Michael Strutton et al.

Patent Trials and Appeals Board

Dec 30, 2020

2020005572 (P.T.A.B. Dec. 30, 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.
12/859,675 08/19/2010 Michael J. Strutton R00234NP 8376
129668 7590 12/30/2020
Invoke / Oracle
30 Wall Street #800
8th Floor
New York, NY 10005
EXAMINER
GARTLAND, SCOTT D
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
12/30/2020 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):
docketing@InvokeIP.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL J. STRUTTON, SLAIN J. WILDE,
JOHN C. MAXWELL, JAMES V. ANDERSON, BRYAN S. POCIUS, and
ADAM P. BENJAMIN

Appeal 2020–005572
Application 12/859,675
Technology Center 3600

Before HUBERT C. LORIN, BIBHU R. MOHANTY, and
CYNTHIA L. MURPHY, Administrative Patent Judges.

LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1−4, 9, 10, 13−23, 27, 28, 31−37,
60−63, 67, 68, and 70−76. 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(a). Appellant identifies the real party in interest as Tara Chand
Singhal. Appeal Br. 1.
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CLAIMED SUBJECT MATTER
The claimed subject matter “relates generally to social media systems,
and more particularly to methods and systems that support the practice of
marketing on social media systems.” (Spec., para. 2). Claim 1, reproduced
below with the italics added, is illustrative of the claimed subject matter:
1. A method comprising:
storing, by a social relationship management (SRM)
application, social media system (SMS) publishing rules in a
database according to a database scheme that maps (a) a
plurality of SMS identifiers associated, respectively, with a
plurality of SMS's supported by the SRM application to (b) a
plurality of message formatting rules mandated, respectively, by
the plurality of SMS's;
receiving, by the SRM application:
first user input comprising a message to be
published to social media, and
second user input selecting at least a first SMS and
a second SMS, of the plurality of SMS's, as targets for
publishing the message;
retrieving, by the SRM application from the
database, a first message formatting rule mandated by the
first SMS and a second message formatting rule mandated
by the second SMS;
subsequent to receiving the first user input and the
second user input, without receiving any additional user
input to modify the message:
determining, by the SRM application, that
the message does not comply with the first message
formatting rule mandated by the first SMS;
determining, by the SRM application, that
the message complies with the second message
formatting rule mandated by the second SMS;
formatting, by the SRM application, the
message to obtain a formatted message that
complies with the first message formatting rule;
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transmitting, by the SRM application, the
formatted message to the first SMS, via an interface
of the first SMS; and
transmitting, by the SRM application, the
message to the second SMS without modifying the
message, via an interface of the second SMS,
wherein the method is performed by at least one device
comprising a hardware processor.
Appeal Br. 20 (Claims Appendix).
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Stein US 2007/0043617 A1 Feb. 22, 2007
Maigret US 2008/0109306 A1 May 8, 2008
Sarukkai US 2009/0017804 A1 Jan. 15, 2009
Rick Broida, Update All Your Social Networks at Once with Ping.fm;
https://www.pcworld.com/article/164893/Update AII Your Social
Networks at Once with Ping.fm, (last visited May 14, 2009) (“Broida”)
REJECTIONS
Claims 1−4, 9−10, 13−23, 27, 28, 31−37, 60−63, 67, 68, and 70−76
are rejected under 35 U.S.C. § 112(a), first paragraph, as failing to comply
with the written description requirement.
Claims 1−4, 9, 10, 13−23, 27, 28, 31−37, 60−63, 67, 68, and 70−76
are rejected under 35 U.S.C. § 101 as being directed to judicially-excepted
subject matter without significantly more.
Claims 1−3, 5, 8–10, 13–17, 20–22, 27, 28, 31–35, 60–62, 64, 66–68,
and 70−74 are rejected under 35 U.S.C. § 103(a) as being unpatentable over
Sarukkai and Broida.
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Claims 4, 23, and 63 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sarukkai, Broida, and Maigret.
Claims 18, 19, 36, 37, 75 and 76 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Sarukkai, Broida, and Stein.
OPINION
The rejection of claims 1−4, 9, 10, 13−23, 27, 28, 31−37, 60−63, 67, 68,
and 70−76 under 35 U.S.C. § 112(a) as failing to comply with the written
description requirement.
The Examiner’s position is that the following claim limitations are not
adequately described in the Specification:
Independent claims 1, 20, and 60 (as well as the dependent
claims, either specifically or implicitly) now recite a “without
receiving any additional user input to modify the message ...
formatting ... the message to obtain a formatted message that
complies with the first message formatting rule”. However, the
Examiner has searched for this concept and although the
specification indicates “automatically modify the text to comply
with the rules” (see Applicant ¶ 0045, with similar or the same
indication(s) at ¶¶ 0047 and 0080), “the formatter 206 modifies
the text at step 916” (Applicant ¶ 0074 ), and “the formatter 206
either prompts the developer 114 to modify the text, or modifies
the text automatically according to predetermined rules”
(Applicant ¶ 0074), there is no explanation or description of how
to automatically modify the message, what “step 916” comprises
or entails (Fig. 9, merely says “Modify Text” for this step), or
what “predetermined rules” would be employed.
MPEP § 2161.01 (I) indicates that …

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Where the remaining discussion of modifying the message
provided by Applicant’s specification appears to be pertain to
providing an interface or notification to a developer or other
person to provide the modification, or other similar techniques,
these do not appear to pertain to the claimed aspect of performing
the modification(s) “without receiving any additional user
input”. Therefore, the Examiner finds a lack of written support
for not providing sufficient detail to demonstrate possession of
the invention.
Final Act. 13–14.
Appellant disagrees, arguing that:
there is clear support in the specification that the inventor was in
possession of the claimed invention. Moreover, the knowledge
and level of skill in the art would have permitted the ordinary
artisan to immediately envisage the claimed product arising from
the disclosed process. That is, one of skill in the art would be able
to envisage the idea of text modification according to predefined
rules.
App. Br. 17−18. The support in the Specification Appellant is referring to is
at paras. 45, 47, 74, and 80.
as correctly acknowledged at page 13 of the Office Action, the
Specification discloses that “the formatter 206 modifies the text
at step 916” (See Specification at [0045] and “the formatter 205
either prompts the developer 114 to modify the text, or modifies
the text automatically according to predetermined rules.”
(See Specification at [0074] (emphasis added)). Further,
paragraphs [0047] and [0080] also disclose modification of the
text without further input from the user.
Id. at 17.
The Examiner responds, inter alia, that:

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The terms “automatic” or “automatically” are not
synonymous or equivalent to ““without receiving any additional
user input”, and this negative limitation does find other support
in Appellant’s description, and furthermore, Appellant does not
argue any further or other support. There are many mentions and
several descriptions, including specific processes, regarding
manually editing the message and what the advertiser or
marketer may do; however, there is only the brief mentions noted
regarding any automated processing and the automated
processing is not explicit or clear that this may imply ““without
receiving any additional user input”’. As such, the Examiner
concludes that there is a lack of written support.
Ans. 13.
To that, Appellant responds by repeating the afore–cited passages
from the Specification which state that a formatter prompts the developer to
modify text or the formatter “modifies the text automatically according to
predetermined rules.” Reply Br. 7.
One of skill in the art would recognize that the phrase “or
modifies the text automatically according to predetermined
rules” is presented as an alternative to prompting the developer
for text, and thus is intended to disclose modifying the text
without prompting the developer to do so. … one of skill in the
art would recognize that the descriptions of automatically modify
text or message presented in the disclosure convey that the
inventors were in possession of the idea of “without receiving
any additional user input to modify the message” as set forth in
the claims.
Id.
“To satisfy this requirement, the specification must describe the
invention in sufficient detail so ‘that one skilled in the art can clearly
conclude that the inventor invented the claimed invention as of the filing
date sought.’ Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir.
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1997); see also LizardTech, Inc. v. Earth Res. Mapping, Inc., 424 F.3d 1336,
1345 (Fed. Cir. 2005); Eiselstein v. Frank, 52 F.3d 1035, 1039 (Fed. Cir.
1995).” In re Alonso, 545 F.3d 1015, 1019 (Fed. Cir. 2008).
A principal difficulty with the Examiner’s reasoning is that it appears
to acknowledge that the Specification discloses a formatter automatically
modifying text to comply with rules but then questions why:
there is no explanation or description of how to automatically
modify the message, what “step 916” comprises or entails (Fig.
9, merely says “Modify Text” for this step), or what
“predetermined rules” would be employed.
Final Act. 13. But the question regarding written descriptive support
concerns whether the Specification describes what is now claimed, not what
is necessary to enable one to make or use what is now claimed. That is the
subject of the enablement requirement of §112, which is not before us.
We have considered the Examiner’s position that the Specification
fails to provide written descriptive support for “without receiving any
additional user input to modify the message” but find it is not adequately
explained. For that reason, the rejection is not sustained.

The rejection of claims 1−4, 9, 10, 13−23, 27, 28, 31−37, 60−63, 67, 68,
and 70−76 under 35 U.S.C. §101 for claiming patent-ineligible subject
matter.
Representative claim
The Appellant argues these claims as a group. See Appeal Br. 7–14.
We select claim 1 as the representative claim for this group, and the
remaining claims 2–4, 9, 10, 13−23, 27, 28, 31−37, 60−63, 67, 68, and
70−76 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
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Introduction
35 U.S.C. § 101 provides that “[w]hoever invents or discovers any
new and useful process, machine, manufacture, or composition of matter, or
any new and useful improvement thereof, may obtain a patent therefor.”
In that regard, claim 1 covers a “process” and is thus statutory subject
matter for which a patent may be obtained.2 This is not in dispute.
However, the 35 U.S.C. § 101 provision “contains an important
implicit exception: Laws of nature, natural phenomena, and abstract ideas
are not patentable.” Alice Corp. Pty. Ltd. 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)).
In that regard, notwithstanding claim 1 covers statutory subject
matter, the Examiner has raised a question of patent eligibility on the ground
that claim 1 is directed to an abstract idea.
Alice identifies a two-step framework for determining whether
claimed subject matter is directed to an abstract idea. Alice, 573 U.S. at 217.
Alice step one — the “directed to” inquiry:
According to Alice step one, “[w]e must first determine whether the
claims at issue are directed to a patent-ineligible concept.” Alice, 573 U.S.
at 218 (emphasis added).
The Examiner determined, inter alia, that claim 1 is directed to:

2 This corresponds to Step 1 of the 2019 Revised 101 Guidance, which
requires determining whether “the claim is to a statutory category.” 84 Fed.
Reg. 50, 53 (Jan. 7, 2019). See also id. at 53–54 (“consider[] whether the
claimed subject matter falls within the four statutory categories of patentable
subject matter identified by 35 U.S.C. 101.”).
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storing social media system (SMS) publishing rules, receiving
input of a message and the SMS to which it is to be published,
retrieving and applying the respective rule(s), reformatting the
message to comply when it does/did not originally comply, and
transmitting the reformatted and complying message to the
respective SMS, and doing this by a processor device.
Final Act. 18.
Appellant disagrees, arguing, inter alia, that claim 1 “recites a specific
manner of publishing messages to social media systems (SMS’s) that
conform to different social media platforms’ respective publishing rules,
which provides a specific improvement over prior systems.” App. Br. 10–
11. “As recited in claim 1, allowing a user to publish messages to SMS’s,
without requiring the user to manually edit messages to comply with each
SMS’s rules, is a practical application in the field of social media publishing
systems.” Id.
Accordingly, Appellant argues there is an improvement in technology.
Thus there is a dispute over whether claim 1 is directed to an abstract
idea. Specifically, is claim 1 directed to storing rules, receiving input,
retrieving and applying rules, reformatting a message, and transmitting the
reformatted message via a generic computing device (see Final Act. 6–7) or
an improvement in technology (see e.g., Appeal Br. 4)?

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Claim Construction3
We consider the claim as a whole giving it the broadest reasonable
construction as one of ordinary skill in the art would have interpreted it in
light of the Specification at the time of filing.4,5,6
Claim 1 describes a “method” which “is performed by at least one
device comprising a hardware processor.” As far as the processor is
concerned, the Specification states that “[p]rocessors may include general …
purpose microprocessors.” Spec., para. 33. Accordingly, the “device”
covers generic computing devices.
Said “at least one device” further comprises “a social relationship
management (SRM) application” and a “database.”

3 “[T]he important inquiry for a § 101 analysis is to look to the claim.”
Accenture Glob. Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336,
1345 (Fed. Cir. 2013). “In Bancorp Servs., L.L.C. v. Sun Life Assurance Co.
of Can., 687 F.3d 1266, 1273 (Fed. Cir. 2012), the court observed that
‘claim construction is not an inviolable prerequisite to a validity
determination under § 101.’ However, the threshold of § 101 must be
crossed; an event often dependent on the scope and meaning of the claims.”
Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1347–48
(Fed. Cir. 2015).
4 “In determining the eligibility of respondents’ claimed process for patent
protection under § 101, their claims must be considered as a whole.”
Diamond v. Diehr, 450 U.S. 175, 188 (1981).
5 “First, it is always important to look at the actual language of the claims. .
. . Second, in considering the roles played by individual limitations, it is
important to read the claims ‘in light of the specification.’” Smart Sys.
Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1378 (Fed. Cir.
2017) (J. Linn, dissenting in part and concurring in part) (citing Enfish, LLC
v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016)), among others.
6 See 2019 Revised 101 Guidance, 84 Fed. Reg. at 52, n.14 (“If a claim,
under its broadest reasonable interpretation.”).
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The “database” is generic. See Spec., para. 57 (“[a] typical relational
database”).
The SRM appears to be generic as well. The Specification describes
the SRM in terms of what it is intended to do (e.g., formatting a message)
with little in the way of technical detail. The Specification describes an
exemplary environment which “includes a social relationship
manager (SRM) 101 including a managing module 102 coupled with a
database, such as a marketing program information database 104.” Para. 33
(referring to Fig. 1). The SRM is connected to the SMSs via e.g., the
“Internet” using computing devices “such as such as cell phones, PDAs,
desktops, laptops, tablets, and notebooks.” Id. The Spec. further describes
an “exemplary architecture for an embodiment of the SRM.” Para. 40.
[T]he SRM 101 includes the managing module 102, the
marketing program information database 104, and a user
interface 201, connected through the Internet 108 to an input
module 202 for accepting inputs and displaying system outputs
(such as analytics relating to the success of one or more
marketing programs and/or individual marketing messages). The
managing module 102 further includes a scheduler 204 for
scheduling delivery of messages 120, a formatter 206 for
customizing message format according to the destination social
media system 110, and a publisher 208 for publishing the
message on the destination marketing programs 118 at the
scheduled time.
Id. The exemplary architecture of SRM 101 described in para. 40 is
illustrated in Fig. 2, reproduced below:
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One of ordinary skill in the art reading said passages and Figure 2
would understand the SRM to be a software application that processes
information. Given the lack of structural detail, one would understand that
the disclosed “SRM” covers applications capable of performing the
functions claimed; that is, the “storing,” “receiving,” “retrieving,”
“determining,” “determining,” “formatting,” “transmitting,” and
“transmitting” steps of claim 1.
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The process claimed also involves at least two “social media system
(SMS)”’s but these are generic. See Spec., paras. 3 and 30.
In the order as claimed, the steps are:
1. “storing [A] in a database according to [B]”;
2. “receiving [C]”;
3. “retrieving … from the database [D]”;
4. “determining [E];”
5. “determining [F];”
6. “formatting [G];”
7. “transmitting [G1] to the first SMS, via an interface of the first SMS;”
and,
8. “transmitting [C1] to the second SMS without modifying [C1], via an
interface of the second SMS”;
where,
A is “social media system (SMS) publishing rules”;

B is “a database scheme that maps (a) a plurality of SMS
identifiers associated, respectively, with a plurality of SMS’s
supported by the SRM application to (b) a plurality of message
formatting rules mandated, respectively, by the plurality of
SMS’s”;

C is “first user input comprising [C1], and second user input
selecting at least a first SMS and a second SMS, of the plurality
of SMS's, as targets for publishing the message”;
C1 is “a message to be published to social media”;
D is “[D1] and [D2]”;

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D1 is “a first message formatting rule mandated by the
first SMS”;

D2 is “a second message formatting rule mandated by the
second SMS”;

E is “[C1] does not comply with [D1]”;

F is “[C1] complies [D2]”;

G is “[C1] to obtain [G1] that complies with [D1]”; and,

G1 is “a formatted message”.
Claims 1 further calls for steps 4–8 to be performed “subsequent to”
step 2, “without receiving any additional user input to modify the message
[i.e., C1].”
Claim 1 is reasonably broadly construed as covering a scheme for
transmitting messages to SMSs formatted in conformance with their
respectively mandated rules employing a generic device comprising an
application and database to conduct said scheme. This comports with the
Specification.
According to the Specification, the invention “relates generally to
social media systems, and more particularly to methods and systems that
support the practice of marketing on social media systems.” Para. 2.
“[V]iral marketing through these social media systems can prove profitable
for organizations in terms of additional media coverage, [but due to]
increased click-through rates, greater brand awareness, timely updates, etc.,
organizations may face difficulties in maintaining and managing more than
one marketing campaign or program on an ongoing basis.” Para. 4.
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Currently, no existing service effectively assists marketers and
advertisers in managing the marketing programs spread over
multiple social media systems.
Therefore, a long-felt but unresolved need exists for a
system or method that manages multiple marketing programs on
multiple social networking systems. There remains a further need
for a system or method that is simple to implement, does not
require extensive data analysis, and can be easily configured
according to the user’s preferences to manage any number of
marketing programs.
Paras. 4–5. To that end, the inventors have devised:
a computer-implemented method for managing one or more
marketing programs present on multiple social networking
systems. Initially, the method develops a message for at least one
marketing program. The message may comprise a text string,
multimedia message, or custom file (such as a .swf file that will
render on more than one social media platform). Next, delivery
of the developed message to the destination marketing programs
is scheduled. The method further customizes the message format
according to the corresponding social networking systems,
before publishing the customized message on the marketing
programs at the scheduled time.
Para. 6.
Given the method as claimed as reasonably broadly construed above
and in light of the Specification’s description of the objective of the
invention as, inter alia, to “customiz[ing] [a] message format according to
the corresponding [SMSs]” (id.), we reasonably broadly construe claim 1 as
being directed to a scheme for transmitting messages to SMSs formatted in
conformance with their respectively mandated rules.
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The Abstract Idea7
Above, where we reproduce claim 1, we identify in italics the
limitations we believe recite an abstract idea.8 Based on our claim
construction analysis (above), we determine that the identified limitations
describe a scheme for transmitting messages to SMSs formatted in
conformance with their respectively mandated rules. Transmitting messages
is an interaction between people. It falls within the enumerated “[c]ertain
methods of organizing human activity” grouping of abstract ideas set forth in
the 2019 Revised 101 Guidance.9 2019 Revised 101 Guidance, 84 Fed. Reg.
at 52. Accordingly, we disagree with Appellant’s view that claim 1 is not

7 This corresponds to Step 2A of the 2019 Revised 101 Guidance. Step 2A
determines “whether a claim is ‘directed to’ a judicial exception,” such as an
abstract idea. Step 2A is two prong inquiry.
8 This corresponds to Prong One (a) of Step 2A of the 2019 Revised 101
Guidance. “To determine whether a claim recites an abstract idea in Prong
One, examiners are now to: (a) Identify the specific limitation(s) in the
claim under examination (individually or in combination) that the examiner
believes recites an abstract idea.” 84 Fed. Reg. at 54.
9 This corresponds to Prong One [“Evaluate Whether the Claim Recites a
Judicial Exception”] (b) of Step 2A of the 2019 Revised 101 Guidance. “To
determine whether a claim recites an abstract idea in Prong One, examiners
are now to: . . . (b) determine whether the identified limitation(s) falls within
the subject matter groupings of abstract ideas enumerated in Section 1 of the
[2019 Revised 101 Guidance].” 84 Fed. Reg. at 54. This case implicates
subject matter grouping “(b):” “(b) Certain methods of organizing human
activity—fundamental economic principles or practices (including hedging,
insurance, mitigating risk); commercial or legal interactions (including
agreements in the form of contracts; legal obligations; advertising,
marketing or sales activities or behaviors; business relations); managing
personal behavior or relationships or interactions between people (including
social activities, teaching, and following rules or instructions).” Id. at 52.
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directed to subject matter falling within the “[c]ertain methods of organizing
human activity” grouping set forth in the 2019 Revised 101 Guidance. See
App. Br. 9–10.
Technical Improvement10 (Appellant’s Argument)
Our characterization of what the claim is directed to is similar to that
of the Examiner’s, albeit the Examiner’s characterization is described at a
somewhat lower level of abstraction. Nevertheless, “[a]n abstract idea can
generally be described at different levels of abstraction.” Apple, Inc. v.
Ameranth, Inc., 842 F.3d 1229, 1240, 1240–41 (Fed. Cir. 2016) (“The
Board’s slight revision of its abstract idea analysis does not impact the
patentability analysis.”).
We have reviewed the record and are unpersuaded as to error in our or
the Examiner’s characterization of what claim 1 is directed to.
The method as claimed describes, in very general terms, steps for
processing (via “storing,” “receiving,” “retrieving,” “determining,”

10 This corresponds to Prong Two [“If the Claim Recites a Judicial
Exception, Evaluate Whether the Judicial Exception Is Integrated Into a
Practical Application”] of Step 2A of the 2019 Revised 101 Guidance. “A
claim that integrates a judicial exception into a practical application will
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.” 84 Fed. Reg.
at 54. One consideration, implicated here, that is “indicative that an
additional element (or combination of elements) may have integrated the
exception into a practical application” is if “[a]n additional element reflects
an improvement in the functioning of a computer, or an improvement to
other technology or technical field.” Id. at 55.

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“determining,” “formatting,” “transmitting,” and “transmitting” steps)
certain types of information (i.e., “a message to be published to social
media”). The method as claimed is not focused on improving technology
but on a scheme for widening the audience for a message. See e.g., Reply Br.
6: “allows for publication of a message to a social media server such that the
message is accessible by the general public”. Cf. Trading Techs. Int’l, Inc.
v. IBG LLC, 921 F.3d 1378, 1384 (Fed. Cir. 2019) (“The claims are focused
on providing information to traders in a way that helps them process
information more quickly, ’556 patent at 2:26–39, not on improving
computers or technology.”).
We have carefully reviewed the claim. Per our previous claim
construction analysis, claim 1 is reasonably, broadly construed as covering a
scheme for transmitting messages to SMSs formatted in conformance with
their respectively mandated rules. We see no specific asserted improvement
in computer capabilities recited in the claim. Rather than being directed to
any specific asserted improvement in computer capabilities, the claim
supports the opposite view — that the claimed subject matter is directed to a
scheme for transmitting messages to SMSs formatted in conformance with
their respectively mandated rules.
The claim provides no additional structural details that would
distinguish any device required to be employed to practice the method as
claimed, such as the recited “a social relationship management (SRM)
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application,” “database,” and “hardware processor” from its generic
counterparts11 as we have explained earlier.
With respect to the “storing,” “receiving,” “retrieving,”
“determining,” “determining,” “formatting,” “transmitting,” and
“transmitting” steps, the Specification attributes no special meaning to any
of these operations, individually or in the combination, as claimed. In our
view, these are common computer processing functions that one of ordinary
skill in the art at the time of the invention would have known generic
computers were capable of performing and would have associated with
generic computers. Cf. OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d
1359, 1363 (Fed. Cir. 2015).
Beyond the abstract idea of offer-based price optimization, the
claims merely recite “well-understood, routine conventional
activit[ies],” either by requiring conventional computer activities
or routine data-gathering steps. Alice, [573 U.S. at 225 (quoting
Mayo, 566 U.S. at 73)] . . . . For example, claim 1 recites
“sending a first set of electronic messages over a network to
devices,” the devices being “programmed to communicate,”
storing test results in a “machine-readable medium,” and “using
a computerized system . . . to automatically determine” an
estimated outcome and setting a price. Just as in Alice, “all of
these computer functions are ‘well-understood, routine,
conventional activit[ies]’ previously known to the industry.”
Alice, [573 U.S. at 225 (quoting Mayo, 566 U.S. at 73])
(alterations in original); see also buySAFE[, Inc. v. Google, Inc.],
765 F.3d [1350,] 1355 [(Fed. Cir. 2014)] (“That a computer

11 Cf. Move, Inc. v. Real Estate Alliance Ltd., 721 F. App’x 950, 954 (Fed.
Cir. 2018) (non-precedential) (“Claim 1 is aspirational in nature and devoid
of any implementation details or technical description that would permit us
to conclude that the claim as a whole is directed to something other than the
abstract idea identified by the district court.”).
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receives and sends the information over a network—with no
further specification—is not even arguably inventive.”).
Accordingly, within the meaning of the 2019 Revised 101 Guidance,
we find there is no integration of the abstract idea into a practical
application.
Appellant contends, inter alia, that claim 1:
recites a specific manner of publishing messages to social media
systems (SMS’s) that conform to different social media
platforms' respective publishing rules, which provides a specific
improvement over prior systems. Specifically, Claim 1 recites
technical operations whereby, “[w]hen mandated by a social
media system's message formatting rule(s), the SRM
application formats the message accordingly, without
additional user input to modify the message and without
requiring the user to have any knowledge whatsoever of the
applicable rule(s).” Expert Declaration at ¶ 9 (emphasis in
original). As recited in claim 1, allowing a user to publish
messages to SMS’s, without requiring the user to manually edit
messages to comply with each SMS’s rules, is a practical
application in the field of social media publishing systems.
App. Br. 10–11.
We have carefully considered this contention and reviewed the
Declaration of Vernon W. Hui, dated Feb. 4, 2019 (“Dec.”) The principal
difficulty is that we are unable to ascertain from the claim the “technical
operations” (App. Br. 11) which, “[w]hen mandated by a social media
system’s message formatting rule(s), the SRM application formats the
message accordingly, without additional user input to modify the
message and without requiring the user to have any knowledge
whatsoever of the applicable rule(s)” (Dec. ¶ 9). We are unable to point to
any claim language suggestive of a technical improvement, such as an
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improvement in computer performance. Nor can we find any suggestion of
such improvements in the intrinsic record so as to find that “the specification
as a whole … makes clear …the technological benefit.” Koninklijke KPN
N.V. v. Gemalto M2M GmbH, 942 F.3d 1143, 1152 (Fed. Cir. 2019).
A principal difficulty with the contention is that it points to the recited
“formatting” and “transmitting” steps themselves, a part of the very subject
matter that we, and the Examiner, have characterized as being an abstract
idea. Rather than showing that these steps yield a technical improvement in
say computer performance, the Appellant points to the result-based
functional language in the claim. We appreciate that the claim requires said
steps to occur “subsequent to receiving the first user input and the second
user input, without receiving any additional user input to modify the
message.” But even with that qualification, we are unable to discern the
technological improvement that conducting them “without receiving any
additional user input to modify the message” would achieve. Cf. Novo
Transforma Technologies, LLC v. Sprint Spectrum L.P., 2015 WL 5156526,
at *3 (D. Del. 2015), aff’d, Novo Transforma Technologies LLC v. Sprint
Spectrum, L.P., 669 Fed.Appx. 555 (Fed. Cir. 2016):
Plaintiff argues that the claimed invention is not directed
to an abstract idea because it addresses a problem that
“specifically arises in the context of communication networks
due to the presence of incompatible devices and formats.” (Id. at
12). The ‘034 specification explains that the claimed invention
addresses the problem of “incompatibility between different
communication services employing different media for
communicating information.” (D.I. 1-1 at 13, col. 1:63-64).
This problem, however, does not “specifically aris[e] in
the realm of computer networks,” and the solution is not
“necessarily rooted in computer technology.” See DDR
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Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed.
Cir. 2014). Incompatible communication types have existed
since before the emergence of computers and the Internet.
Translators have been used for centuries to facilitate
communication between individuals who speak different
languages. The translator receives a message in one language,
translates it into another, and delivers the translated message.
Here, the claims require a computer system that receives a
payload in one media form, translates it into a different media
form, and delivers the translated payload. This is no different
than the function of a translator.
By so broadly defining the inventive method, that is, by setting out
what it is aspiring to accomplish without any technical details for achieving
it, let alone any purported computer improvement, the claim is in effect
presenting the invention in result-based functional language, strengthening
our determination under Alice step one that the claim is directed to an
abstract idea. Cf. Two-Way Media Ltd. v. Comcast Cable Commc’ns, LLC,
874 F.3d 1329, 1337 (Fed. Cir. 2017) (“Claim 1 recites a method for routing
information using result-based functional language. The claim requires the
functional results of ‘converting,’ ‘routing,’ ‘controlling,’ ‘monitoring,’ and
‘accumulating records,’ but does not sufficiently describe how to achieve
these results in a non-abstract way.”). See also Uniloc USA v. LG Elecs.
USA, 957 F.3d 1303, 1308 (Fed. Cir. 2020):
The claims we held ineligible in Two-Way Media similarly failed
to concretely capture any improvement in computer
functionality. In Two-Way Media, the claims recited a method
of transmitting packets of information over a communications
network comprising: converting information into streams of
digital packets; routing the streams to users; controlling the
routing; and monitoring the reception of packets by the users.
874 F.3d at 1334. Two-Way Media argued that the claims solved
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data transmission problems, including load management and
bottlenecking, but the claimed method was not directed to those
improvements. Id. at 1336–37. We therefore held the claims
ineligible because they merely recited a series of abstract steps
(“converting,” “routing,” “controlling,” “monitoring,” and
“accumulating records”) using “result-based functional
language” without the means for achieving any purported
technological improvement. Id. at 1337.
We have considered Appellant’s other arguments challenging the
Examiner’s determination under step one of the Alice framework and find
them unpersuasive. For the foregoing reasons, the record supports the
Examiner’s determination that claim 1 is directed to an abstract idea.

Alice step two — Does the Claim Provide an Inventive Concept?12
Step two 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.’” Alice, 573 U.S. at 217–18 (quoting Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 73 (2012)).
In that regard, the Examiner determined, inter alia, that:
There is no indication the Examiner can find in the record
regarding any specialized computer hardware or other
“inventive” components, but rather, the claims merely indicate
computer components which appear to be generic components

12 This corresponds to Step 2B, of the 2019 Revised 101 Guidance, 84 Fed.
Reg. at 56 “if a claim has been determined to be directed to a judicial
exception under revised Step 2A, examiners should then evaluate the
additional elements individually and in combination under Step 2B to
determine whether they provide an inventive concept (i.e., whether the
additional elements amount to significantly more than the exception itself).”
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and therefore do not satisfy an inventive concept that would
constitute “significantly more” with respect to eligibility.
The individual elements therefore do not appear to offer
any significance beyond the application of the abstract idea itself,
and there does not appear to be any additional benefit or
significance indicated by the ordered combination, i.e., there
does not appear to be any synergy or special import to the claim
as a whole other than the application of the idea itself.
Final Act. 21. We agree.
We addressed the matter of whether the claim presented any purported
specific asserted technical improvements in our analysis above under
step one of the Alice framework. This is consistent with the case law. See
Ancora Techs., Inc. v. HTC Am., Inc., 908 F.3d 1343, 1347 (Fed. Cir. 2018)
(“We have several times held claims to pass muster under Alice step one
when sufficiently focused on such improvements.”). Such an argument, as
the Appellant has made here, can also challenge a determination under step
two of the Alice framework. See buySAFE, 765 F.3d at 1354–55. “[R]ecent
Federal Circuit jurisprudence has indicated that eligible subject matter can
often be identified either at the first or the second step of the Alice/Mayo
[framework].” See 2019 Revised 101 Guidance, 84 Fed. Reg. at 53, n.17.
The Appellant contends that claim 1:
recites technical operations whereby, “[w]hen mandated by a
social media system's message formatting rule(s), the SRM
application formats the message accordingly, without
additional user input to modify the message and without
requiring the user to have any knowledge whatsoever of the
applicable rule(s).” Expert Declaration at ¶ 9 (emphasis in
original). These operations are not well understood, routine, or
conventional activity in the field of social media publishing
systems. At the time of the invention,
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there was a long-felt but unresolved need for a system
that supported multiple social media systems, and that
allowed a user to publish messages to any of those
social media systems without requiring the user to (a)
remember each social media system’s particular
message formatting rules, (b) enter separate message
for each targeted social media system, or (c) manually
edit messages to comply with each social media
system's rules.

Expert Declaration at ¶8 (emphasis in original). “Claim 1
recites unconventional techniques that satisfy the
aforementioned need.” Id at if 9 (emphasis in original).
App. Br. 12.
But this does not explain in what way the claimed method provides a
technical improvement. Rather than being based on any technical details,
the argument appears to look to the very scheme for transmitting messages
to SMSs formatted in conformance with their respectively mandated rules
that we have characterized as being an abstract idea. In effect, the Appellant
is arguing that the abstract idea is “not well-understood, routine or
conventional.” That may be but “[g]roundbreaking, innovative, or even
brilliant discovery does not by itself satisfy the § 101 inquiry.” Ass’n for
Molecular Pathology, 569 U.S. at 591. Cf. Intellectual Ventures I LLC v.
Symantec Corp., 838 F.3d 1307, 1315 (Fed. Cir. 2016).
Indeed, “[t]he ‘novelty’ of any element or steps in a process, or
even of the process itself, is of no relevance in determining
whether the subject matter of a claim falls within the § 101
categories of possibly patentable subject matter.” Diamond v.
Diehr, 450 U.S. 175, 188–89 (1981) (emphasis added); see also
Mayo, 132 S. Ct. at 1303–04 (rejecting “the Government’s
invitation to substitute §§ 102, 103, and 112 inquiries for the
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better established inquiry under § 101”). Here, the jury’s general
finding that Symantec did not prove by clear and convincing
evidence that three particular prior art references do not disclose
all the limitations of or render obvious the asserted claims does
not resolve the question of whether the claims embody an
inventive concept at the second step of Mayo/Alice.
The arguably unconventional nature of the abstract idea does not affect the
determination that the claim is directed to an abstract idea. The abstract idea
itself cannot amount to “‘significantly more than a patent upon the
[ineligible concept] itself.’” Alice, 573 U.S. at 218 (quoting Mayo, 566 U.S.
at 73), whether or not it is conventional.
We are unpersuaded that claim 1 presents an element or combination
of elements indicative of a specific asserted technical improvement, thereby
rendering the claimed subject matter sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon a scheme for
transmitting messages to SMSs formatted in conformance with their
respectively mandated rules.
We have reviewed the claim in light of the Specification and, as
explained above, we find the claimed subject matter insufficiently expresses
a technical improvement as a result of performing the functions as broadly
as they are recited.
Here, the Specification is intrinsic evidence that the “device”
comprising “a social relationship management (SRM) application,”
“database,” and “hardware processor” as claimed is a conventional generic
computer. In doing so, we have followed “Changes in Examination
Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter
Eligibility Decision (Berkheimer v. HP Inc.[, 881 F.3d 1360 (Fed. Cir.
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2018)],” USPTO Memorandum, Robert W. Bahr, Deputy Commissioner For
Patent Examination Policy, April 19, 2018 (the “Berkheimer Memo”)).
Here, the Specification indisputably shows the recited “device” and
the elements it comprises, individually and in the context as claimed was
conventional at the time of filing. Accordingly, there is sufficient factual
support for the well-understood, routine, or conventional nature of the
claimed device and its elements individually or in the combination as
claimed.
No other persuasive arguments having been presented, we conclude
that no error has been committed in the determination under Alice step two
that claim 1 does not include an element or combination of elements
circumscribing the patent-ineligible concept it is directed to so as to
transform the concept into a patent–eligible application.
We have considered all of the Appellant’s arguments (including those
made in the Reply Brief) and find them unpersuasive.
Accordingly, because we are not persuaded as to error in the
determinations that representative claim 1, and claims 2–4, 9−10, 13−23, 27,
28, 31−37, 60−63, 67, 68, and 70−76 which stand or fall with claim 1, are
directed to an abstract idea and do not present an “inventive concept,” we
sustain the Examiner’s conclusion that they are directed to patent-ineligible
subject matter for being judicially-excepted from 35 U.S.C. § 101. Cf.
LendingTree, LLC v. Zillow, Inc., 656 F. App’x 991, 997 (Fed. Cir. 2016)
(“We have considered all of LendingTree’s remaining arguments and have
found them unpersuasive. Accordingly, because the asserted claims of the
patents in suit are directed to an abstract idea and do not present an
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‘inventive concept,’ we hold that they are directed to ineligible subject
matter under 35 U.S.C. § 101.”); see, e.g., OIP Techs., 788 F.3d at 1364;
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1098 (Fed. Cir.
2016).

The rejection of claims 1−3, 5, 8–10, 13–17, 20–22, 27, 28, 31–35, 60–62,
64, 66–68, and 70-74 under 35 U.S.C. § 103(a) as being unpatentable over
Sarukkai and Broida.
The claims call for “a plurality of SMS’s.” Independent claims 1, 20,
and 60.
The Examiner found that Sarukkai discloses a “plurality of SMS’s
(see at least ¶¶ 0020 and 0026, mobile messaging including SMS, MMS, etc.
‘routed through mobile network operators (‘MNOs’)’, as a social media
system, 0060, ad delivery layer determines maximum length to comply with
space restrictions, 0070, space requirements, 0094 number of characters;
citation hereafter by number only).” Final Act. 23.
The “SMS” Sarukkai is referring to is “a short message service
(‘SMS’).” Para. 26. The “SMS” the claims are referring to is a “social
media system (SMS)” (claims 1, 20, and 60). They are not the same thing.
We agree with Appellant that “Sarukkai is non-analogous to the present
application.” Appeal Br. 15.
The rejection is not sustained.
The rejection of claims 4, 23, and 63 under 35 U.S.C. § 103(a) as being
unpatentable over Sarukkai, Broida, and Maigret.
The rejection of claims 18–19, 36, 37, and 75, 76 under 35 U.S.C. § 103(a)
as being unpatentable over Sarukkai, Broida, and Stein.
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These rejections are not sustained for the reason discussed above in
not sustaining the rejection of the respective independent claims on which
these claims depend.
CONCLUSION
The decision of the Examiner to reject claims 1−4, 9−10, 13−23,
27−28, 31−37, 60−63, 67, 68, and 70−76 is affirmed.
More specifically:
The rejection of claims 1−4, 9, 10, 13−23, 27, 28, 31−37, 60−63, 67,
68, and 70−76 under 35 U.S.C. § 112(a), first paragraph, as failing to
comply with the written description requirement is reversed.
The rejection of claims 1−4, 9, 10, 13−23, 27, 28, 31−37, 60−63, 67,
68, and 70−76 under 35 U.S.C. § 101 for claiming patent-ineligible subject
matter is affirmed.
The rejection of claims 1−3, 5, 8–10, 13–17, 20–22, 27–28, 31–35,
60–62, 64, 66–68, and 70−74 under 35 U.S.C. § 103(a) as being
unpatentable over Sarukkai and Broida is reversed.
The rejection of claims 4, 23, and 63 under 35 U.S.C. § 103(a) as
being unpatentable over Sarukkai, Broida, and Maigret is reversed.
The rejection of claims 18, 19, 36, 37, and 75, 76 under 35 U.S.C.
§ 103(a) as being unpatentable over Sarukkai, Broida, and Stein is reversed.

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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1−4, 9, 10,
13−23, 27,
28, 31−37,
60−63, 67,
68, 70−76
112 Written
Description
1−4, 9, 10,
13−23, 27,
28, 31−37,
60−63, 67,
68, 70−76
1−4, 9, 10,
13−23, 27,
28, 31−37,
60−63, 67,
68, 70−76
101 Eligibility 1−4, 9, 10,
13−23, 27,
28, 31−37,
60−63, 67,
68, 70−76

1−3, 5, 8–
10, 13–17,
20–22, 27,
28, 31–35,
60–62, 64,
66–68,
70−74
103 Sarukkai, Broida 1−3, 5, 8–
10, 13–17,
20–22, 27,
28, 31–35,
60–62, 64,
66–68,
70−74
4, 23, 63 103 Sarukkai, Broida,
Maigret
4, 23, 63
18–19, 36–
37, 75–76
103 Sarukkai, Broida,
Stein
18–19, 36–
37, 75–76
Overall
Outcome
1−4, 9, 10,
13−23, 27,
28, 31−37,
60−63, 67,
68, 70−76

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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