Temnos, Inc.

Patent Trials and Appeals Board

Nov 3, 2020

14284370 - (D) (P.T.A.B. Nov. 3, 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.
14/284,370 05/21/2014 Timothy A. Musgrove 13-30018-US 2360
128144 7590 11/03/2020
Rimon PC
One Embarcadero Center
Suite 400
San Francisco, CA 94111
EXAMINER
ASPINWALL, EVAN S
ART UNIT PAPER NUMBER
2152
NOTIFICATION DATE DELIVERY MODE
11/03/2020 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):
docketing.rimonlaw@clarivate.com
eofficeaction@appcoll.com
patentdocketing@rimonlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TIMOTHY A. MUSGROVE
Appeal 2019-004327
Application 14/284,370
Technology Center 2100
Before ST. JOHN COURTENAY III, JAMES R. HUGHES,
and MICHAEL T. CYGAN, Administrative Patent Judges.
HUGHES, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Claims 1–33 are pending, stand rejected, are appealed by Appellant,1
and are the subject of our decision under 35 U.S.C. § 134(a). See Final Act.
1–2; Appeal Br. 2.2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a) (2015). Appellant identifies the real party in interest as Temnos,
Inc. Appeal Br. 2.
2 Throughout our decision we refer to Appellant’s Specification (“Spec.”)
filed May 21, 2014; Appeal Brief (“Appeal Br.”) filed Dec. 2, 2018; and
Reply Brief (“Reply. Br.”) filed May 14, 2019. We also refer to the
Examiner’s Final Office Action (“Final Act.”) mailed June 5, 2018; and
Answer (“Ans.”) mailed Mar. 15, 2019.
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CLAIMED SUBJECT MATTER
The invention generally relates to automatically generating headlines
for content. See Spec. ¶¶ 2–6. In particular, according to Appellant,
technology including computer-readable media, apparatuses and methods
that use a given “piece of content in a document, such as a web page or a
blog post, [to] automatically generate an original headline, or one or more
alternative headlines to the original headline.” Spec. ¶ 16. For example,
Appellant describes a method, executed by computing devices, for
generating a headline, including the steps of: identifying a section of content
of a document; selecting a sentence in the section (of content) based on
determining that the sentence is likely to attract users’ attention, which is
further based on historical performance indicators; extracting a portion of
the sentence based on an attribute that has been correlated with positive
headline performance; and generating the headline from the extracted
portion of the sentence. See Spec. ¶¶ 16, 20–29, 40, 41, 47–49; Abstract.
Claims 1 (directed to a method), 12 (directed to an apparatus), and 23
(directed to a computer-readable medium) are independent and recite
headline generation functionality. Claim 1, reproduced below, is illustrative
of the claimed subject matter:
1. A method executed by one or more computing devices for
generating a headline, the method comprising:
identifying, by at least one of the one or more computing
devices, a content section of a document;
selecting, by at least one of the one or more computing
devices, a sentence in the content section based at least in part on
a determination that the sentence, separated from the text, is
likely to attract users’ attention based on historical performance
indicators on a specified content network;
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extracting, by at least one of the one or more computing
devices, a portion of the sentence based at least in part on a
trigger attribute correlated with positive headline performance
within the sentence; and
generating, by at least one of the one or more computing
device, the headline based at least in part on the portion of the
sentence.
Appeal Br. 10 (Claims App.).
REJECTIONS3
The Examiner rejects claims 1–33 under 35 U.S.C. § 101 as being
directed to patent ineligible subject matter. See Final Act. 8–55.
ANALYSIS
Subject Matter Eligibility—35 U.S.C. § 101
Under 35 U.S.C. § 101, a patent may be obtained for “any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof.” The Supreme Court has “long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable.” Alice Corp. v.
CLS Bank Int’l, 573 U.S. 208, 216 (2014) (quoting Ass’n for Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 77–80 (2012). “[F]or distinguishing patents that claim laws of
nature, natural phenomena, and abstract ideas from those that claim patent-

3 The Examiner has withdrawn the rejection of claims 1, 12, and 23 under
35 U.S.C. § 112(a) as failing to comply with the written description
requirement. See Final Act. 7; Ans. 3. We do not address Appellant’s
arguments with respect to the withdrawn rejection. See Appeal Br. 4–5.
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eligible applications of those concepts.” Alice, 573 U.S. at 217. The
framework requires us first to consider “whether the claims at issue are
directed to one of those patent-ineligible concepts.” Alice, 573 U.S. at 217.
If so, we then examine “the elements of [the] claim both individually and ‘as
an ordered combination’ to determine whether the additional elements
‘transform the nature of the claim’ into a patent-eligible application.” Alice,
573 U.S. at 217 (quoting Mayo, 566 U.S. at 78, 79). That is, we examine the
claim for an “inventive concept,” “an element or combination of elements
that is ‘sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [ineligible concept] itself.’” Alice,
573 U.S. at 217–18 (alteration in original) (quoting Mayo, 566 U.S. at 72–
73).
The Patent Office has published revised guidance concerning this
framework and the application of § 101. USPTO’s 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(hereinafter “2019 Revised Guidance”).4 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, mental processes, or
certain methods of organizing human activity such as a
fundamental economic practice or managing personal behavior
or relationships or interactions between people) (hereinafter
“Step 2A, prong 1”); and

4 The Office’s current eligibility guidance may also be found in the most
recent update to the Manual of Patent Examination Procedure (MPEP),
Ninth Edition, Revision 10.2019 (revised June 2020). See MPEP §§ 2103
through 2106.07(c).
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(2) additional elements that integrate the judicial exception into
a practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h))
(hereinafter “Step 2A, prong 2”).5
See 2019 Revised Guidance, 84 Fed. Reg. at 51–52, 55.
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 2019
Revised 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 35 U.S.C. § 101. See 2019 Revised Guidance, 84 Fed. Reg. at
54.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then evaluate
whether the claim provides an inventive concept. See 2019 Revised
Guidance, 84 Fed. Reg. at 56; see also Alice, 573 U.S. at 217–18.
For example, we 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.6
See 2019 Revised Guidance, 84 Fed. Reg. at 56. With these principles in
mind, we turn to the merits of the § 101 rejection.

5 All references to the MPEP are to the Ninth Edition, Revision 10.2019
(rev. June 2020).
6 Items (3) and (4) are collectively referred to as “Step 2B” hereinafter and
in the 2019 Revised Guidance.
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The Examiner rejects Appellant’s claims 1–33 as being directed to
patent-ineligible subject matter. See Final Act. 8–55. In particular, the
Examiner rejects Appellant’s claim 1 as being directed to patent-ineligible
subject matter. See Final Act. 8–13; Ans. 4–13. Appellant does not
separately argue the claims with specificity and, instead, argues the claims
together for this rejection. See Appeal Br. 5–9. Accordingly, we address the
Examiner’s rejection of claims 1–33 as a group based on claim 1, as
permitted by 37 C.F.R. § 41.37(c)(1)(iv).
Statutory Subject Matter
Claim 1 recites a “method.” Appellant’s “method” includes
functional steps or processes performed by computing devices. Appeal Br.
10 (Claims App.). Accordingly, we analyze Appellant’s method as a
process, which is a statutory category of invention (subject matter)
(USPTO’s Step 1).
Abstract Idea
The Examiner rejects Appellant’s claim 1 as being directed to patent-
ineligible subject matter. See Final Act. 8–13; Ans. 4–13. Specifically, the
Examiner concludes claim 1 (and the other pending claims) recites an
abstract idea—“a method for . . . selecting sentences based on performance
indicators[] and extracting sentence portions based on attributes correlated
with positive performance,” which describe concepts of collecting,
analyzing, manipulating, and/or displaying information similar to concepts
identified as abstract in Electric Power Group and Intellectual Ventures.
See Final Act. 8–9 (citing Intellectual Ventures I LLC v. Capital One Fin.
Corp., 850 F.3d 1332 (Fed. Cir. 2017) and Elec. Power Grp., LLC v. Alstom
S.A., 830 F.3d 1350 (Fed. Cir. 2016)). The Examiner clarifies that the
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recitations of Appellant’s claim 1 are mental processes that are abstract. See
Ans. 4–6.
Appellant contends the Examiner erred in rejecting the claims as
being directed to patent-ineligible subject matter. See Appeal Br. 5–9; Reply
Br. 1–4.7 Specifically, Appellant contends, inter alia, that the Examiner
“evaluate[d] the claim elements individually and fail[ed] to address the
claims as a series of ordered steps” contrary to BASCOM (Appeal Br. 7
(citing BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d
1341 (Fed. Cir. 2016)), and “the claims are necessarily rooted in computer
technology” similar to DDR Holdings (Appeal Br. 9 (citing DDR Holdings,
LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014)). See Appeal
Br. 5–9. In the Reply Brief, Appellant contends that the claims are not
abstract mental processes because the claims “expressly recite
implementation by computing elements and thus are not capable of being
performed entirely by the human mind.” Reply Br. 2; see Reply Br. 1–4.
For the reasons discussed below, we conclude Appellant’s claim 1
(and the other pending claims) recites abstract ideas, and these abstract ideas
are not integrated into a practical application, nor do they include an
inventive concept. In view of the 2019 Revised Guidance, we clarify and
expand the Examiner’s reasoning as follows. In view of the 2019 Revised
Guidance, we provide our reasoning as follows.
Claim 1 (Appeal Br. 10 (Claims App.)) recites a “method . . . for
generating a headline” (see Spec. ¶ 16) that uses a computing device (the
method “executed by one or more computing devices”) to generate a

7 Appellant’s Reply Brief does not include page numbers. We reference the
Reply Brief as if numbered consecutively beginning at page 1.
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headline by the computing device(s) performing the functionality of the
method. See Spec. ¶ 65; Fig. 8. The functionality (steps or processes) of the
method include: “identifying . . . a content section of a document,”
“selecting . . . a sentence in the content section based . . . on a determination
that the sentence . . . is likely to attract users’ attention,” which is further
“based on historical performance indicators on a specified content network,”
and “extracting . . . a portion of the sentence based . . . on a trigger attribute
correlated with positive headline performance within the sentence.” See
Spec. ¶¶ 20–29, 40, 41, 47–49. That is the method identifies a portion of a
document, selects a sentence within the identified portion based on
indicators such as a click-through rate (CTR), and extracts part of the
sentence based on attributes such as certain adjectives or verbs correlated
with a high CTR. See id. The method then generates a headline (see Spec.
¶¶ 16–18) from the extracted portion of the sentence. See Spec. ¶¶ 54–57.
In summary, claim 1 recites process of generating a headline from
identifying content and extracting information from the content based on
indicators and attributes associated with the content.
Appellant contends claim 1 recites “operations that must be performed
by a computer” and “are not capable of being performed entirely by the
human mind” and, therefore, are not abstract mental processes. Reply Br. 2;
see Reply Br. 1–4. When interpreted in conjunction with the Specification
(in particular, Spec. ¶¶ 2–5 that described trained writers performing
headline generation), however, the process of claim 1 merely recites generic
technology (as discussed below) for identifying and collecting content,
analyzing and selecting a portion of the content, analyzing and extracting
information from the selected portion of the content, and generating a
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headline from the extracted content (by manipulating the extracted content),
i.e., identifying, selecting, extracting, and manipulating content information
to generate a headline based on indicators and attributes (a CTR) associated
with the content.
As set forth by the Examiner, the limitations of claim 1 recite mental
processes similar to Electric Power Group and Intellectual Ventures. See
Final Act. 8–9; Ans. 4–6. The identification, selection, extraction, and
manipulation of content information to generate a headline based on certain
attributes recite mental processes (see 2019 Revised Guidance, 84 Fed. Reg.
at 52, 53 (“[m]ental processes” are “concepts performed in the human mind
(including an observation, evaluation, judgment, opinion)”). Apart from the
use of generic technology (discussed further below), each of the limitations
of claim 1 describes a computer implemented process of updating and
analyzing and extracting content to generate a headline by “‘collecting
information, analyzing it, and displaying certain results of the collection and
analysis,’ where the data analysis steps are recited at a high level of
generality such that they could practically be performed in the human mind.”
October 2019 Update: Subject Matter Eligibility 7, available at
https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_
update.pdf (hereinafter “October 2019 Update”). The recited headline
generation process amounts to a mental process that is very similar to
Electric Power Group (see Elec. Power Grp., 830 F.3d at 1351–54).
A person can practically perform the functions of claim 1 mentally, or
by using pen and paper. Nowhere does Appellant point to specific claim
limitations that could not be performed alternatively as a mental process.
For instance, one could mentally perform analyzing and selecting the
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sentence from the identified content (the second step of claim 1) by
evaluating the sentence to determine how much user attention it attracts
(e.g., based on a click-through-rate). This process can readily be performed
mentally by a person. See Spec. ¶¶ 3–4, 23, 25–28.
We emphasize that the 2019 Revised Guidance explains that “mental
processes” include acts that people can perform in their minds or using pen
and paper, even if the claim recites that a generic computer component
performs the acts. See 2019 Revised Guidance, 84 Fed. Reg. at 52 n.14 (“If
a claim, under its broadest reasonable interpretation, covers performance in
the mind but for the recitation of generic computer components, then it is
still in the mental processes category unless the claim cannot practically be
performed in the mind.”). Because each of the limitations discussed above
encompass acts that people can perform in their minds or using pen and
paper, claim 1 recites mental processes.
Appellant’s arguments have not persuaded us otherwise. See SAP
America, Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018)
(“selecting certain information, analyzing it using mathematical techniques,
and reporting or displaying the results of the analysis” are abstract concepts
similar to the claims in Electric Power Group); Intellectual Ventures I, 850
F.3d at 1340 (identifying the abstract idea of collecting, displaying, and
manipulating data); Content Extraction & Transmission LLC v. Wells Fargo
Bank, Nat’l Ass’n, 776 F.3d 1343, 1345, 1347 (Fed. Cir. 2014) (finding the
“claims generally recite . . . extracting data [and] recognizing specific
information from the extracted data” and that the “claims are drawn to the
basic concept of data recognition”).
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In summary, we conclude Appellant’s claim 1 recites a judicial
exception (USPTO’s Step 2A, Prong 1; see 2019 Revised Guidance) because
claim 1 recites a generic computer implemented process of generating a
headline that consists of mental processes that can be practically performed
in the human mind (or utilizing pen and paper) including observation,
evaluation, or judgment. See 2019 Revised Guidance, 84 Fed. Reg. at 52, 53
(listing “[m]ental processes—concepts performed in the human mind
(including an observation, evaluation, judgment, opinion)” as some of the
“enumerated groupings of abstract ideas” (footnote omitted)).
Practical Application
Having determined that claim 1 recites an abstract idea, we next
determine, under Step 2A, Prong 2 of the 2019 Revised Guidance, whether
claim 1 and the other pending claims are directed to that abstract idea, or
whether the claims integrate the abstract idea into a practical application of
that abstract idea. See 2019 Revised Guidance, 84 Fed. Reg. at 54. In doing
so, we evaluate the claim as a whole to determine whether the claim
“integrate[s] the [abstract idea] into a practical application, using one or
more of the considerations laid out by the Supreme Court and the Federal
Circuit.” 2019 Revised Guidance, 84 Fed. Reg. at 55; see also October 2019
Update 12 (discussing the practical application analysis). That is, we
consider any additional elements recited in the claim along with the
limitations that recite an abstract idea to determine whether the claim
integrates the abstract idea into a practical application. See October 2019
Update 12.
Claim 1 recites additional elements beyond the process of extracting
information and generating a headline (the judicial exception). The
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additional elements in claim 1 include computing devices (the “one or more
computing devices”) for executing the method of generating a headline. The
computing device(s) “identify[] . . . a content section of a document,”
“select[] . . . a sentence in the content section,” and “extract[] . . . a portion
of the sentence.” Appeal Br. 10 (Claims App.) (claim 1).
Appellant’s Specification does not describe the additional elements—
the computing devices—in any detail. Instead, the Specification describes
the computing devices at a high level of generality in terms of the functions
the devices perform. For example, the written description does not describe
computing devices, but instead describes computer systems or a computing
environment—“[o]ne or more of the above-described techniques can be
implemented in or involve one or more computer systems” (Spec. ¶ 65), and
“the computing environment . . . includes at least one processing unit . . . .
[that] executes computer-executable instructions” (Spec. ¶ 66). See Spec.
¶¶ 65–67; Fig. 8. The written description also describes the “[c]omputing
environment” “may be” “a personal computer” or “may be integrated in a
single device (e.g., a mobile device with a touch-display, such as a
smartphone or a tablet).” Spec. ¶ 72.
In summary, Appellant’s written description describes the additional
elements (computing devices) as standard computer components. Providing
“simply generic descriptions of well-known computer components” does not
show a technical improvement (discussed infra) or integrate the abstract idea
into a practical application where, as here, the Appellant “makes no claim
that it invented any of those components or their basic functions, nor does it
suggest that those components, at that level of generality, were unknown in
the art.” Affinity Labs of Tex., LLC v. Amazon.com Inc., 838 F.3d 1266,
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1270 (Fed. Cir. 2016). Appellant’s written description does not portray the
additional elements as anything but standard computer equipment or
components. Nor does Appellant’s written description portray these
components as operating in a new way. Instead, as explained by the
Examiner, the written description depicts these components as generic
components operating in their accustomed manner. See Final Act. 8–13;
Ans. 6.
Accordingly, Appellant’s written description shows that the additional
elements are generic. See Hybritech Inc. v. Monoclonal Antibodies Inc., 802
F.2d 1367, 1384 (Fed. Cir. 1986) (“[A] patent need not teach, and preferably
omits, what is well known in the art.”); Intellectual Ventures I, 850 F.3d at
1331 (“The claimed mobile interface is so lacking in implementation details
that it amounts to merely a generic component (software, hardware, or
firmware) that permits the performance of the abstract idea, i.e., to retrieve
the user-specific resources.”).
Appellant contends claim 1 and the other pending claims solve a
technical problem (similar to BASCOM), and are rooted in technology
(similar to DDR Holdings). See Appeal Br. 8–9 (supra). In other words,
Appellant contends the claims recite a technological improvement that
amounts to more than simply utilizing a computer as a tool to accomplish the
headline generation process.
Appellant’s contentions correspond to the reasoning in MPEP
§ 2106.05(a), where additional elements integrate the judicial exception into
a practical application. We, however, disagree with Appellant’s contentions.
Appellant’s additional elements (the computing devices) do not apply or use
the judicial exception (the process of extracting information and generating a
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headline) in a manner that imposes a meaningful limit on the judicial
exception, such that it is more than a drafting effort designed to monopolize
the exception. See Alice, 573 U.S. at 221–24 (citing Mayo, 566 U.S. at 78–
85). Rather, Appellant’s claims recite generic computer elements
(computing devices), that are utilized as tools to carry out the collection,
identification, analysis, and extraction of information to generate a headline
(as discussed supra). Utilizing computers as tools to perform common data
information collection, identification, analysis, and extraction functions that
can be mental processes (abstract ideas) does not impose a meaningful limit
on the abstract idea. See MPEP § 2106.05(f); see also Alice, 573 U.S. at 223
(finding “if [the] recitation of a computer amounts to a mere instruction to
implement an abstract idea on a computer, that addition cannot impart patent
eligibility”) (internal quotation marks, alteration, and citations omitted).
None of the additional elements in claim 1, whether taken alone or in
the context of the claims as a whole, integrate the judicial exception into a
practical application. In particular, the recited limitations including the
additional elements may improve the abstract idea (the mental processes) by
implementing them more efficiently (see Spec. ¶¶ 4–5), but do not describe
an improvement in the functioning of a computer, or an improvement to
other technology or technical field. See 2019 Revised Guidance, 84 Fed.
Reg. at 55.
Appellant’s claims can be distinguished from patent-eligible claims
such as those in Enfish, BASCOM, and DDR Holdings that are directed to “a
specific improvement to the way computers operate” (Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016)), solving a
technology-based problem (BASCOM, 827 F.3d at 1349–52), or a method
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“rooted in computer technology in order to overcome a problem specifically
arising in the realm of computer [technology]” (DDR Holdings, 773 F.3d at
1257). Contrary to Appellant’s arguments, the claims are not a
technological improvement or an improvement in a technology. Appellant’s
claims do not “improve the functioning of the computer itself” or “any other
technology or technical field.” Alice, 573 U.S. at 225. Nor do they provide
a technological solution to a technological problem. See DDR Holdings, 773
F.3d at 1257; MPEP § 2106.05(a). Appellant fails to explain sufficiently
and persuasively how the instant claims are directed to an improvement in
the way computers operate, nor has Appellant identified any technical
advance or improvement or specialized computer components. See Appeal
Br. 8–9.
In summary, “the focus of the claims is not on such an improvement
in computers as tools, but on certain independently abstract ideas that use
computers as tools.” Elec. Power Grp., 830 F.3d at 1354; see also MPEP
§ 2106.05(f) (instructing Examiners to consider “[w]hether the claim
invokes computers or other machinery merely as a tool to perform an
existing process” in determining whether the claim recites mere instructions
to apply the exception) (emphasis omitted) (cited in 2019 Revised Guidance,
84 Fed. Reg. at 55 n.30). Thus, we conclude the claims are directed to an
abstract idea that is not integrated into a practical application.
Inventive Concept, Step 2B
Having concluded Appellant’s claims are directed to an abstract idea
under the 2019 Revised Guidance (Step 2A analysis), we consider whether
claim 23 has an inventive concept, that is, whether the claim has additional
elements that “‘transform the nature of the claim’ into a patent-eligible
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application.” Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S. at 78, 79). As
discussed above, this requires us to evaluate whether the additional claim
elements add “a specific limitation or combination of limitations that are not
well-understood, routine, conventional activity in the field” or “simply
append[] well-understood, routine, conventional activities previously known
to the industry, specified at a high level of generality.” 2019 Revised
Guidance, 84 Fed. Reg. at 56. If the Examiner or the Board determines
under Step 2B that the additional elements (or combination of additional
elements) amount to significantly more than the exception itself, the claim is
eligible, thereby concluding the eligibility analysis.
Here, the Examiner determined that Appellant’s claim 1 (and the other
pending claims) “do not include additional elements that are sufficient to
amount to significantly more than the judicial exception because” the
additional elements (the computing devices) “are recited at a high level of
generality, [and] provide conventional computer functions” (Final Act. 8),
and “are recited as performing generic computer functions routinely used in
computer applications” “that are well-understood, routine and conventional
activities” (Final Act. 10 (citing Spec. ¶¶ 65, 72, 73)). See Final Act. 8, 10–
13; Ans. 6.
Appellant does not address explicitly how the additional elements
(computing devices) allegedly perform functions that are not well-known,
routine, and conventional with respect to the second step of the Alice
analysis. Instead, Appellant merely contends that “[t]he claims on appeal
relate to processing content from a content to optimize the content in a
manner that yields high performance” similar to BASCOM (Appeal Br. 8)
and the recited claim limitations “are necessarily rooted in computer
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technology in order to overcome these inefficiencies” and the recited
functions “are all conducted within a networked computing environment and
address problems in such environments” similar to DDR Holdings (Appeal
Br. 9).
Appellant fails to persuade us of error in the Examiner’s rejection
with respect to the second Alice step (Step 2B). We agree with the Examiner
that Appellant’s claim 1 (as well as the other pending claims) does not
evince an “inventive concept” that is significantly more than the abstract
idea itself. In particular, Appellant fails to explain how the additional
elements (supra) add specific limitations beyond the judicial exception that
are not well-understood, routine, and conventional in the field.
As previously discussed, claim 1 merely recites additional non-
abstract elements (the computing devices) that perform the recited
functionality (the process of extracting information and generating a
headline). The record supports the Examiner’s findings (see Final Act. 10–
13 (citing Spec. ¶¶ 65, 72, 73)) that the additional elements, individually and
as an ordered combination, are generic computer components that carry out
common collection, identification, analysis, and extraction of information
(the process of generating a headline—i.e., the abstract idea), and that the
additional elements are well-understood, routine, and conventional, specified
at a high level of generality. See, e.g., Spec. ¶¶ 65–67, 72, 73 and Fig. 8; see
also 2019 Revised Guidance, 84 Fed. Reg. at 56.
Such conventional computer processes operating on conventional
computer hardware “do not alone transform an otherwise abstract idea into
patent-eligible subject matter.” FairWarning IP, LLC v. Iatric Sys., Inc.,
839 F.3d 1089, 1096 (Fed. Cir. 2016) (citing DDR Holdings, 773 F.3d at
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1256). Further, generically claimed elements (computing devices) have
been found to be no more than well-understood, routine, and conventional in
the context of gathering, assembling, and analyzing information. See, e.g.,
Berkheimer v. HP Inc., 881 F.3d 1360, 1370 (Fed. Cir. 2018) (“These
conventional limitations of claim 1, combined with limitations of analyzing
and comparing data and reconciling differences between the data . . . amount
to no more than performing the abstract idea of parsing and comparing data
with conventional computer components.”).
We also find unavailing Appellant’s contention that the purported
technical improvements and benefits of the headline generation method (that
is performed by the computing devices) as a whole (the abstract process in
conjunction with the additional elements) provide significantly more than
the abstract idea, we are not persuaded. See Appeal Br. 8 (the “claims
recite” “a combination of elements that solves a technical problem”). The
recited method, at best, solves an efficiency problem (see Spec. ¶¶ 4–5), not
a technical problem. The purported benefits, improvements, and the solution
to the efficiency problem flow from the abstract idea and not the additional
elements. That is, other than using generic technology, the purported
benefits and improvements are elaborations on the basic abstract idea itself.
“It is clear from Mayo that the ‘inventive concept’ cannot be the abstract
idea itself . . . .” Aatrix Software, Inc. v. Green Shades Software, Inc., 890
F.3d 1354, 1359 (Fed. Cir. 2018) (Moore, J., concurring) (citation omitted).
Appellant has not persuasively shown the additional elements amount
to significantly more than the abstract idea when considered either
individually or as a combination. Thus, we are not persuaded of Examiner
error in the rejection of claim 1 under 35 U.S.C. § 101.
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With respect to Appellant’s contentions in the Reply Brief, arguments
raised in a Reply Brief that were not raised in the Appeal Brief or are not
responsive to arguments raised in the Examiner’s Answer will not be
considered except for good cause (see 37 C.F.R. §§ 41.37(c)(1)(iv),
41.41(b)(2)), which Appellant has not shown. In particular, Appellant for
the first time in the Reply Brief makes arguments concerning the dependent
claims. See Reply Br. 4–6. These arguments are waived. Also, Appellant
cites to a number of non-precedential PTAB decisions and contends that
these decisions support that the limitations of claim 1 are not abstract mental
processes. See Reply Br. 1–4. These cases are not binding precedent, and
for the reasons discussed, supra, we do not find the reasoning therein
persuasive as to the eligibility of the claims at issue here. Further, although
the Examiner clarified in the Answer that the claims were directed to
abstract mental processes (see Ans. 4–5), the Final Action also addressed
this issue (see Final Act. 8–9 discussing Electric Power Group). Appellant
did not address the issue of abstract mental processes in the Appeal Brief,
but instead focused on the purported inventive concept of the claims (see
Appeal Br. 8–9). Accordingly, these arguments are also waived. Even so,
we discuss in detail (supra) our conclusion that claim 1 recites mental
processes and we do not separately address the non-precedential decisions
cited by Appellant.
For at least the reasons above, we sustain the Examiner’s rejection
under 35 U.S.C. § 101 of independent claim 1, independent claims 12 and
23, which recite commensurate limitations, as well as dependent claims 2–
11, 13–22, and 24–33 that depend from claims 1, 12, and 23, respectively,
and which were not argued separately with specificity.
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CONCLUSION
For the reasons discussed above, we determine that claims 1–33 are
directed to an abstract idea, are not integrated into a practical application,
and do not include an inventive concept.
Appellant has not shown that the Examiner erred in rejecting claims
1–33 under 35 U.S.C. § 101. We therefore affirm the Examiner’s rejections
of claims 1–33.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/
Basis 
Affirmed Reversed
1–33 101 Patent-Eligible
Subject Matter
1–33

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. § 41.50(f).
AFFIRMED