Adobe Inc.

Patent Trials and Appeals Board

Sep 18, 2020

2019001555 (P.T.A.B. Sep. 18, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/542,219 11/14/2014 Sachin Soni 20030.13 4909
119741 7590 09/18/2020
Keller Jolley Preece / Adobe
1010 North 500 East, Suite 210
North Salt Lake, UT 84054
EXAMINER
ANDERSON, SCOTT C
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
09/18/2020 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@kjpip.com
gjolley@kjpip.com
ljohnson@kjpip.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SACHIN SONI, WALTER WEI–TUH CHANG,
ANMOL DHAWAN, and ASHISH DUGGAL
____________

Appeal 2019–001555
Application 14/542,219
Technology Center 3600
____________

Before ANTON W. FETTING, NINA L. MEDLOCK, and
PHILIP J. HOFFMANN, Administrative Patent Judges.

FETTING, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE1
Sachin Soni, Walter Wei–Tuh Chang, Anmol Dhawan, and Ashish
Duggal (Appellant2) seek review under 35 U.S.C. § 134 of a final rejection

1 Our decision will make reference to the Appellant’s Appeal Brief (“Appeal
Br.,” filed August 24, 2018) and Reply Brief (“Reply Br.,” filed
November 29, 2018), and the Examiner’s Answer (“Ans.,” mailed
October 2, 2018) and Final Action (“Final Act.,” mailed January 3, 2018).
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Adobe
Systems Incorporated (Appeal Br. 1).

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of claims 1–15 and 17–21, the only claims pending in the application on
appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
The Appellant invented a way of monitoring and responding to social
media posts, and, more specifically, of replying to social media posts with
comparison data. Specification para. 2.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A method for replying to social media postings as part of a
marketing campaign comprising:
[1] monitoring,
by a computing device comprising at least one
processor,
a plurality of social media posts across a plurality of
social media accounts received by a social media system
over a period of time for reference to one or more
keywords related to a brand;
[2] determining,
by analyzing the plurality of social media posts,
a socially relevant competitor of the brand by
extracting entities from posts that mention the
brand,
determining entities having a same type as the
brand,
determining a count of social media posts that
mention the one or more keywords for each entity
having the same type as the brand,
and
designating an entity having a high count as the
socially relevant competitor;
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[3] determining, by the computing device, at least one theme
related to the brand and to the socially relevant competitor
mentioned in the plurality of social media posts;
[4] identifying, by the computing device,
whether the plurality of social media posts have a
positive or a negative sentiment:
with respect to the at least one theme and the
brand,
and
with respect to the at least one theme and the
socially relevant competitor
by
parsing the plurality of social media posts
utilizing natural language processing
to identify parts of speech tags and
lexical chains
and
determining a sentiment of one or more
adjectives or adverbs;
and
[5] upon identifying a social media post having a positive
sentiment with respect to the at least one theme and the socially
relevant competitor:
[5.1] identifying at least one social media post from the
plurality of social media posts having a positive
sentiment with respect to the at least one theme and the
brand;
[5.2] automatically generating a reply to the social media
post, having a positive sentiment with respect to the at
least one theme and the socially relevant competitor,
comprising the at least one social media post having a
positive sentiment with respect to the at least one theme
and the brand;
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and
[5.3] providing the automatically generated reply in
response to the social media post having a positive
sentiment with respect to the at least one theme and the
socially relevant competitor.
Claims 1–15 and 17–21 stand rejected under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more.
ISSUES
The issues of eligible subject matter turn primarily on whether the
claims recite more than abstract conceptual advice of results desired.
ANALYSIS
Claims 1–15 and 17–21 rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more
STEP 13
Claim 1, as a method claim, nominally recites one of the enumerated
categories of eligible subject matter in 35 U.S.C. § 101. The issue before us
is whether it is directed to a judicial exception without significantly more.
STEP 2
The Supreme Court:
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, . . .
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. If so, we then ask, “[w]hat
else is there in the claims before us? To answer that question, .
. . consider the elements of each claim both individually and “as

3 For continuity of analysis, we adopt the steps nomenclature from the
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (“Revised Guidance”).
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an ordered combination” to determine whether the additional
elements “transform the nature of the claim” into a patent-
eligible application. [The Court] described step two of this
analysis as a search for an “‘inventive concept’”—i.e., an
element or combination of elements that is “sufficient to ensure
that the patent in practice amounts to significantly more than a
patent upon the [ineligible concept] itself.”
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014) (citations
omitted) (citing Mayo Collaborative Servs. v. Prometheus Labs, Inc.,
566 U.S. 66 (2012)). To perform this test, we must first determine what the
claims are directed to. This begins by determining whether the claims recite
one of the judicial exceptions (a law of nature, a natural phenomenon, or an
abstract idea). Then, if the claims recite a judicial exception, determining
whether the claims at issue are directed to the recited judicial exception, or
whether the recited judicial exception is integrated into a practical
application of that exception, i.e., that the claims “apply, rely on, or use the
judicial exception in a manner that imposes a meaningful limit on the
judicial exception, such that the claim is more than a drafting effort designed
to monopolize the judicial exception.” Revised Guidance, 84 Fed. Reg.
at 54. If the claims are directed to a judicial exception, then finally
determining whether the claims provide an inventive concept because the
additional elements recited in the claims provide significantly more than the
recited judicial exception.
STEP 2A Prong 1
At a high level, and for our preliminary analysis, we note that method
claim 1 recites monitoring media posts data, determining competitor data by
extracting, determining, and designating data, determining theme data,
identifying sentiment data by parsing and determining data, identifying post
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data, generating reply data, and providing reply data. Monitoring data is
receiving data. Determining, extracting, designating, identifying, and
parsing data are all rudimentary forms of data analysis. Providing data is
transmitting data. Thus, claim 1 recites receiving, analyzing, generating, and
transmitting data. None of the limitations recites technological
implementation details for any of these steps, but instead recite only results
desired by any and all possible means.
From this we see that claim 1 does not recite the judicial exceptions of
either natural phenomena or laws of nature.
Under Supreme Court precedent, claims directed purely to an abstract
idea are patent ineligible. As set forth in the Revised Guidance, which
extracts and synthesizes key concepts identified by the courts, abstract ideas
include (1) mathematical concepts4, (2) certain methods of organizing
human activity5, and (3) mental processes6. Among those certain methods of
organizing human activity listed in the Revised Guidance are commercial or
legal interactions. Like those concepts, claim 1 recites the concept of
managing marketing campaigns. Specifically, claim 1 recites operations that

4 See, e.g., Gottschalk v. Benson, 409 U.S. 63, 71–72 (1972); Bilski v.
Kappos, 561 U.S. 593, 611 (2010); Mackay Radio & Telegraph Co. v. Radio
Corp. of Am., 306 U.S. 86, 94 (1939); SAP America, Inc. v. InvestPic, LLC,
898 F.3d 1161, 1163 (Fed. Cir. 2018).
5 See, e.g., Bilski, 561 U.S. at 628; Alice, 573 U.S. at 219-20; Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed Cir. 2014); Smart Sys.
Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1383 (Fed. Cir.
2017); In re Marco Guldenaar Holding B.V., 911 F.3d 1157, 1160–61 (Fed.
Cir. 2018).
6 See, e.g., Benson, 409 U.S. at 67; CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1371–72 (Fed. Cir. 2011); Intellectual Ventures I LLC
v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016).
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would ordinarily take place in advising one to respond to positive brand
related social media identified by conventional data analysis. The advice to
respond to positive brand related social media identified by conventional
data analysis involves replying to social media postings as part of a
marketing campaign, which is an economic act, and determining a socially
relevant competitor of the brand, which is an act ordinarily performed in the
stream of commercial marketing. For example, claim 1 recites “replying to
social media postings as part of a marketing campaign,” which is an activity
that would take place whenever one is performing commercial market
research. Similarly, claim 1 recites “determining . . . a socially relevant
competitor of the brand,” which is also characteristic of commercial market
research.
The Examiner determines the claims to be directed to providing
information to users based on what is known about them. Final Act. 2. The
preamble to claim 1 recites that it is a method for replying to social media
postings as part of a marketing campaign. The steps in claim 1 result in
managing marketing campaigns by responding to positive brand related
social media identified by conventional data analysis absent any
technological mechanism other than a conventional computer for doing so.
As to the specific limitations, limitation 1 recites receiving data.
Limitations 2–5 recite generic and conventional analyzing, generating, and
transmitting of marketing related social media data, which advise one to
apply generic functions to get to these results. The limitations thus recite
advice for responding to positive brand related social media identified by
conventional data analysis. To advocate responding to positive brand related
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social media identified by conventional data analysis is conceptual advice
for results desired and not technological operations.
The Specification at paragraph 2 describes the invention as relating to
monitoring and responding to social media posts, and more specifically, to
replying to social media posts with comparison data. Thus, all this intrinsic
evidence shows that claim 1 recites managing marketing campaigns. This is
consistent with the Examiner’s determination.
This in turn is an example of commercial or legal interactions as a
certain method of organizing human activity because managing commercial
marketing is a method of organizing commercial marketing plans. The
concept of managing marketing campaigns by responding to positive brand
related social media identified by conventional data analysis is one idea for
creating such a campaign. The steps recited in claim 1 are part of how this
might conceptually be premised.
Our reviewing court has found claims to be directed to abstract ideas
when they recited similar subject matter. Affinity Labs of Texas, LLC v.
Amazon.com Inc., 838 F.3d 1266, 1271 (Fed. Cir. 2016) (tailoring content);
Digitech Image Techs, LLC v. Elecs for Imaging, Inc., 758 F.3d 1344, 1351
(Fed. Cir. 2014) (organizing data sets into a new form); Content Extraction
& Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1347
(Fed. Cir. 2014) (collecting, recognizing, and storing data); Intellectual
Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1369 (Fed. Cir.
2015) (tailoring content); BASCOM Glob. Internet Servs., Inc. v. AT&T
Mobility LLC, 827 F.3d 1341, 1347 (Fed. Cir. 2016) (filtering content);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093 (Fed. Cir.
2016) (collecting information).
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Alternately, this is an example of concepts performed in the human
mind as mental processes because the steps of receiving, analyzing,
generating, and transmitting data mimic human thought processes of
observation, evaluation, judgment, and opinion, perhaps with paper and
pencil, where the data interpretation is perceptible only in the human mind.
See In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir.
2016); FairWarning, 839 F.3d 1089. Claim 1, unlike the claims found non-
abstract in prior cases, uses generic computer technology to perform data
reception, analysis, generation, and transmission and does not recite an
improvement to a particular computer technology. See, e.g., McRO, Inc. v.
Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314–15 (Fed. Cir. 2016)
(finding claims not abstract because they “focused on a specific asserted
improvement in computer animation”). As such, claim 1 recites receiving,
analyzing, generating, and transmitting data, and not a technological
implementation or application of that idea.
From this we conclude that at least to this degree, claim 1 recites
managing marketing campaigns by responding to positive brand related
social media identified by conventional data analysis, which is a commercial
and legal interaction, one of certain methods of organizing human activity
identified in the Revised Guidance, and, thus, an abstract idea.
STEP 2A Prong 2
The next issue is whether claim 1 not only recites, but is more
precisely directed to this concept itself or whether it is instead directed to
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some technological implementation or application of, or improvement to,
this concept, i.e., integrated into a practical application.7
At the same time, we tread carefully in construing this
exclusionary principle lest it swallow all of patent law. At
some level, “all inventions ... embody, use, reflect, rest upon, or
apply laws of nature, natural phenomena, or abstract ideas.”
Thus, an invention is not rendered ineligible for patent simply
because it involves an abstract concept. “[A]pplication[s]” of
such concepts “ ‘to a new and useful end,’ ” we have said,
remain eligible for patent protection. Accordingly, in applying
the § 101 exception, we must distinguish between patents that
claim the “ ‘buildin[g] block[s]’ ” of human ingenuity and those
that integrate the building blocks into something more.
Alice, 573 U.S. at 217 (citations omitted).
Taking the claim elements separately, the operation performed by the
computer at each step of the process is expressed purely in terms of results,
devoid of implementation details. Step 1 is a pure data gathering step.
Limitations describing the nature of the data do not alter this. Step 5.3 is
insignificant post solution activity, such as storing, transmitting, or
displaying the results. Steps 2–5.2 recite generic computer processing
expressed in terms of results desired by any and all possible means and so
present no more than conceptual advice. The recited extracting and parsing
operations, in steps 2 and 4, may be phrased with technological buzzwords,
but both are conventional generic low level data analysis. All purported
inventive aspects reside in how the data are interpreted and the results
desired, and not in how the process physically enforces such a data

7 See, e.g., Alice, 573 U.S. at 223, discussing Diamond v. Diehr, 450 U.S.
175 (1981).
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interpretation or in how the processing technologically achieves those
results.
Viewed as a whole, Appellant’s claim 1 simply recites the concept of
managing marketing campaigns by responding to positive brand related
social media identified by conventional data analysis as performed by a
generic computer. This is no more than conceptual advice on the parameters
for this concept and the generic computer processes necessary to process
those parameters, and does not recite any particular implementation.
Claim 1 does not, for example, purport to improve the functioning of
the computer itself. Nor does it effect an improvement in any other
technology or technical field. The Specification only spells out different
generic equipment8 and parameters that might be applied using this concept
and the particular steps such conventional processing would entail based on
the concept of managing marketing campaigns by responding to positive
brand related social media identified by conventional data analysis under
different scenarios. It does not describe any particular improvement in the
manner a computer functions. Instead, claim 1 at issue amounts to nothing
significantly more than an instruction to apply managing marketing
campaigns by responding to positive brand related social media identified by
conventional data analysis using some unspecified, generic computer.
Under our precedents, that is not enough to transform an abstract idea into a
patent-eligible invention. See Alice, 573 U.S. at 225–26.

8 The Specification describes a special purpose or general purpose
computer including computer hardware, such as, for example, one or
more processors and system memory. Spec. para. 136.
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None of the limitations reflects an improvement in the functioning of
a computer, or an improvement to other technology or technical field,
applies or uses a judicial exception to effect a particular treatment or
prophylaxis for a disease or medical condition, implements a judicial
exception with, or uses a judicial exception in conjunction with, a particular
machine or manufacture that is integral to the claim, effects a transformation
or reduction of a particular article to a different state or thing, or 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.
We conclude that claim 1 is directed to achieving the result of
managing marketing campaigns by advising one to respond to positive brand
related social media identified by conventional data analysis, as
distinguished from a technological improvement for achieving or applying
that result. This amounts to commercial or legal interactions, which fall
within certain methods of organizing human activity that constitute abstract
ideas. The claim does not integrate the judicial exception into a practical
application.
STEP 2B
The next issue is whether claim 1 provides an inventive concept
because the additional elements recited in the claim provide significantly
more than the recited judicial exception.
The introduction of a computer into the claims does not generally alter
the analysis at Mayo step two:
the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
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Stating an abstract idea “while adding the words ‘apply it’” is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological environment.’”
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implement[t]” an abstract
idea “on . . . a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the preemption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of “additional
feature[e]” that provides any “practical assurance that the
process is more than a drafting effort designed to monopolize
the [abstract idea] itself.”
Alice, 573 U.S. at 223–24 (citations omitted).
“[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea [] on a generic
computer.” Alice, 573 U.S. at 225. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer for receiving, analyzing, generating, and transmitting data amounts
to electronic data query and retrieval—one of the most basic functions of a
computer. All of these computer functions are generic, routine, conventional
computer activities that are performed only for their conventional uses. See
Elec. Power Grp. LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016).
See also In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303,
1316 (Fed. Cir. 2011) (“Absent a possible narrower construction of the terms
‘processing,’ ‘receiving,’ and ‘storing,’ . . . those functions can be achieved
by any general purpose computer without special programming”). None of
these activities is used in some unconventional manner nor does any produce
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some unexpected result. Appellant does not contend it invented any of these
activities. In short, each step does no more than require a generic computer
to perform generic computer functions. As to the data operated upon, “even
if a process of collecting and analyzing information is ‘limited to particular
content’ or a particular ‘source,’ that limitation does not make the collection
and analysis other than abstract.” SAP Am., Inc. v. InvestPic LLC, 898 F.3d
1161, 1168 (Fed. Cir. 2018).
Considered as an ordered combination, the computer components of
Appellant’s claim 1 add nothing that is not already present when the steps
are considered separately. The sequence of data reception-analysis-
generation-transmission is equally generic and conventional. See
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014)
(sequence of receiving, selecting, offering for exchange, display, allowing
access, and receiving payment recited an abstraction), Inventor Holdings,
LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017)
(sequence of data retrieval, analysis, modification, generation, display, and
transmission), Two-Way Media Ltd. v. Comcast Cable Communications,
LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (sequence of processing, routing,
controlling, and monitoring). The ordering of the steps is therefore ordinary
and conventional.
We conclude that claim 1 does not provide an inventive concept
because the additional elements recited in the claim do not provide
significantly more than the recited judicial exception.
REMAINING CLAIMS
Claim 1 is representative. The remaining method claims merely
describe process parameters. We conclude that the method claims at issue
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are directed to a patent-ineligible concept itself, and not to the practical
application of that concept.
As to the structural claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long “warn[ed] . . . against” interpreting §
101“in ways that make patent eligibility ‘depend simply on the
draftsman’s art.’
Alice, 573 U.S. at 226. As a corollary, the claims are not directed to any
particular machine.
LEGAL CONCLUSION
From these determinations we further determine that the claims do not
recite an improvement to the functioning of the computer itself or to any
other technology or technical field, a particular machine, a particular
transformation, or other meaningful limitations. From this we conclude the
claims are directed to the judicial exception of the abstract idea of certain
methods of organizing human activity as exemplified by the commercial and
legal interaction of managing marketing campaigns by advising one to
respond to positive brand related social media identified by conventional
data analysis, without significantly more.
APPELLANT’S ARGUMENTS
As to Appellant’s Appeal Brief arguments, we adopt the Examiner’s
determinations and analysis from Final Action 2–6 and Answer 3–9 and
reach similar legal conclusions. We now turn to the Reply Brief.
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We are not persuaded by Appellant’s argument that:
[t]he Examiner’s Answer even acknowledges that natural
language processing is a technical means at least during the
lengthy discussion regarding ELIZA and natural language
processing on pages 7 and 8 of the Examiner’s Answer. As
such, and as laid out in the Appeal Brief, the pending claims go
well beyond stating functions in general terms without limiting
them to technical means for performing the functions, as was
found patent ineligible in Electric Power Group. Rather, and in
contrast to the assertions in the Examiner’s Answer, the
pending claims state specific functions and the technical means
by which those functions are accomplished.
Reply Br. 2 (citations omitted). Appellant’s problem is that the data
extraction and parsing operations to which such an argument alludes are
both generic and conventional to the point the claims recite no more than the
conceptual idea of applying such processing functionally. Appellant does
not contend it invented natural language processing nor that the claims recite
implementation details other than such conventional operations as extracting
and parsing data. Simply invoking the function of natural language
processing cannot confer eligibility.
At that level of generality, the claims do no more than
describe a desired function or outcome, without providing any
limiting detail that confines the claim to a particular solution
to an identified problem. The purely functional nature of the
claim confirms that it is directed to an abstract idea, not to a
concrete embodiment of that idea.
Affinity Labs, 838 F.3d at 1269.
We are not persuaded by Appellant’s argument that the claim
limitations recite much more than “mentally determining a
positive sentiment,” as asserted by the Examiner’s Answer. As
noted in the Appeal Brief, the claims are similar to those in
McRO, in that they “created a fundamentally different process
which was amenable to computer execution.” Similarly, in
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order to do things like determine a sentiment of a social media
post, the claims recite a fundamentally different process than a
mental act that is amenable to computer execution, including:
parsing the plurality of social media posts utilizing natural
language processing to identify parts of speech tags and lexical
chains and determining a sentiment of one or more adjectives or
adverbs. Thus, the language of the pending claims is necessarily
rooted in computing realms and cannot simply be performed by
a person scrolling through his social media newsfeed.
Reply Br. 3–4 (citations omitted). As determined supra, the claims recite an
example of concepts performed in the human mind as mental processes
because the steps of receiving, analyzing, generating, and transmitting data
mimic human thought processes of observation, evaluation, judgment, and
opinion, perhaps with paper and pencil, where the data interpretation is
perceptible only in the human mind. Parsing and performing natural
language processing is the epitome of performing the first R, Reading, in the
3 R’s taught in elementary school. Elementary school students
conventionally use pen and paper for reading and writing. The remaining
recited operations describe what such students do in their heads to apprehend
what is read. No technological implementation details are recited that would
make the claims more than such generic conventional functions.
Appellant also attempts to analogize the claims to those involved in
McRO. Reply Br. 3–4. In McRO, the court held that, although the
processes were previously performed by humans, “the traditional process
and newly claimed method . . . produced . . . results in fundamentally
different ways.” FairWarning, 839 F.3d at 1094 (differentiating the
claims at issue from those in McRO). In McRO, “it was the incorporation
of the claimed rules not the use of the computer, that improved the
existing technology process,” because the prior process performed by
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humans “was driven by subjective determinations rather than specific,
limited mathematical rules.” McRO, 837 F.3d at 1314 (internal quotation
marks, citation, and alterations omitted). In contrast, the claims of the
instant application merely implement an old practice of using decision
criteria in making response decisions in a new environment. Appellant has
not argued that the claimed processes of selecting content apply rules of
selection in a manner technologically different from those which humans
used, albeit with less efficiency, before the invention was claimed. Merely
pigeon holing the objects of decision making in tiers to aid decision making
is both old and itself abstract.
The claims in McRO were not directed to an abstract idea, but
instead were directed to “a specific asserted improvement in
computer animation, i.e., the automatic use of rules of a
particular type.” We explained that “the claimed improvement
[was] allowing computers to produce ‘accurate and realistic lip
synchronization and facial expressions in animated characters’
that previously could only be produced by human animators.”
The claimed rules in McRO transformed a traditionally
subjective process performed by human artists into a
mathematically automated process executed on computers.
FairWarning, 839 F.3d at 1094 (differentiating the claims at issue from
those in McRO).
Appellant further argues that the asserted claims are akin to the
claims found patent eligible in Core Wireless Licensing S.A.R.L. v. LG
Electronics, Inc., 880 F.3d 1356 (Fed. Cir. 2018). Reply Br. 4. But the
court in Trading Technologies International, Inc. v. IBG LLC addressed
Appellant’s Core Wireless argument.
Relying principally on Core Wireless, TT argues the claimed
invention provides an improvement in the way a computer
operates. We do not agree. The claims of the ’999 patent do not
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improve the functioning of the computer, make it operate more
efficiently, or solve any technological problem. Instead, they
recite a purportedly new arrangement of generic information
that assists traders in processing information more quickly.
Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d at 1093 (citations omitted).
The instant claims do not improve the functioning of the computer, make it
operate more efficiently, or solve any technological problem. Instead, they
recite a purportedly new arrangement of generic information that assists
users in processing information more quickly. Appellant contends that “the
pending claims also improve the functioning of computers by increasing the
ease and efficiency of user navigation in accessing data related to socially-
relevant competitors.” Reply Br. 4–5. Appellant refers to the argument that
“conventional systems require the user ‘to scroll around and switch views
many times to find the right data/functionality,’ or ‘to drill down through
many layers to get to desired data or functionality.’” Appeal Br. 15. But
this is precisely an instance of information improvement as contrasted with
computer technology improvement described in Trading Technologies.
Scrolling around and drilling down are information search techniques, not
computer operation techniques.
Appellant cites Berkheimer for the proposition that evidence of
something being conventional is necessary. Reply Br. 5–6 (citing
Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018). Support for this
finding is provided under Step 2B supra.
CONCLUSIONS OF LAW
The rejection of claims 1–15 and 17–21 under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more is proper.
Appeal 2019-001555
Application 14/542,219

20

CONCLUSION
The rejection of claims 1–15 and 17–21 is affirmed.
In summary:
Claims
Rejected
35 U.S.C. § Basis  Affirmed Reversed
1–15, 17–21 101 Eligibility 1–15, 17–21

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2011).

AFFIRMED