Zola Books Inc.

Patent Trials and Appeals Board

Jan 25, 2021

2020005017 (P.T.A.B. Jan. 25, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/172,677 02/04/2014 Patrick Hu 31105-0005001 3152
26211 7590 01/25/2021
FISH & RICHARDSON P.C. (NY)
P.O. BOX 1022
MINNEAPOLIS, MN 55440-1022
EXAMINER
PHAM, MICHAEL
ART UNIT PAPER NUMBER
2167
NOTIFICATION DATE DELIVERY MODE
01/25/2021 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):
PATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PATRICK HU, ARDESHIR KHAZAEI,
CHRISTOPHER SIM, and KAREN YE SUN

Appeal 2020-005017
Application 14/172,677
Technology Center 2100

Before MAHSHID D. SAADAT, JEAN R. HOMERE, and
BRADLEY W. BAUMEISTER, Administrative Patent Judges.
HOMERE, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF THE CASE1
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s decision rejecting claims 1, 2, and 5–12, all of the claims
pending.2 Claims App. Claims 3 and 4 have been canceled. Id. We have
jurisdiction under 35 U.S.C. § 6(b). An oral hearing was held in this appeal

1 We refer to the Specification filed Feb. 2, 2014 (“Spec.”); the Final Office
Action, mailed May 3, 2018 (“Final Act.”); the Appeal Brief, filed June 5,
2019 and Dec. 20, 2019 (“Appeal Br.”); the Examiner’s Answer, mailed
Apr. 22, 2020 (“Ans.”); and the Reply Brief, filed June 22, 2020 (“Reply
Br.”).
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies Zola LLC as the real party-in-
interest. Appeal Br. 1.
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on January 11, 2021. A transcript of the oral hearing will be entered into the
record in due course.
We affirm, and we enter a new ground of rejection.
II. CLAIMED SUBJECT MATTER
According to Appellant, the claimed subject matter relates to a literary
recommendation engine using various stimuli (e.g., publisher’s catalog,
readers’ reviews/ratings, plot of a book/relationship between characters) to
develop mathematical and analytical models for recommending literary
content to a community of users. Spec. 2:9–23.
Figure 1, reproduced and discussed below, is useful for
understanding the claimed subject matter:

Figure 1 above illustrates user interface (100) in a web server including a
literary presentation engine for retrieving from a database literary content
matching a user’s query. Id. at 4: 14–22.
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In particular, upon receiving the user’s query including the user
profile along with a literary object (e.g., book title, category), the literary
recommendation engine uses relationship metrics to identify affinities
between the user profile and other literary objects to thereby provide a list of
literary recommendations to the user. Id. at 3:14–24, 4:1–22. More
particularly, Appellant’s Specification states the following:
One other stimulus may include a very specialized
service that semantically breaks down the plot of a book. For
example, a content publisher may parse a book with an analytic
engine that develops a mathematical model for the structure of
the plot and the relationship between characters. The content
publisher may supplement and/or verify the mathematic model
for the plot structure of the plot with review by a human editor
that adjusts the model developed by the computer. The parsing
also may involve a categorization of the reading level, the
historic timeframe (if applicable), dialect, character interaction,
issues, themes, mood, and other labels that may assist in
characterizing content.

Id. at 2:24–3:2 (emphasis added).

Claims 1, 10, and 12 are independent. Claim 1, reproduced below
with disputed limitations emphasized, is illustrative:
1. A computer-implemented method of generating an
electronic database of literary content, the method comprising:
obtaining, data indicating (i) a first portion of text derived from
a first literary object from a first data source, and (ii) a second portion
of text derived from a second literary object from a second data source
different from the first data source;
comparing, independent of user profile information, the first
portion of text derived from the first literary object and the second
portion of text derived from the second literary object;
computing, independent of the user profile information, based
on comparing the first portion of text derived from the first literary
object and the second portion of text derived from the second literary
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object, a semantic correlation score reflecting a similarity between
first literary object and the second literary object based on a model
for the structure of a plot and a relationship between characters;
determining that the value of the computed semantic correlation
score satisfies a predetermined threshold associated with either the
first literary object or the second literary object; and
determining that the first literary object is related to the second
literary object based on determining that the value of the computed
semantic correlation score satisfies a predetermined threshold
associated with either the first literary object or the second literary
object.

Appeal Br. 5 (Claims App.).
III. REFERENCES
The Examiner relies upon the following references.3
Name Reference Date
Park US 2008/0126303 A1 May 29, 2008
Ray US 2011/0320276 A1 Dec. 29, 2011
Yardley US 2013/0166406 A1 June 27, 2013
IV. REJECTIONS
The Examiner rejects claims 1, 2, and 5–12 as follows:
Claims 1, 10, and 12 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which Appellant regards as the invention.
Final Act. 2.

3 All reference citations are to the first named inventor only.
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Claims 1, 2, and 5–12 are rejected under 35 U.S.C. § 103 as being
unpatentable over the combined teachings of Yardley, Ray, and Park. Final
Act. 3–18.
V. ANALYSIS
1. Indefiniteness Rejection
Because Appellant has not presented any arguments to rebut the
Examiner’s indefiniteness rejection, we summarily affirm the rejection of
claims 1, 10, and 12.
2. Obviousness Rejection
We consider Appellant’s arguments in the order they are presented in
the Appeal Brief, pages 2–4 and the Reply Brief, page 2.4 We are
unpersuaded by Appellant’s contentions. Except as otherwise indicated
herein below, we adopt as our own the findings and reasons set forth in the
Final Action, and the Examiner’s Answer in response to Appellant’s Appeal
Brief. Final Act. 2–18; Ans. 4–8. However, we highlight and address
specific arguments and findings for emphasis as follows.
Appellant argues that the Examiner erred in finding that the
combination of Ray, Yardley, and Park teaches or suggests computing a
semantic correlation score reflecting similarity between a first and second
literary object based on a model for the structure of a plot and a relationship
between characters, as recited in independent claims 1, 10, and 12. Appeal
Br. 3, Reply Br. 2. In particular, Appellant argues that Park does not cure
the admitted deficiencies of Yardley and Ray because Park’s disclosure of

4 We have considered in this Decision only those arguments Appellant
actually raised in the Briefs. Arguments not made are waived. See
37 C.F.R. § 41.37(c)(1)(iv) (2014).
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calculating “a proximity score by combining bigram and unigram scores
with a score for a match in other metadata fields” does not teach the
disputed claim limitations. Appeal Br. 3 (citing Park ¶ 48). According to
Appellant, although Park indicates that the proximity score calculations may
include summary character names, such calculations are performed by
simple metadata matching, and the Office does not explain how this
metadata reflects “a model for the structure of a plot and a relationship
between characters” as required by the claims. Id. at 3–4 (citing Park ¶ 47),
Reply Br. 2. These arguments are not persuasive.
As a preliminary matter, we note that the claim recites computing a
semantic correlation score reflecting a similarity between a first literary
object derived from a first portion of text from a first data source and a
second literary object derived from a second portion of text from a second
data source. Further, as correctly noted by the Examiner, the claim does not
recite a specific model, nor does the Specification define or explain how the
“model for the structure of a plot and a relationship between characters” is
acquired. Ans. 7. As further correctly noted by the Examiner, the
Specification merely provides a cursory reference to the “model for the
structure of a plot,” and the relationship between characters, all of which
derived from portions of text literary objects. Id.
Furthermore, the Specification indicates that the literary
recommendation engine may pull up literary data object for the book
containing metadata including description of related content, relationship
between the book and other data. Spec. 3:14–25.
We therefore broadly, but reasonably construe the disputed claim
limitations to encompass computing a correlation score reflecting
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similarities between the data derived from a first source and a second source
based on the metadata defining the plot structure and relationships between
characters. Id. Thus, we agree with the Examiner that Park’s disclosure,
computing a proximity score reflecting similarities between metadata
derived from a source input by a user and the summary of a plot and
relationship between characters, teaches or at least suggests the disputed
limitations. Id. 7–8 (citing Park ¶¶ 47, 48).
Accordingly, we are not persuaded of error in the Examiner’s rejection
of claims 1, 10, and 12 over the combined teachings of Yardley, Ray, and
Park.
Regarding the rejection of claims 2, 5–9, and 11, Appellant has not
presented separate patentability arguments or has reiterated substantially the
same arguments as those previously discussed for the patentability of
claims 1, 10, and 12. As such, claims 2, 5–9, and 11 fall therewith. See
37 C.F.R. § 41.37(c)(1)(iv).
VI. NEW GROUND OF REJECTION
Pursuant to our authority under 37 C.F.R. § 41.50(b), we newly reject
claims 1, 2, and 5–12 under 35 U.S.C. § 101 as being directed to an
exception to patent-eligible subject matter without reciting significantly
more.
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. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014).
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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. Alice, 573 U.S. 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);
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” (Diehr, 450 U.S. at 182 n.7 (quoting Corning v.
Burden, 56 U.S. 252, 267–68 (1853))); 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 187, 191 (“We view
respondents’ claims as nothing more than a process for molding rubber
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products and not as an attempt to patent a mathematical formula.”). Having
said that, 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), and 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-
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.
The PTO published revised guidance on the application of
section 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84
Fed. Reg. 50–57 (Jan. 7, 2019) (“2019 PEG”). Recently, the PTO published
an update to that guidance. October 2019 Patent Eligibility Guidance
Update, 84 Fed. Reg. 55,942 (hereinafter “PEG Update”). Under the 2019
PEG and PEG Update, we first look to whether the claim recites:
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(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 MPEP § 2106.05(a)–(c),
(e)–(h)).5

See 2019 PEG, 52, and 55–56. Only if a claim: (1) recites a judicial
exception; and (2) does not integrate that exception into a practical
application, does the office then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception
that is not “well-understood, routine, conventional” in the
field (see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a
high level of generality, to the judicial exception.
See 2019 PEG 56.
We analyze the patent-eligibility rejection with the principles
identified above in mind.
Applying the guidance set forth in the 2019 PEG, we determine
whether claims 1, 2, and 5–12 are directed to patent ineligible subject matter.
In revised step 1 of 2019 PEG, we consider whether the claimed
subject matter falls within the four statutory categories of patent-eligible
subject matter identified by 35 U.S.C. § 101: process, machine,
manufacture, or composition of matter. Because independent claims 1, 10,
and 12 recite a “method” including a number of steps, claims 1, 10, and 12
fall within the process category of patent-eligible subject matter.

5 All references to the MPEP are to Rev. 08.2017 (Jan. 2018).
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In prong 1 of revised step 2A of the 2019 PEG, we determine whether
any judicial exception to patent eligibility is recited in the claims. The
guidance identifies three judicially-excepted groupings of abstract ideas:
(1) mathematical concepts; (2) certain methods of organizing human activity
such as fundamental economic practices; and (3) mental processes.
Independent claims 1, 10, and 12 recite, inter alia, the following steps
performed by a computer:
(1) obtaining portions of text derived from literary objects
in a first and a second sources ;
(2) comparing the portions of text from literary objects;
(3) computing a semantic correlation score reflecting
similarity between the literary objects;
(4) determining that the correlation score satisfies
predetermined threshold.
As an initial matter, we note that the preamble of claims 10 and 12
recites a “method for automatically recommending a literary object to a
user.” Further, as set forth in steps 1 through 4 above, such automatic
recommendation merely consists a processor using a suitable algorithm to
compute the correlation score based on the similarity between the plot
structure and character relationships in the literary objects to thereby display
recommendations of literary objects to the user. Therefore, claims 1, 10, and
12 recite a computing system for processing user input data, retrieving data
correlated therewith for subsequent recommendations to the user (e.g.,
recommending books to a user based other books having a similar plot
structure and character relationships).
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As drafted, these claim limitations, under their broadest reasonable
interpretation, recite a mental process for recommending to a user literary
objects based on a similar plot structure identified in other literary objects
that can be performed in the human mind (including an observation,
evaluation, judgment, opinion) or using pen and paper. Specifically, the
claimed mental process entails (1) comparing texts, (2) computing semantic
correlation scores, (3) determining that a score value satisfies a threshold,
and (4) determining that the literary objects are related based on determining
that the score satisfies the threshold. See, e.g., CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011) (determining that a
claim whose “steps can be performed in the human mind, or by a human
using pen and paper” is directed to an unpatentable mental process); 84 Fed.
Reg. at 52 n.14. Consequently, we find that claims 1, 10, and 12 recite the
judicial exception of a mental process of recommending to a user literary
objects having a similar plot structure and character relationships.
Having determined that the claims recite a judicial exception, our
analysis under the 2019 PEG turns now to determining whether there are
“additional elements that integrate the judicial exception into a practical
application.” See MPEP § 2106.05(a)–(c), (e)–(h). “Integration into a
practical application” requires an additional element or a combination of
additional elements in the claim to 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 exception. 84 Fed. Reg. 54, 55.
Appellant’s claims 1, 10, and 12 recite a computer-related limitation,
(e.g., a computer-implemented method). We do not find the computer-
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related limitation is sufficient to integrate the judicial exception into a
practical application. Although the claims nominally require steps 1–4 to be
performed by a computer processor, this computer implementation of a
mental process is insufficient to take the invention out of the realm of
abstract ideas. 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, 573
U.S. at 223 (“Stating an abstract idea while adding the words ‘apply it with a
computer’” is insufficient to confer eligibility.) (Citation omitted).
Further, the Specification does not provide additional details about the
computer processor that would distinguish it from any generic processing
devices to convert the received message from one state to another or into a
tangible thing. Spec. 5:23–6:25.
Although we do not dispute that the computer processor includes
specific instructions for performing the recited functions, Appellant’s
Specification does not explain how the computer correlating the literary
objects for recommendation to the user transforms the user data into a new
state or thing. See MPEP § 2106.05(a). Rather, the claims merely adapt the
mental process of comparing literary objects to a user’s input for
recommending to the user similar literary content. See Credit Acceptance
Corp. v. Westlake Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017) (“Our prior
cases have made clear that mere automation of manual processes using
generic computers does not constitute a patentable improvement in computer
technology.”); see also Bancorp Services, L.L.C. v. Sun Life Assurance Co.
of Canada (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012) (A computer
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“employed only for its most basic function . . . does not impose meaningful
limits on the scope of those claims.”).
Further, the cited claim limitations do not improve the functionality of
the processing device by comparing literary objects for recommending
similar literary objects to a user, nor do they achieve an improved
technological result in conventional industry practice. See McRO, Inc. v.
Bandai Namco Games Am., Inc., 837 F.3d 1299, 1316 (Fed. Cir. 2016).
Thus, the claims do not recite an additional element reflecting an
improvement in the functioning of a computer, or an improvement to other
technology or technical field. Neither do the claims recite an additional
element that implements the abstract idea with a particular machine or
manufacture that is integral to the claim. Id. Instead, the claim limitations
only recite result-based functional steps that do not describe how to achieve
the data transformation in a non-abstract way. Prior to the Internet, such
activities were widely practiced, and became computerized to facilitate the
recommendation of literary objects having similar content as one presented
by a user. See OIP Technologies, Inc. v. Amazon.com, Inc., 788 F.3d 1359,
1364 (Fed. Cir. 2015).
Because the claimed subject matter outlined above does not
(1) provide any technical solution to a technical problem as required by
DDR Holdings;6 (2) provide any particular practical application as required

6 The Federal Circuit found DDR’s claims are patent-eligible under
35 U.S.C. § 101 because DDR’s claims: (1) do not merely recite “the
performance of some business practice known from the pre-Internet world”
previously disclosed in Bilski and Alice; but instead (2) provide a technical
solution to a technical problem unique to the Internet, i.e., a “solution . . .
necessarily rooted in computer technology in order to overcome a problem
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by BASCOM Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d
1341, 1350 (Fed. Cir. 2016); or (3) entail an unconventional technological
solution to a technological problem as required by Amdocs,7 claims 1, 10,
and 12 are directed to an abstract idea that is not integrated into a practical
application.
Alice/Mayo—Step 2B (Inventive Concept)
Turning to step 2B of the 2019 PEG, we look to whether the claim:
(a) recites a specific limitation or combination of limitations that are not
well-understood, routine, conventional activity in the field; or (b) simply
appends well-understood, routine, conventional activities previously known
to the industry, specified at a high level of generality, to the judicial
exception. 84 Fed. Reg. 56; see Alice, 573 U.S. at 217 (“[W]e consider the
elements of each claim both individually and ‘as an ordered combination’”
to determine whether the claim includes “significantly more” than the
ineligible concept) (citation omitted); see also BASCOM, 827 F.3d at 1350
(“[A]n inventive concept can be found in the non-conventional and non-
generic arrangement of known, conventional pieces.”).
We discern no additional element or combination of elements recited
in independent claims 1, 10, and 12 that contain any “inventive concept” or
add anything “significantly more” to transform the abstract concept into a
patent-eligible application. Alice, 573 U.S. at 221. We do not find any
portion of the Specification indicating that the claimed computer processor

specifically arising in the realm of computer networks.” DDR Holdings,
LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014).
7 See Amdocs Ltd. v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016).
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performs anything other than well-understood, routine, and conventional
functions, such as receiving data, processing data, and displaying/delivering
data. See Elec. Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1355
(Fed. Cir. 2016) (“Nothing in the claims, understood in light of the
[S]pecification, requires anything other than off-the-shelf, conventional
computer, network, and display technology for gathering, sending, and
presenting the desired information.”); see also Alice, 573 U.S. at 224–26
(receiving, storing, sending information over networks insufficient to add an
inventive concept); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355
(Fed. Cir. 2014) (“That a computer receives and sends the information over
a network—with no further specification—is not even arguably inventive.”).
Instead, Appellant’s claimed subject matter simply uses a generic
computer processor to recommend to a user literary objects based on their
similar plot structure. As noted above, the use of a generic computer does
not alone transform an otherwise abstract idea into patent-eligible subject
matter. As our reviewing court has observed, “after Alice, there can remain
no doubt: recitation of generic computer limitations does not make an
otherwise ineligible claim patent-eligible.” DDR, 773 F.3d at 1256 (citing
Alice, 573 U.S. at 223).
As noted above, the independent claims only recite steps that are
undertaken using generic computer functions that were well-understood,
routine, and conventional, individually and in combination. As such,
claims 1, 10, and 12 are devoid of an inventive concept. See Alice, 573 U.S.
at 217. “[T]he ‘inventive concept’ [under the second part of the Mayo/Alice
test] cannot be the abstract idea itself” and “Berkheimer . . . leave[s]
untouched the numerous cases from [the Federal Circuit] which have held
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claims ineligible because the only alleged ‘inventive concept’ is the abstract
idea.” Berkheimer v. HP Inc., 890 F.3d 1369, 1374 (Fed. Cir. 2018) (Moore,
J., concurring) (citations omitted). “It has been clear since Alice that a
claimed invention’s use of the ineligible concept to which it is directed
cannot supply the inventive concept that renders the invention ‘significantly
more’ than that ineligible concept.” BSG Tech LLC v. Buyseasons, Inc., 899
F.3d 1281, 1290 (Fed. Cir. 2018).
Therefore, the computer functions recited in claims 1, 10, and 12 are,
in fact, generic, and are met by numerous precedent establishing that using a
generic computer to expedite and automate processes traditionally
performed manually, or that are otherwise abstract, is a well-understood,
routine, and conventional use of such computers. See also, e.g., Intellectual
Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1321 (Fed. Cir. 2016)
(utilizing an intermediary computer to forward information); Bancorp
Services, L.L.C., 687 F.3d at 1278 (“The computer required by some
of Bancorp’s claims is employed only for its most basic function, the
performance of repetitive calculations, and as such does not impose
meaningful limits on the scope of those claims.”).
Therefore, we conclude that the cited claims’ steps, both individually
and as an ordered combination, do not provide an inventive concept. See 84
Fed. Reg. 56; see also Berkheimer, 881 F.3d at 1370 (“The limitations
amount to no more than performing the abstract idea of parsing and
comparing data with conventional computer components.”); Bancorp, 687
F.3d at 1278 (“[T]he use of a computer in an otherwise patent-ineligible
process for no more than its most basic function—making calculations or
computations—fails to circumvent the prohibition against patenting abstract
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ideas and mental processes.”). In many cases, “relying on a computer to
perform routine tasks more quickly or more accurately is insufficient to
render a claim patent eligible.” OIP Techs. Inc. v. Amazon.com, Inc., 788
F.3d 1359, 1363 (citing Alice, 573 U.S. at 224) (“[U]se of a computer to
create electronic records, track multiple transactions, and issue simultaneous
instructions” is not an inventive concept.); see also, e.g., Intellectual
Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1370 (Fed. Cir.
2015) (“[M]erely adding computer functionality to increase the speed or
efficiency of the process does not confer patent eligibility on an otherwise
abstract idea.”). Therefore, the functions recited in independent claims 1,
10, and 12 do not add meaningful limitations beyond generally linking the
abstract idea to the particular technological environment.
Because Appellant’s claims 1, 10, and 12 recite an abstract concept
without something “significantly more” under the second prong of the Alice
analysis, independent claims 1, 10, and 12 are directed to patent-ineligible
subject matter under 35 U.S.C. § 101 without reciting significantly more.
Because the additional limitations recited in the dependent claims 2,
5–9, and 11 further pertain to the processor performing conventional
operations to execute the method steps discussed above with respect to
independent claims 1, 10, and 12, they do not take the claims out of the
realm of patent ineligible subject matter. Accordingly, dependent claims 2,
5–9, and 11 are directed to patent ineligible subject matter 35 U.S.C. § 101.
VII. CONCLUSION
We affirm the Examiner’s rejections of claims 1, 2, and 5–12.
Further, we enter a new ground of rejection against claims 1, 2, and 5–12.
Appeal 2020-005017
Application 14/172,677

19
Rule 37 C.F.R. § 41.50(b) provides that, “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
Rule 37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new grounds of
rejection to avoid termination of proceedings (37 C.F.R. § 1.197 (b)) as to
the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the prosecution will be remanded to
the examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard
under 37 C.F.R. § 41.52 by the Board upon the same record. . . .

VIII. DECISION SUMMARY
In summary:
Claims
Rejected
35
U.S.C.
§
References
/Basis Affirmed Reversed
New
Ground
1, 10, 12 112 Indefiniteness 1, 10, 12
1, 2, 5–9 103 Yardley, Ray, Park 1, 2, 5–12

10–12 103 Ray, Yardley, Park 10–12
1, 2, 5–12 101 Eligibility 1, 2, 5–12
Overall
Outcome 1, 2, 5–12 1, 2, 5–12

Appeal 2020-005017
Application 14/172,677

20
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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED
37 C.F.R. § 41.50(b)