Walsh, Patrick Sander.

Patent Trials and Appeals Board

Nov 23, 2020

2019003575 (P.T.A.B. Nov. 23, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/501,362 04/11/2012 Patrick Sander Walsh 476.00003 5403
39682 7590 11/23/2020
Widerman Malek, PL
1990 W. New Haven Avenue, Suite 201
Melbourne, FL 32904
EXAMINER
ROLAND, GRISELLE CORBO
ART UNIT PAPER NUMBER
2158
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):
Docket@USLegalTeam.com
Michelle@USLegalTeam.com
patentdocket@uslegalteam.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PATRICK SANDER WALSH
Appeal 2019-003575
Application 13/501,362
Technology Center 2100

Before BRADLEY W. BAUMEISTER, MICHAEL J. STRAUSS, and
DAVID J. CUTITTA II, Administrative Patent Judges.
CUTITTA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–23, 33, and 34, all the claims pending
in this application.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). Appellant identifies the real party in interest as, the
inventor, Patrick Walsh. Appeal Brief 4.
2 Claims 24–32 are canceled. Appeal Brief 39.
Appeal 2019-003575
Application 13/501,362

2
CLAIMED SUBJECT MATTER
Invention
Appellant’s invention relates generally to “efficiently and accurately
identifying relevant document classifications.” Spec. ¶ 14.3
Exemplary Claim
Independent claim 1 is exemplary of the claims on appeal and is
reproduced below with added bracketed lettering:
1. A search system for searching through a plurality
of documents that are organized using a classification system to
define each of the plurality of documents as a classified
document, wherein a search is conducted based on a
predetermined subject matter, the system comprising:
[(a)] a computer having at least a processor and memory;
[(b)] a program module stored on at least one of a non-
transitory computer readable medium and executable by the
computer, the program module comprising instructions
executable by the processor of the computer to determine
document classifications that are relevant to the subject matter
of the search, the program module comprising a classification
analysis module;
wherein the classification analysis module:
[(c)] receives a set of documents, the set of
documents including at least one document, each
document in the set of documents having a relevancy
indicator and at least one classification value, each
classification value being defined as a unique
classification value;

3 We refer to: (1) the originally filed Specification filed April 11, 2012
(“Spec.”); (2) the Final Office Action mailed August 1, 2017 (“Final Act.”);
(3) the Appeal Brief filed May 2, 2018 (“Appeal Br.”); and (4) the
Examiner’s Answer mailed January 28, 2019 (“Ans.”).
Appeal 2019-003575
Application 13/501,362

3
[(d)] determines a score of each of the unique
classification values appearing in the at least one
document in the set of documents, the score being
defined as a frequency of occurrence of each of the
unique classification values appearing in the at least one
document;
[(e)] receives a classification search history,
wherein the classification search history contains one or
more previously identified classification codes and
wherein each previously identified classification code
includes a search status indicator representing a phase at
which the previously identified classification code has
been searched;
[(f)] determines a sensory indicator for each of the
unique classification values by cross referencing each
unique classification value against each previously
identified classification code, wherein any match of the
unique classification value to the previously identified
classification code results in display of a first one of the
sensory indicator, wherein no match between the unique
classification value to the previously identified
classification codes results in display of a second one of
the sensory indicator, wherein the first sensory indicator
and the second sensory indicator provide an indication of
a level to which each of the unique classification values
has been previously searched; and
[(g)] generates and displays a table of each of the
unique classification values along with at least one of the
score of each of the unique classification values and the
sensory indicator for each of the unique classification
values.
Appeal Br. 33–34 (Claims Appendix).

Appeal 2019-003575
Application 13/501,362

4
REFERENCES AND REJECTIONS
The Examiner rejects claims 1–23, 33, and 34 under 35 U.S.C. § 101
as being directed to an exception to patent-eligible subject matter without
reciting significantly more. Final Act. 3–11.
The Examiner rejects claims 1–23, 33, and 34 under 35 U.S.C.
§ 103(a) as unpatentable over the teachings of Watanabe (US 2008/0162476
A1, published July 3, 2008), Smith (US 2007/0188320 A1, published
Aug. 16, 2017), and Haynes et al. (US 2009/0287779 A1, published
Nov. 19, 2009) (“Haynes”). Final Act. 14–19.
OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of Appellant’s arguments and evidence.
Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(iv) (2017).

I. Rejection Under 35 U.S.C. § 101
Appellant appeals the Examiner’s rejection of claims 1–23, 33, and 34
as being directed to patent-ineligible subject matter under § 101. Appeal
Br. 12–17. Appellant argues the claims as a group. Id.
In particular, Appellant’s arguments address limitations recited in
claim 1. Although Appellant nominally argues independent claim 13
separately, Appellant does not identify any limitation in claim 13 distinct
from claim 1. Id. at 18–23. Appellant also does not address any particular
limitation recited in any other claim. Id. at 12–23. As such, we select
Appeal 2019-003575
Application 13/501,362

5
independent claim 1 as exemplary of all claims rejected under § 101 in this
appeal. See 37 C.F.R. § 41.37(c)(1)(iv) (2017).
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 held that § 101 includes implicit
exceptions—laws of nature, natural phenomena, and abstract ideas—which
are not patent-eligible. See Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216
(2014).
In January 2019, the Office issued the 2019 Revised Patent Subject
Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”),
which addresses the manner in which § 101 case law is to be applied by the
Office. In October 2019, the Office issued an update to explain further the
manner in which the Guidance should be implemented. See October 2019
Update: Subject Matter Eligibility, available at https://www.uspto.gov/sites
/default/files/documents/peg_oct_2019_update.pdf (“Guidance Update”).
The Board is required to adhere to these guidance documents as a matter of
Office policy. Guidance, 84 Fed. Reg. at 51.4 The Guidance sets forth a
four-part analysis for determining whether a claim is eligible subject matter
under § 101; the four parts are labeled here as Step 1, Step 2A Prong 1,
Step 2A Prong 2, and Step 2B. Id. at 53–56.
Guidance Step 1
First, under “Step 1,” we consider whether the claimed subject matter
falls within the four statutory categories set forth in § 101, namely

4 Although the Office Action at issue was mailed before the 2019 Guidance
was issued, the 2019 Guidance “applies to all applications . . . filed before,
on, or after January 7, 2019.” Guidance, 84 Fed. Reg. at 50.
Appeal 2019-003575
Application 13/501,362

6
“[p]rocess, machine, manufacture, or composition of matter.” Guidance, 84
Fed. Reg. at 53–54; see 35 U.S.C. § 101. Appellant’s independent claim 1
recites a search system (i.e., a “machine”) and independent claim 13 recites a
computerized method (i.e., a “process”). As such, the claims are directed to
a statutory class of invention within § 101 and we proceed to the next step.
Guidance Step 2A Prong 1 (Judicial Exceptions)
Second, under “Step 2A Prong 1,” we evaluate “whether the claim
recites a judicial exception, i.e., an abstract idea, a law of nature, or a natural
phenomenon.” Guidance, 84 Fed. Reg. at 54; see Alice, 573 U.S. at 216–17.
The Examiner determines that claim 1 recites a judicial exception—
specifically, “an abstract idea of searching classified documents,
determining a score based on the frequency of occurrence of each
classification, and generating a table for each classification with the scores
and search history information.” Final Act. 9.
Appellant does not specifically rebut the Examiner’s determination
that claim 1 recites a mental process, other than to conclude without
evidence or persuasive analysis that claim 1 “includes []elements that render
the claim, as a whole, outside of the judicial exception of ‘An idea of
itself’.” Appeal Br. 14 (emphasis omitted).
We agree with the Examiner’s determination that claim 1 recites an
abstract idea. Specifically, we determine claim 1 recites a mental process.
Apart from additional elements and extra-solution activity discussed
separately below, claim 1 recites a “search system” including instruction
steps recited in limitations (c)–(g).
Limitation (c) recites, in relevant part, “receives a set of documents
. . . including at least one document.” Appeal Br. 33. Appellant directs
Appeal 2019-003575
Application 13/501,362

7
attention to paragraph 14 of the Specification in support of this limitation.
Appeal Br. 8. The cited portion of the Specification discloses that “[t]he
system receives one or more classified reference documents in a document
set along with a relevancy indicator for each document.” Spec. ¶ 14. The
Specification describes the reference documents as “any type of electronic
file that contains textual data.” Id. ¶ 35. Thus, limitation (c) recites
receiving information or data.
Receiving information, i.e., collecting or gathering data, reasonably
can be characterized as reciting a mental process, i.e., a mental observation.
Guidance Update 7, n.48. The Guidance expressly recognizes mental
processes, including observations that can be performed in the human mind,
as patent-ineligible abstract ideas. Guidance, 84 Fed. Reg. at 52.
Accordingly, limitation (c) reasonably can be characterized as reciting a
judicial exception to patent-eligible subject matter, specifically, a mental
process.
Limitation (d) recites, “determines a score of each of the unique
classification values appearing in the at least one document in the set of
documents, the score being defined as a frequency of occurrence of each of
the unique classification values appearing in the at least one document.”
Appeal Br. 33. Appellant directs attention to paragraph 41 of the
Specification in support of this limitation. Id. at 8. Paragraph 41 does not
discuss determining a score. Paragraph 42, however, states that the
“classification analysis module 1012 will retrieve the document
classifications 135 from each document and then generate a count of
instances of each document classifications 135 over the entire selected set.”
Spec. ¶ 42. This paragraph merely describes determining a score by
Appeal 2019-003575
Application 13/501,362

8
counting the number of times a classification appears in a set of documents.
The Specification discloses no algorithm or technical detail to support an
assertion that these limitations could not be practically performed by the
human mind. Spec. ¶ 9. Accordingly, limitation (d) reasonably can be
characterized as reciting a mental process.
Limitation (e) recites, in relevant part, “receives a classification search
history . . . [that] contains one or more previously identified classification
codes and wherein each previously identified classification code includes a
search status indicator representing a phase at which the previously
identified classification code has been searched.” Appeal Br. 33. Appellant
directs attention to paragraph 42 of the Specification in support of this
limitation. Appeal Br. 8.
The Specification discloses, that “[t]he classification search history
290 shows a previously identified classification code 291 and a
corresponding previously identified classification title 292.” Spec. ¶ 41.
The search history 290 is retrieved from the project file 205, which is
comprised of various reference documents. Id. ¶¶ 40, 41. The Specification
further describes the reference documents as “any type of electronic file that
contains textual data.” Id. ¶ 35. Thus, limitation (e) recites receiving
information or data. Receiving information, i.e., collecting or gathering
data, reasonably can be characterized as reciting a mental process. Guidance
Update 7, n.48.
Limitations (f) recites, in relevant part:
determines a sensory indicator for each of the unique
classification values by cross referencing each unique
classification value against each previously identified
classification code wherein any match of the unique
Appeal 2019-003575
Application 13/501,362

9
classification value to the previously identified classification
code results in display of a first one of the sensory indicator,
wherein no match between the unique classification value to the
previously identified classification codes results in display of a
second one of the sensory indicator.
Appeal Br. 33–34.
Appellant directs attention to paragraph 42 of the Specification in
support of this limitation. Id. at 8. The cited portion of the Specification
discusses that the sensory indicators may be colors. The Specification
further explains that the “classification analysis module scores classification
codes and then cross references against the classification search history” and
that the “resulting classification analysis interface is displayed along with
various sensory indicators (e.g. a color).” Id. ¶ 15. Thus, the Specification
describes cross referencing a classification value against the classification
search history and displaying a match between the classification value and
the previously identified classification codes in a first color and displaying
no match in a second color different than the first color. The cited portion of
the Specification discloses no algorithm or technical detail to support the
conclusion that these limitations could not be practically performed by the
human mind. Spec. ¶ 42. Moreover, by cross referencing a unique
classification value against a previously identified classification code,
limitation (f) collects and compare known information, i.e., performs a
judgment. Thus, this limitation recites a mental process because the
Guidance expressly recognizes that “limitations that can practically be
performed in the human mind, including for example, observations,
evaluations, [and] judgments,” recite a mental process. Guidance Update 7,
8, n.50.
Appeal 2019-003575
Application 13/501,362

10
Thus, we agree with the Examiner that claim 1 recites an abstract idea
in the form of a mental process under the Guidance, and we discern no error
in that part of the Examiner’s rejection.
Guidance Step 2A Prong 2 (Practical Application)
Third, having determined that claim 1 recites an abstract idea, we
evaluate whether “the claim as a whole integrates the recited judicial
exception into a practical application of the exception.” Guidance, 84 Fed.
Reg. at 54–55 (citing MPEP § 2106.05(a)–(c), (e)–(h)). “A claim that
integrates a judicial exception into a practical application will apply, rely on,
or use 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.” Id.; see Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78 (2012).
The Guidance specifies that this evaluation is conducted by first
“[i]dentifying whether there are any additional elements recited in the claim
beyond the judicial exception(s),” and then “evaluating those additional
elements individually and in combination to determine whether they
integrate the exception into a practical application.” Guidance, 84 Fed. Reg.
at 54–55.
As discussed above, most of the limitations in claim 1 recite a mental
process. Limitations (a), (b), and (g) include elements additional to the
recited abstract ideas. Specifically, limitation (a) recites, “a computer
having at least a processor and memory,” and limitation (b) recites, “a
program module stored on at least one of a non-transitory computer readable
medium.” Appeal Br. 33. Limitation (g) recites, “generates and displays a
table of each of the unique classification values along with at least one of the
Appeal 2019-003575
Application 13/501,362

11
score of each of the unique classification values and the sensory indicator for
each of the unique classification values.” Id. at 34.
The Examiner determines claim 1 does “not include additional
elements that are sufficient to amount to significantly more than the judicial
exception because the additional method steps, which are recited at a high
level of generality, provide routine computer functions [that] do not add
meaningful limits to practicing the abstract idea.” Final Act. 9.
Appellant argues claim 1 is “not directed to simply organizing
information[,] but [is] directed to searching documents by using a specific
apparatus and method and tracking searched areas through sensory
indicators.” Appeal Br. 16.
Appellant’s argument fails to identify any additional elements in the
claim and improperly relies on the abstract idea to provide significantly
more than the abstract idea itself. Even if the claimed abstract idea were
novel, the novelty of the abstract idea is not enough to save it from
ineligibility. See Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138,
1151 (Fed. Cir. 2016) (“[A] claim for a new abstract idea is still an abstract
idea.”).
We agree with the Examiner that the technology of claim 1 merely
evinces the use of generic computer technology to implement an otherwise
abstract process on a computer network. The Specification describes that
the client device 1010, which includes the claimed classification analysis
module 1012, “may be a computing device having a processor such as
personal computer, a phone, a mobile phone, or a personal digital assistant.”
Spec. ¶ 35. Similarly, the Specification states that “client device 1010 may
Appeal 2019-003575
Application 13/501,362

12
also include a data storage element 1016, which may be at least one of a
computer readable medium and a memory.” Id. ¶ 37.
Thus, the Specification describes the claimed computer components
including the computer, processor, memory, and medium of the search
system in the most general of terms, without any detail of how they are
structured or how they operate apart from executing the abstract idea. This
use of generic technology to implement an abstract idea is insufficient to
integrate the abstract idea into a practical application. MPEP § 2106.05(f).
That is, rather than improving computer technology, the claim uses
the computer as a tool to implement the improved abstract idea. Using a
computer as a tool to perform an improved algorithm does not integrate the
judicial exception into a practical application or otherwise confer patent-
eligibility. Guidance, 84 Fed. Reg. at 55.
Limitation (g) recites, “generates and displays a table of each of the
unique classification values along with at least one of the score of each of
the unique classification values and the sensory indicator for each of the
unique classification values.” Appeal Br. 34. Appellant argues that “this
feature is not simply displaying information in a table, but instead, is drawn
to generating and displaying a table of each of the unique classification
values along with at least one of the score of each of the unique
classification values and the sensory indicator.” Appeal Br. 16.
Appellant’s argument is unpersuasive. Limitation (g) does not add
any meaningful limits to the recited abstract idea because this limitation
reasonably may be characterized as being directed to the insignificant post-
solution activity of outputting data. Such broadly recited outputting of data
that is not integrated into the claim as a whole is insignificant post-solution
Appeal 2019-003575
Application 13/501,362

13
activity. See Parker v. Flook, 437 U.S. 584, 590 (1978) (“The notion that
post-solution activity, no matter how conventional or obvious in itself, can
transform an unpatentable principle into a patentable process exalts form
over substance.”); OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359,
1362–63 (Fed. Cir. 2015) (“Nor does the claims’ recitation of ‘present[ing]
[offers] to potential customers’ . . . provide a meaningful limitation on the
abstract idea.”).
Next, Appellant argues the claimed invention provides an
improvement to computer functionality because claim 1 is like the claims in
Finjan.5 Appeal Br. 17. Specifically, Appellant argues that claim 1
“accomplish[es] a result that improves the computer functionality when
performing a search of a plurality of documents.” Id.
We are not persuaded. In Finjan, the court found the claimed
behavior-based virus scan constituted an improvement in computer
functionality over “traditional, ‘code-matching’ virus scans.” 879 F.3d at
1304. The court determined that the Finjan claimed method employed a
new kind of file that allowed access to be tailored to different users, and
allowed the system to accumulate and use newly available, behavior-based
information regarding potential threats. Id. at 1305. The court ultimately
held the Finjan claims were “directed to a non-abstract improvement in
computer functionality, rather than the abstract idea of computer security,”
and “recite[d] specific steps––generating a security profile that identifies
suspicious code and linking it to a downloadable––that accomplish the
desired result.” Id.

5 Finjan Inc. v. Blue Coat Systems, Inc., 879 F.3d 1299 (Fed. Cir. 2018).
Appeal 2019-003575
Application 13/501,362

14
Unlike the claims in Finjan, Appellant’s claim 1 does not claim an
improvement over traditional functionality of computer technology. Rather,
Appellant’s claimed document classification system is merely directed to
collecting, manipulating, and displaying certain data and, thus, is an
improvement in the claimed abstract idea.
With regard to the technology involved in Finjan, Appellant’s claim 1
further fails to employ a newly generated file containing a security profile in
a downloadable. Nor does the claim use a new file to enable a computer
security system to improve on or add a computer functionality by reciting
specific steps accomplishing the desired improved security results. We,
therefore, are not persuaded that claim 1 is sufficiently analogous to the
claims in Finjan. Accordingly, we are not persuaded that claim 1
“accomplish[es] a result that improves the computer functionality,” as
argued by Appellant. Appeal Br. 17. Rather, Appellant’s invention lacks a
technical solution to a technical problem.
In summary, Appellant fails to identify any way in which an
additional element (rather than the abstract idea), whether alone or in
combination, reflects an improvement in any technical field, requires a
particular machine integral to the claim, transforms the article to a different
state, or otherwise applies the judicial exception in some meaningful way
beyond generally linking the use of the judicial exception to a particular
technological environment (e.g., authentication). See MPEP § 2106.05(a)–
(h). We, therefore, determine claim 1 does not integrate the abstract idea
into a practical application and thus is directed to a judicial exception.
Appeal 2019-003575
Application 13/501,362

15
Guidance Step 2B (Inventive Concept)
Finally, having concluded that claim 1 is “directed to” a judicial
exception, we turn to whether the claim provides an “inventive concept,”
i.e., whether the additional elements, individually and as an ordered
combination, amount to “significantly more” than the judicial exception
itself. Guidance, 84 Fed. Reg. at 56. To determine whether the claim
provides an inventive concept, the additional elements are considered—
individually and in combination—to determine whether they (1) add a
specific limitation beyond the judicial exception that is not “well-
understood, routine, conventional” in the field or (2) simply append well-
understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception.
Guidance, 84 Fed. Reg. at 56.
The Examiner determines that claim 1 does include additional
elements that are “enough to transform the exception into a patentable
invention because it is a generic computer functions that is routinely
performed in computer applications. Thus, taken alone, the additional
elements to do not amount to significantly more than the above-identified
judicial exception.” Final Act. 10.
Appellant argues that “the various features of independent claim 1 are
not widely prevalent or in common use in the relevant field of searching
through a plurality of documents.” Appeal Br. 17.
This argument is not persuasive. Appellant fails to identify any
additional elements in the claim, let alone provide evidence that a specific
element beyond the judicial exception is not well understood, routine, or
conventional. Likewise, Appellant does not identify any specific ordered
Appeal 2019-003575
Application 13/501,362

16
combination of elements in the claim that is nonconventional or that
amounts to significantly more than the judicial exception.
As discussed above, the “additional elements” in claim 1 beyond the
recited abstract idea are recited in limitations: (a) “a computer having at least
a processor and memory;” (b) “a program module stored on at least one of a
non-transitory computer readable medium;” and (g) “generates and displays
a table.” Appeal Br. 33. These elements, however, are simply used for
performing each step of the claimed abstract process or recite extra-solution
activity.
That is, claim 1, to implement the abstract idea, uses well-understood,
routine, and conventional computer components for collecting and analyzing
data and for displaying certain data. See, e.g., Spec. ¶¶ 35–37, Fig. 1A. Our
reviewing court has “repeatedly held that such invocations of computers and
networks that are not even arguably inventive are insufficient to pass the test
of an inventive concept in the application of an abstract idea.” Elec. Power
Grp., LLC v. Alston, S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016) (quotation
omitted); see also Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811
F.3d 1314, 1324–25 (Fed. Cir. 2016) (“[G]eneric computer components such
as an ‘interface,’ ‘network,’ and ‘database’ . . . . do not satisfy the inventive
concept requirement.”).
We, therefore, agree with the Examiner’s determination that claim 1
does “not include additional elements that are sufficient to amount to
significantly more than the judicial exception.” Final Act. 9. The recited
hardware adds nothing more than well-understood, routine, conventional
activities, specified at a high level of generality, to the claimed abstract
mental process. See MPEP § 2106.05(d)(II)(ii). We conclude that claim 1
Appeal 2019-003575
Application 13/501,362

17
does not set forth an inventive concept because the additional elements
recited in the claim do not provide significantly more than the recited
judicial exception, whether the claim elements are considered individually or
as an ordered combination.
Accordingly, we are not persuaded that exemplary claim 1 recites
patent-eligible subject matter, and we sustain the rejection of claims 1–23,
33, and 34 under 35 U.S.C. § 101 as being directed to patent-ineligible
subject matter.

II. Rejections Under 35 U.S.C. § 103(a)
The Examiner relies on the combined teachings of Watanabe, Smith,
and Haynes to teach or suggest all of the limitations of claim 1. Final
Act. 14–19. The Examiner determines that sufficient motivation existed to
combine the teachings of the references. Id. at 17–19.
Appellant argues the Examiner erred by improperly combining
Watanabe and Smith. Appeal Br. 24. Appellant argues that “[s]ince
Watanabe was only concerned with reduced noise location of related
classifications of an appropriate grain size, he would not have been
motivated to combine Smith.” Id.
We are unpersuaded. The Examiner relies on Watanabe to teach most
of the limitations of claim 1, but finds “Watanabe does not explicitly teach
receives a classification search history,” as recited in claim 1. Final Act. 16
(emphasis omitted). The Examiner combines the teachings of Smith with
Watanabe, finding Smith teaches “receives a classification search history,”
as recited in claim 1. Id. at 17 (citing Smith ¶¶ 1, 6, 33–36). The Examiner
determines “[it] would have been obvious at the time of the invention to
Appeal 2019-003575
Application 13/501,362

18
combine the teachings of Watanabe with those of Smith in order to
determine areas that have yet been searched.” Id. at 17 (citing Smith
Abstract).
Appellant’s argument that one of ordinary skill would not have been
motivated to combine Watanabe and Smith is unpersuasive because the
Examiner provides a motivation to combine that is expressly supported by
Smith, and Appellant fails to provide evidence or persuasive reasoning that
specifically addresses the Examiner’s stated motivation.
Appellant argues next that Smith is non-analogous art because it is not
from the same field of endeavor as the claimed invention and is not
reasonably pertinent to the particular problem faced by the inventor. Appeal
Br. 25 (citing In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004); In re Clay,
966 F.2d 656, 658 (Fed. Cir. 1992)). Of particular relevance, Appellant
argues that “the field of endeavor of the claimed invention is methods and
systems for locating relevant classifications in a document search” and
“Smith is drawn to methods for identifying areas searched in a search and
rescue operation, which is in a separate field of endeavor.” Appeal Br. 25.
With respect to the problem faced by the inventor, Appellant argues that “the
inventor describes the problem as performing classification document
searching within complex classification systems,” but “[t]he problem faced
by Smith is tracking land coverage performed in a search and rescue
operation.” Id.
The Examiner responds by finding that both the Watanabe and Smith
references are from the same field of endeavor as the claimed invention and
“are reasonably pertinent to the problem addressed by the inventor of the
Instant Application.” Ans. 11. According to the Examiner:
Appeal 2019-003575
Application 13/501,362

19
Watanabe clearly teaches a list of classification codes sorted
according to score (Watanabe Figure 5), so it is clearly analogous
art because it solves one of the concerns that the applicant
tackles, which is that of showing relevant classifications and
sorting them according to a score. Smith is also analogous art
because it seeks to solve the same problem as the applicant[,]
which is that of double coverage of a search area (Smith
Paragraph 0002, “there often is a lack of accurate record keeping
of those areas that have been searched, resulting in the same area
being searched twice”). Both the Instant Application and
Watanabe are concerned with documents that are grouped by
classifications and sorting the classifications by scores. Both the
Instant Application and Smith are concerned with tracking areas
searched in order to avoid double coverage of an area (searching
an area twice). The fact that the search area of Smith is an area
of land rather than a group of documents does not make it less
pertinent to the problem being solved.
Id. at 10–11.
Appellant, in turn, has not presented a Reply Brief, and, therefore, has
not disputed the Examiner’s additional reasoning and findings articulated in
the Answer. Consequently, Appellant has not shown error in these
additional factual findings or in the Examiner’s determination that both
Watanabe and Smith are analogous art.
Appellant argues next that the Examiner’s reliance on the combined
teachings of the references would render Watanabe unsatisfactory for its
intended purpose. Appeal Br. 26. According to Appellant, “[i]f Watanabe
were to, additionally, use color highlighting to signal status from a separate
input (not present in Watanabe), the user would be confused and unable to
quickly ascertain whether a classification is being signaled as relevant or
level of previous search.” Id. at 27. And, therefore, “Watanabe would not
Appeal 2019-003575
Application 13/501,362

20
be operable to its intended purpose if the color coding of the ‘search’ of
Smith were integrated therein.” Id.
The Examiner responds by finding that “Watanabe uses visual cues
such as colors to emphasize relatedness/conformity scores.” Ans. 12 (citing
Watanabe ¶¶ 74–76). The Examiner determines that “[m]odifying Watanabe
with the teachings of Smith and including additional visual cues to show the
current status of the search would [not] render Watanabe inoperable but
would instead expand its functionality to allow the user to see which
classifications have been searched and to what extent.” Ans. 12.
Appellant’s allegations are not supported by evidence found in the
record and are, instead, supported only by attorney argument, which “cannot
take the place of evidence.” In re Pearson, 494 F.2d 1399, 1405 (CCPA
1974). As best understood, Appellant alleges that Watanabe’s intended
purpose is “to quickly ascertain whether a classification is being signaled as
relevant or level of previous search.” Appeal Br. 27. Appellant, however,
does not provide evidence that supports this allegation.
Furthermore, even assuming the intended purpose of Watanabe, as
alleged by Appellant, is accurate, Appellant does not provide evidence to
establish that using the color coding from Smith to provide additional visual
cues to show the current status of the search in Watanabe would
impermissibly render Watanabe inoperable for its intended purpose by
confusing the user. Instead, Appellant reaches this conclusion without
providing factual support or sufficient reasoning. Id. As a result, Appellant
fails to demonstrate why the constraints of In re Gordon apply to the
Examiner’s findings based on the combined teachings of Watanabe and
Smith. In re Gordon, 733 F.2d 900 (Fed. Cir. 1984).
Appeal 2019-003575
Application 13/501,362

21
For the reasons discussed, Appellant has not persuaded us of error in
the Examiner’s obviousness rejection of independent claim 1. Accordingly,
we sustain the Examiner’s rejection of that claim, as well as the rejection of
independent claim 13, and dependent claims 2–12, 14–23, 33, and 34, which
Appellant does not argue separately with particularity. Appeal Br. 13.
CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. §
References/
Basis
Affirmed Reversed
1–23, 33, 34 101 Patent eligibility 1–23, 33, 34
1–23, 33, 34 103(a) Watanabe, Smith,
Haynes
1–23, 33, 34
Overall
Outcome
1–23, 33, 34

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED