Pham, Andrew T.

Patent Trials and Appeals Board

Mar 22, 2021

2019003854 (P.T.A.B. Mar. 22, 2021)

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.
14/580,503 12/23/2014 Andrew T. Pham 10343-004US1 3861
96039 7590 03/22/2021
Meunier Carlin & Curfman LLC
999 Peachtree Street NE
Suite 1300
Atlanta, GA 30309
EXAMINER
SEOH, MINNAH L
ART UNIT PAPER NUMBER
3611
NOTIFICATION DATE DELIVERY MODE
03/22/2021 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@mcciplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte ANDREW T. PHAM
________________

Appeal 2019-003854
Application 14/580,503
Technology Center 3600
________________

Before JEAN R. HOMERE, BRADLEY W. BAUMEISTER, and
ERIC B. CHEN, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s non-
final rejection of claims 1–17, which constitute all of the pending claims.1
Appeal Br. 4. We have jurisdiction under 35 U.S.C. § 6(b).
The Board conducts a limited de novo review of the appealed
rejections for error based upon the issues identified by Appellant, and in
light of the arguments and evidence produced thereon. Ex parte Frye,
94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
We AFFIRM.

1 Appellant identifies the inventor, Andrew T. Pham, as the real party in
interest. Appeal Brief 4, filed December 4. 2018 (“Appeal Br.”).
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CLAIMED SUBJECT MATTER
Appellant describes the claimed subject matter as follows:
Systems, methods and software for aggregating and
publishing innovations. In particular, users of this system may
submit patent disclosures on various topics or technology areas.
The system may then route the idea submissions through the
patenting process to relatively rapidly develop a large patent
portfolio. In some instances, the submissions may be published
to be made accessible by others as part of a first to publish
infrastructure. Further, the system may provide back end support
for innovation cultivation and harvesting, innovation road
mapping and brainstorming, and collaboration.
Abstract.

STATEMENT OF THE REJECTIONS
Claims 8–17 stand rejected under 35 U.S.C. § 112(a) (pre-AIA § 112,
¶ 1) as failing to comply with the written description requirement. Non-
Final Action 4–8, mailed May 2, 2018 (“Non-Final Act.”).
Claims 8–17 stand rejected under 35 U.S.C. § 112(b) (pre-AIA § 112,
¶ 2) as being indefinite for failing to particularly point out and distinctly
claims the subject matter that the inventor regards as the invention. Non-
Final Act. 8–10.
Claims 1–17 stand rejected under 35 U.S.C. § 101 as being directed to
a judicial exception to patent-eligible subject matter (an abstract idea)
without reciting significantly more. Non-Final Act. 10–22.
Claims 8, 9, 11, and 13–17 stand rejected under 35 U.S.C. § 102(a)(1)
as anticipated by Okazaki (US 2012/0317108 A1; published Dec. 13, 2012).
Non-Final Act. 23–32.
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Claims 1, 3, 4, 6, and 7 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Okazaki and Bortree (US 2014/0040779 A1; published
Feb. 6, 2014). Non-Final Act. 32–41.
Claim 2 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Okazaki, Bortree, and Laurin (US 2002/0107722 A1; Aug. 8, 2002).
Non-Final Act. 41–43.
Claim 5 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Okazaki, Bortree in view of MPEP (USPTO, Manual of Patent
Examining Procedure, Original Ninth Edition, March 2014, E9_R-11.2013).
Non-Final Act. 43–47.
Claim 10 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Okazaki. Non-Final Act. 48–49.
Claim 12 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Okazaki and Redlich (US 2010/0010968 A1; published Jan. 14, 2010).
Non-Final Act. 49–50.

THE SECTION 112 REJECTIONS
The Claims
Claims 8 through 17 set forth the invention in system-claim format.
Independent claim 8 represents the subject matter of these claims. Emphasis
is added to claim language that the Examiner finds invokes 35 U.S.C.
§ 112(f) (pre-AIA § 112, ¶ 6).2

2 In relation to the rejections under 35 U.S.C. § 112, Appellant argues
claims 8–17 together as a group. See Appeal Br. 7–11. Accordingly, we
select independent claim 8 as representative. See 37 C.F.R.
§ 41.37(c)(1)(iv).
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8. An innovation submission management system,
comprising:
an enterprise engine that presents a user interface to
receive an innovation submission related to a technological field,
the submission including at least one of title, summary, a body
of text, a drawing, a tag, and a category;
an aggregation engine that catalogs the innovation
submission and aggregates the innovation submission with other
cataloged innovation submissions based on a likeness in the
technological field in accordance with information contained in
the least one of the title, the summary, the body of text, the
drawing, the tag, and the category;
a publication engine that selectively makes the innovation
submission available to a public audience in an electronic
document format; and
a mapping engine that maps the innovation submission to
the other cataloged submissions in a map using information from
at least one of the title, the summary, the body of text, the
drawing, the tag and the category of the submission and the other
submissions,
wherein the map shows a visualization of a relative
closeness of a subject matter of the innovation submission
in the technological field with the other cataloged
submissions by representing each submission as a node,
and
the map further includes an interaction layer that
receives user inputs to
(1) navigate the map to determine how the
subject matter of the submission is related to,
overlaps, or connected to the other cataloged
submissions, and
(2) redirect a user to the message board
associated with a selected node on the map.

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The Examiner’s Determinations
The Examiner finds that claim 8’s limitation does not expressly recite
“means for,” but nonetheless interprets the limitations under 35 U.S.C.
§ 112(f) (pre-AIA § 112, ¶ 6) because the Examiner determines that the
claim limitations use a generic placeholder that is coupled with functional
language without reciting sufficient structure to perform the recited
functions and that the generic placeholder is not preceded by a structural
modifier. Non-Final Act. 3. “The Examiner emphasizes that the modifiers
of “‘enterprise,’ ‘aggregation,’ ‘publication,’ and ‘mapping,’ do not provide
sufficient structure to the [generic placeholder term ‘engine’] because [the
modifiers] are functionally descriptive rather than structurally descriptive.”
Id.
Based on this interpretation and in light of Appellant’s Specification,
the Examiner interprets the claim limitations to cover a combination of
computer hardware and software. Non-Final Act. 3. The Examiner further
reasons,
All of the identified § 112(f) limitations, other than the function
“presents,” recite specialized computer functions. As such, a
disclosure of an algorithm to perform these functions and to
transform a general purpose computer into a programmed
computer is required. The specification does not provide an
adequate description of an algorithm to support these functions,
and therefore the functional limitations raise issues under both
§ 112(a) and § l12(b).
Non-Final Act. 4.
The Examiner more specifically explains in relation to the §112(a)
rejection,
the Examiner cannot identify any disclosure of steps or
algorithms that show how the Applicant has programmed a
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computer to perform the functions catalogs, makes . . . available,
maps, suggests, routes, provides, and analyzes. The Examiner
identifies only high-level, result-based descriptions of what the
invention is supposed to do, rather than how the results are
achieved. One of skill in the art would not have concluded that
at the time of filing Applicant had possession of the genus of
possible steps or algorithms that could be used to program a
general purpose computer to perform the claimed functions.
Because the claims cover a broad genus of ways to carry out the
specialized computer functions, one of skill would not have been
able to conclude that Applicant had possession of a clearly linked
corresponding algorithm to perform the claimed functions.
Non-Final Act. 7.
With respect to the 112(b) rejection, the Examiner also explains,
Because the specification does not clearly link any corresponding
steps or algorithms by which a computer hardware is
programmed with software to perform the claimed functions, the
claims amount to unbounded functional limitations because one
of skill could not have reasonably ascertained the corresponding
structure and equivalents thereof. Thus, the specification either
does not clearly link or associate the structure and function such
that one of skill could ascertain the corresponding structure and
equivalents, or the corresponding structure has not been
disclosed. Either way, the Examiner concludes that one of skill
would not have been able to avoid possible infringement.
Therefore, the claim is indefinite and is rejected under 35 U.S.C.
§ 112(b).
Non-Final Act. 8–9.
Appellant’s Contentions
Appellant first argues that the language of independent claim 8 does
not invoke the provision of 35 U.S.C. § 112(f). Appeal Br. 7–10.
Specifically, Appellant argues,
the Courts have indicated that if the claim limitation uses a
generic placeholder -- a term that is simply a substitute for the
term “means” -- that the claim may invoke 35 U.S.C. 112(f). . . .
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Examples provided in the MPEP include “mechanism for,”
“module for,” “device for,” “unit for,” “component for,”
“element for,” “member for,” “apparatus for,” “machine for,” or
“system for.”
Appeal Br. 9. Appellant further argues that the MPEP provides no example
of a generic placeholder that substitutes for the terms “enterprise engine that
receives. . .”; “an aggregation engine that catalogs. . .”; “a publication engine
that makes . . . available”; or “a mapping engine.” Id. Appellant urges,
then, that claims 8–17 do not employ placeholder language, let alone a
placeholder term that substitutes for the term “means.” Id.
Appellant next argues that in order for claim language to trigger
section 112(f), the claim element must be set forth by the function it
performs, as opposed to the specific structure, material or acts that perform
the function. Appeal Br. 9. Appellant argues, “[t]ypically, the claim
limitation will use the linking word ‘for’ to associate ‘means’ or a generic
placeholder with the function.” Id. (citing MPEP § 2181). Appellant
acknowledges that other linking terms, such as “so that” and “configured to”
also can indicate that the limitation is reciting a function. Id. And Appellant
does not dispute whether claim 8 sets forth any such linking terms. Id.
Appellant, instead, reasserts that claim 8 includes “no recitation of the term
‘means’ or a generic placeholder, [and] as such, the non-recited term
‘means’ or non-recited generic placeholder cannot [be] modified by
functional language.” Id.
Appellant further argues, “the term ‘means’ or ‘step’ or the generic
placeholder recited in the claim must not be modified by sufficient storage,
material or acts for achieving the specified function such that 35 U.S.C.
§ 112(f) is invoked.” Appeal Br. 10 (citing MPEP § 2181). Appellant then
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reiterates the conclusion, without setting forth any further arguments, that
“claims 8–17 do not meet the requirements of MPEP § 2181 to invoke
35 U.S.C. § 112(f).” Id. Appellant further asserts without supporting
argument, “each limitation of claims 8–17 is modified by sufficient structure
such that 35 U.S.C. § 112(f) should not be invoked.”
Appellant does not present any further arguments specifically in
relation to the written-description rejection under section 112(a) or the
indefiniteness rejection under section 112(b). See Appeal Br. 11. Appellant
instead solely argues that claim 8–17 “meet all of the requirements of
35 U.S.C. §§ 112(a) and (b)” because “the claims do not invoke an
interpretation under 35 U.S.C. § 112(f).” Id.
Analysis
Because Appellant presents no separate arguments regarding the
propriety of the section 112(a) and (b) rejections beyond the arguments that
the claims do not invoke the provisions of section 112(f), answering the
threshold question of whether independent claim 8 invoked section 112(f) is
dispositive of whether Appellant demonstrates reversible error in the
section 112(a) and (b) rejections. The Board conducts a limited de novo
review of the appealed rejections for error based upon the issues identified
by Appellant, and in light of the arguments and evidence produced thereon.
Ex parte Frye, 94 USPQ2d at 1075. The Board may treat arguments
appellant failed to make for a given ground of rejection as waived. See
Hyatt v. Dudas, 551, F.3d 1307, 1313–14 (Fed. Cir. 2008).
We first address the law in general. Appellant acknowledges that a
claim does not have to recite specifically “means for” or “step for” in order
to invoke section 112(f). Appeal Br. 9. Appellant also acknowledges that a
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generic placeholder that substitutes for “means” also would invoke section
112(f). Id.
Turning to claim 8, Appellant presents no persuasive arguments as to
why the express claim language, “an enterprise engine that presents a user
interface,” for example, is substantively different from alternatively reciting,
an enterprise engine for presenting a user interface, in standard means-plus-
function format. Appeal Br. 7–11. And Appellant presents no persuasive
argument for why the term “enterprise engine” is anything more than a
generic placeholder or substitute for the term “means.” Id. Similarly,
Appellant presents no persuasive arguments for why the claim language “an
aggregation engine that catalogs. . . and aggregates” is anything other than
synonymous with reciting, an engine for cataloging and aggregating. That
is, Appellant presents no persuasive evidence that one skilled in the art
would understand that an “engine,” within the context of computer hardware
and software engines, connotes any structure as opposed to a function. Id.
Appellant only argues that the claim terms “enterprise engine,”
“aggregation engine,” “a publication engine,” and “a mapping engine” are
not any of the limited examples of substitute terms for “means” that MPEP
§ 2181 sets forth expressly. Appeal Br. 9 (arguing that MPEP § 2181 only
includes the examples, “mechanism for,” “module for,” “device for,” “unit
for,” “component for,” “element for,” “member for,” “apparatus for,”
“machine for,” and “system for”).
Appellant’s arguments are unpersuasive. We agree with the
Examiner, “the MPEP states, with respect to the exemplary list in 2181,
‘[t]his list is not exhaustive, and other generic placeholders may invoke
35 U.S.C. § l 12(f) or pre-AIA 35 U.S.C. § 112, paragraph 6.’” Examiner’s
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Answer 5, 6, mailed January 28, 2019 (“Ans.”) (citing MPEP 2181(I)(A)).
The relevant question is whether “enterprise engine”—within the context of
“an enterprise engine that presents a user interface to receive an innovation
submission related to a technological field, the submission including at least
one of title, summary, a body of text, a drawing, a tag, and a category”—
indicates some sufficiently definite structure or whether it merely sets forth
the same black-box generic description for software or hardware that
performs a specified function. Williamson v. Citrix Online, LLC, 792 F.3d
1339, 1350 (Fed. Cir. 2015).
Here, the Examiner sets forth a reasoned basis for determining, “the
modifiers ‘enterprise,’ ‘aggregation,’ ‘publication,’ and ‘mapping,’ do not
provide sufficient structure to the [claimed] engines because they are
functionally descriptive rather than structurally descriptive.” Non-Final
Act. 3, 7. Because Appellant does not provide persuasive evidence to show
the claim terms do set forth sufficient structure, Appellant does not
demonstrate error in the Examiner’s determinations that claim 8’s four
limitations invoke section 112(f).
Accordingly, Appellant has not demonstrated error in the Examiner’s
ultimate rejections of claim 8 for lacking adequate written description under
35 U.S.C. § 112(a) and for indefiniteness under § 112(b). We, therefore,
affirm the rejections of claims 8–17 under 35 U.S.C. §§ 112(a), (b).

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THE SECTION 101 REJECTION
The Claimed Subject Matter
Claims 1–17 stand rejected under 35 U.S.C. § 101 as being directed to
a judicial exception to patent-eligible subject matter (an abstract idea)
without significantly more. Non-Final Act. 10–22.
Independent claim 1 represents the subject matter of the appealed
claims.3 Claim 1 is reproduced below with paragraph designators, as added
by the Examiner, with formatting added for clarity, and with emphasis added
to the claim language that recites an abstract idea:
1. [a] A non-transitory computer readable medium having
instructions stored thereon for operating a computing device,
wherein the instructions, when executed by the computing
device, direct the computing device to:
[b] receive an indication from a user to create a message board
in which at least one conversation between users is held in a tree-
like structure;
[c] populate the message board with information related to a
submission, the submission being related to a technological field
and including at least one of title, summary, a body of text, a
drawing, a tag, and a category;
[d] receive comments from other users regarding the
submission that are added to the at least one conversation; and
[e] map the submission to other submissions using
information from at least one of the title, the summary, the body
of text, the drawing, the tag and the category of the submission
and the other submissions,

3 Appellant generally argues all of the claims together as a group. See
Appeal Br. 11–18. Accordingly, we select independent claim 1 as
representative. See 37 C.F.R. § 41.37(c)(1)(iv). To the extent that Appellant
sets forth an additional argument regarding claim 8 (Appeal Br. 15), we
address that claim separately.
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the map showing a visualization of a relative
closeness of a subject matter of the submission in the
technological field with the other submissions by
representing each submission as a node, and
the map further including an interaction layer that
receives user inputs to
(1) navigate the map to determine how the
subject matter of the submission is related to,
overlaps, or connected to the other submissions, and
(2) redirect a user to the message board
associated with a selected node on the map.
The Examiner’s Findings and Conclusions
The Examiner finds, inter alia, that claim 1 recites “a process for
brainstorming or generating collaborative feedback by creating a
collaborative space,” “populating the space with idea submissions,” and
“mapping relationships between different idea submissions.” Non-Final
Act. 13 (citing claim 1, limitations B, C, E). The Examiner determines that
these elements combine to recite or describe the abstract ideas of
aggregating, organizing, analyzing, and sharing information in a way that
can be performed mentally by humans. Id.
More specifically, the Examiner determines that the limitations are
similar to a corporate retreat breakout session for focusing on a topic. Non-
Final Act. 14. The Examiner explains, “[t]raditionally during such a
breakout session, individuals in the session [will] contribute ideas related to
the main topic, and then the sessions reunite or rotate[,] and a facilitator will
look for connections between sessions in the same topic and across
sessions.” Id. According to the Examiner, “[o]ftentimes, the information
from these sessions is initially captured on large sheets of chart paper and
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eventually transferred to an electronic format for recordkeeping and later
publication.” Id.
With respect to additional elements present in the claim, the Examiner
also finds that the computing device elements are recited at a high level of
generality and were well known. Non-Final Act. 15–16. According to the
Examiner, the recitation of the additional computing elements amounts to an
instruction to perform the abstract idea of a computer and add little, if
anything, to the abstract idea. Id. at 16.
The Examiner additionally finds that the claim language, “the
submission being related to” a “technological field,” “is simply a selected
topic that has no impact on the abstract idea.” Non-Final Act. 15. We
understand the Examiner’s position on this point to be that the technical
nature of the message-board-information’s substance merely constitutes
nonfunctional descriptive material, and as such, does not add any further
“additional element” to claim 1.
Appellant filed its Appeal Brief in December of 2018, prior to the
Office’s issuance of the 2019 Guidance. Accordingly, we address
Appellant’s arguments in the Analysis section, below, as those arguments
pertain to the current 2019 Guidance.
Principles of Law
A. SECTION 101:
Inventions for a “new and useful process, machine, manufacture, or
composition of matter” generally constitute patent-eligible subject matter.
35 U.S.C. § 101. However, the U.S. Supreme Court has long interpreted
35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural
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phenomena, and abstract ideas” are not patentable. Alice Corp. v. CLS Bank
Int’l, 573 U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-step framework, described in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66
(2012), and Alice. Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S. at 75–
77). 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” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); 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
Court held that “a claim drawn to subject matter otherwise statutory does not
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become nonstatutory simply because it uses a mathematical formula.”
Diehr, 450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as
nothing more than a process for molding rubber products and not as an
attempt to patent a mathematical formula.”). Having said that, the 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. at 191 (citing
Benson and Flook); see also, e.g., id. at 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 (internal quotation marks
omitted). “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. (alterations in original) (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.
B. USPTO SECTION 101 GUIDANCE:
In January 2019, the U.S. Patent and Trademark Office (“USPTO”)
published revised guidance on the application of 35 U.S.C. § 101. See
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (“2019 Guidance”), updated by USPTO, October 2019
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Update: Subject Matter Eligibility (available at https://www.uspto.gov/sites/
default/files/documents/peg_oct_2019_update.pdf) (“October 2019
Guidance Update”); see also October 2019 Patent Eligibility Guidance
Update, 84 Fed. Reg. 55942 (Oct. 18, 2019) (notifying the public of the
availability of the October 2019 Guidance Update). “All USPTO personnel
are, as a matter of internal agency management, expected to follow the
guidance.” 2019 Guidance, 84 Fed. Reg. at 51; see also October 2019
Guidance Update at 1. The Manual of Patent Examining Procedure
(“MPEP”) now incorporates this revised guidance and subsequent updates at
Section 2106 (9th ed. Rev. 10.2019, rev. June 2020).4
Under MPEP § 2106, we first look to whether the claim recites the
following:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activities such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application.5
MPEP §§ 2106.04(a), (d).

4 All references to the MPEP are to the Ninth Edition, Revision 10.2019
(Last Revised June 2020), unless otherwise indicated.
5 “Examiners evaluate integration into a practical application by
(a) identifying whether there are any additional elements recited in the claim
beyond the judicial exception, and (b) evaluating those additional elements
individually and in combination to determine whether the claim as a whole
integrates the exception into a practical application.” MPEP § 2106.04(d)II.
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Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, [and] conventional activity” in the field; 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.
MPEP § 2106.05(d).
Analysis
STEP 2A, PRONG 1:
Under step 2A, prong 1, of the 2019 Guidance, we first look to
whether claim 1 recites any judicial exceptions, including certain groupings
of abstract ideas (i.e., mathematical concepts, certain methods of organizing
human activities such as a fundamental economic practice, or mental
processes). MPEP § 2106.04(a).
Limitation [c] recites, “populate the message board with information
related to a submission, the submission being related to a technological field
and including at least one of title, summary, a body of text, a drawing, a tag,
and a category.”
Limitation [e] recites, inter alia,
map the submission to other submissions using information from
at least one of the title, the summary, the body of text, the
drawing, the tag and the category of the submission and the other
submissions,
the map showing a visualization of a relative
closeness of a subject matter of the submission in the
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technological field with the other submissions by
representing each submission as a node.
Temporarily setting aside the preamble’s additional requirement that
the method steps be executed by a computer, we agree with the Examiner
that a message board, per se, reads on a paper chart or dry-erase board.
Non-Final Act. 13. As such, the step of populating a message board with
information related to a submission, as recited in limitation [c], reads on “a
process for brainstorming or generating collaborative feedback.” Id. So
does limitation [e]’s step of mapping the submission to other submissions
using information from the submission and from other submissions.
As such, these limitations recite mental processes that can be
performed in the human mind or with the aid of pencil and paper. The
2019 Guidance expressly recognizes mental observations, evaluations,
judgments, and opinions as patent-ineligible abstract ideas. 2019 Guidance,
84 Fed. Reg. at 52. The “mental processes” judicial exception also includes
concepts that can be performed by a human with a pen and paper as well as
those that can be performed entirely in the mind. See October 2019
Guidance Update at 9 (“A claim that encompasses a human performing the
step(s) mentally with the aid of a pen and paper recites a mental process”)
(emphasis omitted).
Accordingly, at least limitations [c] and [e] recite a judicial exception
to patent-eligible subject matter under step 2A, prong 1, of the
2019 Guidance.
STEP 2A, PRONG 2:
Under step 2A, prong 2, of the 2019 Guidance, we next analyze
whether claim 1 recites additional elements that individually or in
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combination integrate the judicial exception into a practical application.
2019 Guidance, 84 Fed. Reg. at 53–55. The 2019 Guidance identifies
considerations indicative of whether an additional element or combination of
elements integrate the judicial exception into a practical application, such as
an additional element reflecting an improvement in the functioning of a
computer or an improvement to other technology or technical field. Id. at
55; MPEP § 2106.05(a).
Before addressing Appellant’s arguments, we note that the additional
elements of various of claim 1’s limitations do not add significantly more to
the abstract idea because they merely are directed to insignificant extra-
solution activity. For example, limitation [b] recites, “receive an indication
from a user to create a message board in which at least one conversation
between users is held in a tree-like structure.” Similarly, limitation [d]
recites, “receive comments from other users regarding the submission that
are added to the at least one conversation.”
An example of pre-solution activity is a step of gathering data for
use in a claimed process, e.g., a step of obtaining information
about credit card transactions, which is recited as part of a
claimed process of analyzing and manipulating the gathered
information by a series of steps in order to detect whether the
transactions were fraudulent.
MPEP § 2106.05(g).
Turning to Appellant’s arguments, Appellant asserts,
the Examiner overlooks the specifics of the interactive mapping
features of the claims, which include, inter alia, map the
submission to other submissions using information from at least
one of the title, the summary, the body of text, the drawing, the
tag and the category of the submission and the other submissions,
the map showing a visualization of a relative closeness of a
subject matter of the submission in the technological field with
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the other submissions by representing each submission as a node,
and the map further including an interaction layer that receives
user inputs to (1) navigate the map to determine how the subject
matter of the submission is related to, overlaps, or connected to
the other submissions, and (2) redirect a user to the message
board associated with a selected node on the map.
Appeal Br. 14.
Appellant argues,
The map includes features such as visualization and interaction
layers which enable users to externalize, visualize, and evaluate
all ideas and connected ideas that any member thinks may be
relevant to an idea at hand. Id. This powerful visualization tool
of the instant invention transforms the input information into an
intuitive visualization that makes the subject matter of
submission and its related submissions substantially easier to
understand.
Appeal Br. 14–15.
These arguments are unpersuasive. Externalizing and visualizing
ideas merely entails displaying information. As explained in the preceding
section, displaying information per se constitutes the mental process of
expressing an opinion with the aid of paper and pencil—an underlying
abstract idea. And “[i]t 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). “[A] claim for a new abstract idea is still an abstract
idea.” Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed.
Cir. 2016) (emphasis omitted). “What is needed is an inventive concept in
the non-abstract application realm.” SAP Am., Inc. v. InvestPic, LLC, 898
F.3d 1161, 1168 (Fed. Cir. 2018).
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To the extent the claim language further requires that the mapping be
performed on a computer display, the claim language does not add any
meaningful limitations to the abstract idea because it merely constitutes the
insignificant post-solution activity of displaying data. E.g., Apple, Inc. v.
Ameranth, Inc., 842 F.3d 1229, 1241–42 (Fed. Cir. 2016) (holding that
printing or downloading generated menus constituted insignificant extra-
solution activity).
Arranging information that allows members to evaluate the
information of the submissions more efficiently also constitutes an abstract
idea. See Trading Techs. Int’l v. IBG LLC, 921 F.3d 1084, 1090 (Fed. Cir.
2019) (where an “invention makes the trader faster and more efficient, not
the computer . . . [, it] is not a technical solution to a technical problem.”);
see also id. at 1093 (claims are abstract where “they recite a purportedly new
arrangement of generic information that assists traders in processing
information more quickly”).
Appellant argues,
[t]he pending claims do not simply manipulate existing
information to generate additional information, as in Digitech
(e.g., ‘combining said first and second data into the device
profile’). Rather, the pending claims recite a process by which
information is visually presented in an interactive map [in] a
novel and unobvious manner.
Appeal Br. 15.
This argument is unpersuasive. “The ‘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
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U.S. 175, 188–89 (1981). A novel and nonobvious claim directed to a
purely abstract idea is, nonetheless, patent ineligible. Mayo, 566 U.S. at 90.
Appellant also argues, “the pending claims are explicitly tied to a
specific structure or machine, as recited by the apparatus of claim 8.” This
argument is unpersuasive because merely recasting a method claim that is
directed to an abstract idea into the format of an apparatus claim, alone, is
insufficient to integrate the abstract idea into a practical application.
“[Supreme Court precedent] warn[s] us against interpreting patent statutes in
ways that make patent eligibility ‘depend simply on the draftsman’s art’
without reference to the ‘principles underlying the prohibition against
patents for [exceptions to patent-eligible subject matter].’” Mayo, 566 U.S.
at 72.
For these reasons, Appellant does not persuade us that independent
claim 1 or 8 is directed to an improvement in the function of a computer or
to any other technology or technical field. MPEP § 2106.05(a). Nor does
Appellant persuasively demonstrate that claim 1 or 8 is directed to a
particular machine or transformation, or that claim 1 or 8 adds any other
meaningful limitations for the purposes of the analysis under Section 101.
MPEP §§ 2106.05(b), (c), (e). Accordingly, Appellant does not persuade us
that claim 1 or 8 integrates the recited abstract ideas into a practical
application within the meaning of the 2019 Guidance. See 2019 Guidance,
84 Fed. Reg. at 52–55.
STEP 2B:
Under step 2B of the 2019 Guidance, we next analyze whether
claim 1 adds any specific limitations beyond the judicial exception that,
either alone or as an ordered combination, amount to more than “well-
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understood, routine, conventional” activity in the field. 2019 Guidance,
84 Fed. Reg. at 56; MPEP § 2106.05(d).
Appellant argues,
the claimed methods include specific requirements to map the
submission to other submissions using information from at least
one of the title, the summary, the body of text, the drawing, the
tag and the category of the submission and the other submissions,
the map showing a visualization of a relative closeness of a
subject matter of the submission in the technological field with
the other submissions by representing each submission as a node,
and the map further including an interaction layer that receives
user inputs to (1) navigate the map to determine how the subject
matter of the submission is related to, overlaps, or connected to
the other submissions, and (2) redirect a user to the message
board associated with a selected node on the map.
Appeal Br. 17.
These arguments are not persuasive. As we already addressed above,
the requirements to map the submission in the specific manner recited entail
the underlying abstract idea. Furthermore, with respect to claim 1’s
recitation of the interaction layer that receives inputs to navigate the map
and to redirect the user to the message board, the Examiner interprets this
language to mean that (1) the display enables people to observe recorded
ideas, identify related ideas, and make connections between ideas, and
(2) the display “point(s) users to areas of a conference room where topics are
being discussed and ideas recorded in more details.” Non-Final Act. 16.
Appellant does not explain why the claim language means anything
more or different than what the Examiner interprets the claim language to
mean. See generally Appeal Br. In fact, Appellant only cites to
paragraphs 56–58 and Figure 9, element 902 (the depicted IdeaMap), as
providing support for this claim language. But these cited portions of
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Appellant’s Specification and Drawings do not indicate that the recited
interaction layer entails any technological improvement. This written
passage of Appellant’s Specification reads as follows:
IdeaSpace Innovation with IdeaMap
The IdeaSpace offers individuals and communities a
powerful way to learn about, response to, deliberate and decide
on ideas and idea direction. The basic elements of message
boards are used; however, they are augmented with visualization
and interaction layers—the Idea Map 902—which that will
enable users and communities to externalize, visualize, and
evaluate all ideas and connected ideas that any member thinks
may be relevant to the idea thread (topic) at hand. Intelligent and
constructive dialogue facilitates the above using IdeaSpaces style
posting similar to Linkedin Group and Podio Workspace.
Although the IdeaSpace can be private, each public IdeaSpace
and its associated Idea Map will contribute to and form part of
an accumulating MAP of structured understanding across
IdeaSpaces and wide variety of threads within a wide variety of
IdeaSpaces. As idea threads intersect (within the same
IdeaSpace or in different or overlapping IdeaSpaces), the idea is
accelerated and enriched with each user understanding and
thought. For example, separate IdeaMaps 902 developed by
experts on mobile gaming intersect, as cross-links between the
Idea Maps 902 for PC gaming or console gaming. The
specialized knowledge and ideas from different domain come to
be seen to be part of a systemic map.
Brainstorming in a structured and transparent form with
IdeaMap allows users to see how their ideas are related, overlap,
connect to, or novel in view of other ideas. The IdeaMap 902
within the IdeaSpace will allow a user to see, for example,
context, fill any gaps, expand upon, improve, and challenge any
ideas. The more that people contribute their own ideas, the
greater the network benefits for all the communities —and
whether the communities are small teams, organizations,
network of stakeholders, or societies as a whole, the ability to
augment our individual capacity to brainstorm in the face of
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changing and gaming technologies, we confront today’s society
needs more efficiently and collectively—that is, accelerate
innovation.
Spec. 56–58.
Rather, Appellant’s Specification merely describes the computing
system’s computer-related components at a high level without details of
structure or implementation. See Spec. ¶¶ 120–27 (discussing in generic
terms, the computing device 1600, communication interface 1601, user
interface 1602, processing circuitry 1605, operating software 1607, and
front-end module 1608.) Appellant’s Specification, then, indicates that the
recited additional elements are well understood, routine and conventional.
Furthermore, Appellant’s Specification does not indicate that
consideration of these conventional elements as an ordered
combination adds any significance beyond the additional elements, as
considered individually. Rather, Appellant’s Specification indicates
that the invention is directed to an abstract idea that is made more
efficient with generic computer components—“provid[ing] a full
circle of innovation management that includes harvesting, publication
and aggregation of ideas.” Spec. ¶ 2.
For these reasons, we determine that claims 1 and 8 do not recite
additional elements that, either individually or as an ordered combination,
amount to significantly more than the judicial exception within the meaning
of the 2019 Guidance. 2019 Guidance, 84 Fed. Reg. at 52–55; MPEP
§ 2106.05(d).
Accordingly, we affirm the Examiner’s rejection of claims 1 and 8
under 35 U.S.C. § 101 as being directed to an exception to patent-eligible
subject matter without reciting significantly more. We, likewise, affirm the
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101 rejection of claims 2–7 and 9–17, which Appellant does not argue
separately. Appeal Br. 11–18.

THE SECTION 102 AND 103 REJECTIONS
The Disputed Claim Language
Independent claim 8 recites, inter alia,
a mapping engine [or process] that maps the innovation
submission to the other cataloged submissions in a map using
information from at least one of the title, the summary, the body
of text, the drawing, the tag and the category of the submission
and the other submissions, wherein the map shows a
visualization of a relative closeness of a subject matter of the
innovation submission in the technological field with the other
cataloged submissions by representing each submission as a
node.
Appeal Br. 24. As demonstrated in the previous section, independent
claim 1 recites similar claim language. Id. at 22.
The Examiner’s Determinations and Appellant’s Contentions
The Examiner finds that Okazaki discloses every limitation of
independent claim 8, including the requirement that “the map shows a
visualization of a relative closeness of a subject matter of the innovation
submission in the technological field with the other cataloged submissions.”
Non-Final Action 23–28. With respect to this particular limitation, the
Examiner explains,
The mind map created at 504 interconnects the idea image
graphics with idea links at 508 represented by line segments
within the mind map, for example. These interconnections
represent relations among the idea graphics and each idea image
may have one or more multiple connections to other ideas . . .
Terms may also be provided a relevance score based on each idea
image or on the overall topic (i.e., a relative closeness of the
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submission to other submissions). (Okazaki ¶ 0038); The mind
map 300 further includes other idea graphics 304 represented by
bubbles (i.e., nodes) of different size. The size may correspond
to a degree of relevance (i.e., visualization of a degree of
closeness) as determined by the AI engine of the system or
manually determined, for example. (Okazaki ¶ 0030); Figure 4A
shows an idea map where a right-hand panel also lists related
ideas along with a relevance percentage that indicates how the
main submission is related to the other submissions and
corresponding ideas based on the conversations, feedback, and
voting of other users].
Non-Final Act. 26.
Appellant argues,
With regard to the mind maps of Okazaki, while the
[artificial intelligence (“AI”)] agent engine appears to query for
related subject matter, there appears to be no teaching or
suggestion of at least “showing a relative closeness of a subject
matter of the submission in the technological field with the other
submissions” or of an ability to “redirect a user to the message
board associated with a selected node on the map.”
Appeal Br. 19.
Appellant more specifically argues,
In particular, with reference to FIGS. 3, 4A and 4B, the center
graphic 302 is “Future Office;” however, the closest idea
graphics 304 are “Technology” and “Energy.” Meanwhile, more
relevant “Future Office” ideas such as, “Tablet,” “camera,” and
“Smart Phone” are further away. It appears that that AI engine
of Okazaki only makes suggestions, but does not make any
determination of “a relatively closeness of a subject matter of the
submission.”
Appeal Br. 19 (citing Okazaki, ¶¶ 31, 32).
Analysis
The disputed limitation of claim 8 does not require that the relative
closeness of the subject matter necessarily be depicted via a spatial distance.
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Rather, claim 8 more broadly recites just that the relative closeness of the
submissions’ subject matter be shown with “a visualization.” As such, this
limitation of claim 8 is at least broad enough to correspond to a prior-art
teaching that a degree of closeness or relevance is visually depicted by
means of graphics’ relative sizes.
Turning to the cited art, regardless of whether Okazaki’s figures
depict a visualization of a relative closeness of the subject matter with other
cataloged submissions, Okazaki’s written Specification discloses, “[a] center
idea graphic 302 is illustrated within the mind map 300 that represents a
central topic,” and “[t]he mind map 300 further includes other idea graphics
304 represented by different bubbles of different size.” Okazaki ¶ 30, cited
in Non-Final Act. 26. Okazaki then specifically states, “[t]he size [of the
other idea graphics 304] may correspond to a degree of relevance as
determined by the AI engine or the system of manually determined.” Id.
Appellant’s arguments, therefore, are unpersuasive that the Examiner
erred. Accordingly, we affirm the anticipation rejection of independent
claim 8. We, likewise, affirm the anticipation rejection of claims 9, 11, and
13–17, and also the obviousness rejections of claims 1, 3, 4, 6, 7, and 10,
which Appellant does not argue separately. Appeal Br. 18–19.
With respect to the remaining rejections of dependent claims 2, 5,
and 12, Appellant merely argues that the additionally cited references do not
cure the deficiency noted in relation to claims 1 and 8. Appeal Br. 20–21.
Because we affirm the rejections of claims 1 and 8, we likewise, then, affirm
the obviousness rejections of claims 2, 5, and 12.

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DECISION SUMMARY
In summary:

TIME PERIOD FOR RESPONSE
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

Claims
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
8–17 112(a) Written
Description
8–17
8–17 112(b) Indefiniteness 8–17
1–17 101 Eligibility 1–17
8, 9, 11, 13–
17
102(a)(1) Okazaki 8, 9, 11,
13–17

1, 3, 4, 6, 7 103 Okazaki, Bortree 1, 3, 4, 6, 7
2 103 Okazaki,
Bortree, Laurin
2
5 103 Okazaki,
Bortree, MPEP
5
10 103 Okazaki 10
12 103 Okazaki, Redlich 12
Overall
Outcome
1–17