TraceLink, Inc.

Patent Trials and Appeals Board

Nov 23, 2020

2020004761 (P.T.A.B. Nov. 23, 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.
15/283,532 10/03/2016 Shabbir Dahod 1276-004CON 5309
29973 7590 11/23/2020
Shutts & Bowen LLP
ATTN: STEVEN M. GREENBERG, ESQ.
525 Okeechobee Blvd
Suite 1100
West Palm Beach, FL 33401
EXAMINER
ROTARU, OCTAVIAN
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
11/23/2020 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):
docketing@crgolaw.com
patents@shutts.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SHABBIR DAHOD,
PETER J. SPELLMAN and LUCIA DEUS
_____________

Appeal 2020-004761
Application 15/283,532
Technology Center 3600
____________

Before ROBERT E. NAPPI, ST. JOHN COURTENAY III, and
MATTHEW J. McNEILL, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a rejection of
claims 27, 30–32, 34, 37–39. Claims 1–26, 28, 29, 33, 35, 36, and 40 are
canceled. We have jurisdiction over the pending claims 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 “subject patent
application (the ‘Application’) has been assigned to Tracelink, Inc.” See
Appeal Br. 2.

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STATEMENT OF THE CASE2
Introduction
Appellant’s claimed invention “relates generally to the execution of
business processes and, more particularly, to a method and system for
collaborative execution of business processes shared by entities and their
outsourced business partners.” Spec. ¶ 1.

Representative Independent Claim 27
A collaborative workspace team metrics aggregation and
display method, comprising:

registering in a directory different sets of partner
organizations to different workspaces of different collections of
applications;

authenticating an end user into a user interface displayed
in display of a computer;

commanding a rendering in the user interface of a drop
down listing only those of the different workspaces in the
directory to which the end user is a registered member;

responsive to a selection of one of the workspaces in the
drop down listing:

(a) identifying in a data store communicatively coupled
to the computer, all partner organizations registered to the
selected one of the workspaces;

2 We herein refer to the Non-Final Office Action, mailed May 14, 2019
(“Non-Final Act.”); the Appeal Brief, filed January 17, 2020 (“Appeal Br.”);
the Examiner’s Answer, mailed April 6, 2020 (“Ans.”); and the Reply Brief,
filed June 8, 2020.

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(b) retrieving from the data store, performance metrics
for each of the identified partner organizations;

(c) determining industry performance metrics for each of
the identified partner organizations based on a particular
industry, particular company size and particular geographic
location wherein the industry performance metrics are
determined from the partner organizations stored in the
directory;

(d) aggregating the retrieved performance metrics into a
single view of each of the performance metrics of each of the
identified partner organizations wherein the single view of the
performance metrics comprises a graphic indication of a trend
of each of the performance metrics, an associated industry
performance metric for each of the performance metrics,
an indication whether each of the performance metrics are
within a threshold value of the associated industry performance
metric and a content block comprising an on-time delivery rate,
order fulfillment accuracy and order fulfillment cycle time; and,

(e) commanding a display of the view of performance
metrics in the user interface; and,

responsive to the selection of one of the partner
organizations corresponding to the authenticated end user from
the selected workspaces in the drop down menu:

(a) retrieving from the data store performance metrics for
the selected partner organization corresponding to the
authenticated end user and the determined industry performance
metrics corresponding to the selected partner organization and
the authenticated end user;

(b) aggregating the retrieved performance metrics of the
single partner organization into a single partner organization
view of each of the performance metrics of the selected partner
organization wherein the single partner organization view of the
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performance metrics comprises a graphic indication of a trend
of each of the performance metrics corresponding to the
authenticated end user, an associated industry performance
metric for each of the performance metrics corresponding to the
authenticated end user, an indication whether each of the
performance metrics corresponding to the authenticated end
user are within a threshold value of the associated industry
performance metric and a content block comprising the on-time
delivery rate, the order fulfillment accuracy and the order
fulfillment cycle time of the selected partner organization
corresponding to the authenticated end user; and,

(c) commanding a display of the single partner
organization view in the user interface including only
performance metrics of the partner organization corresponding
to the authenticated end user.

Claim 27, Claims Appendix 17–19.

Rejections 3
Rejection Claims
Rejected
35 U.S.C.
§
References/Basis
A 27, 30–32,
34, 37–39
112,
second
paragraph
Indefiniteness
B 27, 30–32,
34, 37–39
101 Eligibility

3 In the Answer (3), the Examiner withdrew the written description rejection
under pre-AIA 35 U.S.C. § 112, first paragraph. See Non-Final Act. 9.
Therefore, this rejection is not before us on appeal.
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Claim Grouping
Based on Appellant’s arguments, and our discretion under 37 C.F.R.
§ 41.37(c)(1)(iv), we decide the appeal of Rejection B of claims 27, 30–32,
34, and 37–39 under 35 U.S.C. § 101 on the basis of representative claim 27.
We address Rejection A of claims 27, 30–32, 34, and 37–39 under 35 U.S.C.
§ 112, second paragraph, separately, infra. To the extent Appellant has not
advanced separate, substantive arguments for particular claims, or other
issues, such arguments are forfeited. See 37 C.F.R. § 41.37(c)(1)(iv).

Analysis
In reaching this Decision, we consider all evidence presented and all
arguments actually made by Appellant. 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).
Rejection A of Claims 27, 30–32, 34, and 37–39 under
Pre-AIA 35 U.S.C. § 112, second paragraph (indefiniteness)

The Examiner withdrew the first portion of Rejection A under 35
U.S.C. § 112, second paragraph, that pertained to the dual recitation of “a
threshold value” and “a content block” within independent claims 27 and 34.
See Ans. 3. Therefore, this first portion of Rejection A is not before us on
appeal. See Non-Final Act. 11.
However, the Examiner does not withdraw the second portion of
Rejection A as it pertains to the Examiner’s conclusion that there is
“insufficient antecedent basis for ‘the selection of one of the partner
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organizations corresponding to the authenticated end user from the selected
workspaces.’” Ans. 3 (quoting claim 27) (emphasis omitted). Therefore, the
issue of whether the claimed “the selection of one of the partner
organizations” has proper antecedent basis remains before us on appeal.
Claim 27 (emphasis added).
We note the antecedent term “a selection” is introduced into claim 27
as follows: “responsive to a selection of one of the workspaces in the drop
down listing: [then perform recited steps (a), (b), and (c)].” (emphasis
added)
Regarding the subsequent claim 27 language, “the selection of one of
the partner organizations corresponding to the authenticated end user from
the selected workspaces,” Appellant notes:
the term “a drop down listing” appears initially in the claim and
then thereafter once. The term “drop down menu” appears
thereafter. In so far as a menu is a listing, Appellants believe that
one of skill in the art would appreciate that “the drop down
menu” and the “the drop down listing” are synonymous--
particularly in light of the teachings of Figure 3 which clearly
show a “drop down menu” from which a workspace is selected:

Reply Br. 2.
However, we conclude that the claim 27 language “responsive to the
selection of one of the partner organizations” does not have antecedent basis
in the preceding claim 27 recitation of “responsive to a selection of one of
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the workspaces” because the selection of a partner organization is not the
same as a selection of a workspace. (emphasis added).
We note that Appellant could have cured the problem by amending
claim 27 during prosecution to recite, e.g., “responsive to the identification
of one of the partner organizations corresponding to the authenticated end
user from the selected workspaces in the drop down menu.” However,
Appellant did not do so.
Accordingly, we sustain the Examiner’s Rejection A of claims 27,
30–32, 34, and 37–39, under pre-AIA 35 U.S.C. § 112, second paragraph.

Rejection B of Claims 27, 30–32, 34, and 37–39 under 35 U.S.C. § 101
USPTO § 101 Guidance
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101.4 We note the
USPTO current eligibility guidance is found 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).
“Because the MPEP now incorporates the 2019 Revised Patent
Subject Matter Eligibility Guidance (2019 PEG), October 2019 Patent

4 See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg.
50 (Jan. 7, 2019) (“2019 PEG”). In response to received public comments,
the Office issued further guidance on October 17, 2019, clarifying the 2019
Revised Guidance. USPTO, October 2019 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; see also October 2019 Update at 1.
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Eligibility Guidance Update (October 2019 Update), and the Berkheimer
Memo,5 all references to those materials should now be directed to the
MPEP.” See https://www.uspto.gov/patent/laws-and-
regulations/examination-policy/subject-matter-eligibility
(emphasis added).
We note that 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”).6

5 Referring to Berkheimer v. HP, Inc., 881 F.3d. 1360, 1369 (Fed. Cir.
2018).

6 “Examiners evaluate integration into a practical application 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.” MPEP § 2106.04(d)II.
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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 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).

Here, the Examiner concludes that at least the registering, selection,
identifying, and determining steps of method claim 27 could be performed
alternatively as methods of organizing human activity and as mental
processes. See Non-Final Act. 12–17.
Appellant advances no arguments regarding Step 2A, Prong One in
the Briefs. Therefore, the doctrine of forfeiture applies.7 See 37 C.F.R.
§ 41.37(c)(1)(iv).

7 See In re Google Technology Holdings LLC, 2020 WL 6685948, slip op.
at * 3 (Fed. Cir. 2020):
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Considering claim 27 as a whole, we conclude the preamble language
pertaining to “collaborative workspace team metrics” recites certain methods
of organizing human activity, including fundamental economic principles or
practices such as commercial interactions and business relations. See MPEP
§2106.04(a)(2), subsection II. We further conclude such steps could be
performed alternatively as mental processes. See Id., subsection III.
Therefore, we agree with the Examiner’s legal conclusion that at least
the registering, selection, identifying, and determining steps of method claim
27 pertain to methods of organizing human activity that could be performed
alternatively as mental processes. See Non-Final Act. 12–17
But combining several abstract ideas does not render the combination
any less abstract. 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 Sys., Inc., 839 F.3d 1089, 1093–94 (Fed. Cir. 2016) (determining
the pending claims were directed to a combination of abstract ideas).
We emphasize that remaining independent claim 34 recites similar
language of commensurate scope. Thus, we conclude representative

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.

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independent claim 27 and independent claim 34 each recite one or more
abstract ideas, as identified above.
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).
Although independent claims 27 and 34 require the recited steps (or
functions for system claim 34) to be implemented by a computer (or
processor), this generic computer implementation of a mental process is
insufficient to take the invention out of the realm of abstract ideas. “That
purely mental processes can be unpatentable, even when performed by a
computer, was precisely the holding of the Supreme Court in Gottschalk v.
Benson.” CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375
(Fed. Cir. 2011). If a method can be performed by human thought alone, or
by a human using pen and paper, it is merely an abstract idea and is not
patent eligible under § 101. See id. at 1372–73; see also Versata Dev. Grp.
v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) (“Courts have
examined claims that required the use of a computer and still found that the
underlying, patent-ineligible invention could be performed via pen and paper
or in a person’s mind.”); Alice Corp. Pty. Ltd. v. CLS Bank Intern., 573 U.S.
208, 223 (2014) (Stating an abstract idea while adding the words “apply it”
(with a computer) is insufficient to confer patent eligibility.).
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Moreover, “[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 Can. (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) (“[R]elying on a computer to perform routine tasks more
quickly or more accurately is insufficient to render a claim patent eligible.”).
Because claim 27 considered as a whole recites an abstract idea, as
does remaining independent claim 34, we conclude that claims 27, 30–32,
34, and 37–39 recite an abstract idea, as identified above, under Step 2A,
Prong One. Therefore, we proceed to Step 2A, Prong Two, in which we
apply the guidance set forth in MPEP § 2106.04(d).

Step 2A, Prong Two under MPEP § 2106.04(d),
Integration of the Judicial Exception into a Practical Application
For example, 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
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).

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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.
As noted above, independent claim 27 requires the recited steps to be
implemented by a computer. We further note the supporting exemplary,
non-limiting descriptions of generic computer components found in the
Specification, for example, at paragraph 37:
The server computer system 102 providing the collaboration
workspace services described above may comprise one or more
physical machines, or virtual machines running on one or more
physical machines. In addition, the computer server system may
comprise a cluster of computers or numerous distributed
computers that are connected by a network or the Internet.

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
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machinery the result is accomplished.’” 837 F.3d at 1312 (quoting O’Reilly
v. Morse, 56 U.S. 62, 113 (1854)) (emphasis added).
Thus, we conclude Appellant’s claimed invention merely implements
the abstract idea using instructions executed on generic computer
components. Therefore, we conclude Appellant’s claims 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)
We note “the 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)). See also MPEP
§ 2106.05(h).
Here, we conclude that independent claim 27 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 27 step of “retrieving from
the data store” recites an insignificant extra-solution activity: data gathering.
See buySAFE v. Google, Inc, 765 F.3d 1350, 1355 (Fed. Circ. 2014) (“That a
computer receives and sends the information over a network—with no
further specification—is not even arguably inventive.”).

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MPEP § 2106.05(a) — Improvement to the functionality of a
computer or other technology or technical field.

We consider next the question of whether there are any claimed
improvements to the functioning of a computer or to any other technology or
technical field, applying the January 2019 Memorandum and the guidance
set forth under MPEP § 2106.05(a).
Appellant contends that “claims 27 and 34 each recite an additional
set of elements present that reflects an improvement in the technical field of
collaborative workspace team metrics aggregation and display.” Appeal Br.
12 (emphasis added). In support, Appellant recites portions of the claim
language, and reproduces Figure 3 of the Specification in the Appeal Brief.
Appeal Br. 12–13.
Referring to Figure 3 of the Specification, Appellant contends:
As can be seen, the aggregation of team performance metrics
claimed in each of claims 27 and 34 provide a consolidated view
not only of the performance of the entire team of the partner
organizations, but also show a trend that is helpful in determining
whether or not the aggregate performance of the entire team is
improving, degrading or remaining the same. Heretofore, it was
not possible to visualize this sort of team performance data as
evidenced by Examiner's statement in the Non-Final Office
Action at page 26 in which Examiner stated, “Examining Claims
with respect to prior art - All grounds of prior art rejection(s) has
been or have been overcome.”
Appeal Br. 13–14 (emphasis added).
However, an analysis based upon obviousness is not relevant to our
analysis for patent eligibility under 35 U.S.C. § 101. See Return Mail, Inc.
v. U.S. Postal Service, 868 F.3d 1350, 1370 (Fed. Cir. 2017). Although the
second step in the Alice/Mayo test is a search for an “inventive concept,” the
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analysis is not directed to novelty or nonobviousness, but rather searches for
elements sufficient to ensure that the claimed invention is directed to more
than a patent ineligible concept, such as an abstract idea. See Alice, 573 U.S.
at 217–18. “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); 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.”); Affinity Labs of Texas, LLC v.
DIRECTV, LLC, 838 F.3d 1253, 1263 n.3 (Fed. Cir. 2016) (noting that an
eligibility finding does not turn on the novelty of using a user-downloadable
application for the particular purpose recited in the claims).
To the extent that Appellant’s “collaborative workspace team metrics
aggregation and display method” (claim 27) might arguendo be an
improvement over prior art methods, we note an improved abstract idea is
still an abstract idea. See Mayo Collaborative Services v. Prometheus
Laboratories, 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 Corporation, 839
F.3d 1138, 1151 (Fed. Cir. 2016) (“[A] claim for a new abstract idea is still
an abstract idea.”) (emphasis omitted);
As discussed above, we conclude Appellant’s generic computer
implementation performs a method of organizing human activity that can be
performed alternatively as a mental process. See independent Claims 27 and
34. Moreover, the “‘mere automation of manual processes using generic
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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).
As set forth in MPEP § 2106.05(a) (emphasis added):
To show that the involvement of a computer assists in
improving the technology, the claims must recite the details
regarding how a computer aids the method, the extent to which
the computer aids the method, or the significance of a computer
to the performance of the method. Merely adding generic
computer components to perform the method is not sufficient.
Thus, the claim must include more than mere instructions to
perform the method on a generic component or machinery to
qualify as an improvement to an existing technology.

Here, we find Appellant does not advance any specific, substantive
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). Merely reciting the
claim language and asserting that it provides an improvement to the
technology is insufficient. See e.g., Appeal Br. 12–13.
Accordingly, on this record, we conclude that independent method
claim 27, and independent system claim 34, which recites similar language
of commensurate scope, do not recite an improvement to the functionality of
a computer or other technology or technical field. See MPEP § 2106.05(a).

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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)). Therefore, the
doctrine of forfeiture is applicable. See supra, n.7. See also 37 C.F.R.
§ 41.37(c)(1)(iv).

MPEP § 2106.05(e) Meaningful Claim Limitations
Appellant does not advance any substantive, persuasive arguments
explaining how the judicial exceptions are applied or used in some
meaningful way, as clarified under MPEP § 2106.05(e). 8 Therefore, the
doctrine of forfeiture applies. See supra, n.7. See also 37 C.F.R.
§ 41.37(c)(1)(iv).
Simply adding generic hardware and computer components to
perform abstract ideas does not integrate those ideas into a practical
application, because the “mere recitation of a generic computer cannot
transform a patent-ineligible abstract idea into a patent-eligible invention.”
Alice, 573 U.S. at 223.

8 See MPEP § 2106.05(e) (stating that one exemplary consideration
indicative that an additional element may have integrated the exception into
a practical application is that the additional element “applies or uses the
judicial exception in some other meaningful way beyond generally linking
the use of the judicial exception to a particular technological environment,
such that the claim as a whole is more than a drafting effort designed to
monopolize the exception”) (emphasis added).
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Accordingly, under Step 2A, Prong Two (MPEP § 2106.05(a)–(c) and
(e)–(h)), we conclude claims 27, 30–32, 34, and 37–39 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,9 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.10
Under Step 2B, the Examiner finds the additional elements of a server,
directory, and user interface (e.g., with a drop down list) were well,
understood, routine and conventional at the time of the invention. See Non-
Final Act. 21. The Examiner provides specific citations to evidence in
support, including to Wikipedia and portions of Appellant’s Specification.
Id.

9 This corresponds to Alice part one where it is determined whether the claim
is “directed to” an abstract idea. See Alice, 573 U.S. at 219. If a claim is
“not directed to an abstract idea under part one of the Alice framework, we
do not need to proceed to step two.” (Enfish, LLC v. Microsoft Corp., 822
F.3d 1327, 1339 (Fed. Cir. 2016).).
10 This corresponds to Alice part two where it is determined whether the
claim “contains an ‘inventive concept’ sufficient to ‘transform’ the claimed
abstract idea into a patent-eligible application.” Alice, 573 U.S. at 221.
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Appellant does not traverse the Examiner’s specific findings under
Step 2B. Instead, under the “Step 2B” section of the Appeal Brief, Appellant
urges that “there can be no question that the ‘dual response’ as referenced by
the Examiner at page 26 of the Non-Final Office is not well-understood,
[]routine and unconventional,” because the Examiner withdrew the prior art
rejection. Appeal Br. 15.
We disagree with Appellant, because as discussed above, an analysis
based upon obviousness is not relevant to our analysis for patent eligibility
under 35 U.S.C. § 101. See e.g., Return Mail, Inc., 868 F.3d at 1370. To the
extent that Appellant urges in the Reply Brief (6), that the “direct
manipulations that enable Appellants’ claimed invention to achieve the
improvement in the technical field of ‘of collaborative workspace team
metrics aggregation and display’ also provide an inventive concept under
Step 2B, we again emphasize that an improved abstract idea is still an
abstract idea. See Mayo, 566 U.S. at 90 (holding that a novel and
nonobvious claim directed to a purely abstract idea is, nonetheless patent-
ineligible). 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 nonconventional and non-
generic arrangement of known computer components, we find no inventive
concept in any purported ordered combination of these limitations.
Thus, we find Appellant’s claims are unlike the claims considered by
the court in BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827
F.3d 1341 (Fed. Cir. 2016)), in which the court found “an inventive concept
Appeal 2020-004761
Application 15/283,532

21
. . . 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
27, 30–32, 34, and 37–39, 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 B under 35 U.S.C. § 101 of claims 27, 30–32, 34,
and 37–39.

CONCLUSIONS
Regarding Rejection A of claims 27, 30–32, 34, and 37–39 under
pre-AIA 35 U.S.C. § 112, second paragraph, the Appellant has not shown
the Examiner erred.
By applying the Director’s 2019 PEG and October 2019 Update, as
now incorporated under MPEP Sections 2103 through 2106.07(c), we
conclude that claims 27, 30–32, 34, and 37–39, as rejected by the Examiner
under Rejection B (35 U.S.C. § 101), are not directed to patent-eligible
subject matter.

Appeal 2020-004761
Application 15/283,532

22
DECISION SUMMARY

Claims
Rejected
35 U.S.C § Reference(s)/Basis Affirmed Reversed
27, 30–32,
34, 37–39
112, 2nd
paragraph
Indefiniteness 27, 30–32,
34, 37–39

27, 30–32,
34, 37–39
101 Eligibility 27, 30–32,
34, 37–39

Overall
Outcome
27, 30–32,
34, 37–39

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