Michael Powell

Patent Trials and Appeals Board

Dec 7, 2020

2020004576 (P.T.A.B. Dec. 7, 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.
12/795,181 06/07/2010 Michael D. Powell MPOWP006C1 1453
51111 7590 12/07/2020
AKA CHAN LLP
Melvin Chan
900 LAFAYETTE STREET
SUITE 710
SANTA CLARA, CA 95050
EXAMINER
MANDEL, MONICA A
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
12/07/2020 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):
PTO-INBOX@AKACHANLAW.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MICHAEL D. POWELL
____________

Appeal 2020-004576
Application 12/795,181
Technology Center 3600
____________

Before MICHAEL C. ASTORINO, NINA L. MEDLOCK, and
TARA L. HUTCHINGS, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1–11 and 13–22. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Our decision references Appellant’s Appeal Brief (“Appeal Br.,”
filed September 5, 2019) and the Examiner’s Answer (“Ans.,” mailed
February 20, 2020) and Final Office Action (“Final Act.,” mailed October 3,
2018). Appellant identifies the inventor, Michael D. Powell, as the real
party in interest (Appeal Br. 2).
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CLAIMED INVENTION
The claimed invention “relate[s] to electronic contract applications
using electronic networks” (Spec. ¶ 2).
Claims 1, 11, 19, and 21 are the independent claims on appeal.
Claim 1, reproduced below with bracketed notations added, is illustrative of
the claimed subject matter:
1. A method of using a computer network to create an
on-line forum where originators or users can post ideas or unmet
needs or unsolved problems comprising:
[(a)] providing a Web site accessible to the originators
and users through the Internet, wherein the Web site manages
access by the users and originators posted ideas or unmet needs
or unsolved problems;
[(b)] at the Web site, receiving the posted ideas or unmet
needs or unsolved problems and storing in a database a plurality
of two-part descriptions each supplied by an originator or a user,
each two-part description including a first-level element in the
form of a basic description of each originator’s idea or each
user’s unmet need or unsolved problem, and a second-level
element in the form of a detailed description of each originator’s
idea or each user’s unmet need or unsolved problem, wherein the
database resides on a server that is accessible to the Web site
through a network, each entry in the database for posted ideas or
unmet needs or unsolved problems stored in the database further
comprises a status field, and the status field can have a first state
or second state;
[(c)] at the Web site, permitting users or originators, or
both, to access and select without restriction the first-level
elements of the stored two-part descriptions in the database for
entries where the status field comprises the first state, and not for
entries where the status field comprises the second state;
[(d)] at the Web site, preventing users or originators, or
both, to access to the second-level elements of the stored two-
part descriptions of the database for entries where the status field
comprises either the first state or the second state; and
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[(e)] at the Web site, permitting users or originators, or
both, to search the contents of the first level and second-level
elements of the two-part descriptions, concurrently, for entries
where the status field comprises the first state, and not for entries
where the status field comprises the second state while
preventing visual access to the second-level elements of the
database.
REJECTIONS
Claims 1–11 and 13–22 are rejected under 35 U.S.C. § 101 as directed
to a judicial exception without significantly more.
Claim 21 is rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter.
Claims 1–3, 21, and 22 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Allen (US 6,744,891 B1, issued June 1, 2004), Schneider
(US 5,987,464, issued Nov. 16, 1999), and Landry (US 5,649,117, issued
July 15, 1997).
Claims 4–6, 9, and 10 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Allen, Schneider, Landry, and Havens (US 5,924,072,
issued July 13, 1999).
Claims 7 and 8 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Allen, Schneider, Landry, Havens, and Conte et al. (US 5,845,065,
issued Dec. 1, 1998) (“Conte”).
Claims 11, 13, and 16–19 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Allen, Havens, and Landry.
Claims 14, 15, and 20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Allen, Havens, Landry, and Conte.
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ANALYSIS
Patent-Ineligible Subject Matter
Under 35 U.S.C. § 101, a claim is patent eligible if it claims a “new
and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S.
208, 216 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), “for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts.” Alice Corp., 573 U.S. at 217.
The first step in that analysis is to “determine whether the claims at issue are
directed to one of those patent-ineligible concepts.” Id. If the claims are not
directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry
ends. Otherwise, the inquiry proceeds to the second step where the elements
of the claims are considered “individually and ‘as an ordered combination’”
to determine whether there are additional elements that “‘transform the
nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo,
566 U.S. at 79, 78). This is “a search for an ‘inventive concept’ — i.e., an
element or combination of elements that is ‘sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself.’” Id. at 217–18 (alteration in original).
In rejecting the pending claims under 35 U.S.C. § 101, the Examiner
determined that the claims are directed to “restricting/managing access to
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data based on rules or parameters,” i.e., to an abstract idea similar to other
concepts that courts have held abstract (Final Act. 5). The Examiner also
determined that the claims do not include additional elements or a
combination of elements sufficient to amount to significantly more than the
abstract idea itself (id. at 5–8).
After the Final Office Action was mailed, the U.S. Patent and
Trademark Office (the “USPTO”) published revised guidance on January 7,
2019, for use by USPTO personnel in evaluating subject matter eligibility
under 35 U.S.C. § 101. 2019 REVISED PATENT SUBJECT MATTER
ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50 (Jan. 7, 2019) (the “2019 Revised
Guidance”). 2 That guidance revised the USPTO’s examination procedure
with respect to the first step of the Mayo/Alice framework by
(1) “[p]roviding groupings of subject matter that [are] considered an abstract
idea”; and (2) clarifying that a claim is not “directed to” a judicial exception
if the judicial exception is integrated into a practical application of that
exception. Id. at 50.
The first step, as set forth in the 2019 Revised Guidance (i.e.,
Step 2A), is, thus, a two-prong test. In Step 2A, Prong One, we look to
whether the claim recites a judicial exception, e.g., one of the following
three groupings of abstract ideas: (1) mathematical concepts; (2) certain
methods of organizing human activity, e.g., fundamental economic
principles or practices, commercial or legal interactions; and (3) mental
processes. 2019 Revised Guidance, 84 Fed. Reg. at 54. If so, we next

2 The MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”) incorporates
the revised guidance and subsequent updates at Section 2106 (9th ed.
Rev. 10.2019, rev. June 2020).
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determine, in Step 2A, Prong Two, whether the claim as a whole integrates
the recited judicial exception into a practical application, i.e., whether the
additional elements recited in the claim beyond the judicial exception, apply,
rely on, or use the judicial exception in a manner that imposes a meaningful
limit on the judicial exception, such that the claim is more than a drafting
effort designed to monopolize the judicial exception. Id. at 54–55. Only if
the claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application do we conclude that the claim is
“directed to” the judicial exception, e.g., an abstract idea. Id.
If the claim is determined to be directed to a judicial exception under
revised Step 2A, we next evaluate the additional elements, individually and
in combination, in Step 2B, to determine whether they provide an inventive
concept, i.e., whether the additional elements or combination of elements
amounts to significantly more than the judicial exception itself; only then, is
the claim patent eligible. 2019 Revised Guidance, 84 Fed. Reg. at 56.
The 2019 Revised Guidance, by its terms, applies to all applications,
and to all patents resulting from applications, filed before, on, or after
January 7, 2019. Id.,
Independent Claims 1, 11, 19, and 21 and Dependent Claims 2–10, 13–18,
and 22
Appellant argues claims 1–11 and 13–22 as a group (Appeal
Br. 6–10). We select independent claim 1 as representative. The remaining
claims stand or fall with claim 1. See 37 C.F.R. §41.37(c)(1)(iv).
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Step One of the Mayo/Alice Framework (2019 Revised Guidance,
Step 2A)
We are not persuaded by Appellant’s argument that the Examiner
erred in determining that claim 1 is directed to an abstract idea (Appeal
Br. 6–10). The Federal Circuit has explained that “the ‘directed to’ inquiry
applies a stage-one filter to claims, considered in light of the specification,
based on whether ‘their character as a whole is directed to excluded subject
matter.’” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir.
2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d
1343, 1346 (Fed. Cir. 2015)). It asks whether the focus of the claims is on a
specific improvement in relevant technology or on a process that itself
qualifies as an “abstract idea” for which computers are invoked merely as a
tool. See id. at 1335–36. Here, it is clear from the Specification (including
the claim language) that claim 1 focuses on an abstract idea, and not on any
improvement to technology and/or a technical field.
The Specification is titled “Facilitating Electronic Exchange of
Proprietary Information,” and describes that “[t]he present invention is a
method and apparatus for effectuating bilateral commerce in ideas” and is
“designed to facilitate idea submission, purchase, and licensing” (Spec.
¶ 12). The invention, thus, allows originators of ideas to communicate non-
disclosing synopses of ideas (“NDS(FDI)”) directly or globally to potential
users, users to search for relevant ideas, and users potentially to bind an
originator to a license granting the user the right to access and consider
confidentially the originator’s fully disclosed idea (“FDI”) (id.; see also id.
¶ 18). The invention also allows users to communicate confidentially or
non-confidentially a request for proposal comprising a fully disclosed
unsolved problem or need (“RFP”), or a non-disclosing synopsis of the RFP
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(“NDS(RFP)”), globally to potential originators, originators to search for
relevant unsolved problems or needs, i.e., RFPs, and originators to submit
and communicate confidentially proposed solutions, i.e., FDIs, to the
soliciting user (id. ¶¶ 12, 30, 31).
Consistent with this disclosure, claim 1 recites a method of using a
computer network to create an on-line forum where originators or users can
post ideas or unmet needs or unsolved problems comprising: (1) “providing
a Web site accessible to the originators and users through the Internet,
wherein the Web site manages access by the users and originators posted
ideas or unmet needs or unsolved problems” (step (a)); (2) receiving and
storing, in a database, a plurality of two-part descriptions of originator-
posted ideas and user-posted unmet needs or unsolved problems, each two-
part description having a first-level element and a second-level element and
each database entry having a first state status or a second state status, i.e.,
at the Web site, receiving the posted ideas or unmet needs or
unsolved problems and storing in a database a plurality of two-
part descriptions each supplied by an originator or a user, each
two-part description including a first-level element in the form
of a basic description of each originator’s idea or each user’s
unmet need or unsolved problem, and a second-level element in
the form of a detailed description of each originator’s idea or
each user’s unmet need or unsolved problem, wherein the
database resides on a server that is accessible to the Web site
through a network, each entry in the database for posted ideas or
unmet needs or unsolved problems stored in the database further
comprises a status field, and the status field can have a first state
or second state
(step (b)); (3) permitting users and originators to access, without restriction,
first-level elements for database entries having the first state status, i.e.,
at the Web site, permitting users or originators, or both, to access
and select without restriction the first-level elements of the stored
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two-part descriptions in the database for entries where the status
field comprises the first state, and not for entries where the status
field comprises the second state
(step (c)); (4) preventing users and originators from accessing second-level
elements, i.e., “at the Web site, preventing users or originators, or both, to
access to the second-level elements of the stored two-part descriptions of the
database for entries where the status field comprises either the first state or
the second state” (step (d)); and (5) permitting users and originators to
search the contents of the first-level and second-level elements concurrently
only for database entries having the first state status, i.e.,
at the Web site, permitting users or originators, or both, to search
the contents of the first level and second-level elements of the
two-part descriptions, concurrently, for entries where the status
field comprises the first state, and not for entries where the status
field comprises the second state while preventing visual access
to the second-level elements of the database
(step (e)).
Appellant argues that the rejection of claim 1 cannot be sustained at
least because the claim does not recite subject matter that falls within any of
the three enumerated groupings of abstract ideas (Appeal Br. 6–7). But, we
agree with the Examiner that the claim limitations, when given their
broadest reasonable interpretation, recite “restricting/managing access to
data based on rules or parameters,” i.e., managing personal behavior or
relationships or interactions between people, which is a method of
organizing human activity and, therefore, an abstract idea. See 2019
Revised Guidance, 84 Fed. Reg. at 52.
We also are not persuaded by Appellant’s argument that claim 1
recites additional elements that integrate the judicial exception, i.e., the
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recited abstract idea, into a practical application under Step 2A, Prong Two
(Appeal Br. 7–8).
The 2019 Revised Guidance references MPEP, Ninth Edition
(rev. Jan 2018) (available at https://mpep.uspto.gov/RDMS/MPEP/
E9_R-08.2017.) § 2106.05(a)–(c) and (e) in non-exhaustively listing
considerations indicative that an additional element or combination of
elements may have integrated the recited judicial exception into a practical
application. 2019 Revised Guidance, 84 Fed. Reg. at 55. In particular, the
Guidance describes that an additional element may have integrated the
judicial exception into a practical application if the additional element
(1) reflects an improvement in the functioning of a computer or an
improvement to other technology or technical field; (2) applies or uses the
judicial exception to effect a particular treatment or prophylaxis for a disease
or medical condition; (3) implements the judicial exception with, or uses the
judicial exception with, a particular machine or manufacture integral to the
claim; (4) effects a transformation or reduction of an article to a different
state or thing; or (5) applies or uses the judicial exception in some other
meaningful way beyond generally linking the use of the judicial exception to
a particular technological environment, such that the claim as a whole is
more than a drafting effort designed to monopolize the exception. Id. At the
same time, the Guidance makes clear that merely including instructions to
implement an abstract idea on a computer, or merely using a computer as a
tool to perform an abstract idea; adding insignificant extra-solution activity
to the judicial exception; or only generally linking the use of the judicial
exception to a particular technological environment or field are not sufficient
to integrate the judicial exception into a practical application. Id.
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Quoting the admonition in the 2017 Revised Guidance that “[w]hen
evaluating whether an element (or combination of elements) integrates an
exception into a practical application, examiners should give careful
consideration to both the element and how it is used or arranged in the claim
as a whole,” Appellant asserts, “[c]ertainly, the technique reflected in the
claims [is] integrated into a practical application” (Appeal Br. 8). Citing the
status field (having a first state or a second state) and the recited use of the
status field to control access to database entries, Appellant argues, “[t]hese
claim elements clearly reflect an integration into a practical application of
the technique” (id.). Yet, the relevant inquiry under Step 2A, Prong 2 is not
whether the claimed invention itself is a practical application; instead, the
question is whether the claim includes additional elements beyond the
judicial exception that integrate the judicial exception into a practical
application. The Examiner determined here, and we agree, that the only
additional elements recited in claim 1 beyond the abstract idea are “a Web
site”; “a database”; and “a sever,” elements that, as the Examiner observes,
are recited at a high level of generality, i.e., generic computer components
(Final Act. 6). We find no indication in the Specification, nor does
Appellant direct us to any indication, that the operations recited in claim 1
require any specialized computer hardware or other inventive computer
components, i.e., a particular machine, invoke any allegedly inventive
programming, or that the claimed invention is implemented using other than
generic computer components to perform generic computer functions. See
DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir.
2014) (“[A]fter Alice, there can remain no doubt: recitation of generic
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computer limitations does not make an otherwise ineligible claim patent-
eligible.”).
We also find no indication in the Specification that the claimed
invention effects a transformation or reduction of a particular article to a
different state or thing. Nor do we find anything of record, short of attorney
argument, that attributes an improvement in technology and/or a technical
field to the claimed invention or that otherwise indicates that the additional
elements recited in claim 1 integrate the recited abstract idea into a
“practical application,” as that phrase is used in the 2019 Revised Guidance.
