Venkatav.Gadepalli et al.

Patent Trials and Appeals Board

Oct 4, 2019

15257109 - (D) (P.T.A.B. Oct. 4, 2019)

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.
15/257,109 09/06/2016 Venkata V. Gadepalli END920160238US1 5204
145260 7590 10/04/2019
IBM CORPORATION - ENDICOTT (JVL)
C/O LESLIE A. VAN LEEUWEN
6123 PEBBLE GARDEN CT.
AUSTIN, TX 78739
EXAMINER
SAINT CYR, LEONARD
ART UNIT PAPER NUMBER
2658
NOTIFICATION DATE DELIVERY MODE
10/04/2019 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):
leslie@vl-patents.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte VENKATA V. GADEPALLI, TRUDY L. HEWITT,
ASHOK K. IYENGAR, and JAMES M. MORENO
____________

Appeal 2018-008589
Application 15/257,109
Technology Center 2600
____________

Before ROBERT E. NAPPI, JOHNNY A. KUMAR, and
MATTHEW J. McNEILL, Administrative Patent Judges.

KUMAR, Administrative Patent Judge.

DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1–3, 5–10, 12–17, and 19–20.2 We have
jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.

STATEMENT OF THE CASE
Appellants’ invention relates to identifying an idiom, such as a group
of words having a particular meaning that may not discernable from
individual words that constitute the group of words, in content destined for a
recipient. Spec. ¶¶ 2–3. The invention uses recipient-related data to

1 Appellants identify the real party in interest as International Business
Machines Corporation. App. Br. 2.
2 Claims 4, 11, and 18 were previously canceled.
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determine if the recipient is likely to understand the idiom. Spec. ¶¶ 2, 6–7.
If the recipient is unlikely to understand the idiom, the content can be
modified prior to being delivered to the recipient. Id.

Exemplary Claim
1. A method implemented by an information handling
system that includes a processor and a memory accessible by the
processor, the method comprising:
identifying an idiom in content destined to a recipient;
searching one or more network accessible data stores of
recipient-related knowledge, wherein at least one of the data
stores is inaccessible by a sender of the content;
identifying, as a result of the searching, zero or more
encounters by the recipient of the idiom;
based on the identifying, determining a confidence level
of the recipient's understanding of the identified idiom;
modifying the content based on the determined confidence
level; and
transmitting the modified content to the recipient.
Claims Appendix 2.3

REJECTIONS
Claims 1–3, 5–10, 12–17, and 19–20 are rejected under 35 U.S.C. §
101, as being directed to a judicial exception, without significantly more.
Final Act. 4; Ans. 7–8.4

3 In the Supplemental Appeal Brief, the Claims Appendix was provided
separate page numbering from the remainder of the Supplemental Appeal
Brief. Citations to the Claims Appendix are hereinafter referenced as
(“Claims Appendix”).
4 Throughout this Opinion, we refer to (1) the Final Office Action delivered
October 3, 2017 (“Final Act.); (2) the Supplemental Appeal Brief filed April
4, 2018 (“App. Br.”); (3) the Examiner’s Answer delivered June 28, 2018
(“Ans.”); and (4) the Reply Brief filed August 28, 2018 (“Reply Br.”).
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Claims 1–3, 5–10, 12–17, and 19–20 are rejected under 35 U.S.C. §
103(a) as being unpatentable over U.S. Patent Publication No.
2005/0080643 A1 to McLennan et al. (hereinafter “McLennan”) in view of
U.S. Patent Publication No. 2016/0224540 A1 to Stewart et al. (hereinafter
“Stewart”). Final Act. 6–9; Ans. 8–9.

THE INELIGIBILITY REJECTION
The Examiner determines the “claimed steps of
algorithm/mathematical relation of identifying idiom of a transmitted
message and modifying the content of the message based on a confidence
level of the recipient’s understanding the identified idiom, and hence the
claims are considered to be an abstract idea.” Ans. 7–8. The Examiner
further determines that the additional elements including (1) a processor; (2)
a memory; and (3) data stores do not add significantly more than the abstract
idea, but merely recite generic computing components. Ans. 8.
Appellants argue the claims are not directed to an abstract idea, but
rather, the claimed invention recites an improvement of computer
technology, namely electronic communications. App. Br. 7. Appellants
add, the claimed invention is “inextricably tied to computer technology”
because it is directed to “performing identification and modification of
idioms found in electronic communication between a sender and receiver”.
App. Br. 7–8. The Appellants additionally argue the claimed invention does
not monopolize or pre–empt the relevant technological field, and thus, the
eligibility of claimed invention is self–evident. App. Br. 8–9.

ISSUE
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Under § 101, has the Examiner erred in rejecting the claimed
invention as directed to ineligible subject matter? This issue turns on
whether the claims are directed to an abstract idea and, if so, whether
additional elements recited—considered individually and as an ordered
combination—transform the nature of the claims into a patent-eligible
application of that abstract idea.

PRINCIPLES OF LAW
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. See, e.g., Alice, 573 U.S. at 216 (citation omitted).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See Alice, 573
U.S. at 219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
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mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
(15 How.) 252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S.
at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 176; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). That
said, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, . . . and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
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eligible application.” Alice, 573 U.S. at 221 (citation omitted). “A claim
that recites an abstract idea must include ‘additional features’ to ensure ‘that
the [claim] is more than a drafting effort designed to monopolize the
[abstract idea].’” Id. (alterations in original) (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
In January 2019, the USPTO published revised guidance on the
application of § 101. See 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Revised Guidance”). Under that
guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MANUAL OF PATENT EXAMINING PROCEDURE
(MPEP) §§ 2106.05(a)–(c), (e)–(h) (9th ed. Rev. 08. 2017, Jan.
2018)).
Only if a claim (1) recites a judicial exception, and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
well-understood, routine, and conventional in the field (see MPEP
§ 2106.05(d)); or
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(4) simply appends well-understood, routine, and conventional
activities previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Revised Guidance, 84 Fed. Reg. at 56.

THE INELIGIBILITY ANALYSIS
Independent claims 1, 8, and 15 recite analogous limitations.
Appellants present a unitary argument directed towards independent claims
1, 8, and 15 together. App. Br. 7, 9. Accordingly, we select claim 1 for
discussion as representative of the rejected claims. We refer to the rejected
independent claims collectively herein as “claim 1.” See 37 C.F.R. §
41.37(c)(1)(iv); In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
We must determine whether the claimed invention is directed to a
judicial exception, namely an abstract idea. See Alice, 573 U.S. at 217. To
this end, we determine (1) whether claimed invention recites a judicial
exception (Revised Guidance Step 2A – Prong 1) and, if so, (2) whether the
identified judicial exception is integrated into a practical application
(Revised Guidance Step 2A – Prong 2). See Revised Guidance, 84 Fed.
Reg. at 52–55.

Revised Guidance Step 2A – Prong 1
To determine whether a claim recites an abstract idea, we (1) identify
the claim’s specific limitations that recite an abstract idea, and (2) determine
whether the identified limitations fall within certain subject matter
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groupings, namely (a) mathematical concepts;5 (b) certain methods of
organizing human activity;6 or (c) mental processes.7
Here, apart from (1) a processor; (2) a memory; and (3) data stores
recited in independent claim 1 (Claims Appendix 2), the claimed invention’s
recited limitations, which collectively are directed to identifying and
modifying content from a sender to a recipient based on recipient related
data, fit squarely within at least one of the above categories of the agency’s
guidelines.
First, the claimed invention recites steps directed to certain methods
of organizing human activity, including managing interactions between
people following rules or instructions, such as managing content between a
sender and a recipient. For example, claim 1 recites (1) “identifying an
idiom in content destined to a recipient”; (2) “searching . . . recipient-
related knowledge . . . inaccessible by a sender of the content”; (3)
“identifying, as a result of the searching, zero or more encounters by the
recipient of the idiom”; (4) “based on the identifying, determining a

5 Mathematical concepts include mathematical relationships, mathematical
formulas or equations, and mathematical calculations. See Revised
Guidance, 84 Fed. Reg. at 52.
6 Certain methods of organizing human activity include 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 Revised Guidance, 84 Fed. Reg. at 52.
7 Mental processes are concepts performed in the human mind including an
observation, evaluation, judgment, or opinion. See Revised Guidance, 84
Fed. Reg. at 52.
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confidence level of the recipient's understanding of the identified idiom”; (5)
modifying the content based on the determined confidence level; and (6)
“transmitting the modified content to the recipient.” which involve certain
methods of organizing human activity including managing interactions
between people following rules or instructions.
The relevant case law establishes limitations (1)–(6) recite an abstract
idea. Cf. Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307 at
1313 (Fed. Cir. 2016) (“receiving e-mail (and other data file) identifiers,
characterizing email based on the identifiers, and communicating the
characterization – in other words, filtering files/e-mail –is an abstract idea”);
see also MPEP § 2106.04(a)(2), II (“Certain Methods of Organizing Human
Activity”, Section D, example v, citing Symantec); Dealertrack v. Huber,
674 F.3d 1315 at 1333 (Fed. Cir. 2012) (“receiving data from one source,
selectively forwarding the data, and forwarding reply data to the first
source” constituted certain methods of organizing human activities, which is
a type of abstract idea); MPEP § 2106.04(a)(2), II (“Certain Methods of
Organizing Human Activity”, Section A, citing Dealertrack). Similar to the
data gathering (1)–(3) and selective transmission of content based on user
characteristics (4)–(6) shown above, our reviewing court in Intellectual
Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363 (Fed. Cir. 2017)
found that retrieving data from a user profile and tailoring content
transmitted to the user based on the “the user’s personal characteristics”
constituted certain methods of organizing human activities, which is a type
of abstract idea. 792 F.3d 1363, 1369–1370; see also MPEP §
2106.04(a)(2), II (“Certain Methods of Organizing Human Activity”,
Section C, citing Capital One Bank (USA)).
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Specifically, limitations (1)–(3) recite gathering data such as recipient
related data through searching data stores and identifying content, in
furtherance of organizing human activity, namely, managing an interaction
between a sender and a recipient. In Symantec, our reviewing court found
claim limitations reciting
identifying characteristics of data files comprising: receiving,
on a processing system, file content identifiers for data files
from a plurality of file content identifier generator agents
(emphasis added) constitute certain methods of organizing human activities,
which is a type of abstract idea related to retrieving data using data file
identifiers. See Symantec, 838 F.3d 1307 at 1313; see also Content
Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d
1343, 1345–49 (Fed. Cir. 2014) (holding ineligible claims reciting (1)
receiving output representing diverse types of hard copy documents from an
automated digitizing unit, and (2) storing information from those documents
into memory); CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
1372 (noting that limitations reciting obtaining information about
transactions that have used an Internet address identified with a credit card
transaction can be performed by a human who simply reads records of
Internet credit card transactions from a pre-existing database).
Furthermore, limitations (4)–(6) recite using the data gathered in
limitations (1)–(3) to determine that wanted and unwanted content may be
defined according to recipient related data and sending content to the
recipient based on the determination. Our reviewing court has found that
email filtering with user–set criteria constitutes certain methods of
organizing human activities, which is a type of abstract idea. See
Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307 at 1313,
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1317–1319 (Fed. Cir. 2016); see also MPEP § 2106.04(a)(2), II (“Certain
Methods of Organizing Human Activity”, Section D, example v, citing
Symantec). Additionally, user customizable content filtering of information
retrieved from the Internet was similarly found to constitute certain methods
of organizing human activities, which is a type of abstract idea. See
BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d
1341, 1345–1346 (Fed. Cir. 2016); see also MPEP § 2106.04(a)(2), II
(“Certain Methods of Organizing Human Activity”, Section C, example i,
citing BASCOM). These cases are relevant because user–customization
means that wanted and unwanted content may be defined according to user
related data. Retrieval of information defining the wanted and unwanted
content in a multi-user environment requires use of the user related data.
See, e.g., BASCOM, supra. Although the claimed invention involves
modifying content rather than blocking or allowing access to requested
content like these cases, the use of recipient information to modify content
transmitted to a recipient, i.e., steps (4)–(6), similarly recites a certain
method of organizing human activity that is an abstract idea.
Furthermore, the Specification indicates (4) “determining a
confidence level of the recipient's understanding of the identified idiom”
under an aspect of the invention, can be carried out by a data comparison,
such as a key word search of the idiom in a recipient related database. Spec.
¶¶ 39–40. If the idiom is found, a higher “confidence level of
understanding” occurs, whereas, if the idiom is not found, a lower
“confidence level of understanding” results. Spec. ¶¶ 32, 40. Our reviewing
court in Capital One Bank (USA) reviewed analogous claim limitations and
determined tailoring of content transmitted to a recipient based on “matching
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personal characteristics in a user profile” with “information identifiers” is a
fundamental practice long prevalent in our system, i.e., a certain method of
organizing human activity that is an abstract idea. 792 F.3d 1363, 1369–
1370 (internal citations and quotations omitted); see also MPEP §
2106.04(a)(2), II (“Certain Methods of Organizing Human Activity”,
Section C, citing Capital One Bank (USA));
We add that the above-noted recited functions of (1) “identifying an
idiom in content destined to a recipient”, and (4) “determining a confidence
level of the recipient's understanding of the identified idiom” can also
typically be performed entirely mentally by merely thinking about these
identifications and determinations, or writing them down—both involving
mere observation and logical reasoning. Cf. CyberSource, 654 F.3d at 1372
(noting that a recited step that utilized a map of credit card numbers to
determine the validity of a credit card transaction could be performed
entirely mentally by merely using logical reasoning to identify a likely
instance of fraud by merely observing that numerous transactions using
different credit cards all originated from the same IP address). Additionally,
mental processes remain unpatentable even when automated to reduce the
burden on the user of what once could have been done with pen and paper.
See CyberSource, 654 F.3d at 1375 (“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.”).
Therefore, the recited idiom identification and determination of a
confidence level functions also fall squarely within the mental processes
category of the agency’s guidelines and, therefore, recites an abstract idea
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for that additional reason. See Guidance, 84 Fed. Reg. at 52 (listing
exemplary mental processes including observation and evaluation).

Accordingly, limitations (1)–(6) reciting gathering and identifying
data to filter or tailor content transmitted to a recipient based on recipient
related data falls squarely within certain methods of organizing human
activity category of the agency’s guidelines and, therefore, recite an abstract
idea. See Revised Guidance, 84 Fed. Reg. at 52 (listing exemplary methods
of organizing human activity, including managing personal behavior or
relationships following rules or instructions).

Revised Guidance Step 2A – Prong 2
Although claim 1 recites an abstract idea categorized as a certain
method of organizing human activity, we nevertheless must still determine
whether the abstract idea is integrated into a practical application, namely
whether the claim applies, relies on, or uses the abstract idea in a manner
that imposes a meaningful limit on the abstract idea, such that the claim is
more than a drafting effort designed to monopolize the abstract idea. See
Revised Guidance, 84 Fed. Reg. at 54–55. To this end, we (1) identify
whether there are any additional recited elements beyond the abstract idea,
and (2) evaluate those elements individually and collectively to determine
whether they integrate the exception into a practical application. See id.
Here, we agree with the Examiner’s determination that the additional
elements beyond the abstract idea recited in claim 1 are (1) a processor; (2)
a memory; and (3) data stores (Ans. 8), but these additional elements do not
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integrate the abstract idea into a practical application when reading the
claimed invention as a whole.
First, we find unavailing Appellants’ conclusory argument merely
asserting “the claim steps cannot be performed manually and, instead, the
claim is directed to an improvement of computer technology, namely
electronic communications” (App. Br. 7) because Appellants provide no
further substantive explanation or evidence in support. We afford such
conclusory attorney argument little weight. In re Geisler, 116 F.3d 1465,
1470 (Fed. Cir. 1997). See also Enzo Biochem, Inc. v. Gen-Probe, Inc., 424
F.3d 1276, 1284 (Fed. Cir. 2005) (“Attorney argument is no substitute for
evidence.”). Furthermore, the Specification indicates the improvement
relates to the abstract idea, as noted supra, of “customizing translations”
between a sender of content and a recipient, rather than a technological
improvement. Spec. ¶ 1. Moreover, Appellants do not assert, and the claims
do not reflect how computer technology is improved. When a claim directed
to an abstract idea contains no restriction on how an asserted improvement is
accomplished and the asserted improvement is not described in the claim,
then the claim does not become patent eligible on the basis of the asserted
improvement. See Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d
1307, 1316 (Fed. Cir. 2016).
Second, we disagree with Appellants’ argument that the claimed
invention is “inextricably tied to computer technology” because it is directed
to “performing identification and modification of idioms found in electronic
communication between a sender and receiver” (emphasis original) (App.
Br. 7–8) for at least the reason that claim 1 does not recite “electronic
communication”. Moreover, assuming arguendo, claim 1 required
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identifying and modifying “electronic communication” between a sender
and receiver, the claimed invention remains silent regarding specific
limitations directed to an improved computer system, processor, memory,
network, database, or Internet. Therefore, we find Appellants’ claimed
invention does not provide a solution “necessarily rooted in computer
technology in order to overcome a problem specifically arising in the realm
of computer networks,” such as considered by the court in DDR Holdings
LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014) (emphasis
added).
Rather, the additional elements of (1) a processor; (2) a memory; and
(3) data stores are merely generic computer components used as a tool to
implement the abstract idea recited in claim 1. Spec. ¶ 13 (“general purpose
computer”), ¶ 16 (“computing device 104 . . . comprising one or more
processors and one or more memories, and potentially any other computing
device elements generally known in the art including buses, storage devices,
communication interfaces, and the like” (italics added)).
Section 2106.05(c) of the MPEP guides: “Another consideration
when determining whether a claim recites significantly more is whether
the claim effects a transformation or reduction of a particular article to a
different state or thing.” “[T]ransformation and reduction of an article ‘to a
different state or thing’ is the clue to patentability of a process claim that
does not include particular machines.” Bilski v. Kappos, 561 U.S. 593, 658
(2010) (quoting Gottschalk v. Benson, 409 U.S. 63, 70, 175 (1972)). If such
a transformation exists, the claims are likely to be significantly more than
any recited judicial exception. Bilski emphasizes that although the
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transformation of an article is an important clue, it is not a stand-alone test
for eligibility. MPEP § 2106.05(c).
To the extent Appellants intend to assert the claims on appeal
transform data by “performing identification and modification of idioms
found in electronic communication between a sender and receiver” (App. Br.
7–8), our reviewing court guides that, if not appropriately limiting, “[t]he
mere manipulation or reorganization of electronic data, however, does not
satisfy the transformation prong.” CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) (emphasis added).
Additionally, as discussed above, limitation (6), reciting “transmitting
the modified content to the recipient” is not only reciting an abstract idea of
certain methods of organizing human activity using generic computing
components, but this transmitting function is alternatively insignificant post–
solution activity and, therefore, does not integrate the exception into a
practical application for that additional reason. See Flook, 437 U.S. at 590
(insignificant post-solution activity held insufficient to impart patentability);
Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354–55
(“merely presenting the results of abstract processes of collecting and
analyzing information, without more . . . is abstract as an ancillary part of
such collection and analysis”); see also CyberSource, 654 F.3d at 1371
(discussing Flook). Accord Revised Guidance, 84 Fed. Reg. at 55 (citing
MPEP § 2106.05(g)). Generic recitations of extra-solution activity, as in
limitation (6), weigh against a finding that the claim effects a transformation
or reduction of a particular article to a different state or thing. See MPEP §
2106.05(c). Therefore, we conclude the method of claim 1 fails to satisfy
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the transformation prong of the Bilski machine-or-transformation test. See
Id.
Nor do Appellants argue that the method claims on appeal are tied to a
particular machine. See MPEP § 2106.05(b) “Particular Machine.”
Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(iv).
Third, we find Appellants’ argument alleging that because the claimed
invention does not “tie-up” any judicial exception or “restrict others from
practicing every conceivable method of electronic communication”, the
claimed invention is “suitable for Streamline Eligibility Analysis”
unavailing. App. Br. 8–9. Our reviewing court provides applicable
guidance: “While preemption may signal patent ineligible subject matter,
the absence of complete preemption does not demonstrate patent eligibility.”
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015); Ultramercial, 722 F.3d at 1346. Furthermore, Streamlined Analysis
may be used only “when the eligibility of the claim is self-evident e.g.,
because the claim clearly improves a technology or computer functionality”.
MPEP § 2106.06. The MPEP further guides that, “if there is doubt as to
whether the applicant is effectively seeking coverage for a judicial exception
itself, the full eligibility analysis . . . should be conducted”. Id. Here, as
noted supra, the claimed invention does not recite an improvement in
computer related technology and merely uses generic computer components
to carry to implement the abstract idea.
Additionally, dependent claims 2–3, 5–7, 9–10, 12–14 16–17, and 19–
20 are not argued separately with sufficient particularity. See App. Br. 10;
see also 37 C.F.R. § 41.37(c)(1)(iv). For the above-stated reasons, we
determine the additional elements recited in the claimed invention, beyond
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the judicial exceptions, whether considered alone or in combination, do not
integrate the abstract idea into a practical application.

Revised Guidance, Step 2B
Under the Revised Guidance, if a claim: (1) recites a judicial
exception, and (2) does not integrate that exception into a practical
application, we then look to whether the claim adds a specific limitation
beyond the judicial exception that is not “well-understood, routine,
conventional” in the field (see MPEP § 2106.05(d)); or, simply appends
well-understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception.
See Revised Guidance, 84 Fed. Reg. at 56.
Because we determine claim 1 is “directed to” an abstract idea that
has not been integrated into a practical application, we consider whether
claim 1 recites an “inventive concept.” The Examiner determined that the
additional elements include a processor; (2) a memory; and (3) data stores”
as recited in claim 1. Ans. 8. The Examiner further determined claim 1,
viewed as a whole, does not recite an inventive concept because the
additional elements in the claim do not amount to “significantly more” than
an abstract idea, citing Alice. Final Act. 4; Ans. 8.
We agree. The additional elements including a processor; (2) a
memory; and (3) data stores” are recited in claim 1 at a high level of
generality, and the written description indicates that these elements are
generic computer components generally known in the art. See, e.g., Spec.
¶ 13 and ¶ 16. Using generic computer components to perform abstract
ideas does not provide the necessary inventive concept. See Alice, 573 U.S.
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at 223 (“[T]he mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.”). Thus, these
elements, taken individually or together, do not amount to “significantly
more” than the abstract ideas themselves.
Appellants contend various elements recited in the claims provide a
“unique, and non-obvious method” for “identifying idioms in electronic
content that are likely to be misunderstood by a recipient and modifying the
idiom accordingly”. App. Br. 9. However, these elements form parts of the
recited abstract ideas and thus are not “additional elements” that “‘transform
the nature of the claim’ into a patent-eligible application.” Alice, 573 U.S. at
217 (quoting Mayo, 566 U.S. at 78); see also Revised Guidance, 84 Fed.
Reg. at 55 n.24 (“USPTO guidance uses the term ‘additional elements’ to
refer to claim features, limitations, and/or steps that are recited in the claim
beyond the identified judicial exception.” (Emphasis added)). Moreover,
Appellants’ arguments are conclusory and unsupported by persuasive
evidence and technical reasoning. Additionally, Appellants’ conclusory
assertion the limitations of claim 1 are “unique” and “non-obvious” are
unavailing since “‘. . . ‘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.’” Intellectual Ventures I LLC v. Symantec Corp.,
838 F.3d 1307, 1315 (Fed. Cir. 2016) (quoting Diehr, 450 U.S. at 188–89).
See also Synopsys, 839 F.3d at 1151 (“a claim for a new abstract idea is still
an abstract idea. The search for a § 101 inventive concept is thus distinct
from demonstrating § 102 novelty”) (emphasis omitted); MPEP § 2106.05
(“Because they are separate and distinct requirements from eligibility,
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patentability of the claimed invention under 35 U.S.C. 102 and 103 with
respect to the prior art is neither required for, nor a guarantee of, patent
eligibility under 35 U.S.C. 101”).
Additionally, we disagree with Appellants arguments that the claim 1
limitation “determining a confidence level of the recipient’s understanding
of the identified idiom” constitutes an additional element outside of the
abstract idea and that the Examiner failed to set forth a prima facie case to
support the ineligibility rejection under Berkheimer v. HP Inc., 881 F.3d
1360 (Fed. Cir. 2018) both “in the Office Actions and in the Examiners
Answer”. Reply Br. 2–3. In the Final Office Action, the Examiner
identifies the limitation “determining a confidence level of the recipient’s
understanding of the identified idiom” as part of the abstract idea, carried out
using “mere instructions” on an “unspecified, generic computer”. Final Act.
4. In the Answer, the Examiner identified the additional elements as “a
processor”, “a memory accessible by the processor” and a “network
accessible data store”. Ans. 8. In Berkheimer, our reviewing court indicated
that at “step two, we . . . determine whether additional elements transform
the nature of the claim' into a patent eligible application” (italics added,
internal quotations omitted). 881 F.3d 1360 at 1367; see also Berkheimer
Memo8, p. 2 (“the Berkheimer decision . . . does provide clarification as to
the inquiry into whether an additional element (or combination of additional

8 Memorandum on Changes in Examination Procedure Pertaining to Subject
Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v.
HP, Inc.)(Apr. 19, 2018) available at:
https://www.uspto.gov/sites/default/files/documents/memo-berkheimer-
20180419.PDF
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elements) represents well-understood, routine, conventional activity”
(emphasis added))
Furthermore, Appellants admit in the specification that each of the
additional elements are well-known in the art. Spec. ¶ 16 (“computing
device 104 . . . comprising one or more processors and one or more
memories, and potentially any other computing device elements generally
known in the art including buses, storage devices, communication interfaces,
and the like” (italics added)). As noted in Berkheimer:
[N]ot every § 101 determination contains genuine disputes over
the underlying facts material to the § 101 inquiry. See, e.g.,
Content Extraction, 776 F.3d at 1349 (patent owner conceded
the argued inventive concept "was a routine function of
scanning technology at the time the claims were filed");
Intellectual Ventures I LLC v. Capital One Bank (USA), 792
F.3d 1363, 1370 (Fed. Cir. 2015) (patent owner argued an
"interactive interface" is "a specific application of the abstract
idea that provides an inventive concept" and did not dispute that
the computer interface was generic)
Berkheimer, 881 F.3d 1360, 1368.
As a result, considering claim 1 as a whole, we agree with the
Examiner and determine that the additional elements recited in the claim do
not provide “a specific limitation or combination of limitations that are not
well-understood, routine, conventional activity in the field.” Revised
Guidance, 84 Fed. Reg. at 56. Rather, these elements “simply append[]
well-understood, routine, conventional activities previously known to the
industry, specified at a high level of generality.” Revised Guidance, 84 Fed.
Reg. at 56. Accordingly, we agree with the Examiner that claim 1 does not
have an inventive concept.
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Appellants do not present additional arguments with respect to the
limitations of dependent claims 2–3, 5–7, 9–10, 12–14, 16–17, and 19–20
are not argued separately with sufficient particularity under 35 U.S.C. § 101.
See App. Br. 10. For the reasons discussed above, we conclude Appellants’
claims 1–3, 5–10, 12–17, and 19–20 invoke generic computer components
merely as a tool in which the computer instructions apply the judicial
exception. Accordingly, we sustain the Examiner’s rejection of claims 1–3,
5–10, 12–17, and 19–20 under 35 U.S.C. § 101. Arguments not presented
are waived. See 37 C.F.R. § 41.37(c)(1)(iv); see also 37 C.F.R. §
41.41(b)(2).

OBVIOUSNESS REJECTION
ISSUE
Under § 103, has the Examiner erred in rejecting claim 1 by finding
that McLellan and Stewart collectively would have taught or suggested the
disputed limitations (1) “determining a confidence level of the recipient’s
understanding of the identified idiom”; and (2) “identifying, as a result of the
searching, zero or more encounters by the recipient of the idiom” as recited
in claim 1?

ANALYSIS
In rejecting claim 1, the Examiner finds the combined teaches of
McLellan and Stewart teach or suggest “determining a confidence level of
the recipient’s understanding of the identified idiom” Final Act. 7 (citing
Stewart ¶¶ 66, 68, FIG. 2).
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Appellants argue that the combined teachings of McLellan and
Stewart fail to teach or suggest “determining whether the recipient of the
message understands the word being sent” (emphasis original). App. Br. 11.
Appellants cite ¶ 125 and FIG. 6 of Stewart, adding:
Stewart never teaches or suggests that the dialect trait has to do
with anything pertaining to the recipient's understanding of a
given word or term. Instead, the personal traits are tied
exclusively to the sender of the system (with the user being the
sender of the message). While the recipient's location is
mentioned with regards to the dialect trait, nothing regarding
the recipient's understanding of a term, let alone an idiom, is
taught or suggested by Stewar[t].
App. Br. 12 (emphasis original).
With regard to disputed limitation (1), at the outset, we note
Appellants’ arguments are not commensurate in scope with the claim
language because the claims do not require determining whether a recipient
of a message actually understands a word being sent as argued by
Appellants (App. Br. 11) for at least the reason that such a determination
cannot be known outside of asking the specific person that is the recipient.
Rather, the claims recite determining a confidence level that the recipient
will understand a particular idiom.
Furthermore, as an initial matter of claim construction, we look to the
Specification for context regarding the broadest reasonable interpretation
(BRI)9 of the claim term “confidence level” as recited in claim 1.
Appellants do not assert a particular definition for “confidence level” and the
Specification does not provide any limiting definition of what a “confidence

9 We give the contested claim limitations the broadest reasonable
interpretation consistent with the Specification. See In re Morris, 127 F.3d
1048, 1054 (Fed. Cir. 1997).
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level” is. The Specification provides that a confidence level encompasses a
likelihood rather than a function that provides a definitive determination, as
argued by Appellants (App. Br. 11):
When a specific recipient is specified then, at predefined
process 440, the process performs the Identify Likely
Translation Issues . . . [t]his routine analyzes the understanding
the recipient has regarding the possible translation issues in
order to score the translation issues with confidence levels . . .
[i]n addition, predefined process 440 ranks translation issues
based on how likely such idioms are understood by recipient . .
. idioms that are likely to be understood by the recipient are
provided a high confidence level, while idioms that are likely . .
. misunderstood by the recipient are provided a low confidence
level.
Spec. ¶ 32 (underlining and bracketing added).
Accordingly, under a BRI, the aforementioned limitation is properly
construed as encompassing “determining a likelihood of the recipient’s
understanding of the identified idiom”
Additionally, as disclosed paragraph 32 above, the confidence level
determination can be based on “translation issues.” Translation issues can
arise when a user sending a message a different language than a recipient
and the message contains an idiom since “when literally translated into a
target language, might be confusing or misunderstood when received by the
recipient” (italics added). Spec. ¶ 29; see also Spec. ¶ 31 (“original content
310, target language 320 . . . process 420 . . . performs the Identify Possible
Translation Issues”). Furthermore, a translation issue between a sender and
a recipient can be the sole basis for determining there is a low confidence a
recipient will understand the idiom. Spec. ¶ 32.
Accordingly, we agree with the Examiner that the citations to Stewart
(¶¶ 66–68), provided in the Final Office Action on page 7, teach or suggest
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the disputed limitation since Stewart also identifies the language of the
sender (“user”) and the recipient in order to determine if a language barrier
is likely to cause the recipient to misunderstand an idiom sent in a message
between the sender and recipient:
In response to the message recipient having a different native
language than the user, the nuance module 204 may take into
account the language barrier when determining a dialectal
nuance. For example, the dialectal nuance may cause the
dictionary module 206 to select a word recognition dictionary
that includes easily translatable terms and that avoids idioms
and colloquialisms that may be unfamiliar to the message
recipient, in response to a language barrier existing between
the user and the message recipient.
Stewart ¶ 66 (emphasis added); See also Stewart ¶ 76 (in response to
message recipient having a different native language . . . identify that the
user input an idiom . . . which [may] be confusing to a non–native speaker . .
. suggest an alternative term or phrase that is more easily translatable in
order to improve communication between the user and the message
recipient”).
With respect to disputed limitation (2), in the Reply Brief (pages 4
through 5), Appellants present for the first time the new argument that
Landau does not teach or suggest the claimed “identifying, as a result of the
searching, zero or more encounters by the recipient of the idiom.” This is a
new argument made for the first time in the Reply Brief. In the absence of a
showing of good cause by Appellants, we decline to consider an argument
raised for the first time in the Reply Brief. This is because, as the Examiner
has not been provided a chance to respond, these arguments would be
deemed waived. See 37 C.F.R. § 41.41(b)(2) (2016); In re Hyatt, 211 F.3d
1367, 1373 (Fed. Cir. 2000) (noting that an argument not first raised in the
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brief to the Board is waived on appeal); Ex parte Nakashima, 93 USPQ2d
1834, 1837 (BPAI 2010) (explaining that arguments and evidence not timely
presented in the Principal Brief, will not be considered when filed in a Reply
Brief, absent a showing of good cause explaining why the argument could
not have been presented in the Principal Brief); Ex parte Borden, 93
USPQ2d 1473, 1477 ( BPAI 2010) (informative) (“Properly interpreted, the
Rules do not require the Board to take up a belated argument that has not
been addressed by the Examiner, absent a showing of good cause.”). On this
record, Appellants have not provided such a showing of good cause.
Appellants do not present additional arguments with respect to the
limitations of dependent claims 2–3, 5–7, 9–10, 12–14, 16–17, and 19–20,
which are not argued separately with sufficient particularity. See App. Br.
13. For the reasons discussed above, we are not persuaded the Examiner
erred in finding the combined teachings and suggestions of McLellan and
Stewart disclose the disputed features of the claimed invention.
Accordingly, we sustain the Examiner’s rejection of claims 1–3, 5–10, 12–
17, and 19–20 under 35 U.S.C. § 103(a). Arguments not presented are
waived. See 37 C.F.R. § 41.37(c)(1)(iv); see also 37 C.F.R. § 41.41(b)(2).

DECISION
We affirm the Examiner’s rejection of claims 1–3, 5–10, 12–17, and
19–20 under 35 U.S.C. § 101.
We affirm the Examiner’s rejection of claims 1–3, 5–10, 12–17, and
19–20 under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
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this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED