Bonnie Ray et al.

Patent Trials and Appeals Board

Dec 2, 2020

2020000677 (P.T.A.B. Dec. 2, 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.
12/824,772 06/28/2010 Bonnie K. Ray YOR920080493US1
(23162)
1492
48233 7590 12/02/2020
SCULLY, SCOTT, MURPHY & PRESSER, P.C.
400 GARDEN CITY PLAZA
SUITE 300
GARDEN CITY, NY 11530
EXAMINER
VANDERHORST, MARIA VICTORIA
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
12/02/2020 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):
IBMPAIRENotify@ssmp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BONNIE K. RAY, PEI SUN, and
JING MIN XU
Appeal 2020-000677
Application 12/824,772
Technology Center 3600
Before JASON V. MORGAN, MICHAEL J. STRAUSS, and
JEREMY J. CURCURI, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1, 3–8, 10–13, 15–20, 22–25, and 27–

1 We refer to the Specification, filed June 28, 2010 as amended June 3, 2013
(“Spec.”); Final Office Action, mailed May 31, 2018 (“Final Act.”); Appeal
Brief, filed October 31, 2018 (“Appeal Br.”); Examiner’s Answer, mailed
December 10, 2018 (“Ans.”); and Reply Brief, filed February 5, 2019
(“Reply Br.”).
2 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as International
Business Machines Corporation. Appeal Br. 2.
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31. See Final Act. 1. Claims 1, 13, and 25 are independent; claims 2, 9, 14,
21, and 26 are canceled. Appeal Br. 36–42, Claims Appendix. We have
jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.
CLAIMED SUBJECT MATTER
The claims are directed to online media recommendations based on
usage analysis. Spec., Title. Claim 1, reproduced below with formatting
altered and bracketed labels added, is illustrative of the claimed subject
matter:
1. A computer-implemented method of determining and presenting
information to on-line readers on how to read through books on-line
over the Internet, method comprising:
[(A)] capturing, at an Internet connected web server, data from a
multitude of users describing defined reading behavior of said users
through a multitude of on-line books accessible over the Internet via
the web server, via respective user interfaces, including capturing
said data over the Internet from client devices used by the users to
read through said online books,
[(B)] said reading behavior including online book reading pattern
data describing how the users read through each of the books on-
line based on captured user activity within said books;
[(C)] obtaining profile information for each of the users, said
profile information including user attributes;
[(D)] storing said on-line book reading pattern data and profile
information for the multitude of users; and
[(E)] for a current on-line reader navigating over the Internet to
the web server:
[(i)] capturing at the Internet connected web server, a
profile of the current on-line reader
[(ii)] recommending a selected one of the online books to
the current on-line reader,
[(iii)] identifying from said multitude of users, a similar
group of readers to the current on-line reader based on said
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profile information of the multitude of users and the profile
of the current on-line reader;
[(iv)] deriving a recommended reading pattern for the
current online reader for reading through the recommended
one of the online books based on said online book reading
pattern data captured from said similar group of readers; and
[(v)] the web server sending a communication to said
current on-line reader, over the Internet, via a current user’s
user interface, recommending said selected online book and
said reading pattern recommendation for reading through the
selected online book, wherein a programmed processing unit
performs said capturing, obtaining, storing, and deriving,
[(iv)(a)] wherein said deriving a book reading pattern
recommendation includes:
[(iv)(b)] structuring said selected online book as a
tree structure;
[(iv)(c)] identifying a reading objective of said
current on-line reader based on the profile of said
current on-line reader and historical data obtained from
the similar group of readers; and
[(iv)(d)] determining a characteristic online book
reading pattern for the similar group of readers by
mapping identified online reader purposes to the tree
structure for the selected online book.
Appeal Br. 36–37 (Claims App’x).
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Ho US 6,064,384 A1 May 16, 2000
Spiegel US 6,466,918 B1 Oct. 15, 2002
Ho US 2003/0210226 A1 Nov. 13, 2003
Chakrabarti US 7,542,951 Bl June 02, 2009
Palaniappan US 2010/0004944 A1 Jan. 07, 2010

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REJECTION
Claims 1, 3–8, 10–13, 15–20, 22–25, and 27–31 stand rejected under
35 U.S.C. § 101 as directed to non–statutory subject matter. Final Act. 2–9.
Claim 1, 3, 4, 6–8, 10, 11, 13, 15, 16, 18–20, 22, 23, 25, and 27–31
stand rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over
Ho and Spiegel. Final Act. 10–28.
Claims 12 and 24 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ho, Spiegel, and Chakrabarti. Final Act. 28–29.
Claims 5 and 17 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ho, Spiegel, and Palaniappan. Final Act. 29–31.

STANDARD OF REVIEW
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
OPINION
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments. We have considered in this Decision only those arguments
Appellant actually raised in the Briefs. Any other arguments Appellant
could have made but chose not to make in the Briefs are deemed to be
waived. See 37 C.F.R. § 41.37(c)(1)(iv).
To the extent consistent with our analysis herein, we adopt as our own
the findings and reasons set forth by the Examiner in (1) the action from
which this appeal is taken and (2) the Examiner’s Answer in response to
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Appellant’s Appeal Brief and concur with the conclusions reached by the
Examiner. We highlight the following for emphasis.

REJECTION UNDER 35 U.S.C. § 101
The Examiner’s Determinations
The Examiner determines “[t]he claim is directed to a method [of]
determining and presenting information to on-line readers on how to read
through books on-line over the Internet, which is considered an abstract
idea.” Final Act 2–3. Addressing each of the limitations, the Examiner
determines that, apart from electronically implementing the method using a
computer and the Internet, activities performed according to the steps of
various limitations correspond to abstract concepts of “an idea of itself.”[3]
Final Act. 3–4. In particular, the Examiner determines that, for a current
user, deriving a recommended reading pattern according to limitation
(E)(iv), including limitations (E)(iv)(a) through (E)(iv)(a), and sending

3 Although the previously recognized category of an idea of itself is not one
of the currently recognized categories, it is sufficient for the purposes of the
present appeal that the claimed concepts reasonably can be characterized as
falling within the still-recognized category of mental processes. See, e.g.,
MPEP § 2106.04(a)(2)(III):
The courts have used the phrase “an idea ‘of itself’” to
describe an idea standing alone such as an uninstantiated
concept, plan or scheme, as well as a mental process (thinking)
that “can be performed in the human mind, or by a human using
a pen and paper.” CyberSource Corp. v. Retail Decisions, Inc.,
654 F.3d 1366, 1372 . . . (Fed. Cir. 2011).
Characterizing the abstract idea as a mental process instead of an idea
standing alone (i.e., an idea of itself) does not constitute a change to the
thrust in the Examiner’s rejection.
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recommendations for a book and a reading pattern for reading through the
book, as reciting by limitation (E)(v), are activities similar to the collection
and comparing of information identified by the courts as abstract ideas. Id.
(citing Classen4; CyberSource; and Affinity Labs5). In addition to claim
elements determined to correspond to abstract concepts, the Examiner
identifies data capturing and data obtaining limitations (A), (B), and (C) as
reciting additional elements of gathering data representing insignificant
extra-solution activities. Id. at 4–5. The Examiner further determines that
the use of “[t]he terms ‘online’, ‘over the internet’, ‘client device’,
‘navigation’, . . . ‘at a web server,’ . . . [and] ‘via a current user’s user
interface’ . . . [are] merely instructions to implement the [identified] abstract
ideas . . . on a computer.” Id. at 5. According to the Examiner:
All the mentioned elements are the venue [in which] to apply the
abstract idea pointed above. They are considered insignificant
extra solution activity. The additional element(s) or combination
of elements in the claim(s), other than the abstract idea per se,
amount(s) to no more than: i) mere instructions to implement the
idea on a computer, and/or (ii) recitation of generic computer
structure that serves to perform generic computer functions . . .
that are well-understood, routine, and conventional activities
previously known to the pertinent industry.
Id. at 6. The Examiner summarizes, as follows:
In conclusion, the Examiner found that when construed, as
broadly as reasonable, claim 1 covers a method that can be
performed mentally or carried out by a human using pen and
paper. As such, claim 1 recites an abstract idea, which is patent-

4 Classen Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057 (Fed. Cir.
2011).
5 Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253 (Fed. Cir.
2016).
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ineligible subject matter. See CyberSource, 654 F.3d at 1373 (“A
method that can be performed by human thought alone is merely
an abstract idea and is not patent-eligible under § 101.”).
The additional elements do not provide significantly more to
the abstract idea as the additional elements do not:
Improve another technology or technical field; [i]mprove the
functioning of a computer itself; [a]dd a specific limitation other
than what is well-understood, routine, and conventional in the
field; [a]dd meaningful limitations that amount to more than
generally linking the use of the exception to a particular
technological environment; [or i]mprove computer related
technology by allowing computer performance of a function not
previously performable by a computer. For these reasons, claim
1 is ineligible.
Id. at 9 (formatting altered).
Appellant presents various arguments. Appeal Br. 5–16. We address
these arguments in the Analysis section, below.

Principles of Law
A. SECTION 101
Inventions for a “new and useful process, machine, manufacture, or
composition of matter” generally constitute patent-eligible subject matter.
35 U.S.C. § 101. However, the U.S. 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. Alice Corp. v. CLS Bank
Int’l, 573 U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-step framework, described in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66
(2012), and Alice. Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S. at 75–
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77). 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 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” (id. 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
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; 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.”). Having said that, the 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
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formula to a particular technological environment.” Id. at 191 (citing
Benson and Flook); see also, 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-
eligible application.” Alice, 573 U.S. at 221 (internal quotation marks
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.
B. USPTO SECTION 101 GUIDANCE
In January 2019, the U.S. Patent and Trademark Office (“USPTO”)
published revised guidance on the application of 35 U.S.C. § 101. See
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (“2019 Guidance”), updated by USPTO, October 2019
Update: Subject Matter Eligibility (available at https://www.uspto.gov/sites/
default/files/documents/peg_oct_2019_update.pdf) (“October 2019
Guidance Update”); see also October 2019 Patent Eligibility Guidance
Update, 84 Fed. Reg. 55,942 (Oct. 18, 2019) (notifying the public of the
availability of the October 2019 Guidance Update). “All USPTO personnel
are, as a matter of internal agency management, expected to follow the
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guidance.” 2019 Guidance, 84 Fed. Reg. at 51; see also October 2019
Guidance Update at 1.
Under the 2019 Guidance, we first look to whether the claim recites
the following:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activities 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)).
2019 Guidance, 84 Fed. Reg. at 52–55.
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
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
2019 Guidance, 84 Fed. Reg. at 56.

Analysis
STEP 2A, PRONG 1
Under step 2A, prong 1, of the 2019 Guidance, we first look to
whether the claim recites any judicial exceptions, including certain
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groupings of abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activities such as a fundamental economic practice, or
mental processes). 2019 Guidance, 84 Fed. Reg. at 52–54.
Limitation (A) recites, in relevant part, “capturing . . . data from a
multitude of users describing defined reading behavior of said users through
a multitude of . . . books . . . .” Appeal Br. 36, Claim App’x. Appellant’s
Specification indicates that the receiving step of limitation (A) entails data
gathering:
Referring to Fig. 1, a service web server 302 adapted to
implement usage recommendations for on-line users, is
coupled, via the internet, and programmed to capture various
profile information (e.g., traits) of an on-line user(s) 304. For
purposes of example, profile information is described for on-
line users such as, for example, user(s) who read books on-line,
in the case of the example on-line “book” usage
recommendation. The profile information captured, in this non-
limiting example, may include the types of books the on-line
reader likes to read (e.g., subject matter, fiction, non-fiction),
the age of the reader, the number of books read in the last six
months. The server also captures, via the internet, usage data
about the on-line books, e.g., the viewing or reading behavior
of that user on-line. For example, in the case of a group of on-
line readers, the server captures on-line user’s viewing or
reading behavior, such behavior captured may include but is
not limited to: how the user reads the on-line book, (e.g.,
traverse over content, skip over chapters or navigates to certain
chapters in a certain order, re-reads certain chapters, view or
skim images, etc.[)].
Spec. ¶ 16 (emphasis added). Other than the given examples (e.g., an order
in which a book is read), Appellant does not provide a definition for
“defined reading behavior” data.
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Capturing data, i.e., collecting or gathering data from users,
reasonably can be characterized as reciting a mental process, i.e., a mental
observation. Guidance Update 7, n.48. For example, a schoolteacher might
observe student behavior when given a reading assignment. The 2019
Guidance expressly recognizes mental processes, including observations that
can be performed in the human mind, as patent-ineligible abstract ideas.
2019 Guidance, 84 Fed. Reg. at 52. Accordingly, limitation (A) reasonably
can be characterized as reciting a judicial exception to patent-eligible subject
matter, specifically, a mental process.
Limitation (B) recites, in relevant part, “said reading behavior
including . . . book reading pattern data describing how the users read
through each of the books . . . based on captured user activity within said
books.” Appeal Br. 36, Claim App’x. Thus, limitation (B) further defines
the type of data collected but does not change our determination that
capturing data describing reading behavior (i.e., including book reading
pattern data defined by limitation (B)) reasonably can be characterized as
reciting a mental process, i.e., a mental observation.
Limitation (C) recites “obtaining profile information for each of the
users, said profile information including user attributes.” Id. Again,
capturing data, i.e., obtaining profile information reasonably can be
characterized as reciting a mental process, i.e., a mental observation.
Accordingly, limitation (C) reasonably can be characterized as reciting a
judicial exception to patent-eligible subject matter, specifically, a mental
process.
Limitation (D) recites “storing said . . . book reading pattern data and
profile information for the multitude of users.” Appeal Br. 36, Claim App’x.
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Storing information also constitutes a mental process such as making note of
a subject person’s behavior either (i) in the human mind (e.g., remembering
or memorizing) or (ii) using pen and paper. See Content Extraction &
Transmission LLC v. Wells Fargo Bank, Nat. Ass’n, 776 F.3d 1343, 1347
(Fed. Cir. 2014) (“The concept of data collection, recognition, and storage is
undisputedly well-known. Indeed, humans have always performed these
functions.”). The 2019 Guidance expressly recognizes such mental
processes as constituting patent-ineligible abstract ideas. 2019 Guidance, 84
Fed. Reg. at 52; October 2019 Guidance Update at 9 (“A claim that
encompasses a human performing the step(s) mentally with the aid of a pen
and paper recites a mental process”) (emphasis omitted). Therefore, storing
limitation (D) recites a patent-ineligible abstract idea.
Limitation (E) recites, in relevant part, “for a current . . . reader”
performing the steps of (i) “capturing . . . a profile of the current . . . reader”;
(ii) “recommending a selected one of the . . . books to the current . . .
reader”; (iii) “identifying from said multitude of users, a similar group of
readers to the current . . . reader based on said profile information of the
multitude of users and the profile of the current on-line reader”; (iv) deriving
a recommended reading pattern for the current . . . reader for reading
through the recommended one of the . . . books based on said . . . book
reading pattern data captured from said similar group of readers”; and (v) . . .
sending a communication to said current . . . reader . . . recommending said
selected . . . book and said reading pattern recommendation for reading
through the selected . . . book . . .” Appeal Br. 36, Claim App’x.
Limitation (E)(iv) is further defined by the wherein language of limitation
(E)(iv)(a) incorporating the steps of (b) “structuring said selected . . . book
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as a tree structure”; (c) “identifying a reading objective of said current . . .
reader based on the profile of said current . . . reader and historical data
obtained from the similar group of readers”; and (d) “determining a
characteristic . . . book reading pattern for the similar group of readers by
mapping identified online reader purposes to the tree structure for the
selected . . . book.” Id. at 36–37.
The step of capturing a profile as recited by limitation (E)(i) is
described as gathering profile information including “the types of books the
on-line reader likes to read (e.g., subject matter, fiction, non-fiction), the age
of the reader, the number of books read in the last six months.” Spec. ¶ 16.
As explained above, capturing data, i.e., collecting or gathering data from
users reasonably can be characterized as reciting a mental process, i.e., a
mental observation. Guidance Update 7, n.48. Accordingly, limitation
(E)(i) reasonably can be characterized as reciting a judicial exception to
patent-eligible subject matter, specifically, a mental process.
According to Appellant, the step of recommending a book as recited
by limitation (E)(ii) is described as selecting a book based on usage data of
previously identified readers having, for example, having similar profiles
and book reading characteristics. Appeal Br. 5–6 (citing Spec. ¶¶ 7, 8, 19,
24.) Recommending a book to read based on a person’s interests being
similar to other readers of the book is a common activity of librarians,
members of a book club, teachers, and others, that is accomplished in the
human mind as, for example, an evaluation and/or through the exercise of
judgment and opinion. The 2019 Guidance expressly recognizes such
mental processes as constituting patent-ineligible abstract ideas. 2019
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Guidance, 84 Fed. Reg. at 52. Therefore, book recommending limitation
(E)(ii) recites a patent-ineligible abstract idea.
The step of identifying users similar to the current user based on
respective profile information according to limitation (E)(iii) is described as
being implement by application of
a first mathematical algorithm . . . to identify a similar group(s)
of readers based on the prior profiles obtained and stored in step
[(C)] in addition to information including reading speed, reading
frequency, reading style, etc. using historical data for previous
books that were read. Possible mathematical algorithms can
include but are not limited to cluster analysis or collaborative
filtering.
Spec. ¶ 20. Thus, limitation (E)(iii) is the use of a mathematical calculation
to cluster data indicative of users’ profiles. Furthermore, grouping together
people and items based on particular characteristics (e.g., profiles) is a
mental process, i.e., a concept that can be performed in the human mind
including an observation evaluation, judgment, and/or opinion. The 2019
Guidance expressly recognizes mathematical concepts, including
mathematical calculations, and mental processes as patent-ineligible abstract
ideas. 2019 Guidance, 84 Fed. Reg. at 52. Accordingly, limitation (E)(iii)
reasonably can be characterized as reciting a judicial exception to patent-
eligible subject matter.
Deriving a reading pattern of the current reader according to limitation
(E)(iv) is described as deriving “a reading style (usage) recommendation . . .
by mapping each identified online reader purpose to the structure of the
book tree as defined in block 112.” Spec. ¶ 28. According to limitation
(E)(iv)(a), deriving a reading pattern includes
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[(iv)(b)] structuring said selected online book as a tree
structure;
[(iv)(c)] identifying a reading objective of said current on-line
reader based on the profile of said current on-line reader
and historical data obtained from the similar group of
readers; and
[(iv)(d)] determining a characteristic online book reading
pattern for the similar group of readers by mapping
identified online reader purposes to the tree structure for
the selected online book.
Appellant directs attention to paragraph 19 of the Specification in
support of limitation (E)(iv)(b) which is described as representing pages of a
book as leaf nodes, and parent and grandparent nodes respectively as
chapters and title pages of the book. Appeal Br. 6. Representing an
organized structure (e.g., pages of a book organized into chapters) using a
tree structure can be performed in the human mind and/or using pen and
paper, e.g., an observation. For example, genealogy often is expressed in the
form of a family tree. As such, limitation (E)(iv)(b) reasonably can be
characterized as reciting a mental process, i.e., a mental observation. 2019
Guidance, 84 Fed. Reg. at 52. Accordingly, limitation (E)(iv)(b) reasonably
can be characterized as reciting a judicial exception to patent-eligible subject
matter, specifically, a mental process.
In connection with limitation (E)(iv)(c) reciting identifying a reading
objective of a current on-line reader, Appellant directs attention to paragraph
24 of the Specification. Appeal Br. 7. The cited portion of Specification
describes
A second mathematical algorithm is now used to identify a
reason or an objective as to why the online reader is looking for
a book based on the online reader’s profile, reading speed,
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reading frequency, reading style, etc., using historical data
obtained from previous on-line books read by others that are
similar to the online reader's profile.
Spec. ¶ 24, ll. 5–8.
Thus, limitation (E)(iv)(c) is the use of a mathematical calculation
(i.e., the disclosed mathematical algorithm) to classify the data so as to
group the data into classification corresponding to a set of reasons or
objectives of a reader. See generally Spec. ¶¶ 24–26. Thus, limitation
(E)(iii) is the use of a mathematical calculation to classify data.
Furthermore, identifying a reason or an objective that a reader might have in
looking for a book based on books read by similar readers is a mental
process, i.e., a concept that can be performed in the human mind including
an observation, evaluation, judgment, and/or opinion. For example, a
librarian or researcher might be expected to determine a reasons a patron is
making a request in assisting the identification of a book, such as whether
for research purposes or pleasure reading. The 2019 Guidance expressly
recognizes mathematical concepts, including mathematical calculations, and
mental processes as patent-ineligible abstract ideas. 2019 Guidance, 84 Fed.
Reg. at 52. Accordingly, limitation (E)(iv)(c) reasonably can be
characterized as reciting a judicial exception to patent-eligible subject
matter, specifically, a mental process.
Limitation (E)(iv)(d) of determining a characteristic online reading
pattern for similar readers by mapping reader purposes to the tree structure
for the selected book is described as “a third mathematical technique” such
as “sequence cluster analysis, of Hidden Markov modeling.” Thus,
limitation (E)(iv)(d) is reasonably characterized as the use of a mathematical
calculation to analyze data. Furthermore, identifying patterns is a mental
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process (e.g., observation or evaluation) that can be performed in the human
mind. The 2019 Guidance expressly recognizes mathematical concepts,
including mathematical calculations, and mental processes as patent-
ineligible abstract ideas. 2019 Guidance, 84 Fed. Reg. at 52. Accordingly,
limitation (E)(iv)(d) reasonably can be characterized as reciting a judicial
exception to patent-eligible subject matter.
Limitation (E)(v) recites sending to the current on-line user a
recommendation of a book and a reading pattern for reading through the
book. Appellant describes this step as “provid[ing] usage recommendations
that can be presented to the current or subsequent on-line reader(s).” Spec.
¶ 16. Sending or transmitting information constitutes a mental process.
More specifically, transmitting data constitutes expressing an opinion that is
recognized as a mental process. 2019 Guidance, 84 Fed. Reg. at 52.
Accordingly, limitation (E)(iv)(d) reasonably can be characterized as
reciting a judicial exception to patent-eligible subject matter.
In addition to determining that each of the claimed limitations recites
an abstract idea, we note that our reviewing court has found claims to be
abstract ideas when they recited similar subject matter. Netflix, Inc. v. Rovi
Corp., 114 F. Supp. 3d 927, 944 (N.D. Cal. 2015), aff’d 670 F. App’x 704
(Fed. Cir. 2016) (affirming district court ruling that claims for making
viewing recommendations based on a user’s viewing history recited an
abstract idea); Intellectual Ventures I LLC v. J. Crew Grp., Inc., No. 6:16-
CV-196-JRG, 2016 WL 4591794, at *5 (E.D. Tex. Aug. 24, 2016), aff’d sub
nom. Intellectual Ventures I LLC v. FTD Companies, Inc., 703 F. App’x 991
(Fed. Cir. 2017) (affirming district court ruling that claims directed to
recommending products to customers based on purchase history recited an
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abstract idea); Personalized Media Commc’ns, LLC v. Amazon.Com, Inc.,
161 F. Supp. 3d 325, 338 (D. Del. 2015), aff’d sub nom. Personalized Media
Commc’ns, L.L.C. v. Amazon.com Inc., 671 F. App’x 777 (Fed. Cir. 2016)
(affirming district court ruling that claims directed to providing personalized
recommendations recited an abstract idea).
For the reasons discussed above, each of limitations (A) through (E)
recites one or more judicial exceptions to patent-eligible subject matter
under step 2A, prong 1, of the 2019 Guidance. See RecogniCorp, LLC v.
Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017) (“Adding one abstract
idea . . . to another abstract idea . . . does not render the claim non-
abstract.”).

STEP 2A, PRONG 2
Under step 2A, prong 2, of the 2019 Guidance, we next analyze
whether independent claims 1, 8, and 15 recite additional elements that
individually or in combination integrate the judicial exception into a
practical application. 2019 Guidance, 84 Fed. Reg. at 53–55. The
2019 Guidance identifies considerations indicative of whether an additional
element or combination of elements integrates the judicial exception into a
practical application, such as an additional element reflecting an
improvement in the functioning of a computer or an improvement to other
technology or technical field. Id. at 55; MPEP § 2106.05(a).
Addressing data capturing and obtaining limitations (A)6 through (C)
and (E)(i) and recommendation sending limitation (E)(v), even if we were to

6 Limitation (B) further defines the content of the data captured according to
limitation (A) without requiring any further or alternative actions or
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interpret these limitations narrowly such that the data stored according to
limitation (D) is stored in an electronic format and are received and
transmitted by a computer on an electronic data network, these limitations
still would not integrate the recited abstract ideas into a practical application.
Even under such a narrow interpretation, the steps of limitations (A), (B),
(C), (E)(i), and (E)(v) merely would constitute insignificant extra-solution
activity, i.e., pre-solution and post-solution activities. See also Final Act. 4–
5.
An example of pre-solution activity is a step of gathering data
for use in a claimed process, e.g., a step of obtaining
information about credit card transactions, which is recited as
part of a claimed process of analyzing and manipulating the
gathered information by a series of steps in order to detect
whether the transactions were fraudulent.
MPEP § 2106.05(g). As such, even if we consider limitations (A), (B), (C),
and (E)(i) as reciting an additional element under prong 2 rather than an
abstract idea under prong 1, those limitations at most recite the insignificant
extra-solution activity of gathering data. See also Final Act. 4–5 (finding
limitations (A)–(C) extra-solution activities).
Similarly, limitation (E)(v) can be characterized as merely being
directed to the insignificant extra-solution activity of transmitting data. In
particular, communicating or transmitting information is insignificant post-
solution activity. 2019 Guidance 55 n.31; see also MPEP § 2106.05(g);
buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014)
(computer receives and sends information over a network). As such, even if

processing. Accordingly, we consider limitations (A) and (B) as a single
step of capturing data as defined by those limitations.
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we consider it as an additional element under prong 2 rather than as reciting
an abstract idea under prong 1, limitation (E)(v) recites at most the
insignificant extra-solution activity of transmitting data.
In addition to the abstract concepts identified under prong 1,
limitation (E)(v) recites a processing unit. Furthermore, several of the steps
are couched in terms of a computer implementation including (i) online
readers and books; (ii) an Internet connected web server; (iii) user
interfaces; and (iv) capturing a profile of the current on-line user at the
Internet connected web server.
Addressing the additional elements, the Examiner finds the
Specification describes that computer system 200, corresponding to the
recited processing unit, is a generic general-purpose processing system or
computer. Final Act. 5. The Examiner determines the terms indicating
computer performance of certain actions merely implement the underlying
abstract concepts on a generic computer system. Id. “The additional
element(s) or combination of elements in the claim(s), other than the abstract
idea per se, amount(s) to no more than: i) mere instructions to implement the
idea on a computer, and/or (ii) recitation of generic computer structure that
serves to perform generic computer functions.” Id. at 6. The Examiner
determines:
the additional elements do not: Improve another technology or
technical field; Improve the functioning of a computer itself; . . .
[a]dd meaningful limitations that amount to more than generally
linking the use of the exception to a particular technological
environment; [or i]mprove computer related technology by
allowing computer performance of a function not previously
performable by a computer.
Id. at 9.
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Appellant contends:
In the present case, when the claims are considered as a whole,
in light of the specification, the claims are directed to using
computer and Internet technology in a unique way to derive and
to deliver a recommended reading pattern for a user to read
through a particular book on-line by identifying a similar group
of readers and determining how those similar readers read
through the book. Appellant[’s] claimed invention does not
merely recite the performance of some business practice known
from the pre-Internet world along with the requirement to
perform it on the Internet. Instead, the claimed solution is
necessarily rooted in computer and Internet technology in order
to overcome a problem specifically arising in the realm of
computer networks and Internet technology.
Appeal Br. 31 (citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d
1245 (Fed. Cir. 2014)). Appellant argues “The claims recite a number of
significant structural and technological limitations” involving an improved
computer technology. Id. at 32.
The Examiner responds, finding the claims merely require a computer
implementation of the underlying abstract concept of determining and
presenting information to readers on how to read through books:
Although, the . . . claims “includes particular recitation of
hardware that is used in performing the step”, the Courts have
held computer-implemented processes not to be significantly
more than an abstract idea (and thus ineligible) where the claim
as a whole amounts to nothing more than generic computer
functions merely used to implement an abstract idea, such as an
idea that could be done by a human analog (i.e., by hand or by
merely thinking).
Ans. 36.
We agree with the Examiner in finding Appellant’s contention
unpersuasive of reversible error. Simply introducing a computer into a
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claim does not “supply the necessary inventive concept.” Alice, 573 U.S. at
222. It is a tautology that a claim that includes a computer or steps executed
on a computer cannot be performed without a computer. Nonetheless, “mere
recitation of a generic computer cannot transform a patent-ineligible abstract
idea into a patent-eligible invention.” Id. at 223. That is, “[a]n inventive
concept that transforms the abstract idea into a patent-eligible invention
must be significantly more than the abstract idea itself, and cannot simply be
an instruction to implement or apply the abstract idea on a computer.”
BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F. 3d
1341, 1349 (Fed. Cir. 2016) (citing Alice, 573 U.S. at 223–24); see also
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1098 (Fed. Cir.
2016) (The inability of a human to perform each claim step “does not alone
confer patentability.”).
In sum, Appellant fails to provide sufficient evidence and we do not
ascertain support appearing in the Specification or otherwise that the
claimed methodology addresses a technical problem or improves the
operation of the computer platform implementing the actions required by the
method. Instead, the claims merely automate a manual method of
recommending a book and how the book might be used based on usage by
similarly situated prior readers as has been done in the past by librarians,
schoolteachers, book club members, and others.
We are also unpersuaded by Appellant’s argument that “[because the]
claims are patentable over the prior art . . . [the] additional element . . .
amount to significantly more than a judicial exception.” Appeal Br. 32. As
an initial matter, for the reasons discussed infra in connection with the
rejections under 35 U.S.C. § 103(a), Appellant’s argument is based on an
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unfounded premise, i.e., that the claims are patentable over the prior art.
Even if otherwise, a novel and non-obvious claim directed to a purely
abstract idea is, nonetheless, patent-ineligible. See Mayo, 566 U.S. at 90.
See also Diamond v. Diehr, 450 U.S. at 188–89 ( “The ‘novelty’ of any
element or steps in a process, or even of the process itself, is of no relevance
in determining whether the subject matter of a claim falls within the § 101
categories of possibly patentable subject matter.”).
For the reasons discussed above, Appellant does not persuade us that
claims 1, 13, and 25 are directed to an improvement in the functioning of a
computer or to any other technology or technical field. MPEP § 2106.05(a).
Nor does Appellant persuasively demonstrate that these claims are directed
to a particular machine or transformation, or that the claims add any other
meaningful limitations for the purposes of the analysis under Section 101.
MPEP §§ 2106.05(b), (c), (e). Accordingly, Appellant does not persuade us
that claims 1, 13, and 25 integrate the recited abstract ideas into a practical
application within the meaning of the 2019 Guidance. See 2019 Guidance,
84 Fed. Reg. at 52–55.
STEP 2B
Under the 2019 Guidance, 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 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.
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The Examiner finds the data access and gathering activities using the
recited technologies (i.e., computer, Internet, etc.) are “well understood,
routine and conventional computer task activit[ies].” Final Act. 4. In
support, the Examiner cites to paragraphs 15, 29, and 31 of the Specification
for describing conventional computer components and processing
capabilities used in performance of the claimed method. Id. at 6–7.
Furthermore, according to the Examiner, the courts have found the recited
processor, Internet, web server, together with the types of functionalities
required to be performed by those elements to be well-understood, routine,
and conventional. Final Act. 7–8 (citing Symantec7; buySAFE8; SAP9; OIP
Tech10).
Appellant argues the Examiner has failed to provide sufficient
evidence in support of the finding that the additional elements represent
well-understood, routine or conventional activity in accordance with Patent
Office Guidelines. Appeal Br. 33 (citing the Berkheimer Memorandum11).

7 Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1321, 1362
(Fed. Cir. 2016) (utilizing an intermediary computer to forward
information).
8 buySAFE, 765 F.3d at 1352–54 (explaining that “computers in Alice were
receiving and sending information over networks connecting the
intermediary to the other institutions involved, and the Court found the
claimed role of the computers insufficient.”)
9 Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, (Fed. Cir.
2015) (arranging, storing, and retrieving information “are well-understood,
routine, conventional activities previously known to the industry.”)
10 OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir.
2015) (“[R]elying on a computer to perform routine tasks more quickly or
more accurately is insufficient to render a claim patent eligible.”)
11 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/
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All claim elements, with the exception of the recited processing unit,
user interface, web server, Internet, and client devices, correspond to
concepts determined to be abstract ideas for the reasons discussed above in
connection with prong 1 of our analysis. These abstract concepts need not
be shown to be well-understood, routine, and conventional. If otherwise, our
analysis would need to include evidence that the entirety of the claimed
subject matter was, not merely old and obvious (as required of rejections
under 35 U.S.C. §§ 102, 103), but well-understood, routine, and
conventional to sustain a rejection under 35 U.S.C. § 101. This is not the
case. Thus, our analysis focuses on the additional elements.
Appellant provides insufficient evidence that the computer
components (i.e., processor, network interfaces, and storage medium) and
functionalities required to execute the claimed steps are anything other than
well-understood, routine, and conventional. Instead, Appellant’s disclosure
of a wide range of suitable processors12 combined with the lack of details
describing the user interface, web server, and client devices and absence of
implementation details of the recited functions (such as might have been
indicated by inclusion of a detailed flow chart depicting unconventional
computer operations and/or routines for performing each of the claimed
steps), persuades us that the omitted details are well-understood, routine, and
conventional. See Berkheimer Memorandum at 3 (explaining that a

files/documents/memo-berkheimer-20180419.PDF (“Berkheimer
Memorandum”).
12 See. e.g., Spec. ¶ 31 (“Computer system 200 includes a processing unit,
which houses a processor, memory and other systems components that
implement a general purpose processing system or computer that may
execute a computer program product.”)
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specification that describes additional elements “in a manner that indicates
that the additional elements are sufficiently well-known that the
specification does not need to describe the particulars of such additional
elements to satisfy 35 U.S.C. § 112(a)” can show that the elements are well
understood, routine, and conventional); Intellectual Ventures I LLC v. Erie
Indemnity Co., 850 F.3d 1315, 1331 (Fed. Cir. 2017) (“The claimed mobile
interface is so lacking in implementation details that it amounts to merely a
generic component (software, hardware, or firmware) that permits the
performance of the abstract idea, i.e., to retrieve the user-specific
resources.”).
Consistent with the Berkheimer Memorandum, the claims merely
recite generic computer components (e.g., computer devices having
processors, storage, user and network interfaces, and access to the Internet)
performing generic computing functions that are well-understood, routine,
and conventional. See Alice, 573 U.S. at 225 (the “use of a computer to
obtain data, adjust account balances, and issue automated instructions; all of
these computer functions are ‘well-understood, routine, conventional
activit[ies]’ previously known to the industry”) (alteration in original)
(quoting Mayo, 566 U.S. at 71–73); see also Benson, 409 U.S. at 65 (noting
that a “computer operates then upon both new and previously stored data.
The general-purpose computer is designed to perform operations under
many different programs.”); FairWarning, 839 F.3d at 1096 (noting that
using generic computing components like a microprocessor or user interface
does not transform an otherwise abstract idea into eligible subject matter);
Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324–
25 (Fed. Cir. 2016) (indicating components such as an “interface” are
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generic computer components that do not satisfy the inventive concept
requirement); MPEP § 2106.05(d)(II) (citing Alice and Mayo); accord
Berkheimer Memo 3–4. Thus, Appellant’s reliance on Berkheimer is
misplaced. Accordingly, for the reasons discussed, we find that the structure
and functioning of the additional elements are well-understood, routine, and
conventional.

ELIGIBILITY CONCLUSION
For the reasons discussed above, we determine that claims 1, 13, and
25 do not recite additional elements that, either individually or as an ordered
combination, amount to significantly more than the judicial exception within
the meaning of the 2019 Revised Guidance. 84 Fed. Reg. at 52–55; MPEP
§ 2106.05(d).
Accordingly, we sustain the Examiner’s rejection of independent
claims 1, 13, and 25 under 35 U.S.C. § 101 together with the rejection of
dependent claims 3–8, 10–12, 15–20, 22–24, and 27–31, which are not
argued separately with particularity.

REJECTION UNDER 35 U.S.C. § 103
The Examiner’s Determinations
The Examiner finds Ho’s disclosure of tracking an electronic book
reading pattern teaches the majority of the limitations recited by claim 1
including all or portions of limitations (A); (B); (D); and (E)(i), (iv), and (v).
Final Act. 10–15. Finding Ho does not expressly disclose particular claim
limitations (id. at 15–16), the Examiner applies Spiegel’s disclosure of
“identifying popular nodes within a browse tree . . . based on historical
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actions of online users, and for calling such nodes to the attention of users
during navigation of the browse tree” (Spiegel, Abstract) for teaching all or
portions of claim limitations (C) and (E)(ii) through (E)(iv). Final Act. 16–
20. The Examiner determines it would have been obvious to incorporate
Spiegel’s teachings into Ho’s tracking system “to provide book
recommendations and [a] recommended reading pattern to a group of similar
readers in order to promote or advertise featured books and categories which
truly reflect both the interests of the particular user and the interests of others
in a group.” Id. at 20 (citing Spiegel col. 3, ll. 39–48.).
Relevant to the instant appeal, the Examiner finds Ho’s analysis of
data produced during an online viewing session teaches deriving a reading
pattern for a current online reader for reading an online book. Id. at 13
(citing Ho ¶¶ 28, 38–39, 71, 73; Figs. 4, 5). According to the Examiner,
Ho’s use of the derived reading pattern to modify the contents and layout of
information in a book (e.g., ad insertions) teaches recommending a reading,
browsing, or viewing pattern. Id. (citing Ho ¶ 79). However, the Examiner
finds Ho fails to teach, inter alia, recommending an online book (limitation
(E)(ii)), determining a characteristic reading pattern for a similar group of
readers of the group of similar readers (limitation (E)(iv)(d)), and a
recommended reading pattern for the online reader based on the reading
pattern of the similar readers (limitation (E)(iv)). Id. at 15–16.
The Examiner finds Spiegel’s collecting of information about the
browsing and/or purchasing activities of users and identifying popular items
(e.g., books) based on user activity data teaches a recommended reading
pattern from a group of similar readers as recited by limitation (E)(iv). Id. at
17 (citing Spiegel col. 8, ll. 5–29; col. 10, ll. 37-67; col. 11, ll. 1–27). The
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Examiner further finds Spiegel’s elevation of item tree nodes based on
popularity levels teaches determining, a characteristic online book reading
pattern for the similar readers by mapping the book reading patterns of the
group of similar readers to the tree structure for the selected online book as
recited by limitation (E)(iv)(d). Final Act. 18–19 (citing Spiegel, col. 2, ll.
5–56,; col. 7, ll. 59-67; col. 8, ll. 1–22).
Appellant contends the combination of Ho and Spiegel fails to teach
limitation (E)(iii) (herein referred to as disputed limitation 1) and limitation
(E)(iv)(d) ) (herein referred to as disputed limitation 2). Appeal Br. 28–31.
We address Appellant’s arguments as follows.

Analysis
DISPUTED LIMITATION 1
Appellant contends, although Ho discloses deriving a recommended
reading pattern for the current reader and using browsing information to
modify the contents and layout of information in a book, there is no
disclosure of using browsing information to recommend a reading pattern
for another reader as recited by disputed limitation 1 (i.e., (E)(iv)). Appeal
Br. 28–29. Appellant argues Spiegel is also deficient, disclosing rearranging
nodes of a web site based on browsing information and recommending what
books to read, but not recommending how to read through a particular book.
Id.at 29.
The Examiner responds, finding “[t]he specification is vague about
how recommendations for a particular pattern are determined.” Ans. 37.
Applying a broad but reasonable interpretation, the Examiner explains that
Ho’s analysis of how a reader browses a virtual book and using the analysis
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to fine tune e-advertisement insertions into pages of a book teaches or
suggests recommending a reading pattern. Id. at 41.
Appellant’s argument is unpersuasive of reversible Examiner error. In
particular, Appellant fails to explain why rearranging a page layout so as to
encourage a desired way for a reader to read through a page does not at least
suggest recommending the desired reading pattern. That is, by rearranging
how or where an advertisement is displayed, a reader is urged into a
particular reading pattern thereby suggesting that reading pattern.
Accordingly, under a broad but reasonable interpretation, Ho’s layout
modification teaches or suggests recommending a reading pattern as recited
by limitation 1.
DISPUTED LIMITATION 2
Appellant contends the Examiner misreads disputed limitation 2,
which was amended to require determining a characteristic online book
reading pattern for the similar group of readers by mapping identified online
reader purposes to the tree structure for the selected online book. Appeal Br.
29. The Examiner responds, finding “Spiegel discloses elevat[ing] items
based on popularity levels [Examiner interprets as identified similar book
readers having similar reading objective], 2:5–56, 7:59–67 and 8:1–22.”
Ans. 50.
Appellant’s contention is unpersuasive of reversible Examiner error.
Appellant directs attention to paragraph 29 of the Specification in support of
disputed limitation 2. The cited portion of the Specification, rather than
using the claim term “reader purposes” as recited by disputed limitation 2,
describes deriving a reading pattern of readers “having a similar reading
objective.” Spec. ¶ 29. We note that the text of preceding paragraph 28
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suggests paragraph 29 describes how “a reading style (usage)
recommendation is derived by mapping each identified online reader
purpose to the structure of the book tree as defined in block 112.” Spec.
¶ 28. Thus, a reasonable interpretation of a reader purpose is a reading
objective of the reader or readers.
Other than contend the prior art is deficient, Appellant fails to explain
why Speigel’s elevation of items based on popularity levels does not result
in the identification of similar readers having similar reading objectives
thereby teaching or suggesting the argued feature of disputed limitation 2.
Such argument constitutes little more than a general denial that fails to
address the Examiner’s findings and is, therefore, insufficient. See 37
C.F.R. § 41.37(c)(1)(iv) (“A statement [that] merely points out what a claim
recites will not be considered an argument for separate patentability of the
claim.”); In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that
the Board reasonably interpreted Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art.”). Accordingly, based on the weight of the evidence of record, we
find the combination of Ho and Spiegel teaches or suggests determining a
characteristic online book reading pattern for the similar group of readers by
mapping identified online reader purposes to the tree structure for the
selected online book.
OBVIOUSNESS CONCLUSION
For the reasons discussed above, we sustain the Examiner rejection of
independent claim 1 as obvious over the combination of Ho and Spiegel
under 35 U.S.C. § 103(a). Because claim 1 is representative of independent
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claims 13 and 25 (Appeal Br. 25), for the same reasons, we sustain the
rejection of those independent claim under 35 U.S.C. § 103(a) together with
the rejections of dependent claims 3–8, 10–12, 15–20, 22–24, and 27–31,
which are not argued separately with particularity.
DECISION
We affirm the Examiner’s rejection of claims 1, 3–8, 10–13, 15–20,
22–25, and 27–31 under 35 U.S.C. § 101.
We affirm the Examiner’s rejection of claims 1, 3, 4, 6–8, 10, 11, 13,
15, 16, 18–20, 22, 23, 25, and 27–31 under pre-AIA 35 U.S.C. § 103(a) over
Ho and Spiegel.
We affirm the Examiner’s rejection of claims12 and 24 under 35
U.S.C. § 103(a) over Ho, Spiegel, and Chakrabarti.
We affirm the Examiner’s rejection of claims 5 and 17 under 35
U.S.C. § 103(a) over Ho, Spiegel, and Palaniappan.
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DECISION SUMMARY
Claims
Rejected
35 U.S.C. § References/Basis Affirmed Reversed
1, 3–8, 10–13,
15–20, 22–25,
27–31
101 Eligibility 1, 3–8, 10–13,
15–20, 22–25,
27–31

1, 3, 4, 6–8,
10, 11, 13, 15,
16, 18–20, 22,
23, 25, 27–31
103(a) Ho, Spiegel 1, 3, 4, 6–8,
10, 11, 13, 15,
16, 18–20, 22,
23, 25, 27–31

12, 24 103(a) Ho, Spiegel,
Chakrabarti
12, 24
5, 17 103(a) Ho, Spiegel,
Palaniappan
5, 17
Overall
Outcome
1, 3–8, 10–13,
15–20, 22–25,
27–31

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