Lenovo (Singapore) Pte. Ltd.

Patent Trials and Appeals Board

Oct 13, 2020

2019004291 (P.T.A.B. Oct. 13, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/098,033 12/05/2013 Rod D. Waltermann RPS920130150USNP(710.285) 1363
58127 7590 10/13/2020
FERENCE & ASSOCIATES LLC
409 BROAD STREET
PITTSBURGH, PA 15143
EXAMINER
AHMED, SABA
ART UNIT PAPER NUMBER
2154
MAIL DATE DELIVERY MODE
10/13/2020 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte ROD D. WALTERMANN,
HERMANN FRANZ BURGMEIER,
JONATHAN GAITHER KNOX,
PETER HAMILTON WETSEL,
SUZANNE MARION BEAUMONT, and
RUSSELL SPEIGHT VanBLON1
________________

Appeal 2019-004291
Application 14/098,033
Technology Center 2100
________________

Before BRADLEY W. BAUMEISTER, MICHAEL J. STRAUSS, and
JAMES B. ARPIN, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1–20, which constitute all of the pending claims. Appeal
Br. 15–18. These claims stand rejected under 35 U.S.C. § 103 as being
unpatentable. Final Action mailed July 5, 2018 (“Final Act.”), 3–16. We
have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Pursuant to our
discretionary authority under 37 C.F.R, § 41.50(b), we newly reject claim 1.

1 Appellant identifies Lenovo (Singapore) PTE. LTD. Appeal Brief filed
December 6, 2018 (“Appeal Br.”), 3.
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CLAIMED SUBJECT MATTER
Appellant describes the subject matter of the claimed invention as
follows:
An aspect provides a method, including: accessing, using
a processor, a user profile based on user context information,
wherein the user context information utilizes user device events;
preparing, using the processor, a list of items based on the user
profile related to a particular time period organized according to
importance based on the user profile; and presenting, using the
processor, the list of items related to the particular time period.
Abstract.
Independent claim 1, reproduced below with paragraph designators
added for clarity, illustrates the subject matter of the appealed claims:
1. A method, comprising:
(a) accessing, using a processor, a user profile based on user
context information, wherein the user context information
utilizes prior user device events associated with at least one daily
activity of a user;
(b) preparing, using the processor, a list of future event items
including at least one scheduled event based on the user profile,
wherein the list of future event items is related to a particular
upcoming time period;
(c) organizing the list of future event items according to
importance by identifying a frequency of occurrence of each of
the prior user device events within a predetermined past time
period, wherein the organizing comprises prioritizing more
frequently occurring prior user device events; and
(d) presenting, using the processor, the organized list of future
event items related to the particular time period.

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DETERMINATIONS AND CONTENTIONS2
The Examiner rejects claims 1–20 under 35 U.S.C. § 103 as being
unpatentable over Kidron (US 2012/0215684 A1; published Aug. 23, 2012)
and Contant (US 2011/0184247 A1; published July 28, 2011). Final Act. 3–
16.
The Examiner finds that Kidron discloses all of the limitations of
independent claim 1 with one exception. Final Act. 3–6. Specifically, the
Examiner finds that Kidron does not teach the claim language, “wherein the
user context information utilizes prior user device events associated with at
least one daily activity of a user.” Id. at 4. The Examiner finds that Contant
teaches this claim language and that “[i]t would have been obvious to
modify Kidron as taught by Contant because tracking user activities on a
daily, weekly or annual basis would [have] enhance[d] trend analysis.” Id.
(citing Contant ¶ 21).
Appellant presents several arguments. Appeal Br. 15–18. Most
persuasive, Appellant argues that the cited references, as combined, do not
teach all of the claimed limitations. Appeal Br. 18. Specifically, Appellant
notes that the Examiner does not rely on Kidron for teaching the claim
language “wherein the user context information utilizes prior user device
events associated with at least one daily activity of a user.” Id. (citing Final
Act. 4). Appellant argues that Contant does not teach this limitation either.

2 Rather than repeat the Examiner’s positions and Appellant’s arguments in
their entirety, we refer to the above mentioned Appeal Brief, as well as the
following documents for their respective details: the Examiner’s Answer
mailed March 13, 2019 (“Ans.”); and the Reply Brief filed May 13, 2019
(“Reply Br.”).
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STANDARD OF REVIEW
The Board conducts a limited de novo review of the appealed
rejections for error based upon the issues identified by Appellant, and in
light of the arguments and evidence produced thereon. Ex parte Frye,
94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).

ANALYSIS
I.
The Examiner relies on Contant’s disclosure, “[t]he data store may
include a database that tracks many details about the user’s activity over a
long period to track trends on a daily, weekly, annual, or other basis.”
Contant ¶ 21, cited in Final Act. 3 (emphasis added). That is, the cited
passage teaches that the user’s activity can be tracked daily. But this
passage does not teach tracking the daily activity of a user, as claimed. That
is, the relied upon passage of Contant may teach the daily monitoring of
existing conditions or results, but not necessarily monitoring of daily
activities.
Accordingly, Appellant persuades us of error in the Examiner’s
obviousness rejection of independent claim 1. We, therefore, reverse the
Examiner’s rejection of that claim and of claims 2–20, which either depend
from claim 1 or otherwise include similar claim language.
II.
This determination does not end our inquiry. Appellant does not
dispute that, aside from failing to teach monitoring the user’s daily activities,
Kidron teaches every other element of claim 1. See generally Appeal
Br. 15–18; Reply Br. 17–20. And we agree that Kidron teaches the other
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elements of claim 1. For example, Kidron teaches that accessing the prior
user device events may include monitoring information about the users’
music listening history, including monitoring what time of the day the user
listens to the music:
At 414, user profile preference information may be
retrieved. The user profile preference information may include
user provided information such as favorite artist, favorite genre,
album, etc. Such information may be provided by the user during
registration, profile creation or profile update. The user profile
preference may also be derived from the user’s [Usage, Payment,
Collection, and Apportionment Platform (UPCAP)] profile. The
UPCAP profile may be an “in house” profile organically built
over time using information learned from the user, such as
listening history. The UPCAP profile may include not only
information such as the user’s preferred album, tracks, artists,
genre and other attributes, but also a breakdown of the user’s
preferences according to location, time, mood (e.g., mood
indicated by the user’s mood status) and/or the like. For
example, the UPCAP may track and analyze the user’s listening
history over time to surmise that the user is likely to listen to
ambient music late at night, rock music in early morning, and
instrumental music at midday, etc. Furthermore, the user profile
preference information may facilitate the UPCAP’s efforts to
pre-fetch tracks in anticipation of the user’s desire to listen to
such pre-fetched tracks.
Kidron ¶ 62 (emphasis added).
It was known at the time of the invention that some people listen to
music daily. It would have been obvious to one of ordinary skill in the art at
the time of the invention to use Kidron’s invention to monitor the music
listening activities of users who listen daily to music. One would have been
motivated to target such daily-listening users at least because such users
provide the system a greater amount of music-listening data, which would
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improve the customization of the pre-fetched tracks that are to be provided
to the user in the future.
We, therefor, reject claim 1 under 35 U.S.C. § 103 as being obvious
over Kidron. Because our reasoning for rejecting claim 1 differs from that
of the Examiner’s, we designate this rejection as a new ground pursuant to
our discretionary authority under 37 C.F.R. § 41.50(b).
Although we decline to reject claims 2–20 as obvious pursuant to our
discretionary authority under 37 C.F.R. § 41.50(b), we emphasize that our
decision does not mean that the remaining claims are necessarily patentable.
Rather, we merely leave the patentability determination of these claims to
the Examiner. See MPEP § 1213.02.

PATENT ELIGIBILITY
Summary
Pursuant to our authority under 37 C.F.R. § 41.50(b), we also enter a
new ground of rejection for claim 1 under 35 U.S.C. § 101 as directed to a
judicial exception to patent-eligible subject matter, without reciting
significantly more.
PRINCIPLES OF LAW
A. SECTION 101:
Inventions for a “new and useful process, machine, manufacture, or
composition of matter” generally constitute patent-eligible subject matter.
35 U.S.C. § 101. However, the U.S. 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. Alice Corp. v. CLS Bank
Int’l, 573 U.S. 208, 216 (2014).
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In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-step framework, described in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66
(2012), and Alice. Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S. at 75–
77). 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
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))).
In Diehr, the claim at issue recited a mathematical formula, but the
Court held that “a claim drawn to subject matter otherwise statutory does not
become nonstatutory simply because it uses a mathematical formula.”
Diehr, 450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as
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nothing more than a process for molding rubber products and not as an
attempt to patent a mathematical formula.”). Having said that, the Court
also indicated that a claim “seeking patent protection for that formula in the
abstract . . . is not accorded the protection of our patent laws, and this
principle cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment.” Id. at 191 (citing
Benson and Flook); see also, e.g., id. at 187 (“It is now commonplace that an
application of a law of nature or mathematical formula to a known structure
or process may well be deserving of patent protection.”).
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 (internal quotation marks
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. (alterations in original) (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.
B. USPTO SECTION 101 GUIDANCE:
In January 2019, the U.S. Patent and Trademark Office (“USPTO”)
published revised guidance on the application of 35 U.S.C. § 101. See
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (“2019 Guidance”), updated by USPTO, October 2019
Update: Subject Matter Eligibility (available at https://www.uspto.gov/sites/
default/files/documents/peg_oct_2019_update.pdf) (“October 2019
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Guidance Update”); see also October 2019 Patent Eligibility Guidance
Update, 84 Fed. Reg. 55942 (Oct. 18, 2019) (notifying the public of the
availability of the October 2019 Guidance Update). “All USPTO personnel
are, as a matter of internal agency management, expected to follow the
guidance.” 2019 Guidance, 84 Fed. Reg. at 51; see also October 2019
Guidance Update at 1. The Manual of Patent Examining Procedure
(“MPEP”) now incorporates this revised guidance and subsequent updates at
Section 2106 (9th ed. Rev. 10.2019, rev. June 2020).3
Under MPEP § 2106, we first look to whether the claim recites the
following:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activities such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application.4
MPEP §§ 2106.04(a), (d).
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 All references to the MPEP are to the Ninth Edition, Revision 10.2019
(Last Revised June 2020), unless otherwise indicated.
4 “Examiners evaluate integration into a practical application by
(a) identifying whether there are any additional elements recited in the claim
beyond the judicial exception, and (b) evaluating those additional elements
individually and in combination to determine whether the claim as a whole
integrates the exception into a practical application.” MPEP § 2106.04(d)II.
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(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, [and] conventional activity” in the field; 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.
MPEP § 2106.05(d).
Analysis
STEP 2A, PRONG 1:
Under step 2A, prong 1, of the 2019 Guidance, we first look to
whether the claim recites any judicial exceptions, including certain
groupings of abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activities such as a fundamental economic practice, or
mental processes). MPEP § 2106.04(a).
Limitation (a) recites “accessing . . . a user profile based on user
context information, wherein the user context information utilizes prior user
device events associated with at least one daily activity of a user.” Aside
from reciting that the step is performed using a processor, limitation (a)
reads on a person accessing records, e.g., written records, regarding a user.
Accessing information in this manner merely entails reading—a mental
observation that can be performed in the human mind. The 2019 Guidance
recognizes mental processes, including observations, as constituting a
patent-ineligible abstract idea. MPEP § 2016.04(a). Accordingly,
limitation (a) recites a patent-ineligible abstract idea recognized by the
2019 Guidance.
Limitation (b) recites “preparing . . . a list of future event items
including at least one scheduled event based on the user profile, wherein the
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list of future event items is related to a particular upcoming time period.”
Aside from reciting that the step is performed using a computer,
limitation (b) reads on a person creating a list of scheduled events.
Preparing a list of schedule items constitutes an evaluation, judgment, or
opinion that can be performed in the human mind or with the aid of pen and
paper.
The 2019 Guidance recognizes such mental processes as constituting
an abstract idea. MPEP § 2016.04. The “mental processes” judicial
exception also includes concepts that can be performed by a human with a
pen and paper, as well as those that can be performed entirely in the mind.
See October 2019 Guidance Update at 9 (“A claim that encompasses a
human performing the step(s) mentally with the aid of a pen and paper
recites a mental process”) (emphasis omitted). Accordingly, limitation (b)
recites a patent-ineligible abstract idea recognized by the 2019 Guidance.
Limitation (c) recites, “organizing the list of future event items
according to importance by identifying a frequency of occurrence of each of
the prior user device events within a predetermined past time period,
wherein the organizing comprises prioritizing more frequently occurring
prior user device events.” Organizing events similarly constitutes a mental
evaluation, judgment, or opinion. MPEP § 2016.04(a). Accordingly,
limitation (c) recites a patent-ineligible abstract idea recognized by the
2019 Guidance.
Limitation (d) recites, “presenting . . . the organized list of future
event items related to the particular time period.” Aside from reciting that
the presentation is performed using a processor, limitation (d) reads on
displaying a list, which entails communicating information. Communicating
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information or data constitutes a certain method of organizing human
activity. More specifically, communicating information constitutes a
method of managing interactions between people. MPEP § 2016.04(a). The
2019 Guidance expressly recognizes this certain method of organizing
human activity as constituting a patent-ineligible abstract idea.
Communicating information also constitutes a mental process of
expressing or communicating an opinion to another. The 2019 Guidance
recognizes mental processes, including expressing opinions, as constituting a
patent-ineligible abstract idea. MPEP § 2016.04(a). Accordingly,
limitation (d) recites a patent-ineligible abstract idea.
For these reasons, each of limitations (a) through (d) recites a judicial
exception to patent-eligible subject matter under step 2A, prong 1, of the
2019 Guidance. See RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322,
1327 (Fed. Cir. 2017) (“Adding one abstract idea . . . to another abstract idea
. . . does not render the claim non-abstract.”)
STEP 2A, PRONG 2:
Under step 2A, prong 2, of the 2019 Guidance, we next analyze
whether claim 1 recites additional elements that individually or in
combination integrate the judicial exception into a practical application.
MPEP § 2106.04(d). The 2019 Guidance identifies considerations indicative
of whether an additional element or combination of elements integrate the
judicial exception into a practical application, such as an additional element
reflecting an improvement in the functioning of a computer or an
improvement to other technology or technical field. MPEP § 2106.05(a).
In the present case, the only additional element that claim 1 recites
beyond the above-noted abstract ideas is that the steps of accessing,
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preparing, and presenting are performed “using a processor.” A “processor”
is a generic computer component. Its recitation in limitations (a), (b), and
(d), then, amounts to mere instructions to implement the abstract idea on a
computer, which is insufficient to make the claim patent eligible. See Alice,
573 U.S. at 226 (determining that the claim limitations “data processing
system,” “communications controller,” and “data storage unit” were generic
computer components that amounted to mere instructions to implement the
abstract idea on a computer); October 2019 Guidance Update at 11–12
(recitation of generic computer limitations for implementing the abstract
idea “would not be sufficient to demonstrate integration of a judicial
exception into a practical application”).
Moreover, when limitations (a) and (d) are read in full so as to include
the requirement that the steps are performed “using a processor,” these
limitations do not integrate the steps or preparing and organizing a list of
items, as recited in limitations (b) and (c), into a practical application
because limitations (a) and (d), in full, are directed to extra-solution activity.
More specifically, limitation (a) recites insignificant pre-solution
activity:
An example of pre-solution activity is a step of gathering data for
use in a claimed process, e.g., a step of obtaining information
about credit card transactions, which is recited as part of a
claimed process of analyzing and manipulating the gathered
information by a series of steps in order to detect whether the
transactions were fraudulent.
MPEP § 2106.05(g).
Similarly, limitation (d) recites insignificant post-solution activity.
See, e.g., Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1241–42 (Fed.
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Cir. 2016) (holding that printing or downloading generated menus
constituted insignificant extra-solution activity).
For these reasons, claim 1 is not directed to an improvement in the
function of a computer or to any other technology or technical field. MPEP
§ 2106.05(a). Nor is claim 1 directed to a particular machine or
transformation. Nor does claim 1 add any other meaningful limitations for
the purposes of the analysis under Section 101. MPEP §§ 2106.05(b), (c),
(e). Accordingly, the additional elements of claim 1 do not integrate the
recited abstract ideas into a practical application within the meaning of the
2019 Guidance. See MPEP § 2016.05(a)–(c), (e).
STEP 2B:
Under step 2B of the 2019 Guidance, we next analyze whether
claim 1 adds any specific limitations beyond the judicial exception that,
either alone or as an ordered combination, amount to more than “well-
understood, routine, conventional” activity in the field. MPEP § 2106.05(d);
see more generally MPEP § 2106.05.
Appellant’s Specification indicates that the recited “processor” was
well understood, routine and conventional. See, e.g., Spec. ¶ 17:
While various other circuits, circuitry or components may
be utilized in information handling devices, with regard to smart
phone and/or tablet circuitry 100, an example illustrated in
FIG. 1 includes a system on a chip design found for example in
tablet or other mobile computing platforms. Software and
processor(s) are combined in a single chip 110. Processors
comprise internal arithmetic units, registers, cache memory,
busses, I/0 ports, etc., as is well known in the art. Internal busses
and the like depend on different vendors, but essentially all the
peripheral devices (120) may attach to a single chip 110. The
circuitry 100 combines the processor, memory control, and I/0
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controller hub all into a single chip 110. Also, systems 100 of
this type do not typically use SATA or PCI or LPC. Common
interfaces, for example, include SDIO and I2C.
Furthermore, the Specification does not indicate that consideration of
these conventional elements as an ordered combination adds any
significance beyond the additional elements, as considered individually.
Rather, the Specification indicates that the invention, as a whole, is directed
to making more efficient with the use of a conventional computer, the
abstract idea of gathering profile data, organizing calendar items, and
presenting the list of items. Spec. ¶ 3.
For these reasons, we determine that claim 1 does not recite additional
elements that, either individually or as an ordered combination, amount to
significantly more than the judicial exception within the meaning of the
2019 Guidance. MPEP § 2106.05(d).
Conclusion
Accordingly, we exercise our discretionary authority under 37 C.F.R.
§ 41.50(b) and newly reject claim 1 under 35 U.S.C. § 101 as being directed
to a judicial exception to patent-eligible subject matter without reciting
significantly more.
Although we decline to reject claims 2–20 pursuant to our
discretionary authority under 37 C.F.R. § 41.50(b), we emphasize that our
decision does not mean that the remaining claims are necessarily directed to
patent-eligible subject matter. Rather, we merely leave the patentability
determination of these claims to the Examiner. See MPEP § 1213.02.
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DECISION SUMMARY
In summary:

FINALITY AND RESPONSE
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Rule 37 C.F.R. § 41.50(b) provides “[a] new ground
of rejection pursuant to this paragraph shall not be considered final for
judicial review.”
Rule 37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .

REVERSED;
37 C.F.R. § 41.50(b)
Claims
Rejected
35
U.S.C. §
Basis/
Reference(s)
Affirmed Reversed New
Ground
1–20 103 Kidron,
Contant
1–20
103 Kidron 1
101 Eligibility 1
Overall
Outcome
1–20 1