Xu, Richard H.

Patent Trials and Appeals Board

Dec 18, 2019

14151787 - (D) (P.T.A.B. Dec. 18, 2019)

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.
14/151,787 01/09/2014 Richard H. Xu 399-1001-US02 6748
77795 7590 12/18/2019
OWENS LAW FIRM, PC
4409 N. Front St.
Harrisburg, PA 17110
EXAMINER
BRINDLEY, BENJAMIN S
ART UNIT PAPER NUMBER
3697
MAIL DATE DELIVERY MODE
12/18/2019 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RICHARD H. XU
____________

Appeal 2018-002082
Application 14/151,787
Technology Center 3600
____________

Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
LARRY HUME, 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 1–3, 5–8, 10–14, 21, and 23. Claims 4, 9, 15–20, 22, and 24 are
canceled. We have jurisdiction over the pending claims under 35 U.S.C.
§ 6(b).
We reverse.

1 We use the word “Appellant” to refer to “applicants” as defined in 37
C.F.R. § 1.42(a). According to Appellant, the real party in interest is 7Tel
Inc. See Appeal Br. 1.

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STATEMENT OF THE CASE
Introduction
Embodiments of Appellant’s invention relate “generally to systems
and methods for providing mobile communication services. More
specifically, the embodiments relate to dynamically switching between
communication profiles on a mobile device so as to provide mobile
communication services, and in particular mobile telephone services, to
subscribers at a reduced cost.” Spec. ¶ 6 (emphasis added).

Rejections
A. Claims 1–3, 5–8, 10–14, 21, and 23 are rejected under 35 U.S.C. § 101,
as being directed to a judicial exception, without significantly more.
Final Act. 2.
B. Claims 1–3, 5–8, 10–14, 21, and 23 are rejected under pre-AIA 35 U.S.C.
§ 112, second paragraph, as being indefinite
C. Claims 1–3, 5–8, 10–14, 21, and 23 are rejected under pre-AIA 35 U.S.C.
103(a) as being obvious over the combined teachings and suggestions of
Motorola Limited, GB 2,313,257 A (hereinafter, “Motorola”), British
Telecommunications, EP 1,727,383 A1 (hereinafter, “BT”), and Kung et
al., U.S. 6,775,267 B1; issued Aug. 10, 2004 (hereinafter “Kung”).
Issues on Appeal
Did the Examiner err in rejecting claims 1–3, 5–8, 10–14, 21, and 23
under 35 U.S.C. § 101, as being directed to a judicial exception, without
significantly more?
Did the Examiner err in rejecting claims 1–3, 5–8, 10–14, 21, and 23
under pre-AIA 35 U.S.C. § 112, second paragraph, as being indefinite?
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Did the Examiner err in rejecting claims 1–3, 5–8, 10–14, 21, and 23
under pre-AIA 35 U.S.C. § 103(a), as being obvious over the combined
teachings and suggestions of the cited references?
ANALYSIS
We reproduce infra independent claim 1 in Table One. 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.
Subject Matter Eligibility — 2019 Revised Guidance
The USPTO recently published revised guidance on the application of
35 U.S.C. § 101. See 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019 Revised Guidance”). This
new guidance is applied in this Opinion. Under the 2019 Revised Guidance,
we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings
of abstract ideas (i.e., mathematical concepts, mental processes,
or certain methods of organizing human activity such as a
fundamental economic practice or managing personal behavior
or relationships or interactions between people);2 and
(2) additional elements that integrate the judicial
exception into a practical application (see Manual of Patent
Examining Procedure (“MPEP”) §§ 2106.05(a)–(c), (e)–(h)).3, 4

2 Referred to as “Step 2A, Prong One” in the Revised Guidance (hereinafter
“Step 2A, Prong One”).
3 Referred to as “Step 2A, Prong Two” in the Revised Guidance (hereinafter
“Step 2A, Prong Two”).
4 All references to the MPEP are to the Ninth Edition, Revision 08.2017
(rev. Jan. 2018).
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See 2019 Revised Guidance, 84 Fed. Reg. at 51–52, 55.
A claim that integrates a judicial exception into a practical application
applies, relies on, or uses 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. See 2019
Revised Guidance, 84 Fed. Reg. at 54. When the judicial exception is so
integrated, then the claim is not directed to a judicial exception and is patent
eligible under 35 U.S.C. § 101. Id.
Only if a claim: (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then evaluate
whether the claim provides an inventive concept. See 2019 Revised
Guidance, 84 Fed. Reg. at 56; Alice, 573 U.S. at 217–18.
For example, we look to whether the claim:
(3) adds a specific limitation beyond the judicial
exception that is not “well-understood, routine, conventional”
in the field (see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, and
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial exception.5
See 2019 Revised Guidance, 84 Fed. Reg. at 56.
Because there is no single definition of an “abstract idea” under Alice
step 1, the PTO has recently synthesized, for purposes of clarity,
predictability, and consistency, key concepts identified by the courts as
abstract ideas to explain that the “abstract idea” exception includes the
following three groupings:

5 Items (3) and (4) continue to be collectively referred to as “Step 2B” of the
Supreme Court’s two-step framework, described in Mayo and Alice.
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1. Mathematical concepts—mathematical relationships,
mathematical formulas or equations, mathematical
calculations;
2. Mental processes— concepts performed in the human mind
(including an observation, evaluation, judgment, opinion);
and
3. 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 2019 Revised Guidance, 84 Fed. Reg. at 52.
According to the 2019 Revised Guidance, “[c]laims that do not recite
[subject] matter that falls within these enumerated groupings of abstract
ideas should not be treated as reciting abstract ideas,” except in rare
circumstances. Even if the claims recite any one of these three groupings of
abstract ideas, these claims are still not “directed to” a judicial exception
(abstract idea), and thus are patent eligible, if “the claim as a whole
integrates the recited judicial exception into a practical application of that
exception.” See 2019 Revised Guidance, 84 Fed. Reg. at 53.
For example, limitations that are indicative of integration into a
practical application 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);
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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).
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 include 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 2019 Revised Guidance, 84 Fed. Reg. at 54–55 (“Prong Two”).

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Rejection A under 35 U.S.C. § 101
2019 Revised Guidance, Step 2A, Prong One6
The Judicial Exception
Under the 2019 Revised Guidance, we begin our analysis by first
considering whether the claims recite any judicial exceptions, including
certain groupings of abstract ideas, in particular: (a) mathematical concepts,
(b) mental steps, and (c) certain methods of organizing human activities.
We note the Examiner concludes that all claims 1–3, 5–8, 10–14, 21,
and 23 recite one or more abstract ideas, including:
business relations relative to mobile device operations,
monitoring and reporting, evaluation of data, and using
categories to organize, store and transmit information (a judicial
exception (i.e., an abstract idea)), with the abstract idea involving
a fundamental economic practice, an idea ‘of itself’, and certain
methods of organizing human activity (such as recording and
determining applicability of accounts, identification of account
terms, collecting and comparing known information (see
Classen), using categories to organize, store and transmit
information (see Cyberfone), and data recognition and storage
(see Content Extraction) - Step 2A or part 1 Mayo test), the
claimed invention lacking improvements to the function of the
computer itself or technical field.
Final Act. 5.
In Table One below, we identify in italics any specific claim
limitations that we conclude recite an abstract idea (none). We also identify
in bold the additional (non-abstract) claim limitations that are generic
computer components:

6 Throughout this opinion, we give the claim limitations the broadest
reasonable interpretation consistent with the Specification. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
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TABLE ONE
Independent Claim 1 2019 Revised Guidance
[a] A computer implemented
method for dynamically
receiving a local
communication profile at a
mobile device, the method
comprising:
A method (i.e., process) falls under
the statutory subject matter class of a
machine. See 35 U.S.C. § 101
(“Whoever invents or discovers any
new and useful process, machine,
manufacture, or composition of
matter, or any new and useful
improvement thereof, may obtain a
patent therefor, subject to the
conditions and requirements of this
title.”).
The mobile device is an additional
non-abstract limitation.
[b] at a mobile device having
one or more cellular
communication processors,
memory, and a SIM card,
the SIM card configured to
store a plurality of
communication profiles of
the same cellular
communication type,
including a global cellular
network profile and one or
more local cellular network
profiles:
Storing data content (i.e., a plurality
of communication profiles) is an
insignificant extra-solution activity
(i.e., data gathering). 2019 Revised
Guidance, 55 n.31; see also MPEP §
2106.05(g).
The mobile device, the one or more
cellular communication processors,
memory, and the SIM card are
additional non-abstract limitations.
[c] determining a geographic
location of the mobile
device;
Determining a geographic location
of the mobile device is insignificant
extra-solution activity. 2019
Revised Guidance, 55 n.31; see also
MPEP § 2106.05(g).
[d] determining whether a
local cellular network profile
associated with the
Determining whether a local cellular
network profile associated with the
geographic location is stored in the
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Independent Claim 1 2019 Revised Guidance
geographic location is stored
in the memory;
memory is insignificant extra-
solution activity. 2019 Revised
Guidance, 55 n.31; see also MPEP
§ 2106.05(g).
[e] upon determining that a
local cellular network profile
associated with the
geographic location is not
stored in the memory:
Evaluating a condition precedent is
insignificant extra-solution activity.
2019 Revised Guidance, 55 n.31; see
also MPEP § 2106.05(g).
The memory is an additional non-
abstract limitation.
[f] selecting the global
cellular network profile as an
active communication profile;
Selecting the local cellular network
profile as the active communication
profile is insignificant extra-solution
activity. 2019 Revised Guidance, 55
n.31; see also MPEP § 2106.05(g).
[g] moving the active
communication profile into
an active location on the SIM
card;
Moving the active communication
profile into an active location on the
SIM card is insignificant extra-
solution activity. 2019 Revised
Guidance, 55 n.31; see also MPEP §
2106.05(g).
The SIM card is an additional non-
abstract limitation.
[h] resetting the mobile
device;
Resetting the mobile device is
insignificant extra-solution activity.
2019 Revised Guidance, 55 n.31; see
also MPEP § 2106.05(g).
The mobile device is an additional
non-abstract limitation.
[i] sending a request to
register with a global
cellular network using the
global cellular network
profile;
Sending a request to register with a
global cellular network is
insignificant extra-solution activity.
2019 Revised Guidance, 55 n.31; see
also MPEP § 2106.05(g).
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Independent Claim 1 2019 Revised Guidance
The global cellular network is an
additional non-abstract limitation.
[j] receiving registration
information for the global
cellular network;

Receiving registration
information for the global
cellular network is
insignificant extra-solution
activity. 2019 Revised
Guidance, 55 n.31; see also
MPEP § 2106.05(g).
The global cellular network is an
additional non-abstract limitation.
[k] connecting to a
communication
management system via the
global cellular network;
Connecting to a
communication management
system is insignificant extra-
solution activity. 2019
Revised Guidance, 55 n.31;
see also MPEP § 2106.05(g).
The communication
management system and the
global cellular network are
additional non-abstract
limitations.
[l] transmitting to the
communication
management system, via the
first local cellular network,
a request for a local cellular
network profile, where the
request includes the
geographic location of the
mobile device;
Transmitting a request for a local
cellular network profile is
insignificant extra-solution activity.
2019 Revised Guidance, 55 n.31; see
also MPEP § 2106.05(g).
The communication management
system, the first local cellular
network, and the mobile device are
additional non-abstract limitations.
[m] in response to
transmitting the geographic
location, and automatically
without human intervention,
Receiving, from the communication
management system, a local cellular
network profile is insignificant extra-
solution activity. 2019 Revised
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Independent Claim 1 2019 Revised Guidance
receiving, from the
communication
management system, a local
cellular network profile for
connecting to a local cellular
network of the one or more
local cellular networks,
where the local cellular
network profile is different to
the global cellular carrier
profile;
Guidance, 55 n.31; see also MPEP §
2106.05(g).

The communication management
system, and the local cellular
network of the one or more local
cellular networks are additional non-
abstract limitations.
[n] selecting the local cellular
network profile as the active
communication profile;
Selecting the local cellular network
profile as the active communication
profile is insignificant extra-solution
activity. 2019 Revised Guidance, 55
n.31; see also MPEP § 2106.05(g).
[o] moving the active
communication profile into
an active location on the SIM
card;
Moving the active communication
profile into an active location on the
SIM card is insignificant extra-
solution activity. 2019 Revised
Guidance, 55 n.31; see also MPEP
§ 2106.05(g).
The SIM card is an additional non-
abstract limitation.
[p] resetting the mobile
device;
Resetting the mobile device is
insignificant extra-solution activity.
2019 Revised Guidance, 55 n.31; see
also MPEP § 2106.05(g).
The mobile device is an additional
non-abstract limitation.
[q] connecting to the local
cellular network using the
local cellular network profile;
and
Connecting to the local
cellular network using the
local cellular network profile
is insignificant extra-solution
activity. 2019 Revised
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Independent Claim 1 2019 Revised Guidance
Guidance, 55 n.31; see also
MPEP § 2106.05(g).
The local cellular network is an
additional non-abstract limitation.
[r] communicating with
another device via the local
cellular network as if the
mobile device was a local
mobile device.
Communicating with another device
via the local cellular network as if
the mobile device was a local mobile
device is insignificant post-solution
activity. 2019 Revised Guidance, 55
n.31; see also MPEP § 2106.05(g).
The “another device,” the local
cellular network, the mobile device,
and the local mobile device are
additional non-abstract limitations.

Appellant argues, inter alia, that the claims: (1) are not fundamental
economic practices (Appeal Br. 25–24), (2) are not certain methods of
organizing human activities, (Appeal Br. 29–30, (3) are not an “idea of
itself” (Appeal Br. 30), and (4) are not mathematical relationships/formulas.
(Appeal Br. 31–32).
Based upon our analysis in Table One above, we agree. With respect
to all claims before us on appeal, we find no claim language that recites a
method of organizing human activities or a fundamental economic practice.
Nor do we find claim language that recites a mathematical relationship or
formula.
We focus our analysis under the 2019 Revised Guidance, Step 2A,
Prong One, on the question of whether the following recited steps “c–e”
(“determining”), and steps “f” and “n” (“selecting”) could reasonably be
performed alternatively as mental processes:
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[c] determining a geographic
location of the mobile
device;
Determining a geographic location
of the mobile device is insignificant
extra-solution activity. 2019
Revised Guidance, 55 n.31; see also
MPEP § 2106.05(g).
[d] determining whether a
local cellular network profile
associated with the
geographic location is stored
in the memory;
Determining whether a local cellular
network profile associated with the
geographic location is stored in the
memory is insignificant extra-
solution activity. 2019 Revised
Guidance, 55 n.31; see also MPEP
§ 2106.05(g).
[e] upon determining that a
local cellular network profile
associated with the
geographic location is not
stored in the memory:
Evaluating a condition precedent is
insignificant extra-solution activity.
2019 Revised Guidance, 55 n.31; see
also MPEP § 2106.05(g).
The memory is an additional non-
abstract limitation.
[f] selecting the global
cellular network profile as an
active communication profile;
Selecting the local cellular network
profile as the active communication
profile is insignificant extra-solution
activity. 2019 Revised Guidance, 55
n.31; see also MPEP § 2106.05(g).
. . .
[n] selecting the local cellular
network profile as the active
communication profile;
Selecting the local cellular network
profile as the active communication
profile is insignificant extra-solution
activity. 2019 Revised Guidance, 55
n.31; see also MPEP § 2106.05(g).

Considering claim 1 as a whole under the 2019 Revised Guidance, it
is our view that the “method for dynamically receiving a local
communication profile at a mobile device,” including the aforementioned
“determining” and “selecting” steps, could not reasonably be performed
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alternatively in the human mind, or with the aid of pen and paper.7 Such
misinterpretation of Appellant’s claim language (particularly the recited
“determining” and “selecting” steps regarding the geographic location
information, the memory, and the cellular network profile ) would, if put
literally into practice, slow the cellular network to a snail’s pace, effectively
rendering it inoperative for its intended purpose, such that the cellular
network would hypothetically lack utility under 101.
As a hypothetical example, when making a 911 emergency call,
would a person reasonably have to first mentally: (1) determine a
geographic location of the mobile device, (2) determine whether a local
cellular network profile associated with the location is stored in the memory,
and, (3) upon determining that a local cellular network profile associated
with the geographic location is not stored in the memory, then, (4) select the
global cellular network profile as an active communication profile? See
Claim 1.
Assuming the person could actually determine if the local cellular
network profile associated with the geographic location is stored in the
memory, the delay incurred by performing such mental steps would likely
render the 911 emergency network useless. It is therefore our view that a
cellular network that was dependent upon alternative human mental steps to
perform millions of repetitive low level daily network operations would be

7 Cf. CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372–73
(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).
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rendered useless. Moreover, such claim interpretation on our part would be
overly broad and unreasonable. See supra, n.6.
Therefore, we conclude our analysis for patent eligibility at Step 2A,
Prong One, because we conclude that claim 1, and the remaining claims
2, 3, 5–8, 10–14, 21, and 23 before us on appeal, do not recite an abstract
idea. Accordingly, we have applied the 2019 Revised Guidance and are
constrained on this record to reverse the Examiner’s rejection A under 35
U.S.C. § 101 of all claims 1–3, 5–8, 10–14, 21, and 23 on appeal.
Rejection B of Claims 1–3, 5–8, 10–14, 21, and 23
Under § 112, second paragraph8
The Examiner rejects claims 1–3, 5–8, 10–14, 21, and 23 as being
indefinite. Final Act. 3–5. The Examiner’s rejection appears to be based
essentially upon repeated findings that there is no basis in the Specification
for the purported indefinite claim language. Id. For example, the Examiner
finds: “‘Cellular communication processors’ does not appear in the
specification” and the Examiner concludes “it remains unclear as to any
distinct processing or communication qualities of such processors.” Thus,
the Examiner’s conclusion that particular claim terms are indefinite appears
to be grounded essentially upon the purported lack of written-description
support found by the Examiner. Final Act. 3–5.
However, we find the claim terms the Examiner concludes are
indefinite are cellular network terms having a plain meaning. Moreover, the

8 “Indefiniteness under 35 U.S.C. § 112 ¶ 2 is an issue of claim construction
and a question of law.” Cordis Corp. v. Boston Scientific Corp., 561 F.3d
1319, 1331 (Fed. Cir. 2009) (citing Praxair, Inc. v. ATMI, Inc., 543 F.3d
1306, 1319 (Fed. Cir. 2008)).

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Examiner has not developed the record to apply a lower threshold of
indefiniteness consistent with the broadest reasonable interpretation, as
applied during patent examination, and as addressed by the precedential
PTAB holding of Ex parte McAward, Appeal 2015-006416, 2017 WL
3669566, at *5 (PTAB Aug. 25, 2017) (precedential); see also In re
Packard, 751 F.3d 1307, 1310, 1314 (Fed. Cir. 2014).9
Therefore, after reviewing the record, we are persuaded by Appellant
that the Examiner erred. See Appeal Br. 10–20.
Accordingly, we are constrained on this record to reverse the
Examiner’s Rejection B of all claims 1–3, 5–8, 10–14, 21, and 23 under
pre-AIA 35 U.S.C. § 112, second paragraph.
Rejection C of Independent Claim 1 under § 103(a)
Issues: Under 35 U.S.C. § 103(a), we focus our analysis on the
following argued limitation that we find to be dispositive regarding
Rejection C of all claims 1–3, 5–8, 10–14, 21, and 23:
Did the Examiner err by finding that Motorola, BT, and Kung would
have collectively taught or suggested the disputed [h] and [p] (twice recited)
limitation “resetting the mobile device,” within the meaning of independent
claims 1 and 21? See supra, n.6.

9 “[I]f a claim is amenable to two or more plausible claim constructions, the
USPTO is justified in requiring the applicant to more precisely define the
metes and bounds of the claimed invention by holding the claim . . .
indefinite.” Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008)
(precedential); accord McAward, Appeal No. 2015-006416, 2017 WL
3669566 at *4 (PTAB 2017) (precedential).
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Appellant contends Motorola fails to disclose “resetting the mobile
device” as recited in both independent claims 1 and 21. See Appeal Br.
47–48. In support, Appellant notes the Examiner relies upon Motorola, at
page 9, lines 1–30, page 11, lines 1–14, and Figure 6. Appeal Br. 48.
Appellant avers: “Despite a careful reading of the cited portions of
Motorola, Applicants could find absolutely no support for the Examiner's
position that Motorola teaches resetting the mobile device.” Id.
The Examiner disagrees with Appellant, and further explains the basis
for the rejection: “In response to [A]ppellant’s argument (argument — page
48) contending that Motorola does not teach resetting the mobile device,
Motorola identifies communications from either resident programming or
non-resident functions, subject to setting. (see page 9, lines 1–33.).”
Ans. 12 (emphasis added).
Appellant responds in the Reply Brief:
In response to Applicant’s arguments in the Appeal Brief that
Motorola fails to disclose “resetting the mobile device,” the
Examiner states that “Motorola identifies communications from
either resident programming or nonresident functions, subject to
setting. (see page 9, lines 1–33.).” Examiner's Answer at pg. 12.
However, the cited portions of Motorola state no such thing. For
this reason alone, the Examiner has failed to present a prima facie
case of obviousness.
Reply Br. 44 (emphasis added).
Based upon our review of Motorola (and the BT and Kung
references), we find no teaching of “resetting the mobile device,” as recited
in each of independent claims 1 and 21. There is no literal mention of a
reset or a “setting” on page 9 of Motorola. Although a literal teaching is not
required, we nevertheless find the Examiner’s statement that identifying
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communications from either resident programming or non-resident
functions is a type of “setting” missed the mark, because such “setting” or
configuring does not necessarily require a reset. Therefore, we find the
evidence cited by the Examiner (Final Act. 9; Ans. 12) is insufficient to
show that “the natural result flowing from the operation as taught would
result in the performance of the questioned function.” PAR Pharm., Inc. v
TWI Pharms., Inc., 773 F.3d 1186, 1194–95 (Fed. Cir. 2014).
Accordingly, we are constrained on this record to reverse the
Examiner’s rejection C under 35 U.S.C. § 103(a) of all claims 1–3, 5–8,
10–14, 21, and 23 on appeal.
CONCLUSIONS
Under our 2019 Revised Guidance, as governed by relevant case law,
we conclude all claims 1–3, 5–8, 10–14, 21, and 23, rejected under 35
U.S.C. § 101, are directed to patent-eligible subject matter.
The Examiner erred in rejecting claims 1–3, 5–8, 10–14, 21, and 23
under pre-AIA 35 U.S.C. § 112, second paragraph, as being indefinite.
The Examiner erred in rejecting claims 1–3, 5–8, 10–14, 21, and 23
under 35 U.S.C. § 103(a), as being obvious over the combined teachings and
suggestions of the cited references.

Appeal 2018-002082
Application 14/151,787

19
DECISION SUMMARY

REVERSED

Claims
Rejected
35 U.S.C.
§
Basis/References Affirmed Reversed
1–3, 5–8,
10–14, 21,
23
101 Subject-matter
eligibility
1–3, 5–8,
10–14, 21,
23
1–3, 5–8,
10–14, 21,
23
112,
second
paragraph
Indefiniteness 1–3, 5–8,
10–14, 21,
23
1–3, 5–8,
10–14, 21,
23
103(a) Motorola, BT,
Kung
1–3, 5–8,
10–14, 21,
23
Overall
Outcome
1–3, 5–8,
10–14, 21,
23