Raul Sanchez

Patent Trials and Appeals Board

Jan 30, 2020

14185602 - (D) (P.T.A.B. Jan. 30, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/185,602 02/20/2014 Raul Sanchez 656/2266US 1292
22822 7590 01/30/2020
LEWIS RICE LLC
ATTN: BOX IP DEPT.
600 WASHINGTON AVE.
SUITE 2500
ST LOUIS, MO 63101
EXAMINER
SOLTANZADEH, AMIR
ART UNIT PAPER NUMBER
2191
NOTIFICATION DATE DELIVERY MODE
01/30/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
IPDEPT@LEWISRICE.COM
KDAMMAN@LEWISRICE.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte RAUL SANCHEZ
____________________

Appeal 2018-004343
Application 14/185,602
Technology Center 2100
____________________

Before JOSEPH L. DIXON, HUNG H. BUI, and JON M. JURGOVAN,
Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from a non-final
rejection of claims 1–7. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 We use the word “Appellant” to refer to “applicant(s)” as defined in
37 C.F.R. § 1.42. The real party in interest is Appcropolis LLC. (Appeal
Br. 1.)
Appeal 2018-004343
Application 14/185,602

2
The claims are directed to a method for “organizing and classifying
existing applications so as to enable users to create new applications using
the one or more parts of existing applications” by “automatically generating
a large number of template applications which are fully designed, coded, and
ready-to-use” and “automatically expand[ing] . . . [a] catalog of template
applications and screen components . . . categorized based on a specified
purpose.” (Abstract.)
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method for generating a set of ranked screens, the
method comprising:
providing a computer server having a processor;
providing a client device under control of a human user;
providing a database accessible by said human user via
said client device communicating with said computer server,
comprising:
a plurality of application parts displayable on a
computer display, each one of said application parts
having an associated application part type;
a plurality of screen seeds, each screen seed in said
plurality of screen seeds having a screen layout
comprising a plurality of display positions, each of said
display positions being associated with an application
part type;
said human user creating a set of screens for a screen
seed by:
selecting a screen seed from said database;
for each display position for said selected screen
seed, populating said display position with an application
part from said database having the same application part
type as said application part type for said each display
Appeal 2018-004343
Application 14/185,602

3
position until all said display positions for said screen
seed have an application part populated thereon;
assigning a screen purpose; and
repeating said populating and assigning a plurality
of times to create a set of screens, each of said screens in
said set having said screen seed and said screen purpose;
said computer server processor:
accessing said set of screens and giving each of
said screens in said set of screens a lowest ranking;
making at least one new screen for said set of
screens, each of said at least one new screens comprising:
said selected screen seed populated with an
combination of application parts which application
parts have been previously populated on at least
one of said screens in said set of screens, but
which combination of application parts has not
been previously used to create a screen in said set
of screens;
associating each of said at least one new screens
with said assigned screen purpose;
increasing said ranking of said screens in said set
of screens;
giving each of said at least one new screens a
lowest ranking;
merging said at least one new screens into said set
of screens; and
storing said merged set of screens on said
database.

(Appeal Br. 30–32 (Claims Appendix).)

REJECTION
The Examiner made the following rejection:
Appeal 2018-004343
Application 14/185,602

4
Claims 1–7 stand rejected under 35 U.S.C. § 101 because the claimed
invention is directed to a judicial exception (i.e., a law of nature, a natural
phenomenon, or an abstract idea) without significantly more.

ANALYSIS
An invention is patent eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 70 (2012) (brackets in original) (citing Diamond v. Diehr,
450 U.S. 175, 185 (1981)).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 217–18
(2014) (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 218–19 (“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
Appeal 2018-004343
Application 14/185,602

5
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” (Diehr, 450 U.S. at 191); “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
Supreme Court held that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 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 Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, . . . and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment.” Id. (citing Benson and Flook); see, 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 citation
Appeal 2018-004343
Application 14/185,602

6
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. (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
The PTO recently published revised guidance on the application of
§ 101. USPTO’s Memorandum, 2019 REVISED PATENT SUBJECT MATTER
ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50 (January 7, 2019) (“Revised
Guidance”). 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
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see MANUAL OF PATENT EXAMINING
PROCEDURE (MPEP) § 2106.05(a)–(c), (e)–(h) (9th ed., Rev.
08.2017, 2018)).

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 Revised Guidance.
STEP 1 of the Revised Guidance
Independent claim 1, as a “method” claim, recites one of the
enumerated categories of statutory subject matter in 35 U.S.C. § 101,
Appeal 2018-004343
Application 14/185,602

7
namely, a process. The issue before us is whether this claim is directed to a
judicial exception without significantly more.
STEP 2A, Prong 1 of the Revised Guidance
The first Prong of Step 2A under the Revised Guidance is to
determine whether the claim recites a judicial exception including
(a) mathematical concepts; (b) certain methods of organizing human
activity; and (c) mental processes. Revised Guidance, 84 Fed. Reg. at 51–
52. Here, the Examiner determines that claim 1 “is directed to the abstract
idea of generating a set of ranked screens by a human user creating a set of
screens for a screen seed” in steps that “describe the concept of organizing
information (i.e., assigning a screen pu[r]pose, giving a lowest ranking to
each screen and increasing the ranking as new screens are stored)” and are
“similar to concepts that have been identified as abstract by the courts, such
as using categories to organize, store and transmit information in
Cybersource or comparing new and stored information and using rules to
identify options in Electric Power Group.” (Ans. 2–3, 10; Non-Final Act. 2–
3 (citing Electric Power Grp, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir.
2016); CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366
(Fed. Cir. 2011).) The Examiner further finds claim 1’s steps describe “a
mental process of organizing information and storing, similar to
Cybersource” and “can be performed using pen and paper” because “a web
designer can draw on a piece of paper a set of screens comprising different
display positions, and assign application parts (e.g[.,] Header, Content,
Footer) to the said display position.” (Ans. 3–4, 9.)
We are not persuaded by the Examiner’s findings, as we are unable to
agree that the Examiner has adequately found the concept of claim 1 to be
Appeal 2018-004343
Application 14/185,602

8
similar to other concepts (e.g., data collection and organization, mental
processes, and pen and paper actions) found to be abstract ideas by our
reviewing courts. (See Appeal Br. 18–25; Reply Br. 2–4.) Appellant’s
claim 1 recites a method for generating a set of ranked screens that enable
organizing and classifying existing software for creating new software
applications using existing software parts. Here, we are unable to determine
from the Examiner’s analysis whether such technique for automatically
generating computer software applications using graphic elements (such as
visually ranked screens) describes subject matter that is a mathematical
concept, a method of organizing human activity, or a mental process (i.e.,
one of the three types of abstract ideas identified by the Revised Guidance).
For example, Appellant’s method is not performable by a human being or by
pen and paper (as the Examiner asserts) because the method requires
accessing, marking, and ranking screens (pages or views of a computer
software application) on a computer, creating a new graphical screen by
populating a screen seed (a permutation of the display/non-display of each
individual part of a particular screen layout) with a particular combination of
application parts, and merging the new screen into a previously-created set
of screens. (See Appeal Br. 20–21.) Claim 1 also does not merely recite
collecting and organizing information (as the Examiner asserts); rather,
claim 1 relates to a method for graphically-aided software development and
automatic generation of computer applications. (See Appeal Br. 22–24.)
STEP 2A, Prong 2 of the Revised Guidance
Even if Appellant’s claim 1 were considered to recite an abstract idea,
we are persuaded by Appellant’s arguments that the claim integrates an
abstract idea into a practical application. (See Appeal Br. 22, 24–26; Reply
Appeal 2018-004343
Application 14/185,602

9
Br. 2–6.) Particularly, we agree with Appellant that claim 1 integrates an
abstract idea into a practical application of “programmatically discovering
new computer application interfaces” and creating and designing such
interfaces, by “programmatically combining user-selected applications and
using a ranking algorithm to ‘discover’ new applications and likely use cases
for them.” (Appeal Br. 25–26; Reply Br. 3, 5.)
Here, claim 1 recites a combination of additional elements including a
computer server processor (i) “accessing said set of screens and giving each
of said screens in said set of screens a lowest ranking,” (ii) “making at least
one new screen for said set of screens,” the new screen including a “selected
screen seed populated with an combination of application parts which
application parts have been previously populated on at least one of said
screens in said set of screens, but which combination of application parts has
not been previously used to create a screen in said set of screens,” (iii)
“associating each of said at least one new screens with said assigned screen
purpose,” (iv) “increasing said ranking of said screens in said set of
screens,” (v) “giving each of said at least one new screens a lowest ranking,”
(vi) “merging said at least one new screens into said set of screens,” and (vii)
“storing said merged set of screens on said database.” The claim’s
additional elements provide a practical application of “assisting users who
may lack programming expertise to build new computer applications by
using parts of existing applications through a ‘discovery’ based system” that
programmatically discovers new computer application interfaces by
combining discreet components of previously-defined interfaces. (See Reply
Br. 2–3; Appeal Br. 26.)
Appeal 2018-004343
Application 14/185,602

10
As the Specification explains, a screen is “a single state of the
application, i.e., what the user sees any given moment,” while screen seeds
represent “different parts [within a screen layout] that comprise a screen
[and] might or might not be visible within the screen” and “combinations
resulting from creating variations of a single layout, by showing or hiding
each part of the layout.” (See Spec. ¶¶ 40, 42–43.) Appellant’s method
selects a screen seed and populates each of the parts of the seed with a
specific application part from a database (of displayable application parts
and screen seeds), repeats this process with the same screen seed to generate
multiple logical screens for that screen seed, each logical screen having the
same screen seed but different visual elements in each part. (Appeal Br. 9–
10; Spec. ¶¶ 40–41, 47, 66–68, Figs. 1 and 3–5.) Visual elements may
include a header area, a content area, a footer area, and a column where the
header, content, and footer areas are stacked vertically. (See Spec. ¶¶ 42–43,
47, 54, 59, Figs. 1 and 4.)
Appellant’s method enables application discovery by
programmatically combining user-selected applications and using a ranking
algorithm to discover new applications and likely use cases (“screen
purposes”) for them. (Appeal Br. 8, 10–12; Reply Br. 3; Spec. ¶¶ 67–68, 71,
78, Figs. 4–5.) For example, the method may create a new screen by
combining two previously generated screens, or by combining application
parts that have been previously populated, separately, in different screens.
(Appeal Br. 10–11; Spec. ¶¶ 67–68, 78, Figs. 4–5.) Appellant’s method
further ranks new screens with respect to previously-generated screens,
thereby enabling automatic discovery of applications based on a ranking
algorithm and based on the “screen purpose” of those applications. (Reply
Appeal 2018-004343
Application 14/185,602

11
Br. 3; Spec. ¶¶ 23, 67–71, 75, 78, and 87.) The claimed method thus enables
programmatic creation and identification of higher-ranked and lower-ranked
screens for particular “screen purposes,” thereby enabling users to create
new software applications from existing software parts. (Appeal Br. 25–26;
Reply Br. 2–3; Spec. ¶¶ 2, 22–24.) Claim 1’s method improves a
computer’s ability to programmatically discover and generate new
application interfaces. (Appeal Br. 25–26; Spec. ¶¶ 2, 22–24.) For example,
the claimed method may
make[] a system capable of automatically generating millions of
combinations of application screens and computer applications
for known purposes. The generated screens and applications are
fully designed, coded, and ready-to-use. Such an embodiment
eliminates the need of long development processes; reduces the
number of technical people required to build an application; and
helps discover and evaluate hundreds of thousands of design
variations so users can start creating applications with an end in
mind. . . . [T]he proposed method and system offer a large
catalog of predefined, fully designed, ready-to-use applications.
The system also provides a mechanism for browsing and
searching for screens and applications of known purposes. In
this way the users can simply specify what is the purpose of the
screen or application that the user want[sic] to create, and the
system will provide a ranked list of possible screens and
applications that can fulfill the specific purpose.

(Spec. ¶¶ 23–24.)
Thus, Appellant’s claim 1 integrates a visual manipulation technique
for organizing, classifying, and developing software, into a process rooted in
computer technology. See DDR Holdings, LLC v. Hotels.com, L.P., 773
F.3d 1245, 1257–58 (Fed. Cir. 2014) (holding patent-eligible a claim that
“address[es] a business challenge (retaining website visitors)” by enabling
visitors “to purchase products from the third-party merchant without actually
Appeal 2018-004343
Application 14/185,602

12
entering that merchant’s website,” thus providing a “claimed solution . . .
necessarily rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer networks”); see also Core
Wireless Licensing, SARL v. LG Electronics, Inc., 880 F.3d 1356, 1362–63
(Fed. Cir. 2018) (“Although the generic idea of summarizing information
certainly existed prior to the invention, these claims are directed to a
particular manner of summarizing and presenting information in electronic
devices” that “restrains the type of data that can be displayed in the summary
window”; the claims are thus directed to “an improved user interface for
electronic devices” and to “a specific manner of displaying a limited set of
information to the user,” improve “[t]he speed of a user’s navigation through
various views and windows . . . [by] ‘sav[ing] the user from navigating to
the required application, opening it up, and then navigating within that
application to enable the data of interest to be seen,’” and “are not directed
to an abstract idea”).
Because claim 1 integrates the judicial exception into a practical
application, we find claim 1, and its dependent claims 2–7, are not directed
to a judicial exception (abstract idea), rather, they are directed to patent-
eligible subject matter under § 101. Accordingly, we do not address Step 2B
of the Revised Guidance (corresponding to step two of the Alice/Mayo test).
For these reasons, we do not sustain the Examiner’s rejection of
claims 1–7 as directed to non-statutory subject matter under
35 U.S.C. § 101.

CONCLUSIONS
The Examiner erred in rejecting claims 1–7 under 35 U.S.C. § 101.
Appeal 2018-004343
Application 14/185,602

13

DECISION
For the above reasons, we REVERSE the Examiner’s rejection of
claims 1–7 under 35 U.S.C. § 101.

In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–7 101 Eligibility 1–7

REVERSED