Lewis, Donald C.Download PDFPatent Trials and Appeals BoardMar 24, 202011669349 - (D) (P.T.A.B. Mar. 24, 2020) Copy Citation 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. Appeal 2019-005067 Application 11/669,349 2 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 Appeal 2019-005067 Application 11/669,349 3 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 Appeal 2019-005067 Application 11/669,349 4 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 Appeal 2019-005067 Application 11/669,349 5 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 Appeal 2019-005067 Application 11/669,349 6 § 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 Appeal 2019-005067 Application 11/669,349 7 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 Appeal 2019-005067 Application 11/669,349 8 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 Appeal 2019-005067 Application 11/669,349 9 (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, Appeal 2019-005067 Application 11/669,349 10 613 (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 Appeal 2019-005067 Application 11/669,349 11 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 Appeal 2019-005067 Application 11/669,349 12 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 Appeal 2019-005067 Application 11/669,349 13 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 Appeal 2019-005067 Application 11/669,349 14 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 Appeal 2019-005067 Application 11/669,349 15 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. Appeal 2019-005067 Application 11/669,349 16 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 Appeal 2019-005067 Application 11/669,349 17 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 Appeal 2019-005067 Application 11/669,349 18 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”). Appeal 2019-005067 Application 11/669,349 19 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, Appeal 2019-005067 Application 11/669,349 20 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”).) Appeal 2019-005067 Application 11/669,349 21 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 Copy with citationCopy as parenthetical citation