Nicholas Brown et al.

Patent Trials and Appeals Board

Nov 26, 2019

11584839 - (D) (P.T.A.B. Nov. 26, 2019)

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.
11/584,839 10/23/2006 Nicholas Brown 2043.342US1 7151
150601 7590 11/26/2019
Shook, Hardy & Bacon L.L.P.
(eBay Inc.)
2555 Grand Blvd.
KANSAS CITY, MO 64108-2613
EXAMINER
GILKEY, CARRIE STRODER
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
11/26/2019 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):
IPDOCKET@SHB.COM
IPRCDKT@SHB.COM
docketing.shb@clarivate.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NICHOLAS BROWN, SHAWN D. LINDBERG,
JOEY MOUNARATH, RYAN W. SCHOFIELD,
JOSH SUMNER, and JON WATKINS

Appeal 2018-003488
Application 11/584,839
Technology Center 3600

Before JEAN R. HOMERE, ADAM J. PYONIN, and
JEREMY CURCURI, Administrative Patent Judges.
HOMERE, Administrative Patent Judge.
DECISION ON APPEAL
I. STATEMENT OF THE CASE1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–3, 9–13, 19–23, 27, and 28. Appeal
Br. 1. Claims 4–8, 14–18, and 24–26 have been canceled. Claims App. We
have jurisdiction under 35 U.S.C. § 6(b). We affirm.

1 We refer to the Specification, filed October 23, 2006 (“Spec.”); Final
Office Action, mailed April 24, 2017 (“Final Act.”); Appeal Brief, filed
August 18, 2017 (“Appeal Br.”); and Examiner’s Answer, mailed December
14, 2017 (“Ans.”).
2 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 eBay,
Inc. Appeal Br. 3.
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II. CLAIMED SUBJECT MATTER
According to Appellant, the claimed subject matter relates to a
method and system for automatically disposing of referrals in an online
marketplace. Spec. ¶ 1. As depicted in Figures 4 and 5, a referred party
(501) sends a referral (510) to electronically notify a marketplace host (410)
of a problem or concern (e.g. fraudulent registration, transaction, identity
theft, compromised account, spam) regarding a transaction on the
marketplace. Id. ¶¶ 18, 27– 29. Upon receiving the referral (510), a data
gatherer (605) at the host (410) uses data provided in the referral (510) to
obtain from databases (606) related information, which a policy engine (610)
uses to automatically identify and select a policy that most closely matches
the referral (510). Id. ¶ 30, Figure 6. Then, the policy engine (610) forwards
the selected policy to a consequence package engine (620) to automatically
assign to the referral (510) a suitable consequence package, which is
executed to dispose of the referral. Id. ¶¶ 31–32, Figure 12.
Of the rejected claims, claims 1, 11, and 21 are independent. Claim 1,
reproduced below with disputed limitations emphasized in italics, is
illustrative of the claimed subject matter:
1. A method comprising:
receiving a referral at a computer system having a
memory for storage of processing instructions and referral data
objects, the referral being a structured data object with defined
data fields, the referral including referral information
identifying a referred party, the referral information further
including transactional information corresponding to a
transaction in an online marketplace, the referral being a
notification from the referred party to a marketplace host to
inform the marketplace host of a problem or concern regarding
operation of the online marketplace;
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executing the processing instructions on the computer
system to
automatically obtain referred party information related to the
referred party in response to the receiving of the referral;
executing the processing instructions on the computer
system to cause the computer system to automatically select a
policy from a plurality of policies in a policy data structure, at
least one of the policies associated with a set of processing
instructions that are automatically executed by the computer
system and including first triggering parameters that are used
to selectively vary a first threshold at which the policy will be
triggered, the first triggering parameters being automatically
modifiable based on temporal criteria, the automatic selection
of the policy being performed without human intervention
based on a looking-up of the referral in the policy data structure
to identify the policy, based on the referred party information,
and based on the first triggering parameters;
executing the processing instructions on the computer
system to cause the computer system to automatically select a
consequence package from a plurality of consequence packages
in a consequence package data structure, at least one of the
consequence packages including a set of processing instructions
that are automatically executed by the computer system and
including second triggering parameters that are used to
selectively vary a second threshold at which the consequence
package will be triggered, the automatic selection performed
without human intervention based on a looking-up of the
selected policy in the consequence package data structure to
automatically identify the consequence package and
automatically assign the consequence package to the referral
based on the selected policy and in response to the selection of
the policy, at least one of the policies corresponding to a
plurality of candidate consequence packages;
and executing the processing instructions on the
computer system to activate the selected consequence package
to automatically produce a disposition for the referral in
response to the receiving of the referral. (Emphasis added).

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III. REFERENCES
The Examiner relies upon the following references:
Name3 Reference Date Filed
Jones US 2001/000114 A1 May 10, 2001 Dec. 11, 2000
Pomerance US 2002/0010591 A1 Jan. 24, 2002 Feb. 26, 2001
Hung US 2002/0159475 A1 Oct. 31. 2002 Apr. 27, 2002
Lyons US 2005/0114164 A1 May 26, 2005 June 30, 2010
Krishnan US 2006/0213975 A1 Sep. 28, 2006 Mar. 25, 2005

IV. REJECTIONS4
Claims Rejected 35 U.S.C. § Basis/References
1–3, 9–13, 19–23, 27, 28 101 Patent eligibility
1–3, 11–13, 21–23 103(a) Krishnan, Jones, Lyons,
Pomerance
9, 10, 19, 20, 27, 28 103(a) Krishnan, Jones, Lyons,
Pomerance, Hung
V. ANALYSIS
1. Patent Eligibility Rejection
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014).

3 All reference citations are to the first named inventor only.
4 The Examiner withdrew the 112 rejections. Ans. 3–4.
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In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Alice, 573 U.S. at 217–18 (citing Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with
that framework, we first determine what concept the claim is “directed to.”
See Alice, 573 U.S. at 219 (“On their face, the claims before us are drawn to
the concept of intermediated settlement, i.e., the use of a third party to
mitigate settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611
(2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept
of hedging, or protecting against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (Diehr, 450 U.S. at 182 n.7 (quoting Corning v.
Burden, 56 U.S. 252, 267–68 (1854))); and manufacturing flour (Benson,
409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 176, 191 (“We view
respondents’ claims as nothing more than a process for molding rubber
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products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . . is not accorded the protection
of our patent laws,[] and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment.” Id. (citing Benson and Flook), and 187 (“It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221. “A claim that recites an
abstract idea must include ‘additional features’ to ensure ‘that the [claim] is
more than a drafting effort designed to monopolize the [abstract idea].’” Id.
(quoting Mayo, 566 U.S. at 77). “[M]erely requir[ing] generic computer
implementation[] fail[s] to transform that abstract idea into a patent-eligible
invention.” Id.
The PTO recently published revised guidance on the application of
section 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84
Fed. Reg. 50–57 (Jan. 7, 2019) (“2019 PEG”). Under the 2019 PEG, we
first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain
methods of organizing human activity such as a
fundamental economic practice, or mental processes); and

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(2) additional elements that integrate the judicial exception
into a practical application (see MPEP § 2106.05(a)–(c),
(e)–(h)).5

See 2019 PEG, 52, and 55–56. Only if a claim: (1) recites a judicial
exceptional; and (2) does not integrate that exception into a practical
application, does the office then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception
that is not “well-understood, routine, conventional” in the
field (see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a
high level of generality, to the judicial exception.
See 2019 PEG at 56.
We analyze the patent-eligibility rejection with the principles
identified above in mind.
Examiner’s Findings and Conclusions
In the first step of the Alice inquiry, the Examiner determines claims
1–3, 9–13, 19–23, 27, and 28 are directed to the abstract idea of “managing
referrals.” Ans. 4. According to the Examiner, the underlying steps of
“receiving a referral, obtaining referred party information, automatically
selecting a policy, identifying a consequence, and activating the
consequence package” are all steps which can be performed by a human
mentally or using a pen and paper. Id. at 5. The Examiner determines that
these concepts have all been identified as being directed to mental processes.
Id. In particular, the Examiner avers the following:

5 All references to the MPEP are to Rev. 08.2017 (Jan. 2018).
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Several cases have found concepts relating to processes
of comparing data that can be performed mentally abstract, such
as comparing information regarding a sample or test subject to
a control or target data (Ambry, Myriad CAFC), collecting and
comparing known information (Classen), comparing data to
determine a risk level (Perkin-Elmer), diagnosing an abnormal
condition by erforming clinical tests and thinking about the
results (In re Grams), obtaining and comparing intangible data
(Cybersource), and comparing new and stored information and
using rules to identify options (SmartGene).
In the instant case, like SmartGene, the claims are
comparing new and stored information (the received referral
information, which is used to identify a policy, based on a
comparison of the referral
information to policy information), and then rules are used to
identify options (the consequence packages are paired with
policies and one is chosen based on rules). Therefore, based on
the above, the claims are directed to an idea of itself.
Id.
At Alice step 2, the Examiner determines the claims do not recite
additional elements sufficient to amount to significantly more than the
abstract idea of sending and receiving review messages. Id. 6. According to
the Examiner, Appellant has not explained how the additional claim
recitations amount to significant more than the abstract idea of managing
referrals. Id. In particular, the Examiner avers that
[A]ppellant does not show how these limitations are
"improvements to another technology or technical field,
improvements to the functioning of the computer itself,
applying the judicial exception with, or by use of a particular
machine, effecting a
transformation or reduction of a particular article to a different
state or thing, adding a specific limitation other than what is
well-understood, routine, and conventional in the field, or
adding unconventional steps that confine the claim to a
particular useful application, or other meaningful limitations
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beyond generally linking the use of the judicial exception to a
particular technological environment".
Id.
Further, the Examiner determines that merely automating (i.e.,
without human intervention) a task previously performed by humans does
not negate the abstract idea at the center of that task. Id. Because the
Specification indicates that the purpose of the invention is to reduce
recurring expenses to manage the disposition of referrals, as opposed to
improving the functioning of the computer, the Examiner submits that such
automation of the task is not an improvement of the computer itself. Id. at 6–
7 (citing Spec. ¶¶ 5, 6, Enfish), id. at 11–20. Furthermore, the Examiner
avers there is no indication that the combination of elements improves the
functionality of the computer or any other technology. Id. Instead, the
Examiner determines that the claimed steps merely describe receiving,
automatically comparing, selecting, and delivering data over a network,
which are routine functions performed by a generic computer. Id.
Therefore, the Examiner submits that, unlike in DDR Holdings, the proposed
solution is not rooted in technology. Id. at 10.
According to the Examiner, consistent with the notice requirements of
§132, the final rejection provides sufficient rational underpinnings to support
the conclusion that the claim elements are well-understood, routine, and
conventional activities already known in managing referrals. Id. at 8.
Additionally, the Examiner avers that a lack of preemption does not
demonstrate that the claims are patent eligible. Id. at 9, 20.
Appellants’ Contentions
In the first step of the Alice inquiry, Appellant argues while the claims
may be related to the idea of disposing of a referral, the recited steps are
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directed the implementation of the idea, and not the idea itself. Appeal Br.
16. According to Appellant, as in Enfish, the claims in the present
application recite an improvement in the area of computer processing
because it allows the computer to process referrals without human
intervention. Id. at 20. Likewise, Appellant argues the claimed data
structures and threshold are a specific type of data structure designed to
improve the way the computer stores and retrieves data in memory. Id.
Further, Appellant argues that, contrary to the Examiner’s assertion, the data
structure comprising a policy data structure with a first threshold and a
consequence package data structure with a second threshold improves how
the computer manages the information to process referrals without human
intervention. Id. at 21. According to Appellant, maintaining the policies
and the first triggering parameters in the same data structure improves the
overall processing speed of the computer. Id. at 21–22.
In the second step of the Alice inquiry, Appellant argues that, under
Bascom, the Examiner’s conclusory statement without a rational
underpinning or analysis is insufficient to establish that that the claim
elements are well-understood, routine, and conventional the cited claim
elements. Id. at 22–23. According to Appellant, the claims instead recite
specific improvements that amount to significantly more than the abstract
idea of managing referrals and thereby render the claims patent eligible. Id.
at 26. Further, Appellant argues that, as in DDR Holdings, the “automatic
disposition of a referral in an electronic commerce environment is a
technological problem that is solved by the use of the cited data structures
and thresholds for invoking policies and consequence packages.” Id. at 27
(emphasis omitted). Additionally, Appellant argues that because the claims
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do not preempt every application of the idea of disposing of a referral, and
the Examiner fails to consider the implication of the claim, as a whole,
including the recited automatic disposing of a referral in an electronic
commerce environment, the patent eligibility rejection is reversible error.
Id. at 27–29.

Our Review
Applying the guidance set forth in the 2019 PEG, we determine
whether the Examiner has erred in rejecting the claims as being directed to
patent ineligible subject matter.
In revised step 1 of 2019 PEG, we consider whether the claimed
subject matter falls within the four statutory categories of patent-eligible
subject matter identified by 35 U.S.C. § 101: process, machine,
manufacture, or composition of matter. Because independent claim 1 recites
a “method” including a number of steps, claim 1 falls within the process
category of patent-eligible subject matter. Because independent claim 11
recites a “non-transitory machine-readable storage medium” including
instructions, when executed by a computer, performs various functions,
claim 11 falls within the manufacture category of patent-eligible subject
matter. Because independent claim 21 recites a “system” including a
computer for performing various functions, claim 21 falls within a machine
category of patent-eligible subject matter.
In prong 1 of revised step 2A of the 2019 PEG, we determine whether
any judicial exception to patent eligibility is recited in the claims. The
guidance identifies three judicially-excepted groupings of abstract ideas: (1)
mathematical concepts; (2) certain methods of organizing human activity
such as fundamental economic practices; and (3) mental processes.
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Independent claim 1 recites, inter alia, the following steps performed by a
computer:
(1) Receiving a referral ;
(2) Obtaining referred party information;
(3) automatically selecting a policy;
(4) Identifying a consequence package;
(5) Activing the selected consequence package.
At the outset, we note Appellant does not dispute the Examiner’s
determination that these limitations relate to the idea of “managing
referrals,” which can be performed by a human mentally or using a pen and
paper. Appeal Br. 16–18. Therefore, we agree with the Examiner that
sending and receiving messages between parties to process and resolve a
complaint or concern is the kind of data exchange activity that has been
identified by our reviewing court as a mental process. See e.g., Cyberfone.
Additionally, we determine these limitations are steps of “managing
personal behavior or relationships or interactions between people (including
social activities, teaching, and following rules or instructions),” which the
2019 PEG provides are “[c]ertain methods of organizing human activity.”
84 Fed. Reg. 52. Accordingly, independent claims 1, 11, and 21 recite the
judicial exceptions of a mental process and a method of organizing human
activity. Having determined that the claims recite a judicial exception, our
analysis under the 2019 PEG turns now to determining whether there are
“additional elements that integrate the judicial exception into a practical
application.” See MPEP § 2106.05(a)–(c), (e)–(h). “Integration into a
practical application” requires an additional element or a combination of
additional elements in the claim to apply, rely on, or use the judicial
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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 exception. 84 Fed. Reg. 53.
Appellant’s claims 1, 11, and 21 recite a computer-related limitation,
(e.g., a computer system). We do not find the computer-related limitation is
sufficient to integrate the judicial exception into a practical application. The
Specification does not provide additional details about the computer system
that would distinguish it from any generic processing device with storage in
a client-server or distributed network environment. Spec. ¶¶ 19–22.
Although we do not dispute that the computer system includes specific
instructions for automatically processing and disposing a received referral,
Appellant has not persuasively explained how the claimed data structures
and thresholds improve the way the computer stores and retrieves data in
memory. See MPEP § 2106.05(a). Rather, the claims merely adapt the
method of organizing human activity and mental process of processing and
resolving a referral to an execution of steps performed by the computer
system. See Credit Acceptance, 859 F.3d 1044, 1055 (Fed. Cir. 2017) (“Our
prior cases have made clear that mere automation of manual processes using
generic computers does not constitute a patentable improvement in computer
technology.”); see also Bancorp Services, L.L.C. v. Sun Life Assurance Co.
of Canada (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012) (A computer
“employed only for its most basic function . . . does not impose meaningful
limits on the scope of those claims.”). Further, Appellant’s identified
improvements are improvements to the abstract idea, not improvements to a
technology or computer functionality. Thus, on the record before us, the
cited claim limitations do not improve the functionality of the computer
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system by performing operations to dispose of a referral, nor do they achieve
an improved technological result in conventional industry practice. McRO,
Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299, 1316 (Fed. Cir.
2016).
Because claim steps 1–5, outlined above, do not (1) provide any
technical solution to a technical problem as required by DDR Holdings;6 (2)
provide any particular practical application as required by BASCOM;7 or (3)
entail an unconventional technological solution to a technological problem
as required by Amdocs,8 we agree with the Examiner’s determination that
Appellant’s claims 1, 11, and 21 are directed to an abstract idea that is not
integrated into a practical application.
Alice/Mayo—Step 2 (Inventive Concept)
Turning to step 2 of the Alice/Mayo framework, we look to whether
the claim: (a) recites a specific limitation or combination of limitations that
are not well-understood, routine, conventional activity in the field; or (b)
simply appends well-understood, routine, conventional activities previously
known to the industry, specified at a high level of generality, to the judicial

6 See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir.
2014). The Federal Circuit found DDR’s claims are patent-eligible under
35 U.S.C. § 101 because DDR 's claims: (1) do not merely recite "the
performance of some business practice known from the pre-Internet world"
previously disclosed in Bilski and Alice; but instead (2) provide a technical
solution to a technical problem unique to the Internet, i.e., a “solution ...
necessarily rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer networks.” DDR, 773 F.3d at
1257.
7 See BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d
1341 (Fed. Cir. 2016).
8 See Amdocs Ltd. v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016).
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exception. 2019 PEG, 56. We discern no additional element or combination
of elements recited in Appellant’s independent claims 1, 11, and 21 that
contains any “inventive concept” or adds anything “significantly more” to
transform the abstract concept into a patent-eligible application. Alice, 573
U.S. at 221. Appellant does not direct our attention to any portion of the
Specification indicating that the claimed processor performs anything other
than well-understood, routine, and conventional functions, such as receiving
and processing. See Elec. Power Group, LLC v. Alstom S.A., 830 F.3d 1350,
1355 (“Nothing in the claims, understood in light of the [S]pecification,
requires anything other than off-the-shelf, conventional computer, network,
and display technology for gathering, sending, and presenting the desired
information.”); see also buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355
(Fed. Cir. 2015) (“That a computer receives and sends information over a
network–with no further specification is not even arguably inventive.”); and
Alice, 573 U.S. at 224–26 (receiving, storing, sending information over
networks insufficient to add an inventive concept). Instead, Appellant’s
claimed subject matter simply uses generic computer components (computer
system) to perform the abstract idea of a host processing and resolving a
referral received from a client. Appeal Br. 21; see also Spec. ¶¶ 18–22. As
noted above, the use of a generic computer does not alone transform an
otherwise abstract idea into patent-eligible subject matter. As our reviewing
court has observed, “after Alice, there can remain no doubt: recitation of
generic computer limitations does not make an otherwise ineligible claim
patent-eligible.” DDR, 773 F.3d at 1256 (citing Alice, 573 U.S. at 223).
Because the discussed claim elements only recite generic computer
functions that are well-understood, routine, and conventional, the claim is
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devoid of an inventive concept. See Alice, 573 U.S. at 217. Appellant is
reminded that “the ‘inventive concept’ [under step two of the Mayo/Alice
test] cannot be the abstract idea itself” and “Berkheimer . . . leave[s]
untouched the numerous cases from this court which have held claims
ineligible because the only alleged ‘inventive concept’ is the abstract idea.”
Berkheimer v. HP Inc., 890 F.3d 1369, 1374 (Fed. Cir. 2018) (Moore, J.,
concurring). “It has been clear since Alice that a claimed invention’s use of
the ineligible concept to which it is directed cannot supply the inventive
concept that renders the invention ‘significantly more’ than that ineligible
concept.” BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1281, 1290 (Fed.
Cir. 2018). We, therefore, agree with the Examiner that the computer
functions recited in the claims were, in fact, generic, and are met by
numerous case law establishing that using a generic computer to expedite
and automate processes traditionally performed manually, or that are
otherwise abstract, is a well-understood, routine, and conventional use of
such computers. Final Act. 10; see also, e.g., Intellectual Ventures I LLC v.
Symantec Corp., 838 F.3d 1307, 1321 (Fed. Cir. 2016) (utilizing an
intermediary computer to forward information); and Bancorp Services,
L.L.C., 687 F.3d at 1278 (“The computer required by some of Bancorp’s
claims is employed only for its most basic function, the performance of
repetitive calculations, and as such does not impose meaningful limits on the
scope of those claims.”).
To the extent Appellant argues the claims necessarily contain an
“inventive concept” based on their alleged novelty or non-obviousness over
the cited references, Appellant misapprehends the controlling precedent.
Although the second step in the Alice/Mayo framework is termed a search
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for an “inventive concept,” the analysis is not an evaluation of novelty or
non-obviousness, but, rather, a search for “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 217–218. A novel and nonobvious claim directed to a purely
abstract idea is, nonetheless, patent-ineligible. See Mayo, 566 U.S. at 90.
Appellant is further reminded that, in many cases, “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) (citing Alice,
573 U.S. at 224) (“[U]se of a computer to create electronic records, track
multiple transactions, and issue simultaneous instructions” is not an
inventive concept.); see also, e.g., Intellectual Ventures I LLC v. Capital
One Bank, 792 F.3d 1363, 1370 (“[M]erely adding computer functionality to
increase the speed or efficiency of the process does not confer patent
eligibility on an otherwise abstract idea.”). Therefore, the functions recited
in independent claims 1, 11, and 21 do not add any meaningful limitations
beyond generally linking the abstract idea to the particular technological
environment. See Final Act 10–11.
Appellant’s arguments asserting that the claims do not block others
from using the abstraction do not persuade us that the claims are directed to
patent eligible material. Pre-emption is not a separate test for eligibility.
To be clear, the proper focus is not preemption per se, for
some measure of preemption is intrinsic in the statutory right
granted with every patent to exclude competitors, for a limited
time, from practicing the claimed invention. See 35 U.S.C.
§ 154. Rather, the animating concern is that claims should not
be coextensive with a natural law, natural phenomenon, or
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abstract idea; a patent-eligible claim must include one or more
substantive limitations that, in the words of the Supreme Court,
add “significantly more” to the basic principle, with the result
that the claim covers significantly less. See Mayo[, 566 U.S. at
72–73]. Thus, broad claims do not necessarily raise § 101
preemption concerns, and seemingly narrower claims are not
necessarily exempt.
CLS Bank Int’l v. Alice Corp. Pty. Ltd., 717 F.3d 1269, 1281 (Fed.
Cir. 2013) (Lourie, J., concurring), aff’d, 573 U.S. 208; see also Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)
(“While preemption may signal patent ineligible subject matter, the absence
of complete preemption does not demonstrate patent eligibility.”). Because
we find the claimed subject matter covers patent-ineligible subject matter,
the pre-emption concern is necessarily addressed. “Where a patent’s claims
are deemed only to disclose patent ineligible subject matter under the Mayo
framework, . . . preemption concerns are fully addressed and made moot.”
Ariosa Diagnostics, 788 F.3d at 1379.
Because Appellant’s claims 1, 11, and 21 are directed to a patent-
ineligible abstract concept and do not recite something “significantly more”
under the second prong of the Alice analysis, we sustain the Examiner’s
rejection of independent claims 1, 11, and 21 under 35 U.S.C. § 101.
Appellant does not present additional arguments for dependent claims
2, 3, 9–13, 19–23, 27, and 28. Accordingly, for the same reasons as set forth
for independent claims 1, 11, and 21, we sustain the Examiner’s 35 U.S.C.
§ 101 rejection of dependent claims 2, 3, 9–13, 19–23, 27, and 28.

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2. Obviousness Rejection
1. Claims 1, 11, and 21
Appellant argues that the Examiner erred in finding that the
combination of Krishnan, Jones, Lyons, Pomerance, and Hung teaches or
suggests “first triggering parameters being automatically modifiable based
on temporal criteria”, as recited independent claim 1. Appeal Br. 39. In
particular, Appellant argues that Jones’s disclosure of times for sending alert
messages does not teach or suggest parameters that are automatically
modifiable. Id. at 39–40 (citing Jones ¶¶ 97–116). According to Appellant,
Jones does not indicate that the times for sending alerts are equivalent to
“triggering parameters that are used to selectively vary a first threshold at
which the policy will be triggered,”… or that either the “times for sending
alert messages” or the “alert messages” themselves are “automatically
modifiable based on temporal criteria.” Id. at 40.
Appellant’s argument is persuasive of reversible Examiner error. As
a preliminary matter, we note that the Examiner relies upon Krishnan’s
disclosure of an administrator overriding a basic policy concerning the
expiration of points previously credited to a customer’s account for referral
of another customer as teaching triggering parameters that are used to
selectively vary a threshold at which the policy will be triggered. Ans. 23
(citing Krishnan ¶¶ 51–53, 191–202). Further, the Examiner relies on
Jones’s disclosure of an alerting system that sends alerts to a customer at
times preset by an administrator pending the resolution to the customer’s
generated trouble ticket to teach a modifiable trigger based on temporal
criteria. Id. (citing Jones ¶¶ 97–116). The cited portions of Krishnan’s
expiration policy teach or suggest a policy retrieved in response to a
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customer’s referral (request to audit history of points previously awarded to
the customer’s account), and an administrator overriding the policy to
restore the expired points to the customer’s account. The cited portions of
Jones would complement Krishnan to allow the administrator to send alerts
to the customer at preset times while the history of the customer’s account is
under audit. Although the ordinarily-skilled artisan would appreciate that
the administrator could modify the preset times for sending alerts, we agree
with Appellant that neither the alert messages nor the times for sending the
alert messages taught by Jones teach or suggest a threshold for triggering
Krishnan’s expiration policy. Because Krishnan’s expiration policy is
triggered in response to receiving a customer’s referral irrespective of times
for escalating the trouble ticket, modifying the preset times for sending the
alert messages would have no impact upon the Jones policy. Accordingly,
we agree with Appellant that the proposed combination falls short of
teaching or suggesting the disputed limitations.
Because Appellant has shown at least one reversible error in the
rejection of claim 1, we need not reach Appellant’s remaining arguments.
Accordingly, we do not sustain the Examiner’s obviousness rejection of
independent claim 1. Likewise, we do not sustain the rejections of claims 2,
3, 9–13, 19–23, 27, and 28, which recite the disputed limitations.
VI. CONCLUSION
We affirm the Examiner’s patent eligibility rejections of claims 1–3,
9–13, 19–23, 27, and 28 under 35 U.S.C. § 101. We reverse the Examiner’s
obviousness rejections of claims 1–3, 9–13, 19–23, 27, and 28 under
35 U.S.C. § 103(a). Because we have affirmed at least one ground of
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rejection with respect to each claim on appeal, the Examiner’s decision is
affirmed. See 37 C.F.R. § 41.50(a)(1).
VII. DECISION SUMMARY
In summary:

Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3, 9–13, 19–23,
27, 28 101 Patent eligibility
1–3, 9–13,
19–23, 27, 28
1–3, 11–13, 21–23 103(a) Krishnan, Jones, Lyons, Pomerance
1–3, 11–13,
21–23
9, 10, 19, 20, 27,
28 103(a)
Krishnan, Jones,
Lyons, Pomerance,
Hung
9, 10, 19, 20, 27, 28
Overall Outcome 1–3, 9–13, 19–23, 27, 28

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

AFFIRMED