AT&T INTELLECTUAL PROPERTY I, LP

Patent Trials and Appeals Board

Sep 11, 2020

2020000997 (P.T.A.B. Sep. 11, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/070,889 03/15/2016 David Feng-Lin Chen IP2071 Con_7785-1274-01 2338
92384 7590 09/11/2020
AT&T Legal Department - G&G
Attention: Patent Docketing
Room 2A-212
One AT&T Way
Bedminster, NJ 07921
EXAMINER
NIQUETTE, ROBERT R
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
09/11/2020 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@ggip.com
eOfficeActionDocs@att.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DAVID FENG-LIN CHEN, ANTHONY A. HAEUSER,
MARY MCCARTHY, SCOTT ALAN PETTIT, and
CHRISTOPHER A. LEE

_____________

Appeal 2020-000997
Application 15/070,889
Technology Center 3600
____________

Before ST. JOHN COURTENAY III, JUSTIN BUSCH, and
JAMES W. DEJMEK, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a Final rejection of
claims 21–40. Claims 1–20 are canceled. We have jurisdiction over the
pending claims under 35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a) (2018). According to Appellant, the real party in interest
is AT&T Intellectual Property I, L.P. See Appeal Br. 2.

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STATEMENT OF THE CASE2
Introduction
Appellant’s claimed invention relates generally to “the provision [of]
content over a television network.” Spec. ¶ 2.
Rejection3
Claims
Rejected
35 U.S.C. § Reference(s)/Basis
21–40 101 Eligibility

USPTO § 101 Guidance
The U.S. Patent and Trademark Office (USPTO) has published
revised guidance on the application of 35 U.S.C. § 101. See USPTO
January 7, 2019 Memorandum, 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50 (“January 2019 Memorandum”).4

2 We herein refer to the Final Office Action, mailed October 31, 2018
(“Final Act.”); Appeal Brief, filed July 19, 2019 (“Appeal Br.”); the
Examiner’s Answer, mailed September 6, 2019 (“Ans.”); and the Reply
Brief, filed November 25, 2019. Throughout this opinion, we refer to the
Manual of Patent Examining Procedure (MPEP), Ninth Edition, Revision
10.2019, last revised June 2020.

3 As noted by Appellant: “The nonstatutory double patenting rejection of
Claims 21–40 as being unpatentable over Claims 1–20 of U.S. Patent No.
9,294,729 is moot in view of a previously submitted and approved
electronic terminal disclaimer (eTD).” Appeal Br. 8. We note the terminal
disclaimer was filed on March 15, 2019, and was approved on the same day.
Therefore, this rejection is not before us on appeal.

4 The Office issued a further memorandum on October 17, 2019 (the
“October 2019 Memorandum”) clarifying guidance of the January 2019
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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
of organizing human activity such as a fundamental
economic practice, or mental processes) (see January 2019
Memorandum Step 2A – Prong One; MPEP
§ 2106.04(a)(2)[R-10.2019]); and

(2) any additional elements that integrate the judicial exception
into a practical application (see MPEP §§
2106.04(d); 2106.05(a)–(c), (e)–(h) [R-10.2019]) (see
January 2019 Memorandum Step 2A – Prong Two).5
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, or combination of limitations,
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.

Memorandum in response to received public comments. See https://
www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.pdf.
Moreover, “[a]ll USPTO personnel are, as a matter of internal agency
management, expected to follow the guidance.” January 2019 Memorandum
at 51; see also October 2019 Memorandum at 1.

5 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See 2019 October Memorandum, Section III(A)(2),
page 10, et seq.
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See January 2019 Memorandum Step 2B.
Because there is no single definition of an “abstract idea” under Alice
Corp. v. CLS Bank International, 573 U.S. 208 (2014) Step 1, the January
2019 Memorandum synthesizes, for purposes of clarity, predictability, and
consistency, key concepts identified by the courts as abstract ideas to explain
that the “abstract idea” exception includes the following three groupings:
1. Mathematical concepts—mathematical relationships,
mathematical formulas or equations, mathematical
calculations;
2. Mental processes—concepts performed in the human mind
(including an observation, evaluation, judgment, opinion);
and
3. Certain methods of organizing human activity—fundamental
economic principles or practices (including hedging,
insurance, mitigating risk); commercial or legal interactions
(including agreements in the form of contracts; legal
obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior
or relationships or interactions between people (including
social activities, teaching, and following rules or
instructions).
See January 2019 Memorandum, 84 Fed. Reg. at 52.
According to the January 2019 Memorandum, “[c]laims that do not
recite [subject] matter that falls within these enumerated groupings of
abstract ideas should not be treated as reciting abstract ideas,” except in rare
circumstances. Even if the claims recite any one of these three groupings of
abstract ideas, these claims are still not “directed to” a judicial exception
(abstract idea), and thus are patent eligible, if “the claim as a whole
integrates the recited judicial exception into a practical application of that
exception.” See January 2019 Memorandum, 84 Fed. Reg. at 53.
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For example, limitations that are indicative of integration into a
practical application include:
1. Improvements to the functioning of a computer, or to any
other technology or technical field — see MPEP
§ 2106.05(a);
2. Applying the judicial exception with, or by use of, a
particular machine — see MPEP § 2106.05(b);
3. Effecting a transformation or reduction of a particular article
to a different state or thing — see MPEP § 2106.05(c); and
4. Applying or using the judicial exception in some other
meaningful way beyond generally linking the use of the
judicial exception to a particular technological environment,
such that the claim as a whole is more than a drafting effort
designed to monopolize the exception — see MPEP
§ 2106.05(e).

In contrast, limitations that are not indicative of integration into a
practical application include:
1. Adding the words “apply it” (or an equivalent) with the
judicial exception, or merely including instructions to
implement an abstract idea on a computer, or merely uses a
computer as a tool to perform an abstract idea — see MPEP
§ 2106.05(f);
2. Adding insignificant extra-solution activity to the judicial
exception — see MPEP § 2106.05(g); and
3. Generally linking the use of the judicial exception to a
particular technological environment or field of use — see
MPEP § 2106.05(h).
See 2019 January Memorandum, 84 Fed. Reg. at 54–55 (“Prong Two”).

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ANALYSIS
January 2019 Memorandum, Step 2A, Prong One
The Judicial Exception
We reproduce infra independent claim 21 in Table One. We have
considered all of Appellant’s arguments and any evidence presented. We
highlight and address specific findings and arguments for emphasis in our
analysis below.6
The Examiner concludes that independent claim 21 recites an abstract
idea, i.e., a method of organizing human activity:
[I]t is a method of organizing human activity because the claims
are similar in concept to the claims in Intellectual Ventures I LLC
v. Capitol One Bank (USA), Case No. 2014-1506 (Fed. Cir. July
6, 2015). The claims in Intellectual Ventures deal with the
administration of financial accounts and providing user display
access of web pages. The[] claims in Intellectual Ventures are
also directed toward tailoring content based on information about
the user. Since Intellectual Ventures was found to be abstract, the
claims in the instant case are abstract.
Final Act. 5.7
In the Answer, the Examiner clarifies the abstract idea: i.e., “as a
certain method of organizing human activity, specifically, a commercial
interaction.” Ans. 10.

6 Throughout this opinion, we give the claim limitations the broadest
reasonable interpretation (BRI) consistent with the Specification. See In re
Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).

7 The Examiner is citing Intellectual Ventures I LLC v. Capital One Bank
(USA), 792 F.3d 1363 (Fed. Cir. 2015).

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Under the January 2019 Memorandum, we begin our analysis by first
considering whether the claims recite any judicial exceptions, including
certain groupings of abstract ideas, in particular: (a) mathematical concepts,
(b) mental processes, and (c) certain methods of organizing human activities.

Independent Claim 21
In Table One below, we identify in italics the specific claim
limitations that we conclude recite an abstract idea. We also identify in bold
the additional claim elements that we find are generic computer components:

TABLE ONE

Independent Claim 21 January 2019 Memorandum
[a] A system comprising: 8

[b] a server having access to
a remote desktop application;
and
A server is a generic computer
component, as shown in bold. See
January 2019 Memorandum, 84 Fed.
Reg. at 52 n.14.

[c] a memory that stores
executable instructions that,
when executed by the server,
facilitate performance of
operations, comprising:
A memory and the server are
generic computer components, as
shown in bold. See January 2019
Memorandum, 84 Fed. Reg. at 52
n.14.

8 A system (i.e., apparatus) falls under the statutory subject matter class of a
machine. See 35 U.S.C. § 101 (“Whoever invents or discovers any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof, may obtain a patent therefor, subject to the
conditions and requirements of this title.”).

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Independent Claim 21 January 2019 Memorandum
[d] launching the remote
desktop application in
response to detecting a user
request to access web content
provided by a service partner,
wherein said launching
includes creating a reverse-
proxy that simulates the user
in accordance with a security
message;
Launching the remote desktop
application in response to detecting a
user request to access web content
provided by a service partner is
insignificant extra-solution activity.
See January 2019 Memorandum, 84
Fed. Reg. at 55 n.31; see also MPEP
§ 2106.05(g).
[e] wherein the remote
desktop application accesses
first and second user account
information, wherein the first
user account information is
associated with a media
services account for
providing a media service to
a user over a network, and
wherein the second user
account information is
associated with a service
partner account for providing
a web content service to the
user by the service partner,
and

Abstract Idea — associating the first
user account information with a
media services account could be
performed alternatively by a person
as a mental process.

Abstract Idea — associating the
second user account information
with a service partner account could
also be performed alternatively by a
person as a mental process. See
January 2019 Memorandum, 84 Fed.
Reg. at 52.

These steps of associating could be
carried out by a human with pen and
paper. See CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d
1366, 1375 (Fed. Cir. 2011) (“That
purely mental processes can be
unpatentable, even when performed
by a computer, was precisely the
holding of the Supreme Court in
Gottschalk v. Benson.”).
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Independent Claim 21 January 2019 Memorandum
A network is a generic computer
component, as shown in bold. See
January 2019 Memorandum, 84 Fed.
Reg. at 52 n.14.
Providing a web content service to
the user by the service partner is
insignificant extra-solution activity
(data transmission). See January
2019 Memorandum, 84 Fed. Reg. at
55 n.31; MPEP § 2106.05(g); see
also buySAFE, Inc. v. Google, Inc.,
765 F.3d 1350, 1355 (Fed. Cir.
2014) (computer receives and sends
information over a network).

[f] wherein the remote
desktop application
associates the service partner
account with the media
services account to invoke
the web content service over
the network, wherein the
user request does not provide
the second user account
information.
Abstract Idea — Associating the
service partner account with the
media services account could be
performed alternatively by a person
as a mental process. See January
2019 Memorandum, 84 Fed. Reg. at
52.

Invoking the web content service
over the network is insignificant
extra-solution activity (data
gathering). See January 2019
Memorandum, 84 Fed. Reg. at 55
n.31; see also MPEP § 2106.05(g).

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Abstract Idea
Appellant notes that the Final Action (mailed October 31, 2018)
predates the January 2019 Memorandum. See Appeal Br. 5. Appellant thus
concludes that “the subject matter eligibility determination set forth in the
Office Action was made under guidance that is now obsolete.” Id.
However, as identified above in Table One, we conclude system
functions (e) and (f) each involve associating one type of account with
another type of account, which can be performed alternatively by a person as
a mental process. See January 2019 Memorandum, 84 Fed. Reg. at 52. See
also October 2019 Memorandum, section C: “Mental Processes” page 7.
Although we describe the abstract idea slightly differently than the
Examiner (Final Act. 5; Ans. 10), the Examiner’s characterization of the
idea is not erroneous. “An 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 level of abstraction an Examiner uses to
describe an abstract idea need not “impact the patentability analysis.” Apple,
842 F.3d at 1241.
Regardless of the level of generality used to describe the abstract idea,
we conclude independent claim 21 recites an abstract idea. Cf. Accenture
Glob. Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1344–45
(Fed. Cir. 2013) (“Although not as broad as the district court’s abstract idea
of organizing data, it is nonetheless an abstract concept.”).
Although independent claim 21 requires the recited functions to be
performed by a system including a server, memory and network, we find this
generic computer implementation of a mental process is insufficient to take
the invention out of the realm of abstract ideas. See also independent claims
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30 and 39 which similarly recite “a processor” and “a network.”
“That purely mental processes can be unpatentable, even when
performed by a computer, was precisely the holding of the Supreme Court in
Gottschalk v. Benson.” See also CyberSource, 654 F.3d at 1375. If a
method can be performed by human thought alone, or by a human using pen
and paper, it is merely an abstract idea and is not patent eligible under § 101.
See CyberSource, 654 F.3d at 1372–73; see also Versata Dev. Grp. v. SAP
Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) (“Courts have examined
claims that required the use of a computer and still found that the
underlying, patent-ineligible invention could be performed via pen and paper
or in a person’s mind.”); Alice, 573 U.S. at 223 (“Stating an abstract idea
while adding the words ‘apply it with a computer’” is insufficient to confer
eligibility.).
Moreover, “[u]sing a computer to accelerate an ineligible mental
process does not make that process patent-eligible.” Bancorp Servs., L.L.C.
v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1279 (Fed. Cir.
2012); see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363
(Fed. Cir. 2015) (“[R]elying on a computer to perform routine tasks more
quickly or more accurately is insufficient to render a claim patent eligible.”).
Because claim 21 considered as a whole recites an abstract idea, as
identified in Table One, supra, and because remaining independent claims
30 and 39 recite similar language of commensurate scope, we conclude all
claims 21–40 recite an abstract idea, as identified above, under Step 2A,
Prong One. Therefore, we proceed to Step 2A, Prong Two.

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January 2019 Memorandum, Step 2A, Prong Two
Integration of the Judicial Exception into a Practical Application
Pursuant to the January 2019 Memorandum, we consider whether
there are additional elements set forth in the claims that integrate the judicial
exception into a practical application. See January 2019 Memorandum, 84
Fed. Reg. at 54–55.

Additional Limitations
As emphasized in bold in Table One, supra, we note the additional
generic computer components recited in claim 21, i.e., the “server”
“memory” and “network.” (Emphasis added). We further note the
supporting exemplary, non-limiting descriptions of generic computer
components found in the Specification, for example at paragraph 22:
Still referring to FIG. 1, the backbone network 110 includes an
auto-account association system 180 that includes one or more
servers 182, a database 184 that stores customer information and
a set of computer programs 186 which contains instructions that
are executed by the server 182 to perform the methods and
functions described herein.
Spec. ¶ 22.
We emphasize that McRO, Inc. v. Bandai Namco Games America
Inc., 837 F.3d 1299 (Fed. Cir. 2016), guides: “The abstract idea exception
prevents patenting a result where ‘it matters not by what process or
machinery the result is accomplished.’” 837 F.3d at 1312 (quoting O’Reilly
v. Morse, 56 U.S. 62, 113 (1854)) (emphasis added). See supra, Table One.
Thus, we conclude Appellant’s claimed invention merely implements
the abstract idea (i.e., the mental processes of associating various account
types — claim 21) using instructions executed on generic computer
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components, as depicted in Table One (above), and as supported in
Appellant’s Specification, for example, at paragraph 22. Therefore, we
conclude Appellant’s claims merely use a generic programmed computer as
a tool to perform an abstract idea. See MPEP § 2106.05(f).
As mapped in the right column of Table One, supra, we conclude that
independent claim 21 also recites several additional limitations that are
extra-solution activities the courts have determined to be insufficient to
transform judicially excepted subject matter into a patent-eligible
application. See MPEP § 2106.05(g); January 2019 Memorandum, 84 Fed.
Reg. at 55 n.31.
For example, see Claim 21, Table One, supra, function (f): we
conclude that invoking the web content service over the network is
insignificant extra-solution activity (data gathering). See January 2019
Memorandum, 84 Fed. Reg. at 55 n.31; see also MPEP § 2106.05(g);
buySAFE, 765 F.3d at 1355 (“That a computer receives and sends the
information over a network—with no further specification—is not even
arguably inventive.”).
These extra or post-solution limitations use a generic computer
component that performs a generic computer function as a tool to perform an
abstract idea. Thus, these limitations do not integrate the abstract idea into a
practical application. See Alice, 573 U.S. at 223–24. Instead, these
limitations merely perform insignificant extra-solution activities. Cf. Apple,
Inc. v. Ameranth, Inc., 842 F.3d 1229, 1242 (Fed. Cir. 2016) (agreeing with
the Board that printing and downloading generated menus are insignificant
post-solution activities); see also Two-Way Media Ltd. v. Comcast Cable
Commc’ns, LLC, 874 F.3d 1329, 1341 (Fed. Cir. 2017) (streaming
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audio/visual data over a communications system like the Internet held patent
ineligible).
We consider next the question of whether there are any claimed
improvements to the functioning of a computer or to any other technology or
technical field, applying the January 2019 Memorandum and the guidance
set forth under MPEP § 2106.05(a).
The Examiner finds:
Viewed as a whole, the claims do not, for example, purport to
improve the functioning of the computer itself. Nor do they
effect an improvement in any other technology or technical field.
They do not describe any particular improvement in the manner
a computer functions. Instead, the claims at issue amount to
nothing significantly more than an instruction to apply the
abstract idea. Under precedent, that is not enough to transform
an abstract idea into a patent-eligible invention. See Alice, 573
U.S. at 225–26.
Ans. 7 (emphasis added).
Appellant does not agree with the Examiner. Appellant urges that the
“Examiner’s declaration that a better customer experience is not a
technological improvement is both irrelevant and insufficient. Irrelevant
because the claim does not recite a better customer experience and
insufficient because technical improvement is only one consideration that is
indicative of a practical application integrated into an abstract idea.” Appeal
Br. 6 (emphasis added).
However, even if “customer experience” is irrelevant, we find
Appellant does not advance any substantive, persuasive arguments regarding
any specific claimed improvements. To the extent that the claimed
“association” functions recited in claim 21 are actually performed by an
“auto-account association system 180 that includes one or more servers
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182” and “a database 184” (Spec. ¶ 22, Fig. 1 (emphasis added)), the “‘mere
automation of manual processes using generic computers’ . . . ‘does not
constitute a patentable improvement in computer technology.’” Trading
Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1378, 1384 (Fed. Cir. 2019) (quoting
Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1055 (Fed. Cir.
2017)).
Simply adding generic hardware and computer components to
perform abstract ideas does not integrate those ideas into a practical
application, because the “mere recitation of a generic computer cannot
transform a patent-ineligible abstract idea into a patent-eligible invention.”
Alice, 573 U.S. at 223; see January 2019 Memorandum, 84 Fed. Reg. at 55,
n.30; id. at 55 (“merely includ[ing] instructions to implement an abstract
idea on a computer” is an example of when an abstract idea has not been
integrated into a practical application).
To the extent Appellant arguendo claims an improved approach to
associating various types of accounts (claim 21), an improved abstract idea
is still an abstract idea. See Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 90 (2012) (holding that a novel and nonobvious claim
directed to a purely abstract idea is, nonetheless, patent ineligible); see also
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir.
2016) (“[A] claim for a new abstract idea is still an abstract idea.”).
As set forth under MPEP § 2106.05(a):
To show that the involvement of a computer assists in improving
the technology, the claims must recite the details regarding how
a computer aids the method, the extent to which the computer
aids the method, or the significance of a computer to the
performance of the method . . . . Merely adding generic computer
components to perform the method is not sufficient. Thus, the
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claim must include more than mere instructions to perform the
method on a generic component or machinery to qualify as an
improvement to an existing technology.
(Emphasis added).
Here, we find Appellant has not persuasively shown how the claims
“recite the details regarding how a computer aids the method, the extent to
which the computer aids the method, or the significance of a computer to the
performance of the method.” Id. (Emphasis added).
Therefore, we agree with the Examiner that independent claims 21,
30, and 39 “do not recite an improvement to the functioning of the computer
itself or to any other technology or technical field.” Ans. 9; see MPEP
§ 2106.05(a).
The Examiner additionally finds “the claims do not recite . . . a
particular machine, a particular transformation, or other meaningful
limitations.” Ans. 9.
We note Appellant advances no arguments that any method (process)
claims on appeal are tied to a particular machine, or transform an article to a
different state or thing. See MPEP § 2106.05(b), 2106.05(c).
However, Appellant contends: “[c]laim 21 integrates its recited
elements into a practical application that imposes meaningful limits
preventing the claim from monopolizing any abstract element or any
combination of abstract elements recited.” Appeal Br. 6–7. In support,
Appellant refers to the created “reverse-proxy” limitation that “simulates the
user,” as recited in claim 21. Appeal Br. 6.
But the Supreme Court guides: “[T]he prohibition against patenting
abstract ideas ‘cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment’ or [by] adding
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‘insignificant postsolution activity.’” Bilski v. Kappos, 561 U.S. 593, 610–
12 (2010) (quoting Diamond v. Diehr, 450 U.S. 175, 191–92 (1981)); see
MPEP § 2106.05(h).
Our reviewing court provides further guidance: “While preemption
may signal patent ineligible subject matter, the absence of complete
preemption does not demonstrate patent eligibility.” Ariosa Diagnostics,
Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015); see also OIP
Technologies, Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362–63 (Fed. Cir.
2015) (“that the claims do not preempt all price optimization or may be
limited to price optimization in the e-commerce setting do not make them
any less abstract”).
This reasoning is applicable here. Therefore, we find Appellant
advances no substantive, persuasive arguments that the claims on appeal
recite specific “meaningful” claim limitations, such as those of the types
addressed under MPEP § 2106.05(e), that impose meaningful limits on the
judicial exception.9
Nor do claims 21–40 present any other issues, as set forth in the
January and October 2019 Memoranda, regarding a determination of
whether the additional generic computer elements integrate the judicial
exception into a practical application. See January 2019 Memorandum, 84
Fed. Reg. at 55.

9 See January 2019 Memorandum, 84 Fed. Reg. at 55, citing MPEP
§ 2106.05(e): “[A]ppl[ying] or us[ing] the judicial exception in some other
meaningful way beyond generally linking the use of the judicial exception to
a particular technological environment, such that the claim as a whole is
more than a drafting effort designed to monopolize the exception.”
(Emphasis added).
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Thus, under Step 2A, Prong Two (see MPEP § 2106.05(a)–(c) and
(e)–(h)), we conclude claims 21–40 do not integrate the judicial exception
into a practical application.

The Inventive Concept – Step 2B
Under the January 2019 Memorandum, 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 adds a specific limitation
beyond the judicial exception that is not “well-understood, routine,
conventional” in the field (see MPEP § 2106.05(d)); or, simply appends
well-understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception.

Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018)
Berkheimer was decided by the Federal Circuit on February 8, 2018.
On April 19, 2018, the PTO issued the Memorandum titled: “Changes in
Examination Procedure Pertaining to Subject Matter Eligibility, Recent
Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.),” (hereinafter
“Berkheimer Memorandum”).10 The Berkheimer Memorandum provided
specific requirements for an Examiner to support with evidence any finding
that claim elements (or a combination of elements) are well-understood,
routine, or conventional.

10 Available at https://www.uspto.gov/sites/default/files/documents/memo-
berkheimer-20180419.PDF.
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Here, under Step 2B, the Examiner finds:
Taking the claim elements separately, the function performed by
the computer at each step of the process is purely conventional.
All of these computer functions are generic, routine,
conventional computer activities that are performed only for their
conventional uses. See Elec. Power Grp. v. Alstom S.A., 830 F.3d
1350, 1353 (Fed. Cir. 2016). Also see In re Katz Interactive Call
Processing Patent Litigation, 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 are used in some
unconventional manner nor do any produce some unexpected
result. In short, each step does no more than require a generic
computer to perform generic computer functions.
Ans. 8.
We find Appellant has not substantively traversed this Berkheimer
(type two) case law evidence in the Reply Brief.11 Arguments not made are
waived. See 37 C.F.R. § 41.37(c)(1)(iv).
Therefore, in light of the foregoing, and under the Director’s policy
guidance, as set forth in the January and October 2019 Memoranda, we
conclude that each of Appellant’s claims 21–40, considered as a whole, is
directed to a patent-ineligible abstract idea that is not integrated into a
practical application, and does not include an inventive concept.
Accordingly, we sustain the Examiner’s rejection under 35 U.S.C. § 101 of
representative claim 21, and the rejection of grouped claims 22–40 (not

11 “2. A citation to one or more of the court decisions discussed in MPEP
§ 2106.05(d)(II) as noting the well-understood, routine, conventional nature
of the additional element(s).” Berkheimer Memorandum 4.
Appeal 2020-000997
Application 15/070,889

20
argued separately), which fall with claim 21. See 37 C.F.R.
§ 41.37(c)(1)(iv).

CONCLUSION
Under the Director’s policy guidance, and the Alice /Mayo
framework, as set forth in the January and October 2019 Memoranda, we
conclude that claims 21–40, rejected under 35 U.S.C. § 101, are directed to
patent-ineligible subject matter.

DECISION SUMMARY

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
21–40

101 Eligibility 21–40

FINALITY AND RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See
37 C.F.R. § 41.50(f).
AFFIRMED