Liam Harpur et al.

Patent Trials and Appeals Board

Nov 15, 2019

12137010 - (D) (P.T.A.B. Nov. 15, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/137,010 06/11/2008 LIAM HARPUR RSW920080196US1_8152-0306 6694
112978 7590 11/15/2019
Cuenot, Forsythe & Kim, LLC
20283 State Road 7, Suite 300
Boca Raton, FL 33498
EXAMINER
AUSTIN, JAMIE H
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
11/15/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte LIAM HARPUR, CORMAC O’LEARY,
PATRICK J. O’SULLIVAN, and HEMA SRIKANTH
____________

Appeal 2018-003627
Application 12/137,010
Technology Center 3600
____________

Before NINA L. MEDLOCK, PHILIP J. HOFFMANN, and
TARA L. HUTCHINGS, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1, 2, and 4. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Our decision references Appellant’s Appeal Brief (“Appeal Br.,”
filed March 31, 2017), and the Examiner’s Answer (“Ans.,” mailed
November 30, 2017) and Final Office Action (“Final Act.,” mailed
November 18, 2016). Appellant identifies the real party in interest as
International Business Machines, Inc. Appeal Br. 3.
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CLAIMED INVENTION
Appellant’s claimed invention “relates to the field of scheduling, [and]
more particularly to enhanced viewing/updating of calendar entries based
upon relationships between a viewer and a calendar owner and a relative
importance value of the calendar entries” (Spec. ¶ 1).
Claim 1, reproduced below with bracketed notations added, is the sole
independent claim, and is representative of the claimed subject matter:
1. A calendaring system comprising:
[(a)] a data store, which is at least one non-transitory
storage medium, configured to digitally encode calendar data
specifying a plurality of calendar entries associated with plurality
of different calendar owners each of the plurality of calendar
entries includes a type selected from a plurality of types;
[(b)] an entry restrictions component, comprising
computer readable instructions executable by processor, said
computer readable instructions being stored on at least one non-
transitory data store, configured to distinguish between calendar
entries representing genuine meetings and user created time
blocks set aside to permit an owner of the calendar to complete a
task, wherein the calendar entries for the genuine meetings and
for the user created time blocks have a fixed start time and a
duration or end time;
[(c)] an event scheduling engine, comprising computer
readable instructions executable by processor, said computer
readable instructions being stored on at least one non-transitory
data store, configured to permit non-owners to push new calendar
entries into an owner[’]s calendar even when the new calendar
entries conflict with at least one of previously established entries
for a time block set aside to permit the owner of the calendar to
complete a task, wherein a pushing of a new calendar entry to a
calendar of an owner does not require explicit owner permission
to be granted at a time that the pushing of the new calendar entry
occurs;
[(d)] a relationship engine, comprising computer
readable instructions executable by processor, said computer
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readable instructions being stored on at least one non-transitory
data store, configured to determine a relationship between a non-
owner attempting to access a calendar entry of an owner and the
owner;
[(e)] a privilege engine, comprising computer readable
instructions executable by processor, said computer readable
instructions being stored on at least one non-transitory data store,
configured to determine a set of privileges to be granted to a non-
owner based upon a relationship determined by the relationship
engine; and
[(f)] an access engine, comprising computer readable
instructions executable by processor, said computer readable
instructions being stored on at least one non-transitory data store,
configured to compare the set of privileges determined by the
privilege engine against entry specific restrictions determined by
the entry restrictions component to determine access rights to be
granted to calendar entries, wherein said relationship engine is
configured to determine a relationship strength, wherein the
entry restrictions is configured to determine an entry level,
wherein the access engine compares the relationship strength to
the access level for each calendar entry based on the calendar
entry type to determine access rights to be granted to the non-
owner for each calendar entry of the owner.
REJECTION
Claims 1, 2, and 4 are rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more.
ANALYSIS
Appellant argues the pending claims as a group (Appeal Br. 10–15).
We select independent claim 1 as representative. Claims 2 and 4 stand or
fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
Under 35 U.S.C. § 101, an invention is patent eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101
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to include an implicit exception: “[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).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), “for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts.” Alice Corp., 573 U.S. at 217.
The first step in that analysis is to “determine whether the claims at issue are
directed to one of those patent-ineligible concepts.” Id. If the claims are not
directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry
ends. Otherwise, the inquiry proceeds to the second step where the elements
of the claims are considered “individually and ‘as an ordered combination’”
to determine whether there are additional elements that “‘transform the
nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo,
566 U.S. at 79, 78). This is “a search for an ‘inventive concept’ — i.e., an
element or combination of elements that is ‘sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself.’” Id. at 217–18 (alteration in original).
In rejecting the pending claims under 35 U.S.C. § 101, the Examiner
determined that the claims are directed to “identifying and permitting
individuals to use and share calendars,” which the Examiner concluded is an
abstract idea similar to other concepts that the courts have held abstract
(Final Act. 11–13). The Examiner also determined that the claims do not
include additional elements or a combination of elements sufficient to
amount to significantly more than the abstract idea itself (id. at 13–16).
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After Appellant’s Appeal Brief was filed, and the Examiner’s Answer
mailed, the U.S. Patent and Trademark Office (the “USPTO”) published
revised guidance for use by USPTO personnel in evaluating subject matter
eligibility under 35 U.S.C. § 101. 2019 REVISED PATENT SUBJECT MATTER
ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50, 57 (Jan. 7, 2019) (the “2019
Revised Guidance”). That guidance revised the USPTO’s examination
procedure with respect to the first step of the Mayo/Alice framework by
(1) “[p]roviding groupings of subject matter that [are] considered an abstract
idea”; and (2) clarifying that a claim is not “directed to” a judicial exception
if the judicial exception is integrated into a practical application of that
exception. Id. at 50. The 2019 Revised Guidance, by its terms, applies to all
applications, and to all patents resulting from applications, filed before, on,
or after January 7, 2019. Id.2
Step One of the Mayo/Alice Framework (2019 Revised Guidance, Step 2A)
The first step in the Mayo/Alice framework, as mentioned above, is to
determine whether the claims at issue are “directed to” a patent-ineligible
concept, e.g., an abstract idea. Alice Corp., 573 U.S. at 217. This first step,
as set forth in the 2019 Revised Guidance (i.e., Step 2A), is a two-prong test;
in Step 2A, Prong One, we look to whether the claim recites a judicial

2 The 2019 Revised Guidance supersedes MANUAL OF PATENT EXAMINING
PROCEDURE (“MPEP”) § 2106.04(II) and also supersedes all versions of the
USPTO’s “Eligibility Quick Reference Sheet Identifying Abstract Ideas.”
See 2019 Revised Guidance, 84 Fed. Reg. at 51 (“Eligibility-related
guidance issued prior to the Ninth Edition, R-08.2017, of the MPEP
(published Jan. 2018) should not be relied upon.”). Accordingly,
Appellant’s arguments challenging the sufficiency of the Examiner’s
rejection will not be addressed to the extent those arguments are based on
now superseded USPTO guidance.
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exception, e.g., one of the following three groupings of abstract ideas:
(1) mathematical concepts; (2) certain methods of organizing human
activity, e.g., fundamental economic principles or practices, commercial or
legal interactions; and (3) mental processes. 2019 Revised Guidance,
84 Fed. Reg. at 54. If so, we next consider whether the claim includes
additional elements, beyond the judicial exception, that “integrate the
[judicial] exception into a practical application,” i.e., that apply, rely on, or
use the judicial exception in a manner that imposes a meaningful limit on the
judicial exception, such that the clam is more than a drafting effort designed
to monopolize the judicial exception (“Step 2A, Prong Two”). Id. at 54–55.
Only if the claim (1) recites a judicial exception and (2) does not integrate
that exception into a practical application do we conclude that the claim is
“directed to” the judicial exception, e.g., an abstract idea. Id.
We are not persuaded, as an initial matter, by Appellant’s argument
that the Examiner has failed to establish a prima facie case of patent
ineligibility (Appeal Br. 11–13). The Federal Circuit has observed
repeatedly that “the prima facie case is merely a procedural device that
enables an appropriate shift of the burden of production.” Hyatt v. Dudas,
492 F.3d 1365, 1369 (Fed. Cir. 2007) (citing In re Oetiker, 977 F.2d 1443,
1445 (Fed. Cir. 1992)). The court has, thus, held that the USPTO carries its
procedural burden of establishing a prima facie case when its rejection
satisfies the requirements of 35 U.S.C. § 132 by notifying the applicant of
the reasons for the rejection, “together with such information and references
as may be useful in judging of the propriety of continuing the prosecution of
[the] application.” See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011)
(alteration in original). Thus, what is required of the Office is that it sets
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forth the statutory basis of the rejection in a sufficiently articulate and
informative manner as to meet the notice requirement of § 132. Id.; see also
Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990) (citation omitted)
(“Section 132 is violated when a rejection is so uninformative that it
prevents the applicant from recognizing and seeking to counter the grounds
for rejection.”).
Here, in rejecting the pending claims under 35 U.S.C. § 101, the
Examiner analyzed the claims in accordance with the Mayo/Alice two-step
framework, and consistently with the USPTO guidance in effect at the time
the Final Office Action was mailed. The Examiner, thus, notified Appellant,
as described above, that the claims are directed to “identifying and
permitting individuals to use and share calendars,” which the Examiner
concluded is similar to other concepts that the courts have held abstract
(Final Act. 11–13); and that the claims do not include additional elements or
a combination of elements sufficient to amount to significantly more than
the abstract idea itself (id. at 13–16). The Examiner set forth the statutory
basis of the rejection in a sufficiently articulate and informative manner as to
meet the notice requirement of 35 U.S.C. § 132. And we find that, in doing
so, the Examiner established a prima facie case of patent ineligibility.
We also are not persuaded that the Examiner erred in determining that
claim 1 is directed to an abstract idea. The Federal Circuit has explained
that “the ‘directed to’ inquiry applies a stage-one filter to claims, considered
in light of the specification, based on whether ‘their character as a whole is
directed to excluded subject matter.’” Enfish, LLC v. Microsoft Corp.,
822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. v.
Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). It asks whether
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the focus of the claims is on a specific improvement in relevant technology
or on a process that itself qualifies as an “abstract idea” for which computers
are invoked merely as a tool. See id. at 1335–36. Here, it is clear from the
Specification (including the claim language) that the claims focus on an
abstract idea, and not on any improvement to technology and/or a technical
field.
The Specification is entitled “ENHANCED VIEWING/UPDATING
OF CALENDAR ENTRIES BASED UPON RELATIONSHIPS BETWEEN
A VIEWER AND A CALENDAR OWNER AND A RELATIVE
IMPORTANCE VALUE OF THE CALENDAR ENTRIES,” and describes,
in the Background section, that many computing applications provide users
with a shared calendar; some of these applications implement shared
calendars where users get their own calendars while others implement a
common calendar that multiple users share (Spec. ¶ 2). The Specification
describes that when personal calendars are provided, they can be shared with
other users, who can see what time is scheduled and what time the user has
free (id. ¶ 3). However, according to the Specification, conventional
calendaring systems do not customize calendar actions, e.g., the ability to
access and manipulate a user’s calendar entries, based on a relationship
between the owner and the accessing party; these conventional systems also
make no distinctions between different types of calendar entries (id.)
The claimed invention is ostensibly intended to provide an improved
calendaring system, which distinguishes between calendar entries
representing genuine meetings and user-created time blocks set aside to
permit the calendar owner to complete a task (id. ¶ 4). Each calendar entry
also has associated access restrictions; a non-owner is, thus, allowed access
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to a particular calendar entry based on the results of a comparison between
the non-owner’s access privileges (which are determined based on the
relationship between the calendar owner and the non-owner) and the access
restrictions associated with the calendar entry.
Consistent with this disclosure, claim 1 recites a calendaring system
comprising “a data store . . . configured to digitally encode calendar data
specifying a plurality of calendar entries associated with plurality of
different calendar owners each of the plurality of calendar entries includes a
type selected from a plurality of types” (limitation (a)), and a plurality of
additional components comprising computer readable instructions
executable by a processor to: (1) establish entry specific access restrictions
for each of a plurality of stored calendar entries associated with a plurality of
calendar owners, i.e.,
an entry restrictions component, comprising computer readable
instructions executable by processor, said computer readable
instructions being stored on at least one non-transitory data store,
configured to distinguish between calendar entries representing
genuine meetings and user created time blocks set aside to permit
an owner of the calendar to complete a task, wherein the calendar
entries for the genuine meetings and for the user created time
blocks have a fixed start time and a duration or end time
(limitation (b)); (2) permit a non-owner to push new calendar entries into an
owner’s calendar, i.e.,
an event scheduling engine, comprising computer readable
instructions executable by processor, said computer readable
instructions being stored on at least one non-transitory data store,
configured to permit non-owners to push new calendar entries
into an owner[’]s calendar even when the new calendar entries
conflict with at least one of previously established entries for a
time block set aside to permit the owner of the calendar to
complete a task, wherein a pushing of a new calendar entry to a
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calendar of an owner does not require explicit owner permission
to be granted at a time that the pushing of the new calendar entry
occurs
(limitation (c)); (3) determine the relationship between the non-owner and
the owner, i.e.,
a relationship engine, comprising computer readable instructions
executable by processor, said computer readable instructions
being stored on at least one non-transitory data store, configured
to determine a relationship between a non-owner attempting to
access a calendar entry of an owner and the owner
(limitation (d)); (4) determine a set of privileges granted to the non-owner
based on the non-owner’s relationship with the owner, i.e.,
a privilege engine, comprising computer readable instructions
executable by processor, said computer readable instructions
being stored on at least one non-transitory data store, configured
to determine a set of privileges to be granted to a non-owner
based upon a relationship determined by the relationship engine
(limitation (e)); and (5) allow the non-owner access to a calendar entry based
on the results of a comparison between the privileges granted to the non-
owner and the access restrictions for the calendar entry, i.e.,
an access engine, comprising computer readable instructions
executable by processor, said computer readable instructions
being stored on at least one non-transitory data store, configured
to compare the set of privileges determined by the privilege
engine against entry specific restrictions determined by the entry
restrictions component to determine access rights to be granted
to calendar entries, wherein said relationship engine is
configured to determine a relationship strength, wherein the
entry restrictions is configured to determine an entry level,
wherein the access engine compares the relationship strength to
the access level for each calendar entry based on the calendar
entry type to determine access rights to be granted to the non-
owner for each calendar entry of the owner
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(limitation (f)). Claim 1, given its broadest reasonable interpretation, thus,
recites selectively sharing calendar entries based on a relationship between
the calendar owner and a user seeking to access the calendar entry. In other
words, claim 1 recites a method of managing human behavior or interactions
between people, which is a method of organizing human activity and,
therefore, an abstract idea. See 2019 Revised Guidance, 84 Fed. Reg. at 52.
The Federal Circuit has held similar concepts to be abstract. Thus, for
example, the Federal Circuit has held that abstract ideas include the concepts
of collecting data, analyzing the data, and displaying the results of the
collection and analysis, including when limited to particular content. See,
e.g., Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332,
1340 (Fed. Cir. 2017) (identifying the abstract idea of collecting, displaying,
and manipulating data); Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d
1350, 1354 (Fed. Cir. 2016) (characterizing collecting information,
analyzing information by steps people go through in their minds, or by
mathematical algorithms, and presenting the results of collecting and
analyzing information, without more, as matters within the realm of abstract
ideas); see also SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168
(Fed. Cir. 2018) (“As many cases make clear, even if a process of collecting
and analyzing information is ‘limited to particular content’ or a particular
‘source,’ that limitation does not make the collection and analysis other than
abstract.”) (quoting Elec. Power Grp., 830 F.3d at 1353, 1355 (citing
cases)). Determining whether to allow a non-owner to access a calendar
entry, by comparing the non-owner’s privileges to access restrictions for the
calendar entry, also is substantially similar to other concepts that the courts
have held abstract. See, e.g., Berkheimer v. HP, Inc., 881 F.3d 1360, 1366
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(Fed. Cir. 2018) (concluding that parsing, comparing, storing, and editing
data are abstract ideas); SmartGene, Inc. v. Advanced Biological Labs.,
555 F. App’x 950 (Fed. Cir. 2014) (comparing new and stored information
and using rules to identify options is an abstract idea).
Having concluded that claim 1 recites a judicial exception, i.e., an
abstract idea (Step 2A, Prong One), we next consider whether the claim
recites additional elements that integrate the judicial exception into a
practical application (Step 2A, Prong Two).
The only additional elements recited in claim 1, beyond the abstract
idea, are a “data store”; a “non-transitory storage medium”; and a
“processor” — elements that, as the Examiner observes (Final Act. 13–15),
are described in the Specification as generic computer components (see, e.g.,
Spec. ¶¶ 10–15). We find no indication in the Specification, nor does
Appellant direct us to any indication, that the operations recited in claim 1
require any specialized computer hardware or other inventive computer
components, i.e., a particular machine, invoke any assertedly inventive
programming, or that the claimed invention is implemented using other than
generic computer components to perform generic computer functions. See
DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir.
2014) (“[A]fter Alice, there can remain no doubt: recitation of generic
computer limitations does not make an otherwise ineligible claim patent-
eligible.”).
We also find no indication in the Specification that the claimed
invention effects a transformation or reduction of a particular article to a
different state or thing. Nor do we find anything of record, short of attorney
argument, that attributes an improvement in technology and/or a technical
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field to the claimed invention or that otherwise indicates that the claimed
invention integrates the abstract idea into a “practical application,” as that
phrase is used in the 2019 Revised Guidance.3
Appellant argues that “the claimed invention provides a technological
improvement to electronically maintained calendars, namely a specific
manner as to how calendar[ ] entries can be added to a calendar” (Appeal
Br. 14). But, we fail to see how, and Appellant does not explain how,
allowing calendar entries to be added to a calendar based on a relationship
between the calendar owner and the user seeking to add the calendar entry
somewhat amounts to a technological improvement, as opposed to an
improvement in a business practice. It clearly appears from the
Specification that the problem the claimed invention addresses is one
prompted by the inability with conventional calendaring systems to
customize calendar actions based on a relationship between an owner and an
accessing party (Spec. ¶ 2). This is not a technical problem but, as
Appellant describes, a business or personal concern related to a user’s desire
that his or her boss in a business context, or his or her spouse in a personal
context, has enhanced viewing and/or calendar manipulation options
available for calendaring events (id. ¶ 3).

3 The 2019 Revised Guidance references MPEP § 2106.05(a)–(c) and (e) in
describing the considerations that are indicative that an additional element or
combination of elements integrates the judicial exception, e.g., the abstract
idea, into a practical application. 2019 Revised Guidance, 84 Fed. Reg.
at 55. If the recited judicial exception is integrated into a practical
application, as determined under one or more of these MPEP sections, the
claim is not “directed to” the judicial exception.
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We conclude, for the reasons set forth above, that claim 1 recites a
method of organizing human activity, i.e., an abstract idea, and that the
additional elements recited in the claim are no more than generic computer
components used as tools to perform the recited abstract idea. As such, they
do not integrate the recited abstract idea into a practical application. See
Alice Corp., 573 U.S. at 223–24 (“[W]holly generic computer
implementation is not generally the sort of ‘additional featur[e]’ that
provides any ‘practical assurance that the process is more than a drafting
effort designed to monopolize the [abstract idea] itself.’” (quoting Mayo,
566 U.S. at 77)). Accordingly, we agree with the Examiner that claim 1 is
directed to an abstract idea.
Step Two of the Mayo/Alice Framework (2019 Revised Guidance, Step 2B)
Having determined under step one of the Mayo/Alice framework that
claim 1 is directed to an abstract idea, we next consider under Step 2B of the
2019 Revised Guidance, the second step of the Mayo/Alice framework,
whether claim 1 includes additional elements or a combination of elements
that provides an “inventive concept,” i.e., whether claim 1 adds specific
limitations beyond the judicial exception that are not “well-understood,
routine, conventional” in the field. 2019 Revised Guidance, 84 Fed. Reg.
at 56.
Appellant notes that
[c]laim 1 recites, inter alia, the claimed relationship engine,
privilege engine, and access engine[,] which operate to evaluate
the relationship between the owner of the calendar and the non-
owner seeking [to] add the calendar entry to the owner’s
calendar, the privileges of the non-owner based on that
relationship, and whether to allow the calendar entry to be
entered into the owner’s calendar
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(Appeal Br. 13). And Appellant argues that these and other recited
limitations “go substantially beyond the idea of allowing changes to
electronically maintained calendars; they limit which times can be affected,
and prescribe particular functionality that determines whether changes are
allowed based on relationships of the calendar owner and the non-owner”
(id. at 13–14).
The difficulty with Appellant’s argument is that the limitations that
Appellant identifies (i.e., evaluating the relationship between the owner of
the calendar and the non-owner seeking to add the calendar entry to the
owner’s calendar, the privileges of the non-owner based on that relationship,
and determining whether to allow the calendar entry to be entered into the
owner’s calendar) are part of the abstract idea itself, i.e., selectively sharing
calendar entries based on a relationship between the calendar owner and a
user seeking to access, e.g., to view and/or modify, the calendar entry;4 they
are not additional elements to be considered when determining whether
claim 1 includes additional elements or a combination of elements that is
sufficient to amount to significantly more than the judicial exception.
It could not be clearer from Alice, that under step two of the
Mayo/Alice framework, the elements of each claim are considered both

4 Our articulation of the abstract idea to which claim 1 is directed is not
materially different from that of the Examiner. Cf. Apple, Inc. v. Ameranth,
Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016) (“An abstract idea can generally
be described at different levels of abstraction. As the Board has done, the
claimed abstract idea could be described as generating menus on a computer,
or generating a second menu from a first menu and sending the second menu
to another location. It could be described in other ways, including, as
indicated in the specification, taking orders from restaurant customers on a
computer.”).
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individually and “as an ordered combination” to determine whether the
additional elements, i.e., the elements other than the abstract idea itself,
“transform the nature of the claim” into a patent-eligible application. Alice
Corp., 573 U.S. at 217 (internal quotations and citation omitted); see Mayo,
566 U.S. at 72–73 (requiring that “a process that focuses upon the use of a
natural law also contain other elements or a combination of elements,
sometimes referred to as an ‘inventive concept,’ sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
natural law itself” (emphasis added) (internal citation omitted)). In other
words, the inventive concept under step two of the Mayo/Alice test cannot be
the abstract idea itself:
It is clear from Mayo that the “inventive concept” cannot be the
abstract idea itself, and Berkheimer . . . leave[s] untouched the
numerous cases from this court which have held claims ineligible
because the only alleged “inventive concept” is the abstract idea.
Berkheimer v. HP, Inc., 890 F.3d 1369, 1374 (Fed. Cir. 2018) (Moore, J.,
concurring); see also BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281,
1290 (Fed. Cir. 2018) (“It has been clear since Alice that a claimed
invention’s use of the ineligible concept to which it is directed cannot supply
the inventive concept that renders the invention ‘significantly more’ than
that ineligible concept.”) (internal citation omitted).
The Examiner determined here, and we agree, that the only claim
elements beyond the abstract idea are the “data store”; “non-transitory
storage medium”; and “processor,” i.e., generic computer components used
to perform generic computer functions (Final Act. 13–15) — a determination
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amply supported by, and fully consistent with the Specification (see, e.g.,
Spec. ¶¶ 10–15).5
Appellant cannot reasonably contend, nor does Appellant, that there is
a genuine issue of material fact regarding whether the operation of these
components is well-understood, routine, or conventional, where, as here,
there is nothing in the Specification to indicate that the operations recited in
claim 1 require any specialized hardware or inventive computer components
or that the claimed invention is implemented using other than generic
computer components to perform generic computer functions, e.g.,
receiving, matching, and processing information. Indeed, the Federal
Circuit, in accordance with Alice, has “repeatedly recognized the absence of
a genuine dispute as to eligibility” where claims have been defended as
involving an inventive concept based “merely on the idea of using existing
computers or the Internet to carry out conventional processes, with no
alteration of computer functionality.” Berkheimer, 890 F.3d at 1373
(Moore, J., concurring) (internal citations omitted); see also BSG Tech,
899 F.3d at 1291 (“BSG Tech does not argue that other, non-abstract
features of the claimed inventions, alone or in combination, are not well-

5 The Office’s April 19, 2018 Memorandum to the Examining Corps from
Deputy Commissioner for Patent Examination Policy, Robert W. Bahr,
entitled, Changes in Examination Procedure Pertaining to Subject Matter
Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP,
Inc.), available at https://www.uspto.gov/sites/default/files/documents/
memo-berkheimer-20180419.PDF, expressly directs that an examiner may
support the position that an additional element (or combination of elements)
is not well-understood, routine or conventional with “[a] citation to an
express statement in the specification . . . that demonstrates the well-
understood, routine, conventional nature of the additional element(s)” (id.
at 3).
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Application 12/137,010

18
understood, routine and conventional database structures and activities.
Accordingly, the district court did not err in determining that the asserted
claims lack an inventive concept.”).
Finally, Appellant misapprehends the controlling precedent to the
extent Appellant maintains that claim 1 includes additional elements or a
combination of elements that is not well-understood, routine and
conventional, because the claim is allegedly novel and/or non-obvious in
view of the prior art (Appeal Br. 13–14). Neither a finding of novelty nor a
non-obviousness determination automatically leads to the conclusion that the
claimed subject matter is patent eligible. Although the second step in the
Mayo/Alice framework is termed a search for an “inventive concept,” the
analysis is not an evaluation of novelty or non-obviousness, but rather, a
search for “an element or combination of elements that is ‘sufficient to
ensure that the patent in practice amounts to significantly more than a patent
upon the [ineligible concept] itself.’” Alice Corp., 573 U.S. at 217–18
(citation omitted). “Groundbreaking, innovative, or even brilliant discovery
does not by itself satisfy the § 101 inquiry.” Ass’n for Molecular Pathology
v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013). A novel and non-
obvious claim directed to a purely abstract idea is, nonetheless, patent
ineligible. See Mayo, 566 U.S. at 90; see also Diamond v. Diehr, 450 U.S.
175, 188–89 (1981) (“The ‘novelty’ of any element or steps in a process, or
even of the process itself, is of no relevance in determining whether the
subject matter of a claim falls within the § 101 categories of possibly
patentable subject matter.”).
We are not persuaded, on the present record, that the Examiner erred
in rejecting independent claim 1 under 35 U.S.C. § 101. Therefore, we
Appeal 2018-003627
Application 12/137,010

19
sustain the Examiner’s rejection of claim 1, and claims 2 and 4, which fall
with claim 1.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 4 101 Eligibility 1, 2, 4
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