ADP, LLC

Patent Trials and Appeals Board

Jul 16, 2020

14682611 - (D) (P.T.A.B. Jul. 16, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/682,611 04/09/2015 Nick Heasman ES2014020-1 1062
126105 7590 07/16/2020
Duke W. Yee
Yee & Associates, P.C.
P.O. BOX 190809
Dallas, TX 75219
EXAMINER
THAI, XUAN MARIAN
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
07/16/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ptonotifs@yeeiplaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte NICK HEASMAN and MIN WANG
____________

Appeal 2019-0032751
Application 14/682,611
Technology Center 3700
____________

Before LINDA E. HORNER, KEVIN F. TURNER, and JILL D. HILL,
Administrative Patent Judges.

HILL, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 1–21. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
Independent claims 1, 8, and 15 are pending. The patent relates to a
method, a computer system, and a computer program product for facilitating
a networking connection of an employee. Claim 1, reproduced below,
illustrates the claimed subject matter:

1 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 ADP,
LLC. Appeal Br. 2.
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1. A method for facilitating a networking connection of
an employee, the method comprising:
identifying, by a computer system, a meeting the
employee is scheduled to attend;
identifying, by a computer system, a social interest for
the employee;
identifying, by the computer system, a contact attending
the meeting based on the social interest;
generating, by the computer system, a group of
flashcards for relevant attributes about the contact, wherein the
relevant attributes about the contact are associated with the
social interest, wherein displaying the group of flashcards about
the social interest enables communications between the
employee and the contact at the meeting; and
displaying, by the computer system, the group of
flashcards for the relevant attributes about the contact.
REJECTION2
Claims 1–21 stand rejected under 35 U.S.C. § 101 as directed to
ineligible subject matter. Final Act. 2.
PRINCIPLES OF LAW
A patent may be obtained for “any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof.” 35 U.S.C. § 101. The Supreme Court has held that this provision
contains an important implicit exception: Laws of nature, natural
phenomena, and abstract ideas are not patentable. Alice Corp. v. CLS Bank
Int’l, 134 S. Ct. 2347, 2354 (2014); Gottschalk v. Benson, 409 U.S. 63, 67
(1972) (“Phenomena of nature . . . , mental processes, and abstract
intellectual concepts are not patentable, as they are the basic tools of

2 The Examiner withdrew the rejection of claims 1–21 under 35 U.S.C.
§ 103. Ans. 8.
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scientific and technological work.”). Notwithstanding that a law of nature or
an abstract idea, by itself, is not patentable, the application of these concepts
may be deserving of patent protection. Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 71 (2012).
In Alice, the Supreme Court reaffirmed the framework set forth
previously in Mayo “for distinguishing patents that claim laws of nature,
natural phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts.” Alice, 573 U.S. at 217–18. The first step in
the analysis is to determine whether the claims at issue are directed to a
patent-ineligible concept. Id. If the claims are directed to a patent-ineligible
concept, then the second step in the analysis is to consider the elements of
the claims “individually and ‘as an ordered combination”’ to determine
whether there are additional elements that “‘transform the nature of the
claim’ into a patent-eligible application.” Id. (quoting Mayo, 566 U.S. at 79,
78). In other words, the second step is to “search for an ‘inventive concept’
–– i.e., an element or combination of elements that is ‘sufficient to ensure
that the patent in practice amounts to significantly more than a patent upon
the [ineligible concept] itself.’” Id. (brackets in original) (quoting Mayo,
566 U.S. 66 at 72–73). The prohibition against patenting an abstract idea
“cannot be circumvented by attempting to limit the use of the [concept] to a
particular technological environment or adding insignificant post-solution
activity.” Bilski v. Kappos, 561 U.S. 593, 610–11 (2010) (citation and
internal quotation marks omitted). The Court in Alice noted that “‘[s]imply
appending conventional steps, specified at a high level of generality,’ was
not ‘enough’ [in Mayo] to supply an ‘inventive concept.”’ Alice, 1573 U.S.
at 222 (quoting Mayo, 566 U.S. at 82–83, 77–78, 72–73).
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In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo, 566 U.S. at 75–77). In accordance
with that framework, we first determine what concept the claim is “directed
to.” See Alice, 573 U.S. at 219 (“On their face, the claims before us are
drawn to the concept of intermediated settlement, i.e., the use of a third party
to mitigate settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611
(2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept
of hedging, or protecting against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Benson, 409 U.S. at 69). Concepts determined to be
patent eligible include physical and chemical processes, such as “molding
rubber products” (Diehr, 450 U.S. at 192); “tanning, dyeing, making water-
proof cloth, vulcanizing India rubber, smelting ores” (id. at 184 n.7 (quoting
Corning v. Burden, 56 U.S. 252, 267–68 (1854))); and manufacturing flour
(Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785
(1876))).
The PTO recently published revised guidance on the application of
§ 101. USPTO’s January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance (“Memorandum”). Under that
guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings
of abstract ideas (i.e., mathematical concepts, certain methods
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of organizing human interactions such as a fundamental
economic practice, or mental processes); and
(2) additional elements that integrate the judicial
exception into a practical application (see MPEP § 2106.05(a)–
(c), (e)–(h)).
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then 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,
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial exception.
See Memorandum.
DISCUSSION
Appellant argues all of the claims as a group. See Appeal Br. 10–12.
We select claim 1 as representative and claims 2–21 stand or fall with claim
1. See 37 C.F.R. § 41.37(c)(1)(iv) (2017).
In rejecting the claims, the Examiner finds that claim 1 is directed to
“a flashcard generator and method for facilitating a networking connection
of an employee (best understood to be a social networking connection),
comprising” the claimed limitations. Final Act. 2–3.
The Examiner determines that independent claim 1 meets Step 1 of
the Mayo test because it recites a computer-implemented method. Id. at 3.
As to Step 2A, the Examiner determines that Appellant’s claims are similar
to Apple v. Ameranth Inc., 842 F.3d 1229 (Fed. Cir. 2016), because
Appellant’s claims are directed to “categorizing intangible data according to
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parameters and merely displaying the data in a graphical user interface.” Id.
at 4 (describing the claim as being directed to “an idea of itself”) (internal
quotation marks omitted).
Appellant argues that the Examiner’s above definition of the abstract
idea results from too high a level of abstraction and is “untethered from the
language of the claims.” Reply Br. 3. According to Appellant, the claims
are directed, instead, to “a specific implementation of a solution to a
problem in the software arts,” and not a fundamental economic practice or
mathematical equation in which general-purpose computer components are
added after the fact. Id.
The Examiner further determines that the claims do not include
“additional elements that are sufficient to amount to . . . significantly more
than the abstract idea” under Alice/Mayo Step 2B. Id. at 6. According to the
Examiner, claim 1 recites using a “computer system” recited at a high level
of generality and recited as performing generic computer functions . . . that
are well-understood, routine and conventional activities . . . amount[ing] to
no more than implementing the abstract idea with a computerized system.”
Id.
Still further, the Examiner determines that the “displaying” limitation
“is stated at a high level of generality and its broadest reasonable
interpretation comprises only providing computing equipment to a user to
provide output through the use of some unspecified generic computers and
interface,” which “does not impose any meaningful limit on the computer
implementation of the abstract idea.” Id. at 7. The Examiner contends that
the claims do not recite “more” that provides an inventive concept, because
the combination of elements does not improve the functioning of a computer
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or any other technology, and therefore “adds nothing that is not already
present when looking at the elements taken individually.” Id.
Appellant argues that the claimed subject matter meets the eligibility
standards of Alice Step 1, because the claimed method “solve[s] problems of
prior digital flashcards and analog flashcards lack the capability to
automatically update flashcards in order to visually present new information
for situationally relevant topics.” Appeal Br. 11; Reply Br. 4. Further,
Appellant argues, the claimed method “integrate[s] a flashcard system into a
business networking setting in a manner that takes into account the dynamic
nature of business networking events
. . . , and adapt the display of flashcards content based on situationally
relevant topics.” Id.; Reply Br. 4. Still further, Appellant argues, the
claimed method “enables a customized learning, review, and evaluation to
be performed as part of a flashcard system based on data gathered from
disparate sources to aid in achievement of the identified business goals.”
Id.; Reply Br. 4.
The Examiner responds that, while Appellant’s inventive concept
“integrates flashcard memorization methods into a business meeting
setting,” Appellant is incorrect in asserting that “prior digital flashcards have
been improved upon,” because Appellant discloses no specific improvement
to digital flashcards themselves. Ans. 9. Likewise, the Examiner argues,
Appellant’s graphical user interface “does not purport to improve
memorization over conventional digital flash cards.” Id. The Examiner
considers Appellant’s “use of generic digital flashcards to memorize
business information” to improve only “the abstract idea at large.” Id.
Thus, the Examiner states, the claims are directed only to “the abstract idea
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of providing flash cards for memorizing sales contacts and their social
interests to facilitate social lubricant that aids in the selling of products and
services.” Id.
Appellant also argues that, under Alice Step 2, “additional elements
included in the independent claims ‘transform the nature of the claim’ into
‘significantly more’ than displaying data on a graphical user interface.”
Appeal Br. 11. These additional elements, Appellant argues, include
“gather[ing] information from disparate sources, and dynamically
transform[ing] that information into an ordered mnemonic sequence of
flashcards based on shared social interests.” Id.; Reply Br. 4, 5. Appellant
considers this a transformation of the information “into a different state,”
that causes the claimed process to add “significantly more.” Id. (citing
Diamond v. Diehr, 450 U.S. 175 (1981)).
The Examiner responds that “Appellant does not point out precisely
which elements of the independent claims make the [alleged]
transformation.” Ans. 10. At best, the Examiner contends, software on a
typical computer makes the alleged “transformation” and Appellant’s
disclosure “does not provide any guidance or steps on how to improve the
software to encourage . . . improvement of generating digital flashcards
themselves.” Id. According to the Examiner, Appellant’s disclosure
includes only “what categories of information must be provided,” and
displaying those categories. Id. Thus, the Examiner contends, “[n]o
transformation occurs . . . because no advice is given for retrieving the
information apart from a direction to ‘get it from Linked In, Facebook, or
Wikipedia,’” and Appellant provides no disclosure of “mak[ing] mnemonic
sequences, apart from playing with flashcards in the ordinary way.” Id.
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(citing Spec. ¶¶ 61–75). Further, the Examiner contends, nothing in the
claimed process requires an actual “transformation” of collected information
into a “flashcard.” Ans. 11. Indeed, the Examiner construes the generation
of “digital flashcards” broadly as “displaying some material to be learned to
a user” and finds that the term “flashcards” does not limit the type of
information being displayed in any way. Id. at 10. According to the
Examiner, Appellant provides no disclosure of how displaying “data as a
‘flashcard’ makes any difference to the problem to be solved (that is,
providing . . . information on a sales contact and their social interests).” Id.
at 10–11.
Regarding “disparate sources,” the Examiner contends that the
sources from which Appellant gathers data are not “disparate,” but rather
include LinkedIn, Facebook, or Wikipedia, which are “sources that millions
of Americans use every day” for learning personal information. Id. at 11.
Appellant replies that by generating “‘a group of flashcards for
relevant attributes about the contact,’ the claims fundamentally alter the
original meeting schedule data for both the employee and the social
contact.” Reply Br. 5. Appellant contends that “even though the method
does not result in the physical transformation of matter . . . , it utilizes a
system for modifying and generating data that has a concrete effect in the
field of social networking.” Id.
We are not persuaded of Examiner error.
The Examiner finds that the claims are directed to “a flashcard
generator and method for facilitating a networking connection of an
employee (best understood to be a social networking connection),
comprising” the claimed limitations. Final Act. 2. This finding directly
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tracks the language of the claims. For instance, the preamble of claim 1
recites, “[a] method for facilitating a networking connection of an
employee,” the first three steps recited in the body of claim 1 pertain to
identifying information about the employee and a contact, and the fourth and
fifth steps pertain to generating output based on the data identified in the
first three steps, where the output is intended to assist the employee with
identifying a social interest that the employee and the contact have in
common.
Appellant argues that the claims are directed, instead, to “a specific
implementation of a solution to a problem in the software arts,” and not a
fundamental economic practice or mathematical equation in which general-
purpose computer components are added after the fact. Reply Br. 3. This
assertion lacks support from the written description and the claims. Because
the Examiner’s finding more directly tracks the claim language, and
Appellant’s assertion finds no support in Appellant’s actual disclosure, we
discern no error in the Examiner’s finding. We determine that Appellant’s
claims, directed to “a flashcard generator and method for facilitating a
networking connection of an employee (best understood to be a social
networking connection), comprising” the claimed limitations (Final Act. 2)
are directed to certain methods of organizing human activity, and,
specifically managing personal behavior or relationships or interactions
between people (including social activities). For this reason, the claims
recite a judicial exception.
The only additional elements recited in claim 1 beyond the judicial
exception are the recitations “by a computer system” and “by the computer
system” in each step of the claimed method. Regarding whether these
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additional elements integrate the judicial exception into a practical
application (see MPEP § 2106.05(a)–(c), (e)–(h)), the Examiner determines
that the claim limitations individually, and as a combination, include no
additional elements that integrate the judicial exception into a practical
application. See Final Act. 6–7.
Appellant argues that: (1) the claimed methods and systems “solve
problems of prior digital flashcards and analog flashcards lack the capability
to automatically update flashcards in order to visually present new
information for situationally relevant topics;” (2) the claimed methods and
systems “integrate a flashcard system into a business networking setting in a
manner that takes into account the dynamic nature of business networking
events, and adapt the display of flashcards content based on situationally
relevant topics;” (3) the claimed methods and systems “enable[] a
customized learning, review, and evaluation to be performed as part of a
flashcard system based on data gathered from disparate sources to aid in
achievement of the identified business goals;” (4) additional elements like
“gather[ing] information from disparate sources, and dynamically
transform[ing] that information into an ordered mnemonic sequence of
flashcards based on shared social interests” “‘transform the nature of the
claim’ into ‘significantly more’ than displaying data on a graphical user
interface,” and create a transformation “into a different state.” Appeal Br.
11; Reply Br. 4.
Appellant’s arguments are not persuasive. The claims do not recite,
and Appellant provides no supporting disclosure for the proposition that, the
claimed method solves problems of prior digital flashcards. Further, we are
unsure why analog flashcards’ limitations are relevant to whether the
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claimed invention is a practical application. Rather, these additional
elements, when considered individually, and as a combination, simply recite
the instrument to apply the judicial exception on a generic computer, and
does not amount to an improvement to the functioning of the computer itself
or to any other technology or technical field. In other words, reciting that
each claimed step is conducted “by a computer system” does not impose
meaningful limits on the judicial exception.
Regarding Appellant’s argument that the claimed methods and
systems “integrate a flashcard system into a business networking setting in a
manner that takes into account the dynamic nature of business networking
events, and adapt the display of flashcards content based on situationally
relevant topics” (Appeal Br. 11, Reply Br. 4), this content is not recited in
the claims and thus is not a claim limitation — or combination of
limitations, that can be relied on to establish a practical application.
Similarly, enabling “customized learning, review, and evaluation to be
performed as part of a flashcard system based on data gathered from
disparate sources to aid in achievement of the identified business goals” and
“dynamically transform[ing] information into an ordered mnemonic
sequence of flashcards based on shared social interests” (id.) are not recited
in the claims and cannot be relied on to establish a practical application.
Because we agree with the Examiner that the claims recite a judicial
exception and do not integrate that exception into a practical application, we
must consider whether the claims add any specific limitations beyond the
judicial exception that are not well-understood, routine, conventional or
simply appends well-understood, routine, conventional activities previously
known to the industry, specified at a high level of generality, to the judicial
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exception. The Examiner finds that the claim limitations simply append
well-understood, routine, conventional activities previously known to the
industry, specified at a high level of generality. Final Act. 3 (“the additional
computer elements, which are recited at a high level of generality, provide
conventional computer functions”), 5 (“data gathering that has been treated
as well understood, routine, and conventional activity”). According to the
Examiner,
[t]he claims recite as per the preamble that the method utilizes a
“computer system” . . . recited at a high level of generality and
recited as performing generic computer functions routinely used
in computer applications. Generic computer components
recited as performing generic computer functions that are well-
understood, routine and conventional activities amount to no
more than implementing the abstract idea with a computerized
system.
. . . Next, displaying on a “display system” is stated at a high
level of generality and its broadest reasonable interpretation
comprises only providing computing equipment to a user to
provide output through the use of some unspecified generic
computers and interface. The use of generic computer
components to transmit information through an unspecified
interface does not impose any meaningful limit on the computer
implementation of the abstract idea. Thus, taken alone, the
additional elements do not amount to significantly more than
the above-identified judicial exception (the abstract idea).
Id. at 6–7.
Appellant argues only that “generating and displaying digital
flashcards about shared social interests is not an idea that has long existed”
(Appeal Br. 11; Reply Br. 4), providing no supporting evidence for such an
assertion. The Examiner has the better argument. We agree with the
Examiner that the claim limitations simply append well-understood, routine,
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conventional activities previously known to the industry, specified at a high
level of generality, and we adopt the Examiner’s finding and reasoning
above as our own.
Propagating Signals Per Se
The Examiner further rejects claims 15–21 under 35 U.S.C. § 101 as
covering both non-statutory and statutory subject matter, because the
broadest reasonable interpretation of the claims covers forms of non-
transitory tangible media and transitory propagating signals per se in view of
the ordinary and customary meaning of computer readable media. Final Act.
7–8 (citing MPEP § 2111.01); Ans. 7–8. Appellant does not refute this
rejection, and we therefore summarily sustain this portion of the Examiner’s
§ 101 rejection. When the broadest reasonable interpretation of a claim
covers a signal per se, the claim must be rejected under 35 U.S.C. § 101 as
covering non-statutory subject matter. See In re Nuijten, 500 F.3d 1346,
1356–57 (Fed. Cir. 2007) (transitory embodiments are not directed to
statutory subject matter).
Conclusion
Accordingly, because Appellant does not apprise us of reversible
error in the rejection, we sustain the rejection of claims 1–21 as directed to
ineligible subject matter.
CONCLUSION
We AFFIRM the rejection of claims 1–21 for the reasons set forth
above.
In summary:

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Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–21 101 Eligibility 1–21

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

AFFIRMED