MICROSOFT TECHNOLOGY LICENSING, LLC

Patent Trials and Appeals Board

Jun 30, 2020

2019002773 (P.T.A.B. Jun. 30, 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.
14/835,676 08/25/2015 Yu Zheng MS1-5341USC1 4815
144365 7590 06/30/2020
Schwegman Lundberg & Woessner, P.A.
P.O. Box 2938
Minneapolis, MN 55402
EXAMINER
HANN, JAY B
ART UNIT PAPER NUMBER
2129
NOTIFICATION DATE DELIVERY MODE
06/30/2020 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):
SLW@blackhillsip.com
usdocket@microsoft.com
uspto@slwip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte YU ZHENG, NICHOLAS JING YUAN, and XING XIE
________________

Appeal 2019-002773
Application 14/835,676
Technology Center 2100
________________

Before ELENI MANTIS MERCADER, MICHAEL R. ZECHER, and
JASON J. CHUNG, Administrative Patent Judges.

CHUNG, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals the Final Action
rejecting claims 21–40.2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
INVENTION
The invention relates to discovering functional groups within an area
using both mobility patterns among the districts or sections and points of
interest located in the districts or sections. Spec. ¶ 5. Claim 21 is illustrative
of the invention and is reproduced below:

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. According to Appellant, Microsoft Technology Licensing,
LLC is the real party in interest. Appeal Br. 2.
2 Claims 1–20 are cancelled. Appeal Br. 13.
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21. A system comprising
one or more processors;
memory storing instructions executable on the one or more
processors to perform acts comprising:
receiving a selection of a set of annotations corresponding
to one or more functional groups of an area of a visual
representation of a map;
segmenting the map of the area into a set of sections;
inferring a distribution of functions for each section in the
set of sections according to a topic model framework which uses
mobility patterns of users leaving from and arriving at each
section and uses points of interest (POIs) in each section;
determining available functional groups of the area based
at least in part on the distribution of functions; and
rendering one or more annotations included in the set of
annotations on the visual representation of the map using the
available functional groups of the area.
Appeal Br. 13 (Claims Appendix) (emphases added).

REJECTION
The Examiner rejects claims 21–40 under 35 U.S.C. § 101 as being
directed to patent ineligible subject matter. Final Act. 3–6.

ANALYSIS
A. Principles of Law
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 § 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).
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In determining whether a claim falls within an excluded category, we
are guided by the Supreme 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
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
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
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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. (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,
566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention.” Id.
B. USPTO Section 101 Guidance
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“2019 Revised Guidance”).3 “All USPTO personnel are, as a matter of

3 In response to received public comments, the USPTO issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
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internal agency management, expected to follow the guidance.” Id. at 51;
see also Update at 1.
Under the 2019 Revised Guidance and the 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 Manual of Paten Examining Procedure
(MPEP) § 2106.05(a)–(c), (e)–(h) (9th ed. Rev. 08.2017, Jan. 2018))
(“Step 2A, Prong Two”).4
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:

USPTO, October 2019 Update: Subject Matter Eligibility (the “Update”)
(available at
https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p
df).
4 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.
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(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.
C. The Examiner’s Rejection and Appellant’s Arguments
The Examiner concludes the present claims are analogous to the
claims in Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed.
Cir. 2016), which held that claims drawn to “collecting information,
analyzing it, and displaying certain results of the collection and analysis”
(i.e., a mental process) were ineligible under §101. Final Act. 4–6; Ans. 5–
6.
Appellant argues that the Examiner’s analysis does not consider all
claim limitations, which describes various technological improvements to
the user interface. Appeal Br. 9–10 (citing Core Wireless Licensing S.A.R.L.
v. LG Elecs., Inc., 880 F.3d 1356 (Fed. Cir. 2018)). Appellant argues that
the Examiner did not apply prior art against the present claims and, thus,
they are patent eligible. Id. at 11. Appellant argues that the Examiner fails
to provide sufficient evidence to support the finding that the additional
elements implementing the abstract idea, whether considered individually or
as an ordered combination, are well-understood, routine, and conventional.
Id. at 10–11 (citing Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018)).
Appellant argues the present claims recite a non-conventional and non-
generic arrangement of known, conventional elements, which results in an
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inventive concept. Id. at 11 (citing BASCOM Global Internet Services, Inc.
v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016)). We disagree with
Appellant.
D. Step 2A, Prong 1
Patent eligibility under § 101 is a question that we resolve pursuant to
the 2019 Revised Guidance. The emphasized portions of claim 21,5
reproduced above (see supra at 2), recite concepts performed in the human
mind (including an observation, evaluation, judgment, opinion) with the use
of pen and paper because they require “receiving a selection of a set of
annotations corresponding to one or more functional groups of an area of a
visual representation of a map,” “segmenting the map of the area into a set
of sections,” “inferring a distribution of functions for each section in the set
of sections according to a topic model framework which uses mobility
patterns of users leaving from and arriving at each section and uses (POIs) in
each section,” “determining available functional groups of the area based at
least in part on the distribution of functions,” and “rendering one or more
annotations included in the set of annotations on the visual representation of
the map using the available functional groups of the area.” Concepts
performed in the human mind (including an observation, evaluation,
judgment, opinion) fall within the category of mental processes (i.e., an
abstract idea). See 2019 Revised Guidance, 84 Fed. Reg. at 52 n.14.
We must still determine whether the abstract idea is integrated into a
practical application, namely whether the claim applies, relies on, or uses the

5 Appellant does not argue claims 21–40 separately with particularity.
Appeal Br. 7–11. We, therefore, group these claims together and refer to
them as the “present claims.”
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abstract idea in a manner that imposes a meaningful limit on the abstract
idea, such that the claim is more than a drafting effort designed to
monopolize the abstract idea. See 2019 Revised Guidance, 84 Fed. Reg. at
54–55. We therefore (1) identify whether there are any additional recited
elements beyond the abstract idea, and (2) evaluate those elements both
individually and collectively to determine whether they integrate the
exception into a practical application. See id.
Accordingly, we proceed to Prong 2.
E. Step 2A, Prong 2
Here, the only elements in the present claims used to implement the
abstract idea are “processor” and “memory.”6 See 2019 Revised Guidance,
84 Fed. Reg. at 52. The additional elements of the present claims do not
integrate the abstract idea into a practical application because they do not
impose any meaningful limits on practicing the abstract idea for the
following reasons.
Appellant does not identify persuasively how the Specification sets
forth an improvement in technology. Appeal Br. 9–10 (citing Core
Wireless, 880 F.3d 1356). The Update addresses how we consider evidence
of improvement that is presented to us. The Update states:
[T]he evaluation of Prong Two requires the use of the
considerations (e.g. improving technology, effecting a particular
treatment or prophylaxis, implementing with a particular
machine, etc.) identified by the Supreme Court and the Federal
Circuit, to ensure that the claim as a whole “integrates [the]
judicial exception into a practical application [that] will apply,
rely on, or use the judicial exception in a manner that imposes a

6 These additional elements are recited in claim 21 (and its dependent
claims) only. See Claims App.
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meaningful limit on the judicial exception, such that the claim is
more than a drafting effort designed to monopolize the judicial
exception.
Update 11 (emphases added). The Update further states:
During examination, the examiner should analyze the
“improvements” consideration by evaluating the specification
and the claims to ensure that a technical explanation of the
asserted improvement is present in the specification, and that the
claim reflects the asserted improvement. Generally, examiners
are not expected to make a qualitative judgment on the merits of
the asserted improvement. If the examiner concludes the
disclosed invention does not improve technology, the burden
shifts to applicant to provide persuasive arguments supported by
any necessary evidence to demonstrate that one of ordinary skill
in the art would understand that the disclosed invention improves
technology. Any such evidence submitted under 37 C.F.R.
§ 1.132 must establish what the specification would convey to
one of ordinary skill in the art and cannot be used to supplement
the specification. For example, in response to a rejection under
35 U.S.C. § 101, an applicant could submit a declaration under
§ 1.132 providing testimony on how one of ordinary skill in the
art would interpret the disclosed invention as improving
technology and the underlying factual basis for that conclusion.
Id. at 13 (emphasis added).
We, therefore, focus on any evidence Appellant cites in its briefs, as
discussed in the Update. Appellant does not refer us to any paragraphs of
the Specification or other evidence of an improvement to a technology or
technological field. Appeal Br. 9–10. Appellant’s citation to Core Wireless
is unavailing. Id. In Core Wireless, the U.S. Court of Appeals for the
Federal Circuit noted that the invention improved the efficiency of using an
electronic device by consolidating “‘a limited list of common functions and
commonly accessed stored data,’ which can be accessed directly from the
main menu.” Core Wireless, 880 F.3d at 1363 (citation omitted). Moreover,
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displaying selected data or functions of interest in the summary window
allowed the user to view the most pertinent data or functions “without
actually opening the application [window] up.” Id. at 1367 (emphasis
omitted). Stated differently, the application window is in an un-launched
state. Id. In addition, the user’s navigation speed through various views and
windows is improved because it saves the user from having to navigate to
the required application, open the application, and then navigate within that
application to enable the data of interest to be seen or a function of interest
to be activated. Id. Unlike the claims of Core Wireless, the present claims
do not recite displaying an application summary window that was not only
reachable directly from the main menu, but could also display a limited list
of selectable functions while the application was in an un-launched state or
an improvement in the functioning of computers. Nor are we persuaded that
the Specification discloses technological advances over what is conventional
known in the prior art. Appeal Br. 10–12. As discussed above, the claims
are directed to an abstract idea, rather than an improvement to the underlying
computer technology or to any of the additional elements.
Furthermore, the additional elements in the present claims, namely
“processor” and “memory,” do not, either individually or in combination,
integrate the abstract idea into a practical application. Appellant’s
Specification discloses that these elements encompass generic computer
components, such as processor (Spec. ¶¶ 29, 32, 74, 75) and memory (id.
¶ 75). Merely adding generic computer components to perform abstract
ideas does not integrate those ideas into a practical application. See 2019
Revised Guidance, 84 Fed. Reg. at 55 (identifying “merely includ[ing]
instructions to implement an abstract idea on a computer” as an example of
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when an abstract idea has not been integrated into a practical application).
We, therefore, conclude that the additional elements, whether
considered individually or as an ordered combination, do not integrate the
abstract idea into a practical application because the additional elements are
generic computer components that do not impose meaningful limits on
practicing the abstract idea. Furthermore, we conclude that the present
claims are directed to improvements to an abstract idea (i.e., mental
processes), rather than to improvements to a technology or technological
field. See, e.g., Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138,
1151 (Fed. Cir. 2016) (“[A] claim for a new abstract idea is still an abstract
idea.”). “[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 . . . .” Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369,
1376 (Fed. Cir. 2016) (citations omitted).
Furthermore, Appellant’s argument that the Examiner has not applied
prior art to anticipate or render obvious the present claims (Appeal Br. 11)
improperly conflates the requirements for eligible subject matter (§ 101)
with the independent requirements of novelty (§ 102) and non-obviousness
(§ 103). “The ‘novelty’ of any element or steps in a process, or even of the
process itself, is of no relevance in determining whether the subject matter of
a claim falls within the § 101 categories of possibly patentable subject
matter.” Diehr, 450 U.S. at 188–89; see also Genetic, 818 F.3d at 1376
(stating that, “under the Mayo/Alice framework, a claim directed to a newly
discovered law of nature (or natural phenomenon or abstract idea) cannot
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rely on the novelty of that discovery for the inventive concept necessary for
patent eligibility”).
Appellant does not make any other arguments pertaining to Step 2A,
Prong 2. Because the present claims recite an abstract idea that is not
integrated into a practical application, we proceed to Step 2B.
F. Step 2B
We disagree with Appellant’s argument that the Examiner fails to
provide sufficient evidence to support the finding that the additional
elements implementing the abstract idea, whether considered individually or
as an ordered combination, are well-understood, routine, and conventional.
Appeal Br. 10–11 (citing Berkheimer, 881 F.3d 1360). The Examiner does
not make a specific finding that the additional elements implementing the
abstract idea are well-understood, routine, and conventional. Ans. 8. To the
extent that Appellant is arguing that the Specification does not support a
finding that the additional elements implementing the abstract idea are well-
understood, routine, and conventional, we disagree because the Specification
indicates that the additional elements (i.e., “processor” and “memory”) are
nothing more than generic computer components. Spec. ¶¶ 29, 32, 74, 75.
Appellant’s Specification indicates these additional elements were well-
understood, routine, and conventional components because it describes them
at a high level of generality and in a manner that indicates that they are
sufficiently well-known.
We agree with the Examiner that the additional elements, either
individually or in combination, do not amount to an inventive concept. Ans.
9. An inventive concept “cannot be furnished by the unpatentable law of
nature (or natural phenomenon or abstract idea) itself.” Genetic, 818 F.3d at
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1376; see also 2019 Revised Guidance; Alice, 573 U.S. at 217 (explaining
that, after determining a claim is directed to a judicial exception, “we then
ask, ‘[w]hat else is there in the claims before us?”’ (alteration in original)
(quoting Mayo, 566 U.S. at 78)). Instead, an “inventive concept” is
furnished by an element or combination of elements that is recited in the
claim in addition to the judicial exception and sufficient to ensure the claim,
as a whole, amounts to significantly more than the judicial exception itself.
Alice, 573 U.S. at 218–19 (citing Mayo, 566 U.S. at 72–73); see BSG Tech
LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) (explaining
that the Supreme Court in Alice “only assessed whether the claim limitations
other than the invention’s use of the ineligible concept to which it was
directed were well-understood, routine and conventional” (emphasis
added)).
Appellant’s citation to BASCOM is unavailing. Appeal Br. 11. As an
initial matter, Appellant’s argument appears misplaced because all of the
features recited, with the exception of the additional elements identified
above, are directed to the abstract idea, as discussed supra.
Moreover, in BASCOM, the claims were directed to “a filter
implementation versatile enough that it could be adapted to many different
users’ preferences while also installed remotely in a single location.”
BASCOM, 827 F.3d at 1348–51. The inventive concept was “the installation
of a filtering tool at a specific location, remote from the end-users, with
customizable filtering features specific to each end user” that “gives the
filtering tool both the benefits of a filter on a local computer and the benefits
of a filter on the [Internet Service Provider] server.” Id. at 1350. Thus,
when considered as an ordered combination, the Federal Circuit concluded
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the claims provided “an inventive concept can be found in the non-
conventional and non-generic arrangement of known, conventional pieces.”
Id. Here, the present claims recite an abstract idea using additional elements
that are generic computer components as discussed supra, or at best,
improving an abstract idea—not an inventive concept. Accordingly,
Appellant’s assertion fails to identify error in the Examiner’s analysis.
Appellant does not argue, nor do we determine, that the dependent
claims recite any additional features that would transform the abstract idea
embodied in independent claims 21, 30, and 34 into an inventive concept.7
For at least the above reasons, we conclude, under the 2019 Revised
Guidance, that each of the present claims, considered as a whole, is directed
to a patent-ineligible abstract idea that is not integrated into a practical
application, and does not include an inventive concept. We, therefore,
sustain the Examiner’s rejection of: (1) independent claims 21, 30, and 34;
and (2) dependent claims 22–29, 31–33, and 35–40 under § 101.
We have only considered those arguments that Appellant actually
raised in the Briefs. Arguments Appellant could have made, but chose not to
make, in the Briefs have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(iv).

7 Some of the arguments presented in Appellant’s Briefs center on the
Examiner’s purported statement that the independent claims encompass the
dependent claims. Appeal Br. 7–8; Reply Br. 3–4. Although we agree with
the general premise of Appellant’s, even if the Examiner made such an
erroneous statement it would amount to harmless error and does not change
our analysis of the Examiner’s § 101 rejection for all the reasons stated
supra.
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CONCLUSION
In summary:
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See
37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

Claims
Rejected
35 U.S.C.
§
Basis Affirmed Reversed
21–40 101 Eligibility 21–40