STUBHUB, INC.

Patent Trials and Appeals Board

Oct 16, 2020

2020000914 (P.T.A.B. Oct. 16, 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.
14/096,335 12/04/2013 Kamal Zamer S2480.10026US01 1042
167980 7590 10/16/2020
Maschoff Brennan/StubHub
1389 Center Drive, Ste. 300
Park City, UT 84098
EXAMINER
SINGH, RUPANGINI
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
10/16/2020 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):
docket@mabr.com
rgilmore@mabr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KAMAL ZAMER
____________

Appeal 2020-000914
Application 14/096,335
Technology Center 3600
____________

Before NINA L. MEDLOCK, CYNTHIA L. MURPHY, and
BRADLEY B. BAYAT, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1, 6, 7, 10–15, 17, 18, and 20. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Our decision references Appellant’s Appeal Brief (“Appeal Br.,”
filed July 22, 2019) and Reply Brief (“Reply Br.,” filed November 14,
2019), and the Examiner’s Answer (“Ans.,” mailed September 3, 2019), and
Final Office Action (“Final Act.,” mailed February 25, 2019). Appellant
identifies Stubhub, Inc. as the real party in interest (Appeal Br. 4).
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CLAIMED INVENTION
Appellant describes that “[t]he present disclosure relates generally to
electronic commerce, and more particularly, to the redistribution of
purchased event tickets” (Spec. ¶ 1).
Claims 1, 11, and 18 are the independent claims on appeal. Claim 11,
reproduced below with bracketed notations added, is illustrative of the
claimed subject matter:
11. A method, comprising:
[(a)] retrieving, at a server, event information including
a start time, duration, and venue of an event from a network-
accessible event database;
[(b)] determining, at the server, a first area at a first time
according to a variable area around the venue that varies as a
function of time and is based on the start time and duration of the
event from the network-accessible event database, wherein the
variable area is greater than and encompasses a venue area during
the duration of the event at the venue;
[(c)] accessing location data generated by a first user
device of a first user based on a ticket for a seat at the event being
associated with an account of the first user;
[(d)] determining, at the server, whether a location of the
first user device was at the venue during the event and is outside
the first area at the first time based on the location data of the
first user device, the location data based on purchase information
associated with the first user that identifies a purchase after the
first time made by the first user at a merchant that is located
outside of the venue for the event;
[(e)] evaluating, at the server, a risk that the seat will be
unused for all or a portion of the event based on the location of
the first user device;
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[(f)] in response to determining the first user device was
at the venue during the event and the location of the first user
device being outside the first area at the first time and the risk
indicating the seat will be unused, sending, by the server, an alert
to the first user device requesting an indication of release of the
seat at the event; and
[(g)] in response to evaluating the risk that the seat will
be unused for all or a portion of the event and based upon the
indication received from the first user device affirming the
release of the seat, transmitting, by the server, an offer of the seat
vacated by the first user to a second user device associated with
a second user.
REJECTION
Claims 1, 6, 7, 10–15, 17, 18, and 20 are rejected under 35 U.S.C.
§ 101 as directed to a judicial exception without significantly more.
ANALYSIS
Appellant argues the pending claims as a group (Appeal Br. 9–18).
We select independent claim 11 as representative. The remaining claims
stand or fall with claim 11. See 37 C.F.R. §41.37(c)(1)(iv).
Under 35 U.S.C. § 101, an invention is patent eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S.
208, 216 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), “for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
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patent-eligible applications of those concepts.” Alice Corp., 573 U.S. at 217.
The first step in that analysis is to “determine whether the claims at issue are
directed to one of those patent-ineligible concepts.” Id. If the claims are not
directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry
ends. Otherwise, the inquiry proceeds to the second step where the elements
of the claims are considered “individually and ‘as an ordered combination’”
to determine whether there are additional elements that “‘transform the
nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo,
566 U.S. at 79, 78). This is “a search for an ‘inventive concept’ — i.e., an
element or combination of elements that is ‘sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself.’” Id. at 217–18 (alteration in original).
On January 7, 2019, the U.S. Patent and Trademark Office (the
“USPTO”) published revised guidance for use by USPTO personnel in
evaluating subject matter eligibility under 35 U.S.C. § 101. 2019 REVISED
PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50, 57
(Jan. 7, 2019) (the “2019 Revised Guidance”). 2 That guidance revised the
USPTO’s examination procedure with respect to the first step of the
Mayo/Alice framework by (1) “[p]roviding groupings of subject matter that
[are] considered an abstract idea”; and (2) clarifying that a claim is not
“directed to” a judicial exception if the judicial exception is integrated into a
practical application of that exception. Id. at 50.

2 The USPTO issued an update on October 17, 2019 (the “October 2019
Update: Subject Matter Eligibility,” available at https://www.uspto.gov/sites/
default/files/documents/peg_oct_2019_update.pdf) clarifying the
2019 Revised Guidance in response to comments received from the public.
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The first step, as set forth in the 2019 Revised Guidance (i.e.,
Step 2A), is, thus, a two-prong test; in Step 2A, Prong One, we look to
whether the claim recites a judicial exception, e.g., one of the following
three groupings of abstract ideas: (1) mathematical concepts; (2) certain
methods of organizing human activity, e.g., fundamental economic
principles or practices, commercial or legal interactions; and (3) mental
processes. 2019 Revised Guidance, 84 Fed. Reg. at 54. If so, we next
determine, in Step 2A, Prong Two, whether the claim as a whole integrates
the recited judicial exception into a practical application, i.e., whether the
additional elements recited in the claim beyond the judicial exception, apply,
rely on, or use the judicial exception in a manner that imposes a meaningful
limit on the judicial exception, such that the claim is more than a drafting
effort designed to monopolize the judicial exception. Id. at 54–55. Only if
the claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application do we conclude that the claim is
“directed to” the judicial exception, e.g., an abstract idea. Id.
If the claim is determined to be directed to a judicial exception under
revised Step 2A, we next evaluate the additional elements, individually and
in combination, in Step 2B, to determine whether they provide an inventive
concept, i.e., whether the additional elements or combination of elements
amounts to significantly more than the judicial exception itself; only then, is
the claim patent eligible. 2019 Revised Guidance, 84 Fed. Reg. at 56.
In rejecting the pending claims under § 101, the Examiner determined
that independent claims 1, 11, and 18 recite a series of steps of
retrieving event information, determining a first area at a first
time, accessing location data, determining whether the location
of a first user was at a venue during the event and is outside the
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first area at the first time, evaluating a risk that a seat at the event
will be unused, sending an alert to the first user, and transmitting
an offer of the seat to a second user[,]
i.e., a method of organizing human activity and, therefore, an abstract idea
(Final Act. 11–12), and that the abstract idea is not integrated into a practical
application because the claims, as a whole, “merely describe how to
generally ‘apply’ the concept of receiving, analyzing, and providing
information in a computer environment” (id. at 12–13). The Examiner also
determined that claims 1, 11, and 18 do not include additional elements
sufficient to amount to significantly more than the judicial exception (id.
at 13–15). And the Examiner determined that dependent claims 7, 10, 12,
13, 15–17, and 20 are patent ineligible for substantially the same reasons (id.
at 15–16).
Step One of the Mayo/Alice Framework (2019 Revised Guidance, Step 2A)
Appellant asserts that claim 11 is not directed to an abstract idea at
least because the claim does not recite subject matter that falls within one of
the enumerated groupings of abstract ideas (Appeal Br. 9). Appellant
maintains that claim 11 does not recite a mathematical algorithm or
relationship, and that the claim is neither concerned with, nor addresses,
fundamental economic principles, commercial or legal interactions, or
behaviors between people (id.). Yet, by Appellant’s own admission,
claim 11 addresses “obtaining the location of a user device, during at least
one time, . . . to determine the risk that [the] user . . . who is a ticket holder
to an event is likely to attend either the entire event or a remaining portion of
the event” and electronically offering the ticket for resale to another
potential ticket holder “[b]ased on determining the likelihood of the user to
attend the event based on his or her current location” (id.) — a process that
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Examiner determined, and we agree, falls squarely within the grouping of
“certain methods of organizing human activity,” e.g., commercial or legal
interactions (including marketing or sales activities or behaviors) (Ans. 4).
This interpretation also is fully consistent with Appellant’s
Specification, which describes the present disclosure as relating to “the
redistribution of purchased event tickets” (Spec. ¶ 1) and the claimed
invention as providing a mechanism whereby a purchaser can recoup money
spent on tickets by redistributing unused, partially used, and/or potentially
unused tickets for various ticketed events (id. ¶¶ 4, 5).
We also are not persuaded by Appellant’s argument that claim 11
integrates the recited abstract idea into a practical application (Appeal
Br. 10–15).3 Appellant maintains that “the claims provide an improvement
to the technical field of electronic ticket purchasing by electronically
determining the ticket holder’s current location with respect to the venue and

3 The 2019 Revised Guidance references MANUAL OF PATENT EXAMINING
PROCEDURE, Ninth Edition (rev. Jan 2018) (available at
https://mpep.uspto.gov/RDMS/MPEP/E9_R-08.2017.) § 2106.05(a)–(c) and
(e) in non-exhaustively listing considerations indicative that an additional
element or combination of elements may have integrated the recited judicial
exception into a practical application. 2019 Revised Guidance, 84 Fed. Reg.
at 55. For example, an additional element may have integrated the judicial
exception into a practice application if the additional element (1) reflects an
improvement in the functioning of a computer or an improvement to other
technology or technical field; (2) implements the judicial exception with, or
uses the judicial exception with, a particular machine or manufacture
integral to the claim; or (3) effects a transformation or reduction of an article
to a different state or thing. Id. However, merely using a computer to
perform an abstract idea, adding insignificant extra-solution activity, or only
generally linking to a particular technological environment or field are not
sufficient for a practical application. Id.
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the event, determining the likelihood that the ticket holder will attend the
event (or a remainder of the event), and electronically offering the ticket (or
the remainder of the ticket) to another potential ticket purchaser” (id. at 14).
Appellant explains that the claims, thus, enable the ticket holder to
recoup at least some of his or her money, and enable another interested
ticket holder to attend the event (id. at 10). But, we are not persuaded that
determining that a ticket holder will not use her seat for at least a remaining
portion of an event, and enabling the ticket holder to recoup at least some of
her money by reselling the ticket to another interested ticket holder, amounts
to a technological improvement, as opposed to an improvement in the
abstract idea of redistributing purchased event tickets. See SAP Am., Inc. v.
InvestPic, LLC, 898 F.3d 1161, 1170 (Fed. Cir. 2018) (“[P]atent law does
not protect such claims[, i.e., claims to an asserted advance in the realm of
abstract ideas], without more, no matter how groundbreaking the advance.”).
This is particularly so where, as here, we find no indication of record that the
operations recited in claim 11 require any specialized computer hardware or
other inventive computer components, invoke any allegedly inventive
programming, or that the claimed invention is implemented using other than
generic computer components to perform generic computer functions. See
DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir.
2014) (“[A]fter Alice, there can remain no doubt: recitation of generic
computer limitations does not make an otherwise ineligible claim patent-
eligible.”).
Appellant cites hypothetical claim 1 of Example 42 of the USPTO’s
2019 Subject Matter Eligibility Examples: Abstract Ideas (the “Eligibility
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Examples”) as supporting its position (Appeal Br. 11–15).4 Yet, we can find
no parallel between claim 1 of Example 42 and claim 11 at issue here.
The USPTO describes in the “Background” section of Example 42
that patients with chronic or undiagnosed illnesses often must visit several
different medical providers for diagnosis and treatment, and that these
physicians may be physically separate from, and unaware of each other.
Eligibility Examples 17. During a visit, each medical provider records
information about the patient’s condition in the provider’s own local patient
records. Id. However, because these records often are stored locally in a
non-standard format (i.e., a format based on the particular hardware or
software platform in use in the medical provider’s office), it is difficult for
the medical provider to share updated information about a patient’s
condition with other health care providers. Id. To address this issue, the
hypothetical appellant in Example 42 invented a network-based patient
management method that “collects, converts[,] and consolidates patient
information from various physicians and health-care providers into a
standardized format, stores [the information] in network-based storage
devices, and generates messages notifying health care providers or patients
whenever that information is updated.” Id.
Applying the 2019 Revised Guidance, the Office determines that
hypothetical claim 1 recites a method of organizing human activity and,
therefore, an abstract idea, i.e., that “[t]he claimed invention is a method that
allows for users to access patients’ medical records and receive updated
patient information in real time from other users, which is a method of

4 Available at https://www.uspto.gov/sites/default/files/documents/
101_examples_37to42_20190107.pdf
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managing interactions between people.” 5 Id. at 18. Nonetheless, the Office
determines that claim 1 is patent eligible because it integrates the recited
abstract idea into a practical application, i.e.,
[t]he claim recites a combination of additional elements
including storing information, providing remote access over a
network, converting updated information that was input by a user
in a non-standardized form to a standardized format,
automatically generating a message whenever updated
information is stored, and transmitting the message to all of the
users. . . . Specifically, the additional elements recite a specific
improvement over prior art systems by allowing remote users to
share information in real time in a standardized format

5 Claim 1 of Example 42 recites:
A method comprising:
a) storing information in a standardized format about a patient’s
condition in a plurality of network-based non-transitory storage devices
having a collection of medical records stored thereon;
b) providing remote access to users over a network so any one of
the users can update the information about the patient’s condition in the
collection of medical records in real time through a graphical user
interface, wherein the one of the users provides the updated information
in a non-standardized format dependent on the hardware and software
platform used by the one of the users;
c) converting, by a content server, the non-standardized updated
information into the standardized format,
d) storing the standardized updated information about the
patient’s condition in the collection of medical records in the
standardized format;
e) automatically generating a message containing the updated
information about the patient’s condition by the content server
whenever updated information has been stored; and
f) transmitting the message to all of the users over the computer
network in real time, so that each user has immediate access to up-to-
date patient information.
Eligibility Examples 18.
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regardless of the format in which the information was input by
the user.
Id. at 18–19 (emphasis added).
Appellant asserts here that whereas previously, a ticket holder, finding
himself unable to attend the remainder of an event, would likely be forced to
abandon the cost of the ticket as a sunk cost (i.e., given the time and effort it
would take for the ticket holder to advertise that he had a ticket, find a
potential purchaser, negotiate a price, and sell the ticket), claim 11 provides
“an electronic and automatic mechanism for the ticket holder to leave the
event early, and based on determining his or her location, sell the ticket
holder’s ticket to another interested attendee automatically, electronically,
and in real-time” (Appeal Br. 11–12).
Appellant argues that Appellant’s claims, thus, “enable a system to
automatically perform steps not previously performed by the system for the
convenience of the user” (id. at 14), and that the claims, like hypothetical
claim 1 of Example 42, “serve[ ] the practically [sic] application of
improving the economic situation of the original ticket holder, the venue,
and the ticket seller” by “determining the original ticket holder’s
unlikelihood to attend a remaining portion of the event and providing the
ticket for resale to another ticket [purchaser]” (id.).6 Therefore, according to
Appellant, “Appellant’s claims, like Claim 1 of Example 42, are not directed
to a recited judicial exception as Appellant’s claims at least recite a process
that is integrated into a practical application” (id.).

6 Appellant explains that this is so inasmuch as the original ticket holder
may recoup some money and the venue and/or the ticket seller may not be
forced to issue a refund or lose out on future sales due to the frustration of
the ticket holder (id.).
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The difficulty with Appellant’s argument is that hypothetical claim 1
of Example 42 was deemed patent eligible because it provided a specific
improvement over prior systems by allowing remote users to share
information in real time in a standardized format regardless of the format in
which the information was originally input (see Eligibility Examples 18–19).
Hypothetical claim 1, thus, addressed technological difficulties related to
incompatible computer formats, disparate geographic locations, and the
untimely sharing of information (see id. at 17). Appellant has not
demonstrated that claim 11 provides a comparable technological
improvement.
We also are not persuaded of Examiner error to the extent Appellant
maintains that claim 11 is patent eligible because the abstract idea of
redistributing purchased tickets is implemented with, or uses a particular
machine or manufacture, i.e., “a server” and “first user device” (as recited in
claim 1 and also recited in claim 11), that is integral to the claim (Appeal
Br. 14). The Federal Circuit has recognized that the machine-or-
transformation test,7 although not the only test, “can provide a ‘useful clue’”
to patent eligibility under the Mayo/Alice framework. Ultramercial, Inc. v.
Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014) (quoting Bilski, 561 U.S.
at 594). As such, satisfying either prong of that test may integrate an
abstract idea into a practical application. See 2019 Revised Guidance,
84 Fed. Reg. at 55 nn.27–28 (citing MPEP § 2106.05(b), (c)).

7 Under the machine-or-transformation test, a claimed process is patent
eligible if: (1) it is tied to a particular machine or apparatus, or (2) it
transforms a particular article into a different state or thing. In re Bilski,
545 F.3d 943, 954 (Fed. Cir. 2008), aff’d sub nom. Bilski v. Kappos,
561 U.S. 593 (2010).
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At the same time, however, it is well settled that “whether a [recited]
device is ‘a tangible system (in § 101 terms, a ‘machine’)’ is not
dispositive.” ChargePoint, Inc. v. SemaConnect, Inc., 920 F.3d 759, 770
(Fed. Cir. 2019) (quoting Alice Corp., 573 U.S. at 224). For a machine to
impose a meaningful limit on the claimed invention, it must play a
significant part in permitting a claimed method to be performed, rather than
merely providing the generic environment in which to implement the recited
abstract idea. Cf. Versata Dev. Grp. v. SAP Am., Inc., 793 F.3d 1306, 1335
(Fed. Cir. 2015) (explaining that in order for a machine to add significantly
more, 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”); see also MPEP
§ 2106.05(b)(II) (citing Versata).
Here, the server and user device play the latter role. We find no claim
limitations directed to a particular machine nor, for that matter, does
Appellant direct our attention to any such specific elements, whether in the
claim or elsewhere in the Specification. Rather than being tied to a
particular machine, claim 11 merely implements an abstract idea using
generic computer components (see, e.g., Spec. ¶¶ 25, 26 (describing that
“[e]xemplary servers may include, for example, stand-alone and enterprise-
class servers operating a server OS such as a MICROSOFT® OS, a UNIX®
OS, a LINUX® OS, or other suitable server-based OS”; that client (user)
devices may comprise “a laptop, a mobile computing device, a PC, and/or
any other computing device having computing and/or communications
capabilities”; and that it is specifically contemplated that client devices can
include “a cellular telephone or other similar mobile device that a user can
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carry on or about his or her person and access readily”)), which is not
enough for patent eligibility. See Alice Corp., 573 U.S. at 223 (“[T]he mere
recitation of a generic computer cannot transform a patent-ineligible abstract
idea into a patent-eligible invention.”); BASCOM Glob. Internet Servs., Inc.
v. AT&T Mobility LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016) (“An abstract
idea on ‘an Internet computer network’ or on a generic computer is still an
abstract idea”) (citation omitted).
We conclude, for the reasons outlined above, that claim 11 recites a
method of organizing human activity, i.e., an abstract idea, and that the
additional elements recited in the claim, i.e., a “server”; a “network-
accessible event database”; a “first user device”; and a “second user device,”
are no more than generic computer components used as tools to perform the
recited abstract idea. As such, they do not integrate the abstract idea into a
practical application. See Alice Corp., 573 U.S. at 223–24 (“[W]holly
generic computer implementation is not generally the sort of ‘additional
featur[e]’ that provides any ‘practical assurance that the process is more than
a drafting effort designed to monopolize the [abstract idea] itself.’” (quoting
Mayo, 566 U.S. at 77)). Accordingly, we agree with the Examiner that
claim 11 is directed to an abstract idea.
Step Two of the Mayo/Alice Framework (2019 Revised Guidance, Step 2B)
Having determined under step one of the Mayo/Alice framework that
claim 11 is directed to an abstract idea, we next consider under Step 2B of
the 2019 Revised Guidance, the second step of the Mayo/Alice framework,
whether claim 11 includes additional elements or a combination of elements
that provides an “inventive concept,” i.e., whether the additional elements
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amount to “significantly more” than the judicial exception itself.
2019 Revised Guidance, 84 Fed. Reg. at 56.
Appellant maintains here that the present rejection cannot be sustained
because “the claim elements, considered in combination, are not well-
understood, routine, or conventional” (Appeal Br. 16). Appellant asserts
that
the combination of the steps ‘operates in a non-conventional and
non-generic way’ to retriev[e] event information including a start
time, duration and venue, determine a ticket holder’s location as
a function of time, access location data generated by the ticket
holder's device, determine that the ticket holder made a purchase
outside of the time during the time of the event, determine a risk
that the seat held by the ticket holder will remain unused for the
remainder of the event, electronically communicate an alert to
the ticket holder’s device that his or her seat will be released to
another, and electronically communicating an offer to a potential
ticket purchasers to purchase the remainder of the ticket holder’s
seat
(id. at 17–18). But, that argument is not persuasive at least because the
limitations that Appellant identifies, i.e., steps (a) and (d) through (g) recited
in claim 11, as the inventive concept are part of the abstract idea; they are
not additional elements to be considered when determining whether claim 11
includes additional elements or a combination of elements sufficient to
amount to significantly more than the judicial exception.
It could not be clearer from Alice, that under step two of the
Mayo/Alice framework, the elements of each claim are considered both
individually and “as an ordered combination” to determine whether the
additional elements, i.e., the elements other than the abstract idea itself,
“transform the nature of the claim” into a patent-eligible application. Alice
Corp., 573 U.S. at 217 (citation omitted); see Mayo, 566 U.S. at 72–73
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(requiring that “a process that focuses upon the use of a natural law also
contain other elements or a combination of elements, sometimes referred to
as an ‘inventive concept,’ sufficient to ensure that the patent in practice
amounts to significantly more than a patent upon the natural law itself”
(emphasis added) (citation omitted)). In other words, the inventive concept
under step two of the Mayo/Alice test cannot be the abstract idea itself:
It is clear from Mayo that the “inventive concept” cannot be the
abstract idea itself, and Berkheimer . . . leave[s] untouched the
numerous cases from this court which have held claims ineligible
because the only alleged “inventive concept” is the abstract idea.
Berkheimer v. HP Inc., 890 F.3d 1369, 1374 (Fed. Cir. 2018) (Moore, J.,
concurring); see also BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281,
1290 (Fed. Cir. 2018) (“It has been clear since Alice that a claimed
invention’s use of the ineligible concept to which it is directed cannot supply
the inventive concept that renders the invention ‘significantly more’ than
that ineligible concept.”).
The Examiner determined here, and we agree, that the only claim
elements recited in claim 11 beyond the abstract idea are a “server”;
a “network-accessible event database”; a “first user device”; and a “second
user device,” i.e., generic computer components used to perform generic
computer functions (Final Act. 6, 12–15) — a determination amply
supported by, and fully consistent with the Specification (see, e.g., Spec.
¶¶ 25, 26, 35).8 Appellant cannot reasonably maintain that there is

8 The Office’s April 19, 2018 Memorandum to the Examining Corps from
Deputy Commissioner for Patent Examination Policy, Robert W. Bahr,
entitled, Changes in Examination Procedure Pertaining to Subject Matter
Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP,
Inc.), available at https://www.uspto.gov/sites/default/files/documents/
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insufficient factual support for the Examiner’s determination that the
operation of these components is well-understood, routine, or conventional,
where, as here, there is nothing in the Specification to indicate that the
operations recited in claim 11 require any specialized hardware or inventive
computer components or that the claimed invention is implemented using
other than a generic computer component to perform generic computer
functions, e.g., receiving, transmitting, and processing information. Indeed,
the Federal Circuit, in accordance with Alice, has “repeatedly recognized the
absence of a genuine dispute as to eligibility” where claims have been
defended as involving an inventive concept based “merely on the idea of
using existing computers or the Internet to carry out conventional processes,
with no alteration of computer functionality.” Berkheimer, 890 F.3d at 1373
(Moore, J., concurring) (internal citations omitted); see also BSG Tech,
899 F.3d at 1291 (“BSG Tech does not argue that other, non-abstract
features of the claimed inventions, alone or in combination, are not well-
understood, routine and conventional database structures and activities.
Accordingly, the district court did not err in determining that the asserted
claims lack an inventive concept.”).
Appellant also misapprehends the controlling precedent to the extent
Appellant maintains that claim 11 is patent eligible because the Examiner
determined that the claim is allowable in view of the cited references
(Appeal Br. 18). Neither a finding of novelty nor a non-obviousness

memo-berkheimer-20180419.PDF, expressly directs that an examiner may
support the position that an additional element (or combination of elements)
is well-understood, routine or conventional with “[a] citation to an express
statement in the specification . . . that demonstrates the well-understood,
routine, conventional nature of the additional element(s)” (id. at 3).
Appeal 2020-000914
Application 14/096,335

18
determination automatically leads to the conclusion that the claimed subject
matter is patent eligible. Although the second step in the Mayo/Alice
framework is termed a search for an “inventive concept,” the analysis is not
an evaluation of novelty or non-obviousness, but rather, a search for “an
element or combination of elements that is ‘sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself.’” Alice Corp., 573 U.S. at 217–18 (citation
omitted). “Groundbreaking, innovative, or even brilliant discovery does not
by itself satisfy the § 101 inquiry.” Ass’n for Molecular Pathology v.
Myriad Genetics, Inc., 569 U.S. 576, 591 (2013). A novel and non-obvious
claim directed to a purely abstract idea is, nonetheless, patent ineligible. See
Mayo, 566 U.S. at 90; see also Diamond v. Diehr, 450 U.S. 175, 188–89
(1981) (“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.”).
We are not persuaded, on the present record, that the Examiner erred
in rejecting independent claim 11 under 35 U.S.C. § 101. Therefore, we
sustain the Examiner’s rejection of claim 11, and claims 1, 6, 7, 10, 12–15,
17, 18, and 20, which fall with claim 11.
Appeal 2020-000914
Application 14/096,335

19
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 6, 7, 10–
15, 17, 18,
20
101 Eligibility 1, 6, 7, 10–
15, 17, 18,
20

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED