McLaughlin, MichaelDownload PDFPatent Trials and Appeals BoardApr 23, 202012728121 - (D) (P.T.A.B. Apr. 23, 2020) Copy Citation 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. Appeal 2019-002441 Application 12/728,121 2 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. Appeal 2019-002441 Application 12/728,121 3 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 Appeal 2019-002441 Application 12/728,121 4 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 Appeal 2019-002441 Application 12/728,121 5 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, Appeal 2019-002441 Application 12/728,121 6 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. Appeal 2019-002441 Application 12/728,121 7 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). Appeal 2019-002441 Application 12/728,121 8 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 Appeal 2019-002441 Application 12/728,121 9 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 Appeal 2019-002441 Application 12/728,121 10 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) Appeal 2019-002441 Application 12/728,121 11 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)). Appeal 2019-002441 Application 12/728,121 12 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). Appeal 2019-002441 Application 12/728,121 13 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). Appeal 2019-002441 Application 12/728,121 14 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. Appeal 2019-002441 Application 12/728,121 15 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. Appeal 2019-002441 Application 12/728,121 16 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 Appeal 2019-002441 Application 12/728,121 17 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”). Appeal 2019-002441 Application 12/728,121 18 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. Appeal 2019-002441 Application 12/728,121 19 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 Appeal 2019-002441 Application 12/728,121 20 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 Appeal 2019-002441 Application 12/728,121 21 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 Appeal 2019-002441 Application 12/728,121 22 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 Appeal 2019-002441 Application 12/728,121 23 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 Appeal 2019-002441 Application 12/728,121 24 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). Appeal 2019-002441 Application 12/728,121 25 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 Appeal 2019-002441 Application 12/728,121 26 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. Appeal 2019-002441 Application 12/728,121 27 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. Appeal 2019-002441 Application 12/728,121 28 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 Appeal 2019-002441 Application 12/728,121 29 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. Appeal 2019-002441 Application 12/728,121 30 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. Appeal 2019-002441 Application 12/728,121 31 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 Copy with citationCopy as parenthetical citation