Christopher Armstrong et al.

Patent Trials and Appeals Board

Sep 30, 2019

14461587 - (D) (P.T.A.B. Sep. 30, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/461,587 08/18/2014 Christopher Armstrong 337334-US-CNT 7654
69316 7590 09/30/2019
MICROSOFT CORPORATION
ONE MICROSOFT WAY
REDMOND, WA 98052
EXAMINER
AL HASHEMI, SANA A
ART UNIT PAPER NUMBER
2156
NOTIFICATION DATE DELIVERY MODE
09/30/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
chriochs@microsoft.com
usdocket@microsoft.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CHRISTOPHER ARMSTRONG, ALAN KEISTER,
LARK DUNHAM, JENNIFER GRANITO, STEVEN GREENBERG,
RAKESH AGRAWAL, MICHAEL SOMMERS, and CAROL A. GLOVER
____________

Appeal 2018-008683
Application 14/461,587
Technology Center 2100
____________

Before JOSEPH L. DIXON, JAMES W. DEJMEK, and
STEPHEN E. BELISLE, Administrative Patent Judges.

BELISLE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 Throughout this Decision, we use the word “Appellant” to refer to
“applicant” as defined in 37 C.F.R. § 1.42 (2016). Appellant identifies the
real party in interest as Microsoft Technology Licensing LLC. App. Br. 3.
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STATEMENT OF THE CASE
The Claimed Invention
Appellant’s invention generally relates to “indicating recent content
publication activity by a user” in an online computer network environment.
Spec. 1:10–11.
According to the Specification, the context for Appellant’s invention
is, for example, an instant messaging (“IM”) environment, such as the well-
known instant messaging platform historically operated by America Online
(“AOL”). See, e.g., Spec. 11:17–27, Fig. 1. In an exemplary embodiment,
if a co-user engages in publication activity, “an icon indicating that [the]
update took place may be displayed proximate to a screen name associated
with the co-user in a list of co-users (e.g., an AOL or AIM Buddy List).”
Spec. 11:21–24. By doing so, “other users in a social network may be
notified of a co-user’s recent content publication activity without the co-user
having to independently contact all of the users in the social network.”
Spec. 11:24–27. According to the Specification, “recent content publication
activity” includes many forms of online activity, including updating
availability status, updating a user profile, adding photographs, creating a
new journal or blog entry, posting a new message, etc. See, e.g., Spec. 13–
20.
Claim 1, reproduced below, is representative of the subject matter on
appeal:
1. A method, comprising:
accessing an online identifier for each of a plurality of co-
users who populate a list, inclusion in which is directed by an
online publisher;
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selecting an identifier of a particular co-user from the list;
and
modifying an online identifier of the online publisher so as
to indicate that the online publisher has recently engaged in
content publication activity when
a determination is made that the online publisher
wants to share with the particular co-user recent content
publication activity, based at least in part on a publication
preference of the online publisher, and
the particular co-user views either a profile of the
online publisher or a feed of recent content publication
activity of co-users associated with the particular co-user.
App. Br. 20 (Claims Appendix).

The Applied Reference
The Examiner relies on the following reference as evidence of
unpatentability of the claims on appeal:
Sample US 2006/0230061 A1 Oct. 12, 2006

The Examiner’s Rejections
The Examiner made the following rejections of the claims on appeal:
Claims 1–20 stand rejected under pre-AIA 35 U.S.C. § 102(e) as
being unpatentable over Sample. Final Act. 2–6.
Claims 1–20 stand rejected under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter. Ans. 3–8. The Examiner issued this
rejection as a new ground of rejection in the Answer.

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ANALYSIS2
Anticipation Rejection
Appellant disputes the Examiner’s finding that Sample anticipates
claims 1–20, including independent claims 1, 12, 13, 14, 18, and 19. App.
Br. 12–18; Reply Br. 4–6. In particular, as to all independent claims,
Appellant argues Sample does not disclose “accessing an online identifier
for each of a plurality of co-users who populate a list” (“Accessing
Limitation”). App. Br. 16–17. As to independent claims 1, 13, 14, 18,
and 19, Appellant argues Sample does not disclose “modifying an online
identifier of the online publisher so as to indicate that the online publisher
has recently engaged in content publication activity” (“Modifying
Limitation”). App. Br. 17–18.
Sample generally relates to “enabling a user to control a view of
content recently posted [online] by a related content publisher, and enabling
the content publisher to control which co-users are able to view recently
published content.” Sample ¶ 2. In Sample, users of an online social
network service interact via client user interface 320 shown in Figure 4,
reproduced below. Sample ¶ 45.

2 Throughout this Decision, we have considered Appellant’s Appeal Brief
filed September 12, 2018 (“App. Br.”); Appellant’s Reply Brief filed
August 29, 2018 (“Reply Br.”); the Examiner’s Answer mailed June 29,
2018 (“Ans.”); the Final Office Action mailed May 26, 2016 (“Final Act.”);
and Appellant’s Specification filed August 18, 2014 (“Spec.”).
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Figure 4 of Sample shows a screen shot of client user interface 320,
illustrating a sample home page with vitality section 322 for a receiving user
of an online social network service. Sample ¶ 12. Vitality section 322
“displays the most recent posting of selected information from related co-
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users.” Sample ¶ 45. “Upon logon or other event, a summary of content
updates is provided to each receiving user that meets each content
publisher’s required relationship.” Sample, Abstract. “[T]he content
updates are delivered according to a selected delivery method from those
content publishers that meet the relationship requirements of the receiving
users.” Id. The means of delivering updates include “email, instant
message, RSS feeds, and the like.” Id.
Accessing Limitation
The Examiner finds Sample discloses different group names such as
“family” and “classmates,” and finds this corresponds to identifying a
plurality of co-users in a list, and “clearly disclose[s] the relationship degree
to the publisher and what kind of [information] a co-user can access.”
Ans. 8–9 (citing Sample ¶¶ 54–55 (“For desired co-users, the receiving user
may specify relationship categories, such as family, classmate, fishing
buddy, and the like.”), Fig. 4). The Examiner also finds Sample discloses
“[a] user can control which group of co-users to access and share blogs
posted by the user,” and “the specified group of co-user[s] corresponds to [a]
co-users identifier list as shown in Fig. 4, wherein ‘Don Donbla’ and ‘neal’
under [C]ontacts are the co-user[s] identifier list.” Ans. 9 (citing Sample
¶ 44 (“[A] publishing user can control which group(s) of co-users can access
the publishing user’s blog.”)). The Examiner further finds these explicit
disclosures in Sample describe “accessing an online identifier for each of a
plurality of co-users who populate a list,” as recited, for example, in claim 1.
Appellant responds Sample does not disclose “any list populated by a
plurality of co-users,” and “[a]s a result, any alleged accessing of any
alleged online identifier(s) supposedly taught by Sample . . . is not ‘of a
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plurality of co-users who populate a list.’” App. Br. 16. Appellant further
responds “[m]erely moving a member out of a contact list, for example, is
not accessing ‘for each of a plurality of co-users,’” and “is not accessing any
identifier,” but rather “controlling membership in a list is more akin to
moving identifiers.” Reply Br. 6. We find Appellant’s arguments
unpersuasive of Examiner error.
“A patent claim is anticipated if a single prior art reference expressly
or inherently discloses every limitation of the claim.” DDR Holdings, LLC
v. Hotels.com, L.P., 773 F.3d 1245, 1252 (2014). Additionally, to anticipate,
a prior art reference must disclose more than “multiple, distinct teachings
that the artisan might somehow combine to achieve the claimed invention.”
Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008);
see also In re Arkley, 455 F.2d 586, 587 (CCPA 1972) (“[T]he [prior art]
reference must clearly and unequivocally disclose the claimed [invention] or
direct those skilled in the art to the [invention] without any need for picking,
choosing, and combining various disclosures not directly related to each
other by the teachings of the cited reference.”). But anticipation “is not an
‘ipsissimis verbis’ test.” In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990).
Here, as noted by the Examiner, Sample’s Figure 4 discloses, inter
alia, co-users “Don Donbla” and “neal” populating a list entitled “Yahoo!
360° Friends,” and as broadly claimed, “accessing” each of these “online
identifiers” or screen names at least for purposes of identifying them as part
of the list, and for purposes of receiving the “[l]atest from my friends,”
including both “Don Donbla” and “neal.” See Ans. 8–9 (citing, e.g.,
Sample ¶¶ 44, 54–55, Fig. 4); Spec. 12:7 (“A screen name (or an identifier)
is provided to identify the user.”). Appellant does not sufficiently define
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“accessing an online identifier,” other than to argue Sample does not
disclose it, and does not substantively respond to the Examiner’s reliance on
Figure 4, particularly the “Yahoo! 360° Friends” listing with updates shown.
See Reply Br. 6; App. Br. 16–17. Based on the foregoing, we find Appellant
does not show persuasively that the Examiner erred in finding that Sample
discloses “accessing an online identifier for each of a plurality of co-users
who populate a list,” as recited in claim 1.
Modifying Limitation
The Examiner finds Sample discloses that “co-user identifiers can be
changed from the group list of recipient[s] based on the relationship degree,”
and “some names may be added or deleted from a group based on the
relationship to the user.” Ans. 9. The Examiner also finds Sample discloses
“the user can control and update the receipt of a post and access to the user
posts.” Ans. 9–10. The Examiner further finds these explicit disclosures in
Sample describe “modifying an online identifier of the online publisher so as
to indicate that the online publisher has recently engaged in content
publication activity,” as recited, for example, in claim 1.
Appellant responds that in Sample “no alleged online identifier (or an
alleged online identifier from the claimed list) changes,” rather
“‘notifications about new information posted by users’ are presented.” App.
Br. 18 (“No alleged online identifier is modified in the vitality module
322.”). Appellant also responds that adding or removing names from a
contact list “is neither ‘modifying an online identifier’ nor ‘. . . so as to
indicate that an online publisher has recently engaged in content publication
activity,’” and argues “this alleged disclosure does not render the subject
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features of independent claims 1, 12, 13, 14, 18, and 19 obvious [sic:
anticipated].” We find Appellant’s arguments persuasive.
Here, the Examiner does not provide sufficient evidence or technical
reasoning to show Sample expressly or inherently discloses “modifying an
online identifier of the online publisher so as to indicate that the online
publisher has recently engaged in content publication activity.” Indeed, the
Examiner makes no express findings as to how Sample’s modifying (adding
or removing) identifiers in a list discloses modifying such identifiers so as to
indicate recent content publication activity, and to the extent that the
Examiner affords no weight to the “indicating” limitation, the Examiner also
makes no express statements in this regard.
Accordingly, constrained by the record before us,3 we do not sustain
the Examiner’s rejection under pre-AIA 35 U.S.C. § 102(e) of independent
claim 1. Additionally, we do not sustain the Examiner’s rejection under pre-
AIA 35 U.S.C. § 102(e) of claim 20, which depends therefrom. For similar
reasons, we do not sustain the Examiner’s rejections under pre-AIA
35 U.S.C. § 102(e) of independent claims 12,4 13, 14, 18, and 19, which

3 Sample shows in Figure 4 the “[l]atest from my friends,” including a blog
post snippet shown adjacent to user “Don” and another blog post snippet
shown adjacent user “neal,” both of which users are shown in an adjacent
contact list. Figure 4 also shows these users with emoji or emoticons
adjacent their usernames. Because the Examiner’s art rejection is based only
on anticipation, we do not opine herein on whether these or other features in
Sample would teach or at least fairly suggest (render obvious) any of
claims 1–20. Although the Board is authorized to reject claims under
37 C.F.R. § 41.50(b), no inference should be drawn when the Board elects
not to do so. See MPEP § 1213.02.
4 In the Final Action, the Examiner noted “Claim 12 which is an
independent claim was not amended the same way all other independent
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recite commensurate limitations, and claims 2–11 and 15–17, which depend
therefrom.
Section 101 Rejection
Appellant disputes the Examiner’s conclusion that the pending claims
are directed to patent-ineligible subject matter. Reply Br. 2–4. In particular,
Appellant argues the claims “encompass a specific solution to an Internet-
centric problem relating to online publishing amongst friends and contacts,”
and the claimed invention “is a solution to a ‘challenge particular to the
Internet’, which has been found both not abstract and patent eligible.”
Reply Br. 2 (citing DDR Holdings). Appellant also argues the Examiner
oversimplifies the claims by concluding the steps of accessing an online
identifier, selecting an identifier, and modifying an online identifier to
indicate recent content publication activity (a) constitute an “‘abstract idea
of displaying an indication of published content based upon a distribution
list,’” and (b) amount to merely “collect[ing] information, analyz[ing] that
information, and display[ing] it.” Reply Br. 3; see Ans. 4. Rather,
Appellant asserts the Examiner ignores “the expressly recited features of

claims were,” but nevertheless proceeded to reject claim 12 as part of an
omnibus rejection of all independent claims. Final Act. 2–3, 6. Appellant
notes that claim 12 recites “modifying the selected identifier,” whereas
claim 1 recites “modifying an online identifier,” and argues the Examiner
erred by not addressing this different language, but Appellant stops short of
explaining any alleged difference. App. Br. 14–15; Reply Br. 4–6.
However, in the Reply Brief, Appellant also argues Sample does not disclose
“modifying an online identifier,” and thus Sample does not anticipate any of
the independent claims, including claim 12. See Reply Br. 6. Nevertheless,
given we do not sustain the Examiner’s § 102(e) rejection of any claim
based on the present record, we find the Examiner’s treatment of claim 12
harmless and moot.
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modifying online identifiers based on two conditions precedent.” Reply
Br. 3. We find Appellant’s arguments unpersuasive.
The Supreme Court’s two-step framework guides our analysis of
patent eligibility under 35 U.S.C. § 101. Alice Corp. v. CLS Bank Int’l,
573 U.S. 208, 217 (2014). In addition, the Office recently published revised
guidance for evaluating subject matter eligibility under 35 U.S.C. § 101,
specifically with respect to applying the Alice framework. USPTO, 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) (“Office Guidance”). If a claim falls within one of the statutory
categories of patent eligibility (i.e., a process, machine, manufacture, or
composition of matter) then the first inquiry is whether the claim is directed
to one of the judicially recognized exceptions (i.e., a law of nature, a natural
phenomenon, or an abstract idea). Alice, 573 U.S. at 217. As part of this
inquiry, we must “look at the ‘focus of the claimed advance over the prior
art’ to determine if the claim’s ‘character as a whole’ is directed to excluded
subject matter.” Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d
1253, 1257 (Fed. Cir. 2016). Per Office Guidance, this first inquiry has two
prongs of analysis (i) does the claim recite a judicial exception (e.g., an
abstract idea), and (ii) if so, is the judicial exception integrated into a
practical application. 84 Fed. Reg. at 54. Under the Office Guidance, if the
judicial exception is integrated into a practical application, see infra, the
claim is patent eligible under § 101. 84 Fed. Reg. at 54–55. If the claim is
directed to a judicial exception (i.e., recites a judicial exception and does not
integrate the exception into a practical application), the next step is to
determine whether any element, or combination of elements, amounts to
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significantly more than the judicial exception. Alice, 573 U.S. at 217;
84 Fed. Reg. at 56.
Here, we conclude Appellant’s claims recite an abstract idea because
they recite mental processes. If a claim, under its broadest reasonable
interpretation, covers performance in the mind but for the recitation of
generic computer components, then it is still in the mental processes
category unless the claim cannot practically be performed in the mind. See
Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed.
Cir. 2016) (“[W]ith the exception of generic computer-implemented steps,
there is nothing in the claims themselves that foreclose them from being
performed by a human, mentally or with pen and paper.”); see also
CyberSource Corp., 654 F.3d at 1375, 1372 (holding that the incidental use
of “computer” or “computer readable medium” does not make a claim
otherwise directed to process that “can be performed in the human mind, or
by a human using a pen and paper” patent eligible); Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71 (2012) (explaining mental
processes are not patentable); 84 Fed. Reg. at 52–53 nn.14–15.
More specifically, Appellant’s claims generally are directed to
determining recent content publication activity of publishers in the context
of user-publishers in an Internet or online environment. This is consistent
with how Appellant describes the claimed invention. See Spec. 1:10–11
(“This application relates to indicating recent content publication activity by
a user.”); see also, e.g., Spec. 1:20–21 (describing principle of invention as
“recent content publication activity by a publishing online identity is
indicated”); Spec. 8:7–8 (describing performing the step of “[d]etermining
that the publishing online identity has engaged in recent content publication
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activity”). Consistent with our Guidance and case law, we conclude that
determining recent content publication activity of publishers is a mental
process, namely, an observation, evaluation, and judgment, and, therefore,
an abstract idea. See 84 Fed. Reg. at 52; Content Extraction & Transmission
v. Wells Fargo Bank, N.A., 776 F.3d 1343, 1347 (Fed. Cir. 2014)
(concluding that a concept that can be performed in the human mind like
“1) collecting data, 2) recognizing certain data within the collected data set,
and 3) storing that recognized data in a memory” is an abstract idea);
see also Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353–54
(Fed. Cir. 2016) (explaining that “analyzing information by steps people go
through in their minds” is a mental process within the abstract idea category
and concluding claims directed to “collecting information, analyzing it, and
displaying certain results of the collection and analysis” were abstract);
accord In re BRCA1 & BRCA2-Based Hereditary Cancer Test Patent Litig.,
774 F.3d 755, 763 (Fed. Cir. 2014) (concluding that the concept of
“comparing BRCA sequences and determining the existence of alterations,”
like comparing past and recent profiles or postings and determining the
existence of recent activity or alternations, is an “abstract mental process”).
Claim 1 is reproduced below with the claim limitations that recite
determining recent content publication activity of publishers in the context
of user-publishers in an Internet or online environment in italics:
1. A method, comprising:
accessing an online identifier for each of a plurality of co-
users who populate a list, inclusion in which is directed by an
online publisher;
selecting an identifier of a particular co-user from the list;
and
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modifying an online identifier of the online publisher so
as to indicate that the online publisher has recently engaged in
content publication activity when
a determination is made that the online publisher
wants to share with the particular co-user recent content
publication activity, based at least in part on a publication
preference of the online publisher, and
the particular co-user views either a profile of the
online publisher or a feed of recent content publication
activity of co-users associated with the particular co-user.
App. Br. 20 (Claims Appendix).
More particularly, the concept of determining recent content
publication activity of publishers in the context of user-publishers in an
Internet or online environment comprises (i) identifying co-users (i.e., the
claimed step of “accessing an online identifier for each of a plurality of co-
users who populate a list, inclusion in which is directed by an online
publisher”); (ii) selecting a co-user (i.e., the claimed steps of “selecting an
identifier of a particular co-user from the list” and “when” condition of
“view[ing] either a profile of the online publisher or a feed of recent content
publication activity of co-users associated with the particular co-user”);
(iii) determining whether a co-user-publisher wants to share recent content
publication activity with other co-users (i.e., the claimed “when” condition
of “a determination is made that the online publisher wants to share with the
particular co-user recent content publication activity, based at least in part on
a publication preference of the online publisher”); and (iv) determining
whether a co-user-publisher has recent content publication activity (i.e., the
claimed step of “indicat[ing] that the online publisher has recently engaged
in content publication activity” embedded within the step of modifying an
online identifier).
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Because the claim recites a judicial exception, we next determine
whether the claim integrates the judicial exception into a practical
application. 84 Fed. Reg. at 54. To determine whether the judicial
exception is integrated into a practical application, we identify whether there
are “any additional elements recited in the claim beyond the judicial
exception(s)” and evaluate those elements to determine whether they
integrate the judicial exception into a practical application. 84 Fed. Reg. at
54–55 (emphasis added); see also Manual of Patent Examining Procedure
(“MPEP”) § 2106.05(a)–(c), (e)–(h) (9th ed. Rev. 08.2017, Jan. 2018).
Here, we find the additional limitation(s) do not integrate the judicial
exception into a practical application. More particularly, the claims do not
recite (i) an improvement to the functionality of a computer or other
technology or technical field (see MPEP § 2106.05(a)); (ii) a “particular
machine” to apply or use the judicial exception (see MPEP § 2106.05(b));
(iii) a particular transformation of an article to a different thing or state
(see MPEP § 2106.05(c)); or (iv) any other meaningful limitation
(see MPEP § 2106.05(e)). See 84 Fed. Reg. at 55. Rather, the step of
presenting the results of determining recent content publication activity of
publishers, namely, “modifying an online identifier of the online publisher”
to indicate such activity, is the type of extra-solution activities (i.e., in
addition to the judicial exception) the courts have determined insufficient to
transform judicially excepted subject matter into a patent-eligible
application. See MPEP § 2106.05(g); see Elec. Power, 830 F.3d at 1355
(explaining that “selecting information, by content or source, for collection
analysis, and display does nothing significant to differentiate a process from
ordinary mental processes”); Elec. Power, 830 F.3d at 1354 (recognizing
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“that merely presenting the results of abstract processes of collecting and
analyzing information, without more (such as identifying a particular tool for
presentation), is abstract as an ancillary part of such collection and
analysis”); Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Can.,
771 F. Supp. 2d 1054, 1065 (E.D. Mo. 2011) aff’d, 687 F.3d 1266 (Fed.
Cir. 2012) (explaining that “storing, retrieving, and providing data . . . are
inconsequential data gathering and insignificant post solution activity”).
Contrary to Appellant’s arguments (see, e.g., Reply Br. 2), the claims
are not directed to a technological improvement. Although Appellant
characterizes the claimed invention as “a specific solution to an Internet-
centric problem relating to online publishing amongst friends and contacts,”
Appellant does not identify the technological “problem” being solved.
See Reply Br. 2–4. The purported improvement or “specific solution”
(determining and indicating recent content publication activity of
publishers), however, relates to the abstract idea, and does not improve a
computer, technology, or a technical field. See McRO, Inc. v. Bandai
Namco Games Am., Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016)
(“We . . . look to whether the claims in these patents focus on a specific
means or method that improves the relevant technology or are instead
directed to a result or effect that itself is the abstract idea and merely invoke
generic processes and machinery.”) (citing Enfish, LLC v. Microsoft Corp.,
822 F.3d 1327, 1336 (Fed. Cir. 2016)). Further, Appellant does not explain
how the “online” interactions with the Internet recited in claim 1, for
example, are not merely the routine or conventional use of the Internet. See
DDR Holdings, 773 F.3d at 1258–59 (“We caution, however, that not all
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claims purporting to address Internet-centric challenges are eligible for
patent.”).
For at least the foregoing reasons, the claims do not integrate the
judicial exception into a practical application.
Because we determine the claims are directed to an abstract idea or
combination of abstract ideas, we analyze the claims under step two of Alice
to determine if there are additional limitations that individually, or as an
ordered combination, ensure the claims amount to “significantly more” than
the abstract idea. Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S. at 72–
73, 77–79). As stated in the Office Guidance, many of the considerations to
determine whether the claims amount to “significantly more” under step two
of the Alice framework are already considered as part of determining
whether the judicial exception has been integrated into a practical
application. 84 Fed. Reg. at 56. Thus, at this point of our analysis, we
determine if the claims add a specific limitation, or combination of
limitations, that is not well-understood, routine, conventional activity in the
field, or simply appends well-understood, routine, conventional activities at
a high level of generality. 84 Fed. Reg. at 56.
Here, Appellant’s claims do not recite specific limitations (or a
combination of limitations) that are not well-understood, routine, and
conventional. Accessing, selecting, determining, modifying, and displaying
data as in claim 1, for example, merely requires the well-understood function
of a computer/computer network. See 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.”). In addition, we note Appellant describes the
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components of the claimed invention at a high level of generality and the
components perform generic functions that are well-understood, routine, and
conventional. See, e.g., Spec. 27:19–23 (“Each of the client 1110 and the
host 1130 may be implemented by, for example, a general-purpose computer
capable of responding to and executing instructions in a defined manner . . .
[or] other equipment or some combination thereof capable of responding to
and executing instructions.”), Fig. 11.
Additionally, to the extent Appellant contends the claims do not seek
to tie-up (i.e., preempt) an abstract idea (see Reply Br. 2), we are
unpersuaded of Examiner error. “‘[W]hile preemption may signal patent
ineligible subject matter, the absence of complete preemption does not
demonstrate patent eligibility.’” FairWarning IP, LLC v. Iatric Sys., Inc.,
839 F.3d 1089, 1098 (Fed. Cir. 2016) (quoting Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)); see also OIP Techs.,
Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362–63 (Fed. Cir. 2015) (“[T]hat
the claims do not preempt all price optimization or may be limited to price
optimization in the e-commerce setting do not make them any less
abstract.”). Further, “[w]here a patent’s claims are deemed only to disclose
patent ineligible subject matter under the Mayo framework, as they are in
this case, preemption concerns are fully addressed and made moot.” Ariosa,
788 F.3d at 1379.
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the Examiner’s rejection of independent
claim 1 under 35 U.S.C. § 101. Further, we sustain the Examiner’s rejection
under 35 U.S.C. § 101 of claims 2–20, which were not argued separately.
See 37 C.F.R. § 41.37(c)(1)(iv).
Appeal 2018-008683
Application 14/461,587

19

CONCLUSION
Claims Rejected Basis Affirmed Reversed
1–20 35 U.S.C. § 102, Sample 1–20
1–20 35 U.S.C. § 101 1–20
Overall Outcome 1–20
Because we affirm at least one ground of rejection with respect to
each claim on appeal, the Examiner’s decision rejecting claims 1–20 is
affirmed. See 37 C.F.R. § 41.50(a)(1).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See
37 C.F.R. § 41.50(f).

AFFIRMED