McLaughlin, Michael

Patent Trials and Appeals Board

Apr 23, 2020

12728121 - (D) (P.T.A.B. Apr. 23, 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.
12/728,121 03/19/2010 Michael McLaughlin 701-P002 4705
68803 7590 04/23/2020
TI Law Group, PC
1055 E Brokaw Road
Suite 30-355
San Jose, CA 95131-2116
EXAMINER
BAHL, SANGEETA
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
04/23/2020 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):
TILGDocket@yahoo.com
aspence@tipatents.com
dthomas@tipatents.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________
Ex parte MICHAEL McLAUGHLIN
____________________

Appeal 2019-002441
Application 12/728,1211
Technology Center 3600
____________________

Before JOHN A. EVANS, JOHN P. PINKERTON, and
MICHAEL M. BARRY, Administrative Patent Judges.

PINKERTON, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1–24, which are all of the claims pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Garage IQ,
LLC. Appeal Br. 1.
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STATEMENT OF THE CASE
Introduction
Appellant generally describes the disclosed and claimed invention as
relating to “notification management and more specifically to notification
management for service providers.” Spec. ¶ 2.2
Claims 1, 8, 14, and 20 are independent. Independent claim 1 is
illustrative of the subject matter on appeal and reads as follows:
1. A system of notification management having a
notification manager, the system assisting a plurality of service
providers that receive at least one product to be serviced by one
of the plurality of service providers for a customer, each of the
plurality of service providers having associated provider
information, comprising:
a notification manager, comprising:
a memory configured to store instructions;
at least one database to store associated provider
information concerning each of the plurality of service
providers; and
a processor configured to execute the instructions
stored in the memory, wherein execution of the
instructions generates a notification based on status
information provided by at least one of the plurality of
service providers, the processor configured to:
receive contact information for the customer
and a designation concerning a service provider
having the at least one product, the designated

2 Our Decision refers to the Final Office Action mailed December 15, 2017
(“Final Act.”), Appellant’s Corrected Appeal Brief filed August 23, 2018
(“Appeal Br.”) and Reply Brief filed January 30, 2019 (“Reply Br.”), the
Examiner’s Answer mailed November 30, 2018 (“Ans.”) and the
Specification filed March 19, 2010 (“Spec.”), as amended on June 11, 2012
and August 28, 2017.
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service provider being selected from the plurality of
service providers stored in the at least one database;
receive a receipt notice from one of the
plurality of service providers in response to the
received contact information for the customer, the
receipt notice including at least an indication
whether the at least one product was received at the
designated service provider;
receive an alert transmission request initiated
by the customer, the alert transmission request
concerning progress of the servicing of the at least
one product associated with the customer by the
designated service provider;
send an alert to the designated service
provider, the alert concerning the customer
associated with the received contact information,
the alert displaying a plurality of alert options, the
plurality of alert options including a plurality of
status options concerning the status of the product;
receive a selection of one of the plurality of
status options and a selected alert option from the
service provider in response to the alert; and
send the generated notification to the
customer, for display on a display of an electronic
device associated with the customer, based on the
selected alert option and the received contact
information.
Appeal Br. A-1–A-2 (Claims App.).
References
Name Reference Date
Janas et al. (Janas) US 2009/0286559 A1 Nov. 19, 2009
Rice et al. (Rice) US 2006/0184381 A1 Aug. 17, 2006
Pandey US 2010/0146558 A1 June 10, 2010
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Name Reference Date
Lundy et al. (Lundy) US 8,331,912 B1 Dec. 11, 2012
Bristow et al. (Bristow) US 8,166,126 B2 April 24, 2012

Rejections on Appeal
The Examiner rejected claims 1–24 under 35 U.S.C. § 101 as being
directed to a judicial exception (i.e., a law of nature, a natural phenomenon,
or an abstract idea) without significantly more. Final Act. 2–5.
The Examiner rejected claims 1–7 and 14–20 under 35 U.S.C.
§ 103(a) as being unpatentable over Janas, Rice, Pandey, and Lundy. Id. at
6–16.
The Examiner rejected claims 8–13 under 35 U.S.C. § 103(a) as being
unpatentable over Janas, Rice, and Pandey. Id. at 16–22.
The Examiner rejected claims 21, 23, and 24 under 35 U.S.C. § 103(a)
as being unpatentable over Janas, Rice, Pandey, Lundy, and Bristow. Id. at
22–23.
The Examiner rejected claim 22 under 35 U.S.C. § 103(a) as being
unpatentable over Janas, Rice, Pandey, and Bristow. Id. at 23–24.

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments in the Appeal Brief (see Appeal Br. 7–48) and the Reply Brief
(see Reply Br. 1–6), and are not persuaded the Examiner has erred. Unless
otherwise noted, we adopt as our own the findings and reasons set forth by
the Examiner in the Office Action from which this appeal is taken (Final
Act. 2–31), and in the Examiner’s Answer (Ans. 3–14), and we concur with
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the conclusions reached by the Examiner. For emphasis, we consider and
highlight specific arguments as presented in the Briefs.
I. REJECTION UNDER 35 U.S.C. § 101
A. Applicable Law

Section 101 of the Patent Act provides that “any new and useful
process, machine, manufacture, or composition of matter, or any new and
useful improvement thereof” is patent eligible. 35 U.S.C. § 101. But the
Supreme Court has long recognized an implicit exception to this section:
“[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) (quoting Ass’n for
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
To determine whether a claim falls within one of these excluded categories,
the Court has set out a two-part framework. The framework requires us first
to consider whether the claim is “directed to one of those patent-ineligible
concepts.” Alice, 573 U.S. at 217. If so, we then examine “the elements of
[the] claim both individually and ‘as an ordered combination’ to determine
whether the additional elements ‘transform the nature of the claim’ into a
patent-eligible application.” Alice, 573 U.S. at 217 (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78, 79 (2012)).
That is, we examine the claim for an “inventive concept,” “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, 573 U.S. at 217–18 (alteration in original) (quoting
Mayo, 566 U.S. at 72–73).
In January 2019, the Patent Office issued guidance about this
framework. See 2019 Revised Patent Subject Matter Eligibility Guidance,
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84 Fed. Reg. 50 (Jan. 7, 2019) (“Revised Guidance”).3 Under the Revised
Guidance, to decide whether a claim is directed to an abstract idea, we
evaluate whether the claim (1) recites one of the abstract ideas listed in the
Revised Guidance (“Prong One”) and (2) fails to integrate the recited
abstract idea into a practical application (“Prong Two”). See Revised
Guidance, 84 Fed. Reg. at 51, 54. If the claim is directed to an abstract idea,
as noted above, we then determine whether the claim has an inventive
concept. The Revised Guidance explains that when making this
determination, we should consider whether the additional claim elements
add “a specific limitation or combination of limitations that are not well-
understood, routine, conventional activity in the field” or “simply append[]
well-understood, routine, conventional activities previously known to the
industry, specified at a high level of generality.” Revised Guidance, 84 Fed.
Reg. at 56.
With these principles in mind, we first analyze whether claim 1 is
directed to an abstract idea.
B. Abstract Idea
The Examiner determines that the recited steps of claim 1, excluding
the recited computing elements, are directed to the abstract idea of
“notification management including a plurality of service providers to
receive at least one product to be serviced by service provider[,] each
provider having associated provider information[,]” and to “receive contact
information for customer and service provider to generating [sic] a

3 See also USPTO, October 2019 Patent Eligibility Guidance Update (Oct.
17, 2019), https://www.uspto.gov/sites/default/files/documents/
peg_oct_2019_update.pdf.
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notification based on the selected alert option.” Final Act. 2; see also
Ans. 5. The Examiner also determines that claim 1 is similar to
court-identified abstract ideas of
[c]ollecting and analyzing information to detect misuse and
notifying a user when misuse is detected4 . . . [,] [c]ollecting
and comparing known information5 . . . , [c]ollecting,
displaying, and manipulating data6 . . . , [c]ollecting
information, analyzing it, and displaying certain results of the
collection and analysis7 . . . [,] comparing new and stored
information and using rules to identify options8 . . . [,]
information . . . obtained and . . . organized and rules . . .
applied to the information to make decisions9 . . . [, and]
information . . . received and rules . . . used to determine
delivery.10

Final Act. 2–3. The Examiner explains that
the courts have held that concepts relating to the collection of
data (such as customer contact information; service provider
information) and the use of the collected data in combination
with rules (such as using information based on selected alert
option) in decision making (such as generating a notification)
are abstract ideas and/or organizing human activities (such as

4 FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94 (Fed.
Cir. 2016).
5 Classen Immunotherapies v. Biogen IDEC, 659 F.3d 1057, 1065–67 (Fed.
Cir. 2011).
6 Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332,
1340 (Fed. Cir. 2017).
7 Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir.
2016).
8 Smart Gene v. Advanced Biological Laboratories, SA, 555 F. App’x. 950,
955 (Fed. Cir. 2014).
9 CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372–73
(Fed. Cir. 2011).
10 Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1313–14
(Fed. Cir. 2016).
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generating rule based tasks/alerts for processing an insurance
claim).
Id. at 3.
Appellant contends the claims are not directed to an abstract idea, but
instead “address particular challenges involved in [alerting] customers” and
provide a
solution . . . rooted in computer technology including memory,
database, and processor structure, as well as operations such as
receiving an alert transmission request from a customer
concerning a product being serviced, sending an alert to a
service provider with alert options and status options; receiving
selection of the status options and the alter option, and then
sending a generated notification to a customer.

Appeal Br. 7, see also Reply Br. 3 (asserting that the claims cannot
reasonably be drawn to patent-ineligible subject matter because they recite
sufficient structure in the form of various computing elements). Appellant
explains that the claims “address a particular challenge involved in
communicating with customers to not lose repeat business and/or customer
referrals” and are “rooted in computer technology in order to overcome the
conventional difficulties associated with communication associated with
customer service.” Reply Br. 2. Appellant submits that, regardless of
whether they use conventional hardware such as a general purpose
computer, the claims are not directed to an abstract idea because their
operations are “specific and detailed” like the patent-eligible claims in
Finjan, Inc. v. Blue Coat Systems, Inc., 879 F.3d 1299 (Fed. Cir. 2018).
Appeal Br. 9–10. Appellant also cites the claims’ “additional
technology-driven operations” as evidence of patent-eligibility in view of
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DDR. Id. at 10 (citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d
1245, 1257 (Fed. Cir. 2014)).
Appellant further contends that “[t]he basis for rejection under § 101
in the Office Action was not adequately explained, and should not pass
muster as a prima facie rejection.” Id. at 7. According to Appellant, “[t]he
Examiner’s analysis shows a pre-ordained decision of ineligible subject
matter and a failure to provide a properly reasoned analysis,” noting that
“nothing permits an Examiner [t]o simply allege an ‘abstract idea’ and
conveniently ignore the claim language.” Id. at 8.
1. USPTO Step 2A, Prong One
Beginning with prong one of the first step of Alice, we must determine
“whether the claims at issue are directed to one of those patent-ineligible
concepts,” including the abstract ideas enumerated in the Revised Guidance.
Alice, 573 U.S. at 217. One of the subject matter groupings identified as an
abstract idea in the Revised Guidance is “[c]ertain methods of organizing
human activity—fundamental economic principles or practices (including
. . . mitigating risk); commercial . . . interactions (including agreements in
the form of contracts; . . . sales activities or behaviors; business relations);
managing personal behavior or relationships or interactions between people
(including . . . following rules or instructions).” See Revised Guidance, 84
Fed. Reg. at 52.
Here, apart from the recited system having “a notification manager,
comprising . . . a memory configured to store instructions; at least one
database to store associated provider information . . . ; . . . a processor
configured to execute the instructions stored in the memory,” and a “display
of an electronic device,” we determine claim 1 recites abstract ideas in the
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categories of “mental processes” and “methods of organizing human
activity.” Claim 1 recites the following steps (with paragraph letters and
tabbing added):
(a) “generate[] a notification based on status
information provided by at least one of the plurality of service
providers”;
(b) “receive contact information for the customer and
a designation concerning a service provider having the at least
one product, the designated service provider being selected
from the plurality of service providers stored in the at least one
database”;
(c) “receive a receipt notice from one of the plurality
of service providers in response to the received contact
information for the customer, the receipt notice including at
least an indication whether the at least one product was received
at the designated service provider”;
(d) “receive an alert transmission request initiated by
the customer, the alert transmission request concerning progress
of the servicing of the at least one product associated with the
customer by the designated service provider”;
(e) “send an alert to the designated service provider,
the alert concerning the customer associated with the received
contact information, the alert displaying a plurality of alert
options, the plurality of alert options including a plurality of
status options concerning the status of the product”;
(f) “receive a selection of one of the plurality of status
options and a selected alert option from the service provider in
response to the alert”; and
(g) “send the generated notification to the customer,
for display on a display of an electronic device associated with
the customer, based on the selected alert option and the
received contact information.”
The functions performed in steps (a)–(g) of claim 1 are “mental
processes” or “certain methods of organizing human activity.” Step (a)
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recites the concept of generating a notification based on status information
provided by a service provider; step (b) recites the concept of receiving
customer contact information and selecting and designating a service
provider from a group of service providers in response to; step (c) recites the
concept of determining and notifying whether a product was received by the
selected service provider in response to the received contact information;
step (d) recites the concept of requesting an alert transmission about the
progress of product being serviced by the service provider; step (e) recites
the concept of alerting the service provider with alert options including
status options about the status of the product; step (f) recites the concept of
selecting a status option and an alert option; and step (g) recites the concept
of sending the generated notification for display based on the selected alert
option and received contact information.
We agree with the Examiner that steps (a)–(g) are similar to court-
identified abstract ideas in the mental processes category such as “collecting
information, analyzing it, and displaying certain results of the collection and
analysis”11 and “collecting and analyzing information to detect misuse and
notifying a user when misuse is detected.”12 See Final Act. 2–3. Claim 1
also resembles other court-identified abstract ideas in the “mental processes”
or “certain methods of organizing human activity” categories, such as
“tailoring . . . content based on information about the user,” 13 “monitoring
locations, movement, and load status of shipping containers within a

11 Elec. Power Grp., 830 F.3d at 1353.
12 FairWarning, 839 F.3d at 1093–94.
13 Affinity Labs of Texas, LLC v. Amazon.com, Inc., 838 F.3d 1266, 1271
(Fed. Cir. 2016) (citing Intellectual Ventures I LLC v. Capital One Bank
(USA), 792 F.3d 1363, 1369 (Fed. Cir. 2015)).
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container-receiving yard, and storing, reporting and communicating this
information in various forms,”14 and “notifying customers that their package
is late, or that it has arrived”—i.e., “delivery notification.”15 See Revised
Guidance, 84 Fed. Reg. at 52, 52 nn.13–15. And, to the extent claim 1
recites the concepts of receiving, storing, sending, and displaying data, these
are common examples of extra-solution activity the courts have determined
insufficient to render an otherwise ineligible claim patent-eligible. See
MPEP § 2106.05(g); Revised Guidance, 84 Fed. Reg. at 55, 55 n.31; see
also Bancorp Servs, L.L.C. v. Sun Life Assur. Co. of Can., 771 F. Supp. 2d
1054, 1066 (E.D. Mo. 2011), aff’d, 687 F.3d at 1266 (explaining that
“storing, retrieving, and providing data . . . are inconsequential data
gathering and insignificant post solution activity”).
Based on the analysis above, we determine that claim 1 recites
abstract ideas in the “mental processes” and “certain methods of organizing
human activity” groupings. See Revised Guidance, 84 Fed. Reg. at 52, 52
nn.13–15. Here, we note that merely combining several abstract ideas does
not render the combination any less abstract. RecogniCorp, LLC v. Nintendo
Co., Ltd., 855 F.3d 1322, 1327 (Fed. Cir. 2017) (“Adding one abstract idea .
. . to another abstract idea . . . does not render the claim non-abstract.”); see
also FairWarning, 839 F.3d at 1093–94 (determining the pending claims
were directed to a combination of abstract ideas).

14 Wireless Media Innovations, LLC v. Maher Terminals, LLC, 100 F. Supp.
3d 405, 413 (D.N.J. 2015), aff’d, 636 F. App’x 1014 (Fed. Cir. 2016).
15 Mobile Telecommunications Techs., LLC v. United Parcel Serv., Inc., 173
F. Supp. 3d 1324, 1331 (N.D. Ga. 2016), aff’d, 708 F. App’x 684 (Fed. Cir.
2018).
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Contrary to Appellant’s arguments, we find the Examiner’s Office
Action was adequately explained, and a prima facie case was made.16 Our
review of the Examiner’s Step 2A analysis indicates that the Examiner
considered the underlying steps of claim 1 as a basis for describing and
explaining the recited abstract ideas. See, e.g., Final Act. 2–3 (describing
concepts recited in claim 1 and explaining their similarity to court-identified
abstract ideas). The Examiner’s approach is consistent with USPTO
guidance and case law precedent, which support reasonably synthesizing the
claim language when identifying a recited abstract idea. See, e.g., Bilski,
561 U.S. at 611 (“Claims 1 and 4 in [P]etitioners’ application explain the
basic concept of hedging, or protecting against risk. . . . The concept of
hedging, described in claim 1 and reduced to a mathematical formula in
claim 4, is an unpatentable abstract idea, just like the algorithms at issue in
Benson and Flook.”).
Appellant asserts that the claims are directed to a solution rooted in
computer technology, but Appellant does not identify—nor do we find—any
persuasive evidence in the claims or Specification to support this assertion.
Rather, as the Examiner explains, the “claims merely invoke[] computers as
a tool to perform an existing process” (Ans. 7), and the Specification casts
the invention not as an improvement to computing or interface technology
itself, but rather as a way to improve customer service by efficiently and
effectively communicating with customers (see Spec. ¶ 3) that uses generic
computing elements as tools. See, e.g., id. ¶¶ 26, 29–31, 35, 37–39, 42, 45,

16 We conclude the Examiner provided an adequate explanation of the
rejection under § 101 and met the notice requirement of 35 U.S.C. § 132.
See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011).
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47, 52, 55–60, Figs. 1, 5, 14, 15 (describing the notification management
system, computing system, data network, and graphical user interface and
their associated functions in no more than generic terms). As is the case
here, the mere nominal recitation of generic computing element(s) does not
take the claim limitations out of the mental processes or certain methods of
organizing human activity groupings. See Rev. Guid., 84 Fed. Reg. at 52
n.14. And while it is true that the claimed computing elements may achieve
results more quickly and accurately as compared to a manual system,
“relying on a computer to perform routine tasks more quickly or more
accurately is insufficient to render a claim patent eligible.” OIP Techs., Inc.
v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015).
Nor are we convinced by Appellant’s assertion that the claims are
“specific and detailed” like the patent-eligible claims in Finjan. The claim
at issue in Finjan was “directed to a method of providing computer security
by scanning a downloadable and attaching the results of that scan to the
downloadable itself in the form of a ‘security profile.’” Finjan, 879 F.3d at
1303. All recited steps of the claim at issue in Finjan included limitations
that processed “a Downloadable” in order to provide a technological
improvement in the use of security technology on the web for handling
suspicious code in the Downloadable. Id. By contrast, as discussed above,
the focus of Appellant’s claim 1 is on a methodology for efficient and
effective customer communications that uses generic computing technology.
While claim 1 may recite specific steps or rules that narrow the recited
abstract idea and limit it to a particular field of use, this alone is not enough
to render the claim non-abstract. See, e.g., Revised Guidance, 84 Fed. Reg.
55, 55 n.32.
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2. USPTO Step 2A, Prong Two
Because we determine that claim 1 recites an abstract idea, we turn to
prong two of the first step of the Alice analysis. See Revised Guidance, 84
Fed. Reg. at 51. In doing so, we consider whether there are any additional
elements beyond the recited abstract idea(s) that, individually or in
combination, “integrate the [abstract idea(s)] into a practical application,
using one or more of the considerations laid out by the Supreme Court and
the Federal Circuit.”17 Id. at 54–55.
Here, the Examiner states that
claims 1–24 have been fully analyzed to determine whether
there are additional limitations recited that amount to
significantly more than the abstract idea. The claims recite
additional limitations of ‘a notification manager comprising a
memory configured to store instructions, a processor
configured to execute the instructions stored in the memory,
display generated notification on electronic device.’ However,
the additional limitations are simply generic computer (i.e.
processor, memory, notification manager) 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
(specification [0028] generic purpose machine). Taking the
additional claimed elements individually and in combination,
the computer components at each step of the process perform
purely generic computer functions. Viewed as a whole, the
claims do not purport to improve the functioning of the
computer itself, or to improve any other technology or technical
field.

17 We acknowledge that some of these considerations may be properly
evaluated under Step 2 of Alice (Step 2B of the Revised Guidance). Solely
for purposes of maintaining consistent treatment within the Office, we
evaluate it under Step 1 of Alice (Step 2A, Prong Two, of the Revised
Guidance). See Revised Guidance, 84 Fed. Reg. at 54–55.
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Final Act. 4–5; Ans. 6.
We agree with the Examiner that the additional elements of claim 1
recite no more than generic computing elements performing generic
computing functions. See, e.g., Spec. ¶¶ 26, 29–31, 35, 37–39, 42, 45, 47,
52, 55–60, Figs. 1, 5, 14, 15. Thus, we determine that claim 1 does not
integrate the judicial exception into a practical application, and thus is
directed to the judicial exception. See Revised Guidance, 84 Fed. Reg. at 55
(explaining that courts have identified “merely us[ing] a computer as a tool
to perform an abstract idea” as an example of when a judicial exception may
not have been integrated into a practical application). In particular, we
determine claim 1 does not recite:
(i) an improvement to the functioning of a computer;
(ii) an improvement to another technology or technical field;
(iii) an application of the abstract idea with, or by use of, a
particular machine;
(iv) a transformation or reduction of a particular article to a
different state or thing; or
(v) other meaningful limitations beyond generally linking the
use of the abstract idea to a particular technological
environment.
See MPEP §§ 2106.05(a)–(c), (e)–(h).
Appellant argues that claim 1 recites additional elements that amount
to significantly more than the judicial exception, such as “‘service providers’
that ‘receive at least one product to be serviced by the service provider for a
customer’ as well as customers that are ‘able to obtain the product.’”
Appeal Br. 11. Appellant also argues that the alleged abstract idea is being
applied in a meaningful way in view of the claims’ “practice of sending
notification and alerts by and to customers and service providers.” Id. We
do not agree. Although these claim limitations may narrow the recited
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abstract idea and limit it to a particular field of use—i.e., customer service
for a product—this alone is not enough to render the claim non-abstract.
See, e.g., Revised Guidance, 84 Fed. Reg. 55, 55 n.32. Moreover, we find
no evidence in either the claims or the Specification that sending
notifications and alerts between customers and service providers about a
product being serviced would require any unconventional or specialized
computer implementation. Thus, Appellant has not shown that these
additional limitations of claim 1 integrate the recited abstract idea into a
practical application.
Appellant next asserts that the claims recite numerous limitations that
transform the claims into patentable subject matter, but does not explain
which limitations cause a transformation and why. Appeal Br. 11. This
assertion is not persuasive because it is conclusory and unsupported by the
claims, the Specification, or other persuasive evidence or technical
reasoning.
Nor are we persuaded by Appellant’s argument that the claims “do not
preempt every application of the lost and found.” Appeal Br. 12. “While
preemption may signal patent ineligible subject matter, the absence of
complete preemption does not demonstrate patent eligibility. . . . Where a
patent’s claims are deemed only to disclose patent ineligible subject matter
under the Mayo framework, as they are in this case, preemption concerns are
fully addressed and made moot.” Ariosa Diagnostics, Inc. v. Sequenom,
Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015); see also OIP Techs., 788 F.3d at
1362–63 (“that the claims do not preempt all price optimization or may be
limited to price optimization in the e-commerce setting do not make them
any less abstract”).
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3. USPTO Step 2B – Inventive Concept
We now consider whether claim 1 has an inventive concept, that is,
whether any additional claim elements “‘transform the nature of the claim’
into a patent-eligible application.” Alice, 573 U.S. at 217 (quoting Mayo,
566 U.S. at 78, 79). This requires us to evaluate whether the additional
claim elements add “a specific limitation or combination of limitations that
are not well-understood, routine, conventional activity in the field” or
“simply append[] well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality.”
Revised Guidance, 84 Fed. Reg. at 56. “Whether something is well-
understood, routine, and conventional to a skilled artisan at the time of the
patent is a factual determination.” Berkheimer v. HP Inc., 881 F.3d 1360,
1369 (Fed. Cir. 2018).
Here, Appellant asserts the claims include recitations that are
“unconventional steps that confine the claim to a particular useful
application” and are not “well-understood, routine, and conventional.”
Appeal Br. 11. The Examiner determines
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 not add a meaningful
limitation to the abstract idea because they would be routine in
any computer implementation.

Final Act. 3. The Examiner explains that “the processors and computer-
readable media storing executable modules . . . limitations are described in
Applicant’s own specification as generic and conventional elements.” Ans.
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6 (citing Spec. ¶¶ 26, 56–59). The Examiner further explains that “the use
of such generic computers to receive or transmit data over a network has
been identified as a well understood, routine and conventional activity by
the courts.” Id., see also id. at 6–8 (citing MPEP and Federal Circuit case
law to support this assertion).
We agree with the Examiner that the recited computing elements and
associated functions, when considered both individually and in combination,
are well-understood, routine, and conventional. As the Examiner explains,
the claims and Specification describe Appellant’s invention in a manner that
requires no more than a general-purpose computer with generic computing
elements. See Ans. 6; accord Spec. ¶¶ 26, 29–31, 35, 37–39, 42, 45, 47, 52,
55–60, Figs. 1, 5, 14, 15. Appellant does not present any persuasive
arguments, technical reasoning, or evidence that proves otherwise.
In view of the foregoing, considering claim 1 as a whole, we
determine that the additional claim elements do not provide “a specific
limitation or combination of limitations that are not well-understood,
routine, conventional activity in the field.” Revised Guidance, 84 Fed. Reg.
at 56. Rather, these elements do no more than “simply append[]
well-understood, routine, conventional activities previously known to the
industry, specified at a high level of generality.” Id. Accordingly, we agree
with the Examiner that claim 1 does not have an inventive concept.
4. Conclusion
Because we determine that claim 1 is directed to an abstract idea and
does not contain an inventive concept, we sustain the Examiner’s rejection
of claim 1 under 35 U.S.C. § 101. For the same reasons, we sustain the
Examiner’s rejection under 35 U.S.C. § 101 of independent claims 8, 14, and
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20, which Appellant argues together with claim 1, as well as the rejection
under 35 U.S.C. § 101 of dependent claims 2–7, 9–13, 15–19, and 21–24,
which were not argued separately with particularity. See Appeal Br. 7–12;
Reply Br. 1–3.
II. REJECTIONS UNDER 35 U.S.C. § 103(a)
A. Claims 1–5, 14–17, and 21
Claim 1 recites “a system . . . having a notification manager, the
system assisting a plurality of service providers that receive at least one
product to be serviced by one of the plurality service providers for a
customer.” The notification manager comprises a processor configured to,
among other things, “receive contact information for the customer and a
designation concerning a service provider having the at least one product,
the designated service provider being selected from the plurality of service
providers stored in the at least one database.” The Examiner finds Janas in
view of Rice teaches these claim limitations. Final Act. 6–9 (citing Janas,
Abstract, ¶¶ 2, 18, 39, 40, 46, 51, Fig. 4 (items 22, 40), Fig. 7 (items 73, 74,
76–78); Rice ¶¶ 6, 11, 95, 106, 191, Fig. 2 (item 210), Fig. 3 (items 300–
340), Fig. 8A (items 805, 820, 825, 830, 840)). The Examiner explains that
it would have been obvious to modify Janas’s system to include the
teachings of Rice “for the motivation of facilitating commerce among
consumers and service providers (Rice [0002]) and enable customer to
identify appropriate service provider based on customer needs and
requirements ([0003] Rice).” Id. at 9 (citing Rice ¶¶ 2, 3).
Appellant argues the Examiner’s findings are defective because in
Rice, “the service providers are going to a consumer’s home to provide
home services” and, thus, do not “receive at least one product to be
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serviced.” Appeal Br. 14, see also id. at 15. This argument does not
persuade us of error.
The cited references must be considered for the entirety of what they
teach and suggest to one skilled in the art. See, e.g., In re Hedges, 783 F.2d
1038, 1039 (Fed. Cir. 1986) (citing In re Wesslau, 353 F.2d 238, 241 (CCPA
1965)). Further, each reference cited by the Examiner must be read, not in
isolation, but for what it fairly teaches in combination with the prior art as a
whole. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The
relevant inquiry is “what the combined teachings of th[os]e references would
have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d
413, 425 (CCPA 1981) (emphasis added).
Here, as cited by the Examiner, Janas teaches a service provider that
“receive[s] at least one product to be serviced” with its disclosure of a
customer who brings a car to an auto repair shop for repair service and
hands-off the vehicle to a service advisor and a system that logs the “time in
for service.” Janas ¶¶ 39, 56, Fig. 7 (item 74). Because the Examiner has
shown that Janas teaches this claim element, we need not analyze whether
Rice does so as well.
Appellant further argues “[t]here is no rational reason for Janas to
include multiple service providers for its customers as the service provider
of Janas would not want to lose the customer’s business,” and “[t]here is no
rational reason for the system of Janas to include multiple service providers
in its system as alleged in the Final Office Action because the service
provider of Janas would want the customer’s business.” Appeal Br. 15.
This argument is not persuasive. Appellant’s argument amounts to
nothing more than a speculative opinion about the market strategies of a
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service provider in Janas. Even so, we disagree with Appellant’s position
because, in capitalist economies such as the United States—where Janas’s
assignee, W8TER, L.L.C., is located—competition is generally considered
to be good for business, leading to improved quality and customer service.
Moreover, the Examiner’s articulated rationale for combining the teachings
of Janas and Rice is adequate because it is drawn directly from the Rice
reference and describes a reason to include Rice’s service provider matching
engine in Janas’s system—i.e., to facilitate commerce among consumers and
service providers and enable a customer to identify an appropriate service
provider based on customer needs and requirements. Therefore, Appellant
does not persuade us that the Examiner’s proposed combination of Janas and
Rice is defective.
Claim 1 further recites that the processor of the notification manager
is configured to “receive a receipt notice from one of the plurality of service
providers in response to the received contact information for the customer,
the receipt notice including at least an indication whether the at least one
product was received at the designated service provider.” The Examiner
finds that Janas teaches this limitation with its disclosures of (1) a
notification process initiated a when a service advisor inputs new customer
data and (2) text-only notifications provided to the customer at the outset of
service of a vehicle, such as “Thank you (customer name) for selecting
(service station/franchise) for your car care needs.” Final Act. 7 (citing
Janas ¶¶ 46, 48 (quoting ¶ 48)).
Appellant argues that the cited notifications of Janas are not sent “in
response to the received contact information for the customer.” Appeal Br.
16–17. Rather, according to Appellant, “the notification process . . . is
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simply ‘updates that include any changes to service,’” and the text-only
notification “is sent once service begins on a vehicle.” Id. Appellant
explains that “Janas’s alleged ‘receipt notice’ is sent ‘at the outset of service’
presumably to notify the customers when its car will be completed[,] . . . not
. . . when the customer’s car is received at the service provider.” Reply Br.
5.
We are not persuaded of error because Appellant’s argument is not
commensurate with the scope of the claim. The Specification describes that
the service provider may receive an alert concerning the customer, where the
alert may appear as a new customer entry/appointment or updated customer
information for an existing customer. Spec. ¶ 48. The Specification also
describes that in response to the alert, the service provider may provide
status information about the customer’s appointment to the central
notification manager. For example, the service provider may provide status
“Car Has Arrived” for an appointment scheduled on March 16, 2010 at
7:00AM for customer “Mac Ramac.” Id. ¶ 49, Fig. 7B. But the
Specification does not specifically define or limit what it means for the
receipt notice to be received “in response to” the received contact
information for the customer. Moreover, the preamble of claim 1 ends with
the transitional phrase “comprising,” which “creates a presumption . . . that
the claim does not exclude additional, unrecited elements.” Crystal
Semiconductor Corp. v. TriTech Microelectronics Int’l, Inc., 246 F.3d 1336,
1348 (Fed. Cir. 2001). Accordingly, we determine that the claim term “in
response to” does not preclude the occurrence of an intervening action or
event between the acts of receiving a customer’s contact information and
receiving a receipt notice. Therefore, we agree with the Examiner that the
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broadest reasonable interpretation of the disputed limitation includes Janas’s
disclosure of a text-only notification provided to the customer at the outset
of service of a vehicle. See, e.g., Janas ¶¶ 47, 48, Fig. 8. Janas’s text-only
notification is received “in response to the received contact information”
because it is received after and based on previously received customer
information including the customer’s phone number. See id. ¶ 44. Nor are
we persuaded by Appellant’s contention that “Janas does not teach . . . that
its alleged ‘receipt notice’ includes ‘at least an indication whether the at least
one product was received at the designated service provider.’” Reply Br. 5.
Janas’s text-only notification informs the customer, for example, by
thanking them for selecting the particular service provider for their car care
needs and by specifying the exact time and date when the customer’s car
will be ready. Janas ¶ 48. This information, as well as the fact that the
notification is triggered because service has been initiated on the car, at least
indicates that the car has been received by the service provider. See id.
¶¶ 47–48. Janas’s follow-up text notifications to the customer, such as a
notification that the customer’s car is now ready for pickup, also indicate
that the product has been received by the service provider. See, e.g., id.
¶ 49.
Claim 1 additionally recites “receive an alert transmission request
initiated by the customer, the alert transmission request concerning progress
of the servicing of the at least one product associated with the customer by
the designated service provider.” For this limitation, the Examiner cites
Pandey’s disclosure that a user may initiate a request message to display
order status update information. Final Act. 10 (citing Pandey ¶¶ 26, 45, Fig.
4); see also Ans. 13 (citing Pandey Fig. 5).
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Appellant argues “the alleged alert of Pandey is not an alert
‘concerning progress of the servicing of the at least one product . . . by the
designated service provider,’” but instead “simply a request by the customer
to update when a technician will arrive at the customer’s location.” Appeal
Br. 18; Reply Br. 5, see also id. at 5–6 (citing Pandey ¶ 14). We are not
persuaded by Appellant’s argument.
Pandey’s order status update information, which may indicate or
approximate the estimate time of arrival of a technician, informs the
customer as to when service of his or her cable TV, including equipment
such as a set top box, will begin. See, e.g., Pandey ¶ 14. The customer’s
request for such order status update information is “concerning progress of
the servicing of the . . . product” as claimed because it informs the customer
that progress on their Cable TV equipment has not yet begun, but will begin
at a certain time upon arrival of the technician. Given a plain reading of the
claim language, there is no requirement for the product to be undergoing
service when the alert transmission request is received.
Appellant next argues that “Pandey is clearly not analogous art as
Pandey’s alleged ‘order status’ from the customer is actually an update as to
when a technician will arrive at the customer’s location.” Appeal Br. 19; see
also Reply Br. 6. We are not persuaded by Appellant’s argument.
To show that a reference is nonanalogous art and, thus, unqualified for
obviousness purposes, Appellant must show that the reference is not within
the field of the inventor’s endeavor and that it is not reasonably pertinent to
the particular problem with which the inventor is involved. In re Klein, 647
F.3d 1343, 1348 (Fed. Cir. 2011); Comaper Corp. v. Antec, Inc., 596 F.3d
1343, 1351 (Fed. Cir. 2010). As a threshold matter, Appellant’s
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nonanalogous art argument is inapposite because it compares Pandey to
Janas, Rice, and Lundy, not Appellant’s invention. While Appellant may
have shown that the references have differences, this alone is insufficient to
rebut a prima facie case of obviousness. See In re Beattie, 974 F.2d 1309,
1312–13 (Fed. Cir. 1992). Appellant’s argument is also unpersuasive
because it addresses the field of endeavor prong of the nonanalogous art test,
but not the “reasonably pertinent to the particular problem” prong.
Moreover, contrary to Appellant’s narrow characterization of Pandey, Janas,
Rice, and Lundy, we find that each reference is analogous art within the field
of the inventor’s endeavor—improving customer service using automated
notification techniques. Compare Spec. ¶¶ 2–3, with Pandey ¶¶ 1, 12, Janas
¶¶ 2, 18, Rice ¶¶ 2, 5, 11, 83–87, Fig. 2, and Lundy 5:14–17, 9:7–11, 10:4–
11, Fig. 7 (describing a mobile device interface with selectable options used
for customizing desired pizza toppings and sending an online order to a
pizza restaurant). Nor are we persuaded by Appellant’s argument that there
is no reason to combine Pandey with Janas, Rice, and Lundy, which relies
on the same nonanalogous art argument we determined above is not
persuasive. See Appeal Br. 19; see also Reply Br. 6.
For the foregoing reasons, we sustain the Examiner’s § 103 rejection
of independent claim 1, as well as the § 103 rejection of independent claim
14, which recites substantially similar limitations for which Appellant makes
substantially similar arguments. We also sustain the Examiner’s rejection of
dependent claims 2–5, 15–17, and 21, which Appellant does not argue
beyond the arguments advanced for independent claims 1 and 14.
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B. Claims 6–13, 18, 19, 22, and 23
Claims 6–13, 18, 19, 22, and 23 recite performing one or more of the
following operations “at predetermined time intervals”: sending an alert,
receiving status information or a status notification, receiving a status update
request, receiving a selection of at least one of the status options, and
generating a notification. The Examiner cites Janas for teaching these
limitations with its disclosure of “alert triggers such as 20 mins. prior to
completion time.” Final Act. 16 (citing Janas ¶¶ 20, 27, 40, Fig. 6 (item
64)), see also id. at 17, 19 (additionally citing Janas ¶ 55), 22. For these
claims, Appellant’s arguments center on the assertion that the notifications
in Janas are based on triggering events and not “predetermined time
intervals.” Appeal Br. 22–24, 31–33, 40–48. We disagree with Appellant’s
characterization of Janas.
As cited by the Examiner, Janas discloses that “various triggers are set
to apprise the customer of service status. . . . includ[ing] . . . a notice that
there is a twenty minute lead time before expected completion; . . . [and] a
notice that the vehicle is waiting a set amount of time after service.” Janas
¶ 55. Contrary to Appellant’s arguments, these notices, including their
selection, generation, transmission, and receipt, are based on “predetermined
time intervals,” including (1) from 20 minutes before expected completion to
the time of expected completion, and (2) from the time of expected
completion to a set amount of time after service. Therefore, Appellant has
not persuaded us of Examiner error.
For the foregoing reasons, we sustain the Examiner’s § 103 rejection
of claims 6–13, 18, 19, 22, and 23.
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C. Claims 20 and 24
Claim 20 recites similar limitations as claim 1. To the extent
Appellant’s arguments for claim 20 (Appeal Br. 34–40) resemble those
advanced for claim 1 (id. at 12–20), these arguments are not persuasive for
the reasons discussed above with respect to claim 1. See discussion supra.
One difference between the claims is that in claim 20, the product is
“previously or currently serviced,” rather than “to be serviced,” as in claim
1. Appellant argues “the alleged alert of Pandey does not have ‘a plurality
of alert options, the plurality of alert options including a plurality of status
options concerning the product previously or currently serviced by the
service provider for the customer’ as recited in claim 20.” Appeal Br. 37.
Appellant similarly argues that Rice does not teach “a service provider
having a product previously or currently serviced by the service provider for
a customer” as recited in the “receiving . . . a designation” step. Id. at 34.
Rather, Appellant asserts that “similar to Rice, the technician [in Pandey]
does not yet have a product to service and needs to go to the consumer’s
house to provide services.” Id. at 37.
We are unpersuaded by these arguments because they attack Pandey
and Rice individually without appreciating what the combined teachings of
the prior art would have suggested to those of ordinary skill in the art. See
Merck, 800 F.2d at 1097; Keller, 642 F.2d at 425. Here, the Examiner relies
not on Pandey alone, but on the combination of Janas, Rice, Pandey, and
Lundy for teaching or suggesting claim 20. See Final Act. 6–13. For
example, while the Examiner cites Pandey for the concept of “sending an
alert . . . including a plurality of alert options . . . including a plurality of
status options concerning the product,” the cited disclosures of Janas
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describe a product that is “previously or currently serviced by the service
provider for the customer.” See, e.g., Final Act. 7 (citing Janas ¶ 39, Fig. 7),
see also id. at 11–12 (citing Pandey ¶¶ 27, 28, 47, 50, Fig. 4). We agree
with the Examiner that Janas teaches this element with its disclosure of a
customer who brings a car to an auto repair shop for repair service and hands
off the vehicle to a service advisor and a system that logs the “time in for
service” and “time ready.” Janas ¶¶ 39, 56, Fig. 7 (items 74, 75). Because
the Examiner has shown that Janas teaches this claim element, we need not
analyze whether Pandey or Rice does as well.
Claim 20 further recites “receiving a selection of one of the plurality
of status options and a selected alert option from the service provider in
response to the alert.” Appellant argues “[t]he Final Office Action equates
the receipt of the selection . . . to the selection made [in Janas] by the
customer as to whether the notification is via email or text,” but “claim 20
recites that the ‘selection of one of the plurality of status options’ is received
‘from the service provider in response to the alert’. . .[,] not the customer as
alleged in the Office Action and as taught in Janas.”
We are not persuaded by Appellant’s argument, which
mischaracterizes the Examiner’s rejection. The Examiner does mention that
Janas teaches the concepts of selected alert options and receiving a selection
of status options. Final Act. 12 (citing Janas ¶ 44, Fig. 7). Instead, the
Examiner relies on Lundy, not Janas, for teaching the disputed element as
recited. See Final Act. 12–13 (citing Lundy 2:64–67, 4:35–48, 7:65–67,
8:1–10, 53–62, Fig. 7). Appellant does not persuasively rebut these findings
with respect to Lundy.
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Appellant further argues that Janas does not teach “generating a
notification based on the status option provided by the service provider,” as
recited in claim 20. Appeal Br. 39–40. Appellant argues that “the
notification process that Janas teaches is simply ‘updates that include any
changes to service that affect the type of service or expected completion
time,’” and “[t]he notification is not sent in response to an alert that was sent
to the designated service provider as recited in claim 20.” Id. at 40 (citing
Janas ¶ 46).
We are not persuaded by Appellant’s arguments. Rather, the
Examiner finds, and we agree, that Janas teaches the disputed claim element
with its disclosures of generating notifications in response to trigger
conditions being met, each notification describing a particular status of a
vehicle undergoing service. Final Act. 13 (citing Janas ¶ 58, Fig. 6 (items
40, 64)); see also id. at 7 (citing Janas ¶¶ 19, 48, 49, Fig. 6 (item 40), Fig. 7
(items 71, 73), Figs. 8–9). Each notification in Janas is “based on the status
option provided by the service provider” because the notification is
generated in response to a particular trigger condition being met, and each
trigger condition may be set by the service advisor. Janas ¶¶ 44, 55, Fig. 5
(item 57). Appellant’s argument that Janas’s notification is not sent in
response to an alert sent to the service provider attacks Janas individually
without appreciating what the combined teachings of the prior art would
have suggested to those of ordinary skill in the art. See Merck, 800 F.2d at
1097; Keller, 642 F.2d at 425. Here, the Examiner relies not on Janas alone,
but on the combination of Janas, Rice, Pandey, and Lundy for teaching or
suggesting claim 20. See Final 6–13. Moreover, the Examiner relies on
Lundy, not Janas, for teaching the step of “sending the notification.” See id.
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at 13 (citing Lundy 8:54–67). Appellant does not persuasively rebut the
Examiner’s findings, reasoning, or conclusion.
Accordingly, we sustain the Examiner’s rejection of independent
claim 20 for obviousness under 35 U.S.C. § 103(a). We also sustain the
Examiner’s § 103(a) rejection of dependent claim 24, which Appellant does
not argue beyond the arguments advanced for claim 20.
CONCLUSION
We sustain the Examiner’s rejection of claims 1–24 under 35 U.S.C.
§ 101.
We sustain the Examiner’s rejections of claims 1–24 under 35 U.S.C.
§ 103(a).
No 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).
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)
/Basis
Affirmed Reversed
1–24 101 Eligibility 1–24
1–7, 14–20 103(a) Janas, Rice,
Pandey. Lundy
1–7, 14–
20

8–13 103(a) Janas, Rice
Pandey
8–13
21, 23, 24 103(a) Janas, Rice,
Pandey, Lundy,
Bristow
21, 23, 24
22 103(a) Janas, Rice,
Pandey, Bristow
22
Overall
Outcome
1–24

AFFIRMED