Lex Machina, Inc.

Patent Trials and Appeals Board

Apr 28, 2020

13745117 - (D) (P.T.A.B. Apr. 28, 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.
13/745,117 01/18/2013 Mihai Surdeanu 31547-463 / LEN0097PA 1753
146524 7590 04/28/2020
Dinsmore & Shohl LLP
255 E. Fifth Street
Suite 1900
Cincinnati, OH 45202
EXAMINER
SEOH, MINNAH L
ART UNIT PAPER NUMBER
3689
MAIL DATE DELIVERY MODE
04/28/2020 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 MIHAI SURDEANU, INGRID KALDRE FOSTER,
CARLA L. RYDHOLM, RAMESH MARUTHI NALLAPATI,
JOSHUA H. WALKER, GEORGE D. GREGORY,
GAVIN CAROTHERS, and NICHOLAS O. P. PILON
________________

Appeal 2019-005135
Application 13/745,117
Technology Center 3600
____________

Before JAMES R. HUGHES, JOYCE CRAIG, and
MATTHEW J. McNEILL, Administrative Patent Judges

McNEILL, Administrative Patent Judge.

DECISION ON APPEAL

Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 21, 22, and 24–40, which are all the claims pending in
this application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies RELX Inc., as the real party in
interest. Appeal Br. 2.
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STATEMENT OF THE CASE
Introduction
Appellant’s application relates “to systems and methods for using
non-textual information in analyzing patent matters, such as discovery of
similarity between patent matters.” Spec. ¶ 2. In particular, Appellant
describes determining patent matter similarity by “finding patent matters
among patent matter proceedings that are similar to an input patent portfolio
of one or more patent matters,” where “patent matters” may be “issued
patents, patent applications[], pre-filed patent applications or disclosures, or
the like,” and a “patent matter proceeding” may be “a litigation,
International Trade Commission (ITC) proceeding, patent office
proceeding[], arbitration, mediation, licensing transaction,” etc. Id. ¶ 38. In
an embodiment (shown in Figure 9), “one goal of the system is to find patent
matters 960 that were previously at issue (e.g., previously a subject of a
proceeding, such as a patent litigation or a licensing deal) and are most
similar to the input portfolio 940.” Id. ¶ 166. In the Figure 9 embodiment,
several different similarity measures, including both textual (e.g., the
similarity between a patent portfolio summary and a given patent matter)
and non-textual measures (e.g., the similarity between a list of peer
companies provided by a user and the peer companies that participate in a
proceeding where a given patent matter is at issue), may be combined using
a meta classifier 930 to score and rank patent matters with respect to the
input portfolio. See id. ¶¶ 167–174.
Claim 21 is illustrative of the appealed subject matter and reads as
follows:
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21. A computer-implemented method for identifying patents
that were asserted in proceedings and are similar to patents
included in an input portfolio specified by a user, the method
comprising:
accessing, through a communication port of a computer,
a network-accessible data repository that includes information
regarding a plurality of patent matter proceedings;
retrieving, using a crawler for the computer, the
information from the network-accessible data repository, the
crawler crawling metadata related to the information for each of
the patent matter proceedings from the network-accessible data
repository,
wherein the information comprises a case name for
each of the patent matter proceedings, and one or more
patents asserted in each of the plurality of patent matter
proceedings, and
wherein the case name includes one or more
parties involved in each of the patent matter proceedings;
generating, by the processor of the computer, a graphical
model that includes a plurality of nodes corresponding to the
case names based on the metadata,
wherein each of the plurality of nodes includes one
or more attributes associated with the corresponding
patent matter proceeding that are obtained from the
metadata, and
wherein the plurality of nodes are linked to one
another based on shared parties;
storing the graphical model and the identified patents in a
reference database;
receiving, through an input device of the computer, from
a user device associated with a user, an input portfolio that is
specified by the user and includes a plurality of input patents, a
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textual description of the input portfolio, and a list of one or
more peer companies;
creating, by the processor of the computer, a single query
text by extracting and concatenating text from each of the
plurality of input patents;
determining, by the processor of the computer, based on
the textual description and the single query text, textual
similarity between the input portfolio and each identified patent
in the reference database;
determining, by the processor of the computer, entity
similarity for each identified patent by calculating, for each of
the plurality of patent matter proceedings where each identified
patent is asserted, the number of peer companies that participate
in the patent matter proceeding and that are included in the list
of one or more peer companies received from the user device,
and selecting a maximum among the calculated numbers of
peer companies as the entity similarity for each asserted patent;
determining, by the processor of the computer, based on
the graphical model and the entity similarity for each identified
patent, non-textual similarity between the input portfolio and
each identified patent in the reference database;
assigning, by the processor of the computer, a similarity
score to each identified patent based at least in part on the
textual similarity and the non-textual similarity;
ranking, by the processor of the computer, the identified
patents by similarity score; and
producing, through an output device of the computer, a
list of one or more identified patents that are most similar to the
plurality of input patents in the input portfolio, wherein the list
is ordered by similarity score.
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The Examiner’s Rejections
Claims 21, 22, and 24–40 stand rejected under 35 U.S.C. § 112(a) or
pre-AIA 35 U.S.C. § 112, first paragraph, as failing to comply with the
written description requirement. Final Act. 4–9.
Claims 21, 22, and 24–40 stand rejected under 35 U.S.C. § 101 as
being directed to patent-ineligible subject matter. Final Act. 10‒27.

ANALYSIS
Written Description
The Examiner finds there is no written description support for the
following claim 21 limitation:
determining, by the processor of the computer, entity
similarity for each identified patent by calculating, for each of
the plurality of patent matter proceedings where each identified
patent is asserted, the number of peer companies that participate
in the patent matter proceeding and that are included in the list
of one or more peer companies received from the user device,
and selecting a maximum among the calculated numbers of
peer companies as the entity similarity for each asserted patent.

Final Act 5. We disagree.
The Specification provides the following relevant disclosure:
In embodiments, this module 925 allows similarity to be
computed based on a set of peer companies/entities provided by
the user. In embodiments in which such a list has been supplied
or has been generated, the similarity of a patent matter with
respect to this input may be computed as the maximum number
of peer companies that participate in the same proceeding
where the corresponding patent matter is at issue. The intuition
is that the more peer companies’ products are related to this
patent matter, the more relevant this patent matter is likely to
be.
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Spec. ¶ 173.
The Examiner asserts there is a difference between what the
Specification discloses and the claim limitation at issue, namely, that
[the Specification] describes that the maximum is by default
equal to a single number (i.e., the number of peer companies
participating in the same proceeding where the corresponding
patent matter is at issue) whereas the current claim language
recites that the maximum is a value from among many values
(e.g., among the calculated numbers of peer companies as the
entity similarity for each asserted patent).

Final Act. 7. We find, however, that the Specification would have
conveyed to one of ordinary skill in the art that the maximum number
described in the Specification includes embodiments where the
maximum number is determined to be the highest number of peer
companies involved in any of a number of proceedings where a given
patent matter is at issue. We agree with Appellant that the term
“maximum” implies the largest number out of a set of numbers. See
Appeal Br. 14. One of ordinary skill in the art would have recognized
the aim of the described system to use the maximum number of peer
companies in any of a number of proceedings that involve a particular
patent matter to get the most accurate similarity measure for the patent
matter. Indeed, as the Specification notes, “[t]he intuition is that the
more peer companies’ products are related to this patent matter, the
more relevant this patent matter is likely to be.” Spec. ¶ 173.
The Examiner also finds there is no written description support for the
claim 21 limitation “determining, by the processor of the computer, based on
the graphical model and the entity similarity for each identified patent, non-
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textual similarity between the input portfolio and each identified patent in
the reference database.” We disagree.
The Specification describes determining non-textual similarity
between patent matters and an input portfolio based on both a graphical
model similarity measure and an entity similarity measure. See Spec. ¶¶ 169,
173. Moreover, the Specification provides that “two or more of the above
four similarity measures may be combined into a unique similarity score by
the meta classifier 930 shown in Figure 9.” Spec. ¶ 174.
The Examiner notes the claim limitation at issue determines “non-
textual similarity between the input portfolio and each identified patent in
the reference database,” where the input portfolio is defined in the claim as
“includ[ing] a plurality of input patents, a textual description of the input
portfolio, and a list of one or more peer companies.” Final Act. 8. The
Examiner finds the Specification “does not explain that the determined
entity similarity would have been based on either the input patents or the text
description aspects of the input portfolio because these data are not
referenced in the description of ‘entity similarity’ at [173].” Id. But claim 21
does not require the entity similarity measure to factor in every aspect of the
input portfolio in order to contribute to the overall non-textual similarity of
the input portfolio. Rather, claim 21 simply recites that the “non-textual
similarity between the input portfolio and each identified patent” is “based
on the graphical model and the entity similarity.” It is sufficient to meet the
written description requirement that the Specification describes the entity
similarity measure being determined according to one aspect of the claimed
input portfolio, to wit, “a list of one or more peer companies.” The
Specification does this, namely, by describing that the entity similarity
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measure is “computed based on a set or peer companies/entities provided by
the user.” Spec. ¶ 173.
The Examiner also finds Appellant only had possession of a single
species of determining non-textual similarity based on a graphical model and
an entity similarity measure—i.e., “a linear combination of the two or more
similarity measures with weights assigned to each similarity measure”—but
claim 21 “encompasses any known or unknown technique.” Final Act. 9.
Appellant has persuaded us of Examiner error because the Specification
sufficiently supports the breadth of the claim 21 limitation “determining . . .
based on the graphical model and the entity similarity for each identified
patent, non-textual similarity between the input portfolio and each identified
patent.” Namely, the Specification discloses that the different similarity
measures can be combined based on relative weights that can be “assigned
or learned using a classifier and training data,” where “any relevant machine
learning (ML) algorithm (e.g., linear regression) may be used.” Spec. ¶ 174.

Patent-Ineligible Subject Matter
An invention is patent eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 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).
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. Alice, 573 U.S. at 217–18 (citing Mayo Collaborative Servs. v.
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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
mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (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 183 n.7 (quoting Corning v. Burden, 56 U.S.
(15 How.) 252, 267–68 (1854))); 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
Supreme 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 176, 191 (“We view respondents’
claims as nothing more than a process for molding rubber products and not
as an attempt to patent a mathematical formula.”). Having said that, the
Supreme Court also indicated that a claim “seeking patent protection for that
formula in the abstract . . . . is not accorded the protection of our patent laws,
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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), and 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 (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. (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.
The PTO published revised guidance on the application of 35 U.S.C.
§ 101. USPTO’s January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (“Revised Guidance”).
Under that 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); and
(2) additional elements that integrate the judicial exception into a
practical application (see Manual of Patent Examining Procedure
(“MPEP”) §§ 2106.05(a)–(c), (e)–(h)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
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(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.
See Revised Guidance.
Revised Guidance Step 1
Step 1 of the Revised Guidance asks whether the claimed subject
matter falls within the four statutory categories of patentable subject matter
identified by 35 U.S.C. § 101: process, machine, manufacture, or
composition of matter. See Revised Guidance. Claim 21 recites “[a]
computer-implemented method.” We agree with the Examiner’s conclusion
that claim 21 falls with one of the four statutory categories of patentable
subject matter because claim 21 falls within the process category. See Final
Act. 12; Ans. 12.
Revised Guidance Step 2A, Prong 1
Under Step 2A, Prong 1 of the Revised Guidance, we determine
whether the claims recite 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). See Revised Guidance at 52. The Examiner identifies a
number of specific limitations in claim 21 (see Final Act. 12–13) and
concludes that the recited limitations are abstract ideas because they cover
activities comparable to those “performed by patent attorneys, patent
litigators, or patent examiners,[] and can reasonably be carried out as, mental
activity of these professionals.” Ans. 13.
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We agree with the Examiner that claim 21 recites a number of abstract
ideas. For example, claim 21 recites the following steps: “identifying patents
that were asserted in proceedings and are similar to patents included in an
input portfolio specified by a user;” “accessing . . . information regarding a
plurality of patent matter proceedings;” “retrieving . . . the information . . .
metadata related to the information for each of the patent matter
proceedings[], wherein the information comprises a case name for each of
the patent matter proceedings, and one or more patents asserted in each of
the plurality of patent matter proceedings, and wherein the case name
includes one or more parties involved in each of the patent matter
proceedings;” “storing the graphical model and the identified patents;” and
“receiving . . . an input portfolio that is specified by the user and includes a
plurality of input patents, a textual description of the input portfolio, and a
list of one or more peer companies.” Under the broadest reasonable
interpretation, these steps cover identifying, accessing, receiving, and storing
patent-related information, which are among the duties of patent
professionals, such as patent attorneys. This handling of patent-related
information is a subset of commercial or legal interactions, which fall within
the certain methods of organizing human activity category of abstract ideas
identified in the Revised Guidance.
Claim 21 also recites the following steps: “generating . . . a graphical
model that includes a plurality of nodes corresponding to the case names
based on the metadata, wherein each of the plurality of nodes includes one
or more attributes associated with the corresponding patent matter
proceeding that are obtained from the metadata, and wherein the plurality of
nodes are linked to one another based on shared parties;” “creating . . . a
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single query text by extracting and concatenating text from each of the
plurality of input patents;” “determining . . . based on textual description and
the single query text, textual similarity between the input portfolio and each
identified patent;” “determining . . . entity similarity for each identified
patent by calculating, for each of the plurality of patent matter proceedings
where each identified patent is asserted, the number of peer companies that
participate in the patent matter proceeding and that are included in the list of
one or more peer companies . . . and selecting a maximum among the
calculated numbers of peer companies as the entity similarity for each
asserted patent;” “determining . . . based on the graphical model and the
entity similarity for each identified patent, non-textual similarity between the
input portfolio and each identified patent;” “assigning . . . a similarity score
to each identified patent based at least in part on the textual similarity and
the non-textual similarity;” “ranking . . . the identified patents by similarity
score;” and “producing . . . a list of one or more identified patents that are
most similar to the plurality of input patents in the input portfolio, wherein
the list is ordered by similarity score.” Under the broadest reasonable
interpretation, these steps cover a decision-making process for comparing a
patent portfolio to other patents that a patent professional could perform
mentally, or with pen and paper. This process, which results in a list of the
patents most similar to the patent portfolio, amounts to an evaluation and
judgment, which falls within the mental processes category of abstract ideas
identified in the Revised Guidance.
We, therefore, agree with the Examiner’s conclusion that claim 21
recites abstract ideas.

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Revised Guidance Step 2A, Prong 2
Under Step 2A, Prong 2 of the Revised Guidance, we next determine
whether the claims recite additional elements that integrate the judicial
exception into a practical application. See MPEP §§ 2106.05(a)–(c), (e)–(h).
To integrate the exception into a practical application, the additional
claim elements must, for example, improve the functioning of a computer or
any other technology or technical field (see MPEP § 2106.05(a)), apply the
judicial exception with a particular machine (see MPEP § 2106.05(b)), affect
a transformation or reduction of a particular article to a different state or
thing (see MPEP § 2106.05(c)), or apply or use the judicial exception in
some other meaningful way beyond generally linking the use of the judicial
exception to a particular technological environment. See MPEP
§ 2106.05(e);see also generally Revised Guidance.
Appellant argues “[t]he claimed subject matter applies or uses the
judicial exception in some other meaningful way beyond generally linking
the use of the judicial exception to a particular technological environment,”
and that “[t]he claimed subject matter has specific and identifiable
consequences for a computer that could not be achieved without a
computer.” Appeal Br. 34, 36. In particular, Appellant points to the patent
matter proceedings (PMP) graph described in the Specification to show
integration of a judicial exception into a practical application. See id. at 34–
36. We are not persuaded by Appellant’s argument.
The PMP graph is described in the Specification as being constructed
of nodes for each patent matter proceeding and links between the nodes
based on common attributes, such as “filing date, termination date (if
applicable), district where filed, judge, parties involved (plaintiffs and
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defendants), judge, etc.” Spec. ¶ 159. To the extent this description forms
support for the claim 21 limitation “generating . . . a graphical model that
includes a plurality of nodes corresponding to the case names,” generating a
graphical model made of nodes linked according to patent matter proceeding
attributes, such as the parties involved, is itself an abstract idea in the mental
processes category, as discussed above. Appellant has not shown the
claimed “graphical model” improves the functioning of a computer or
applies the abstract idea in any other meaningful way. See MPEP
§§ 2106.05(a),(e). Rather, the additional claim 21 limitation that this step is
performed “by the processor of the computer” is merely an instruction to
implement the abstract idea on a computer. See id. § 2106.05(f).
Appellant also argues that claim 21 recites a process that “is different
from the process previously performed by patent attorneys, patent litigators,
or patent examiners,” similar to the patent-eligible “rules with specific
characteristics” in McRO, where there was no evidence that “the process
previously used by animators [was] the same as the process required by the
claims.” Reply Br. 5 (quoting McRO, 837 F.3d 1299, 1313–1314 (Fed. Cir.
2016)), 6. We are not persuaded by this argument.
In McRO, where the representative claim related to “[a] method for
automatically animating lip synchronization and facial expression of three-
dimensional characters,” “the claims themselves set out meaningful
requirements for the first set of rules: they ‘define[] a morph weight set
stream as a function of phoneme sequence and times associated with said
phoneme sequence.’” McRO, 837 F.3d at 1307, 1313. The court in McRO
noted “[i]t is the incorporation of the claimed rules, not the use of the
computer, that ‘improved [the] existing technological process.’” Id. at 1314.
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Here, the argued limitations—“generating, by the processor of the computer,
a graphical model” and “determining, by the processor of the computer,
entity similarity for each identified patent”—do not recite specific rules
where the rules themselves define a technological improvement. Reply Br. 5.
Rather, the only technological aspect to the argued “generating” and
“determining” is that they are performed “by the processor of the computer.”
For example, a patent professional could, looking at a set of
information about patent matter proceedings, draw a graphical model with
pen and paper with nodes labeled for each case name and links between the
nodes based on common parties to the cases, as in the “generating . . . a
graphical model” limitation. A patent professional could also, mentally or
with pen and paper, add up the number of companies involved in each of the
set of patent matter proceedings where a given patent is asserted that
coincide with a reference list of companies, and then select the highest
number of such companies as a similarity measure for the patent, as in the
“determining . . . entity similarity” limitation.
In short, the McRO case focused on a limitation that defined a
technological advance. In contrast, claim 21 does not recite the specific
details of a technological solution that distinguish the claimed steps from
activities that could be performed by patent professionals.
For these reasons, Appellant has not persuaded us of Examiner error
with respect to Step 2A, Prong 2 of the Revised Guidance.

Revised Guidance Step 2B
Under Step 2B of the Revised Guidance, we next determine whether
the claims recite an “inventive concept” that “must be significantly more
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than the abstract idea itself, and cannot simply be an instruction to
implement or apply the abstract idea on a computer.” Bascom Glob. Internet
Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1349 (Fed. Cir. 2016).
There must be more than “computer functions [that] are ‘well-understood,
routine, conventional activit[ies]’ previously known to the industry.” Alice,
573 U.S. at 225 (quoting Mayo, 566 U.S. at 73). Appellant argues claim 21
recites an inventive concept. Appeal Br. 37–41. Appellant has not persuaded
us of Examiner error.
Claim 21 recites the following limitations (italicized) in addition to
those that constitute the recited abstract ideas: “accessing, through a
communication port of a computer, a network-accessible data repository
that include information;” “retrieving, using a crawler for the computer, the
information from the network accessible data repository, the crawler
crawling metadata . . . from the network-accessible repository;” “generating,
by the processor of the computer, a graphical model;” “storing the graphical
model . . . in a reference database;” “receiving, through an input device of
the computer, from a user device associated with a user;” an input portfolio;
“creating, by the processor of the computer, a single query text;”
“determining, by the processor of the computer, . . . textual similarity
between the input portfolio and each identified patent in the reference
database;” “determining, by the processor of the computer, entity similarity
. . . in the list of one or more peer companies received from the user device;”
“determining, by the processor, . . . non-textual similarity between the input
portfolio and each identified patent in the reference database;” “assigning,
by the processor of the computer, a similarity score;” “ranking, by the
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processor of the computer, the identified patents;” and “producing, through
an output device of the computer, a list.”
As shown above, the additional limitations include a computer that
has a processor, a communication port, an input device, and an output
device; a network-accessible data repository; a crawler; a reference database;
and a user device. The Examiner finds, and we agree, that such generic
computer components were well-understood, routine, and conventional.
Final Act. 17–20 (citing Alice; Intellectual Ventures I LLC v. Symantec
Corp., 838 F.3d 1307 (Fed. Cir. 2016); Versata Dev. Group, Inc. v. SAP
Am., Inc., 793 F.3d 1306 (Fed. Cir. 2015); Content Extraction and
Transmission, LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343 (Fed.
Cir. 2014)); see also Ans. 15–16, 22–24. Moreover, Appellant’s
Specification confirms the generic, conventional nature of these
components. See, e.g., Spec. ¶¶ 188–199. Appellant has not persuasively
identified, nor have we found, an ordered combination of these elements that
amounts to significantly more than the claimed abstract idea.
For these reasons, we agree with the Examiner that the claims do not
recite an “inventive concept” sufficient to transform the claims from an
abstract idea to a patent eligible application. We, therefore, sustain the
patent-ineligible subject matter rejection of claim 21. We also sustain the
rejection of independent claims 28 and 37, which Appellant argues are
patent-eligible for the same reasons. See Appeal Br. 32–41; Reply Br. 4–7.
We also sustain the rejection of dependent claims 22, 24–27, 29–36, and 38–
40, for which Appellant relies on the same arguments. See id.
Appeal 2019-005135
Application 13/745,117

19

CONCLUSION
We affirm the rejection of claims 21, 22, and 24–40 under 35 U.S.C.
§ 101.
We reverse the rejection of claims 21, 22, and 24–40 under 35 U.S.C.
§ 112(a) or pre-AIA 35 U.S.C. §112, first paragraph.
Because we have sustained at least one ground of rejection with
respect to each claim on appeal, we affirm the decision of the Examiner
rejecting claims 21, 22, and 24–40. See 37 C.F.R. § 41.50(a)(1).

DECISION SUMMARY
In summary:

Claims
Rejected
35 U.S.C. § Reference)s/Basis Affirmed Reversed
21, 22, 24–
40
101 Eligibility 21, 22,
24–40

21, 22, 24–
40
112(a) Written Description 21, 22, 24–
40
Overall
Outcome
21, 22,
24–40

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.
§ 41.50(f).
AFFIRMED