TraceLink, Inc.Download PDFPatent Trials and Appeals BoardNov 23, 20202020004761 (P.T.A.B. Nov. 23, 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. 15/283,532 10/03/2016 Shabbir Dahod 1276-004CON 5309 29973 7590 11/23/2020 Shutts & Bowen LLP ATTN: STEVEN M. GREENBERG, ESQ. 525 Okeechobee Blvd Suite 1100 West Palm Beach, FL 33401 EXAMINER ROTARU, OCTAVIAN ART UNIT PAPER NUMBER 3624 NOTIFICATION DATE DELIVERY MODE 11/23/2020 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): docketing@crgolaw.com patents@shutts.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte SHABBIR DAHOD, PETER J. SPELLMAN and LUCIA DEUS _____________ Appeal 2020-004761 Application 15/283,532 Technology Center 3600 ____________ Before ROBERT E. NAPPI, ST. JOHN COURTENAY III, and MATTHEW J. McNEILL, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from a rejection of claims 27, 30–32, 34, 37–39. Claims 1–26, 28, 29, 33, 35, 36, and 40 are canceled. We have jurisdiction over the pending claims 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) (2019). According to Appellant, the “subject patent application (the ‘Application’) has been assigned to Tracelink, Inc.” See Appeal Br. 2. Appeal 2020-004761 Application 15/283,532 2 STATEMENT OF THE CASE2 Introduction Appellant’s claimed invention “relates generally to the execution of business processes and, more particularly, to a method and system for collaborative execution of business processes shared by entities and their outsourced business partners.” Spec. ¶ 1. Representative Independent Claim 27 A collaborative workspace team metrics aggregation and display method, comprising: registering in a directory different sets of partner organizations to different workspaces of different collections of applications; authenticating an end user into a user interface displayed in display of a computer; commanding a rendering in the user interface of a drop down listing only those of the different workspaces in the directory to which the end user is a registered member; responsive to a selection of one of the workspaces in the drop down listing: (a) identifying in a data store communicatively coupled to the computer, all partner organizations registered to the selected one of the workspaces; 2 We herein refer to the Non-Final Office Action, mailed May 14, 2019 (“Non-Final Act.”); the Appeal Brief, filed January 17, 2020 (“Appeal Br.”); the Examiner’s Answer, mailed April 6, 2020 (“Ans.”); and the Reply Brief, filed June 8, 2020. Appeal 2020-004761 Application 15/283,532 3 (b) retrieving from the data store, performance metrics for each of the identified partner organizations; (c) determining industry performance metrics for each of the identified partner organizations based on a particular industry, particular company size and particular geographic location wherein the industry performance metrics are determined from the partner organizations stored in the directory; (d) aggregating the retrieved performance metrics into a single view of each of the performance metrics of each of the identified partner organizations wherein the single view of the performance metrics comprises a graphic indication of a trend of each of the performance metrics, an associated industry performance metric for each of the performance metrics, an indication whether each of the performance metrics are within a threshold value of the associated industry performance metric and a content block comprising an on-time delivery rate, order fulfillment accuracy and order fulfillment cycle time; and, (e) commanding a display of the view of performance metrics in the user interface; and, responsive to the selection of one of the partner organizations corresponding to the authenticated end user from the selected workspaces in the drop down menu: (a) retrieving from the data store performance metrics for the selected partner organization corresponding to the authenticated end user and the determined industry performance metrics corresponding to the selected partner organization and the authenticated end user; (b) aggregating the retrieved performance metrics of the single partner organization into a single partner organization view of each of the performance metrics of the selected partner organization wherein the single partner organization view of the Appeal 2020-004761 Application 15/283,532 4 performance metrics comprises a graphic indication of a trend of each of the performance metrics corresponding to the authenticated end user, an associated industry performance metric for each of the performance metrics corresponding to the authenticated end user, an indication whether each of the performance metrics corresponding to the authenticated end user are within a threshold value of the associated industry performance metric and a content block comprising the on-time delivery rate, the order fulfillment accuracy and the order fulfillment cycle time of the selected partner organization corresponding to the authenticated end user; and, (c) commanding a display of the single partner organization view in the user interface including only performance metrics of the partner organization corresponding to the authenticated end user. Claim 27, Claims Appendix 17–19. Rejections 3 Rejection Claims Rejected 35 U.S.C. § References/Basis A 27, 30–32, 34, 37–39 112, second paragraph Indefiniteness B 27, 30–32, 34, 37–39 101 Eligibility 3 In the Answer (3), the Examiner withdrew the written description rejection under pre-AIA 35 U.S.C. § 112, first paragraph. See Non-Final Act. 9. Therefore, this rejection is not before us on appeal. Appeal 2020-004761 Application 15/283,532 5 Claim Grouping Based on Appellant’s arguments, and our discretion under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of Rejection B of claims 27, 30–32, 34, and 37–39 under 35 U.S.C. § 101 on the basis of representative claim 27. We address Rejection A of claims 27, 30–32, 34, and 37–39 under 35 U.S.C. § 112, second paragraph, separately, infra. To the extent Appellant has not advanced separate, substantive arguments for particular claims, or other issues, such arguments are forfeited. See 37 C.F.R. § 41.37(c)(1)(iv). Analysis In reaching this Decision, we consider all evidence presented and all arguments actually made by Appellant. Throughout this opinion, we give the claim limitations the broadest reasonable interpretation (BRI) consistent with the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Rejection A of Claims 27, 30–32, 34, and 37–39 under Pre-AIA 35 U.S.C. § 112, second paragraph (indefiniteness) The Examiner withdrew the first portion of Rejection A under 35 U.S.C. § 112, second paragraph, that pertained to the dual recitation of “a threshold value” and “a content block” within independent claims 27 and 34. See Ans. 3. Therefore, this first portion of Rejection A is not before us on appeal. See Non-Final Act. 11. However, the Examiner does not withdraw the second portion of Rejection A as it pertains to the Examiner’s conclusion that there is “insufficient antecedent basis for ‘the selection of one of the partner Appeal 2020-004761 Application 15/283,532 6 organizations corresponding to the authenticated end user from the selected workspaces.’” Ans. 3 (quoting claim 27) (emphasis omitted). Therefore, the issue of whether the claimed “the selection of one of the partner organizations” has proper antecedent basis remains before us on appeal. Claim 27 (emphasis added). We note the antecedent term “a selection” is introduced into claim 27 as follows: “responsive to a selection of one of the workspaces in the drop down listing: [then perform recited steps (a), (b), and (c)].” (emphasis added) Regarding the subsequent claim 27 language, “the selection of one of the partner organizations corresponding to the authenticated end user from the selected workspaces,” Appellant notes: the term “a drop down listing” appears initially in the claim and then thereafter once. The term “drop down menu” appears thereafter. In so far as a menu is a listing, Appellants believe that one of skill in the art would appreciate that “the drop down menu” and the “the drop down listing” are synonymous-- particularly in light of the teachings of Figure 3 which clearly show a “drop down menu” from which a workspace is selected: Reply Br. 2. However, we conclude that the claim 27 language “responsive to the selection of one of the partner organizations” does not have antecedent basis in the preceding claim 27 recitation of “responsive to a selection of one of Appeal 2020-004761 Application 15/283,532 7 the workspaces” because the selection of a partner organization is not the same as a selection of a workspace. (emphasis added). We note that Appellant could have cured the problem by amending claim 27 during prosecution to recite, e.g., “responsive to the identification of one of the partner organizations corresponding to the authenticated end user from the selected workspaces in the drop down menu.” However, Appellant did not do so. Accordingly, we sustain the Examiner’s Rejection A of claims 27, 30–32, 34, and 37–39, under pre-AIA 35 U.S.C. § 112, second paragraph. Rejection B of Claims 27, 30–32, 34, and 37–39 under 35 U.S.C. § 101 USPTO § 101 Guidance In January 2019, the U.S. Patent and Trademark Office (USPTO) published revised guidance on the application of § 101.4 We note the USPTO current eligibility guidance is found in the Ninth Edition, Revision 10.2019 (revised June 2020) of the Manual of Patent Examination Procedure (MPEP), and particularly within Sections 2103 through 2106.07(c). “Because the MPEP now incorporates the 2019 Revised Patent Subject Matter Eligibility Guidance (2019 PEG), October 2019 Patent 4 See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019 PEG”). In response to received public comments, the Office issued further guidance on October 17, 2019, clarifying the 2019 Revised Guidance. USPTO, October 2019 Update: Subject Matter Eligibility (the “October 2019 Update”). “All USPTO personnel are, as a matter of internal agency management, expected to follow the guidance.” 84 Fed. Reg. at 51; see also October 2019 Update at 1. Appeal 2020-004761 Application 15/283,532 8 Eligibility Guidance Update (October 2019 Update), and the Berkheimer Memo,5 all references to those materials should now be directed to the MPEP.” See https://www.uspto.gov/patent/laws-and- regulations/examination-policy/subject-matter-eligibility (emphasis added). We note that all references to the MPEP throughout this Decision are to the Ninth Edition, Revision 10.2019 (Last Revised June 2020), unless otherwise indicated. Under MPEP § 2106, we first look to whether the claim recites: (1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, or mental processes) (“Step 2A, Prong One”); and (2) additional elements that integrate the judicial exception into a practical application (“Step 2A, Prong Two”).6 5 Referring to Berkheimer v. HP, Inc., 881 F.3d. 1360, 1369 (Fed. Cir. 2018). 6 “Examiners evaluate integration into a practical application by (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception, and (b) evaluating those additional elements individually and in combination to determine whether the claim as a whole integrates the exception into a practical application.” MPEP § 2106.04(d)II. Appeal 2020-004761 Application 15/283,532 9 MPEP § 2106, Step 2A, Prong One The Judicial Exception Under MPEP 2106.04(a), the enumerated groupings of abstract ideas are defined as follows: (1) Mathematical concepts – mathematical relationships, mathematical formulas or equations, mathematical calculations (see MPEP §2106.04(a)(2), subsection I); (2) Certain methods of organizing human activity– fundamental economic principles or practices(including hedging, insurance, mitigating risk);commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions) (see MPEP §2106.04(a)(2), subsection II); and (3) Mental processes – concepts performed in the human mind (including an observation, evaluation, judgment, opinion) (see MPEP § 2106.04(a)(2), subsection III). Here, the Examiner concludes that at least the registering, selection, identifying, and determining steps of method claim 27 could be performed alternatively as methods of organizing human activity and as mental processes. See Non-Final Act. 12–17. Appellant advances no arguments regarding Step 2A, Prong One in the Briefs. Therefore, the doctrine of forfeiture applies.7 See 37 C.F.R. § 41.37(c)(1)(iv). 7 See In re Google Technology Holdings LLC, 2020 WL 6685948, slip op. at * 3 (Fed. Cir. 2020): Appeal 2020-004761 Application 15/283,532 10 Considering claim 27 as a whole, we conclude the preamble language pertaining to “collaborative workspace team metrics” recites certain methods of organizing human activity, including fundamental economic principles or practices such as commercial interactions and business relations. See MPEP §2106.04(a)(2), subsection II. We further conclude such steps could be performed alternatively as mental processes. See Id., subsection III. Therefore, we agree with the Examiner’s legal conclusion that at least the registering, selection, identifying, and determining steps of method claim 27 pertain to methods of organizing human activity that could be performed alternatively as mental processes. See Non-Final Act. 12–17 But combining several abstract ideas does not render the combination any less abstract. RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017) (“Adding one abstract idea (math) to another abstract idea . . . does not render the claim non-abstract.”); see also FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94 (Fed. Cir. 2016) (determining the pending claims were directed to a combination of abstract ideas). We emphasize that remaining independent claim 34 recites similar language of commensurate scope. Thus, we conclude representative It is well established that “[w]aiver is different from forfeiture.” United States v. Olano, 507 U.S. 725, 733 (1993).[] “Whereas forfeiture is the failure to make the timely assertion of a right, waiver is the ‘intentional relinquishment or abandonment of a known right.’” Id. (quoting Johnson v. Zerbst, 304 U.S. 458, 464 (1938)) (additional citations omitted). The two scenarios can have different consequences for challenges raised on appeal, id. at 733–34, and for that reason, it is worth attending to which label is the right one in a particular case. Appeal 2020-004761 Application 15/283,532 11 independent claim 27 and independent claim 34 each recite one or more abstract ideas, as identified above. MPEP § 2106.04(a) guides that “[i]f the identified limitation(s) falls within at least one of the groupings of abstract ideas, it is reasonable to conclude that the claim recites an abstract idea in Step 2A Prong One.” In such case, “[t]he claim then requires further analysis in Step 2A Prong Two, to determine whether any additional elements in the claim integrate the abstract idea into a practical application, see MPEP§ 2106.04(d).” MPEP 2106.04(a). Although independent claims 27 and 34 require the recited steps (or functions for system claim 34) to be implemented by a computer (or processor), this generic computer implementation of a mental process is insufficient to take the invention out of the realm of abstract ideas. “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.” CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011). 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. See id. at 1372–73; see also Versata Dev. Grp. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) (“Courts have examined claims that required the use of a computer and still found that the underlying, patent-ineligible invention could be performed via pen and paper or in a person’s mind.”); Alice Corp. Pty. Ltd. v. CLS Bank Intern., 573 U.S. 208, 223 (2014) (Stating an abstract idea while adding the words “apply it” (with a computer) is insufficient to confer patent eligibility.). Appeal 2020-004761 Application 15/283,532 12 Moreover, “[u]sing a computer to accelerate an ineligible mental process does not make that process patent-eligible.” Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1279 (Fed. Cir. 2012); see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (“[R]elying on a computer to perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible.”). Because claim 27 considered as a whole recites an abstract idea, as does remaining independent claim 34, we conclude that claims 27, 30–32, 34, and 37–39 recite an abstract idea, as identified above, under Step 2A, Prong One. Therefore, we proceed to Step 2A, Prong Two, in which we apply the guidance set forth in MPEP § 2106.04(d). Step 2A, Prong Two under MPEP § 2106.04(d), Integration of the Judicial Exception into a Practical Application For example, limitations that are indicative of integration into a practical application under MPEP § 2106.04(d) include: 1. Improvements to the functioning of a computer, or to any other technology or technical field — see MPEP § 2106.05(a); 2. Applying the judicial exception with, or by use of, a particular machine — see MPEP § 2106.05(b); 3. Effecting a transformation or reduction of a particular article to a different state or thing — see MPEP § 2106.05(c); and 4. Applying or using the judicial exception in some other 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). Appeal 2020-004761 Application 15/283,532 13 In contrast, limitations that are not indicative of integration into a practical application include: 1. Adding the words “apply it” (or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea — see MPEP § 2106.05(f); 2. Adding insignificant extra-solution activity to the judicial exception — see MPEP § 2106.05(g); and 3. Generally linking the use of the judicial exception to a particular technological environment or field of use — see MPEP § 2106.05(h). See MPEP § 2106.04(d)(I)(Describing Step 2A, Prong Two). Additional Limitations Applying the USPTO guidance under MPEP § 2106.04(d), we consider whether there are additional elements set forth in the claims that integrate the judicial exception into a practical application. As noted above, independent claim 27 requires the recited steps to be implemented by a computer. We further note the supporting exemplary, non-limiting descriptions of generic computer components found in the Specification, for example, at paragraph 37: The server computer system 102 providing the collaboration workspace services described above may comprise one or more physical machines, or virtual machines running on one or more physical machines. In addition, the computer server system may comprise a cluster of computers or numerous distributed computers that are connected by a network or the Internet. We emphasize that McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016), guides: “The abstract idea exception prevents patenting a result where ‘it matters not by what process or Appeal 2020-004761 Application 15/283,532 14 machinery the result is accomplished.’” 837 F.3d at 1312 (quoting O’Reilly v. Morse, 56 U.S. 62, 113 (1854)) (emphasis added). Thus, we conclude Appellant’s claimed invention merely implements the abstract idea using instructions executed on generic computer components. Therefore, we conclude Appellant’s claims merely use a generic programmed computer as a tool to perform an abstract idea. See MPEP § 2106.05(f). Extra- or Post-Solution Activities under MPEP § 2106.05(g) We note “the prohibition against patenting abstract ideas ‘cannot be circumvented by attempting to limit the use of the formula to a particular technological environment’ or [by] adding ‘insignificant post-solution activity.’” Bilski v. Kappos, 561 U.S. 593, 610–12 (2010) (quoting Diamond v. Diehr, 450 U.S. 175, 191–92 (1981)). See also MPEP § 2106.05(h). Here, we conclude that independent claim 27 recites one or more additional limitations that are extra-solution activities the courts have determined to be insufficient to transform judicially excepted subject matter into a patent-eligible application. See MPEP § 2106.05(g). For example, we conclude that the claim 27 step of “retrieving from the data store” recites an insignificant extra-solution activity: data gathering. See buySAFE v. Google, Inc, 765 F.3d 1350, 1355 (Fed. Circ. 2014) (“That a computer receives and sends the information over a network—with no further specification—is not even arguably inventive.”). Appeal 2020-004761 Application 15/283,532 15 MPEP § 2106.05(a) — Improvement to the functionality of a computer or other technology or technical field. We consider next the question of whether there are any claimed improvements to the functioning of a computer or to any other technology or technical field, applying the January 2019 Memorandum and the guidance set forth under MPEP § 2106.05(a). Appellant contends that “claims 27 and 34 each recite an additional set of elements present that reflects an improvement in the technical field of collaborative workspace team metrics aggregation and display.” Appeal Br. 12 (emphasis added). In support, Appellant recites portions of the claim language, and reproduces Figure 3 of the Specification in the Appeal Brief. Appeal Br. 12–13. Referring to Figure 3 of the Specification, Appellant contends: As can be seen, the aggregation of team performance metrics claimed in each of claims 27 and 34 provide a consolidated view not only of the performance of the entire team of the partner organizations, but also show a trend that is helpful in determining whether or not the aggregate performance of the entire team is improving, degrading or remaining the same. Heretofore, it was not possible to visualize this sort of team performance data as evidenced by Examiner's statement in the Non-Final Office Action at page 26 in which Examiner stated, “Examining Claims with respect to prior art - All grounds of prior art rejection(s) has been or have been overcome.” Appeal Br. 13–14 (emphasis added). However, an analysis based upon obviousness is not relevant to our analysis for patent eligibility under 35 U.S.C. § 101. See Return Mail, Inc. v. U.S. Postal Service, 868 F.3d 1350, 1370 (Fed. Cir. 2017). Although the second step in the Alice/Mayo test is a search for an “inventive concept,” the Appeal 2020-004761 Application 15/283,532 16 analysis is not directed to novelty or nonobviousness, but rather searches for elements sufficient to ensure that the claimed invention is directed to more than a patent ineligible concept, such as an abstract idea. See Alice, 573 U.S. at 217–18. “Groundbreaking, innovative, or even brilliant discovery does not by itself satisfy the § 101 inquiry.” Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013); see also Diamond v. Diehr, 450 U.S. 175, 188–89 (1981) (“The ‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.”); Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1263 n.3 (Fed. Cir. 2016) (noting that an eligibility finding does not turn on the novelty of using a user-downloadable application for the particular purpose recited in the claims). To the extent that Appellant’s “collaborative workspace team metrics aggregation and display method” (claim 27) might arguendo be an improvement over prior art methods, we note an improved abstract idea is still an abstract idea. See Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 90 (2012) (holding that a novel and nonobvious claim directed to a purely abstract idea is, nonetheless patent- ineligible). See also Synopsys, Inc. v. Mentor Graphics Corporation, 839 F.3d 1138, 1151 (Fed. Cir. 2016) (“[A] claim for a new abstract idea is still an abstract idea.”) (emphasis omitted); As discussed above, we conclude Appellant’s generic computer implementation performs a method of organizing human activity that can be performed alternatively as a mental process. See independent Claims 27 and 34. Moreover, the “‘mere automation of manual processes using generic Appeal 2020-004761 Application 15/283,532 17 computers’ . . . ‘does not constitute a patentable improvement in computer technology,’” Trading Techs. Int’l v. IBG LLC, 921 F.3d 1378, 1384 (Fed. Cir. 2019) (quoting Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017). As set forth in MPEP § 2106.05(a) (emphasis added): To show that the involvement of a computer assists in improving the technology, the claims must recite the details regarding how a computer aids the method, the extent to which the computer aids the method, or the significance of a computer to the performance of the method. Merely adding generic computer components to perform the method is not sufficient. Thus, the claim must include more than mere instructions to perform the method on a generic component or machinery to qualify as an improvement to an existing technology. Here, we find Appellant does not advance any specific, substantive arguments explaining how the claimed generic computer components aid the method, the extent to which the computer aids the method, or the significance of a computer to the performance of the method to improve the recited computer components. See MPEP § 2106.05(a). Merely reciting the claim language and asserting that it provides an improvement to the technology is insufficient. See e.g., Appeal Br. 12–13. Accordingly, on this record, we conclude that independent method claim 27, and independent system claim 34, which recites similar language of commensurate scope, do not recite an improvement to the functionality of a computer or other technology or technical field. See MPEP § 2106.05(a). Appeal 2020-004761 Application 15/283,532 18 MPEP § 2106.05(b), 2106.05(c) Appellant advances no arguments that any of the method claims on appeal are tied to a particular machine (MPEP § 2106.05(b)), or transform an article to a different state or thing (MPEP §2106.05(c)). Therefore, the doctrine of forfeiture is applicable. See supra, n.7. See also 37 C.F.R. § 41.37(c)(1)(iv). MPEP § 2106.05(e) Meaningful Claim Limitations Appellant does not advance any substantive, persuasive arguments explaining how the judicial exceptions are applied or used in some meaningful way, as clarified under MPEP § 2106.05(e). 8 Therefore, the doctrine of forfeiture applies. See supra, n.7. See also 37 C.F.R. § 41.37(c)(1)(iv). Simply adding generic hardware and computer components to perform abstract ideas does not integrate those ideas into a practical application, because the “mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention.” Alice, 573 U.S. at 223. 8 See MPEP § 2106.05(e) (stating that one exemplary consideration indicative that an additional element may have integrated the exception into a practical application is that the additional element “applies or uses the judicial exception in some other 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”) (emphasis added). Appeal 2020-004761 Application 15/283,532 19 Accordingly, under Step 2A, Prong Two (MPEP § 2106.05(a)–(c) and (e)–(h)), we conclude claims 27, 30–32, 34, and 37–39 do not integrate the judicial exception into a practical application. The Inventive Concept – Step 2B As set forth under MPEP § 2106.05(d)), only if a claim (1) recites a judicial exception, and (2) does not integrate that exception into a practical application,9 do we then look, under Step 2B, to whether the claim: (3) adds a specific limitation beyond the judicial exception that is not “well- understood, routine, conventional activity” in the field; 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.10 Under Step 2B, the Examiner finds the additional elements of a server, directory, and user interface (e.g., with a drop down list) were well, understood, routine and conventional at the time of the invention. See Non- Final Act. 21. The Examiner provides specific citations to evidence in support, including to Wikipedia and portions of Appellant’s Specification. Id. 9 This corresponds to Alice part one where it is determined whether the claim is “directed to” an abstract idea. See Alice, 573 U.S. at 219. If a claim is “not directed to an abstract idea under part one of the Alice framework, we do not need to proceed to step two.” (Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016).). 10 This corresponds to Alice part two where it is determined whether the claim “contains an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-eligible application.” Alice, 573 U.S. at 221. Appeal 2020-004761 Application 15/283,532 20 Appellant does not traverse the Examiner’s specific findings under Step 2B. Instead, under the “Step 2B” section of the Appeal Brief, Appellant urges that “there can be no question that the ‘dual response’ as referenced by the Examiner at page 26 of the Non-Final Office is not well-understood, []routine and unconventional,” because the Examiner withdrew the prior art rejection. Appeal Br. 15. We disagree with Appellant, because as discussed above, an analysis based upon obviousness is not relevant to our analysis for patent eligibility under 35 U.S.C. § 101. See e.g., Return Mail, Inc., 868 F.3d at 1370. To the extent that Appellant urges in the Reply Brief (6), that the “direct manipulations that enable Appellants’ claimed invention to achieve the improvement in the technical field of ‘of collaborative workspace team metrics aggregation and display’ also provide an inventive concept under Step 2B, we again emphasize that an improved abstract idea is still an abstract idea. See Mayo, 566 U.S. at 90 (holding that a novel and nonobvious claim directed to a purely abstract idea is, nonetheless patent- ineligible). See also Synopsys, 839 F.3d at 1151 (“[A] claim for a new abstract idea is still an abstract idea.”) (emphasis omitted). Moreover, because Appellant does not advance substantive, persuasive arguments regarding any claimed nonconventional and non- generic arrangement of known computer components, we find no inventive concept in any purported ordered combination of these limitations. Thus, we find Appellant’s claims are unlike the claims considered by the court in BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016)), in which the court found “an inventive concept Appeal 2020-004761 Application 15/283,532 21 . . . in the non-conventional and non-generic arrangement of known, conventional pieces.” 827 F.3d at 1350 (emphases added). In light of the foregoing, we conclude that each of Appellant’s claims 27, 30–32, 34, and 37–39, considered as a whole, is directed to a patent- ineligible abstract idea that is not integrated into a practical application, and does not include an inventive concept. Therefore, on this record, we sustain the Examiner’s Rejection B under 35 U.S.C. § 101 of claims 27, 30–32, 34, and 37–39. CONCLUSIONS Regarding Rejection A of claims 27, 30–32, 34, and 37–39 under pre-AIA 35 U.S.C. § 112, second paragraph, the Appellant has not shown the Examiner erred. By applying the Director’s 2019 PEG and October 2019 Update, as now incorporated under MPEP Sections 2103 through 2106.07(c), we conclude that claims 27, 30–32, 34, and 37–39, as rejected by the Examiner under Rejection B (35 U.S.C. § 101), are not directed to patent-eligible subject matter. Appeal 2020-004761 Application 15/283,532 22 DECISION SUMMARY Claims Rejected 35 U.S.C § Reference(s)/Basis Affirmed Reversed 27, 30–32, 34, 37–39 112, 2nd paragraph Indefiniteness 27, 30–32, 34, 37–39 27, 30–32, 34, 37–39 101 Eligibility 27, 30–32, 34, 37–39 Overall Outcome 27, 30–32, 34, 37–39 FINALITY AND RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37 C.F.R. § 41.50(f). AFFIRMED Copy with citationCopy as parenthetical citation