Atul Asthana et al.

Patent Trials and Appeals Board

Mar 12, 2020

13596222 - (D) (P.T.A.B. Mar. 12, 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.
13/596,222 08/28/2012 Atul Asthana 10372-US-
DIV2 4214-62237
3472
82313 7590 03/12/2020
Conley Rose - BlackBerry Files
Attn: J. Robert Brown
5601 Granite Parkway, Suite 500
Plano, TX 75024
EXAMINER
HARRELL, ROBERT B
ART UNIT PAPER NUMBER
2442
NOTIFICATION DATE DELIVERY MODE
03/12/2020 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):
ConleyRoseReporting@dfw.conleyrose.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ATUL ASTHANA, GARY P. MOUSSEAU, and
MIHAL LAZARIDIS

Appeal 2018-004140
Application 13/596,222
Technology Center 2400

Before JEAN R. HOMERE, NATHAN A. ENGELS, and
MELISSA A. HAAPALA, Administrative Patent Judges.
HOMERE, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF THE CASE1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–20. Claims App. We have
jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.

1 We refer to the Specification, filed Aug. 28, 2012 (“Spec.”); Final Office
Action, mailed Mar. 17, 2017 (“Final Act.”); Appeal Brief, filed Sept. 15,
2017 (“Appeal Br.”); Examiner’s Answer, mailed Jan. 12, 2018 (“Ans.”),
and Reply Brief, filed Mar. 9, 2018 (“Reply Br.”). This appeal relates to
Appeal 2013-009368 (previously decided on Sept. 24, 2015) (“Dec.”) in
which we affirmed the Examiner’s anticipation rejection of claims 1–20.
Dec. 5.
2 We use the word “Appellant” to refer to “Applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as
BlackBerry Limited. Appeal Br. 3.
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II. CLAIMED SUBJECT MATTER
According to Appellant, the claimed subject matter relates to a
method and system for controlling remote attachment processor (216)
to process attachment (2008) received along with message (200A) by
mobile communication device (214B) in a wireless network
environment. Spec. 23:8–31, 49:17–30. Figure 6, reproduced below,
is useful for understanding the claimed invention:

Figure 6 depicts an illustration of mobile device (214B) remotely controlling
attachment processor (216) to process attachment (2008). Id. 7:11–12.
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Claims 1 and 17 are independent. Claim 1, reproduced below with
disputed limitation emphasized in italics, is illustrative of the claimed
subject matter:
1. A method comprising:
receiving, by a mobile communication device, a message that
included an attachment before being received by the mobile
communication device;
determining a unique identifier of an attachment processor;
transmitting a request comprising the unique identifier to a
directory service for service information related to using the
attachment processor;
receiving a response comprising the service information from
the directory service;
creating, on the mobile communication device and based at
least in part on the service information received from the directory
service, an electronic message that includes a control file; and
transmitting, by the mobile communication device, the
electronic message including the control file from the mobile
communication device to the attachment processor via wireless
communication;
the control file being configured to control the attachment
processor to process the attachment, and
an operation of the attachment processor being at least one of
started, stopped, or changed in accordance with instructions in the
control file.

III. REFERENCES
The Examiner relies upon the following reference 3
Name Number Filed Published
Mousseau  US 6,438,585 B2  Jan. 16, 2001  Aug. 20, 2002 

3 All reference citations are to the first named inventor only.
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IV. REJECTIONS
The Examiner rejects claims 1–20 as follows:
1. Claim(s) 1−20 are rejected under 35 U.S.C. § 102(e) as being anticipated
by Mousseau. Final Act. 2–5.
2. Claims 1–20 are rejected under 35 U.S.C. § 101 as being directed to
patent ineligible subject matter. Ans. 9–11.
V. ANALYSIS
1. Anticipation Rejection
Appellant argues the Examiner erred in finding that Mousseau anticipates
independent claims 1 and 17. Appeal Br. 9–15. In particular, Appellant
argues Mousseau does not describe “transmitting a request comprising a
unique identifier to a directory service for service information related to
using the attachment processor,” as recited in the claims. Appeal Br. 12.
According to Appellant, Mousseau’s disclosure of the mobile device
querying attachment displayers within its local proximity, and receiving
responses including electronic addresses of the displayers does not describe
the disputed limitations because the mobile device does not know the
electronic address of the displayers until after receiving the responses. Id. at
12–13 (citing Mousseau 16:1–14). Further, Appellant argues that even if
Mousseau’s database of attachment displayers were a directory service
including displayer location, compatibility, and security, Mousseau does not
describe querying the database with a unique identifier of attachment
displayers. Id. at 13. These arguments are persuasive.
The Examiner finds that Mousseau discloses a directory service residing
in one or more attachment displayers and/or a database of a host system.
Ans. 6 (citing Mousseau 16:26–42). Mousseau discloses a preferred
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embodiment wherein a mobile device, upon receiving a message with an
attachment, queries attachment displayers within its vicinity to determine
which one can process the attachment, sends to the host the location
electronic address and type of attachment the identified attachment displayer
can handle, and the host forwards the attachment to the attachment displayer
for processing. Mousseau 15:66–16:25. Mousseau also discloses an
alternative embodiment wherein a host system including a database of
attachment displayers from which a mobile device user can select an
attachment displayer based on its type and function. Id. at 16:26–42.
As an initial matter, we note that the Examiner relies upon two
distinct embodiments of Mousseau to make the anticipation rejection.4 We
agree with Appellant that because Mousseau’s preferred embodiment
describes querying the attachment displayers to obtain the unique identifier
of an attachment displayer capable of processing a received attachment, such
querying would not include the unique identifier. We also agree with
Appellant that, because the mobile device merely selects a desired
attachment displayer from the database/directory service in Mousseau’s

4 In an anticipation rejection, “it is not enough that the prior art reference . . .
includes multiple, distinct teachings that [an ordinary] artisan might
somehow combine to achieve the claimed invention.” Net MoneyIN, Inc. v.
VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). Rather, the reference
must “clearly and unequivocally disclose the claimed [invention] or direct
those skilled in the art to the [invention] without any need for picking,
choosing, and combining various disclosures not directly related to each
other by the teachings of the cited reference.” Id. (quoting In re Arkley, 455
F.2d 586, 587 (CCPA 1972)). Thus, while “[s]uch picking and choosing
may be entirely proper in the making of a 103, obviousness rejection . . . it
has no place in the making of a 102, anticipation rejection.” Arkley, 455
F.2d at 587–88.

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alternative embodiment, Mousseau does not describe transmitting a request
including a unique identifier of an attachment displayer to a directory
service. Because Appellant has shown at least one reversible error in the
Examiner’s anticipation rejection of claims 1 and 17, we do not reach
Appellant’s remaining arguments.
Accordingly, we do not sustain the Examiner’s anticipation rejection
of independent claims 1 and 17, each of which includes the argued
limitation. Likewise, we do not sustain the rejections of claims 2–16 and
18–20, which also recite the disputed limitation.
2. Patent Eligibility Rejection
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 U.S. 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) (quoting Assoc. for Molecular Pathology v. Myriad
Genetics, Inc., 569 U.S. 576, 589 (2013)).
In determining whether a claim falls within an excluded category, we
are guided by the 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 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
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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” (Diehr, 450 U.S. at 182 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))).
In Diehr, the claim at issue recited a mathematical formula, but the
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 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 to limit the use of the
formula to a particular technological environment.” Id. (citing Benson and
Flook); 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.”).
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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. “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.
(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.
The Office published revised guidance on the application of § 101.
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50–
57 (Jan. 7, 2019) (“2019 PEG”). Recently, the Office published an update to
that guidance. October 2019 Patent Eligibility Guidance Update, 84 Fed.
Reg. 55,942 (hereinafter “PEG Update”). Under the 2019 PEG and PEG
Update (collectively referred to as “2019 Updated PEG”), 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 MPEP § 2106.05(a)–(c),
(e)–(h)).5

5 All references to the MPEP are to 9th Ed., Rev. 08.2017 (Jan. 2018).
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See 2019 Updated PEG, 52, and 55–56. Only if a claim: (1) recites a
judicial exception; and (2) does not integrate that exception into a practical
application, does the office 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 Updated PEG 56.
We analyze the patent-eligibility rejection with the principles
identified above in mind.
Examiner’s Findings and Conclusions
In the first part of the Alice inquiry, the Examiner determines that
claims 1–20 are directed to the abstract idea of “routing email messages
based on specific criteria rules (controls),” which does not improve
computer technology. Ans. 10.
In the second part of the Alice inquiry, the Examiner determines the
claims do not recite additional elements sufficient to amount to significantly
more than the abstract idea. Id. According to the Examiner, the claimed
subject matter fails to show an inventive concept because it operates on
generic hardware according to conventional functionality to perform the
abstract idea, and thereby does not transform the abstract idea into
something significantly more than the abstract idea. Id. (citing Intellectual
Ventures I LLC v. Symantec Corp., 838 F.3d 1307 (Fed. Cir. 2016)).

Appellant’s Arguments and Contentions
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In the first part of the Alice inquiry, Appellant argues that the
Examiner’s prima facie case of patent ineligibility is in error because the
Examiner has characterized the claim language at a high level of abstraction
to which the Examiner subsequently misapplied the case law. Reply Br. 4–
5. In particular, Appellant argues that unlike Intellectual Ventures, the
claims are not directed to “determining whether file content identifiers
match characteristics of other file content identifiers, and outputting an
indication of the characteristic of the data file based on the determining.” Id.
at 5. According to Appellant, the claimed subject matter is instead directed
to controlling an outside device based on performed processing, and
transcends the mere receiving, determining, and outputting of data as in
Intellectual Ventures. Id. at 5–6. In particular, Appellant asserts the
following:
[T]he present claims require, among other elements, receiving a
message that previously contained an attachment, determining a
unique identifier of an attachment processor, obtaining information
related to using the attachment processor, creating a control file based
on the received service information, and transmitting the control file
to the attachment processor to start, stop, or change an operation of
the attachment processor in processing the attachment previously
attached to the received message. Thus, not only are the present
claims not directed to the concept of routing messages according to
rules, as alleged in the Examiner’s Answer.

Id. at 5.
Further, Appellant argues that the claimed subject matter improves
how message attachments are processed by remotely controlling a device
performing such processing thereby improving the device itself as well as
the larger technological area of message and attachment delivery and
processing. Id. at 6 (citing Enfish LLC v. Micosoft Corp., 822 F.3d 1327
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(Fed. Cir. 2016)). Therefore, Appellant submits that the claimed subject
matter provides a technical solution to a problem arising uniquely from the
realm of computer technology. Id. at 7–8 (citing DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014)).
In the second part of the Alice inquiry, Appellant argues that the
claims, taken as a whole and in an ordered combination amount to
significantly more than the purported abstract idea. Id. at 8–9. According to
Appellant, while the concept of routing electronic messages was known at
the time of filing of the present application, in 2001, mobile electronic
devices lacked a significant number of technological advances and
capabilities present in modern smart devices. Id. at 9. Accordingly,
Appellant submits claim 1 solves that problem by moving processing of the
attachment from the end user’s device to a remotely-located device. Id.
Furthermore, Appellant argues that the claimed subject matter does not
preempt all ways of routing electronic messages or processing attachments,
but instead recites a discrete implementation for controlling an attachment
processor to process attachments under the control of the user device, and
the claimed subject matter is a technical improvement in ways of handling
electronic message attachments. Id. at 9–10 (citing BASCOM Glob. Internet
Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016)).
Our Review
Applying the guidance set forth in the 2019 Updated PEG and
controlling case law, we determine whether the Examiner has erred in
rejecting the claims as directed to patent ineligible subject matter.
In revised step 1 of 2019 PEG, we consider whether the claimed
subject matter falls within the four statutory categories of patent-eligible
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subject matter identified by 35 U.S.C. § 101: process, machine, manufacture,
or composition of matter. Because independent claim 1 recites a “method”
including a number of steps, claim 1 falls within the “process” category of
patent-eligible subject matter. Because independent claim 17 recites a
“system” including a processor for performing various functions, claim 17
falls within the “machine” category of patent-eligible subject matter.
In prong 1 of revised step 2A of the 2019 PEG, we determine whether
any judicial exception to patent eligibility is recited in the claims. The
guidance identifies three judicially-excepted groupings of abstract ideas:
(1) mathematical concepts; (2) certain methods of organizing human
activity, such as fundamental economic practices; and (3) mental processes.
As noted by Appellant, independent claim 1 recites, inter alia, a method
including the steps of “receiving a message that previously contained an
attachment, determining a unique identifier of an attachment processor,
obtaining information related to using the attachment processor, creating a
control file based on the received service information, and transmitting the
control file to the attachment processor to start, stop, or change an operation
of the attachment processor in processing the attachment previously attached
to the received message.” Reply Br. 5. In sum, the cited claims steps
involve a mobile device, which:
(1) upon receiving a message including an attachment,
transmits to a directory service a request including the
unique ID of an attachment processor capable of
processing the attachment;
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(2) creates an electronic message that includes a control
file and is based on service information received from
the directory service;
(3) transmits to the identified attachment processor the
control file with instructions on how to process the
attachment.
Therefore, claim 1 recites a mobile device routing to an identified
attachment processor an attachment along with a control file containing
instructions on how to process the attachment. Such a manipulation of the
attachment relates to the pre-Internet activity of handling messages such that
a party incapable of processing or understanding a received message looks
up a competent party to which it routes the message along with instructions
on how to process, translate or format the message at the behest of the
requesting party. As drafted, these limitations, under their broadest
reasonable interpretation, recite a mental process that can be performed in
the human mind or using a pen and paper. See, e.g., CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1372–73 (Fed. Cir.
2011) (determining that a claim whose “steps can be performed in the
human mind, or by a human using a pen and paper” is directed to an
unpatentable mental process). Consequently, the claim recites the mental
process of routing a message to an identified party for processing according
to instructions provided by a requestor. We thus agree with the Examiner
that the claimed subject matter is merely directed to routing received data [to
an identified party] for processing and outputting the processed data as per
received instructions consistent with Intellectual Ventures. Ans. 10.
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Accordingly, independent claims 1 and 17 recite the judicial exception of a
mental process.
Having determined that the claims recite a judicial exception, our
analysis under the 2019 PEG turns now to determining whether there are
“additional elements that integrate the judicial exception into a practical
application.” See MPEP § 2106.05(a)–(c), (e)–(h).6 “Integration into a
practical application” requires an additional element or a combination of
additional elements in the claim to 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 exception. 84 Fed. Reg. at 53.
Appellant’s claims 1 and 17 recite computer-related limitations (e.g.,
mobile communication device, attachment processor). Appellant argues that
“the present claims provide an improvement in the processing of message
attachments and the remote control of a device performing such processing.”
Reply Br. 6. “Therefore, a device that would otherwise receive an
attachment which is useless to the device (e.g., incapable of display or

6 Specifically, we determine whether the claims recite:
(i) an improvement to the functioning of a computer [(or a mobile
device)];
(ii) an improvement to another technology or technical field;
(iii) an application of the abstract idea with, or by use of, a particular
machine;
(iv) a transformation or reduction of a particular article to a different
state or thing; or
(v) other meaningful limitations beyond generally linking the use of
the abstract idea to a particular technological environment.
Id.
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processing on the device), instead becomes capable of being processed under
the control of the device, improving the device itself and improving the
larger technological area of message and attachment delivery and
processing.” Id.(citing Spec. ¶¶ 46, 47, 196–202).
We do not find the recited computer-related limitations are sufficient
to integrate the judicial exception into a practical application. Although the
claim nominally requires these steps to be performed by the mobile
communication device and the attachment processor, this computer
implementation of a mental process is insufficient to take the invention out
of the realm of abstract ideas. 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.). Further, the
Specification does not provide additional details about the mobile
communication device and the attachment processor that would distinguish
them from any generic processing devices that communicate with one
another in a wireless computer network environment. Although we do not
dispute that these processing and communications devices include specific
instructions for performing the recited functions, Appellant has not
explained persuasively how the derived content transforms the received
attachment into a new state or thing. See MPEP § 2106.05(a). Rather, the
claims merely adapt the mental process of routing a received message to an
identified capable party for subsequent processing according to instructions
provided by a requestor. See Credit Acceptance Corp. v. Westlake Servs.,
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859 F.3d 1044, 1055 (Fed. Cir. 2017) (“Our prior cases have made clear that
mere automation of manual processes using generic computers does not
constitute a patentable improvement in computer technology.”); see also
Bancorp Services, L.L.C. v. Sun Life Assurance Co. of Canada (U.S.), 687
F.3d 1266, 1278 (Fed. Cir. 2012) (A computer “employed only for its most
basic function . . . does not impose meaningful limits on the scope of those
claims.”).
Further, Appellant’s identified improvements are to the abstract idea
itself, not improvements to a technology or computer functionality. That is,
the cited claim limitations do not improve the functionality of the processing
devices by performing operations to route a message to another party for
processing according to instructions provided by a requestor, nor do they
achieve an improved technological result in conventional industry practice.
See McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299, 1316
(Fed. Cir. 2016). Thus, we do not agree with Appellant that the claims recite
an additional element reflecting an improvement in the functioning of a
computer, or an improvement to other technology or technical field. See
DDR Holdings773 F.3d at 1258–59.
Nor do the claims recite an additional element that implements the
abstract idea with a particular machine or manufacture that is integral to the
claim. Instead, the claim limitations only recite additional elements that add
insignificant extra-solution activity to the judicial exception. See
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir.
2011). Prior to the Internet, such activities were widely practiced, and
became computerized to facilitate the routing of messages to an identified
party for subsequent translation according to the instructions provided by the
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requesting party. See OIP Technologies, Inc. v. Amazon.com, Inc., 788 F.3d
1359, 1364 (Fed. Cir. 2015).
Because the claimed subject matter outlined above does not (1)
provide any technical solution to a technical problem as required by DDR
Holdings;7 (2) provide any particular practical application as required by
BASCOM; or (3) entail an unconventional technological solution to a
technological problem as required by Amdocs,8 we agree with the
Examiner’s determination that Appellant’s claims 1 and 17 are directed to an
abstract idea that is not integrated into a practical application.
Alice/Mayo—Step 2B (Inventive Concept)
Turning to step 2B of the 2019 PEG, we look to whether the claim:
(a) recites a specific limitation or combination of limitations that are not
well-understood, routine, conventional activity in the field; or (b) simply
appends well-understood, routine, conventional activities previously known
to the industry, specified at a high level of generality, to the judicial
exception. 84 Fed. Reg. 56; see Alice, 573 U.S. at 217 (“[W]e consider the
elements of each claim both individually and ‘as an ordered combination’”
to determine whether the claim includes “significantly more” than the
ineligible concept); see also BASCOM, 827 F.3d at 1350 (“[A]n inventive

7 The Federal Circuit found DDR’s claims are patent-eligible under
35 U.S.C. § 101 because DDR’s claims: (1) do not merely recite “the
performance of some business practice known from the pre-Internet world”
previously disclosed in Bilski and Alice; but instead (2) provide a technical
solution to a technical problem unique to the Internet, i.e., a “solution . . .
necessarily rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer networks.” DDR Holdings, 773
F.3d at 1257.
8 See Amdocs Ltd. v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016).
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concept can be found in the non-conventional and non-generic arrangement
of known, conventional pieces.”).
We discern no additional element or combination of elements recited
in Appellant’s independent claims 1 and 17 that contain any “inventive
concept” or add anything “significantly more” to transform the abstract
concept into a patent-eligible application. Alice, 573 U.S. at 221. We are
not persuaded by Appellant’s remarks, noted above, alleging the claims are
directed to a non-routine and unconventional system because it entails
instructing a remote computing device to process an attachment. Appellant
has failed to establish on this record how the processing of an attachment by
a remote computing device according to received instructions is
distinguished from the conventional processing of data routed to an
identified party as per the instructions provided by a requesting party. We
agree with the Examiner that using generic processing and communication
devices to collect, analyze, process data and displaying the result in the
manner suggested is a routine and conventional approach to data
management. Ans. 10.
As noted above, Appellant does not direct our attention to any portion
of the Specification indicating that the claimed processing and
communication devices perform anything other than well-understood,
routine, and conventional functions, such as receiving, analyzing,
processing, and displaying data. See Elec. Power Group, LLC v. Alstom
S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016) (“Nothing in the claims,
understood in light of the [S]pecification, requires anything other than off-
the-shelf, conventional computer, network, and display technology for
gathering, sending, and presenting the desired information.”); see also Alice,
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573 U.S. at 224–26 (receiving, storing, sending information over networks
insufficient to add an inventive concept); buySAFE, Inc. v. Google, Inc., 765
F.3d 1350, 1355 (Fed. Cir. 2014) (“That a computer receives and sends the
information over a network—with no further specification—is not even
arguably inventive.”). Instead, Appellant’s claimed subject matter simply
uses generic computer components (computer system) to perform the
abstract idea of routing a message to another party for processing according
to instructions provided by a requestor. As noted above, the use of a generic
computer does not alone transform an otherwise abstract idea into patent-
eligible subject matter. As our reviewing court has observed, “after Alice,
there can remain no doubt: recitation of generic computer limitations does
not make an otherwise ineligible claim patent-eligible.” DDR, 773 F.3d at
1256 (citing Alice, 573 U.S. at 223).
Because the discussed claim elements only recite generic computer
functions that are well-understood, routine, and conventional, individually
and in combination, the claim is devoid of an inventive concept. See Alice,
573 U.S. at 217. “[T]he ‘inventive concept’ [under the second part of the
Mayo/Alice test] cannot be the abstract idea itself” and “Berkheimer . . .
leave[s] untouched the numerous cases from [the Federal Circuit] which
have held claims ineligible because the only alleged ‘inventive concept’ is
the abstract idea.” Berkheimer v. HP Inc., 890 F.3d 1369, 1374 (Fed. Cir.
2018) (Moore, J., concurring). “It has been clear since Alice that a claimed
invention’s use of the ineligible concept to which it is directed cannot supply
the inventive concept that renders the invention ‘significantly more’ than
that ineligible concept.” BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1281,
1290 (Fed. Cir. 2018). We, therefore, agree with the Examiner that the
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computer functions recited in the claims were, in fact, generic, and are met
by numerous precedent establishing that using a generic computer to
expedite and automate processes traditionally performed manually, or that
are otherwise abstract, is a well-understood, routine, and conventional use of
such computers. Final Act. 4–5; see also, e.g., Intellectual Ventures I LLC v.
Symantec Corp., 838 F.3d at 1321 (utilizing an intermediary computer to
forward information); Bancorp Services, L.L.C., 687 F.3d at 1278 (“The
computer required by some of Bancorp’s claims is employed only for its
most basic function, the performance of repetitive calculations, and as such
does not impose meaningful limits on the scope of those claims.”).
Therefore, we conclude that claim 1’s elements, both individually and
as an ordered combination, do not provide an inventive concept. See 84 Fed.
Reg. 56; see also Berkheimer, 881 F.3d at 1370 (“The limitations amount to
no more than performing the abstract idea of parsing and comparing data
with conventional computer components.”); Bancorp, 687 F.3d at 1278
(“[T]he use of a computer in an otherwise patent-ineligible process for no
more than its most basic function—making calculations or computations—
fails to circumvent the prohibition against patenting abstract ideas and
mental processes.”).
To the extent Appellant argues the claims necessarily contain an
“inventive concept” based on their alleged novelty or non-obviousness over
the cited references, Appellant misapprehends the controlling precedent.
Although the second part in the Alice/Mayo framework is termed a search
for an “inventive concept,” the analysis is not an evaluation of novelty or
non-obviousness, but, rather, a search for “an element or combination of
elements that is ‘sufficient to ensure that the patent in practice amounts to
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significantly more than a patent upon the [ineligible concept] itself.”’ Alice,
573 U.S. at 217–218 (quoting Mayo, 566 U.S. 72–73). A novel and
nonobvious claim directed to a purely abstract idea is, nonetheless, patent-
ineligible. See Mayo, 566 U.S. at 90.
In many cases, “relying on a computer to perform routine tasks more
quickly or more accurately is insufficient to render a claim patent eligible.”
OIP Techs., 788 F.3d at 1363 (citing Alice, 573 U.S. at 224) (“[U]se of a
computer to create electronic records, track multiple transactions, and issue
simultaneous instructions” is not an inventive concept.); see also, e.g.,
Intellectual Ventures I LLC v. Capital One Bank, 792 F.3d at 1370
(“[M]erely adding computer functionality to increase the speed or efficiency
of the process does not confer patent eligibility on an otherwise abstract
idea.”). Therefore, the functions recited in independent claims 1 and 17 do
not add meaningful limitations beyond generally linking the abstract idea to
the particular technological environment. See Ans. 10.
Appellant’s arguments asserting that the claims do not block others
from using the abstraction do not persuade us that the claims are directed to
patent eligible material. Pre-emption is not a separate test for eligibility.
To be clear, the proper focus is not preemption per se, for
some measure of preemption is intrinsic in the statutory right
granted with every patent to exclude competitors, for a limited
time, from practicing the claimed invention. See 35 U.S.C.
§ 154. Rather, the animating concern is that claims should not
be coextensive with a natural law, natural phenomenon, or
abstract idea; a patent-eligible claim must include one or more
substantive limitations that, in the words of the Supreme Court,
add “significantly more” to the basic principle, with the result
that the claim covers significantly less. See Mayo[, 566 U.S. at
72–73]. Thus, broad claims do not necessarily raise § 101
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preemption concerns, and seemingly narrower claims are not
necessarily exempt.
CLS Bank Int’l v. Alice Corp. Pty. Ltd., 717 F.3d 1269, 1281 (Fed. Cir.
2013) (Lourie, J., concurring), aff’d, 573 U.S. 208; see also Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)
(“While preemption may signal patent ineligible subject matter, the absence
of complete preemption does not demonstrate patent eligibility.”). Because
we find the claimed subject matter covers patent-ineligible subject matter,
the pre-emption concern is necessarily addressed. “Where a patent’s claims
are deemed only to disclose patent ineligible subject matter under the Mayo
framework, . . . preemption concerns are fully addressed and made moot.”
Ariosa Diagnostics, 788 F.3d at 1379.
Because Appellant’s claims 1 and 17 are directed to a patent-ineligible
abstract concept and do not recite something “significantly more” under the
second prong of the Alice analysis, we sustain the Examiner’s rejection of
independent claims 1 and 17 under 35 U.S.C. § 101.
Appellant does not present additional arguments for dependent claims
2–16 and 18–20. Accordingly, for the same reasons as set forth for
independent claims 1 and 17, we sustain the Examiner’s 35 U.S.C. § 101
rejection of dependent claims 2–16 and 18–20.
VI. CONCLUSION
We reverse the Examiner’s anticipation rejection of claims 1−20 under
35 U.S.C. § 102. However, we affirm the Examiner’s patent eligibility
rejection of claims 1–20 under 35 U.S.C. § 101.
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Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed. See
37 C.F.R. § 41.50(a)(1).

DECISION SUMMARY
In summary:
Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–20 101 Eligibility 1–20
1−20 102 Mousseau 1−20
Overall Outcome 1–20

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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED