Martin Schmidt et al.

Patent Trials and Appeals Board

Mar 18, 2021

2020000668 (P.T.A.B. Mar. 18, 2021)

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.
12/491,825 06/25/2009 Martin Schmidt 77434-30 / ELV0014PA 6111
146524 7590 03/18/2021
Dinsmore & Shohl LLP
255 E. Fifth Street
Suite 1900
Cincinnati, OH 45202
EXAMINER
BAHL, SANGEETA
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
03/18/2021 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):
CincyPAIR@dinsmore.com
elise.merkel@dinsmore.com
jennifer.baker@dinsmore.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MARTIN SCHMIDT and MARIO DIWERSY1
____________

Appeal 2020-000668
Application 12/491,825
Technology Center 3600
____________

Before HUBERT C. LORIN, MICHAEL J. STRAUSS,
and AARON W. MOORE, Administrative Patent Judges.

MOORE, Administrative Patent Judge.

DECISION ON APPEAL

1 Elsevier Inc. is the real party in interest (see App. Br. 2) and “Appellant” is
the “applicant” of 37 C.F.R. § 1.42(a).
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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1, 2, 4, 6–8, 10–14, 16, 17, and 20–25, which are all of the pending
claims.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
THE INVENTION
The application is directed to “methods and systems for social
networking.” (Spec. ¶ 2.) Claim 1, which reads as follows, exemplifies the
subject matter now on appeal:
1. A computer-implemented method for disambiguation,
comprising:
receiving, at a computer interface over a distributed network
in a special purpose computing system environment, a plurality
of records each comprising an identifier shared by a plurality of
entities;
determining, by a program controlled data processor within
a special purpose computing system configuration, a plurality
of publications associated with the identifier, wherein each of
the plurality of publications comprises a plurality of attributes;
constructing, by said program controlled data processor
within the special purpose computing system configuration, a
plurality of clusters of publications, wherein each cluster is
based on at least one of the plurality of attributes of each
publication, wherein one of the plurality of attributes includes a
disambiguated co-author, and said construction comprises:

2 In an earlier appeal, we affirmed the rejection of claims 1, 2, 4, 6–14, 16,
17, and 20–23 under 35 U.S.C. § 101, affirmed the rejection of claims 1, 2,
4, and 6–8 under 35 U.S.C. § 103, and reversed the rejection of claims 9–14,
16, 17, and 20–23 under 35 U.S.C. § 103(a). The claims have since been
amended.
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comparing a first of the plurality of publications to the
remaining plurality of publications;
disambiguating a co-author through a frequency
threshold such that a record is skipped based upon a
computation wherein a co-author is associated with more
records than the frequency threshold;
determining if a similarity is above a predetermined
threshold; and
clustering the publications having a similarity above the
determined threshold;
associating, in computer memory within the special purpose
computing system configuration, each of the plurality of clusters
with a different one of the plurality of entities; and
outputting, over the distributed network in the special purpose
computing system environment, one of the plurality of clusters and
the identifier.
THE REJECTION
Claims 1, 2, 4, 6–8, 10–14, 16, 17, and 20–25 stand “rejected under 35
U.S.C 101 because the claimed invention is directed to a judicial exception
(i.e., a law of nature, a natural phenomenon, or an abstract idea) without
significantly more.” (Final Act. 2.)
ANALYSIS
By statute, a patentable invention must be a “new and useful process,
machine, manufacture, or composition of matter, or [a] new and useful
improvement thereof.” 35 U.S.C. § 101. The Supreme Court has identified
implicit exceptions to patentability––laws of nature, natural phenomena, and
abstract ideas, and, in Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217
(2014), and Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S.
66 (2012), provided a framework for identifying ineligible claims. The
“Mayo/Alice” evaluation has two steps: (1) determining if a claim is
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directed to an ineligible concept, and, if so, (2) determining if one or more
claim elements is sufficient make the claim “significantly more” than the
ineligible concept itself. See Alice, 573 U.S. at 217–18.
The Patent Office has published Guidance for applying the
Mayo/Alice evaluation. See 2019 Revised Patent Subject Matter Eligibility
Guidance (the “2019 Guidance”), 84 Fed. Reg. 50. The Guidance instructs
us first to look at whether a claim recites a judicial exception, the broad
categories of which are defined as mathematical concepts, certain methods
of organizing human activity, and mental processes.3 See 84 Fed. Reg. at 54
(Step 2A, Prong One).
If we find a judicial exception, we determine whether it is “integrated
into a practical application” in the claim. See 84 Fed. Reg. at 54–55 (Step
2A, Prong Two); see also MPEP4 § 2106.05(a)–(c), (e)–(h) (non-
exhaustively listing ways in which a practical application may be found).
“Integrated into a practical application” means that the claim includes “a
meaningful limit on the judicial exception, such that the claim is more than a

3 “Mathematical concepts” includes “mathematical relationships,
mathematical formulas or equations, [and] mathematical calculations”;
“Certain methods of organizing human activity” includes “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 social activities, teaching, and
following rules or instructions)”; “Mental processes” includes “concepts
performed in the human mind (including an observation, evaluation,
judgment, opinion).” 84 Fed. Reg. at 52.
4 The Manual of Patent Examining Procedure (9th ed. Rev. 10.2019, rev.
June 2020).
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drafting effort designed to monopolize the judicial exception.” 84 Fed. Reg.
at 54. For example, a practical application may exist in an improvement in
the functioning of a computer or other technology, a particular machine or
manufacture integral to the claim, or transformation or reduction of an
article to a different state or thing. See id. at 55. However, merely using a
computer to perform an abstract idea, adding insignificant extra-solution
activity, or only generally linking to a particular technological environment
or field are not sufficient for a practical application. See id.
If a claim recites a judicial exception that is not integrated into a
practical application, the claim is directed to an abstract idea. In that case,
we further look at whether the claim “[a]dds a specific limitation” beyond
the judicial exception that is not “well-understood, routine, conventional.”
See 84 Fed. Reg. at 56 (Step 2B); see also MPEP § 2106.05(d). In the
absence of such an addition, a claim that has reached this stage of the
analysis is ineligible.
Here, claim 1 recites a “computer-implemented method for
disambiguation” that includes (a) receiving a plurality of records each
comprising an identifier shared by a plurality of entities; (b) determining a
plurality of publications associated with the identifier and having a plurality
of attributes; (c) constructing clusters of publications based on the attributes,
including a “disambiguated co-author”; (d) associating each of the clusters
with a different one of the entities; and (e) outputting one of the plurality of
clusters and the identifier. The claim further requires that the “constructing”
includes (i) comparing a first of the publications to the remaining
publications; (ii) “disambiguating a co-author” through a frequency
threshold, such that a record is skipped if a co-author is associated with more
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records than the frequency threshold; (iii) determining if a similarity is
above a predetermined threshold; and (iv) clustering the publications having
a similarity above the determined threshold.
Essentially, the claims recite a method for grouping publications by
attribute, but not using co-author as one of the attributes if the co-author
appears too frequently.
The Examiner found the claims directed to “an idea standing alone
such as an uninstantiated concept, plan or scheme” or a “mental process.”
(Final Act. 3.) The Examiner analogized the claims to those found ineligible
by the Federal Circuit in cases involving claims concerning the collection
and manipulation of data. (See id.) The Examiner explained that “the courts
have held that concepts relating to the collection of data (such as receiving
an identifier; determin[ing] publications associated with identifier) and the
use of the collected data in combination with rules (such as disambiguating a
co-author . . . wherein a co-author is associated with more records than the
frequency threshold, [and] determin[ing] if similarity is above a
predetermined threshold) in decision making (such as cluster[ing] the
publications if similarity above threshold) are abstract ideas.” (Id., emphasis
omitted).
The Examiner further found that the claims “do not include additional
elements that are sufficient to amount to significantly more than the judicial
exception because the additional elements or combination of elements in the
independent claims are recitation of generic computer structure (i.e. a
processor to execute instructions to perform the method), which serves to
perform generic computer functions that are well-understood, routine, and
conventional activities previously known to the pertinent industry, and do
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not add a meaningful limitation to the abstract idea because they would be
routine in any computer implementation.” (Final Act. 3.)
Abstract Idea (Step 2A, Prong 1)5
Appellant argues that the claims “are not directed to an abstract idea,
such as a fundamental economic practice, a method of organizing human
activities, an idea of itself, or a mathematical relationship/formula, but
instead are directed to specific applications of computer-implemented legal
data accessing systems and computer-implemented methods of providing
information to new and useful ends.” (App. Br. 12.) According to
Appellant, “[s]uch computer-implemented systems and methods are
inextricably tied to computer technology and distinct from the types of
concepts typically found as abstract.” (Id.) Appellant also argues that the
claims are not abstract because they “recite more than a mere result” as,
“[i]nstead, they recite specific steps . . . that accomplish the desired result.”
(Id. at 13, emphasis omitted.) Appellant also tries to distinguish the cases
cited by the Examiner and argues that the claims are similar to the eligible
claims in Enfish, LLC v. Microsoft Corporation, 822 F.3d 1327 (Fed. Cir.
2016). (Id. at 16–17). Appellant additionally argues that the claims “do not
preempt basic tools of science or technology.” (Id. at 18.) Finally,
Appellant argues that the claims are not directed to an abstract idea for the
reasons identified in Trading Technologies International, Inc. v. CQG, Inc.,
675 F. App’x 1001 (Fed. Cir. 2017). (See id. at 18–19).

5 Following the lead of the Examiner and Appellant, we address subject
matter eligibility in the context of claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
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We agree with the Examiner that the claims “recite” an abstract idea,
because “[c]laims directed to generalized steps to be performed on a
computer using conventional computer activity are not patent eligible.”
Two-Way Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329,
1337 (Fed. Cir. 2017)).
We do not agree that Enfish is helpful to Appellant. The claims at
issue in that case were not abstract because they recited a “self-referential
table” that was “a specific type of data structure designed to improve the
way a computer stores and retrieves data in memory.” Enfish, 822 F.3d. at
1339. Appellant’s claimed process does not “improve the way a computer
stores and retrieves data in memory” or otherwise improve how the
computer itself operates; instead, it uses generic computer programming
techniques to implement an organizational system that otherwise could be
done by a person. Id. The Enfish panel distinguished between an eligible
“specific asserted improvement in computer capabilities (i.e., the self-
referential table for a computer database)” and an ineligible “process that
qualifies as an ‘abstract idea’ for which computers are invoked merely as a
tool.” Id. at 1336. Appellant’s claims are solidly in the latter category.
Trading Tech is also unavailing. In that case, the Federal Circuit
agreed with the District Court’s finding of eligibility under Step 1 because
the claims “require[d] a specific, structured graphical user interface paired
with a prescribed functionality directly related to the graphical user
interface’s structure that [was] addressed to and resolve[d] a specifically
identified problem in the prior state of the art.” 675 F. App’x at 1004.
Appellant’s claims are not directed to a new type of user interface, and the
Federal Circuit specifically distinguished, as ineligible, claims that, like
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Appellant’s, were “directed to the ‘process of gathering and analyzing
information of a specified content, then displaying the results,’ without ‘any
particular assertedly inventive technology for performing those functions.’”
Id. at 1005 (quoting Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350,
1354 (Fed. Cir. 2016)).
We also are unpersuaded by Appellant’s arguments concerning
preemption, because “questions on preemption are inherent in and resolved
by the § 101 analysis.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d
1371, 1379 (Fed. Cir. 2015). “While preemption may signal patent
ineligible subject matter, the absence of complete preemption does not
demonstrate patent eligibility.” Id.
Because we agree with the Examiner that the claims recite an abstract
idea, we proceed to Prong Two of Step 2A to determine if the idea is
integrated into a practical application, in which case the claims as a whole
would not be directed to merely an abstract idea.
Practical Application (Step 2A, Prong 2)
As noted, the “integrated into a practical application” inquiry looks at
whether a claim includes “a meaningful limit on the judicial exception,” to
ensure that “the claim is more than a drafting effort designed to monopolize
the judicial exception.” 84 Fed. Reg. at 54. In this case, we have generic
computer hardware with instructions for causing a computer to perform a
business process. The claims thus recite methods that “merely use[] a
computer as a tool to perform an abstract idea,” id. at 55, and, therefore, lack
integration into a practical application.
Appellant asserts that the claims are integrated into a practical
application because they “recite methods and new techniques for,
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‘disambiguating co-authorship through a frequency threshold such that one
of the records is skipped based upon a computation wherein a co-author to
which a connection relates is associated with more records than the
frequency threshold.’” (App. Br. 19.) This is not persuasive. Appellant
identifies what may be a novel aspect of the abstract idea, but does not
explain how or why the presence of that individual abstract feature means
that the claims are “integrated into a practical application” as that phrase is
used in the 2019 Guidance.
The claims describe a system that uses common computer hardware to
perform a process that could otherwise be performed mentally or by hand,
such as with a pencil and paper. The Specification describes how the
invention may be implemented using standard hardware and programming
languages. (See Spec. ¶¶ 15–27.) There is no new hardware or new
arrangement or use of old hardware. The generic computer hardware and
software described and recited in the claims (“computer interface over a
distributed network in a special purpose computing system environment”;
“processor within a special purpose computing system configuration”) are
not sufficient to make the claims patent eligible.
We do not find “an improvement in the functioning of a computer or
other technology,” because the generic computer hardware and software are
used for their ordinary purposes. We do not find “a particular machine or
manufacture integral to the claim,” because a general purpose computer is
not enough. And we do not find “transformation or reduction of an article to
a different state or thing,” because only intangible data is changed or
manipulated.
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We thus conclude that the claims lack additional elements that would
integrate the abstract idea into a practical application, agree with the
Examiner that the claim is directed to an abstract idea, and move to Step 2B.
Inventive Concept (Step 2B)
“It is possible that a claim that does not ‘integrate’ a recited judicial
exception is nonetheless patent eligible” as, “[f]or example the claim may
recite additional elements that render the claim patent eligible even though a
judicial exception is recited in a separate claim element.” 84 Fed. Reg. at
56. We need not reconsider in Step 2B the issues addressed in Step 2A, but
do weigh whether the claim “[a]dds a specific limitation or combination of
limitations that are not well-understood, routine, conventional activity in the
field, which is indicative that an inventive concept may be present.” Id.
Appellant argues that “the combination of elements for each claim,
taken individually and as a whole, amount to significantly more than an
abstract idea.” (App. Br. 20.) Appellant then reprints the body of claim 1
and asserts that “these features, taken as a whole, amount to significantly
more than an abstract idea.” (Id. at 20–21, emphasis omitted.) Appellant
also argues that the “nonconventional and non-generic arrangement of claim
features constitutes significantly more than an abstract idea.” (Id. at 22.)
Appellant further argues that “[t]he Office Action does not properly
substantiate the rejection under Step 2B as required under the USPTO Memo
issued April 19, 2018 (‘Berkheimer Memo’).” (App. Br. 22.) Appellant
criticizes the Examiner for referring to the general purpose computers
described in the Specification, arguing that this “simply ignores the claimed
subject matter and improperly imports portions of the specification into the
claims.” (Id. at 23, emphasis omitted.)
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Appellant also argues that the claims constitute “significantly more”
than the abstract idea like the claim that was approved in Amdocs (Israel)
Ltd. v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016). (See App. Br.
24–25.)
We again agree with the Examiner. As explained above, the claims
and Specification describe only generic hardware and software. Because,
after setting those conventional elements aside, we are left with only the
abstract idea of how to manage a business process, we conclude that the
claims do not include additional elements reflecting an inventive concept.
Cf. Parker v. Flook, 437 U.S. 584, 585–86 (1978) (holding claims ineligible
because “[t]he only difference between the conventional methods . . . and
that described in respondent’s application rests in . . . the mathematical
algorithm or formula”). Appellant’s arguments about the combination and
the arrangement are not persuasive because the claims consist of only the
abstract idea implemented on generic hardware. Appellant does not explain,
and we do not see, how or why the claimed features would be considered to
be “significantly more” than the abstract idea.
We are also unpersuaded by Appellant’s arguments concerning
Berkheimer Memo.6 We do not agree that the Examiner erred in consulting
the Specification when evaluating whether the claimed hardware was new or
in a new arrangement. Indeed, page 3 the Berkheimer Memo itself suggests

6 USPTO Memorandum, Changes in Examination Procedure Pertaining to
Subject Matter Eligibility, Recent Subject Matter Eligibility Decision
(Berkheimer v. HP, Inc.) (Apr. 19, 2018), available at
https://www.uspto.gov/sites/default/files/documents/memo-berkheimer-
20180419.PDF (“Berkheimer Memo”).
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citations to “an express statement in the specification . . . that demonstrates
the well-understood, routine, conventional nature of the additional
element(s).” The Examiner did not improperly import portions of the
Specification into the claims. Instead, the Examiner correctly found, and
adequately supported, that “the additional limitations are simply generic
computer (i.e. processor, computer interface, computer memory, network)
functionality, claimed to perform the basic computer functions of: obtaining
data, processing data, and transmitting data - through the program that
enables the steps of the claimed invention.” (Final Act. 5.)
Finally, we also do not agree that Amdocs requires a different result.
The claims in that case “entail[ed] an unconventional technological solution
(enhancing data in a distributed fashion) to a technological problem
(massive record flows which previously required massive databases).” 841
F.3d at 1300. Although those claims included “arguably generic
components,” the claimed “enhancing” limitation “necessarily require[d]
that [the] generic components operate in an unconventional manner to
achieve an improvement in computer functionality.” Id. at 1300–01. Here,
as explained above, the claims recite hardware used in a conventional
manner to implement the abstract idea.
Conclusion
The claims recite an abstract idea, have not been shown to be
integrated into a practical application, and do not include additional
recitations that make them significantly more than the underlying abstract
idea. The Examiner’s rejection of claims 1, 2, 4, 6–8, 10–14, 16, 17, and
20–25 under 35 U.S.C. § 101 is, therefore, sustained.
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DECISION
The rejection of claims 1, 2, 4, 6–8, 10–14, 16, 17, and 20–25 under
35 U.S.C. § 101 is affirmed.
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).
DECISION SUMMARY
Claims
Rejected
35 U.S.C.
§
References/Basis Affirmed Reversed
1, 2, 4, 6–8,
10–14, 16, 17,
20–25
101 Eligibility 1, 2, 4, 6–
8, 10–14,
16, 17, 20–
25

TIME PERIOD FOR 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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED