Poole, John et al.

Patent Trials and Appeals Board

Apr 23, 2020

14209175 - (D) (P.T.A.B. Apr. 23, 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.
14/209,175 03/13/2014 John Poole 05793.3321-00000 3143
22852 7590 04/23/2020
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK AVENUE, NW
WASHINGTON, DC 20001-4413
EXAMINER
MISIASZEK, AMBER ALTSCHUL
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
04/23/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
regional-desk@finnegan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN POOLE, SANJIV KOCHHAR, KEVIN HULS,
TONYA TRIEBWASSER, and SOILA SANTOS
Appeal 2019-001256
Application 14/209,175
Technology Center 3600
Before JASON V. MORGAN, MICHAEL J. STRAUSS, and
ADAM J. PYONIN, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–20. See Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.

1 We refer to the Specification, filed March 13, 2014 2004 (“Spec.”); Final
Office Action, mailed November 30, 2017 (“Final Act.”); Appeal Brief, filed
June 25, 2018 (“Appeal Br.”); Examiner’s Answer, mailed September 28,
2018 (“Ans.”); and Reply Brief, filed November 28, 2018 (“Reply Br.”).
2 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Capital One Services,
LLC. Appeal Br. 1.
Appeal 2019-001256
Application 14/209,175
2
CLAIMED SUBJECT MATTER
Summary of the disclosure
Appellant’s claimed subject matter relates to managing workflow
among customer service agents. Abstract, Spec. ¶ 2.
Representative claim
Claim 1, reproduced below with element labels added in brackets and
additional elements to those identified as abstract ideas emphasized in
italics, is representative of the claimed subject matter:
1. A system for managing workflow, comprising:
[(1)] one or more memory devices storing instructions; and
[(2)] one or more processors configured to execute the
instructions to:
[(2.1)] receive a communication from a customer, the
communication being associated with an account of
the customer;
[(2.2)] determine a document type associated with the
communication, wherein:
[(2.2.1)] the one or more memory devices store
parameters associated with the document type,
the parameters comprising at least one of key
words, phrases, symbols, or pictures; and
determining the document type comprises:
[(2.2.2)] recognizing a threshold number of
parameters associated with the
communication; and
[(2.2.3)] comparing the recognized parameters
to the stored parameters;
[(2.3)] compare the document type to a priority level
hierarchy;
[(2.4)] determine a document identification number for
the communication based on the comparison of the
document type,
wherein all communications associated with one
document type share a particular combination of
Appeal 2019-001256
Application 14/209,175
3
numbers, letters, or symbols that form a part of the
document identification number;
[(2.5)] assign the document identification number to a
queue based on the document identification number;
and
[(2.6)] provide access to a document associated with the
communication in response to a request for one or
more document identification numbers from the
queue.

The Examiner’s rejection
The Examiner rejects claims 1–20 under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter. Final Act. 3–6.
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments. Arguments Appellant could have made but chose not to make
are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv) (2017). We
disagree with Appellant that the Examiner erred and adopt as our own the
findings and reasons set forth by the Examiner. We add the following
primarily for emphasis.
PRINCIPLES OF LAW
To constitute patent-eligible subject matter, an invention must be a
“new and useful process, machine, manufacture, or composition of matter,
or [a] new and useful improvement thereof.” 35 U.S.C. § 101. There are
implicit exceptions to the categories of patentable subject matter identified
in 35 U.S.C. § 101, including: (1) laws of nature; (2) natural phenomena;
and (3) abstract ideas. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216
(2014). The U.S. Supreme Court has set forth a framework for
Appeal 2019-001256
Application 14/209,175
4
distinguishing patents with claims directed to these implicit exceptions
“from those that claim patent-eligible applications of those concepts.” Id. at
217 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S.
66 (2012)). The evaluation follows a two-part analysis: (1) determine
whether the claim is directed to a patent-ineligible concept, e.g., an abstract
idea; and (2) if so, then determine whether any element, or combination of
elements, in the claim is sufficient to ensure that the claim amounts to
significantly more than the patent-ineligible concept itself. See id. at 217–
18.
“[A]ll inventions at some level embody, use, reflect, rest upon, or
apply laws of nature, natural phenomena, or abstract ideas.” Mayo, 566 U.S.
at 71. We “‘must be careful to avoid oversimplifying the claims’ by looking
at them generally and failing to account for the specific requirements of the
claims.” McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299,
1313 (Fed. Cir. 2016) (quoting In re TLI Commc’ns LLC Patent Litig., 823
F.3d 607, 611 (Fed. Cir. 2016)).
Last year the U.S. Patent and Trademark Office (“USPTO”) published
guidance on the application of the two-part analysis. USPTO, 2019 Revised
Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“2019 Revised Guidance”); see also USPTO, October 2019 Update:
Subject Matter Eligibility, available at https://www.uspto.gov/sites/default/
files/documents/peg_oct_2019_update.pdf (Oct. 17, 2019). Under that
guidance, 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
Appeal 2019-001256
Application 14/209,175
5
practice, or mental processes) (see id. at 54 (step 2A, prong
one)); and
(2) additional elements that integrate the judicial
exception into a practical application (see id. at 54–55 (step 2A,
prong two); MPEP §§ 2106.05(a)–(c), (e)–(h)).
See 2019 Revised Guidance, 84 Fed. Reg. 52–55.
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, 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 Revised Guidance, 84 Fed. Reg. 56.
Step 2A, prong 1
In rejecting claim 1 as directed to patent-ineligible subject matter, the
Examiner determines that it is “directed to managing workflow, which is
consider an idea ‘of itself’[3] and thus an abstract idea.” Final Act. 3. The

3 Although the previously recognized category of an idea of itself is not one
of the currently recognized categories, it is sufficient for the purposes of the
present appeal that the claimed concepts reasonably can be characterized as
falling within the still-recognized category of mental processes. See, e.g.,
MPEP § 2106.04(a)(2)(III):
The courts have used the phrase “an idea ‘of itself’” to
describe an idea standing alone such as an uninstantiated
concept, plan or scheme, as well as a mental process (thinking)
Appeal 2019-001256
Application 14/209,175
6
Examiner directs attention to specific claim language and, in particular, to
the actions performed according to each of the elements of claim 1,
determining as follows:
These actions, when considered both individually and as a whole
are directed to actions that facilitate managing workflow. As
such, they effectively relate to collecting and comparing known
information, which was deemed an abstract concept by the
Courts (Classen[4]) and [c]ollecting information, analyzing it,
and displaying certain results of the collection and analysis
(Electric Power Group[5]), which was also deemed an abstract
concept by the courts. Similar to Electric Power Group, the
present claims collect information (receive a communication
from a customer), analyze it (determine a document type and
determine a document identification number), displaying certain
results of the collection and analysis (assign the document
identification number and provide access to the document).
Accordingly, the claim is directed to, at least in part, an idea ‘of
itself’, which has been deemed abstract by the Courts.
Final Act. 4–5 (formatting altered).
Under Prong 1 of the 2019 Revised Guidance, we determine whether
the claim recites a recognized judicial exception. We agree with the
Examiner in determining claim 1 recites an idea of itself that is properly
characterized as one or more concepts performed in the human mind and/or

that “can be performed in the human mind, or by a human using
a pen and paper.” CyberSource Corp. v. Retail Decisions, Inc.,
654 F.3d 1366, 1372 . . . (Fed. Cir. 2011).
Characterizing the abstract idea as a mental process instead of an idea
of itself does not constitute a change to the thrust in the Examiner’s
rejection.
4 Classen Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057 (Fed. Cir.
2011).
5 Elec. Power Grp., LLC v. Alstrom S.A., 830 F.3d 1350 (Fed. Cir. 2016).
Appeal 2019-001256
Application 14/209,175
7
with pen and paper, i.e., mental processes.6 The 2019 Revised Guidance
recognizes mental processes as constituting abstract ideas. 2019 Revised
Guidance, 84 Fed. Reg. at 52. Therefore, as more fully explained below,
claim 1 recites one or more abstract ideas.
Claim elements 1 and 2 recite hardware elements including a memory
storage device and processor. The memory and processor are in addition
actions performed and supported by these hardware elements and are
discussed further in the next section addressing Prong 2 of our analysis.
Element 2.1 of claim 1 recites “receive a communication from a
customer, the communication being associated with an account of the
customer.” According to Appellant, the recited receiving action corresponds
to the disclosure of “in step 310, financial service provider 120 may receive
a document (i.e., a communication including user data, identification
information, text, an image, and/or any other data suitable for use by agency
system 150) from customer 140 (e.g., via client 130).” Appeal Br. 13 (citing
Spec. ¶¶ 30, 34). Receiving a communication reasonably is characterized as
an observation (e.g., receiving a document) considered to be a concept
performed in the human mind or with pen and paper (e.g., a paper
document). Mental observations are recognized as constituting abstract
ideas. 2019 Revised Guidance, 84 Fed. Reg. at 52. As such, claim element
2.1 recites an abstract idea.7
Element 2.2 recites determining a document type associated with the
communication as further defined by claim elements 2.2.1 through 2.2.3.

6 See supra n. 3.
7 In addition, as further discussed under Prong 2 of our analysis below,
receiving a communication constitutes insignificant extra-solution activity.
Appeal 2019-001256
Application 14/209,175
8
Categorizing information is reasonably characterized as an observation,
evaluation, or judgment and, as such, a concept performed in the human
mind that is recognized as a mental process. Id.
Addressing the recitations of each of the constituent sub-elements of
claim element 2.2, sub-element 2.2.1 recites storing parameters associated
with the document type, the parameters comprising at least one of key
words, phrases, symbols, or pictures. The act of observing may be seen to
include storage of information pertaining to that which is observed such that
the recited storing of words, phrases, symbols, or pictures reasonably can be
accomplished in the human mind and/or with pen and paper.
Claim element 2.2.2 requires that determining a document type
includes recognizing a threshold number of parameters associated with the
communication. Appellant provides an example of a requirement “to
recognize three words associated with a particular business section/
document type to determine the document type.” Recognizing the
appearance of a particular type and number of items is an observation or
evaluation that can be performed in the human mind.
Claim element 2.2.3 further adds the step of comparing the recognized
parameters to stored parameters. Comparing information reasonably is
characterized as an observation or evaluation performed in the human mind
and recognized as a mental process. Accordingly, claim element 2.2
including sub-elements 2.2.1 through 2.2.3 recite mental processes that the
2019 Revised Guidance recognizes as abstract ideas.
Claim element 2.3 recites comparing the document type to a priority
level hierarchy. As explained above, comparing information reasonably is
characterized as an observation or evaluation performed in the human mind
Appeal 2019-001256
Application 14/209,175
9
and recognized as a mental process. Accordingly, claim element 2.3 recites
a mental process recognized as an abstract idea.
Claim element 2.4 recites “determining a document identification
number for the communication based on the comparison of the document
type, wherein all communications associated with one document type share a
particular combination of numbers, letters, or symbols that form a part of the
document identification number.” Appellant discloses an example whereby
“all fraud type documents may receive a document identification number
indicative of fraud type documents, all banking type documents may receive
a document identification number indicative of banking type documents,
etc.” Spec. ¶ 31. Identifying documents based on document type is a type
of observation, evaluation, and/or judgment that can be performed in the
human mind and, therefore, a mental process recognized as an abstract idea.
Claim element 2.5 recites assigning the document identification
number to a queue based on the document identification number. Appellant
discloses assigning a document identification number to a queue based on
document type. Spec. ¶ 39. Sorting data based on specified criteria (e.g.,
document identification number) and sequencing the data (e.g., placing data
in chronological order as in a queue) are types of observations or evaluations
that can be performed din the human mind and, therefore, mental processes
recognized as abstract ideas.
Claim element 2.5 recites providing access to a document associated
with the communication in response to a request for one or more document
identification numbers from the queue. Appellant discloses “server 111 may
provide access of the document to [a] designated agent through a website,
web portal, mobile device application, etc.” Spec. ¶ 45. Providing access to
Appeal 2019-001256
Application 14/209,175
10
information (e.g., a document) may involve judgment exercised in the
human mind and/or using pen and paper and, therefore, is reasonably
characterized as a mental process.8 See also Ericsson Inc. v. TCL Commc’n
Tech. Holdings Ltd., No. 2018-2003, 2020 WL 1856498, at *7 (Fed. Cir.
Apr. 14, 2020) (“Controlling access to resources is exactly the sort of
process that ‘can be performed in the human mind, or by a human using a
pen and paper,’ which we have repeatedly found unpatentable.”) (citing
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir.
2011)). Accordingly, claim element 2.5 recites a mental process recognized
as an abstract idea.
As explained above, except for implementing the recited actions using
the memory of element 1 and processor of element 2, we determine all
remaining elements of claim 1 recite a judicial exception to patent-eligible
subject matter (i.e., mental processes) under step 2A, prong 1, of the 2019
Revised Guidance.
Furthermore, we determine claim 1 as whole and as recited by the
claim limitations discussed above, relates to managing a workflow as set
forth in the preamble of the claim and disclosed by Appellant: “the disclosed
embodiments may allow a financial service provider, or other type of entity,
to share information between multiple agents regardless of the task type or
location of the agents in order to facilitate efficient workflow amongst the
agents.” Spec. ¶ 3. Such managing workflow between and among agents
may reasonably be characterized as (i) advertising, marketing, or sales

8 In addition, as further discussed under Prong 2 of our analysis below,
providing access to a document constitutes insignificant extra-solution
activity.
Appeal 2019-001256
Application 14/209,175
11
activities that are types commercial or legal interactions or (ii) following
rules or instructions involved in managing personal behavior or relationships
or interactions between people. Accordingly, claim 1 recites certain
methods of organizing human behavior recognized as constituting abstract
ideas.
Step 2A, Prong 2
Under step 2A, Prong 2, of the 2019 Revised Guidance, we determine
whether any of the additional elements beyond the abstract ideas recitations
integrate the abstract ideas into a practical application. 2019 Revised
Guidance, 84 Fed. Reg. at 54. The 2019 Revised Guidance provides
exemplary considerations that are indicative of an additional element or
combination of elements integrating 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).
In addition to the actions required by claim elements 2.1 through 2.6
reciting concepts identified as abstract ideas, certain elements of claim 1 also
constitute insignificant extra-solution activity to the judicial exception. In
particular, claim element 2.1 recites “receive a communication from a
customer, the communication being associated with an account of the
customer.” This limitation reasonably can be characterized as merely
constituting the insignificant pre-solution activity of data gathering.
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.
Appeal 2019-001256
Application 14/209,175
12
MPEP § 2106.05(g).
Element 2.6 recites “provide access to a document associated with the
communication in response to a request for one or more document
identification numbers from the queue.” This element does not add any
meaningful limitations to the noted abstract ideas because it reasonably may
be characterized as merely being directed to the insignificant post-solution
activity of transmitting 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).
Thus, limitations 2.1 and 2.6 recite the type of extra-solution activity
(i.e., activities in addition to the judicial exception) the courts have
determined insufficient to transform judicially excepted subject matter into a
patent-eligible application. See MPEP § 2106.05(g); 2019 Revised
Guidance, 84 Fed. Reg. at 55 n.31; Bancorp Servs, L.L.C. v. Sun Life
Assurance Co. of Can., 771 F.Supp.2d 1054, 1066 (E.D. Mo. 2011) aff’d,
687 F.3d at 1266 (Fed. Cir. 2012) (explaining that “storing, retrieving, and
providing data . . . are inconsequential data gathering and insignificant post
solution activity”); Bilski v. Kappos, 561 U.S. 593, 612 (2010) (holding the
use of well-known techniques to establish inputs to the abstract idea as
extra-solution activity that fails to make the underlying concept patent
eligible); Elec. Power Grp., 830 F.3d at 1355 (explaining that “selecting
information, by content or source, for collection, analysis, and display does
nothing significant to differentiate a process from ordinary mental
processes”).
In addition to the claim elements identified above as constituting
mental processes or extra-solution activity, claim 1 requires one or more
Appeal 2019-001256
Application 14/209,175
13
memory devices storing instructions and one or more processors configured
to execute the instructions for performing the actions recited by claim
elements 2.1 through 2.6 discussed above. Appellant discloses the use of
conventional computer components for implementing the recited functions.
Spec. ¶¶ 21, 26–27. For example, disclosed suitable processors include
those manufactured by Intel, AMD, and Sun Microsystems. Id. at 26.
Consistent with the 2019 Revised Guidance, these additional elements
are not practical applications of a judicial exception as they are included
among an additional element that merely recites “apply it” or similar
language, or that merely includes instructions to implement an abstract idea
on a computer, or that merely uses a computer as a tool to perform an
abstract idea. 2019 Revised Guidance, 84 Fed. Reg. at 54. See also Alice,
573 U.S. at 221 (“[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention.”);
MPEP § 2106.05(f)(2) (“Use of a computer or other machinery in its
ordinary capacity for economic or other tasks (e.g., to receive, store, or
transmit data) or simply adding a general purpose computer or computer
components after the fact to an abstract idea (e.g., a fundamental economic
practice or mathematical equation) does not provide significantly more.”).
Appellant contends, even if the claims include an abstract idea, they
are not directed to an abstract idea but, instead, focus on system
improvements. Appeal Br. 9. According to Appellant, “the Examiner never
addresses what ‘actions that facilitate managing workflow’ purportedly
cover, e.g., what specific steps are covered in the alleged fundamental
practice and/or what is the result of the proposed concept.” Id. at 9–10.
Appellant argues the rejection only addresses the claims at a high level and
Appeal 2019-001256
Application 14/209,175
14
does not consider the character of the claims as a whole in light of the
specification. Id. at 10.
Appellant dismisses the Examiner’s characterization of the claims as
relating to collecting, comparing, and analyzing information and displaying
results as an insufficient basis for determining that the claims are directed to
an abstract idea. Id. (citing McRO, 837 F.3d at 1307–08). According to
Appellant, similar to the claims in McRO and other cases, Appellant’s claims
are directed to “a particular solution to a problem or a particular way to
achieve a desired outcome . . . as opposed to merely claiming the idea of a
solution or outcome.” Id. at 14 (citing MPEP § 2106.05). Appellant argues
that claim 1 recites “steps [that] provide a specific improvement to
technology because [they] improve[] processing of incoming
correspondences such that duplicated tasks are prevented.” Id. at 16.
Appellant further contends the Examiner’s reliance on Electric Power
and Classen is flawed, arguing Appellant’s claims are not similar to those
identified in the cited cases, the Examiner having provided inadequate
analysis to the contrary. Id.at 11–12. Appellant argues, unlike the claims
found ineligible in Classen, “Appellant’s claims put the determined
document identification number to practical use, and thus, recite a practical
and specific application, just like the claims of the ’139 and ’739 patent the
Court found to be patentable in Classen.” Id. at 13. Appellant further
argues
Unlike the claims in Electric Power Group, which recited a
“process of gathering and analyzing information of a specified
content, then displaying the results, and not any particular
assertedly inventive technology for performing those
functions[”] (Electric Power Group, 830 F.3d at 1354), the
Appeal 2019-001256
Application 14/209,175
15
features recited in Appellant’s claims focus [on] a specific
improvement in how computers can manage workflow.
Id. at 13–14.
Appellant still further argues the claims do not merely automate steps
that can be performed using a pen and paper. Id. at 16. According to
Appellant
A human would not receive a correspondence or communication
and need to recognize a threshold number of parameters, for
example key words, phrases, symbols, or pictures, associated
with the communication in order to determine the document type
associated with the received communication. Nor would a
human need to perform the aforementioned steps using pen and
paper.
Id. at 16–17. Rather than Electric Power or Classen, Appellant contends
the rejected claims are patent eligible for similar reasons as were the claims
in McRO, Core Wireless9, and Finjan10. Id. at 17–19.
In response the Examiner “notes that there is no requirement that [the]
Examiner provide in the 101 analysis additional, extrinsic or supporting
evidence to demonstrate an abstract idea.” Ans. 3. According to the
Examiner “[t]he important issue is whether the concept (e.g., managing
workflow) is abstract (e.g., Electric Power Group) not whether the exact
fact-pattern matches the particulars of previous court decisions.” Id. at 4.
The Examiner contends Appellant’s reliance on Core Wireless and Finjan is
misplaced, the claims in those cases being distinguishable over Appellant’s
claims as directed to technical improvements including an improved mobile

9 Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc., 880 F.3d 1356
(Fed. Cir. 2018).
10 Finjan, Inc. v. Blue Coat Systems, Inc., 879 F.3d 1299 (Fed. Cir. 2018).
Appeal 2019-001256
Application 14/209,175
16
phone user interface and virus scanning to identify suspicious code,
respectively. Id. at 6.
According to the Examiner, Appellant’s claim elements in addition to
those identified as reciting judicial exceptions (i.e., mental processes)
“merely apply the abstract idea . . . in a generic computer environment
(memory devices and processors) using generic computer functions.” Id. at
7. Thus, the Examiner determines “the claims receive and analyze data and
without any improvement to technology (a processor). Accordingly, the
claims do not include additional limitations amounting to significantly more
than the identified abstract idea, and consequently the claims are not
eligible.” Id.
We agree with the Examiner and are unpersuaded of reversible
Examiner error by Appellant’s arguments. Appellant fails to identify any
technical problem addressed by the claims, any improvement to functioning
of the claimed processor or memory, or any technological problem
addressed by or technological improvement attributable to the claimed
invention. Instead, any recited improvement is to the underlying concept of
managing “workflow regulation between [company] agents tasked with
responding to customers.” See Spec. ¶ 2. Appellant’s argument that the
claimed steps provide an “improvement to technology because they improve
the processing of incoming correspondences” (Appeal Br. 16) not only fails
to identify any technological improvement but supports a determination that
any improvement is to the judicial exception, i.e., managing workflows of
agents.
In addition to those claim elements reciting mental processes for
managing workflow, claim 1 requires hardware including one or more
Appeal 2019-001256
Application 14/209,175
17
memory devices and one or more processors. Both of these hardware
elements are described at a high level of generality as standard computer
components. See Spec. ¶¶ 21, 26–27. We find no indication the claim
addresses problems associated with or improves either of these hardware
elements, their operation, or functioning. That is, the “focus” of the claim is
not “on the specific asserted improvement in computer capabilities” (
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016)), but
rather on using the computer as a tool to implement the abstract idea in the
particular field of agent workflow management. See Affinity Labs of Tex.,
LLC v. DIRECTV, LLC, 838 F.3d 1253, 1259 (Fed. Cir. 2016) (“[M]erely
limiting the field of use of the abstract idea to a particular . . . environment
does not render the claims any less abstract.”).
Appellant’s reliance on McRO is misplaced. The reasons claim 1 in
McRO was found patent-eligible do not apply to Appellant’s claims. “The
claimed improvement [in McRO] was to how the physical display operated
(to produce better quality images), unlike (what is present here) a claimed
improvement in [an associating] technique with no improved display
mechanism.” SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed.
Cir. 2018). That is, in McRO, data was used to improve the technology, i.e.,
the display mechanism. Here, although claim 1 recites, e.g., “receiving,”
“determining,” “comparing,” “assigning,” and “providing,” it merely recites
the functional results to be achieved. For example, claim 1 does not recite
technical implementation details of how the claimed method compares
recognized to stored parameters. “Indeed, the claim language here provides
only a result-oriented solution, with insufficient detail for how a computer
Appeal 2019-001256
Application 14/209,175
18
accomplishes it. Our law demands more.” Intellectual Ventures I LLC v.
Capital One Fin. Corp., 850 F.3d 1332, 1342 (Fed. Cir. 2017).
We are also unpersuaded by Appellant’s argument analogizing the
claims to those found patent-eligible in Core Wireless, indicating that its
claim similarly directed to “a specific implementation of that generic idea.”
Appeal Br. 17 (quoting Core Wireless, 880 F.3d at 1362). The claim in
Core Wireless was directed to “an improved user interface for electronic
devices, particularly those with small screens” where the improvement was
in “the efficiency of using the electronic device by bringing together ‘a
limited list of common functions and commonly accessed stored data,’
which can be accessed directly from the main menu.” Core Wireless, 880
F.3d at 1363. The Specification in that case confirmed these improvements
over “the prior art interfaces [that] had many deficits relating to the efficient
functioning of the computer, requiring a user ‘to scroll around and switch
views many times to find the right data/functionality.’” Id. The court found
that the disclosure in the Specification regarding the improved speed of a
user’s navigation through various views and windows “clearly indicates that
the claims are directed to an improvement in the functioning of computers,
particularly those with small screens.” Id. In contrast, Appellant does not
demonstrate that claim 1 provides an identified improvement in the
functioning of computers. As described above, any purported improvement
is to the management of workflow between agents, not to the computer or its
operation and/or function in order to achieve technological improvements.
Appellant’s reliance on Finjan is also unpersuasive. The claims in
Finjan “employ [] a new kind of file that enables a computer security system
to do things it could not do before. The security profile approach allows
Appeal 2019-001256
Application 14/209,175
19
access to be tailored for different users and ensures that threats are identified
before a file reaches a user’s computer.” Finjan, 879 F.3d at 1305. Here,
although the claims recite a specific abstract idea implemented in software,
that software does not alter the computer itself, but rather falls into the
category of methods “that can be performed by human thought alone . . . and
is not patent-eligible under § 101.” CyberSource, 654 F.3d at 1373, 1375
(“That purely mental processes can be unpatentable, even when performed
by a computer, was precisely the holding of the Supreme Court in
Gottschalk v. Benson.[11]”).
Furthermore, in the absence of sufficient evidence or reasoning, we
are unpersuaded by Appellant’s contention that the claims do not merely
automate steps that can be performed by a human using a pen and paper.
Appeal. Br. 16–17.
We also are unpersuaded by Appellant’s argument that dependent
claims 10 and 18 recite an improvement to “financial account management
technology” because the recited steps “improve[] processing of incoming
correspondences such that duplicated tasks are prevented.” Appeal Br. 24–
25. As in the case of claim 1, any such improvement is to the underlying
concept of workflow management, not to the operation of the memory,
processor, or other recognized technology. Merely calling something a
technological improvement does not make it so.
Appellant’s argument that the Examiner erred by not providing a
substantive analysis of all the dependent claims (Appeal Br. 23–24) is
unpersuasive in the absence of substantive argument identifying specific
deficiencies. Because Appellant presents no substantive argument regarding

11 Gottschalk v. Benson, 409 U.S. 63, 65 (1972).
Appeal 2019-001256
Application 14/209,175
20
patent eligibility of dependent claims 2–9, 11, 12, 14–17, and 19 separate
from its arguments regarding independent claim 1, we do not need to
analyze the dependent claims separate from the independent claim. Affinity
Labs, 838 F.3d at 1264 n.4 (Appellant “has not separately argued the patent
eligibility of the dependent claims and thus has waived any argument that
those claims should be analyzed separately from claim 1.”).
For the reasons discussed, we agree with the Examiner that the claims
do not include additional elements that are sufficient to amount to
significantly more than the judicial exception because the additional
elements do not effect an improvement to another technology, technical
field, or to the functioning of a computer itself. See MPEP § 2106.05(a).
We further determine claim 1 does not recite:
(i) an application of the abstract idea with, or by use of, a
particular machine;
(ii) a transformation or reduction of a particular article to a
different state or thing; or
(iii) other meaningful limitations beyond generally linking the
use of the abstract idea to a particular technological
environment.
See id. §§ 2106.05(b), (c), (e)–(h). Instead, the record reasonably indicates
that any claimed improvement is to the underlying abstract idea of managing
workflow between agents. Thus, claim 1 does not integrate the judicial
exception into a practical application.
Step 2B
As noted above, the only claim elements beyond the recited abstract
idea are the one or more memories and processors. Claim 1, elements 1 and
Appeal 2019-001256
Application 14/209,175
21
2. The Examiner finds “the claims merely amount to the application or
instructions to apply the abstract idea on a computer; and the claims amount
to nothing more than requiring a generic computer to perform generic
computer functions that are well-understood, routine and conventional
activities previously known to the industry.” Final Act. 3.
Appellant contends “it is unclear how the Final Office Action may
maintain the assertion that the recited elements are ‘well-understood, routine
and conventional in the industry’ since there are no cited prior art references
that include the elements of Appellant’s claims.” Appeal Br. 19–20.
Appellant argues the Examiner has failed to provide appropriate evidence
that various claim elements are well-understood, routine and conventional,
citing to the Berkheimer Memorandum12 and BASCOM.13 Appeal Br. 19–
23.
The Examiner responds, explaining “[e]ven accepting arguendo that
an algorithm is improved here, an ‘improved’ abstract idea remains an
abstract idea. ‘A claim for a new abstract idea is still an abstract idea. The
search for a § 101 inventive concept is thus distinct from demonstrating
§ 102 novelty.’” Ans. 12 (citing Synopsys, Inc. v. Mentor Graphics
Corporation, 839 F.3d 1138, 1151 (Fed. Cir. 2016)). Addressing
Appellant’s contention the Examiner failed to provide sufficient evidence

12 Memorandum on Changes in Examination Procedure Pertaining to Subject
Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v.
HP, Inc.) (Apr. 19, 2018) available at: https://www.uspto.gov/sites/default/
files/documents/memo-berkheimer-20180419.PDF (“Berkheimer Memo”).
13 BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d
1341 (Fed. Cir. 2016).
Appeal 2019-001256
Application 14/209,175
22
that claim elements were well-understood, routine, and conventional, the
Examiner responds:
The recited technical environment (‘memory’, ‘processor’, etc.)
is recited with such a high degree of generality that it is only
reasonable to consider it to be a generic client-server/network
environment and therefore, not analogous to the issues presented
in BASCOM. It is unclear from Appellant’s argument what
additional element or combination of elements is akin to the filter
relocation in BASCOM.
Ans. 12. The Examiner further dismisses Appellant’s arguments with regard
to Berkheimer, responding “it is unclear from Appellant’s argument what
additional element or combination of elements unencompassed by the
abstract idea are alleged to be unconventional.” Id.
Appellant’s contentions are unpersuasive of reversible Examiner
error. In particular, we are unpersuaded the claims are patent-eligible
merely because no prior art rejection has been applied. “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). “What is needed is
an inventive concept in the non-abstract application realm.” SAP Am., 898
F.3d at 1168. A novel and nonobvious abstract idea is still patent ineligible.
Synopsys, 839 F.3d at 1151 (“[A] claim for a new abstract idea is still an
abstract idea.”)
We agree with the Examiner that all claim elements, with the
exception of the recited processors and memories, correspond to concepts
determined to be abstract ideas for the reasons discussed above in
connection with Prong 1 of our analysis. These abstract concepts need not
Appeal 2019-001256
Application 14/209,175
23
be shown to be well-understood, routine, and conventional. If otherwise, our
analysis would need to include evidence that the entirety of the claimed
subject matter was, not merely old and obvious (as required of rejections
under 35 U.S.C. §§ 102, 103), but well-understood, routine, and
conventional to sustain a rejection under 35 U.S.C. § 101. This is not the
case.
Similarly, Berkheimer does not require the Examiner make a factual
finding that all claim elements are well-understood, routine, and
conventional. Rather, a Berkheimer factual finding is required for additional
elements or a combination of additional elements outside of the identified
abstract idea. See Berkheimer Memo 2 (“the Berkheimer decision . . . does
provide clarification as to the inquiry into whether an additional element (or
combination of additional elements) represents well-understood, routine,
conventional activity”).
In contrast, other than naked allegations, Appellant provides
insufficient evidence that the computer components (i.e., processors and
memories) and functionalities required to execute the claimed steps are
anything other than well-understood, routine, and conventional. Instead,
Appellant’s disclosure of a wide range of suitable processors and computers
and the lack of details describing implementation of the recited functions
(such as might have been indicated by inclusion of a detailed flow chart
depicting unconventional computer operations and/or routines for
performing each of the claimed steps), persuades us that the omitted details
are well-understood, routine, and conventional.
Consistent with the Berkheimer Memorandum, the claims merely
recite generic computer components (e.g., computer devices having
Appeal 2019-001256
Application 14/209,175
24
memories and processors) performing generic computing functions that are
well-understood, routine, and conventional (e.g., receiving an input,
determining a document type, comparing document types to a priority level,
determining a document identification number and assigning it to a queue,
and providing access to a document). See Alice, 573 U.S. at 225 (the “use of
a computer to obtain data, adjust account balances, and issue automated
instructions; all of these computer functions are ‘well-understood, routine,
conventional activit[ies]’ previously known to the industry”) (alteration in
original) (quoting Mayo, 566 U.S. at 71–73); see also Benson, 409 U.S. at
65 (noting that a “computer operates then upon both new and previously
stored data. The general-purpose computer is designed to perform operations
under many different programs.”); FairWarning IP, LLC v. Iatric Sys., Inc.,
839 F.3d 1089, 1096 (Fed. Cir. 2016) (noting that using generic computing
components like a microprocessor or user interface does not transform an
otherwise abstract idea into eligible subject matter); Mortg. Grader, Inc. v.
First Choice Loan Servs. Inc., 811 F.3d 1314, 1324–25 (Fed. Cir. 2016)
(indicating components such as an “interface” are generic computer
components that do not satisfy the inventive concept requirement); MPEP
§ 2106.05(d)(II) (citing Alice and Mayo); accord Berkheimer Memo 3–4.
Thus, Appellant’s reliance on Berkheimer is misplaced.
For these reasons, we determine that claim 1 does 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 Revised Guidance. 84 Fed. Reg. at 52–55; MPEP § 2106.05(d).

Appeal 2019-001256
Application 14/209,175
25
Conclusion
Appellant has not adequately demonstrated that the Examiner erred in
determining that claims 1, 10, and 18 recite one or more abstract ideas, that
the claim fails to integrate the abstract idea into a practical application, or
that the additional claim elements add significantly more to the abstract idea.
Accordingly, Appellant does not persuade us that the Examiner erred in
concluding that claims 1, 10, and 18 are directed to patent-ineligible subject
matter.
Accordingly, we sustain the § 101 rejection of claims 1, 10, and 18.
We also affirm this rejection of claims 2–9, 11–17, 19, and 20, which
Appellant does not argue separately.
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. § Basis Affirmed Reversed
1–20 101 Eligibility 1–20