Temnos, Inc.Download PDFPatent Trials and Appeals BoardNov 3, 202014284370 - (D) (P.T.A.B. Nov. 3, 2020) Copy Citation 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. Appeal 2019-004327 Application 14/284,370 2 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; Appeal 2019-004327 Application 14/284,370 3 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. Appeal 2019-004327 Application 14/284,370 4 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). Appeal 2019-004327 Application 14/284,370 5 (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. Appeal 2019-004327 Application 14/284,370 6 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 Appeal 2019-004327 Application 14/284,370 7 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. Appeal 2019-004327 Application 14/284,370 8 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 Appeal 2019-004327 Application 14/284,370 9 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 Appeal 2019-004327 Application 14/284,370 10 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”). Appeal 2019-004327 Application 14/284,370 11 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 Appeal 2019-004327 Application 14/284,370 12 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, Appeal 2019-004327 Application 14/284,370 13 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 Appeal 2019-004327 Application 14/284,370 14 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 Appeal 2019-004327 Application 14/284,370 15 “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 Appeal 2019-004327 Application 14/284,370 16 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 Appeal 2019-004327 Application 14/284,370 17 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 Appeal 2019-004327 Application 14/284,370 18 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. Appeal 2019-004327 Application 14/284,370 19 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. Appeal 2019-004327 Application 14/284,370 20 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 Copy with citationCopy as parenthetical citation