Angela Richards. Jones

Patent Trials and Appeals Board

Apr 29, 2020

12236253 - (D) (P.T.A.B. Apr. 29, 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.
12/236,253 09/23/2008 ANGELA RICHARDS JONES RSW920080143US1
8152-0280
7553
73109 7590 04/29/2020
Cuenot, Forsythe & Kim, LLC
20283 State Road 7
Ste. 300
Boca Raton, FL 33498
EXAMINER
DELICH, STEPHANIE ZAGARELLA
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
04/29/2020 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):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ANGELA RICHARDS JONES
____________

Appeal 2018-008427
Application 12/236,253
Technology Center 3600
____________

Before HUBERT C. LORIN, BRADLEY B. BAYAT, and
AMEE A. SHAH, Administrative Patent Judges.

SHAH, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s final decision to reject claims 21–37 and 39–41, which are all
the pending claims. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as IBM
Corporation. Appeal Br. 1.
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CLAIMED SUBJECT MATTER
The Appellant states its “invention relates to the field of calendaring
applications and, more particularly, to preventing scheduling conflicts when
proposing new times for calendar events.” Spec. ¶ 1.
Claims 21, 27, and 33 are the independent claims on appeal. Claim 21
is representative of the subject matter on appeal and is reproduced below
(with added bracketing and paragraphing for reference):
21. A method performed within a computer-implemented
calendaring application, comprising:
[(a)] storing, within a hardware data storage device, an
event data structure, corresponding to an event, that includes data
entries respectively representing (i) an owner of the event, (ii) a
location of the event, and (iii) an initial time for the event;
[(b)] forwarding over a computer network to a plurality of
recipients, by the computer-implemented calendaring
application using the event data structure, a first request that
includes:
(i) an identification of the event,
(ii) and a reply option that is configured to instruct
a calendaring application associated with a recipient to
send a reply that proposes a change to the event;
[(c)] receiving over the computer network, from one of the
recipients who is not the owner of the event, the reply that
proposes the change to the event;
[(d)] forwarding over the computer network to the
plurality of recipients, in response to the reply being received,
a first notification generated by the computer-
implemented calendaring application that includes an
identification of the change to the event and
is configured to instruct calendaring applications
associated with the plurality of recipients to generate a calendar
entry data structure associated with the change to the event that
includes the label of tentative;
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[(e)] forwarding over the computer network to the
plurality of recipients, in response the owner of the event
approving the change to the event, a second notification
generated by the computer-implemented calendaring application
that is configured to instruct the calendaring applications
associated with the plurality of recipients to:
(i) delete a previously-created calendar entry data
structure associated with the event, and
(ii) modify the calendar entry data structure
associated with the change to the event to remove the label
of tentative.
Appeal Br. 22–23 (Claims App.).
THE REJECTION
Claims 21–37 and 39–41 stand rejected under 35 U.S.C. § 101 as
being directed to a judicial exception without significantly more.

OPINION
35 U.S.C. § 101 Framework
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216
(2014).
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. Alice, 573 U.S. at 217–18 (citing Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with
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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 (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “a claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, and this principle cannot be circumvented by attempting
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to limit the use of the formula to a particular technological environment.”
Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace
that an application of a law of nature or mathematical formula to a known
structure or process may well be deserving of patent protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a
patent-eligible application.” Alice, 573 U.S. at 221 (internal quotation marks
omitted). “A claim that recites an abstract idea must include ‘additional
features’ to ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo,
566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention.” Id.
After the Appellant’s Briefs were filed and the Examiner’s Answer
mailed, the U.S. Patent and Trademark Office (“USPTO”) published revised
guidance on the application of § 101. 2019 REVISED PATENT SUBJECT
MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019
Revised Guidance”). That guidance revised the USPTO’s examination
procedure with respect to the first step of the Mayo/Alice framework by
(1) providing groupings of subject matter that are considered an abstract
idea; and (2) clarifying that a claim is not “directed to” a judicial exception
if the judicial exception is integrated into a practical application of that
exception. Id. at 50. The 2019 Revised Guidance, by its terms, applies to all
applications, and to all patents resulting from applications, filed before, on,
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or after January 7, 2019. Id. 2 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, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes); 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) (9th Ed., Rev.
08.2017, Jan. 2018)).
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 2019 Revised Guidance, 84 Fed Reg. at 54, 56.

2 The 2019 Revised Guidance supersedes MPEP § 2106.04(II) and also
supersedes all versions of the USPTO’s “Eligibility Quick Reference Sheet
Identifying Abstract Ideas” and prior guidance. See 2019 Revised Guidance,
84 Fed. Reg. at 51 (“Eligibility-related guidance issued prior to the Ninth
Edition, R-08.2017, of the MPEP (published Jan. 2018) should not be relied
upon.”). Thus, the Appellant’s arguments related to prior guidance (see,
e.g., Appeal Br. 13–18 (arguing the Examiner’s “Failure to reasonably tie
the facts of the present application to the cited case law”); Reply Br. 7–10)
will not be considered.
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Claims 21, 27, and 33
The Appellant argues independent claims 21, 27, and 33 as a group.
Appeal Br. 6. We select claim 21 as representative of the group, with
claims 27 and 33 standing or falling therewith. See 37 C.F.R.
§ 41.37(c)(1)(iv) (2017).
Step One of the Mayo/Alice Framework
Under the first step of the Mayo/Alice framework, the Examiner
determines that claim 21’s “limitations recite the abstract idea of
transmitting and receiving event scheduling related communications to
prevent scheduling conflicts and managing calendar event data structures”
(Final Act. 8), which the Examiner describes as one of “‘certain methods of
organizing human activity’ as concepts relating to interpersonal and
intrapersonal activities, such as managing relationships or transactions
between people, social activities, and human behavior” (id. at 9). When
viewed through the lens of 2019 Revised Guidance, Step 2A, Prong 1 (see
84 Fed. Reg. at 54), the Examiner’s analysis depicts the claimed subject
matter as a “[c]ertain method[] of organizing human activity— . . . managing
personal behavior or relationships or interactions between people (including
social activities, teaching, and following rules or instructions)” (id. at 52).
The Examiner also determines that the elements of the claim “utiliz[e] a
computer as a tool to automate tasks that could be evaluated and performed
the same way manually by a person following the workflow.” Ans. 5; see
also Final Act. 10 (“the claims recite generic computer structure”). When
viewed through the lens of 2019 Revised Guidance, Step 2A, Prong 2 (see
84 Fed. Reg. at 54–55), the Examiner determines that the additional
elements or combination of elements do not integrate the exception into a
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practical application because it “merely uses a computer as a tool to perform
an abstract idea” (id. at 55).
The Appellant contends that “[t]he Examiner’s characterization of the
claimed invention, however, completely omits the claimed combination of
operations and technology used to achieve this intended goal” (Appeal
Br. 10) and that “the claimed invention does present an improvement to
computer-related technology, and consequently, the claimed invention is not
directed to an abstract idea” (id. at 11). When viewed through the lens of the
2019 Revised Guidance, the Appellant contends that under Step 2A,
Prong 2, the elements of the claim integrate the abstract idea into a practical
application because the combination of the elements “reflects an
improvement in the functioning of a computer, or an improvement to other
technology or technical field.” 84 Fed. Reg. at 55. For at least the following
reasons, we disagree.
Reciting a Judicial Exception
Before determining whether the claim at issue is directed to an
abstract idea, we first determine to what the claim is directed. The Federal
Circuit has explained that “the ‘directed to’ inquiry applies a stage-one filter
to claims, considered in light of the specification, based on whether ‘their
character as a whole is directed to excluded subject matter.’” Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir.
2015)). It asks whether the focus of the claim is on a specific improvement
in relevant technology or on a process that itself qualifies as an “abstract
idea” for which computers are invoked merely as a tool. See id. at 1335–36.
Here, it is clear from the Specification, and the claim language, that the
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focus of claim 21 is on an abstract idea, and not on any improvement to
technology and/or a technical field.
The Specification provides for “PREVENTING SCHEDULING
CONFLICTS WHEN PROPOSING NEW TIMES FOR CALENDAR
EVENTS.” Spec. Title. The “BACKGROUND” section provides that the
“invention relates to the field of calendaring applications and, more
particularly, to preventing scheduling conflicts when proposing new times
for calendar events.” Id. ¶ 1. The Specification further discusses that prior
art calendar applications provide an ability for users receiving meeting
invitations to propose a new meeting time, for these users (“reschedulers”)
to check calendars of other participants to ensure no conflicts, and for the
rescheduler to send a proposal that when accepted by the meeting chair,
cause an update to be sent to all participants. Id. ¶ 2. However, “[b]etween
the period that the rescheduler sends out the proposal and the time the
meeting chair accepts the proposal, calendar entries of other ones of the
meeting attendees may have changed,” such that a conflict may exist for one
or more attendees. Id. ¶ 3. Thus, the invention aims to “avoid[] conflicts in
a calendaring system when proposing new meeting times.” Id. ¶ 4.
Consistent with the disclosure, claim 21 recites “[a] method
performed within a computer-implemented calendaring application,
comprising” the steps of: (1) storing information, i.e., limitation (a) of
storing an event data structure with data entries of owner, location, and time;
(2) forwarding data, i.e., limitations (b), (d), and (e) of forwarding a first
request, a first notification configured to instruct an application to generate a
data structure, and a second notification configured to instruct the
application to delete and modify the data structure; and (3) receiving data,
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i.e., limitation (c) of receiving a reply. See Appeal Br. 22–23 (Claims. App).
The application comprises calendaring application 222 that can include a
user interface and that executes on a client device (Spec. ¶ 22) that “can be
any computing device able to present a user interface” (id. ¶ 26).
When considered collectively and under the broadest reasonable
interpretation, claim 21 recites a method for preventing scheduling conflicts
and scheduling events.3 This is an abstract idea of a “[c]ertain method[] of
organizing human activity . . . managing personal behavior or relationships
or interactions between people (including social activities, teaching, and
following rules or instructions).” 2019 Revised Guidance, 84 Fed. Reg.
at 52. This is consistent with the Examiner’s characterization.
The courts have held similar concepts to be abstract. For example, the
Federal Circuit has held abstract the concepts of “personal management,
resource planning, or forecasting” in In re Downing, 754 F. App’x 988, 993
(Fed. Cir. 2018), “keeping track of deadlines for clients and carrying out
two-way communications with clients relevant to meeting those deadlines”
in WhitServe LLC v. Donuts Inc., Appeal No. 2019-2240, 2020 WL
1815758, at *3 (Fed. Cir. Apr. 10, 2020), tailoring content based on user
information in Intellectual Ventures I LLC v. Capital One Bank (USA), 792
F.3d 1363, 1369 (Fed. Cir. 2015), dynamically selecting and sorting
information by user interest or subject matter in Evolutionary Intelligence
LLC v. Sprint Nextel Corp., 677 F. App’x 679, 680 (Fed. Cir.), cert. denied,

3 We note that “[a]n abstract idea can generally be described at different
levels of abstraction.” Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240
(Fed. Cir. 2016). The Board’s “slight revision of its abstract idea analysis
does not impact the patentability analysis.” Id. at 1241.
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138 S. Ct. 521 (2017), and “scheduling business activities using a computer
and computer network” in P & RO Sols. Grp., Inc. v. CiM Maint., Inc., 273
F. Supp. 3d 699, 708 (E.D. Tex. 2017) (quotation marks omitted). As such,
we disagree with the Appellant’s contentions that the Examiner
overgeneralizes the claimed invention (see Appeal Br. 9), and that the claims
are not similar to judicial decisions (see id. at Appeal Br. 13–18; Reply
Br. 7–10).
Having concluded that claim 21 recites a judicial exception, i.e., an
abstract idea, in determining whether the claim is directed to this abstract
idea, we next consider whether the claim recites additional elements that
integrate the judicial exception into a practical application.
Integration into a Practical Application
Under Step 2A, Prong 2 of the 2019 Revised Guidance (84 Fed. Reg.
at 54), we look to whether 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,” i.e., “integrates the . . . judicial
exception into a practical application.” Here, the only additional elements
recited in claim 21 beyond the abstract idea are “a computer-implemented
calendaring application,” “a hardware data storage device,” a “data
structure,” and “a computer network,” — elements that, as the Examiner
observes (Final Act. 12; Ans. 7–8), are generic computer components, as
described in the Specification. See Spec. ¶¶ 22, 26–32 (describing generic
computing components).
We find no indication in the Specification, nor does the Appellant
direct us to any indication, that the operations recited in claim 21 require any
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specialized computer hardware or other inventive computer components,
i.e., a particular machine, invoke any asserted inventive programming, or
that the claimed invention is implemented using other than generic computer
components to perform generic computer functions. See DDR Holdings,
LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[A]fter
Alice, there can remain no doubt: recitation of generic computer limitations
does not make an otherwise ineligible claim patent-eligible.”).
The Appellant does not contend that they invented any of those
components or their basic functions or that those components, claimed
generally, were unknown in the art as of time of the invention. Affinity Labs
of Tex., LLC v. Amazon.com Inc., 838 F.3d 1266, 1270 (Fed. Cir. 2016); see
also Intellectual Ventures, 792 F.3d at 1370. There is no technological
improvement to the computer components used or to the electronic calendar
applications. Computers “have become the substrate of our daily lives—the
‘basic tool[ ],’ Gottschalk v. Benson, 409 U.S. 63, 67 . . . (1972), of a great
many of our social and economic interactions—generic computer functions,
such as storing, analyzing, organizing, and communicating information,
carry no weight in the eligibility analysis. See Alice, 134 S.Ct. at 2357.” In
re Marco Guldenaar Holding B.V., 911 F.3d 1157, 1165 (Fed. Cir. 2018)
(Mayer concurring).
The claim recites the results of the functions without providing details
on how, i.e., by what algorithm or on what basis/method, the steps are
performed. Although the claim recites that the first notification “is
configured to instruct calendaring applications . . . to generate a calendar
entry data structure” and that the second notification “is configured to
instruct the calendaring applications . . . to: (i) delete a previously-created
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calendar entry data structure . . . and (ii) modify the calendar entry data
structure” (Appeal Br. 22–23), these functions are not positively recited as
steps nor are there details on how such a configuration would be performed.
The Specification discusses that “the conveyance of the proposed new time
106 by the rescheduler 130 automatically places the proposal on the
calendars of all meeting attendees” (Spec. ¶ 16), and that when the chair
accepts the change to the meeting, the acceptance process can be performed
during which “an original meeting entry can be deleted 184 from all meeting
attendee calendars” and “the proposal or tentative indication can be
removed, which converts a tentative entry (e.g., entry 150) into a standard
meeting entry” (id. ¶ 18). However, no further details on how the
notifications are configured to instruct the applications to make the changes,
nor how the changes are made, technologically or technically.
The Appellant argues that the claim addresses “a problem associated
with prior art technologies” through “the use of this technology and the
operations described” of “includ[ing] instructions for the calendaring
applications . . . to perform certain operations,” similar to McRO, Inc. v.
Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016). Appeal
Br. 10–11; see also Reply Br. 2–6. We disagree.
As discussed above, the Specification discusses that the problem with
prior art technologies was that between the proposal of a new time and
acceptance of that proposal by the meeting chair, other attendees may have
new conflicts and no longer be available for that time. See Spec. ¶ 3. The
problem of avoiding scheduling conflicts is one that existed prior to the
Internet. Further, the purported solution is not rooted in computer
technology, but requires the use of a generic storage device, computer
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network, and software (i.e., a calendar application) operating in their
ordinary capacities. See supra; see also Alice, 573 U.S. at 224–26. There is
no indication that the storing, forwarding, and receiving are performed in a
different, unconventional manner, or by a special type of unconventional
device. The “focus” of the claim is not “on the specific asserted
improvement in computer capabilities” (Enfish, 822 F.3d at 1336), but rather
on using the computer components as tools to implement the abstract idea in
the particular field of electronic calendars. That the invention is related to
electronic scheduling and conferencing, i.e., in the area of technology, does
not make the claim not abstract. See Ultramercial, Inc. v. Hulu, LLC, 772
F.3d 709, 716 (Fed. Cir. 2014) (limiting the use of the abstract idea “to a
particular technological environment” does not make the abstract idea
patent-eligible) (citation omitted).
Regarding McRO, the claims there were directed to a specific
improvement in computer animation and used rules to automate a subjective
task of humans to create a sequence of synchronized, animated characters.
See McRO, 837 F.3d at 1314–15. Unlike Flook, Bilski, and Alice, it was not
the use of the computer, but the incorporation of the rules that improved an
existing technological process. Id. at 1314. Here, there is no such
improvement to technology or a technological process. The Appellant does
not assert an improvement in the technical or technological aspects of
storing, receiving, and forwarding data, which are all claimed without any
specific details on how they are performed. Rather, any alleged
improvement in instructing the calendar applications to perform certain
operations lies in the process itself, i.e., in the abstract idea itself, not to any
technological improvement. See BSG Tech LLC v. Buyseasons, Inc., 899
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F.3d 1281, 1287–88 (Fed. Cir. 2018). The Appellant also does not direct our
attention to anything in the Specification to indicate that the invention
provides a technical improvement in the storing, receiving, or forwarding of
data that incorporates rules to automate a subjective task of humans, similar
to those in McRO. Any improvement to calendaring lies in the abstract idea
itself, not to any technological improvement. The claim’s focus is “not a
physical-realm improvement but an improvement in [a] wholly abstract
idea.” SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir.
2018).
Regarding the Appellant’s argument that the “alleged abstract idea is
not preempted by the claimed invention” (Appeal Br. 12, 21–22; see also
Reply Br. 2 (“like the invention at issue in BASCOM Global Internet
Services v. AT&T Mobility, 827 F.3d 1341 (Fed Cir. 2016), ‘the claims are
“more than a drafting effort designed to monopolize the [abstract idea]’””);
and 6 (“the Examiner has not established that the claims preempt the
Examiner’s alleged abstract idea”)), although the Supreme Court has
described “the concern that drives this exclusionary principle[, i.e., the
exclusion of abstract ideas from patent-eligible subject matter,] as one of
pre-emption” (see Alice, 573 U.S. at 216), characterizing preemption as a
driving concern for patent eligibility is not the same as characterizing
preemption as the sole test for patent eligibility. “The Supreme Court has
made clear that the principle of preemption is the basis for the judicial
exceptions to patentability” and “[f]or this reason, questions on preemption
are inherent in and resolved by the § 101 analysis.” Ariosa Diagnostics, Inc.
v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (citing Alice, 573
U.S. at 216). Although “preemption may signal patent ineligible subject
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matter, the absence of complete preemption does not demonstrate patent
eligibility.” Id.
Accordingly, we conclude claim 21 does not contain an element that
imposes a meaningful limit on the abstract idea that integrates the abstract
idea into a practical application.
Thus, we are not persuaded of error in the Examiner’s determination
that claim 21 is directed to an abstract idea.
Step Two of the Mayo/Alice Framework
Under the second step in the Mayo/Alice framework, and Step 2B of
the 2019 Revised Guidance, we find supported the Examiner’s
determination that claim 21’s limitations, taken individually or as an ordered
combination, do not amount to significantly more than the judicial exception
because
the claim[] do[es] not move beyond a general link of the use of
an abstract idea to a particular technological environment; the
claims merely amount to the application or instructions to apply
the abstract idea on a computer; and the claims amount to nothing
more than requiring a generic computer to perform generic
computer functions that are well-understood, routine and
conventional activities previously known to the data analysis
industry.
Final Act. 12.
The Appellant argues that “the Examiner does not identify, in the
rejection, all of the additional elements” (Appeal Br. 19) and that “the
Examiner’s analysis does not meet the requirements set forth within the
M.P.E.P. in formulating a rejection for lack of subject matter eligibility”
(id.). See also Reply Br. 10. However, the Examiner correctly considers the
claim’s limitations, individually and as an ordered combination, as well as
any additional elements, as factors in determining that the claim does not
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recite limitations that transform the nature of the claim into a patent-eligible
invention. See Final Act. 12; Ans. 7–8. Thus, the Examiner has clearly
articulated the reasons as to why the claim is directed to an abstract idea and
has notified the Appellant of the reasons for the rejection “together with
such information and references as may be useful in judging of the propriety
of continuing the prosecution of [the] application.” 35 U.S.C. § 132. In
doing so, the Examiner has set forth a prima facie case of unpatentability.
See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011); Chester v. Miller, 906
F.2d 1574, 1578 (Fed. Cir. 1990) (Section 132 “is violated when a rejection
is so uninformative that it prevents the applicant from recognizing and
seeking to counter the grounds for rejection”).
To the extent the Appellant argues that the claim is similar to those in
BASCOM (see Reply Br. 2–3), the Appellant does not show how the claim
here is similar to BASCOM’s “particular arrangement of elements [that] is a
technical improvement over prior art ways of filtering such content.”
827 F.3d at 1350; cf. Appeal Br. 16–17. The patent at issue in BASCOM
“claim[ed] a technology-based solution (not an abstract-idea-based solution
implemented with generic technical components in a conventional way) to
filter content on the Internet that overcomes existing problems with other
Internet filtering systems.” Id. at 1351. The court determined that “[b]y
taking a prior art filter solution (one-size-fits-all filter at the ISP server) and
making it more dynamic and efficient (providing individualized filtering at
the ISP server), the claimed invention represents a ‘software-based
invention[ ] that improve[s] the performance of the computer system itself.’”
Id. Here, there is no such improvement to the claimed computing system or
processor itself, or an unconventional arrangement of processors in that
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system that is a technical improvement. As discussed above, here, any
improvement lies in the process of sending information, i.e., the abstract idea
itself.
The question under step two of the Mayo/Alice framework is whether
the claim includes additional elements, i.e., elements other than the abstract
idea itself, that “‘transform the nature of the claim’ into a patent-eligible
application.” Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S. at 78). Here,
the Specification indisputably shows the claimed computing device was
conventional at the time of filing. See supra; Spec. ¶¶ 22, 26–32. The
Appellant provides no argument, reasoning, or evidence to the contrary.
Accordingly, no genuine issue of material fact exists as to the well-
understood, routine, or conventional nature of the system as claimed.
We note that the claim simply recites the functional results to be
achieved by the components. The claim “provides only a result-oriented
solution[] with insufficient detail for how a computer accomplishes it. Our
law demands more.” Intellectual Ventures I LLC v. Capital One Fin. Corp.,
850 F.3d 1332, 1342 (Fed. Cir. 2017). Claim 21’s recitations of a computer-
implemented application storing, forwarding, and receiving data and
instructing modifications of data do not include elements other than the
abstract idea itself to transform it into a patent-eligible invention. See supra;
Spec. ¶¶ 22, 26–32 (describing generic computing elements); Elec. Power
Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354–55 (Fed. Cir. 2016)
(gathering, sending, monitoring, analyzing, selecting, and presenting
information does not transform the abstract process into a patent-eligible
invention); Alice, 573 U.S. at 226 (“Nearly every computer will include a
‘communications controller’ and ‘data storage unit’ capable of performing
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the basic calculation, storage, and transmission functions required by the
method claims.”); SAP Am., 898 F.3d at 1169–70 (storing data, receiving
data, performing a mathematical analysis to generate data, and providing the
generated data did not transform abstract idea into patent-eligible invention);
Smart Sys. Innovations, LLC v. Chicago Transit Authority, 873 F.3d 1364,
1374–75 (Fed. Cir. 2017) (storing, receiving, and updating data was a
patent-ineligible abstract idea); ChargePoint, Inc. v. SemaConnect, Inc., 920
F.3d 759, 769–70 (Fed. Cir. 2019) (communicating information and causing
an action based on the communication did not transform the abstract idea
into a patentable invention).
Thus, we are not persuaded of error in the Examiner’s determination
that the limitations of claim 21 do not transform the claim into significantly
more than the abstract idea.
We therefore sustain the Examiner’s rejection under 35 U.S.C. § 101
of independent claim 21 and of claims 27 and 33, the rejection of which
stands with claim 21.
Claims 22–26, 28–32, 34–37, and 39–41
The Appellant argues dependent claims 22–26, 28–32, 34–37, and
39–41 as a group, with claim 25 representative. Appeal Br. 6, 19. We select
claim 25 as representative of the group, with claims 22–24, 26, 28–32,
34–37, and 39–41 standing or falling therewith. See 37 C.F.R.
§ 41.37(c)(1)(iv) (2017).
Dependent claim 25 provides a further limitation of the application
“configured to forward” a second request to a subset of the recipients. See
Appeal Br. 23 (Claims App.). The Appellant argues that “[t]he Examiner’s
analysis . . . neither explicitly identifies the additional elements found within
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dependent claims nor explains why these additional elements recited in the
dependent claims do not add significantly more to the alleged exception,”
and thus, the Examiner fails to “set forth a prima facie case of patent
ineligible subject matter with regard to the dependent claims.” Appeal
Br. 19–20.
However, the Examiner considers claim 25 (and the other dependent
claims) in conjunction with claim 21 in the analysis that the additional
elements of the “computer, display, hardware storage device, computer
network” do not transform the abstract idea into a patent-eligible invention.
Final Act. 12. Claim 25 does not contain an additional element beyond the
application that performs a step of forwarding data, recited functionally
without any details on how the application would be so configured. And, the
Appellant provides no separate argument as to why the limitation of
claim 25 would transform the claim into a patent-eligible invention, i.e., how
claim 25 recites an additional element that would amount to significantly
more than the abstract idea. See Appeal Br. 19.
The Appellant presents an additional argument in response to the
Examiner’s “additional analysis” of “the additional limitations of
transmitting/receiving data from a particular source, and applying data
correlation rules to display the data on a calendar application in a specific
way” being routine, conventional activity. Reply Br. 12–13. The Appellant
provides no citation for this statement, and we are unable to find this
“additional analysis” in the Answer, but do find it in the Final Action at
page 12. We also note that the USPTO Memorandum on Changes in
Examination Procedure Pertaining to Subject Matter Eligibility, Recent
Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.) was
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promulgated to the Patent Examining Corps on April 19, 2018, prior to the
Appellant’s filing of the Appeal Brief on May 11, 2018. Thus, the
Appellant’s argument that “[t]he Examiner, however, has not set forth any
facts to establish that the limitations in the dependent claims are ‘well-
understood, routine, and conventional’” (Reply Br. 13 (citing MPEP
§ 2106.05(d)(I)) is not timely because it “was not raised in the appeal brief,
[and]. . . is not responsive to an argument raised in the examiner’s answer.”
37 C.F.R. § 41.41(b)(2) (2017). Further, the Appellant does not provide
good cause why it was not raised in the Appeal Brief. Id. Thus, this
argument will not be considered by the Board for purposes of this appeal.
Id.
Therefore, we are not persuaded that the Examiner erred in rejecting
dependent claim 25 under 35 U.S.C. § 101, and thus, we sustain the rejection
of the claim.
CONCLUSION
The Examiner’s decision to reject claims 21–37 and 39–41 under
35 U.S.C. § 101 is affirmed.

In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
21–37, 39–41 101 Eligibility 21–37, 39–41

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TIME PERIOD FOR 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). See 37 C.F.R.
§ 1.136(a)(l)(iv).

AFFIRMED