LinkedIn Corporation

Patent Trials and Appeals Board

May 18, 2020

2019006315 (P.T.A.B. May. 18, 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.
14/698,772 04/28/2015 Nikita Igorevych Lytkin 3080.D24US1 1826
45839 7590 05/18/2020
Schwegman Lundberg & Woessner / LinkedIn/Microsoft
PO BOX 2938
MINNEAPOLIS, MN 55402
EXAMINER
WHITAKER, ANDREW B
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
05/18/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
USPTO@slwip.com
slw@blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte NIKITA IGOREVYCH LYTKIN,
BEE-CHUNG CHEN, and LIANG ZHANG
_____________

Appeal 2019-006315
Application 14/698,772
Technology Center 3600
____________

Before ST. JOHN COURTENAY III, JOHN A. EVANS, and
JASON J. CHUNG, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a Final rejection of
claims 1–20. We have jurisdiction over the pending claims 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(a). According to Appellant, the real party in interest is
Microsoft Technology Licensing, LLC. See Appeal Br. 2.

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STATEMENT OF THE CASE 2
Introduction
Appellant’s claimed invention relates generally to “generat[ing]
highlight data for presentation in conjunction with update data pertaining to
a large number of people in a person’s network.” (Spec. ¶ 1).

Reference
The prior art relied upon by the Examiner as evidence is:
Name Reference Date
Hoagland et al. US 2014/0337436 A1 Nov. 13, 2014

Rejections
A. Claims 1–20 are rejected under 35 U.S.C. § 101, as being directed to a
judicial exception, without significantly more. See Final Act. 6.
B. Claims 1–20 are rejected under 35 U.S.C. § 103 as being unpatentable
over Hoagland et al. (“Hoagland”). See Final Act. 9.

ANALYSIS
We reproduce infra independent claim 1 in Table One. We have
considered all of Appellant’s arguments and any evidence presented. We

2 We herein refer to the Final Office Action, mailed Apr. 23, 2018 (“Final
Act.”); Appeal Brief, filed Mar. 25, 2019 (“Appeal Br.”); the Examiner’s
Answer, mailed June 26, 2019 (“Ans.”), and the Reply Brief, filed Aug. 26,
2019 (“Reply Br.”).
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highlight and address specific findings and arguments for emphasis in our
analysis below.3
Rejection A of Claims 1–20 under § 101
USPTO § 101 Guidance
The U.S. Patent and Trademark Office (USPTO) published revised
guidance on the application of 35 U.S.C. § 101. See USPTO January 7,
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(“2019 Memorandum”).4 Under that guidance, we first look to whether the
claim recites:
(1) (see 2019 Memorandum Step 2A – Prong One) 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) (see 2019 Memorandum Step 2A – Prong Two) additional
elements that integrate the judicial exception into a practical
application (see MPEP § 2106.05(a)–(c), (e)–(h)).5

3 Throughout this opinion, we give the claim limitations the broadest
reasonable interpretation consistent with the Specification. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).

4 The Office issued a further memorandum on October 17, 2019 (the
“October 2019 Memorandum”) clarifying guidance of the January 2019
Memorandum in response to received public comments. See https://
www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.pdf.
Moreover, “[a]ll USPTO personnel are, as a matter of internal agency
management, expected to follow the guidance.” January 2019 Memorandum
at 51; see also October 2019 Memorandum at 1.
5 This evaluation is performed 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
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Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, conventional” in the field
(see MPEP § 2106.05(d)); or

(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a
high level of generality, to the judicial exception.
See 2019 Memorandum Step 2B.
Because there is no single definition of an “abstract idea” under Alice
Step 1, the 2019 Memorandum synthesizes, for purposes of clarity,
predictability, and consistency, key concepts identified by the courts as
abstract ideas to explain that the “abstract idea” exception includes the
following three groupings:
1. Mathematical concepts—mathematical relationships,
mathematical formulas or equations, mathematical
calculations;

2. Mental processes—concepts performed in the human mind
(including an observation, evaluation, judgment, opinion);
and
3. Certain methods of organizing human activity—fundamental
economic principles or practices (including hedging,
insurance, mitigating risk); commercial or legal interactions
(including agreements in the form of contracts; legal
obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior
or relationships or interactions between people (including

determine whether the claim as a whole integrates the exception into a
practical application. See 2019 Memorandum - Section III(A)(2).
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social activities, teaching, and following rules or
instructions).
See 2019 Memorandum, 84 Fed. Reg. at 52.
According to the 2019 Memorandum, “[c]laims that do not recite
[subject] matter that falls within these enumerated groupings of abstract
ideas should not be treated as reciting abstract ideas,” except in rare
circumstances. Even if the claims recite any one of these three groupings of
abstract ideas, these claims are still not “directed to” a judicial exception
(abstract idea), and thus are patent eligible, if “the claim as a whole
integrates the recited judicial exception into a practical application of that
exception.” See 2019 Memorandum, 84 Fed. Reg. at 53.
For example, limitations that are indicative of integration into a
practical application include:
1. Improvements to the functioning of a computer, or to any
other technology or technical field — see MPEP
§ 2106.05(a);
2. Applying the judicial exception with, or by use of, a
particular machine — see MPEP § 2106.05(b);
3. Effecting a transformation or reduction of a particular
article to a different state or thing — see MPEP
§ 2106.05(c); and
4. Applying or using the judicial exception in some other
meaningful way beyond generally linking the use of the
judicial exception to a particular technological
environment, such that the claim as a whole is more than
a drafting effort designed to monopolize the exception
— see MPEP § 2106.05(e).
In contrast, limitations that are not indicative of integration into a
practical application include:
1. Adding the words “apply it” (or an equivalent) with the
judicial exception, or merely include instructions to
implement an abstract idea on a computer, or merely uses a
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computer as a tool to perform an abstract idea — see MPEP
§ 2106.05(f);
2. Adding insignificant extra-solution activity to the judicial
exception — see MPEP § 2106.05(g); and
3. Generally linking the use of the judicial exception to a
particular technological environment or field of use — see
MPEP § 2106.05(h).
See 2019 Memorandum, 84 Fed. Reg. at 54–55 (“Prong Two”).
2019 Memorandum, Step 2A, Prong One
The Judicial Exception
Under the 2019 Memorandum, we begin our analysis by first
considering whether the claims recite any judicial exceptions, including
certain groupings of abstract ideas, in particular: (a) mathematical concepts,
(b) mental steps, and (c) certain methods of organizing human activities.
Abstract Idea
The Examiner concludes the claims recite an abstract idea: “All of
these [claimed] concepts relate to organizing human activities such as
the electronic record keeping of interpersonal activities in a social network.”
Final Act. 6 (emphasis added).
We note the Appeal Brief was filed on March 25, 2019, after the
issuance of the USPTO January 2019 Memorandum. Appellant contends:
the claims at issue are not directed to subject matter within any
of the enumerated groupings of abstract ideas. In fact, the claims
at issue are similar to claim 2 of Example 37 of the 2019 PEG.
For example, they are directed to a graphical user interface in
which combinations of content items and groups of highlight
data items are sorted according to modified ranking scores.
Additionally or alternatively, the claims at issue are similar to the
claim of Example 38 of the 2019 PEG in that they do not recite
a mathematical relationship, formula, or calculation, they do
not recite a mental process, and they do not recite one of the
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certain methods of organizing human activity that have been
deemed patent-ineligible by the courts, such as a fundamental
economic practice. Accordingly, the claims at issue are patent
eligible at Prong One.
Appeal Br. 10 (emphasis added).
We disagree. After considering representative system claim 1 as a
whole, we conclude the italicized functions shown in Table One (below)
recite an abstract idea. For example, we conclude at least the selecting step
“g” of claim 1 can be performed alternatively by a person as a mental
process: “[s]electing the actions for each of the combinations of update
content items and highlight data items from a plurality of actions.” See
2019 Memorandum, 84 Fed. Reg. at 526 (emphasis added). See “Intellectual
Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016)
(‘[W]ith the exception of generic computer-implemented steps, there is
nothing in the claims themselves that foreclose them from being performed

6 If a method can be performed by human thought alone, or by a human
using pen and paper, it is merely an abstract idea and is not patent eligible
under § 101. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d
1366, 1372–73 (Fed. Cir. 2011); “That purely mental processes can be
unpatentable, even when performed by a computer, was precisely the
holding of the Supreme Court in Gottschalk v. Benson.” CyberSource, 654
F.3d at 1375. See also Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d
1138, 1146–47 (Fed. Cir. 2016). Moreover, “[u]sing a computer to
accelerate an ineligible mental process does not make that process patent-
eligible.” Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can. (U.S.),
687 F.3d 1266, 1279 (Fed. Cir. 2012); see also OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (“[R]elying on a
computer to perform routine tasks more quickly or more accurately is
insufficient to render a claim patent eligible.”).

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by a human, mentally or with pen and paper.’).” 2019 Memorandum, 84
Fed. Reg. at 52 n.14 (emphasis omitted).
In Table One below, we identify in italics the specific claim
limitations that we conclude recite an abstract idea. We also identify in bold
the additional (non-abstract) claim elements that we find are generic
computer components:
TABLE ONE 7
Independent Claim 1 2019 Memorandum
[a]A method comprising: 8

[b] presenting an interactive
user interface on a client
device of a user, the
interactive user interface
including user interface
elements for combinations of
update content items and
groups of highlight data items
corresponding to the update
content items, the user
interface also including user
interface elements for actions
relevant to each of the
combinations, the generating
Presenting an interactive user
interface is insignificant extra-
solution activity (i.e., data
gathering). See 2019 Memorandum,
84 Fed. Reg. at 55 n.31; see also
MPEP § 2106.05(g).

7 We apply the Director’s 2019 Memorandum de novo.

8 A method falls under the statutory subject matter class of a process. See
35 U.S.C. § 101 (“Whoever invents or discovers any new and useful
process, machine, manufacture, or composition of matter, or any new and
useful improvement thereof, may obtain a patent therefor, subject to the
conditions and requirements of this title.”).

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Independent Claim 1 2019 Memorandum
of the interactive user
interface including:
[c] requesting the update
content items, the update
content items corresponding
to a data feed that is to be
presented on the client
device;
Requesting the update content items
is insignificant extra-solution activity
(i.e., data gathering). See 2019
Memorandum, 84 Fed. Reg. at 55
n.31; see also MPEP § 2106.05(g).

[d] receiving the update
content items;
Receiving the update content items is
insignificant extra-solution activity
(i.e., data gathering). See 2019
Memorandum, 84 Fed. Reg. at 55
n.31; see also MPEP § 2106.05(g).
[e] receiving the highlight
data items, the highlight data
items generated by one or
more first-pass ranking
modules of a gems service,
the highlight data items
organized into the groups,
each of the groups associated
with one of the update
content items;

Receiving the highlight data items is
insignificant extra-solution activity
(i.e., data gathering). See 2019
Memorandum, 84 Fed. Reg. at 55
n.31; see also MPEP § 2106.05(g).
Abstract Idea: Generating the
highlight data items by one or more
first-pass ranking modules of a gems
service, the highlight data items
organized into the groups, each of
the groups associated with one of the
update content items can be
performed alternatively by a person
as a mental process. See 2019
Memorandum 52.

[f] receiving modified
ranking scores for the update
content items, the modified
ranking scores based on a
combination of ranking
scores determined for the
Receiving modified ranking scores
for the update content items is
insignificant extra-solution activity
(i.e., data gathering). See 2019
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Independent Claim 1 2019 Memorandum
update content items and
ranking scores determined for
each corresponding group of
highlight data items;
Memorandum, 84 Fed. Reg. at 55
n.31; see also MPEP § 2106.05(g).

[g] selecting the actions for
each of the combinations of
update content items and
highlight data items from a
plurality of actions; and
Abstract Idea: Selecting the actions
for each of the combinations of
update content items and highlight
data items from a plurality of actions
can be performed alternatively by a
person as a mental process. See
2019 Memorandum, 84 Fed. Reg. at
52.

[h] performing the presenting
of the interactive user
interface on the client device
of the user, the presenting
including sorting the
combinations of the update
content items and the groups
of highlight data items
according to their modified
ranking scores.
Performing the presenting of the
interactive user interface on the
client device of the user is
insignificant post-solution activity
(i.e., data presentation). See 2019
Memorandum, 84 Fed. Reg. at 55
n.31; see also MPEP § 2106.05(g).

“An abstract idea can generally be described at different levels of
abstraction.” Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir.
2016). Merely combining several abstract ideas does not render the
combination any less abstract. See RecogniCorp, LLC v. Nintendo Co., 855
F.3d 1322, 1327 (Fed. Cir. 2017) (“Adding one abstract idea (math) to
another abstract idea . . . does not render the claim non-abstract.”);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94 (Fed. Cir.
2016) (determining the pending claims were directed to a combination of
abstract ideas).
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Because claim 1 recites the abstract ideas identified in Table One,
supra, and because remaining independent claims 8 and 15 recite similar
language of commensurate scope, we conclude all claims 1–20 on appeal
recite an abstract idea, as identified above, under Step 2A, Prong One, we
proceed to Step 2A, Prong Two.

2019 Memorandum, Step 2A, Prong Two
Integration of the Judicial Exception into a Practical Application

Pursuant to the 2019 Memorandum, we consider whether there are
additional elements set forth in the claims that integrate the judicial
exception into a practical application. See 2019 Memorandum, 84 Fed. Reg.
at 54–55.
Additional Generic Computer Limitations
As emphasized in bold in Table One, supra, we note the additional
generic computer components recited in claim 1, for example: “an
interactive user interface” and “a client device” of a user.
We further note the supporting exemplary, non-limiting descriptions
of generic computer components in the Specification, for example, at
paragraph 17:
As shown in FIG. 1, the front end comprises a user
interface module (e.g., a web server) 14, which receives requests
from various client-computing devices, and communicates
appropriate responses to the requesting client devices. For
example, the user interface module(s) 14 may receive requests in
the form of Hypertext Transport Protocol (HTTP) requests, or
other web-based, application programming interface (API)
requests. The client devices (not shown) may be executing
conventional web browser applications, or applications that have
been developed for a specific platform to include any of a wide
variety of mobile devices and operating systems.
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Spec. ¶ 17 (emphasis added).
We emphasize that McRO, Inc. v. Bandai Namco Games America
Inc., 837 F.3d 1299 (Fed. Cir. 2016), guides: “[t]he abstract idea exception
prevents patenting a result where ‘it matters not by what process or
machinery the result is accomplished.’” 837 F.3d at 1312 (quoting O’Reilly
v. Morse, 56 U.S. 62, 113 (1854)) (emphasis added). See supra, Table One.

MPEP § 2106.05(a)
Improvements to the Functioning of a Computer or
to Any Other Technology or Technical Field

Appellant contends:
Here, the claims at issue are integrated into a practical
application; for example, the claims at issue recite, in part,
“presenting an interactive user interface on a client device of a
user, the interactive user interface including user interface
elements for combinations of update content items and groups of
highlight data items corresponding to the update content items,
the user interface also including user interface elements for
actions relevant to each of the combinations” and “performing
the presenting of the interactive user interface on the client
device of the user, the presenting including sorting the
combinations of the update content items and the groups of
highlight data items according to their modified ranking scores.”

Appeal Br. 11 (emphasis added).
However, we find the absence of details in the Specification regarding
the claimed “interactive user interface” indicates that the user interface is a
conventional generic computer component. For example:

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As shown in FIG. 1, the front end comprises a user
interface module (e.g., a web server) 14, which receives requests
from various client-computing devices, and communicates
appropriate responses to the requesting client devices. For
example, the user interface module(s) 14 may receive requests in
the form of Hypertext Transport Protocol (HTTP) requests, or
other web-based, application programming interface (API)
requests.
Spec. ¶ 17 (emphasis added).
Appellant additionally cites to paragraph 6 of the Specification in
support of the contention that “[a]s described in the as-filed specification,
this user interface solves a problem with prior art systems.” Appeal Br. 11.
However, as set forth in MPEP § 2106.05(a):
To show that the involvement of a computer assists in
improving the technology, the claims must recite the details
regarding how a computer aids the method, the extent to which
the computer aids the method, or the significance of a computer
to the performance of the method. Merely adding generic
computer components to perform the method is not sufficient.
Thus, the claim must include more than mere instructions to
perform the method on a generic component or machinery to
qualify as an improvement to an existing technology.
(Emphasis added).
Here, we find the argued portion of paragraph 6 of the Specification
does not explain how the claims “recite the details regarding how a
computer aids the method, the extent to which the computer aids the method,
or the significance of a computer to the performance of the method.” MPEP
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§ 2106.05(a) (emphasis added).9
Moreover, we find the absence of detail regarding the claimed “client
device of a user” (claim 1) and “computer processors” and “computer
memories” (system independent claim 8), as found in the supporting
portions of the Specification, indicates that the above-mentioned elements
are generic computer components. For example: “The client devices (not
shown) may be executing conventional web browser applications, or
applications that have been developed for a specific platform to include any
of a wide variety of mobile devices and operating systems.” Spec. ¶ 17. See
Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315, 1331 (Fed.
Cir. 2017) (“The claimed mobile interface is so lacking in implementation
details that it amounts to merely a generic component (software, hardware,
or firmware) that permits the performance of the abstract idea, i.e., to
retrieve the user-specific resources.”).
Although Appellant also argues the 2019 Memorandum in the Reply
Brief (1–5), Appellant has not sufficiently explained how the recited generic
computer components (including the claimed “client device of a user” (claim
1) and “computer processors” and “computer memories” (claim 8) include
more than mere instructions to perform the recited functions to demonstrate
an improvement to an existing technology.
An improved abstract idea is still an abstract idea. See Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 90 (2012)

9 Regardless of the general contentions and imputed intended meanings
articulated by Appellant in the Brief(s), “[i]t is the claims that measure the
invention.” See SRI Int’l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107,
1121 (Fed. Cir. 1985) (en banc) (citations and emphasis omitted).
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(holding that a novel and nonobvious claim directed to a purely abstract idea
is, nonetheless patent-ineligible). See also Synopsys, 839 F.3d at 1151 (“[A]
claim for a new abstract idea is still an abstract idea.”) (Emphasis omitted).
Moreover, the “‘mere automation of manual processes using generic
computers’ . . . ‘does not constitute a patentable improvement in computer
technology.’” Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1378, 1384
(Fed. Cir. 2019) (quoting Credit Acceptance Corp. v. Westlake Servs., 859
F.3d 1044, 1055 (Fed. Cir. 2017).
Simply adding generic hardware and computer components to
perform abstract ideas does not integrate those ideas into a practical
application, because the “mere recitation of a generic computer cannot
transform a patent-ineligible abstract idea into a patent-eligible invention.”
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 223 (2014); see 2019
Memorandum, 84 Fed. Reg. at 55 n.30. See also 2019 Memorandum, 84
Fed. Reg. at 55 (“merely includ[ing] instructions to implement an abstract
idea on a computer” is an example of when an abstract idea has not been
integrated into a practical application).
Accordingly, on this record, we conclude independent claim 1, and
independent claims 8 and 15, which recite similar limitations of
commensurate scope, do not recite an improvement to the functionality of a
computer or other technology or technical field. See MPEP § 2106.05(a).

MPEP §§ 2106.05(c), 2106.05(e)
Appellant advances no arguments that any of the method claims on
appeal are tied to a particular machine, or transform an article to a different
state or thing. See MPEP § 2106.05(c).
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MPEP § 2106.05(e) Meaningful Claim Limitations
Nor does Appellant advance further substantive, persuasive arguments
as to any particular “meaningful” claim limitations, such as those of the
types addressed under MPEP § 2106.05(e), that impose meaningful limits on
the judicial exception.10
MPEP § 2106.05(f)
Merely including instructions to implement
an abstract idea on a computer, or
Merely using a computer as a tool
to perform an abstract idea
We conclude Appellant’s claimed invention merely implements the
abstract idea using instructions executed on generic computer components,
as depicted in bold type in Table One, and as supported in our reproduction
of the Specification, paragraph 17, supra. Thus, we conclude Appellant’s
claims merely use a programmed computer as a tool to perform an abstract
idea.
MPEP § 2106.05(g)
Adding insignificant extra-solution activity
to the judicial exception

As mapped in the right column of Table One, supra, we conclude that
representative independent claim 1 recites extra or post-solution activities
that courts have determined to be insufficient to transform judicially

10 See 2019 Memorandum, 84 Fed. Reg. at 55, citing MPEP § 2106.05(e):
“[A]pply[ing] or us[ing] the judicial exception in some other meaningful
way beyond generally linking the use of the judicial exception to a particular
technological environment, such that the claim as a whole is more than a
drafting effort designed to monopolize the exception.” (Emphasis added).
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excepted subject matter into a patent-eligible application. See MPEP §
2106.05(g); 2019 Memorandum, 84 Fed. Reg. at 55 n.31.
For example, see Claim 1, Table One, supra, function “d”:

[d] receiving the update
content items;
Receiving the update content items is
insignificant extra-solution activity
(i.e., data gathering). See 2019
Memorandum, 55 n.31; see also
MPEP § 2106.05(g).

See buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir.
2014) (“That a computer receives and sends the information over a
network—with no further specification—is not even arguably inventive.”).
That is, these limitations use a generic computer component that performs a
generic computer function as a tool to perform an abstract idea. Thus, these
limitations do not integrate the abstract idea into a practical application. See
Alice Corp. Pty. Ltd. v. CLS Bank Intern, 573 U.S. 208, 223–24 (2014).
Instead, these limitations perform insignificant extra-solution activities. Cf.
Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1242 (Fed. Cir. 2016)
(agreeing with the Board that printing and downloading generated menus are
insignificant post-solution activities). See also Two-Way Media Ltd. v.
Comcast Cable Communications, LLC, 874 F.3d 1329, 1341 (Fed. Cir.
2017) (Streaming audio/visual data over a communications system like the
Internet held patent ineligible.).

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MPEP § 2106.05(h)
Generally linking the use of the judicial exception to a particular
technological environment or field of use

The Supreme Court guides: “the prohibition against patenting
abstract ideas ‘cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment’ or [by] adding
‘insignificant postsolution activity.’” Bilski v. Kappos, 561 U.S. 593, 610–
12 (2010) (quoting Diamond v. Diehr, 450 U.S. 175, 191–92 (1981)).
Appellant advances no arguments regarding a lack of preemption in
either the Appeal Brief or the Reply Brief.
Nor do claims 1–20 on appeal present any other issues as set forth in
the 2019 Memorandum regarding a determination of whether the additional
generic computer elements integrate the judicial exception into a practical
application. See 2019 Memorandum, 84 Fed. Reg. at 55.
Thus, under Step 2A, Prong Two (MPEP §§ 2106.05(a)–(c) and (e)–
(h)), we conclude claims 1–20 do not integrate the judicial exception into a
practical application. Therefore, we proceed to Step 2B, The Inventive
Concept.

The Inventive Concept – Step 2B
Under the 2019 Memorandum, 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 adds a specific limitation
beyond the judicial exception that is not “well-understood, routine,
conventional” in the field (see MPEP § 2106.05(d)); or, simply appends
well-understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception.
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Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018)
Berkheimer was decided by the Federal Circuit on February 8, 2018.
On April 19, 2018, the PTO issued the Memorandum titled: “Changes in
Examination Procedure Pertaining to Subject Matter Eligibility, Recent
Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.)” (hereinafter
“Berkheimer Memorandum”).11 The Berkheimer Memorandum provided
specific requirements for an Examiner to support with evidence any finding
that claim elements (or a combination of elements) are well-understood,
routine, or conventional.
Under Step 2B, the Examiner finds the claims perform steps:
which are recited at a high level of generality and are recited as
performing generic computer functions routinely used in
computer applications. Generic computer components recited as
performing generic computer functions that are well-
understood, routine and conventional activities amount to no
more than implementing the abstract idea with a computerized
system.
Final Act. 7 (emphasis added).
Appellant contends: “Here, the claim limitations do, in fact, recite a
particular process of achieving the desired goal. This particular process
involves more than performance of well-understood, routine, and
conventional activities, as discussed above, and the Examiner has provided
no evidence to the contrary, such as one of the four forms of evidence
required under Berkheimer.” Appeal Br. 12 (emphasis added).

11 Available at https://www.uspto.gov/sites/default/files/documents/memo-
berkheimer-20180419.PDF.
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The Examiner further explains the evidentiary basis for the rejection
in the Answer:
there are several court decisions for evidentiary support,
including the electronic record keeping of Alice, arranging a
hierarchy of groups, sorting information, eliminating less
restrictive pricing information and determining the price,
Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1331,
115 USPQ2d 1681, 1699 (Fed. Cir. 2015) except here, instead of
pricing information, content data and highlight data of one’s
social network are grouped and sorted.
Ans. 9 (emphasis added).
Although Appellant again argues in the Reply Brief (4) that the
Examiner has not provided any Berkheimer evidence, we find the Appellant
does not traverse or otherwise rebut the Examiner’s reliance on the Versata
Dev. Group case authority, as provided in the Answer (9). Arguments not
made are waived. See 37 C.F.R. § 41.37(c)(1)(iv).
Therefore, on the record before us, Appellant has not shown that the
claims on appeal add a specific limitation beyond the judicial exception that
is not well-understood, routine, and conventional, when the claim limitations
are considered both individually and as an ordered combination. See MPEP
§ 2106.05(d).
In light of the foregoing and under the 2019 Memorandum, we
conclude that each of Appellant’s claims 1–20, considered as a whole, is
directed to a patent-ineligible abstract idea that is not integrated into a
practical application, and does not include an inventive concept. Therefore,
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we sustain the Examiner’s Rejection A under 35 U.S.C. § 101 of claims
1–20. 12

Rejection B of Claims 1–20 under § 103
Claim Grouping
Based on Appellant’s arguments (Appeal Br. 14–20) and our
discretion under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of
obviousness Rejection B of grouped claims 1–20 on the basis of
representative claim 1. We highlight and address specific findings and
arguments for emphasis as follows.
Appellant argues the Examiner’s rejection of claim 1 under 35 U.S.C.
§ 103 as being obvious over the teachings and suggestions of Hoagland is in
error. See Appeal Br. 14–17; Reply Br. 5–7.
Appellant’s contentions present us with the following issue:
Did the Examiner err in finding Hoagland teaches or suggests the
recited limitations within the meaning of representative claim 1?

At the outset, we find the Examiner provides sufficiently detailed
mappings of the claim limitations to the corresponding features found in the

12 For the reasons discussed above, grouped claims 2–20 fall with
representative independent claim 1 under 35 U.S.C. § 101. Regarding
Appellant’s discussion of the dependent claims (see Appeal Br. 13–14), a
statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim. See 37
C.F.R. § 41.37(c)(1)(iv).

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cited references to support the prima facie case of obviousness. The Federal
Circuit guides, “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).
[A]ll that is required of the office to meet its prima facie burden
of production is to set forth the statutory basis of the rejection
and the reference or references relied upon in a sufficiently
articulate and informative manner as to meet the notice
requirement of [35 U.S.C.] § 132. As the statute itself instructs,
the examiner must “notify the applicant,” “stating the reasons
for such rejection,” “together with such information and
references as may be useful in judging the propriety of
continuing prosecution of his application.”
In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011).
Here, the Examiner’s burden of establishing a prima facie case is met
by “adequately explain[ing] the shortcomings [the USPTO] perceives so that
the applicant is properly notified and able to respond.” Hyatt, 492 F.3d at
1370.
In reviewing the record, we find the Examiner has met the notice
requirement of 35 U.S.C. § 132(a) by providing a detailed statement of
rejection with sufficiently clear mappings and explanations (Final Act. 9–
12). Moreover, the Examiner further explains the basis for the rejection in
the Answer (9–13) by clarifying the reading of the disputed limitations of
representative claim 1 on the corresponding features found in Hoagland’s
detailed descriptions and drawings.
We note it is only “when a rejection is so uninformative that it
prevents the applicant from recognizing and seeking to counter the grounds
for rejection” that the prima facie burden has not been met and the rejection
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violates the minimal requirements of 35 U.S.C. § 132. Chester v. Miller,
906 F.2d 1574, 1578 (Fed. Cir. 1990). Such is not the case here.
In traversing the Examiner’s rejection of representative claim 1, we
note Appellant (Appeal Br. 14–17): (1) reproduces portions of the Abstract,
and paragraphs 49 and 217 of the Hoagland reference, (2) merely asserts that
one or more claim limitations are not taught or suggested by Hoagland, and
(3) fails to respond to the detailed, specific findings set forth in the rejection
of claim 1, wherein the Examiner maps each of the contested claim
limitations to corresponding descriptions or features found in Hoagland. See
Final Act. 9–11.
In the Answer, the Examiner concludes: “Appellants’ arguments fail
to comply with 37 CFR 1.111(b) because they amount to a general allegation
that the claims define a patentable invention without specifically pointing out
how the language of the claims patentably distinguishes them from the
references.” Ans. 9 (emphasis added).
Because Appellant fails to respond to the detailed, specific findings
the Examiner sets forth in support of the rejection of claim 1, we find
Appellant’s arguments do not meet the burden of showing error in the
Examiner’s prima facie case of obviousness. See Appeal Br. 14–17.
To the extent Appellant reproduces the Abstract, and paragraphs 49
and 217 of Hoagland, and selectively argues against only those teachings
(Appeal Br. 16; Reply Br. 5–6), Appellant fails to adequately traverse the
Examiner’s specific findings, by pointing out the perceived errors in the
Examiner’s action and explaining why the Examiner has erred. Mere
conclusory statements that are unsupported by factual evidence are entitled
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to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir.
1997); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
Therefore, we find Appellant has failed to substantively traverse the
merits of the rejection by specifically explaining why the Examiner erred
(Ans. 9). Under our procedural rule: “A statement which merely points out
what a claim recites will not be considered an argument for separate
patentability of the claim.” 37 C.F.R. § 41.37(c)(1)(iv).13
In the Reply Brief, Appellant essentially restates the argument that
“the highlights feed of Hoagland simply does not teach or suggest ‘user
interface elements for combinations of update content items and groups of
highlight data items corresponding to the update content items, the user
interface also including user interface elements for actions relevant to each
of the combinations.’” See Reply Brief 5–6 (emphasis added).
However, we note Figure 10A of Hoagland that depicts the grouping
and displaying of highlights (feeds), based upon their sources (“Inner Circle
Highlights 1002,” “Global Influence Highlights,” and “Serendipity
Highlights 1008”), together with any associated links (e.g., “expand” link
1004: “A user may also expand the highlights from any particular highlight
source by clicking a link such as link 1004.”). See Hoagland ¶ 181. See
also paragraph 180 of Hoagland: “In the example of FIG. 10A, the

13 See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the
Board reasonably interpreted Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art.”).
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highlights are displayed with an indication of their highlight source; for
example, an indication 1002 of inner circle highlights is shown.”
Given this evidence (id.), we find Hoagland teaches or at least
suggests the contested limitation within the meaning of representative
claim 1.
Moreover, “the question under 35 USC 103 is not merely what the
references expressly teach but what they would have suggested to one of
ordinary skill in the art at the time the invention was made.” Merck & Co. v.
Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (emphasis added)
(quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)); see also MPEP
§ 2123.
This reasoning is applicable here. Because Appellant essentially
repeats the same pattern of argument with respect to the dependent claims
(See Appeal Br. 17–19 —merely reciting the claim language and asserting it
is not taught by the cited references), we find Appellant has not met the
burden of coming forward with evidence or argument to rebut the
Examiner’s legal conclusion of obviousness. Arguments not made are
considered waived. See 37 C.F.R. § 41.37(c)(1)(iv).
On this record, with due consideration to the insufficiency of the
arguments presented, we find Appellant has not shown error in the
Examiner’s prima facie case of obviousness. Therefore, we find a
preponderance of the evidence supports the Examiner’s underlying factual
findings and ultimate legal conclusion of obviousness regarding
representative claim 1.
Accordingly, we sustain the Examiner’s obviousness Rejection B of
independent representative claim 1, and also independent claims 8 and 15,
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which recite similar limitations of commensurate scope. See Final Act. 9.
All remaining dependent claims on appeal fall with representative
independent claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).

CONCLUSIONS
Under the Director’s 2019 Memorandum, as governed by relevant
case law, we conclude that all claims 1–20, rejected under 35 U.S.C. § 101
(Rejection A), are directed to patent-ineligible subject matter.
The Examiner did not err in rejecting claims 1–20 as being obvious
under 35 U.S.C. § 103 (Rejection B), over Hoagland.

DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–20 101 Eligibility 1–20
1–20 103 Hoagland 1–20
Overall
Outcome
1–20

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)(1)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED