Lewis, Donald C.

Patent Trials and Appeals Board

Mar 24, 2020

11669349 - (D) (P.T.A.B. Mar. 24, 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.
11/669,349 01/31/2007 Donald C. Lewis 96955 5288
4586 7590 03/24/2020
ROSENBERG, KLEIN & LEE
3458 ELLICOTT CENTER DRIVE-SUITE 101
ELLICOTT CITY, MD 21043
EXAMINER
FEACHER, LORENA R
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
03/24/2020 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):
ptoactions@rklpatlaw.com
ptoactions@yahoo.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte DONALD C. LEWIS
____________________

Appeal 2019-005067
Application 11/669,349
Technology Center 3600
____________________

Before JOSEPH L. DIXON, DAVID M. KOHUT, and
JON M. JURGOVAN, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from a non-final
rejection of claims 1–31. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
The claims are directed to a method and apparatus “for matching
resources and co-resources within a system.” (Abstract.)
Claim 1, reproduced below, is illustrative of the claimed subject
matter:

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42 (2018). The real party in interest is Aspect Software, Inc.
Appeal Br. 2.
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1. A method of matching resources and co-resources within
a communications system including a programmed processor,
the method comprising:
providing a plurality of resources each having a respective
knowledge profile stored in a first memory and a plurality of co-
resources each having a respective associated information
needed profile stored in a second memory where a first type of
resource of the plurality of resources are preferentially matched
with a first type of co-resource of the plurality of co-resources
and a second type of resource of the plurality of resources is
preferentially matched with a second type of co-resource of the
plurality of co-resources and where any match between a
resource of the first type and a co-resource of the second type or
a resource of the second type and co-resource of the first type is
a non-preferential match;
matching each of the plurality of resources with each
respective co-resource of the plurality of co-resources and
determining and storing a time of match for each match, the
matching performed by a matching processor based upon the
profiles;
forming in a tempering processor a tempered match from
each matched resource and co-resource by associating an
adjusted time of the match, formed by an ordering processor,
with the match, such that each tempered match is made up of a
tempered co-resource, a tempered resource and the associated
adjusted time, where the adjusted time of the match is adjusted
to characterize match quality of the match by associating larger
values of time with poorer quality matches wherein match
quality is determined by matching attributes of the resources with
attributes of the co-resources;
ordering and releasing the tempered matches using a
release processor to form an ordered list of the tempered matches
sorted by the adjusted time and the release processor releasing
the tempered matches based upon the associated adjusted time;
and
a connection processor, coupled to resources and coupled
to the co-resources and to the communication system, placing
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into communication contact with each other at least some of the
tempered matches for use within the system based upon the
ordering of the tempered matches such that poorer quality
matches remain unreleased for a longer time pending possible
availability of a better match.

(Appeal Br. 10–16 (Claims Appendix).)

REJECTION
The Examiner made the following rejection:
Claims 1–31 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to a judicial exception (i.e., a law of nature, a
natural phenomenon, or an abstract idea) without significantly more.

ANALYSIS
An invention is patent eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 70 (2012) (brackets in original) (citing Diamond v. Diehr,
450 U.S. 175, 185 (1981)).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014)
(citing Mayo, 566 U.S. at 75–77). In accordance with that framework, we
first determine what concept the claim is “directed to.” See Alice, 573 U.S.
at 218–19 (“On their face, the claims before us are drawn to the concept of
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intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and, thus, patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diehr, 450 U.S. at 191); “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
Supreme Court held that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187; 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 Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, . . . and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now
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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 citation
omitted). “A claim that recites an abstract idea must include ‘additional
features’ to ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
The PTO recently published revised guidance on the application of
§ 101. USPTO’s Memorandum, 2019 REVISED PATENT SUBJECT MATTER
ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50 (January 7, 2019) (“Revised
Guidance”). Under that guidance, 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); and
(2) additional elements that integrate the judicial exception into a
practical application (see MANUAL OF PATENT EXAMINING PROCEDURE
(MPEP) § 2106.05(a)–(c), (e)–(h) (9th ed., Rev. 08.2017, 2018)).

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, conventional” in the field (see MPEP
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§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.

See Revised Guidance.
Appellant argues independent claims 1, 13, and 25 together. (See
Appeal Br. 5–6, 8; Reply Br. 3–7.) As a result, we select independent claim
1 as the representative claim for the group and address Appellant’s
arguments thereto. See 37 C.F.R. § 41.37(c)(1)(iv) (2017).
STEP 1 of the Revised Guidance
Independent claim 1, as a “method” claim, recites one of the
enumerated categories of statutory subject matter in 35 U.S.C. § 101,
namely, a process. The issue before us is whether this claim is directed to a
judicial exception without significantly more.
Alice/Mayo—Step 1 (Abstract Idea)
Step 2A–Prongs 1 and 2 identified in the Revised Guidance
Step 2A, Prong 1 of the Revised Guidance
The first Prong of Step 2A under the Revised Guidance is to
determine whether the claim recites a judicial exception including (a)
mathematical concepts; (b) certain methods of organizing human activity;
and (c) mental processes. Revised Guidance, 84 Fed. Reg. at 51–52. Here,
the Examiner determines that claim 1 is “directed to matching resources and
co-resources” and communicating such matches, which is an abstract idea
that “covers managing personal behavior or interactions between people
under the judicial exception of Certain Methods of Organizing Human
Activity.” (Ans. 3–4 (citing the Revised Guidance); Non-Final Act. 6–7.)
Appellant argues claim 1 is not directed to an abstract idea such as
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organizing human activities, rather, “the claims as a whole are directed to a
complex communication apparatus, and methods to automate a specific way
of finding and connecting resources in the system” using “multiple hardware
structures integrated to function in a unique manner to provide improved
functionality.” (Appeal Br. 5, 7–8; Reply Br. 3, 5–6.)
Appellant’s arguments are not persuasive. Here, representative
claim 1 recites a method that results in matching resources with co-resources
based on preferential matching requirements. (See Spec. 1:1–5, 2:29–31,
3:1–5; Abstract.) More specifically, representative claim 1 recites a
“method of matching resources and co-resources within a communications
system including a programmed processor,” the method including the
following steps: (1) “providing a plurality of resources each having a
respective [stored] knowledge profile . . . and a plurality of co-resources
each having a respective [stored] associated information needed profile”
where “a first type of resource of the plurality of resources are preferentially
matched with a first type of co-resource of the plurality of co-resources and
a second type of resource of the plurality of resources is preferentially
matched with a second type of co-resource of the plurality of co-resources”
and “any match between a resource of the first type and a co-resource of the
second type or a resource of the second type and co-resource of the first type
is a non-preferential match”; (2) “matching each of the plurality of resources
with each respective co-resource of the plurality of co-resources and
determining and storing a time of match for each match, the matching
performed . . . based upon the profiles”; (3) “forming . . . a tempered match
from each matched resource and co-resource by associating an adjusted time
of the match . . . with the match, such that each tempered match is made up
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of a tempered co-resource, a tempered resource and the associated adjusted
time” where “the adjusted time of the match is adjusted to characterize
match quality of the match by associating larger values of time with poorer
quality matches wherein match quality is determined by matching attributes
of the resources with attributes of the co-resources”; (4) “ordering and
releasing the tempered matches . . . to form an ordered list of the tempered
matches sorted by the adjusted time and . . . releasing the tempered matches
based upon the associated adjusted time”; and (5) “placing into
communication contact with each other at least some of the tempered
matches for use within the system based upon the ordering of the tempered
matches such that poorer quality matches remain unreleased for a longer
time pending possible availability of a better match.” (Appeal Br. 10 (Claim
1).) These limitations, under their broadest reasonable interpretation, recite
matching resources, such as people or informational items, based on
particular preferences and timing criteria, thereby describing operations that
would ordinarily take place when an entity (e.g., a social group, an
organization, a company, or a dating site, etc.) matches elements (such as
people, characteristics, or data and informational items) to each other.
For example, broadly-claimed limitations (1) and (2) in claim 1
describe providing data on resources and co-resources (which may be people
or informational items), characterizing the resources and co-resources based
on broadly claimed “profiles” and “preferential match[ing]” criteria,
matching based on the “profiles,” and recording matching time stamps,
which are activities ordinarily performed by entities such as social groups,
organizations, and dating sites when matching people or informational items.
(See Spec. 1:8–9 (describing informational “resources”), 2:29–3:5
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(describing “resources,” “co-resources,” and “profiles”), 3:24–30 (describing
“profiles”), 4:1–31 (describing various preferences for matching).) Broadly-
claimed limitations (3) and (4) in claim 1 describe association of time
stamps with the matches and their quality, which are activities ordinarily
performed by various entities when ranking fresh matches above older
matches; such activities are, for example, ordinarily performed by search
engines providing time-ordered search results, with newest results (e.g.,
newest articles on a topic) shown on a first page of a search results list.
Broadly-claimed limitation (5) in claim 1 describes connecting the best-
matched resources and co-resources, which are activities ordinarily
performed by entities when, e.g., matching employees on a team, or
matching potential partners on a dating site, or providing best results to an
online search query. (See Spec. 3:19–23 (explaining how matched resources
and co-resources are placed in communication contact).)
Thus, limitations (1)–(5) in claim 1 recite matching resources, such as
people or informational items, based on particular preferences and timing
criteria, which is a known method of organizing relationships or interactions
between people (e.g., in a social group or other organization), and a known
business activity performed by companies (e.g., for matching employees on
product development teams), similar to other concepts identified by the
courts as abstract ideas. (Ans. 3–4; Non-Final Act. 7; see In re Ferguson,
558 F.3d 1359, 1364 (Fed. Cir. 2009) (holding methods “directed to
organizing business or legal relationships in the structuring of a sales force
(or marketing company),” e.g., by developing a shared marketing force with
marketing channels for particular products, to be ineligible); In re TLI
Commc’ns LLC Patent Litig. v. A.V. Automotive, LLC, 823 F.3d 607, 610,
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613 (Fed. Cir. 2016) (classifying and storing digital images in an organized
manner based on “classification information . . . prescribable by a user of [a]
telephone unit for allocation to the digital images,” is an abstract idea); In re
Maucorps, 609 F.2d 481–83 (CCPA 1979) (claims reciting an algorithm for
associating a client with an optimal number of business visits by a sales
representative are not patent-eligible); Intellectual Ventures I LLC v. Capital
One Bank (USA), 792 F.3d 1363, 1369–71 (Fed. Cir. 2015) (tailoring
information (e.g., web pages) presented to a user based on particular
information about the user (e.g., user’s personal characteristics, such as
personal characteristics in a user profile) is an abstract idea); Affinity Labs of
Tex., LLC v. Amazon.com Inc., 838 F.3d 1266, 1269, 1271–72 (Fed. Cir.
2016) (selecting advertisements for delivery to a user based on demographic
information about the user and “customizing information based on . . .
information known about the user” is an abstract idea (citing Intellectual
Ventures I LLC, 792 F.3d at 1369).)
We, therefore, conclude limitations (1)–(5) in representative claim 1,
and similar limitations in independent claims 13 and 25, recite matching
resources, such as people or informational items, based on preferences and
timing criteria, which is a business activity and a method of organizing
relationships or interactions between people, and one of the methods of
organizing human activity identified in the Revised Guidance and, therefore,
an abstract idea. See Revised Guidance (Revised Step 2A, Prong One), 84
Fed. Reg. at 52 (describing an abstract idea category of “[c]ertain methods
of organizing human activity” including “commercial or legal interactions
(including . . . business relations)” and “managing personal behavior or
relationships or interactions between people”). In conclusion, we agree with
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the Examiner that representative claim 1, and grouped independent claims
13 and 25, recite judicial exceptions, namely, an abstract idea comprising
managing relationships or interactions between people, and a business
interaction. (Ans. 3–4; Non-Final Act. 6–7.)
STEP 2A, Prong 2 of the Revised Guidance
Under Revised Step 2A, Prong Two of the Revised Guidance, we
discern no additional element (or combination of elements) recited in
Appellant’s claim 1 that may have integrated the judicial exception into a
practical application. See Revised Guidance, 84 Fed. Reg. at 54–55. For
example, Appellant’s claimed additional elements (e.g., “a communications
system,” “a programmed processor,” “a first memory,” “a second memory,”
“a matching processor” performing matching based upon profiles, “a
tempering processor” forming tempered matches by adding time stamps, “an
ordering processor,” “a release processor” ordering and releasing the
tempered matches, and “a connection processor” placing tempered matches
into communication contact with each other) do not: (1) improve the
functioning of a computer or other technology; (2) are not applied with any
particular machine (except for a generic computer); (3) do not effect a
transformation of a particular article to a different state; and (4) are not
applied in any meaningful way beyond generally linking the use of the
judicial exception to a particular technological environment, such that the
claim as a whole is more than a drafting effort designed to monopolize the
exception. (See MPEP §§ 2106.05(a)–(c), (e)–(h); Ans. 11.) Rather,
Appellant’s claimed computing and hardware components are configured to
perform numerous real-world functions and operations that automate the
matching of resources based on preferences and timing criteria, adding
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nothing of substance to the underlying abstract idea. (Ans. 4–6.) It is clear
from the claims and the Specification (describing and illustrating generic
memories, a “connection processor 46 [that] may operate under any
appropriate technology (e.g., telephone, VoIP, e-mail, chat, etc.),” other
“processors” and “a computer,” for establishing a “communication
connection,” and for detecting, ordering by time stamps, and outputting), the
claimed computing and hardware components require no improved
computing or networking elements that Appellant claims to have invented.
(See Spec. 3:21, 4:11–12, 4:17–23, 5:8–9, 5:23–24, 6:8–14, 7:4–5, Fig. 1.)
Claim 1 does not recite a specific improvement to the way computers or
communication infrastructures operate. Thus, the claim’s limitations are not
indicative of “integration into a practical application.” See Revised
Guidance, 84 Fed. Reg. at 54–55. Rather, the processors and memories are
readily available computing and networking elements using their already
available basic functions as tools in executing the claimed matching of
resources. See SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161 (Fed. Cir.
2018).
Appellant argues the claims are directed to a practical application as
required by the Revised Guidance because (i) the claimed “elements
(processors, memories, etc.) are not a generic computer element but are
numerous discrete elements uniquely structured to interact and function
together to constitute a practical application in a complex, physical
communication system,” (ii) the claims provide “an improvement to existing
communication systems which is more efficient at locating and connecting
resources in a dynamic communication environment,” and (iii) the claimed
limitations “modify previously known configurations of structural elements
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such as processors, memory, etc., and the functioning of such
communication system elements.” (Reply Br. 3–4, 6; Appeal Br. 5–7.)
We remain unpersuaded by Appellant’s arguments. As discussed
supra, matching resources based on preferences and timing criteria is an
abstract idea of a business interaction and managing relationships or
interactions between people. The claimed additional limitations, particularly
the communications system, first and second memories, and the various
recited processors, are merely tools to implement the claimed judicial
exception. The Federal Circuit has found that “merely adding computer
functionality to increase the speed or efficiency of the process does not
confer patent eligibility on an otherwise abstract idea.” Intellectual Ventures
I LLC, 792 F.3d at 1369–70; see also Intellectual Ventures I LLC v. Erie
Indemnity Co., 711 F. App’x 1012, 1017 (Fed. Cir. 2017) (unpublished)
(“Though the claims purport to accelerate the process of finding errant files
and to reduce error, we have held that speed and accuracy increases
stemming from the ordinary capabilities of a general-purpose computer
‘do[ ] not materially alter the patent eligibility of the claimed subject
matter.’”). Moreover, Appellant’s arguments are not commensurate with the
scope of claim 1. In particular, claim 1 does not recite or require
“modify[ing] previously known configurations of structural elements such as
processors, memory,” modifying “functioning of such communication
system elements,” or improvements to a networking system as Appellant
argues. (See Reply Br. 4, 6; Appeal Br. 5–7.)
Additionally, although Appellant argues the claimed processors and
memories are “uniquely structured to interact and function together to
constitute a practical application in a complex, physical communication
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system” (see Reply Br. 3), claim 1 does not evidence more than generic and
readily available computing and storage elements using their already
available basic connections and functions to perform generic data
manipulation steps. None of the steps and computing elements recited in
Appellant’s claim 1 provide, and Appellant has not identified a specific
disclosure in Appellant’s Specification of any description or explanation as
to how the claimed steps, processors, and memories are intended to provide
an improvement in computer- or network-related technology, such as: (i) a
“solution . . . necessarily rooted in computer technology in order to
overcome a problem specifically arising in the realm of computer networks,”
as explained by the Federal Circuit in DDR Holdings, LLC, v. Hotels.com,
L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014); (ii) “a specific improvement to
the way computers operate,” as explained in Enfish, LLC v. Microsoft Corp.,
822 F.3d 1327, 1336, 1339 (Fed. Cir. 2016); or (iii) an “unconventional
technological solution . . . to a technological problem” that “improve[s] the
performance of the system itself,” as explained in Amdocs (Israel) Ltd. v.
Openet Telecom, Inc., 841 F.3d 1288, 1300, 1302 (Fed. Cir. 2016).
For these reasons, we agree with the Examiner that representative
claim 1, and grouped claims 13 and 25, are directed to a judicial exception,
namely, the abstract idea of matching resources based on preferences and
timing criteria, which is a business activity and a method of organizing
relationships or interactions between people, thus a method of organizing
human activity identified as an abstract idea in the Revised Guidance. (Ans.
4–6.) Thus, under Step 2A, Prong Two (MPEP §§ 2106.05(a)–(c) and (e)–
(h)), we conclude claim 1 does not integrate the judicial exception into a
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practical application. Therefore, we proceed to Step 2B, The Inventive
Concept.

Alice/Mayo—Step 2 (Inventive Concept)
Step 2B identified in the Revised Guidance
Appellant challenges the Examiner’s findings as to the second step of
the Alice analysis on the bases that: (i) claim 1 recites “significantly more”
because the claimed invention “solves a specific problem unique within
computerized communication technology” by “modifying and improving the
system’s functionality and performance” and providing an “improvement in
the functionality of the technology of computerized communication
systems”; and (ii) “the claims recite a non-conventional combination of
elements functioning uniquely together to form a practical application
providing improvement in communication systems.” (Reply Br. 5–7 (citing
DDR Holdings, LLC, v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir.
2014)); Appeal Br. 7–8.)
Appellant’s arguments are not persuasive. As recognized by the
Revised Guidance, an “inventive concept” under Alice step 2 can be
evaluated based on whether an additional element or combination of
elements:
(1) “[a]dds a specific limitation or combination of limitations
that are not well-understood, routine, conventional activity
in the field, which is indicative that an inventive concept
may be present;” or
(2) “simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a
high level of generality, to the judicial exception, which is
indicative that an inventive concept may not be present.”
See Revised Guidance, 84 Fed. Reg. at 56.
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In this case, however, no element or combination of elements recited
in Appellant’s claim 1 contains any “inventive concept” or adds anything
“significantly more” to transform the abstract concept into a patent-eligible
application. Alice, 573 U.S. at 221.
Particularly, we are not persuaded by Appellant’s arguments that the
claimed invention modifies and improves the system’s functionality and
performance or provides an “improvement in the functionality of the
technology of computerized communication systems.” (See Reply Br. 5;
Appeal Br. 7–8.) As discussed supra, claim 1 does not recite more than
generic and readily available computing and storage elements performing
generic data manipulation steps, and claim 1 does not recite or demonstrate
an improvement in the functionality of the technology of computerized
communication systems as Appellant argues. (Ans. 4–6.) Appellant’s
claimed matching, ordering, and releasing of resources based on matching
preferences and time stamps do not provide any technical solution to a
technical problem as the claims in DDR, and Appellant has not demonstrated
the claimed communications system, processors, and memories are able in
combination to perform functions that are not merely generic, as were the
claims in DDR. See DDR, 773 F.3d at 1245, 1256–57. Additionally,
Appellant’s claims focus on the problem of matching people and
information resources to provide relevant responses to requests or questions,
and form teams or associations of employees and/or clients (see Spec. 1:8–
2:5, 2:30–3:5, 4:1–5, Title)—a problem that is not a technical problem or
one rooted in computer technology or particular only to the Internet.
Appellant’s abstract idea of matching resources based on preferences and
timing criteria, applied to generic computing and network infrastructure, also
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does not provide any particular practical application as described in
BASCOM. See BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC,
827 F.3d 1341, 1352, 1350 (Fed. Cir. 2016). BASCOM’S patent-eligible
ordered combination of claim limitations contains an “inventive concept
[that] harnesses [a] . . . technical feature of network technology in a filtering
system by associating individual accounts with their own filtering scheme
and elements while locating the filtering system on an ISP [(Internet Service
Provider)] server.” See BASCOM, 827 F.3d at 1350. BASCOM’S claimed
ordered combination “improve[s] the performance of the computer system
itself” with a “technology-based solution . . . to filter content on the Internet
that overcomes existing problems with other Internet filtering systems.” See
BASCOM, 827 F.3d at 1351–52 (internal citation omitted). By contrast,
Appellant’s invention uses generically-claimed computing
elements/processors to perform the abstract idea. (Ans. 4–6.) As our
reviewing court has observed, “after Alice, there can remain no doubt:
recitation of generic computer limitations does not make an otherwise
ineligible claim patent-eligible.” DDR Holdings, 773 F.3d at 1256 (citing
Alice, 134 S. Ct. at 2358); see also SiRF Tech., Inc. v. Int’l Trade Comm’n,
601 F.3d 1319, 1333 (Fed. Cir. 2010) (“In order for the addition of a
machine to impose a meaningful limit on the scope of a claim, it must play a
significant part in permitting the claimed method to be performed,” rather
than “function solely as an obvious mechanism for permitting a solution to
be achieved more quickly, i.e., through the utilization of a computer for
performing calculations.”).
We are also not persuaded that “the claims recite a non-conventional
combination of elements functioning uniquely together to form a practical
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application providing improvement in communication systems.” (See Reply
Br. 6; Appeal Br. 8.) Appellant’s Specification describes generic computing
elements, including various processors and memories performing generic
electronic communications including receiving, processing, and transmitting
data. (Ans. 4–6; see Spec. 3:21, 4:11–12, 4:17–23, 5:8–9, 5:23–24, 6:8–14,
7:4–5, Fig. 1.) See also Intellectual Ventures I LLC v. Symantec Corp., 838
F.3d 1307, 1321 (Fed. Cir. 2016) (receiving, screening, and distributing
email is well known); Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d
1306, 1334 (Fed. Cir. 2015) (receiving, storing, retrieving, sorting, and
eliminating information is well known); OIP Techs., Inc. v. Amazon.com,
Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (noting that storing data is well-
understood, routine, and conventional); Elec. Power Grp., LLC v. Alstom
S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016) (finding that use of “conventional
computer, network, and display technology for gathering, sending, and
presenting the desired information” does not add significantly more to the
claimed abstract idea); CyberSource Corp. v. Retail Decisions, Inc., 654
F.3d 1366, 1375 (Fed. Cir. 2011) (“[T]he incidental use of a computer to
perform the [claimed process] does not impose a sufficiently meaningful
limit on the claim’s scope.”). “[T]he use of generic computer elements like
a microprocessor or user interface” to perform conventional computer
functions “do not alone transform an otherwise abstract idea into patent-
eligible subject matter.” FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d
1089, 1096 (Fed. Cir. 2016) (citing DDR Holdings, 773 F.3d at 1256); see
also BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1281, 1286–87 (Fed. Cir.
2018) (“claims are not saved from abstraction merely because they recite
components more specific than a generic computer”).
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Appellant’s additional argument regarding claimed processors
performing a “novel” method improperly conflates the test for
35 U.S.C. § 101 with the separate tests for 35 U.S.C. §§ 102 and 103. See,
e.g., Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir.
2016) (“[U]nder the Mayo/Alice framework, a claim directed to a newly
discovered law of nature (or natural phenomenon or abstract idea) cannot
rely on the novelty of that discovery for the inventive concept necessary for
patent eligibility.”). As the Supreme Court emphasizes, “[t]he ‘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.” Diehr, 450 U.S.
at 188–89 (emphasis added). Thus, a novel and nonobvious claim directed
to a purely-abstract idea is, nonetheless, patent-ineligible. See Mayo, 566
U.S. at 89–91.
Appellant’s further argument that the claims “do not seek to tie-up an
abstract idea” or “all forms of an abstract idea” is unavailing, as the absence
of complete preemption is not dispositive. (See Appeal Br. 8.) See, e.g.,
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015) (“While preemption may signal patent ineligible subject matter, the
absence of complete preemption does not demonstrate patent eligibility.”);
Ultramercial, Inc. v. Hulu, LLC, 722 F.3d 1335, 1346 (Fed. Cir. 2013)
(“[T]he Supreme Court has stated that, even if a claim does not wholly pre-
empt an abstract idea, it still will not be limited meaningfully if it contains
only insignificant or token pre- or post-solution activity—such as identifying
a relevant audience, a category of use, field of use, or technological
environment.”) (citations omitted), vacated and remanded, WildTangent,
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Inc. v. Ultramercial, LLC, 573 U.S. 942 (2014) (remanding for further
consideration in light of Alice). Thus, even if the claims do not preempt the
abstract idea, that alone is insufficient to render the claims patent-eligible.
Because Appellant’s representative claim 1, and grouped claims 13
and 25 are directed to a patent-ineligible abstract concept and do not recite
an “inventive concept” by providing a solution to a technical problem under
the second step of the Alice analysis, we sustain the Examiner’s § 101
rejection of independent claims 1, 13, and 25, and their dependent claims 2–
12, 14–24, and 26–31.2

CONCLUSION
The Examiner did not err in rejecting claims 1–31 under
35 U.S.C. § 101.
DECISION
For the above reasons, we AFFIRM the Examiner’s rejection of
claims 1–31 under 35 U.S.C. § 101.
In summary:
Claims
Rejected
35 U.S.C.§ Basis Affirmed Reversed
1–31 101 Eligibility 1–31

2 In the event of any further prosecution, we suggest the Examiner review
independent claim 13 for compliance with the “written description”
requirement of 35 U.S.C. § 112, first paragraph. In particular, claim 13
recites the “means-plus-function” limitation of “means for ordering the
tempered matches” thus invoking pre-AIA 35 U.S.C. § 112, sixth paragraph,
and Appellant does not specify what structure(s) a person of ordinary skill in
the art allegedly would understand the “means for ordering the tempered
matches” encompass. (See Appeal Br. 3–4 (not specifying written
description support for “means for ordering the tempered matches”).)
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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).

AFFIRMED