THOMSON LICENSINGDownload PDFPatent Trials and Appeals BoardMar 31, 20212019006561 (P.T.A.B. Mar. 31, 2021) 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. 15/535,058 06/11/2017 Arden A. ASH 2014P00137WOUS 9315 14868 7590 03/31/2021 Patent Docketing 200 Bellevue Parkway, Suite 300 Attention: Docketing Wilmington, DE 19809 EXAMINER TAYLOR, JOSHUA D ART UNIT PAPER NUMBER 2426 NOTIFICATION DATE DELIVERY MODE 03/31/2021 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): docketing@interdigital.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ARDEN A. ASH and VICTOR WANG _____________ Appeal 2019-006561 Application 15/535,058 Technology Center 2400 ____________ Before ST. JOHN COURTENAY III, JOHNNY A. KUMAR, and MICHAEL T. CYGAN, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from a final rejection of claims 1–9, 11, 13–18, and 20. Claims 10, 12, 19, and 21–25 are canceled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a) (2019). According to Appellant, the real party in interest is Interdigital Ce Patent Holdings, Paris, France. See Appeal Br. 3. Appeal 2019-006561 Application 15/535,058 2 STATEMENT OF THE CASE Invention Embodiments of the disclosed and claimed invention on appeal relate “generally to content delivery systems and, more particularly, to a user interface for generating content recommendations.” Spec. 1. Representative Claim 1 1. A method for generating a content recommendation, comprising: obtaining, a ranking of an inclusionary portion of metadata derived from instances of content for which graphical representations are presented in a user interface and an exclusionary portion of the metadata, the metadata ranked based on positions of the graphical representations in the user interface; generating a content recommendation based on the ranking of the inclusionary portions of the metadata and the exclusionary portions of the metadata; and modifying the metadata from the instances of content based on user input. Appeal Br. 15 (Claims App.) (Disputed dispositive limitation emphasized regarding anticipation Rejection B of claim 1). Evidence Relied Upon by the Examiner Name Reference Date Polson et al. (“Polson”) US 2004/0267742 A1 Dec. 30, 2004 Fadell US 2009/0171812 A1 Jul. 2, 2009 Aarni et al. (“Aarni”) US 2010/0325583 A1 Dec. 23, 2010 Ortiz US 2013/0097101 A1 Apr. 18, 2013 Appeal 2019-006561 Application 15/535,058 3 Table of Rejections2 Rejection Claims Rejected 35 U.S.C. § Reference(s)/Basis A 1–9, 11, 13–18, 20 101 Eligibility B 1–4, 11, 13, 15–17, 20 102(a)(1) Aarni C 2, 3 103 Aarni, Ortiz D 7, 14, 18 103 Aarni, Fadell E 8, 9 103 Aarni, Polson ANALYSIS Throughout this opinion, we give the claim limitations the broadest reasonable interpretation (BRI) consistent with the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). We have considered all of Appellant’s arguments and any evidence presented. We highlight and address specific findings and arguments for emphasis in our analysis below. Rejection A Under 35 U.S.C. § 101 USPTO 35 U.S.C. § 101 MPEP Guidance In January and October of 2019, the U.S. Patent and Trademark Office (“USPTO”) published revised guidance on the application of 35 U.S.C. § 101.3 We note the USPTO current eligibility guidance is found 2 We note the Examiner does not make a rejection over prior art for claims 5 and 6. 3 See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019 Revised Guidance”) and USPTO, October 2019 Appeal 2019-006561 Application 15/535,058 4 in the Ninth Edition, Revision 10.2019 (revised June 2020) of the Manual of Patent Examination Procedure (“MPEP”), and particularly within Sections 2103 through 2106.07(c). Accordingly, all references to the MPEP throughout this Decision are to the Ninth Edition, Revision 10.2019 (Last Revised June 2020), unless otherwise indicated. Under MPEP § 2106, 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 (“Step 2A, Prong Two”).4 MPEP § 2106, Step 2A, Prong One The Judicial Exception Under MPEP § 2106.04(a), the enumerated groupings of abstract ideas are defined as follows: (1) Mathematical concepts – mathematical relationships, mathematical formulas or equations, mathematical calculations (see MPEP § 2106.04(a)(2), subsection I); (2) Certain methods of organizing human activity – fundamental economic principles or practices (including Update: Subject Matter Eligibility (the “October 2019 Update”). “All USPTO personnel are, as a matter of internal agency management, expected to follow the guidance.” 84 Fed. Reg. at 51; October 2019 Update at 1. 4 “Examiners evaluate integration into a practical application by: (1) identifying whether there are any additional elements recited in the claim beyond the judicial exception(s); and (2) evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application.” MPEP § 2106.04(d)II. Appeal 2019-006561 Application 15/535,058 5 hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions) (see MPEP § 2106.04(a)(2), subsection II); and (3) Mental processes – concepts performed in the human mind (including an observation, evaluation, judgment, opinion) (see MPEP § 2106.04(a)(2), subsection III). In the Final Action, under Step 2A, Prong One, the Examiner cites to, inter alia, the case authority Electric Power Group, LLC v. Alstom S.A. (830 F.3d 1350 (Fed. Cir. 2016)): Claims 1, 11 and 16 recite, in part, a method, computing device and computer program product for obtaining a ranking of metadata, generating a content recommendation based on the ranking, and modifying the metadata. These steps relate to the concept of collecting information, analyzing it, and displaying certain results of the collection and analysis, which corresponds to concepts identified as abstract ideas by the courts, such as in Electric Power Group, or Int. Ventures v. Cap One Financial. Final Act. 2–3 (emphasis added). Appellant disagrees: Appellant respectfully submits that the present claimed invention does not fall into any of the above “abstract ideas” grouping exceptions which would require further analysis, since the claims do not recite any of mathematical concepts, certain methods of organizing human activity, and mental processes; as well as laws of nature and natural phenomena. Appeal Br. 9. Appeal 2019-006561 Application 15/535,058 6 The Examiner disagrees with Appellant, and in the Answer (post- 2019 Revised Guidance), determines that the claims recite the judicial exception of a mental process: The limitation of obtaining a ranking, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components. That is, other than reciting “by the processor (in claim 11, for example),” nothing in the claim element precludes the step from practically being performed in the mind. For example, but for the “by the processor” language, “obtaining” in the context of this claim encompasses the user manually ranking the metadata. Similarly, the limitation of generating a recommendation, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components. Ans. 5 (emphasis added). Regarding independent claim 1, we agree with the Examiner that a user could alternatively manually rank and/or modify metadata based upon user input as a mental process, as defined under MPEP § 2106.04(a)(2), subsection III. We note similar limitations of commensurate scope are recited in independent computing device claim 11, and independent computer program product claim 16. Regarding the Examiner’s initial reliance upon Electric Power Group (830 F.3d 1350) in the Final Action (2–3), we emphasize that combining several abstract ideas does not render the combination any less abstract. See RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017) (“Adding one abstract idea (math) to another abstract idea . . . does not render the claim non-abstract.”); see also FairWarning IP, LLC v. Iatric Appeal 2019-006561 Application 15/535,058 7 Sys., Inc., 839 F.3d 1089, 1093–94 (Fed. Cir. 2016) (determining the pending claims were directed to a combination of abstract ideas). MPEP § 2106.04(a) guides that “[i]f the identified limitation(s) falls within at least one of the groupings of abstract ideas, it is reasonable to conclude that the claim recites an abstract idea in Step 2A Prong One.” In such case, “[t]he claim then requires further analysis in Step 2A Prong Two, to determine whether any additional elements in the claim integrate the abstract idea into a practical application, see MPEP § 2106.04(d).” MPEP 2106.04(a). Because we conclude that all claims 1–9, 11, 13–18, and 20 recite an abstract idea, as identified above, under Step 2A, Prong One, we proceed to Step 2A, Prong Two, in which we apply the guidance set forth under MPEP § 2106.04(d).5 Step 2A, Prong Two Under MPEP § 2106.04(d), Integration of the Judicial Exception into a Practical Application Limitations that are indicative of integration into a practical application under MPEP § 2106.04(d) include: 1. Improvements to the functioning of a computer, or to any other technology or technical field — see MPEP § 2106.05(a); 2. Applying the judicial exception with, or by use of, a particular machine — see MPEP § 2106.05(b); 3. Effecting a transformation or reduction of a particular article to a different state or thing — see MPEP § 2106.05(c); and 4. Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the 5 We note that each dependent claim includes all the limitations of the claims from which it depends. Appeal 2019-006561 Application 15/535,058 8 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(e). In contrast, limitations that are not indicative of integration into a practical application include: 1. Adding the words “apply it” (or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea — see MPEP § 2106.05(f); 2. Adding insignificant extra-solution activity to the judicial exception — see MPEP § 2106.05(g); and 3. Generally linking the use of the judicial exception to a particular technological environment or field of use — see MPEP § 2106.05(h). See MPEP § 2106.04(d)(I) (Describing Step 2A, Prong Two). Additional Limitations Applying the USPTO guidance under MPEP § 2106.04(d), we consider whether there are additional elements set forth in the claims that integrate the judicial exception into a practical application. We note that claims 1–9, 11, 13–18, and 20 recite steps or functions that are intended to be implemented by a computer and/or a computer system including one or more processors. Although method claim 1 is silent regarding any literal mention of a computer or processor, claim 1 recites the use of a user interface. Independent claim 11 expressly recites: “A computing device, comprising: at least one processor.” Similarly, independent computer program product claim 16 recites instructions that are “executable by a processing unit.” Appeal 2019-006561 Application 15/535,058 9 We further note the supporting exemplary, non-limiting descriptions of generic computer components found in the Specification. For example, see Spec. 7, ll. 21–24: The content receiver 103 may be any electronic device (such as a set top box, a desktop computer, a laptop computer, a mobile device, a smart phone, a cellular telephone, a tablet computer, a digital media player, and so on) capable of requesting and/or presenting content received from the computing device 101. (emphasis added). We emphasize that McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016), guides: “The abstract idea exception prevents patenting a result where ‘it matters not by what process or machinery the result is accomplished.’” 837 F.3d at 1312 (quoting O’Reilly v. Morse, 56 U.S. 62, 113 (1854)) (emphasis added). Here, we find Appellant’s claimed invention merely implements the abstract idea using instructions executed on generic computer components. Therefore, we conclude Appellant’s claims 1–9, 11, 13–18, and 20 merely use a generic programmed computer as a tool to perform an abstract idea. See MPEP § 2106.05(f). Extra- or Post-Solution Activities Under MPEP § 2106.05(g) “[T]he prohibition against patenting abstract ideas ‘cannot be circumvented by attempting to limit the use of the formula to a particular technological environment’ or [by] adding ‘insignificant post[-]solution activity.’” Bilski v. Kappos, 561 U.S. 593, 610–12 (2010) (quoting Diamond v. Diehr, 450 U.S. 175, 191–92 (1981)). Appeal 2019-006561 Application 15/535,058 10 Here, we conclude that independent claim 1 recites one or more additional limitations that are extra-solution activities the courts have determined to be insufficient to transform judicially excepted subject matter into a patent-eligible application. See MPEP § 2106.05(g). For example, we conclude that the claim 1 step of “obtaining, a ranking of an inclusionary portion of metadata” is merely data gathering. Cf. buySAFE v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (“That a computer receives and sends the information over a network—with no further specification—is not even arguably inventive.”). We note similar limitations of commensurate scope are recited in independent claims 11 and 16. MPEP § 2106.05(a) — Improvement to the Functionality of a Computer or Other Technology or Technical Field. Applying the guidance under MPEP § 2106.05(a), we consider whether there are any claimed improvements to the functioning of a computer or to any other technology or technical field. In reviewing the record, we find Appellant does not advance any arguments explaining how the claimed generic computer components aid the method, the extent to which the computer aids the method, or the significance of a computer to the performance of the method to improve the recited computer components. See MPEP § 2106.05(a). Appellant, who had the benefit of the 2019 Revised Guidance at the time the Appeal Brief was filed (April 1, 2019), advances no arguments regarding any claimed improvements to the functioning of a computer or to any other technology or technical field. Nor has Appellant filed a Reply Brief in further rebuttal to the Examiner’s responsive explanations in the Appeal 2019-006561 Application 15/535,058 11 Answer. To the extent that Appellant has not advanced separate, substantive arguments for particular claims, or other issues, such arguments are forfeited.6 See, e.g., 37 C.F.R. § 41.37(c)(1)(iv) (“the failure of appellant to separately argue claims which appellant has grouped together shall constitute a waiver of any argument that the Board must consider the patentability of any grouped claim separately.”). To the extent that Appellant’s “method for generating a content recommendation” (claim 1) merely automates a manual (human) approach to recommending content, we note that the “‘mere automation of manual processes using generic computers’ . . . ‘does not constitute a patentable improvement in computer technology,’” Trading Techs. Int’l v. IBG LLC, 921 F.3d 1378, 1384 (Fed. Cir. 2019) (quoting Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017). And “[u]sing a computer to accelerate an ineligible mental process does not make that process patent-eligible.” Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Canada (U.S.), 687 F.3d 1266, 1279 (Fed. Cir. 2012); see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) 6 See In re Google Technology Holdings LLC, No. 2019-1828, 2020 WL 6685948 at * 3 (Fed. Cir. 2020): It is well established that “[w]aiver is different from forfeiture.” United States v. Olano, 507 U.S. 725, 733 (1993).[] “Whereas forfeiture is the failure to make the timely assertion of a right, waiver is the ‘intentional relinquishment or abandonment of a known right.’” Id. (quoting Johnson v. Zerbst, 304 U.S. 458, 464 (1938)) (additional citations omitted). The two scenarios can have different consequences for challenges raised on appeal, id. at 733–34, and for that reason, it is worth attending to which label is the right one in a particular case. Appeal 2019-006561 Application 15/535,058 12 (“[R]elying on a computer to perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible.”). To the extent that Appellant’s independent method claim 1, independent computing device claim 11, and independent computer program product claim 16, are arguendo an improvement over prior-art methods, computing devices, and mediums we note that an improved abstract idea is still an abstract idea. See Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 90 (2012) (holding that a novel and nonobvious claim directed to a purely abstract idea is, nonetheless patent ineligible). See also 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.”) (emphasis omitted). Accordingly, on this record, we conclude that independent claim 1 does not recite an improvement to the functionality of a computer or other technology or technical field. See MPEP § 2106.05(a). As noted above, remaining independent claims 11 and 16 recite similar limitations having commensurate scope. MPEP § 2106.05(b), 2106.05(c) Appellant advances no arguments that any of the method claims on appeal are tied to a particular machine (MPEP § 2106.05(b)), or transform an article to a different state or thing (MPEP § 2106.05(c)). Appeal 2019-006561 Application 15/535,058 13 MPEP § 2106.05(e) Meaningful Claim Limitations The Examiner finds: The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional computer elements, which are recited at a high level of generality, provide conventional computer functions that do not add meaningful limits to practicing the abstract idea. Final Act. 2 (emphasis added). Appellant disagrees, and contends: Appellant respectfully submits that the present claimed invention is clearly directed to a practical application of at least adaptive streaming over HTTP to the operation of [a] network equipment method and device for generating content recommendations in a manner that is controllable by a user. Accordingly, the claimed invention imposes a meaningful limit on any possible judicial exception and does not monopolize any such possible judicial exception, even under Prong Two of the Step 2A of the revised patent eligibility Guidance. Appeal Br. 10 (emphasis added). But Appellant’s claims 1–9, 11, 13–18, and 20 on appeal are silent regarding any mention of “adaptive streaming over HTTP” or of any mention of a network.7 Therefore, we find Appellant’s arguments unavailing. 7 “It is the claims that measure the invention.” See SRI Int’l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc) (citations omitted); In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998) (“[T]he name of the game is the claim.”). “We have cautioned against reading limitations into a claim from the preferred embodiment described in the specification, even if it is the only embodiment described, absent clear Appeal 2019-006561 Application 15/535,058 14 Merely adding generic hardware and computer components to perform abstract ideas does not integrate those ideas into a practical application. See Alice Corp. Pty. Ltd. v. CLS Bank Intern., 573 U.S. 208, 223 (2014) (The “mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention.”). Because Appellant does not advance any substantive, persuasive arguments explaining how the judicial exception is applied or used in some meaningful way, as clarified under MPEP § 2106.05(e), on this record, we are not persuaded the Examiner erred. Accordingly, under Step 2A, Prong Two (MPEP § 2106.05(a)–(c) and (e)–(h)), we conclude that all claims 1–9, 11, 13–18, and 20 do not integrate the judicial exception into a practical application. The Inventive Concept – Step 2B As set forth under MPEP § 2106.05(d)), only if a claim (1) recites a judicial exception, and (2) does not integrate that exception into a practical application, do we then look, under Step 2B, to whether the claim: (3) adds a specific limitation beyond the judicial exception that is not “well- understood, routine, conventional activity” in the field; 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. disclaimer in the specification.” In re Am. Acad. of Science Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004) (emphasis added). Appeal 2019-006561 Application 15/535,058 15 Under Step 2B, the Examiner finds: the additional element of using a processor to perform the obtaining, generating and modifying steps amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. The claim is not patent eligible. Ans. 6 (emphasis added). Appellant advances no arguments falling under Step 2B to rebut the Examiner’s finding under MPEP § 2106.05(d). Nor has Appellant filed a Reply Brief in further rebuttal to the Examiner’s responsive explanations in the Answer. To the extent that Appellant has not advanced separate, substantive arguments for particular claims, or other issues, such arguments are forfeited. See, e.g., 37 C.F.R. § 41.37(c)(1)(iv). To the extent that Appellant additionally argues that the claims on appeal do not “monopolize any such possible judicial exception, even under Prong Two of the Step 2A of the revised patent eligibility Guidance” (Appeal Brief 10), our reviewing court provides applicable guidance: “[w]hile preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015); see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362–63 (Fed. Cir. 2015) (“that the claims do not preempt all price optimization or may be limited to price optimization in the e-commerce setting do not make them any less abstract”). For at least the aforementioned reasons, we are not persuaded that Appellant’s claims do more than simply append well-understood, routine, and conventional activities previously known to the industry, specified at a Appeal 2019-006561 Application 15/535,058 16 high level of generality, to the judicial exception. We again emphasize that an improved abstract idea is still an abstract idea. See Mayo, 566 U.S. at 90; see also Synopsys, 839 F.3d at 1151 (“[A] claim for a new abstract idea is still an abstract idea.”) (emphasis omitted). Moreover, because Appellant does not advance substantive, persuasive arguments regarding any claimed non-conventional and non- generic arrangement of known computer components, we find no inventive concept under Step 2B in any purported ordered combination of these limitations. We find Appellant’s claims are unlike the claims considered by the court in BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016), in which the court found “an inventive concept . . . in the non-conventional and non-generic arrangement of known, conventional pieces.” 827 F.3d at 1350 (emphases added). In light of the foregoing, we conclude that each of Appellant’s claims 1–9, 11, 13–18, and 20, 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. Therefore, on this record, we sustain the Examiner’s Rejection A under 35 U.S.C. § 101 of all claims 1–9, 11, 13–18, and 20 on appeal.8 8 Based upon Appellant’s arguments, we decide the appeal of Rejection A under 35 U.S.C. § 101 of claims 1–9, 11, 13–18, and 20 based upon representative claim 1. To the extent Appellant has not advanced separate, substantive arguments for particular claims, or other issues, such arguments are forfeited. See, e.g., 37 C.F.R. § 41.37(c)(1)(iv). Appeal 2019-006561 Application 15/535,058 17 Rejection B of Independent Claim 1 Under 35 U.S.C. § 102 Issues: Under 35 U.S.C. § 102(a)(1), did the Examiner err by finding the cited Aarni reference inherently or expressly discloses or describes the following claim 1 limitation: “modifying the metadata from the instances of content based on user input.” (emphasis added). Regarding the aforementioned disputed limitation of claim 1, Appellant notes that Aarni: describes an approach for classification of content to be rendered on user equipment (see, Aarni at paragraph [0002]). In Aarni, a user interface 200 presents multiple sliding scales 201 a-f to a client (see, Aarni at paragraph [0031]). The user indicates a position along a horizontal bar for each sliding scale 201 a-f and submit such selection via a submit button to the user interface (see, Aarni at paragraph [0031]). Based on the submitted sliding scale information, a six-dimensional vector is used to classify content and a recommendation is made to the user (see, Aarni at paragraphs [0034-0036]). Contrary to the Examiner's assertion, Aarni does not “modify the metadata from the instances of content based on user input” after a recommendation is made to the user. For at least this reason, claims 1, 11 and 16 are patentable over Aarni. Appeal Br. 11 (emphasis added). The Examiner disagrees with Appellant, and further explains the basis for the rejection. As an initial matter of claim construction, the Examiner concludes: First, the claims do not require that modification of the metadata occurs after a recommendation is made to the user. That is, even though steps may be listed in a claim in a certain order, the claim does not require said steps to be performed in a given order unless there is specific claim language linking the steps and dictating an order. Were a claim to state, for Appeal 2019-006561 Application 15/535,058 18 example, ‘performing step A, and then, after performing step A, performing step B,’ such a claim would contain such a requirement of order. However, the instant claim language does not. Ans. 13 (emphasis added). We agree with the Examiner’s broader claim construction,9 because the antecedent basis for the metadata that is modified (in the last step) is found in the first step of claim 1: “obtaining, a ranking of an inclusionary portion of metadata . . . .” (emphasis added). “[A]lthough a method claim necessarily recites the steps of the method in a particular order, as a general rule the claim is not limited to performance of the steps in the order recited, unless the claim explicitly or implicitly requires a specific order.” Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1345 (Fed. Cir. 2008). Applying this guidance here, we conclude that the last step of “modifying” could alternatively be performed before the recited step of “generating a content recommendation,” in method claim 1, contrary to Appellant’s arguments. See Appeal Br. 11. We also find a preponderance of the evidence supports the Examiner’s finding of anticipation by Aarni of the claim 1 step of “modifying the metadata from the instances of content based on user input.” (emphasis added), because we find Aarni’s Figure 2 (depicting sliders adjustable by the 9 Because “applicants may amend claims to narrow their scope, a broad construction during prosecution creates no unfairness to the applicant or patentee.” In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (citation omitted). Appeal 2019-006561 Application 15/535,058 19 user) anticipates the disputed last modifying step of claim 1, as further described in Aarni’s description at paragraph 31. Accordingly, for essentially the same reasons found by the Examiner, as further discussed above, we sustain the Examiner’s anticipation Rejection B of independent claim 1. Associated claims 2–4, 11, 13, 15–17, and 20 (not argued separately) fall with representative claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). Obviousness Rejections C, D, and E of all Remaining Dependent Claims Regarding the obviousness rejections, Appellant contends that the additionally cited secondary references do not teach or suggest “modifying the metadata from the instances of content based on user input,” as recited in the last step of claim 1. See Appeal Br. 12–13. However, we find no deficiencies in the Examiner’s anticipation Rejection B of claim 1 over Aarni, for the reasons discussed above. In light of our affirmance of anticipation Rejection B of independent claims 1, 11, and 16, supra, we also sustain the Examiner’s obviousness Rejections C, D, and E of all remaining dependent claims which variously and ultimately depend therefrom. CONCLUSIONS By applying the Director’s 2019 Revised Guidance and October 2019 Update, as now set forth under MPEP Sections 2103 through 2106.07(c), we conclude that all claims 1–9, 11, 13–18, and 20, as rejected by the Examiner under 35 U.S.C. § 101, are not directed to patent-eligible subject matter. Appeal 2019-006561 Application 15/535,058 20 The Examiner did not err in rejecting claims 1–4, 11, 13, 15–17, and 20 as being anticipated under 35 U.S.C. § 102(a)(1) over Aarni. The Examiner did not err in rejecting claims 2, 3, 7–9, 14, and 18 as being obvious under 35 U.S.C. § 103, over the cited combinations of references. DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–9, 11, 13–18, 20 101 Eligibility 1–9, 11, 13–18, 20 1–4, 11, 13, 15–17, 20 102(a)(1) Aarni 1–4, 11, 13, 15–17, 20 2, 3 103 Aarni, Ortiz 2, 3 7, 14, 18 103 Aarni, Fadell 7, 14, 18 8, 9 103 Aarni, Polson 8, 9 Overall Outcome 1–9, 11, 13–18, 20 FINALITY AND RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37 C.F.R. § 41.50(f). AFFIRMED Copy with citationCopy as parenthetical citation