Appellant argues that “the claim elements recite a specific
improvement over prior art systems by allowing filtering confidential
materials in order to find relevant information while substantially limiting
exposure to misappropriation claims by originators” (Appeal Br. 8). But, we
are not persuaded that this is a technological improvement, as opposed to an
improvement to the abstract idea of “restricting/managing access to data
based on rules or parameters.” See SAP Am., Inc. v. InvestPic, LLC, 898
F.3d 1161, 1170 (Fed. Cir. 2018) (“[P]atent law does not protect such claims
[i.e., claims to an asserted advance in the realm of abstract ideas], without
more, no matter how groundbreaking the advance.”).
Considered in light of the Specification, the claimed invention clearly
appears focused on allowing users to communicate confidentially or non-
confidentially unsolved problems or needs globally to potential originators,
for originators conveniently to search for relevant unsolved problems or
needs, and for originators to submit and communicate confidentially
proposed solutions to the soliciting user (see, e.g., Spec. ¶ 4 (describing the
innovators worry that their ideas may be misappropriated or non-
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confidentially disclosed and that people who require innovations do not have
a place to solicit others’ ideas and confidentially list their requirements);
¶¶ 9–10 (describing the need to allow innovators to present their inventions
or innovations, confidentially or non-confidentially, to individuals and
companies capable of implementing the innovation and having the resources
to do so); ¶ 12 (describing that the present invention meets this need)), and
not on any claimed means for achieving that goal that improves technology.
That is particularly so, where, as here, there is no indication that the
operations recited in claim 1 require any specialized computer hardware or
other inventive computer components, invoke any allegedly inventive
programming, or that the claimed invention is implemented using other than
generic computer components as tools operating in their normal, routine, and
ordinary capacity.
Appellant attempts to draw an analogy here between claim 1 and the
claims at issue in Finjan, Inc. v. Blue Coat System, Inc., 879 F.3d 1299,
(Fed. Cir. 2018). Yet, we can find no parallel between the patent eligible
claims in Finjan and claim 1 here at issue.
In Finjan, the claims were directed to a behavior-based virus scanning
system. There, the Federal Circuit noted that the claimed method “employs
a new kind of file” (in the form of a security profile, created by scanning a
downloadable3 and attaching the virus scan results to the downloadable, that
identifies suspicious code in the received downloadable), which “enables a

3 The parties in Finjan agreed, at claim construction, that “downloadable”
should be construed to mean “an executable application program, which is
downloaded from a source computer and run on the destination computer.”
Finjan, 879 F.3d at 11303.
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computer security system to do things it could not do before . . . allow[ing]
access to be tailored for different users and ensur[ing] that threats are
identified before a file reaches a user’s computer.” Finjan, 879 F.3d
at 1305. In holding the claims patent eligible, the court, thus, decided, “[t]he
asserted claims are . . . directed to a non-abstract improvement in computer
functionality, rather than the abstract idea of computer security writ large.”
Id.
Appellant analogizes the security profile, i.e., the “new type of file” in
Finjan to attaching an NDS (non-disclosing synopsis) to a FDI/RFP (fully
disclosed idea/request for proposal) (Appeal Br. 9 (“Claim 1 of the
application attaches an NDS to the FDI/RFP in the form of a newly
generated file.”)). And Appellant argues that “[r]ather than a security profile
that identifies suspicious (i.e., unacceptable) code in the received FDI/RFP,
the present invention identifies the ‘acceptable’ FDI/RFPs (which is
functionally the same as identifying the unacceptable content found eligible
in Finjan” (id.).
Appellant’s argument is not persuasive because, among other reasons,
the “unacceptable content” in Finjan is not merely “unwanted” information,
e.g., an irrelevant idea or request for proposal; instead, it is suspicious code
(e.g., malware, virus, or the like) included in a received downloadable, that
performs hostile or potential hostile operations. As described above, the
Federal Circuit, in Finjan, held that the claims are patent eligible because
they are directed to an improvement in computer functionality. No such
improvement is present here. Indeed, “the [S]pecification is silent as to any
specific structural or inventive improvements in computer functionality” that
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are attributable to the claimed method. See Customedia Techs., LLC v. Dish
Network Corp., 951 F.3d 1359, 1365 (Fed. Cir. 2020).
We conclude, for the reasons outlined above, that claim 1 recites a
method of organizing human activity, i.e., an abstract idea, and that the
additional elements recited in the claim beyond the abstract idea are no more
than generic computer components used as tools to perform the recited
abstract idea. As such, they do not integrate the abstract idea into a practical
application. See Alice Corp., 573 U.S. at 223–24 (“[W]holly generic
computer implementation is not generally the sort of ‘additional featur[e]’
that provides any ‘practical assurance that the process is more than a drafting
effort designed to monopolize the [abstract idea] itself.’” (quoting Mayo,
566 U.S. at 77)). Accordingly, we agree with the Examiner that claim 1 is
directed to an abstract idea.
Step Two of the Mayo/Alice Framework (2019 Revised Guidance,
Step 2B)
Having determined under step one of the Mayo/Alice framework that
claim 1 is directed to an abstract idea, we next consider under Step 2B of the
2019 Revised Guidance, the second step of the Mayo/Alice framework,
whether claim 1 includes additional elements or a combination of elements
that provides an “inventive concept,” i.e., whether an additional element or
combination of elements adds specific limitations beyond the judicial
exception that are not “well-understood, routine, conventional activity” in
the field (which is indicative that an inventive concept is present) or simply
appends well-understood, routine, conventional activities previously known
to the industry to the judicial exception. 2019 Revised Guidance,
84 Fed. Reg. at 56.
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Here, the Examiner determined and we agree, that the only additional
elements recited in claim 1 beyond the abstract idea are “a Web site”; “a
database”; and “a sever,” i.e., generic computer components (Final Act. 6)
— a determination amply supported by and fully consistent with the
Specification (see, e.g., Spec. ¶¶ 105–108). Appellant cannot reasonably
maintain that there is insufficient factual support for the Examiner’s
determination that the operation of these components is well-understood,
routine, or conventional, where, as here, there is nothing in the Specification
to indicate that the operations recited in claim 1 require any specialized
hardware or inventive computer components or that the claimed invention is
implemented using other than generic computer components to perform
generic computer functions, e.g., receiving and processing information.
Indeed, the Federal Circuit, in accordance with Alice, has “repeatedly
recognized the absence of a genuine dispute as to eligibility” where claims
have been defended as involving an inventive concept based “merely on the
idea of using existing computers or the Internet to carry out conventional
processes, with no alteration of computer functionality.” Berkheimer v. HP
Inc., 890 F.3d 1369, 1373 (Fed. Cir. 2018) (Moore, J., concurring) (internal
citations omitted); see also BSG Tech LLC v. BuySeasons, Inc., 899 F.3d
1281, 1291 (Fed. Cir. 2018) (“BSG Tech does not argue that other, non-
abstract features of the claimed inventions, alone or in combination, are not
well-understood, routine and conventional database structures and activities.
Accordingly, the district court did not err in determining that the asserted
claims lack an inventive concept.”).
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Independent Claim 21
Claim 21 is directed to a system comprising “an on-line forum where
originators or users can post ideas or unmet needs or unsolved problems,”
and recites that the on-line forum comprises:
a database that stores on a server a plurality of two-part
descriptions each supplied by an originator or a user, each two-
part description including a first-level element in the form of a
basic description of each originator's idea or each user’s unmet
need or unsolved problem, a second-level element in the form
of a detailed description of each originator's idea or each user’s
unmet need or unsolved problem, each entry in the database
further comprises a status field, and the status field can have a
first state or second state;
a first search capability that permits users or originators
of the system, or both, to access and select without restriction
the first-level elements of the stored two-part descriptions of the
database for entries where the status field comprises the first
state, and not for entries where the status field comprises the
second state, wherein the first search capability prevents the
users or originators of the system from accessing the second-
level elements of the stored two-part descriptions of the
database for entries where the status field comprises either the
first state or the second state; and
a second search capability that permits users or
originators of the system, or both, to search the contents of the
first-level and second-level elements of the two-part
descriptions of the database, concurrently, wherein the second
search capability prevents the users or originators of the system
from viewing the second-level elements of the database.
Appeal Br. 20–21 (Claims Appendix) (emphasis added).
The Examiner additionally rejected claim 21 under 35 U.S.C. § 101 as
directed to non-statutory subject matter. More particularly, the Examiner
determined that claim 21 does not fall within at least one of the four
categories of patent eligible subject matter because under the broadest
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reasonable interpretation, claim 21 is directed to software per se (Final
Act. 2–4).
Appellant notes that claim 21 “recites ‘a database that stores on a
server a plurality of two-part descriptions’” (Appeal Br. 10). Appellant
argues that claim 21, thus, “positively recites a piece of hardware or other
tangible article” and asserts, “[f]or at least this additional reason, claim 21 is
patent eligible” (id.).
Responding to Appellant’s argument, the Examiner maintains that
“the broadest reasonable interpretation of a database is software” (Ans. 4).
And the Examiner observes, “[t]he structure of the database, not what it
does (i.e.[,] “stores”), or where it does something, is what is within the scope
of the claim. The fact that information from the database is consequentially
stored on a server does not change the composition of the database,” i.e., that
the database is software (id.).
Appellant has not filed a Reply Brief or otherwise explained why the
Examiner’s position is unreasonable or unsupported. Therefore, we sustain
the Examiner’s rejection of claim 21 as directed to non-statutory subject
matter.
Obviousness
Independent Claims 1 and 21 and Dependent Claims 2, 3, and 22
Appellant ostensibly maintains that the Examiner erred in rejecting
independent claims 1 and 21 under 35 U.S.C. § 103(a) because none of
Allen, Schneider, and Landry, individually or in combination, discloses or
suggests
at the Web site, permitting users or originators, or both, to
access and select without restriction the first-level elements of
the stored two-part descriptions in the database for entries where
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the status field comprises the first state, and not for entries where
the status field comprises the second state;
at the Web site, preventing users or originators, or both, to
access to the second-level elements of the stored two-part
descriptions of the database for entries where the status field
comprises either the first state or the second state; and
at the Web site, permitting users or originators, or both, to
search the contents of the first level and second-level elements of
the two-part descriptions, concurrently, for entries where the
status field comprises the first state, and not for entries where the
status field comprises the second state while preventing visual
access to the second-level elements of the database[,]
i.e., limitations (c), (d), and (e), as recited in claim 1, and similarly recited in
claim 21 (Appeal Br. 10–11). Yet, Appellant’s arguments regarding the
alleged shortcomings of Allen, Schneider, and Landry not only fail to
adequately identify the supposed errors in the Examiner’s rejection but, as
best understood, they also are not commensurate with the scope of the
claims.
Appellant argues, for example, that Allen does not disclose that “both
parts of the description . . . are loaded at same time so that both exist in the
database as the same time” or teach or suggest “a blind search capability that
would allow the user of the system to screen materials without having to
access them” (Appeal Br. 10–11). Yet, as the Examiner observes, claim 1
does not recite that “both parts of the description . . . are loaded at the same
time so that both exist in the database at the same time” (Ans. 4–5). Nor
does the claim recite a “blind search capability that would allow the user of
the system to screen materials without having to access them” (id. at 5).
Appellant’s argument that Schneider teaches away from the present
invention is similarly unavailing. Appellant argues that Schneider teaches
away from the claimed invention because it “allows for inactive resumes to
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be searched” (Appeal Br. 11). But, we agree with the Examiner that
“Schneider is not teaching away [because] this aspect of Schneider is
relevant to the claimed invention which is directed to searching contents”
(Ans. 6).
Appellant further argues that “nothing in Schneider says the
applicant’s name is still searchable when inactive”; that “Schneider does not
teach or suggest making the applicant’s name available at any time during
the interaction with the system”; and that Schneider “does not disclose use
of confidential license agreements to control access to the hidden
information” (Appeal Br. 11). Appellant also summarily asserts “Landry . . .
does not show or suggest the features of the invention” (id.).
None of Appellant’s arguments regarding Schneider is persuasive for
the reasons set forth by the Examiner (Ans. 6–7). And, as the Examiner
observes, Appellant’s “argument” with respect to Landry is a “mere general
allegation about Landry devoid of explanation as to what particular claimed
features are being addressed” (id. at 7). As such, it is unpersuasive of
Examiner error. Cf. In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011)
(“[W]e hold that the Board reasonably interpreted Rule 41.37 to require
more substantive arguments in an appeal brief than a mere recitation of the
claim elements and a naked assertion that the corresponding elements were
not found in the prior art.”).
We are not persuaded, on the present record, that the Examiner erred
in rejecting independent claims 1 and 21 under 35 U.S.C § 103(a).
Therefore, we sustain the Examiner’s rejection. We also sustain the
Examiner’s rejection of dependent claims 2, 3, and 22, which are not argued
separately.
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Dependent Claims 4–6, 9, and 10
Claims 4–6, 9, and 10 depend, directly or indirectly, from independent
claim 1, and call for, inter alia, “electronically submitting to each selecting
user a license agreement including a confidentiality provision.”
Appellant acknowledges that Havens “discusses an upfront agreement
including a confidentiality provision” (Appeal Br. 12). But, Appellant
argues that claims 4–6, 9, and 10 are allowable because “Havens teaches
away from the present invention which does not require the confidentiality
provision until the originator/user determines the material is of sufficient
relevance and interest to warrant taking on additional legal risk by agreeing
to keep the second level information confidential” (id.).
Appellant’s argument is not persuasive at least because Appellant
does not point to any passage in Havens that criticizes, discredits, or
otherwise discourages requiring a confidentiality provision only after the
originator/user determines the material is of sufficient relevance and interest.
See In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (A teaching away occurs
when a reference discourages one skilled in the art from following the
claimed path, or when the reference would lead one skilled in the art in a
direction divergent from the path that was taken by the applicant).
It also is significant here that claims 4–6, 9, and 10 are rejected under
35 U.S.C. § 103(a) as obvious over the combination of Allen, Schneider,
Landry, and Havens, not over Havens alone. The argument that a single
reference alone does not disclose all the recited claim limitations is not
persuasive because “[n]on-obviousness cannot be established by attacking
references individually where the rejection is based upon the teachings of a
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combination of references.” See In re Merck & Co., 800 F.2d 1091, 1097
(Fed. Cir. 1986).
We are not persuaded that the Examiner erred in rejecting dependent
claims 4–6, 9, and 10 under 35 U.S.C. § 103(a). Therefore, we sustain the
Examiner’s rejection.
Independent Claims 11 and 19 and Dependent Claims 7, 8, 13–18, and 20
Appellant does not provide any substantive responses to the
Examiner’s rejections of claims 7, 8, 11, and 13–20 beyond those previously
set forth, which we found unpersuasive of Examiner error. Therefore, we
sustain the Examiner’s rejections of claims 7, 8, 11, and 13–20.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–11,
13–22
101 Eligibility 1–11,
13–22

21 101 Non-statutory
Subject Matter
21
1–3, 21, 22 103(a) Allen, Schneider,
Landry
1–3, 21, 22
4–6, 9, 10 103(a) Allen, Schneider,
Landry, Havens
4–6, 9, 10
7, 8 103(a) Allen, Schneider,
Landry, Havens,
Conte
7, 8
11, 13,
16–19
103(a) Allen, Havens,
Landry
11, 13,
16–19

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Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
14, 15, 20 103(a) Allen, Havens,
Landry, Conte
14, 15, 20
Overall
Outcome
1–11,
13–22

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED