Keith C. Hullfish et al.

Patent Trials and Appeals Board

Mar 31, 2020

13620853 - (D) (P.T.A.B. Mar. 31, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/620,853 09/15/2012 Keith C. Hullfish 19487.32.1.2.2 3069
107193 7590 03/31/2020
Keller Jolley Preece/Facebook
1010 North 500 East
Suite 210
North Salt Lake, UT 84054
EXAMINER
BIAGINI, CHRISTOPHER D
ART UNIT PAPER NUMBER
3649
NOTIFICATION DATE DELIVERY MODE
03/31/2020 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):
docketing@kjpip.com
gjolley@kjpip.com
ljohnson@kjpip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEITH C. HULLFISH, CHARLES A. CAREY,
MICHAEL R. LONGE, and JOE PARR
Appeal 2018-004888
Application 13/620,853
Technology Center 3600
Before JEREMY J. CURCURI, JOHN R. KENNY, and
BARBARA A. BENOIT, Administrative Patent Judges.
CURCURI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1 and 21–42. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Facebook, Inc.
Appeal Br. 1.
Appeal 2018-004888
Application 13/620,853
2
CLAIMED SUBJECT MATTER
The claims are directed to “the delivery of an electronic message
addressed to a telephone number.” Spec. 1:11–12. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A method comprising:
receiving, at a communication system server and from a
mobile device associated with a user, an electronic message to
deliver to an intended recipient via one or more user devices;
determining, by at least one processor, that the electronic
message includes multimedia content;
accessing a user preference specifying a forwarding rule
for messages including multimedia content;
determining, by the at least one processor and based on
the user preference, that the electronic message is to be
forwarded to a messaging server and a media storage, wherein
the messaging server is separate from the media storage; and
forwarding, by the communication system server, a first
instance of the electronic message to the messaging server and a
second instance of the electronic message to the media storage.
Appeal Br. 42 (Claims Appendix).
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Morris US 2003/0200268 A1 Oct. 23, 2003
Beyda US 2003/0229722 A1 Dec. 11, 2003
Ala-Luukko US 2004/0005881 A1 Jan. 8, 2004
Trossen US 2004/0111476 A1 June 10, 2004

Appeal 2018-004888
Application 13/620,853
3
REJECTIONS
Claims 1 and 21–42 are rejected under 35 U.S.C. § 101 as directed to
a judicial exception without significantly more. Final Act. 7–9.
Claims 1 and 21–42 are rejected under pre-AIA 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Final Act. 9–12.
Claims 1, 21–26, 28–37, and 39–41 are rejected under pre-AIA 35
U.S.C. § 103(a) as obvious over Trossen and Morris. Final Act. 12–22.
Claims 27 and 38 are rejected under pre-AIA 35 U.S.C. § 103(a) as
obvious over Trossen, Morris, and Beyda. Final Act. 22–23.
Claim 42 is rejected under pre-AIA 35 U.S.C. § 103(a) as obvious
over Trossen, Morris, and Ala-Luukko. Final Act. 24.

OPINION
The Judicial Exception Rejection of Claims 1 and 21–42
The Examiner determines the following:
Each of independent claims 1, 32, and 39 is directed to the
abstract idea of forwarding messages to various destinations
based on user preferences. The idea is described in the
“receiving,” “determining... that the electronic message
includes,” “accessing,” “determining... based on the user
preference,” and “forwarding” steps of claim 1 and the
corresponding aspects of claims 32 and 39. This idea is similar
to other ideas held as abstract by the courts. For example, as in
TLI Communications LLC v. AV Automotive LLC (823 F.3d 607,
118 U.S.P.Q.2d 1744 (Fed. Cir. 2016)), where claims directed to
recording, transmitting, and administering digital images were
found to be ineligible, the instant claims merely use classification
information to determine how to process received multimedia
messages. As another example, as in Intellectual Ventures I v.
Symantec Corp. ([838] F.3d [1307], 120 U.S.P.Q.2d 1353 (Fed.
Appeal 2018-004888
Application 13/620,853
4
Cir. 2016)), where claims directed to routing email messages
based on specific criteria (rules) were found to be ineligible, the
instant claims merely use rules to automate the distribution of
received messages in a manner analogous to a post office or
corporate mailroom.
Final Act. 7–8; see also Final Act. 8–9 (determining that the claims are not
directed to significantly more than the abstract idea); Ans. 3–11.
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 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. E.g., 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-part framework, described in Mayo and Alice.
Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 75–77 (2012)). In accordance with that framework, we first
determine what concept the claim is “directed to.” See Alice, 573 U.S. at
219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
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
Appeal 2018-004888
Application 13/620,853
5
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 waterproof 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
formula to a particular technological environment.” Id. (citation omitted)
(citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that
an application of a law of nature or mathematical formula to a known
structure or process may well be deserving of patent protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (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,
Appeal 2018-004888
Application 13/620,853
6
566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention.” Id.
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“2019 Revised Guidance”).2 “All USPTO personnel are, as a matter of
internal agency management, expected to follow the guidance.” Id. at 51;
see also October 2019 Update at 1.
Under the 2019 Revised Guidance and the October 2019 Update, we
first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th ed.
Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).3

2 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (the “October
2019 Update”) (available at
https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p
df).
3 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See 2019 Revised Guidance - Section III(A)(2), 84
Fed. Reg. 54–55.
Appeal 2018-004888
Application 13/620,853
7
2019 Revised 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, under
Step 2B, 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.
2019 Revised Guidance, 84 Fed. Reg. at 52–56.

Are the claims patent-eligible?
Step 1
Claim 1 recites a method, which falls within the “process” category of
35 U.S.C. § 101. Claim 32 recites a system, which falls with the “machine”
category of 35 U.S.C. § 101. Claim 39 recites a non-transitory computer
readable storage medium, which falls within the “manufacture” category of
35 U.S.C. § 101. Thus, we must determine whether the claims recite a
judicial exception and fail to integrate the exception into a practical
application. See 84 Fed. Reg. at 54–55. If both elements are satisfied, the
claim is directed to a judicial exception under the first step of the Alice/Mayo
test. See id.
Step 2A—Prong One
The Examiner determines claims 1, 32, and 39 are directed to an
abstract idea. Final Act. 7–8.
Appeal 2018-004888
Application 13/620,853
8
Contrary to the Examiner’s determinations, we determine the claim
limitations determined by the Examiner to recite an abstract idea do not
correspond to certain methods of organizing human activity, mental
processes, or mathematical concepts. In particular, claim 1 recites
receiving, at a communication system server and from a
mobile device associated with a user, an electronic message to
deliver to an intended recipient via one or more user devices;
determining, by at least one processor, that the electronic
message includes multimedia content;
accessing a user preference specifying a forwarding rule
for messages including multimedia content;
determining, by the at least one processor and based on
the user preference, that the electronic message is to be
forwarded to a messaging server and a media storage, wherein
the messaging server is separate from the media storage; and
forwarding, by the communication system server, a first
instance of the electronic message to the messaging server and a
second instance of the electronic message to the media storage.
We disagree with the Examiner’s determination that these activities recite an
abstract idea, pursuant to USPTO guidance.
In the context of the invention, these steps describe a particular way of
processing an electronic message, including in certain circumstances
described in the claim, forwarding a first instance of the electronic message
to the messaging server and a second instance of the electronic message to
the media storage. We do not see how such steps amount to mental
processes. For example, the process described by the claim “access[es] a
user preference,” but is not describing the mental processes of the user such
as “observation, evaluation, judgment, opinion.” 84 Fed. Reg. at 52. That is,
Appeal 2018-004888
Application 13/620,853
9
the claim describes a sequence of actions that are based on a user preference,
but does not describe user mental processes themselves.
Similarly, we do not see how the claim steps amount to mathematical
concepts or certain methods of organizing human activity. See 84 Fed. Reg.
at 52.
Accordingly, we are persuaded by Appellant’s argument, with respect
to Intellectual Ventures, that “determining whether an electronic message
contains multimedia content, accessing a user preference specifying a
forwarding rule for messages including multimedia content, and forwarding
the electronic message to a messaging server and a media storage are,
together, steps that a person cannot perform mentally.” Appeal Br. 18; see
also Reply Br. 4.
The Examiner does not sufficiently articulate why the claimed
concepts fall within the subject matter groupings of abstract ideas of
mathematical concepts, certain methods of organizing human activity, or
mental processes. See 84 Fed. Reg. 52. Further, we are not convinced that
this is one of the rare circumstances where the claims recite an abstract idea
that does not fall into one of the above subject matter groupings. Id. at 53.
Thus, we do not sustain the rejection of independent claim 1 under 35
U.S.C. § 101. Claims 21–31 depend from claim 1. We, therefore, also do not
sustain the rejection of those claims under 35 U.S.C. § 101.
Independent claims 32 and 39 recite similar language as claim 1. We,
therefore, also do not sustain the rejection of independent claims 32 and 39
under 35 U.S.C. § 101. Claims 33–38 depend from claim 32, and claims 40–
42 depend from claim 39. We, therefore, also do not sustain the rejection of
those claims under 35 U.S.C. § 101.

Appeal 2018-004888
Application 13/620,853
10
The Written Description Rejection of Claims 1 and 21–42
The Examiner finds claims 1 and 21–42 fail to comply with the
written description requirement. Final Act. 9–12.
In particular, the Examiner finds the limitation of “a user preference
specifying a forwarding rule for messages including multimedia content” as
recited in claim 1 lacks written description support. See Final Act. 10–11.
The Examiner explains as follows:
With respect to the second feature, although the
specification describes the result of applying various user
preferences (e.g., where “user preferences could be applied so
that only messages originating from a registered phone number
would be able to be forwarded,”), nowhere does the specification
explain that these preferences include a “forwarding rule for
messages including multimedia content” (emphasis added).
Final Act. 11.
The Examiner further finds that the limitation “determining . . . based
on the user preference, that the electronic message is to be forwarded to a
messaging server and a media storage” as recited in claim 1 also lacks
written description support. Final Act. 10–11. The Examiner explains as
follows:
Describing that a message can be forwarded to a messaging
server and a media storage, then describing that “user preferences
can be applied so that only messages originating from a
registered phone number would be able to be forwarded to the
media storage” is not the same thing as describing that the
preferences are used to make the determination to forward the
message to both servers.
Final Act. 11.
With respect to these particular findings, Appellant presents the
following principal arguments:
Appeal 2018-004888
Application 13/620,853
11
i. Appellant’s Specification describes “a user preference
specifying a forwarding rule for messages including multimedia content” as
recited in claim 1. Appeal Br. 29–30 (citing Spec. 7:26–8:9); see also Reply
Br. 9.
ii. Appellant’s Specification describes “determining... based on the
user preference, that the electronic message is to be forwarded to a
messaging server and a media storage” as recited in claim 1. Appeal Br. 31
(citing Spec. 7:26–28, 30–31); see also Reply Br. 9–10.
In response to Appellant’s argument i, the Examiner explains “the
specification at best describes a genus of forwarding rules which apply to
messages in general (i.e., forwarding rules which apply equally to
multimedia and non-multimedia messages). This is clearly not sufficient to
support a claim to the much narrower species of forwarding rules which are
‘for’ multimedia messages.” Ans. 13. The Examiner further explains “the
fact that some messages may be restricted based on the number of the sender
is not enough to establish that the rules are specifically ‘for’ multimedia
messages.” Ans. 13–14.
In response to Appellant’s argument ii, the Examiner explains “[t]he
preferences descried at p. 8, lines 1–5 only govern forwarding messages to
the media storage—and do not describe a single user preference that
controls forwarding to both the messaging server and the media storage.”
Ans. 14.
We do not see reversible error in the Examiner’s findings.
Appellant’s Specification discloses “[t]he user preferences and the
mapping between the telephone numbers and the IM identifiers are used by
the dynamic message control server 208 to route the SMS messages
according to the embodiments of the invention.” Spec. 7:26–28. Appellant’s
Appeal 2018-004888
Application 13/620,853
12
Specification further discloses “[i]n addition, user preferences could be
applied so that only messages originating from a registered phone number
would be able to be forwarded to the media storage 2l8. Alternatively, user
preferences could also be applied to allow messages from any originating
phone number to be forwarded to the media storage 218.” Spec. 8:1–5.
Thus, the Specification describes that user preferences are used to
route the SMS messages, and specifically describes that the user preferences
are used to specify which (or all) originating phone numbers have their
messages forwarded to the media storage. See Spec. 7:26–28, 8:1–5.
Claim 1 requires “a user preference specifying a forwarding rule for
messages including multimedia content” (emphasis added). However, the
user preferences described in the Specification are not described as being
specifically for messages including multimedia content, but rather are rules
for all messages originating from particular phone numbers. Accordingly,
we are not persuaded that such user preferences are for messages including
multimedia content. See Reply Br. 9.
In addition, claim 1 further requires “determining... based on the user
preference, that the electronic message is to be forwarded to a messaging
server and a media storage.” However, the user preferences described in the
Specification are not disclosed as being for determining that the electronic
message is to be forwarded to a messaging server and a media storage. The
Specification merely describes the ability to send messages to both the
messaging server and a media storage and describes user preferences
specifying which originating phone numbers have their messages forwarded
to the media storage. See Reply Br. 9–10. The combination of these
disclosures, however, merely conveys that messages with multimedia
content could be forwarded to both a messaging server and media storage,
Appeal 2018-004888
Application 13/620,853
13
not that the inventors had possession of that concept. Ariad
Pharmaceuticals, Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir.
2010).
We, therefore, sustain the Examiner’s rejection of claim 1 under pre-
AIA 35 U.S.C. § 112, first paragraph. Claims 21–31 depend from claim 1.
We, therefore, also sustain the rejection of claims 21–31 under pre-AIA 35
U.S.C. § 112, first paragraph.
Independent claims 32 and 39 recite similar language as claim 1. We,
therefore, also sustain the rejection of independent claims 32 and 39 under
pre-AIA 35 U.S.C. § 112, first paragraph. Claims 33–38 depend from claim
32, and claims 40–42 depend from claim 39. We, therefore, also sustain the
rejection of claims 33–38 and 40–42 under pre-AIA 35 U.S.C. § 112, first
paragraph.

The Obviousness Rejection of Claims 1, 21–26, 28–37, and 39–41 over
Trossen and Morris
The Examiner finds Trossen and Morris teach all limitations of claim
1. Final Act. 13–14. In particular, the Examiner finds Trossen teaches most
limitations of claim 1. Final Act. 13 (citing Trossen ¶¶ 10, 24–28, 30, 32–34,
58, 59, 65–67). In particular, the Examiner finds Morris teaches “wherein
the messaging server is separate from the media storage”; and “forwarding...
a first instance of the electronic message to the messaging server and a
second instance of the electronic message to the media storage” as recited in
claim 1. Final Act. 14 (citing Morris ¶¶ 21, 26–28). The Examiner reasons as
follows:
It would have been obvious to one of ordinary skill in the
art at the time of the invention to modify the system of Trossen
Appeal 2018-004888
Application 13/620,853
14
with the teachings of Morris in order to reduce the burden on the
user associated with viewing full-size images directly in a mail
client while still being able to use the mail client to notify the
user that the images are available.
Final Act. 14 (citing Morris ¶¶ 8–9)
Appellant presents the following principal argument:
Morris’s “[s]tripping and storing images from an email request for
storing in an image cache and generating a new email message that includes
links to the images in the image cache for sending to a recipient” and
Morris’s alternative of “including links to scaled-down version[s] of the sent
images to allow the recipient to view the album within an email program” do
not teach the claim limitations. Appeal Br. 39. In contrast to Morris, in the
claimed invention, “the electronic message, including the multimedia
content (e.g., images) therein, is sent to two distinct locations: the messaging
server and the media storage.” Appeal Br. 40.
In response, the Examiner explains that the claim “language may be
broadly but reasonably construed to permit the ‘instances’ to differ
somewhat.” Ans. 19; see also Ans. 19–20 (discussing the embodiments in
Morris).
In reply, Appellant argues “one of ordinary skill in the art would
understand a first instance of an electronic message and a second instance of
the same electronic message to essentially be two copies of the same
message, including identical message contents.” Reply Br. 11.
We do not see error in the contested Examiner’s findings. We concur
with the Examiner’s conclusion of obviousness.
Appeal 2018-004888
Application 13/620,853
15
We adopt the uncontested Examiner’s findings based on Trossen as
our own. See Final Act. 13 (citing Trossen ¶¶ 10, 24–28, 30, 32–34, 58, 59,
65–67).
Further, we agree with and adopt as our own the Examiner’s finding
that Morris’s disclosure of Internet mail server 32 and photomail server 20
with a web photo album application 42 teaches “wherein the messaging
server is separate from the media storage” as recited in claim 1. See Final
Act. 14 (citing Morris ¶ 21); see also Morris ¶ 21 (disclosing Internet mail
server 32 and photomail server 20).
A computer dictionary defines “instance” as follows: “An object, in
object-oriented programming, in relation to the class to which it belongs.”
MICROSOFT COMPUTER DICTIONARY 276 (5th ed. 2002).
Under this computer definition, a first “instance” and a second
“instance” of the same class must both be instantiated from the class, but are
not required to be identical.
Thus, we construe the claimed “first instance of the electronic
message” and “second instance of the electronic message” as requiring that
the first and second instances are illustrative of the same electronic message
and created from the same electronic message, but not requiring that the first
and second instances are identical.
Given our claim construction, we agree with and adopt as our own the
Examiner’s finding that Morris’s disclosure of a message being sent to
photomail server 20 and a message being sent to Internet mail server 32
teaches “forwarding... a first instance of the electronic message to the
messaging server and a second instance of the electronic message to the
media storage” as recited in claim 1 because the message sent to photomail
server 20 and the message sent to Internet mail server 32, although not
Appeal 2018-004888
Application 13/620,853
16
identical, are illustrative of the same electronic message (email request 19)
and created from the same electronic message (email request 19). See Final
Act. 14 (citing Morris ¶¶ 26–28); see also Morris ¶¶ 26 (“photomail server
20 receives the email request 19 from the photomail client 14... server 20
then sends the email message 31 to the Internet email server 32 for delivery
to the designated recipient(s) 34”), 27 (“recipient user 34 receives the email
message 31”), 28 (“the photomail server 20 creates an HTML email message
31 to send”).
We, therefore, sustain the Examiner’s rejection of claim 1 under pre-
AIA 35 U.S.C. § 103(a).We also sustain the rejection of claims 21–26, 28–
37, and 39–41, which are not separately argued with particularity. See
Appeal Br. 37, 40.

The Obviousness Rejection of Claims 27 and 38 over Trossen, Morris, and
Beyda
Appellant does not present separate arguments for claims 27 and 38.
See Appeal Br. 40.
We, therefore, sustain the Examiner’s rejection of claims 27 and 38
under pre-AIA 35 U.S.C. § 103(a) for the same reasons discussed above
with respect to claim 1.

The Obviousness Rejection of Claim 42 over Trossen, Morris, and Ala-
Luukko
Appellant does not present separate arguments for claim 42. See
Appeal Br. 40.
Appeal 2018-004888
Application 13/620,853
17
We, therefore, sustain the Examiner’s rejection of claim 42 under pre-
AIA 35 U.S.C. § 103(a) for the same reasons discussed above with respect
to claim 1.

CONCLUSION
The Examiner’s overall decision to reject claims 1 and 21–42 is
affirmed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 21–42 101 Judicial Exception 1, 21–42
1, 21–42 112 Written
Description
1, 21–42
1, 21–26,
28–37, 39–
41
103 Trossen, Morris 1, 21–26,
28–37, 39–
41

27, 38 103 Trossen, Morris,
Beyda
27, 38
42 103 Trossen, Morris,
Ala-Luukko
42
Overall
Outcome
1, 21–42

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).
Appeal 2018-004888
Application 13/620,853
18
AFFIRMED