Sriram Sankar et al.

Patent Trials and Appeals Board

Apr 7, 2020

15270729 - (D) (P.T.A.B. Apr. 7, 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.
15/270,729 09/20/2016 Sriram Sankar 079894.4242 1081
168743 7590 04/07/2020
Jordan IP Law, LLC (Facebook)
12501 PROSPERITY DRIVE
SUITE 401
SILVER SPRING, MD 20904
EXAMINER
LE, THU NGUYET T
ART UNIT PAPER NUMBER
2162
NOTIFICATION DATE DELIVERY MODE
04/07/2020 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):
admin@jordaniplaw.com
info@jordaniplaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte SRIRAM SANKAR and STANISLAV BASOVNIK
____________________

Appeal 2018-006881
Application 15/270,729
Technology Center 2100
____________________

Before CARL L. SILVERMAN, MELISSA A. HAAPALA, and
JAMES W. DEJMEK, Administrative Patent Judges.

SILVERMAN, Administrative Patent Judge.

DECISION ON APPEAL

Appellant1 seeks our review2 under 35 U.S.C. § 134(a) of the
Examiner’s rejection of claims 1–18. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.

1 Throughout this Decision, we use the word “Appellant” to refer to
“applicant” as defined in 37 C.F.R. § 1.42(a) (2017). Appellant identifies
Facebook, Inc. as the real party in interest. Appeal Br. 3.
2 The Appeal Brief refers to the rejection of claim 18. See, e.g., Appeal Br.
5. However, the Final Action rejection does not include a rejection for claim
18 and instead only refers to claims 1–17. See Final Act. 2–16; see also
Notice of Panel Decision from Pre-Appeal Brief Review (mailed Nov. 2,
2017) (listing claims rejected as 1–17). The Answer provides a new ground
rejection (§ 101) to claims 1–18. See Ans. 3–11.
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STATEMENT OF THE CASE
Appellant’s invention relates to performing searches. Abstract; Spec.
¶¶ 2–5, 27–30; Figs. 3A, 3B, 4A, 4B.
Claims 1, 16, and 17 are the independent claims on appeal. Claim 1,
reproduced below, is representative of the subject matter on appeal
(emphasis added):
1. A method comprising, by a client system of a first user:
receiving, at the client system, an input of a search query
by the first user;
sending, to a search engine, the search query and a first
location associated with the search query;
receiving, from the search engine, search results
comprising references to a plurality of objects matching the
search query, wherein the search results further comprise at least
a portion of a first tile of a map comprising a plurality of tiles,
the first location being within the first tile, wherein the map is
divided into the plurality of tiles such that each tile has an
approximately constant object density; and
providing, at the client system responsive to the search
query, a search-results interface for display, wherein the search-
results interface comprises at least the portion of the first tile, and
wherein the displayed portion of the first tile comprises a first
threshold number of the search results referencing objects
matching the search query having a location within the first tile.

Appeal Br. 15 (Claims App’x).

REFERENCES
Name Reference Date
Petersen et al. US 20100/197318 A1 Aug. 5, 2010
Florance et al. US 2013/0332877 A1 Dec. 12, 2013
Nair et al. US 2010/0125562 A1 May 20, 2010

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REJECTIONS
Claims 1–12 and 15–17 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Petersen et al. (US 2010/0197318 A1,
published Aug. 5, 2010) (“Petersen”) in view of Florance et al. (US
2013/0332877 A1, published Dec. 12, 2013) (“Florance”).3 Final Act. 2–12.
Claims 13 and 14 are rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Petersen, Florance, and Nair et al. (US
2010/0125562 A1, published May 20, 2010) (“Nair”). Final Act. 12–14.
Claims 1–18 are rejected under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter. Ans. 3–11.

ANALYSIS
The § 101 rejection

3 As originally filed, the instant application included 17 claims.
Appellant subsequently added claim 18, which depends from claim 1.
Amendment 6 (filed February 15, 2017) (“Amdt). In both the Non-Final
Office Action (mailed December 22, 2016) and the Final Action (mailed
June 1, 2017), the Examiner rejects claims 1–17 under pre-AIA 35 U.S.C. §
103(a). In neither Office Action does the Examiner indicate that claim 18 is
allowable. In an Advisory Action (mailed August 23, 2017), the Examiner
indicates the claims rejected are claims 1–18. Adv. Act. 1.
In the Appeal Brief, Appellant understands that claims 1–18 have
been rejected. See Appeal Br. 3, 5, 14; Reply Br. 2, 11–12. Appellant does
not assert any confusion or prejudice as to whether claim 18 is rejected
under pre-AIA 35 U.S.C. § 103(a). Appellant’s substantive arguments
regarding the Examiner’s obviousness rejection are directed to independent
claims 1, 16, and 17. See Appeal Br. 5–13; Reply Br. 11–12. Moreover,
Appellant considers claim 18 as part of the rejection of claims 1–12 and 15–
18. Appeal Br. 5; Reply Br. 11.
For purposes of this Appeal, we consider the obviousness rejection as
limited to claims 1–17 (i.e., those identified in the Final Office Action).
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PRINCIPLES OF LAW
Patent-eligible subject matter is defined in 35 U.S.C. § 101 of the
Patent Act, which recites:
Whoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new and
useful improvement thereof, may obtain a patent therefor, subject
to the conditions and requirements of this title.
There are, however, three judicially created exceptions to the broad
categories of patent-eligible subject matter in 35 U.S.C. § 101: “[l]aws of
nature, natural phenomena, and abstract ideas.” Alice Corp. v. CLS Bank
Int’l, 573 U.S. 208, 216 (2014) (quotation marks and citation omitted); Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012).
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. See 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,
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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
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 (quoting Mayo, 566 U.S.
at 72). “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).
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“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
The United States Patent and Trademark Office (“USPTO”) has
published revised guidance on the application of § 101. USPTO, 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) (“Guidance”). “All USPTO personnel are, as a matter of internal
agency management, expected to follow the guidance.” Id. at 51; see also
October 2019 Update at 1 (October 2019 Update: Subject Matter
Eligibility).4
Under that guidance, we first determine 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) (Step 2A, Prong 1); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a)–(c), (e)–(h)
(Step 2A, Prong 2).
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 (Step 2B).

4 USPTO, October 2019 Update: Subject Matter Eligibility (the “October
2019 Update”) (available at https://www.uspto.gov/sites/default/files/
documents/peg_oct_2019_update.pdf).

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See Guidance, 84 Fed. Reg. at 52–56.
A claim that integrates a judicial exception into a practical application
applies, relies on, or uses the judicial exception in a manner that imposes a
meaningful limit on the judicial exception, such that the claim is more than a
drafting effort designed to monopolize the judicial exception. See Guidance,
84 Fed. Reg. at 54. When the judicial exception is so integrated, then the
claim is not directed to a judicial exception and is patent eligible under
§ 101. Id.
The § 101 Rejection of claims 1−18
In the Answer, the Examiner identified a new ground of rejection and
determined that claims 1–18 are directed to patent-ineligible subject matter.
Ans. 3–11. According to the Examiner, the claim is directed to the abstract
idea of using search query and a first location associated with the search
query, searching and displaying search results comprising objects matched
with the search query and in a first tile of a map, the map is divided into
tiles, if the tile having number of objects greater than a threshold then the tile
is divided into a plurality of tiles. Id. at 3. The Examiner determines the
claim(s) do not include additional elements that are sufficient to amount to
significantly more than the judicial exception because the additional
computer elements, which are recited at a high level of generality, provide
conventional computer functions that do not add meaningful limits to
practicing the abstract idea. Id. In particular, the Examiner determines:
Claims 1, 16, and 17 direct to a method/non-
transitory/system of user input search query, transmitting the
search query and a first location associate with the search query
to search engine; receiving search results from the search engine
wherein the search results comprising objects matched with the
search query, and search result comprising a portion of a first tile
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of a map, the map comprising a plurality of tiles, and the first
location within the first tile, and each tile has an approximately
constant object density. These steps describe the concept of a
map is divided into tiles or map index (e.g. a tile at column H and
row 2), each tile has objects (e.g. persons, or parks), using the
map, a person might determine his location in the first tile (e.g.
at tile H2) and look up objects within the first tile, which
corresponds to concepts identified as abstract ideas by courts,
such as creating an index and using that index to search for and
retrieve data as in Int. Ventures v. Erie Indemnity '434 patent.
The concept described in claims 1, 16, and 17 is not meaningfully
different than those concepts found by the courts to be abstract
ideas. As such, the description in claims 1, 16, and 17 of using
search query and location associated with the search query to
retrieve the objects matched with search query is an abstract idea.
The claim does not include additional elements that are
sufficient to amount to significantly more than the judicial
exception because the additional elements when considered both
individually and as an ordered combination do not amount to
significantly more than the abstract idea. The claim does not
include additional elements that are sufficient to amount to
significantly more than the judicial exception because the
additional elements when considered both individually and as an
ordered combination do not amount to significantly more than
the abstract idea. Claim 1 recites the additional limitations of a
“client system” for receiving input query, a “search engine” for
processing query, a “interface” for displaying search result.
Claim 16 recites a “computer-readable non-transitory storage
media” for storing software. Claim 17 recites a “memory” for
storing instruction, and a “processor” for executing instructions.
These additional limitations are recited at a high level of
generality and are recited as performing generic computer
functions routinely used in computer applications. Generic
computer components recited as performing generic computer
functions that are well-understood, routine and conventional
activities amount to no more than implementing the abstract idea
with a computerized system. Thus, taken alone, the additional
elements do not amount to significantly more than the above-
identified judicial exception (the abstract idea). Looking at the
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limitations as an ordered combination adds nothing that is not
already present when looking at the elements taken individually.
There is no indication that the combination of elements improves
the functioning of a computer or improves any other technology.

Id. at 3–5 (bolding omitted).
In the Reply Brief, Appellant argues the Examiner oversimplifies and
misinterprets the claim limitations, and argues the Examiner errs because the
claims are not directed to an abstract idea, are necessarily rooted in computer
technology, are directed to an improvement to computer technology, and
contain an inventive concept sufficient to transform the claims into patent-
eligible subject matter. Reply Br. 2–13. Appellant argues the two-part test
of Alice and USPTO Eligibility Guidance are applicable. Id. at 2–3 (citing
Alice, 134 S. Ct. 2347, 2350 (2014); Interim Eligibility Guidance, 79 Fed.
Reg. 74,621 (Dec. 16, 2014); July 2015 Update Subject Matter Eligibility
(July 30, 2015); Formulating a Subject Matter Eligibility Rejection and
Evaluating the Appellant’s Response to a Subject Matter Eligibility
Rejection (May 4, 2016) (“May 2016 Update”).
Appellant further argues the Examiner provides no explanation why
the claims are “well-understood, routine, or conventional,” and, thus, the
rejection does not meet the requirements of Berkheimer v. HP, Inc., and the
Berkheimer Memo.5 Reply Br. 9. Appellant also argues the Examiner errs
in relying on Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315,
1325 (Fed. Cir. 2017). Id.

5 Changes in Examination Procedure Pertaining to Subject Matter Eligibility,
Recent Subject Matter Eligibility Decision (Berkheimer v. HP Inc.), USPTO
Memorandum, Robert W. Bahr, Deputy Commissioner for Patent
Examination Policy, April 19, 2018 (the “Berkheimer Memo”).
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Pursuant to the Guidance, we first determine, under Step 2A, Prong 1,
whether the claim recites a judicial exception. For the reasons set forth
below, we determine claim 1 recites a mental process and certain methods of
organizing human activity. The claim 1 limitations may be parsed as set
forth below wherein elements that reflect recitation of these abstract ideas
are italicized:
1. A method comprising, by a client system of a first user:
receiving, at the client system, an input of a search query
by the first user;
sending, to a search engine, the search query and a first
location associated with the search query;
receiving, from the search engine, search results
comprising references to a plurality of objects matching the
search query, wherein the search results further comprise at
least a portion of a first tile of a map comprising a plurality of
tiles, the first location being within the first tile, wherein the map
is divided into the plurality of tiles such that each tile has an
approximately constant object density; and
providing, at the client system responsive to the search
query, a search-results interface for display, wherein the search-
results interface comprises at least the portion of the first tile,
and wherein the displayed portion of the first tile comprises a
first threshold number of the search results referencing objects
matching the search query having a location within the first tile.

In addition to the Examiner’s finding that much of the claim
limitations are directed to the abstract idea of “creating an index and using
that index to search for and retrieve data” (Ans. 4; citing Intellectual
Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315, 1327 (Fed. Cir. 2017)),
each of the italicized limitations can be performed as mental processes. If a
method can be performed by human thought alone, or by a human using pen
and paper, it is merely an abstract idea and is not patent eligible under § 101.
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CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372–73 (Fed.
Cir. 2011). “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.” Id. at 1375. See also Synopsys, Inc. v. Mentor
Graphics Corp., 839 F.3d 1138, 1146–47 (Fed. Cir. 2016).
Here, the claim is broadly written and recites performing a search
query. In particular, receiving . . . an input of a search query by the first
user and sending . . . the search query and a first location associated with
the search query can be done by an observer of the subject and can be
accomplished mentally and by pen and paper. [R]eceiving . . . search results
comprising references to a plurality of objects matching the search query,
wherein the search results further comprise at least a portion of a first tile of
a map comprising a plurality of tiles, the first location being within the first
tile, wherein the map is divided into the plurality of tiles such that each tile
has an approximately constant object density . . . can be done similarly.
Likewise, providing . . . responsive to the search query, a search-results
interface for display, wherein the search-results interface comprises at least
the portion of the first tile, and wherein the displayed portion of the first tile
comprises a first threshold number of the search results referencing objects
matching the search query having a location within the first tile is a mental
process that can be done mentally and by pen and paper.
In view of the above, we determine that claim 1 recites the abstract
idea of a mental process. Additionally, we note that the italicized
limitations also recite the abstract idea of organizing human activity, such as
“managing personal behavior or relationships or interactions between
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people,” such as “social activities, teaching, and following rules or
instructions.” See Guidance, 84 Fed. Reg. at 52.
The Federal Circuit explains the “directed to” inquiry is not simply
asking whether the claims involve a patent-ineligible concept:
The “directed to” inquiry . . . cannot simply ask whether the
claims involve a patent-ineligible concept, because essentially
every routinely patent-eligible claim involving physical products
and actions involves a law of nature and/or natural
phenomenon—after all, they take place in the physical world.
See Mayo, 132 S.Ct. at 1293 (“For all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural
phenomena, or abstract ideas.”). Rather, the “directed to”
inquiry applies a stage-one filter to claims, considered in light of
the specification, based on whether “their character as a whole is
directed to excluded subject matter.”
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016); see
also Diehr, 450 U.S. at 188 (“In determining the eligibility of respondents’
claimed process for patent protection under § 101, their claims must be
considered as a whole.”); McRO, Inc. v. Bandai Namco Games Am. Inc., 837
F.3d 1299, 1314 (Fed. Cir. 2016) (the question is whether the claims as a
whole “focus on a specific means or method that improves the relevant
technology or are instead directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery”).
Therefore, we proceed to Step 2A, Prong 2, of the Guidance to
determine whether additional elements recited in the claims beyond the
judicial exception of claim 1 integrate the abstract idea into a practical
application. Such additional elements may reflect an improvement to a
technology or technical field. See Guidance, 84 Fed. Reg. at 55.
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As discussed below, there are no additional limitations recited beyond
the judicial exception itself that integrate the exception into a practical
application. More particularly, the claims do not recite: (i) an improvement
to the functionality of a computer or other technology or technical field (see
MPEP § 2106.05(a)); (ii) a “particular machine” to apply or use the judicial
exception (see MPEP § 2106.05(b)); (iii) a particular transformation of an
article to a different thing or state (see MPEP § 2106.05(c)); or (iv) any other
meaningful limitation (see MPEP § 2106.05(e)). See also 84 Fed. Reg.
at 55.
We determine the additional elements of claim 1 do not integrate the
abstract idea into a practical application. Claim 1 is reproduced below with
the additional elements (“client system,” “search engine,” and “search-
results interface for display”) shown in italics:
1. A method comprising, by a client system of a first user:
receiving, at the client system, an input of a search query
by the first user;
sending, to a search engine, the search query and a first
location associated with the search query;
receiving, from the search engine, search results
comprising references to a plurality of objects matching the
search query, wherein the search results further comprise at least
a portion of a first tile of a map comprising a plurality of tiles,
the first location being within the first tile, wherein the map is
divided into the plurality of tiles such that each tile has an
approximately constant object density; and
providing, at the client system responsive to the search
query, a search-results interface for display, wherein the search-
results interface comprises at least the portion of the first tile, and
wherein the displayed portion of the first tile comprises a first
threshold number of the search results referencing objects
matching the search query having a location within the first tile.

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The claim is broadly written, and the improvement, if any, of the
claim is in the abstract idea itself, not in the functionality of a computer or
other technology or technical field. No particular machine, no
transformation, no other meaningful limitation is persuasively argued by
Appellant. Additionally, the additional elements do not use the alleged
abstract idea in a meaningful way beyond generally linking the use of
the judicial exception to a particular technological environment, such
that the claim as a whole is more than a drafting effort designed to
monopolize the exception. See MPEP § 2106.05(e).
Rather, the additional elements merely implement an abstract idea
using broadly claimed elements (“client system,” “search engine,” and
“search-results interface for display”) to perform the abstract idea. See
MPEP § 2106.05(f). The limitations merely use the abstract idea by linking
it to a particular technological environment. See MPEP § 2106.05(e).
Because the additional elements of claim 1 do not integrate the
abstract idea into a practical application, we determine claim 1, and
independent claims 16 and 17, which are commensurate in scope with claim
1, is directed to an abstract idea. See Guidance, Step 2A, Prong 2.
Because we determine the claims are directed to an abstract idea, we
next analyze the claims under step two of Alice to determine whether there
are additional limitations that individually, or as an ordered combination,
ensure the claims amount to “significantly more” than the abstract idea.
Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S. at 72–73, 77–79). As
stated in the Guidance, many of the considerations to determine whether the
claims amount to “significantly more” under step two of the Alice
framework are already considered as part of determining whether the
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judicial exception has been integrated into a practical application. 84 Fed.
Reg. at 56. Thus, at this point of our analysis, we determine, under Step 2B
of the Guidance, if the claims add a specific limitation, or combination of
limitations, that is not well-understood, routine, conventional activity in the
field, or simply appends well-understood, routine, conventional activities at
a high level of generality. Id.
As with the integration into a practical application analysis discussed
above, an inventive concept “cannot be furnished by the unpatentable law of
nature (or natural phenomenon or abstract idea) itself.” Genetic Techs. Ltd.
v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016); see also 84 Fed.
Reg. at 56; Alice, 573 U.S. at 217 (explaining that, after determining a claim
is directed to a judicial exception, “we then ask, ‘[w]hat else is there in the
claims before us?’” (emphasis added, brackets in original)
(quoting Mayo, 566 U.S. at 78)). Instead, an “inventive concept” is
furnished by an element or combination of elements that is recited in the
claim in addition to the judicial exception and sufficient to ensure the claim
as a whole amounts to significantly more than the judicial exception
itself. Alice, 573 U.S. at 218–19 (citing Mayo, 566 U.S. at 72–73); see BSG
Tech LLC v. Buyseasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018)
(explaining that the Supreme Court in Alice “only assessed whether the
claim limitations other than the invention’s use of the ineligible concept to
which it was directed were well-understood, routine and conventional,”
(emphasis added)).
As discussed below, we are not persuaded by Appellant’s argument
that the Examiner’s determination that the claims include elements that are
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“well-understood, routine or conventional” is not consistent with the
Berkheimer Memo.
On the record before us, the claims fail to recite specific limitations
(or a combination of limitations) that are not well-understood, routine, and
conventional. Rather, the additional elements (i.e., “client system,” “search
engine,” and “search-results interface for display”) are generic computer
components recited at a high level of generality or basic computer functions.
Appellant does not persuasively argue, or point to any description in the
Specification, that these components are anything other than what was well-
understood, routine, and conventional in the art. See Mortg. Grader, Inc. v.
First Choice Loan Servs. Inc., 811 F.3d 1314, 1324–25 (Fed. Cir. 2016)
(generic computer components such as an “interface,” “network,” and
“database” fail to satisfy the inventive concept requirement); see also Spec.
¶¶ 3, 24, 37, 40–47 (describing the search engine as a “popular tool” in the
prior art and standard components of a computer system used in the
invention).
To the extent Appellant argues the claims recite a solution to a
problem in computer technology that adds significantly more, we note that
these steps are part of the ineligible abstract idea. “If a claim’s only
‘inventive concept’ is the application of an abstract idea using conventional
and well-understood techniques, the claim has not been transformed into a
patent-eligible application of an abstract idea.” BSG Tech, 899 F.3d at
1290–91 (citing Berkheimer v. HP Inc., 881 F.3d 1360, 1370 (Fed. Cir.
2018)). “[I]t is irrelevant whether [the claimed abstract idea] may have been
non-routine or unconventional as a factual matter . . . narrowing or
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reformulating an abstract idea does not add ‘significantly more’ to it.” BSG
Tech, 899 F.3d at 1291.
Regarding case law cited by the Examiner and Appellant, we are not
persuaded by Appellant’s arguments. The claims here are unlike Enfish and
DDR as the claims before us are broadly written and do not recite an
improvement to a computer. As discussed supra, if the claims recite any
improvement, this improvement is to an abstract idea. Because the claim
does not solve a problem in the software arts, claim 1 is unlike the
technology-based integrations cited by Appellant. For example in Enfish,
the patent-eligible claim was directed to a self-referential table to improve
computer databases. 822 F.3d at 1337. Likewise, in McRO, the patent-
eligible claim focused on a specific asserted improvement in computer
animation. By contrast, the claims are, at best, an improvement to
performing a search inquiry. Abstract; Spec. ¶¶ 2–5. Thus, we conclude
under Step 2B of the Guidance, that the claim limitations, considered
individually and as an ordered combination, simply append well-understood,
routine, conventional activities previously known to the industry.
For the above reasons, Appellant has not persuaded us of Examiner
error, and we sustain the Examiner’s rejection of claims 1–18 under
35 U.S.C. § 101.
The § 103 Rejections
Claims 1–12 and 15–17 over Petersen and Florance
Appellant argues the Examiner errs in finding Petersen teaches the
claim 1 limitation “wherein the map is divided into the plurality of tiles such
that each tile has an approximately constant object density” (also referred to
as “disputed limitation”). Appeal Br. 5–12; Reply Br. 11–12. Appellant
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argues the recited “each tile has an approximately constant object density” is
different from Petersen’s “each tile has below a threshold number of objects
within the tile” and Petersen’s tiles ranging from 0 to 3 objects does not
constitute “approximately constant object density.” Id.
The Examiner finds Petersen teaches a map including a plurality of
tiles. Final Act. 3 (citing Petersen, Figs. 13A–13E). The Examiner finds
Petersen teaches the disputed limitation as Petersen teaches buckets of grids
in the map which include a number of users in the location bucket. Id. at 4
(citing Petersen, Figs. 6, 13A–13E; ¶¶ 116, 130, 135, 167, 169). In the
Advisory Action, the Examiner finds Petersen teaches an example of
dividing a region until no region has more than 3 “[s]o each region may have
0 to 3 objects which is consider[ed] mostly or approximately constant.”
Advisory Act. 2. In the Answer, the Examiner notes the Specification does
not provide the meaning of “approximately constant.” Ans. 11–12. The
Examiner refers to Figures 3A, 3B and the Specification and finds that some
tiles have numerous objects whereas other tiles have few or no objects. Id.
(citing Spec. ¶¶ 27–29). The Examiner also refers to Figure 13E of Petersen
and finds:
1) Petersen discloses the map is divided into plurality of
tiles, each tile has zero to the predetermined maximum
number, e.g. each tile roughly/approximately has 0–3
users. Thus, Petersen discloses that each tile has an
approximately constant object density, wherein the
boundary of the approximately constant density is from
0 to a predetermined maximum number.
2) The method of dividing a map into tiles disclosed in Petersen
is similar to the method of dividing a map into tiles in Appellant's
specification.

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3) Both Petersen and Appellant’s specification disclose dividing
the map until each tile has less than the maximum number of
objects/users.

Based on 1), 2), and 3) above, Peterson discloses “the map
divided into the plurality of tiles such that each tile has an
approximately constant object density”.

Id. at 14–15.

Appellant argues Petersen teaches tracking crowds of users of digital
services but does not teach the disputed limitation. Appeal Br. 6 (citing
Petersen ¶ 132; Fig. 11). Appellant argues Petersen teaches a “maximum
number of objects or users per tile to divide map regions . . . and ultimately
discloses a map having regions with a wide range of densities (i.e., non-
constant densities).” Id. According to Appellant, Petersen map regions
shown in Figure 13E have exactly the maximum number of users, less than
the maximum number of users, or even no users at all. Id. at 7 (citing
Petersen ¶ 140). Appellant argues the maximum number 3 is an example
and there is no discussion of a lower limit, and no discussion of ensuring that
the actual number of objects within a tile is maintained as approximately
constant among tiles. Id. at 8. Appellant refers to Figure 4A and the
Specification and argues the object density is approximately constant from
tile to tile. Id. at 9–10. Appellant argues the Examiner errs by relying on
Figures 3A, 3B as it is Figures 4A, 4B that depict a map generated with tiles
based on an approximately constant object density. Id. at 10 (citing Spec.,
Figs. 3A, 3B, 4B; ¶¶ 27, 28).
In the Reply Brief, Appellant argues although Petersen and the
Specification describe tiles divided based on a threshold, independent claims
1, 16, and 17, and the Specification, recite a map divided to have tiles with
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an approximately constant object density, not merely an object density
satisfying a threshold, and the two concepts are distinct. Reply Br. 11–13
(citing Petersen ¶ 29). Appellant argues Petersen teaches tiles can have
between zero and a “predefined maximum number” of objects per tile. Id. at
11 (citing Petersen ¶¶ 132–134). According to Appellant, the object density
of a tile in Petersen can be zero and any number of variations as the
maximum increases, and this cannot be equivalent to tiles divided such that
each tile has an approximate constant object density. Id. (citing Petersen
¶¶ 132–139).
Appellant argues one of ordinary skill in the art would understand that
“approximately constant object density” is distinct from a “threshold object
density” (as in Petersen). Reply Br. 11–12 (citing Spec. ¶ 29). Appellant
cites to the Specification in support of its argument and argues that
paragraph 29 states “[a]s an example and not by way of limitation, a map
may be divided into a plurality of tiles where each tile[] has an
approximately constant object density (i.e., number of objects/tile). As
another example and not by way of limitation, a map may be divided into a
plurality of tiles where no tile has over a threshold object density (e.g., 1000
objects/tile).” Reply Br. 11–12. Appellant argues that although Petersen
and the Specification additionally describe tiles based on a threshold, claims
1, 16, and 17, and the Specification, recite a map divided to have tiles with
an approximately constant object density, not merely an object density
satisfying a threshold. Reply Br. 12 (citing Petersen ¶ 29).
During prosecution, claims must be given their broadest reasonable
interpretation when reading claim language in light of the Specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
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Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Although we interpret
claims broadly but reasonably in light of the Specification, we nonetheless
must not import limitations from the Specification into the claims. See In re
Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Our reviewing court
states that “the words of a claim ‘are generally given their ordinary and
customary meaning.’” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed.
Cir. 2005) (en banc) (citations omitted). However, the broadest reasonable
interpretation differs from the broadest possible interpretation. In re Smith
Int’l, Inc., 871 F.3d 1375, 1383 (Fed. Cir. 2017). The correct inquiry in
giving a claim term its broadest reasonable interpretation in light of the
specification is “an interpretation that corresponds with what and how the
inventor describes his invention in the specification, i.e., an interpretation
that is ‘consistent with the specification.’” Id. at 1382–83 (quoting In re
Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997)).
Here, the Examiner’s interpretation of the disputed limitation is
unreasonably broad. Considering “constant object density” and “threshold
object density” in light of the Specification, one of ordinary skill in the art
would understand these are two different types of object density. “Constant
object density” refers to a constant number of objects per tile whereas
“threshold object density” refers to a threshold of object density that can be
utilized as an upper limit (as in Petersen), or lower limit, of objects per tile.
Paragraph 29 of the Specification describes these two different types of
object density. Petersen teaches tiles below a threshold object density that
results in density that varies from zero to at least three, and one of ordinary
skill in the art would understand that this variation of density among the tiles
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does not constitute the claimed “constant object density.” See Petersen
¶¶ 132–139.
Based on the record, we are persuaded by Appellant’s arguments that
the Examiner erred in finding Petersen teaches the disputed limitation. In
particular, Petersen teaches tiles organized based on a threshold but does not
teach tiles organized based on approximately constant object density as
recited in disputed limitation. In this context, we note the Specification
discusses tiles based on approximately constant object density and also
discusses tiles organized based on a threshold. See Spec. ¶ 29; Figs. 4A,
4B.
In view of the above, we do not sustain the obviousness rejection of
claim 1, independent claims 16 and 17, and dependent claims 2–12, and 15.
Regarding dependent claims 13 and 14, Appellant relies on the arguments
discussed supra and argues Nair does not cure the deficiencies of Petersen or
Florance. Therefore, we do not sustain the rejection of claims 13 and 14.

CONCLUSION
We affirm the Examiner’s decision rejecting claims 1–18 under
35 U.S.C. § 101.
We reverse the Examiner’s decision rejecting claims 1–17 under
35 U.S.C. § 103(a).
Because we affirm at least one ground of rejection with respect to
each claim on appeal, we affirm the Examiner’s decision rejecting claims 1–
18.

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DECISION

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–12, 15–
17
103(a) Petersen, Florance 1–12, 15–
17
13, 14 103(a) Petersen, Florance,
Nair
13, 14
1−18 101 Eligibility 1–18
Overall
Outcome
1–18

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)(iv).
See 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED