Benjamin David. Follis

Patent Trials and Appeals Board

Feb 4, 2020

14645770 - (D) (P.T.A.B. Feb. 4, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/645,770 03/12/2015 Benjamin David Follis 058083-0928205 (P5222) 7141
72058 7590 02/04/2020
Kilpatrick Townsend & Stockton LLP/Adobe
Adobe Systems, Inc. 58083
Mailstop: IP Docketing - 22
1100 Peachtree Street, Suite 2800
Atlanta, GA 30309-4530
EXAMINER
WOOD, ALLISON G
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
02/04/2020 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):
KTSDocketing2@kilpatrick.foundationip.com
ipefiling@kilpatricktownsend.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________ 

Ex parte BENJAMIN DAVID FOLLIS
________________

Appeal 2019-000144
Application 14/645,770
Technology Center 3600
________________

Before JUSTIN BUSCH, JASON J. CHUNG, and
JOYCE CRAIG, Administrative Patent Judges.

CHUNG, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals the Final Rejection
of claims 1, 2, 4–7, 10, 20, 21, 24, 25, 27–30, 32, and 34.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
INVENTION
The invention relates to improving the efficiency and effectiveness of
computing systems used in managing and tracking electronic contract
obligations. Spec. ¶ 1. Claim 1 is illustrative of the invention and is

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. According to Appellant, Adobe Systems Incorporated is
the real party in interest. Appeal Br. 1.
2 Claims 3, 8, 9, 22, 23, 26, 31, and 33 are cancelled. Appeal Br. 19, 20, 22–
25. Claims 11–19 are withdrawn. Id. at 20.
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reproduced below:
1. In a computer network environment, a method for
providing information about an obligation of an electronic
contract, the method comprising:
providing, by an electronic signature server via a data
network, an electronic contract for execution to a first client
device of a first participant in the electronic contract and to a
second client device of a second participant in the electronic
contract;
receiving, by the electronic signature server via the data
network, a first electronic communication from the first client
device comprising a first electronic signature of a signatory of
the first participant, and a second electronic communication
from the second client device comprising a second electronic
signature of a signatory of the second participant;
adding, by the electronic signature server, the first
electronic signature and the second electronic signature to the
electronic contract to create an executed electronic contract;
analyzing, by the electronic signature server, the executed
electronic contract to create an annotation identifying an
obligation to be performed by a performing participant of the
executed electronic contract according to a time constraint for
the benefit of a benefited participant of the executed electronic
contract and a location within the executed electronic contract
of information about the obligation and the time constraint,
wherein the annotation comprises (i) a reminder schedule for
sending periodically-recurring electronic reminder messages
about the obligation, (ii) the time constraint, (iii) and one or
more of a subsection of the electronic contract containing the
obligation to be performed or a link to the subsection of the
executed electronic contract containing the obligation to be
performed, and wherein analyzing the executed electronic
contract comprises recognizing text of the electronic contract by
performing character recognition and analyzing the text of the
electronic contract;
creating, by the electronic signature server, an electronic
document comprising the executed electronic contract and the
annotation;
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sending, by the electronic signature server via the data
network, the electronic document to a monitoring server;
storing, by the monitoring server, the electronic document
in memory;
monitoring, by the monitoring server, the electronic
document stored in the memory for occurrence of the time
constraint; and
upon occurrence of the time constraint, triggering, by the
monitoring server, an electronic notification message to at least
one of a performing participant device operated by the
performing participant or a benefited participant device operated
by the benefited participant, the electronic message comprising
at least the time constraint and the subsection of the electronic
contract or a link to the subsection of the executed electronic.

Appeal Br. 18–19 (Claims Appendix) (emphases added).

REJECTION3,4
Claims 1, 2, 4–7, 10, 20, 21, 24, 25, 27–30, 32, and 34 stand rejected
under 35 U.S.C. § 101 as being directed to patent ineligible subject matter.
Final Act. 10–15.
ANALYSIS
I. Claims 1, 2, 4–7, 10, 20, 21, 24, 25, 27–30, 32, and 34 Rejected
Under 35 U.S.C. § 101
A. Legal Principles
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

3 The various rejections under 35 U.S.C. § 112(b) are withdrawn. Final Act.
2; Advisory Action mailed on June 25, 2018.
4 The rejection under 35 U.S.C. § 103 is withdrawn. Final Act. 3.
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ideas” are not patentable. E.g., 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. Id. 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
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, 69 (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.
(15 How.) 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
Supreme Court held that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
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mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 192 (“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 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 (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. (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 U.S. Patent and Trademark Office (“USPTO”) published revised
guidance on the application of § 101. USPTO’s January 7, 2019
Memorandum, 2019 Revised Patent Subject Matter Eligibility Guidance
(“Memorandum”). Under that guidance, we first look to whether the claim
recites:
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(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)).
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 are not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Memorandum.
B. The Examiner’s Conclusions and Appellant’s Arguments
The Examiner concludes the present claims recite certain methods of
organizing human activity. Final Act. 12. The Examiner also determines
the present claims do not amount to significantly more than an abstract idea
itself because the additional elements are recited in a generic manner and
operate using well-understood, routine, and conventional functions. Final
Act. 13–14 (citing Alice, 573 U.S. at 225–26; Ultramercial, LLC v. Hulu,
LLC, 772 F.3d 709, 716–17 (Fed. Cir. 2014); buySAFE, Inc. v. Google, Inc.,
765 F.3d 1350, 1355 (Fed. Cir. 2014); Cyberfone Sys., LLC v. CNN
Interactive Grp., Inc., 558 F. App’x 988, 993 (Fed. Cir. 2014); Gottschalk,
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409 U.S. at 65–67; Bancorp, 687 F.3d at 1275; CyberSource, 654 F.3d at
1375); Ans. 9.
Appellant argues that the present claims recite features that were not
known previously because there are no obviousness or novelty rejections of
the claims. Appeal Br. 6. Appellant argues, similar to Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016), the present claims recite an
improvement in computer-related technology by using an executed
electronic contract to create a composite document including annotations
with obligation information, and usage of a monitoring server to notify users
not only of when a contractual obligation should be performed, but also
providing the relevant subsection of the contract containing the obligation.
Appeal Br. 5–7 (citing Spec. ¶¶ 2–5, 18, 19, 33, 50); Reply Br. 7–8.
Appellant further argues, similar to DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245 (Fed. Cir. 2014), the present claims are necessarily rooted in
computer technology to solve problems specifically arising in that realm
because the present claims require using multiple servers communicating via
computer networks to facilitate automatically, communications and
operations for remote computing devices with respect to actions for
generating an electronic contract. Appeal Br. 12–14.
Appellant argues, similar to BASCOM Global Internet Services, Inc.
v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016), the present claims
recite a non-conventional and non-generic arrangement of known,
conventional elements, which results in an inventive concept. Appeal Br.
10–12. Appellant argues the Examiner fails to provide any evidence that
“creat[ing] an annotation identifying an obligation to be performed . . .
wherein the annotation comprises (i) a reminder schedule for sending
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periodically-recurring reminder messages about the obligation, (ii) the time
constraint, and (iii) one or more of a subsection of the contract . . .” and
“creating a document comprising the executed contract and the annotation”
are well-understood, routine, and conventional. Appeal Br. 14–16. We
disagree with Appellant.
C. Discussion
1. Step 2A, Prong 1
Patent eligibility under 35 U.S.C. § 101 is a question of law that is
reviewable de novo. See Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333
(Fed. Cir. 2012). We, therefore, conclude the emphasized portions of claim
1,5 reproduced above (see supra at 2–3), recite commercial or legal
interactions including agreements in the form of contracts because claim 1
requires an electronic signature for creating an executed electronic contract.
According to the Memorandum, commercial or legal interactions including
agreements in the form of contracts fall into the category of certain methods
of organizing human activity. See Memorandum, 84 Fed. Reg. at 52.
Moreover, those certain methods of organizing human activity are a type of
abstract idea. See id.
Because the present claims recite commercial or legal interactions
including agreements in the form of contracts, which fall into the category of

5 Claim 1, reproduced above with emphases, recites similar features as
independent claims 20 and 27. Appellant does not argue claims 2, 4–7, 10,
20, 21, 24, 25, 27–30, 32, and 34 separately, but asserts the § 101 rejection
of those claims should be withdrawn for at least the same reasons as argued
for independent claim 1. Appeal Br. 5–16. We, therefore, group claims 1, 2,
4–7, 10, 20, 21, 24, 25, 27–30, 32, and 34 together and refer to those claims
as the “present claims.”
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certain methods of organizing human activity (i.e., an abstract idea), we
proceed to prong 2.
2. Step 2A, Prong 2
The additional elements of the present claims do not integrate the
abstract idea into a practical application because they do not impose any
meaningful limits on practicing the abstract idea. In particular, we disagree
with Appellant’s argument that the present claims recite features that were
not known previously because there are no obviousness or novelty rejections
of the claims. Appeal Br. 6.
With regard to Appellant’s argument that the present claims recite
features that were not known previously because there are no obviousness or
novelty rejections of the claims, (Appeal Br. 6), Appellant improperly
conflates the requirements for eligible subject matter (§ 101) with the
independent requirements of novelty (§ 102) and non-obviousness
(§ 103). “The ‘novelty’ of any element or steps in a process, or even of the
process itself, is of no relevance in determining whether the subject matter of
a claim falls within the § 101 categories of possibly patentable subject
matter.” Diehr, 450 U.S. at 188–89; see also Genetic Techs. Ltd. v. Merial
L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016) (stating that, “under the
Mayo/Alice framework, a claim directed to a newly discovered law of nature
(or natural phenomenon or abstract idea) cannot rely on the novelty of that
discovery for the inventive concept necessary for patent eligibility”).
We disagree with Appellant’s argument that, similar to Enfish, the
present claims recite an improvement in computer-related technology.
Appeal Br. 5–7 (citing Spec. ¶¶ 2–5, 18, 19, 33, 50); Reply Br. 7–8.
Specifically, Appellant argues there is an improvement because the present
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claims use an executed electronic contract to create a composite document
including annotations with obligation information, and usage of a
monitoring server to notify users not only of when a contractual obligation
should be performed, but also providing the relevant subsection of the
contract containing the obligation. Appeal Br. 5–7 (citing Spec. ¶¶ 2–5, 18,
19, 33, 50); Reply Br. 7–8.
Appellant does not identify persuasively how the Specification sets
forth an improvement in technology. The USPTO October 2019 Patent
Eligibility Guidance Update (“Update”) addresses how we consider
evidence of improvement that is presented to us. The Update states:
[d]uring examination, the examiner should analyze the
“improvements” consideration by evaluating the specification
and the claims to ensure that a technical explanation of the
asserted improvement is present in the specification, and that the
claim reflects the asserted improvement. Generally, examiners
are not expected to make a qualitative judgment on the merits of
the asserted improvement. If the examiner concludes the
disclosed invention does not improve technology, the burden
shifts to applicant to provide persuasive arguments supported by
any necessary evidence to demonstrate that one of ordinary skill
in the art would understand that the disclosed invention improves
technology. Any such evidence submitted under 37 C.F.R.
§ 1.132 must establish what the specification would convey to
one of ordinary skill in the art and cannot be used to supplement
the specification. For example, in response to a rejection under
35 U.S.C. § 101, an applicant could submit a declaration under
§ 1.132 providing testimony on how one of ordinary skill in the
art would interpret the disclosed invention as improving
technology and the underlying factual basis for that conclusion.
Update, 13 (emphasis added).
In this case, the Examiner concludes the present claims do not recite
an improvement to technology. Final Act. 4–8; Ans. 3–5. Consequently, we
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focus on any evidence Appellant cites as discussed in the Update. Here,
although Appellant identifies paragraphs 2–5, 18, 19, 33, and 50 of the
Specification, those paragraphs merely describe tracking obligations for
electronic contracts and sending reminders to the contract participants (i.e.,
certain methods of organizing human activity), which fall within the
category of an abstract idea as discussed supra, not an improvement to
technology. Appeal Br. 5–7 (citing Spec. ¶¶ 2–5, 18, 19, 33, 50); Reply Br.
7–8. Paragraphs 2–5, 18, 19, 33, and 50 of the Specification are unlike the
technological improvements in Enfish.
In Enfish, the Federal Circuit considered how the invention in Enfish
was superior to the technology in the prior art. That is, the court considered
“the specification’s emphasis that ‘the present invention comprises a
flexible, self-referential table that stores data,’” “[t]he specification also
teaches that the self-referential table functions differently than conventional
database structures,” and “traditional databases, such as ‘those that follow
the relational model and those that follow the object oriented model’ are
inferior to the claimed invention.” Enfish, LLC v. Microsoft Corp., 822 F.3d
at 1337 (interior citations omitted). Moreover, in Enfish “‘[t]he structural
requirements of current databases require a programmer to predefine a
structure and subsequent [data] entry must conform to that structure,’ [and]
the ‘database of the present invention does not require a programmer to
preconfigure a structure to which a user must adapt data entry.’” Id. Based
on the foregoing, the court determined the claims “achieve[d] other benefits
over conventional databases, such as increased flexibility, faster search
times, and smaller memory requirements.” Id. Unlike the claims of Enfish,
the present claims do not recite “a specific improvement to the way
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computers operate, embodied in the self-referential table.” Id. at 1336.
Instead, the present claims recite an abstract idea as discussed supra,
in § I.C.1. or at best, improving an abstract idea—not a technological
improvement. The Specification indicates the additional elements (i.e.,
“data network,” “first client device,” “second client device,” “electronic
signature server,” “monitoring server,” “memory,” “performing participant
device” “benefited participant device,” “first processing device,”6 “first
memory device,”7 “first communication interface,”8 “second processing
device,”9 “second memory device,”10 “second communication interface,”11
and “memory device”12) recited in the present claims are merely generic
computer components used to implement the abstract idea. Spec. ¶¶ 27–29,
35, 39, 41, 45, 52, 59, 62–65, 67. Further, the generic computer
components, individually or in combination, do not integrate the judicial
exception into a practical application.
Additionally, “a claim for a new abstract idea is still an abstract idea.”
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir.
2016) (emphasis added). “[U]nder the Mayo/Alice framework, a claim
directed to a newly discovered law of nature (or natural phenomenon or
abstract idea) cannot rely on the novelty of that discovery for the inventive
concept necessary for patent eligibility . . . .” Genetic Techs. Ltd. v. Merial

6 This feature is recited in claims 20 and 27, but not recited in claim 1.
7 This feature is recited in claim 20, but not recited in claims 1 and 27.
8 This feature is recited in claim 20, but not recited in claims 1 and 27.
9 This feature is recited in claims 20 and 27, but not recited in claim 1.
10 This feature is recited in claim 20, but not recited in claims 1 and 27.
11 This feature is recited in claim 20, but not recited in claims 1 and 27.
12 This feature is recited in claim 27, but not recited in claims 1 and 20.
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L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016) (citations omitted).
We further disagree with Appellant’s argument that, similar to DDR
Holdings, the present claims are necessarily rooted in computer technology
to solve problems specifically arising in that realm because the present
claims require using multiple servers communicating via computer networks
to facilitate automatically, communications and operations for remote
computing devices with respect to actions for generating an electronic
contract. Appeal Br. 12–14. The subject claim considered by the DDR
court pertained to a visitor of a host’s website clicking on an advertisement
for a third-party product displayed on the host’s website, the visitor is no
longer being transported to the third party’s website. DDR Holdings, 773
F.3d at 1257. In DDR, instead of losing visitors to the third-party’s website,
the host website can send its visitors to a web page on an outsource
provider’s server that (1) incorporates “look and feel” elements from the
host website and (2) provides visitors with the opportunity to purchase
products from the third-party merchant without actually entering that
merchant’s website. Id. at 1257–58. In contrast to the claims of DDR, the
present claims do not recite incorporating “look and feel elements” from a
host website and providing visitors with the opportunity to purchase
products from a third-party merchant without actually entering the
merchant’s website.
Appellant does not make any other arguments pertaining to step 2A,
prong 2. Because the present claims recite an abstract idea that is not
integrated into a practical application, we proceed to Step 2B.
3. Step 2B
We agree with the Examiner’s determination that the abstract idea is
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implemented with additional elements that are well-understood, routine, and
conventional. Final Act. 14 (citing Alice, 573 U.S. at 225–26; Ultramercial,
772 F.3d at 716–17; buySAFE, 765 F.3d at 1355; Cyberfone, 558 F. App’x
at 993; Gottschalk, 409 U.S. at 65–67; Bancorp, 687 F.3d at 1275;
CyberSource, 654 F.3d at 1375); Ans. 9. The Specification also supports the
Examiner’s determination in this regard because it explains that “data
network,” “first client device,” “second client device,” “electronic signature
server,” “monitoring server,” “memory,” “performing participant device”
“benefited participant device,” “first processing device,” “first memory
device,” “first communication interface,” “second processing device,”
“second memory device,” “second communication interface,” and “memory
device” are generic components. Spec. ¶¶ 27–29, 35, 39, 41, 45, 52, 59, 62–
65, 67. Appellant’s Specification indicates these additional elements were
well-understood, routine, and conventional components because it describes
them at a high level of generality and in a manner that indicates that they are
sufficiently well-known. Id. Moreover, the additional elements recited in
the present claims, analyzed individually or in combination, do not result in
the claim, as a whole, amounting to significantly more than the judicial
exception.
We disagree with Appellant’s argument that the Examiner fails to
support the finding that “creat[ing] an annotation identifying an obligation to
be performed . . . wherein the annotation comprises (i) a reminder schedule
for sending periodically-recurring reminder messages about the obligation,
(ii) the time constraint, and (iii) one or more of a subsection of the contract
. . .” and “creating a document comprising the executed contract and the
annotation” are well-understood, routine, and conventional with any
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evidence. Appeal Br. 14–16. As an initial matter, Appellant’s argument
appears misplaced because the Examiner concludes these features are part of
the abstract idea of certain methods of organizing human activity rather than
labeling these features as “additional elements.” Final Act. 12.
Additionally, the Examiner finds the additional elements (e.g., electronic
signature server, data network, first client device, second client device, etc.)
are recited in a generic manner that are well-understood, routine, and
conventional. Final Act. 13–14 (citing Alice, 573 U.S. at 225–26;
Ultramercial, 772 F.3d at 716–17; buySAFE, 765 F.3d at 1355; Cyberfone,
558 F. App’x at 993; Gottschalk, 409 U.S. at 65–67; Bancorp, 687 F.3d at
1275; CyberSource, 654 F.3d at 1375); Ans. 9; see also USPTO
Commissioner for Patents Memorandum dated Apr. 9, 2018, “Changes in
Examination Procedure Pertaining to Subject Matter Eligibility, Recent
Subject Matter Eligibility Decision” (Berkheimer v. HP, Inc.) (explaining
that citing relevant cases is one way to support this finding).
An inventive concept “cannot be furnished by the unpatentable law of
nature (or natural phenomenon or abstract idea) itself.” Genetic Techs. Ltd.
v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016); see also 84 Fed.
Reg. at 56; Alice, 573 U.S. at 217 (explaining that, after determining a claim
is directed to a judicial exception, “we then ask, ‘[w]hat else is there in the
claims before us?”’ (emphasis added, brackets in original) (quoting Mayo,
566 U.S. at 78)). Instead, an “inventive concept” is furnished by an element
or combination of elements that is recited in the claim in addition to the
judicial exception and sufficient to ensure the claim as a whole amounts to
significantly more than the judicial exception itself. Alice, 573 U.S. at 218-
19 (citing Mayo, 566 U.S. at 72–73); see BSG Tech LLC v. BuySeasons, Inc.,
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899 F.3d 1281, 1290 (Fed. Cir. 2018) (explaining that the Supreme Court in
Alice “only assessed whether the claim limitations other than the invention's
use of the ineligible concept to which it was directed were well-understood,
routine and conventional,” (emphasis added)).
We also disagree with Appellant’s argument that, similar to
BASCOM, the present claims recite a non-conventional and non-generic
arrangement of known, conventional elements, which results in an inventive
concept. Appeal Br. 12. Appellant’s arguments fail to identify any
additional element or particular combination of elements that allegedly are
unconventional, non-routine, or not well-understood. See Appeal Br. 10–12.
The Examiner cites cases in support of the finding that the generic computer
components were well-understood, routine, and conventional components
performing conventional computer operations. Final Act. (citing Alice, 573
U.S. at 225–26; Ultramercial, 772 F.3d at 716–17; buySAFE, 765 F.3d at
1355; Cyberfone, 558 F. App’x at 993; Gottschalk, 409 U.S. at 65–67;
Bancorp, 687 F.3d at 1275; CyberSource, 654 F.3d at 1375).
In BASCOM, the claims were directed to “a filter implementation
versatile enough that it could be adapted to many different users’ preferences
while also installed remotely in a single location.” BASCOM, 827 F.3d at
1348–51. The inventive concept was “the installation of a filtering tool at a
specific location, remote from the end-users, with customizable filtering
features specific to each end user” that “gives the filtering tool both the
benefits of a filter on a local computer and the benefits of a filter on the ISP
server.” Id. at 1350. Thus, when considered as an ordered combination, the
court concluded the claims provided “an inventive concept can be found in
the non-conventional and non-generic arrangement of known, conventional
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pieces.” Id. Here, the present claims recite an abstract idea using additional
elements that are generic computer components as discussed supra, in
§§ I.C.1. and I.C.2. or at best, improving an abstract idea—not an inventive
concept for the reasons discussed in § I.C.2. Accordingly, Appellant’s
assertion fails to identify error in the Examiner's findings.
Appellant does not argue claims 2, 4–7, 10, 20, 21, 24, 25, 27–30, 32,
and 34 separately, but asserts the § 101 rejection of those claims should be
withdrawn for at least the same reasons as argued for independent claim 1.
Appeal Br. 5–16. Accordingly, we sustain the Examiner’s rejection of:
(1) independent claims 1, 20, and 27; and (2) dependent claims 2, 4–7, 10,
21, 24, 25, 28–30, 32, and 34 under 35 U.S.C. § 101.
We have only considered those arguments that Appellant actually
raised in the Briefs. Arguments Appellant could have made, but chose not to
make, in the Briefs have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(iv).

CONCLUSION

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. § 1.136(a)(1)(iv).

AFFIRMED
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 2, 4–7,
10, 20, 21,
24, 25, 27–
30, 32, 34
101 Eligibility 1, 2, 4–7,
10, 20, 21,
24, 25, 27–
30, 32, 34