
application of § 101. USPTO, 2019 REVISED PATENT SUBJECT MATTER
ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”). Under
the Guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes) (Step 2A, Prong 1); and
(2) additional elements that integrate the judicial exception into
a practical application (see MANUAL OF PATENT EXAMINING
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PROCEDURE (“MPEP”) § 2106.05(a)–(c), (e)–(h)) (9th ed. rev.
08.2017 Jan. 2018) (Step 2A, Prong 2).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, conventional” in the field (see
MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception. (Step 2B.)
See Guidance, 84 Fed. Reg. at 54–56.
Discussion
Abstract Idea
Turning to claim 1, we first note that the claim recites functions that
fall within the process category of § 101. But despite falling within this
statutory category, we must still determine whether the claim is directed to a
judicial exception, namely an abstract idea. See Alice, 573 U.S. at 217. We
therefore determine (1) whether claim 1 recites a judicial exception
(Guidance Step 2A — Prong 1) and, if so, (2) whether the identified judicial
exception is integrated into a practical application (Guidance Step 2A —
Prong 2). See Guidance, 84 Fed. Reg. at 52–55.
We agree with the Examiner that claim 1 recites limitations that are
directed to analyzing and displaying the results of the collected employee
and employer information that is further analyzed, similar to the claims
determined to be directed to abstract ideas in Electric Power,3 and Credit

3 Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016)
(where collecting information, analyzing it, and displaying results from
certain results of the collection and analysis was held to be an abstract idea).
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Acceptance,4 and Content Extraction.5 Ans. 4–5. In other words, the recited
method steps are directed to a judicial exception that can be categorized as
mental processes, i.e., concepts performed in the human mind or using pen
and paper (including an observation, evaluation, judgment, and opinion)
under the Guidance, 84 Fed. Reg. at 52. See also CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) (“That purely
mental processes can be unpatentable, even when performed by a computer,
was precisely the holding of the Supreme Court in Gottschalk v. Benson.”).
The recited functions of “receiving, . . . a resume of the job applicant,”
receiving “extracting, . . . a plurality of data strings from the resume,” “the
measured number of minutes,” “sending, . . . an inquiry form asking the job
applicant a supplemental question,” and “receiving, . . . a data string
responsive to the supplemental question,” and “sending, . . ., a structured
form” constitute mental processes or concepts performed in the human mind.
People can determine the recited types of information by, for example,
reading the resume data, supplemental question/response, and their related
entries. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
1373 (Fed. Cir. 2011) ((determining that a claim limitation “is so broadly
worded” that the limitation “encompasses literally any method” for
performing the limitation, including “even logical reasoning that can be
performed entirely in the human mind”).

4 Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1055 (Fed.
Cir. 2017) (where automation of manual processes using generic computers
is abstract without improving the computer technology).
5 Content Extraction & Transmission LLC v. Wells Fargo Bank, N.A., 776
F.3d 1343, 1347 (Fed. Cir. 2014) (where data recognition and storage of
information, even if related to a particular content, is abstract).
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With respect to processing the type of resume information, a method
recited in claim 1, as well as a system like the system of claim 13, which
implement “a process that employs mathematical algorithms to manipulate
existing information to generate additional information is not patent
eligible.” See Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758
F.3d 1344, 1351 (Fed. Cir. 2014). Similarly, in Intellectual Ventures I LLC
v. Capital One Bank (USA), 792 F.3d 1363, 1369 (Fed. Cir. 2015), tailoring
content on a website based on a user’s location and time of day was held to
be a fundamental economic practice and directed to an abstract idea. Thus,
we determine that the claims relate to the judicial exception identified above.
In a similar vein, we have treated analyzing information as steps
people go through in their minds, or by mathematical algorithms, without
more, as essentially mental processes within the abstract-idea category. See,
e.g., TLI Commc’ns, 823 F.3d at 613; Digitech, 758 F.3d at 1351;
SmartGene, Inc. v. Advanced Biological Labs., SA, 555 F. App'x 950, 955
(Fed. Cir. 2014); Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of
Canada (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012); SiRF Tech., 601 F.3d
at 1333; see also Mayo, 132 S. Ct. at 1301; Parker v. Flook, 437 U.S. 584,
589-90 (1978); Gottschalk v. Benson, 409 U.S. 63, 67 (1972). That is,
merely presenting the results of abstract processes of collecting and
analyzing information, without more (such as identifying a particular tool for
presentation), is abstract as an ancillary part of such collection and analysis.
See, e.g., Content Extraction, 776 F.3d at 1347; Ultramercial, Inc. v. Hulu,
LLC, 772 F.3d 709, 715 (Fed. Cir. 2014).
We also note the recited sending “a structured form comprising a
plurality of fields, a first field of the plurality of fields accommodating an
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extracted data string from the resume and a second field of the plurality of
fields accommodating the data string responsive to the supplemental
question” functions of claims 1 and 13 merely collect and present
information. Courts have found such data gathering and presenting steps to
be insignificant extra-solution activity. See, e.g., In re Bilski, 545 F.3d 943,
963 (Fed. Cir. 2008) (en banc), aff’d sub nom Bilski v. Kappos, 561 U.S. 593
(2010) (characterizing data gathering steps as insignificant extra-solution
activity).
Integration of the Abstract Idea into a Practical Application —
Step 2A, Prong Two
Having determined that claims 1 and 13 recite abstract mental
processes, we next look to determine whether the claims recite “additional
elements that integrate the judicial exception into a practical application.”
Guidance, 84 Fed. Reg. at 53–54. We specifically determine whether the
claim applies, relies on, or uses the abstract idea in a manner that imposes a
meaningful limit on the abstract idea, such that the claim is more than a
drafting effort designed to monopolize the abstract idea. See Guidance, 84
Fed. Reg. at 54–55. We therefore (1) identify whether there are any
additional recited elements beyond the abstract idea, and (2) evaluate those
elements individually and collectively to determine whether they integrate
the exception into a practical application. See id.6

6 Limitations that are indicative of “integration into a practical application”
include: (1) improvements to the functioning of a computer, or to any other
technology or technical field (see MPEP § 2106.05(a)); (2) applying the
judicial exception with, or by use of, a particular machine (see id.
§ 2106.05(b)); (3) effecting a transformation or reduction of a particular
article to a different state or thing (see id. § 2106.05(c)); and (4) applying or
using the judicial exception in some other meaningful way beyond generally
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Here, the recited receiving/extracting/sending “by a service provider”
and “via an interactive path” in claim 1 and “a remote communication
interface of a service provider,” “an extractor,” and “a form generator” in
claim 13 are the only recited elements beyond the abstract idea, but these
additional elements do not integrate the abstract idea into a practical
application when reading claims 1 and 13 as a whole. As discussed below,
the additional elements do not improve computer capabilities or a technical
field. Nor do they implement the abstract ideas on a particular machine that
is integral to the claims or effect a transformation or reduction of a particular
article to a different state or thing. Guidance, 84 Fed. Reg. at 55. They
simply use computers and other components as tools to apply the abstract
ideas. “[M]ere recitation of a generic computer cannot transform a patent-
ineligible abstract idea into a patent-eligible invention.” Alice, 573 U.S. at
223; see also Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335‒36 (Fed.
Cir. 2016).
The above-mentioned elements employ generic components that
perform generic functions of collecting, analyzing, and processing data

linking the use of the judicial exception to a particular technological
environment, such that the claim as a whole is more than a drafting effort
designed to monopolize the exception (see id. § 2106.05(e)). See Guidance,
84 Fed. Reg. at 54–55 (“Prong Two”). In contrast, limitations that are not
indicative of “integration into a practical application” include: (1) adding the
words “apply it” (or an equivalent) with the judicial exception, merely
including instructions to implement an abstract idea on a computer, or
merely using a computer as a tool to perform an abstract idea (see MPEP
§ 2106.05(f)); (2) adding insignificant extra-solution activity to the judicial
exception (see id. § 2106.05(g)); and (3) generally linking the use of the
judicial exception to a particular technological environment or field of use
(see id. § 2106.05(h)). See Guidance, 84 Fed. Reg. at 54–55 (“Prong Two”).
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(digital data comprising a resume, a plurality of data strings from the
resume, an inquiry form asking a supplemental question, and a structured
form comprising a plurality of fields), which do not integrate the abstract
ideas into a practical application. See Guidance, 84 Fed. Reg. at 55, n.31.
These recited functions are performed by processing components that are
disclosed as a service provider (“provider site 42 (generally an automated
service),” Spec. 8:18–19), a remote communication interface (“typically
comprising a modem 48 and a web (Internet) browser 50, and the associated
interconnections 52 between (typically phone lines and Internet Service
Providers ( ISPs)),” Spec. 8:23–26 or “a local area network (LAN) or a
direct modem to modem or serial port to serial port connections,” Spec.
8:26–29), a data extractor (“text data extraction software (e.g., the DEFT
software developed by TRW as part of their InfoWeb™ system),” Spec.
6:11–13), and a form generator (“supplied to the user’s computer 40 as an
applet or other self executing piece of software 69 by the database service
provider,” Spec. 12:32–34). Based on the above description of the process
and the system recited in claims 1 and 13, the job applicant information is
collected and analyzed by components, such as computer 40, service
provider site 42, communication interface 44, and a form generator that are
described as generic components performing generic software instructions.
Simply adding generic hardware and computer components to perform
abstract ideas does not integrate those ideas into a practical application. See
Guidance, 84 Fed. Reg. at 55 (identifying “merely includ[ing] instructions to
implement an abstract idea on a computer” as an example of when an
abstract idea has not been integrated into a practical application).
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It is well settled that “mere recitation of a generic computer cannot
transform a patent-ineligible abstract idea into a patent-eligible invention.”
Alice, 573 U.S. at 223 (“Stating an abstract idea while adding the words
‘apply it with a computer’ simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer amounts to a
mere instruction to ‘implemen[t]’ an abstract idea ‘on ... a computer,’ . . .
that addition cannot impart patent eligibility.”) (quoting Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 82 (2012)); see Guidance,
84 Fed. Reg. at 55 & n.30. The lack of details about these elements also
indicates that the above-mentioned elements are generic computer
components. See Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d
1315, 1331 (Fed. Cir. 2017) (“The claimed mobile interface is so lacking in
implementation details that it amounts to merely a generic component
(software, hardware, or firmware) that permits the performance of the
abstract idea, i.e., to retrieve the user-specific resources.”).
Additionally, we are not persuaded that the claimed invention
addresses the specific problem of extracting “information from large
structured databases” or “information from nonuniformly formatted
documents/files.” See Reply Br. 2. Likewise, the method steps of claim 1
do not improve the technology or the technical field of receiving resume
information and merely use generic computer components and functions to
perform the recited steps. Also, the recited method steps do not require a
“particular machine” and can be utilized with a general purpose computer,
and the steps performed are purely conventional. In this case, contrary to
Appellant’s assertion that “the claimed invention is directed to an
improvement to computer technology” (Reply Br. 3), the general purpose
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computer and the related software components are merely objects on which
the method operates in a conventional manner. Further, the claim as a whole
fails to effect any particular transformation of an article to a different state.
The recited steps, which are similarly recited in the system claim 13, fail to
provide meaningful limitations to limit the judicial exception and rather are
mere instructions to apply the method to a generic computer.
In another words, unlike the claimed invention in McRO that
improved how the physical display operated to produce better quality
images, the claimed invention here merely uses generic computing
components to collect and process a job applicant’s information for analysis.
This generic computer implementation is not only directed to a mental
process, but also does not improve the underlying technology, such as a
display mechanism as was the case in McRO. See McRO, Inc. v. Bandai
Namco Games Am. Inc., 837 F.3d 1299, 1314–15 (Fed. Cir. 2016) (finding
claims not abstract because they “focused on a specific asserted
improvement in computer animation”); see also SAP Am. v. InvestPic, LLC,
898 F.3d 1161, 1167 (Fed. Cir. 2018) (distinguishing McRO).
Thus, the claims do not integrate the judicial exception into a
practical application. Further, the claims do not (1) improve the functioning
of a computer or other technology, (2) are not applied with any particular
machine (except for a generic computer), (3) do not effect a transformation
of a particular article to a different state, and (4) are not applied in
any meaningful way beyond generally linking the use of the judicial
exception to a particular technological environment, such that the claim as a
whole is more than a drafting effort designed to monopolize the
exception. See MPEP § 2106.05(a)–(c), (e)–(h).
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Inventive Concept — Step 2B
Because we determine claims 1 and 13 are “directed to” an abstract
idea, we consider whether the claims recite an “inventive concept.” Under
the Guidance, if a claim: (1) recites a judicial exception, and (2) does not
integrate that exception into a practical application, we then look to whether
the claim adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or, simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high level of
generality, to the judicial exception. See Guidance, 84 Fed. Reg. at 56.
We agree with the Examiner that Appellant’s disclosure refers to the
recited service provider, a remote communication interface, a data extractor,
and a form generator, in general terms which amount to routine and
conventional elements that perform a conventional data collection and
analysis. See Ans. 5. As discussed above, we are unpersuaded by
Appellant’s contentions (Reply Br. 5–6) and find the additional elements
perform the recited functions and include generic data collection and
processing elements without requiring any specific functions other than the
known functions associated with those components. See Spec. 8:18–19,
8:23–26, 8:26–29, 6:11–13. 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.”).
Contrary to Appellant’s argument that, in citing to Electric Power, Credit
Acceptance, and Content Extraction, the Examiner “cites an overbroad
description of the holdings of these cases, and declares (without analysis)
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that they are ‘substantially similar’” (Reply Br. 7–10), we find Appellant’s
Specification expressly describes well-known examples of collecting and
analyzing job applicant’s information. Considering the elements of the
claims both individually and as “an ordered combination” the functions
performed by the computer system and other software components at each
step of the process are purely conventional. Each step of the claimed
method, or the functions recited in the system claim, does no more than
require a generic computer to perform a generic computer function. Thus,
these elements, taken individually or together, do not amount to
“significantly more” than the abstract ideas themselves.
Moreover, we note the Examiner provides Berkheimer7 evidence in
support of the “well-understood, routine, and conventional” fact findings in
the form of citations to numerous Federal Circuit case authorities, which
Appellant has not substantively and persuasively distinguished from the
claims before us on appeal. See Ans. 3–6. In fact, the cited list of cases in
the MPEP § 2106.05(d)(II) supports the characterization of the recited
receiving, extracting, and transmitting data over a network, e.g., using the
Internet to gather data as “well-understood, routine, and conventional
functions when they are claimed in a merely generic manner (e.g., at a high
level of generality).” See USPTO, Memorandum on Changes in
Examination Procedure Pertaining to Subject Matter Eligibility, Recent
Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.) at 3 (Apr. 19,
2018). Consequently, we find that the above-identified claim elements, at
the high level of generality recited in claims 1 and 13, constitute no more

7 Berkheimer v. HP Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018).

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than what would have been well-understood, routine and conventional to a
skilled artisan.
Preemption
Appellant’s argument that the claims fail to preempt any particular
technological field is also not persuasive. Reply Br. 12–13.
While preemption may signal patent ineligible subject
matter, the absence of complete preemption does not
demonstrate patent eligibility. . . . Where a patent’s claims are
deemed only to disclose patent ineligible subject matter under
the Mayo framework, as they are in this case, preemption
concerns are fully addressed and made moot.
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015); see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362–
63 (Fed. Cir. 2015).
Moreover, lack of similarities between Appellant’s claims and those
in BASCOM8 notwithstanding (see Reply Br. 13), Appellant wrongly relies
on a lack of preemption to establish eligibility. While preemption may
denote ineligibility, its absence does not establish eligibility. See
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1098 (Fed. Cir.
2016). For claims covering a patent-ineligible concept, preemption concerns
“are fully addressed and made moot” by an analysis under the Mayo/Alice
framework. Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1379 (Fed. Cir. 2015).

8 Holding eligible claims directed to a technology-based solution to filter
Internet content that overcame existing problems with other Internet filtering
systems by making a known filtering solution—namely a “one-size-fits-all”
filter at an Internet Service Provider (ISP)—more dynamic and efficient via
individualized filtering at the ISP. BASCOM, 827 F.3d at 1351.
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Conclusion
For at least the above reasons, we agree with the Examiner that
claims 1 and 13 are “directed to” an abstract idea and does not recite an
“inventive concept.” Accordingly, we sustain the Examiner’s rejection of
claims 1 and 13, as well as the remaining claims which fail to include
additional elements that add significantly more to the abstract idea, under
35 U.S.C. § 101.
REJECTION UNDER 35 U.S.C. § 103(a)
In rejecting claim 1, the Examiner finds Taylor discloses all the
recited method steps of the claim, but not the digital data representing “a
source data stream” comprising a resume of the job applicant, that is
included in the extracted data strings and is accommodated in a first field.
Final Act. 8–9. The Examiner relies on Sobotka as disclosing the missing
limitations. Final Act. 9–10 (citing Sobotka 3:38–60, 4:29–49). The
Examiner finds it would have been obvious to one of ordinary skill in the art
to combine the references in order to “classify an applicant according to his
employment potential with a high degree of accuracy (col. 3, lines 35–40).”
See Final Act. 10.
Appellant contends the Examiner’s rejection is in error because the
cited portion in column 4 of Taylor discusses presenting questions on a form
that “is used by ‘an employer-user’ during the process of creating a new job
record,” which is different from presenting a question to a job applicant, as
required by claim 1. Appeal Br. 8.9 Appellant further argues the “prompt”

9 We do not address Appellant’s other contentions because this contention is
dispositive of the issue on appeal.
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mentioned in Taylor refers to prompts presented to the employer-user to fill
different job record fields, and not to the job applicant. Appeal Br. 9.
In response, the Examiner explains
The Examiner’s interpretation regarding the “supplemental
question” is that the “job applicant” is required to give
information regarding his/her “Resume of the job applicant”
and then continues giving information according to different
“discipline fields” online, as claimed, that being also
supplemental. There is an interaction with respect to the
“employer-user” and the “job-applicant” within the “form to be
filled out online” as also mentioned “from the response to the
supplemental question”. The Examiner considers that the
mentioned interaction provides supplemental questions and
responses related to the online resume form. It could be any
answer related to a job, included in the resume fields,
specifically associated to the “job applicant” or “user” as
previously stated.
Ans. 10 (emphasis added.).
Based on a review of the applied prior art references, and specifically
Taylor, we are persuaded by Appellant’s contentions of Examiner error. The
Examiner has not cited any specific teachings in column 4 of Taylor nor has
explained how the actions performed by the employer-user may be attributed
to the job applicant, as recited in claim 1. Taylor prompts the employer-user
to fill the job record fields or enter narratives for a job description and search
parameters. See Taylor 4:36–41. As argued by Appellant, the Examiner’s
assertion “that ‘the mentioned interaction provides supplemental questions
and responses related to the online resume form’ . . . does not map to the
language of the claims.’” See Reply Br. 14. In other words, it is not clear
how the teaching of presenting prompts to an employer-user in Taylor meets
the above-mentioned disputed claim limitation.
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Therefore, Appellant’s arguments have persuaded us of error in the
Examiner’s position with respect to the rejections of independent claim 1, as
well as independent claim 13 which recites similar limitations found to be
missing in the proposed combination. We, therefore, do not sustain the
rejections of claims 1 and 13, nor of claims 2–12, and 14–24 dependent
therefrom.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–24 101 Eligibility 1–24
1–24 103(a) Taylor, Sobotka 1–24
Overall
Outcome
1–24
FINALITY AND RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED