Campbell, Brad Lee. et al.

Patent Trials and Appeals Board

Feb 3, 2020

15097704 - (D) (P.T.A.B. Feb. 3, 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.
15/097,704 04/13/2016 Brad Lee Campbell 170108-1991 9944
71247 7590 02/03/2020
Client 170101 c/o
THOMAS HORSTEMEYER, LLP
3200 WINDY HILL RD SE
SUITE 1600E
ATLANTA, GA 30339
EXAMINER
RUIZ, ANGELICA
ART UNIT PAPER NUMBER
2158
NOTIFICATION DATE DELIVERY MODE
02/03/2020 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@thomashorstemeyer.com
uspatents@tkhr.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BRAD LEE CAMPBELL, DANIEL W. HITCHCOCK, and
OWEN G. GRIFFITHS
____________

Appeal 2019-001768
Application 15/097,704
Technology Center 2100
____________

Before JEFFREY S. SMITH, TREVOR M. JEFFERSON, and
AMBER L. HAGY, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the rejection of
claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part and enter a new ground of rejection.

Illustrative Claim
1. A non-transitory computer-readable medium embodying
a program that, when executed by at least one computing
device, causes the at least one computing device to at least:
receive a plurality of standardized data items from a
network service
corresponding to a data provider, the plurality of standardized
data items corresponding to standardized data types
promulgated by a metadata central authority;
determine that a network page including a web form has
been requested by a data consumer, the web form requesting a
plurality of requested data items;
receive metadata from a network data service, the
metadata including a mapping defining a correspondence
between the plurality of requested data items requested and the
plurality of standardized data items;
generate a subset of the plurality of requested data items
requested by the web form based at least in part on the metadata
and the plurality of standardized data items; and
execute a service call to the data consumer including the
subset of the plurality of requested data items.

Prior Art
Warren US 2004/0036718 A1 Feb. 26, 2004
Cahoon US 2007/0118394 A1 May 24, 2007

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Examiner’s Rejections
Claims 1–20 stand rejected under 35 U.S.C. § 101 as directed to
patent-ineligible subject matter. Ans. 3-19.
Claims 1–20 stand rejected under 35 U.S.C. § 103 as unpatentable
over Cahoon and Warren. Final Act. 5–17.

ANALYSIS
I. Section 101 Rejection1
The Examiner rejects all of the pending claims under 35 U.S.C. § 101
as patent-ineligible because they are directed to a judicial exception without
significantly more. Final Act. 5–7. Appellant argues that the claims are not
directed to an abstract idea, are directed to patent-eligible subject matter, and
the Examiner’s rejection should be reversed. Appeal Br. 6–17. For the
reasons explained below, we are not persuaded of Examiner error in the
§ 101 rejection, and we, therefore, sustain that rejection.
A. Principles of Law
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. The U.S. Supreme Court, however, has interpreted § 101
to include an implicit exception: “[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) (citation omitted).

1 With regard to the Examiner’s § 101 rejection, Appellant argues all claims
together with claim 1 (Appeal Br. 17), and we consider claim 1
representative of the claimed subject matter on appeal. See 37 C.F.R.
§ 41.37(c)(1)(iv).
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The Court, in Alice, reiterated the two-part framework previously set
forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc.,
566 U.S. 66, 75–77 (2012), “for distinguishing patents that claim laws of
nature, natural phenomena, and abstract ideas from those that claim patent-
eligible applications of those concepts.” Alice, 573 U.S. at 217. The first
part in the analysis is to “determine whether the claims at issue are directed
to one of those patent-ineligible concepts.” Id. For example, abstract ideas
include, but are not limited to, fundamental economic practices, methods of
organizing human activities, an idea of itself, and mathematical formulas or
relationships. Id. at 218–20. The “directed to” inquiry asks not whether
“the claims involve a patent-ineligible concept,” but instead whether,
“considered in light of the specification, . . . ‘their character as a whole is
directed to excluded subject matter.’” Enfish, LLC v. Microsoft Corp.,
822 F.3d 1327, 1335 (Fed. Cir. 2016) (internal citations omitted). In that
regard, we determine whether the claims “focus on a specific means or
method that improves the relevant technology” or are “directed to a result or
effect that itself is the abstract idea and merely invoke generic processes and
machinery.” McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299,
1314 (Fed. Cir. 2016).
If, in the first part of the Alice/Mayo analysis, we conclude that the
claims are not directed to a patent-ineligible concept, they are considered
patent eligible under § 101 and the inquiry ends. Rapid Litig. Mgmt. Ltd. v.
CellzDirect, Inc., 827 F.3d 1042, 1047 (Fed. Cir. 2016).
If the claims are directed to a patent-ineligible concept, the second
part in the Alice/Mayo analysis is to consider the elements of the claims
“individually and ‘as an ordered combination’” to determine whether there
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are additional elements that “‘transform the nature of the claim’ into a
patent-eligible application.” Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S.
at 79, 78). In other words, the second part is to “search for an “‘inventive
concept’”—i.e., an element or combination of elements that is ‘sufficient to
ensure that the patent in practice amounts to significantly more than a patent
upon the [ineligible concept] itself.’” Id. at 217–18 (brackets in original)
(quoting Mayo, 566 U.S. at 72–73). The prohibition against patenting an
abstract idea “‘cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment’ or adding ‘insignificant
postsolution activity.’” Bilski v. Kappos, 561 U.S. 593, 610–11 (2010)
(internal citation omitted).
The U.S. Patent and Trademark Office (the “Office”) has published
revised guidance on the application of 35 U.S.C. § 101. 2019 Revised
Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50–57 (Jan. 7,
2019) (“2019 Guidance”). Under the 2019 Guidance, the Office first looks
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 2019 Guidance at 52, 54–55; see
also MPEP § 2106.05(a)–(c), (e)–(h).2
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

2 Unless otherwise specified herein, all references to the MPEP are to Rev.
08.2017 (Jan. 2018).
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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 2019 Guidance at 56. We
follow this guidance here.3
In reviewing the Examiner’s rejection under § 101, we group claims
1–7 together and claims 8–20 together. 37 C.F.R. § 31.47(c)(1)(iv).
Accordingly, claims 2–7 stand or fall with claim 1, and claims 9–20 stand or
fall with claim 8.
B. Application of Legal Principles
1. Step 2A of 2019 Guidance
Prong 1: Do Claims 1–20 Recite an Abstract Idea
In applying the framework set out in Alice/Mayo, and as the first part
of that analysis, the Examiner concludes the claims recite steps amounting to
“filling out a form in advance based on known information,” which the
Examiner determines are analogous to “collecting and comparing known
information” determined to be an abstract idea in Claussen.4 Ans. 3–4.
According to the Examiner, “a claim whose ‘steps can be performed in the

3 “All USPTO personnel are, as a matter of internal agency management,
expected to follow the guidance.” 2019 Guidance at 51; see also October
2019 Update: Subject Matter Eligibility, 2 (Oct. 17, 2019) (“October 2019
Update”) (“Note, the feedback received was primarily directed to
examination procedures and, accordingly, this update focuses on clarifying
practice for patent examiners. However, all USPTO personnel are expected
to follow the guidance.”).
4 Classen Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057 (Fed. Cir.
2011).
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human mind, or by a human using a pen and paper’, is directed to an
‘unpatentable mental process.’” Id. at 4.
In challenging the Examiner’s determination that the claims recite an
abstract idea, Appellant argues that the claim limitations “cannot be
performed by the human mind.” Reply Br. 11. In particular, Appellant
contends a human mind could not perform the recited steps of “receiv[ing]
[data] from a network service,” “receiv[ing] metadata from a network
service,” “generat[ing] [data],” and “execut[ing] a service call . . . including
[the generated data].” Id.
We evaluate the Examiner’s § 101 rejection by applying the 2019
Guidance, which uses enumerated groupings of abstract ideas that are rooted
in U.S. Supreme Court precedent, as well as Federal Circuit decisions
interpreting that precedent. See 2019 Guidance at 51–52. By grouping the
abstract ideas, the 2019 Guidance synthesizes the holdings of various court
decisions to facilitate examination. The 2019 Guidance describes one
category of abstract ideas as including “[m]ental processes”; that is,
“concepts performed in the human mind (including an observation,
evaluation, judgment, opinion).” Id. at 52 (footnotes omitted).
The October 2019 Update5 provides additional clarification on
“mental processes” by providing an example of claims that recite mental
processes as including “a claim to ‘collecting information, analyzing it, and
displaying certain results of the collection and analysis,’ where the data
analysis steps are recited at a high level of generality such that they could
practically be performed in the human mind . . . .” October 2019 Update at

5 Available at https://www.uspto.gov/sites/default/files/documents/
peg_oct_2019_update.pdf.
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7 (citing Electric Power Group6). The October 2019 Update also gives as an
example of a claim reciting a “mental process” a “claim to collecting and
comparing known information . . . , which are steps that can be practically
performed in the human mind . . . .” Id. at 8 (citing Classen).
We agree with the Examiner that the claims recite steps that fall
within the category of mental processes (see Ans. 3–12), consistent with the
2019 Guidance. See 2019 Guidance at 52; see also October 2019 Update at
7–8. In particular, claim 1 recites “receive a plurality of standardized data
items from a network service . . . ,” “determine that a network page
including a web form has been requested . . . ,” “receive metadata from a
network data service . . . ,” “generate a subset of the plurality of requested
data items . . . ,” and “execute a service call to the data consumer including
the subset of [information] . . . ,” each of which qualifies as a step of
collecting information, analyzing it, comparing it to known information,
and/or providing the results. Each of these steps could be performed in the
human mind or with the aid of pen and paper; hence, they each fall within
the category of mental processes, and, thus, the claim recites an abstract
idea. See Ans. 3.
Appellant’s reasoning that the steps would not be performed in the
human mind in the same way as a processor would perform them is not
persuasive, as this is not the proper test. As the 2019 Guidance states, “[i]f a
claim, under its broadest reasonable interpretation, covers performance in
the mind but for the recitation of generic computer components, then it is
still in the mental processes category unless the claim cannot practically be

6 Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1356 (Fed. Cir.
2016).
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performed in the mind.” See 2019 Guidance at 52 n.14 (emphasis omitted).
Here, with the exception of generic computer implemented functions or
steps, there is nothing in the claims themselves that foreclose them from
being performed by a human, mentally or with pen and paper. See
Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed.
Cir. 2016) (holding that claims to screening messages in the context of
electronic communications were directed to an abstract idea because they
could, but for the recitation of generic computer-implemented steps, be done
by a human with the aid of pen and paper); see also October 2019 Update at
8 (“The courts have found claims requiring a generic computer or nominally
reciting a generic computer may still recite a mental process even though the
claim limitations are not performed entirely in the human mind.”).
Thus, under Prong 1 of Step 2A in accordance with the 2019
Guidance, we conclude the claims recite a judicial exception of mental
processes, and we, therefore, agree with the Examiner’s conclusions that the
claims recite an abstract idea.
Prong 2: Do the Claims Integrate the Abstract
Idea Into a Practical Application7
In accordance with Prong 2 of Step 2A of the 2019 Guidance, we
evaluate the claims to determine whether they recite additional elements
beyond the abstract idea, and, if so, we evaluate the additional elements to
determine whether they integrate the abstract idea into a practical

7 We acknowledge that some of these considerations may be properly
evaluated under the second part of the Alice/Mayo analysis (Step 2B of the
2019 Guidance). For purposes of maintaining consistent treatment within
the Office, we evaluate them under the first part of the Alice/Mayo analysis
(Step 2A of the 2019 Guidance). See 2019 Guidance at 54–55.
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application. 2019 Guidance at 54. The 2019 Guidance at page 55 provides
exemplary considerations, including whether an additional element:
• “reflects an improvement in the functioning of a computer, or
an improvement to other technology or technical field”;
• “implements a judicial exception with, or uses a judicial
exception in conjunction with, a particular machine or
manufacture that is integral to the claim”;
• “effects a transformation or reduction of a particular article [or
thing] to a different state or thing”; or
• “applies or uses the judicial exception in some other meaningful
way beyond generally linking the use of the judicial exception
to a particular technological environment.”
The 2019 Guidance also highlights certain examples in which courts
have held that “a judicial exception has not been integrated into a practical
application,” such as where the claims “merely use[] a computer as a tool to
perform an abstract idea” or the additional element adds “insignificant extra-
solution activity” to the abstract idea. 2019 Guidance at 55 (emphasis
added); see also October 2019 Update at 11–15.
The Examiner determines that the claims recite additional elements
beyond the abstract idea, such as “a network service,” “promulgated by a
metadata central authority,” “determine that a network page including a web
form has been requested by a data consumer, the web form requesting a
plurality of requested data items,” “a network data service,” “web form,”
and “execute a service call.” Ans. 6.
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Appellant argues that the claims are not directed to an abstract idea
because they are analogous to claims determined to be patent-eligible in
McRO. Reply Br. 15. In particular, Appellant argues,
claims 1-20 are similarly patent eligible because, like claim 1 in
McRo, they involve a limited approach to achieve an improved
technological result in industry practice. Specifically, the
present claims are related to improved systems for deterministic
form filling by using metadata from a central authority (e.g.,
network site hosting the form) to map stored data with input
form fields.
Id.
We disagree that Appellant’s claim 1–7 are analogous to those
deemed patent eligible in McRO. In McRO, the claims described a way of
animating characters that represented a technological improvement over the
existing, manual 3-D animation techniques. McRO, 837 F.3d at 1316.
Appellant’s claims 1–7, on the other hand, do not produce any improved
product, such as a visual animation. Claims 1–7 recite a computer-
implemented method of retrieving standardized data and metadata, and
mapping the standardized data using the metadata, to generate requested
data. In particular, we highlight that Appellant’s alleged improved
technological result, namely, deterministic form filling, is not recited in
claims 1–7.
Claim 1’s data-gathering steps reasonably can be characterized as
merely constituting insignificant extra-solution activity:
An example of pre-solution activity is a step of gathering data
for use in a claimed process, e.g., a step of obtaining
information about credit card transactions [that] is recited as
part of a claimed process of analyzing and manipulating the
gathered information by a series of steps in order to detect
whether the transactions were fraudulent.
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MPEP § 2106.05(g).
Claim 1’s other steps entail using a computer to map standardized
data using metadata to generate requested data. But the act of mapping
constitutes the underlying abstract ideas—the mental processes that, as we
determine above, can be performed in the human mind or with pencil and
paper. See BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1281, 1290 (Fed.
Cir. 2018) (“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.”); 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.”)
(emphasis omitted); SAP America, Inc. v. InvestPic, LLC, 898 F.3d 1161,
1168 (Fed. Cir. 2018) (“What is needed is an inventive concept in the non-
abstract application realm.”).
Consistent with the Examiner’s determination, we determine claims
1–7 do not include an improvement to another technology or technical field
or an improvement to the functioning of the computer itself; we also find
claims 1–7 do not include a transformation of an article or meaningful
limitations beyond generally linking the use of an abstract idea to a
particular technological environment. See Ans. 3–6. As the U.S. Supreme
Court has explained, “if a patent’s recitation of a computer amounts to a
mere instruction to ‘implemen[t]’ an abstract idea ‘on . . . a computer,’ that
addition cannot impart patent eligibility.” Alice, 573 U.S. at 223 (quoting
Mayo, 566 U.S. at 84).
In contrast to claim 1, claim 8 recites “cause the plurality of data items
to be entered into the form.” Appellant’s claim 8 is directed to an
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improvement in the functioning of a computer or otherwise to a
technological improvement, analogous to those deemed patent eligible in
McRO. Claim 8 recites an additional element that integrates the abstract
idea into a practical application, namely, causing a computing device to enter
data into a form. See 2019 Guidance at 54.
In summary, we conclude the claims 1–7 do not integrate the abstract
idea into a practical application so as to remove them from the realm of
reciting patent-ineligible abstract ideas, but that claims 8–20 do.
Accordingly, in the first part of the Alice/Mayo analysis, we conclude that
claims 1–7 are directed to an abstract idea, and that claims 8–20 are not
directed to an abstract idea. Because claims 8–20 are not directed to an
abstract idea, we do not need to analyze claims 8–20 under step 2B. We
continue our analysis only for claims 1–7.
2. Step 2B of 2019 Guidance – Do Claims 1-7 Recite Significantly More
Than the Abstract Idea
Regarding second part of the Alice/Mayo analysis, the Examiner finds
the elements of the claims, when considered individually or as an ordered
combination, do not recite significantly more than the abstract idea. Ans. 9.
In particular, the Examiner finds claim 1 recites
the additional elements of a non-transitory computer readable
medium, client computing device, and one or more computer
devices. Looking at the limitations as an ordered combination
adds nothing that is not already present when looking at the
elements taken individually. There is no indication that the
combination of elements improves the functioning of a
computer or improves another technology. Their collective
functions merely provide conventional computer
implementations.
Ans. 9. We agree.
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We find the steps beyond the recited abstract idea, such as “receive
[data]” and “execute a service call . . . including [data],” are directed to
insignificant extra-solution activity. As our reviewing court has explained,
such data gathering and transmissions simply provide data for other method
steps. See, e.g. CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
1370 (Fed. Cir. 2011) (“We have held that mere ‘[data-gathering] step[s]
cannot make an otherwise nonstatutory claim statutory.”’ (alterations in
original) (quoting In re Grams, 888 F.2d 835, 840 (Fed. Cir. 1989))); see
also 2019 Guidance at 55 (identifying “add[ing] insignificant extrasolution
activity to the” abstract idea as an example of when an abstract idea has not
been integrated into a practical application).
Appellant argues that claims 1–7 have an inventive concept when
considered as an ordered combination, relating to improving a user’s
interaction with network pages and/or other user interfaces that include form
fields by facilitating deterministic form filling, similar to that of BASCOM
Global Internet Services v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir.
2016). Reply Br. 16–17. In particular, Appellant argues that claim 1 recites
“a specific method of (1) receiving standardized data . . . (2) determining
that . . . a web form . . . has been requested . . . (3) receiving metadata . . .
(4) generating a subset of the requested data . . . (5) executing a service call .
. . including the subset of requested data items.” Reply Br. 17.
We disagree that the claims are analogous to those determined to be
patent-eligible in BASCOM. Claim 1 does not improve the performance of
the computer system itself. Thus, this case is unlike BASCOM, in which an
inventive concept was found in the ordered combination of limitations
providing for “the installation of a filtering tool at a specific location, remote
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from the end users, with customizable filtering features specific to each end
user.” 827 F.3d at 1350. Here, the claim elements beyond the abstract idea
recite only generic computer functions and components that are well-
understood, routine, and conventional—that is, receiving, storing, and
displaying data; such generic computer functions and components do not
convey an inventive concept. See Alice, 573 U.S. at 217. Appellant is
reminded that in most cases, “relying on a computer to perform routine tasks
more quickly or more accurately is insufficient to render a claim patent
eligible.” OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (citing
Alice, 573 U.S. at 224 (holding that “use of a computer to create electronic
records, track multiple transactions, and issue simultaneous instructions” is
not an inventive concept)); Intellectual Ventures I LLC v. Capital One Bank,
792 F.3d 1363, 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.”).
To the extent Appellant relies on the particular manipulation of data
recited as indicative of an inventive concept, we have determined above that
such steps amount to mental processes, which is categorized in the 2019
Guidance as an abstract idea. Appellant is reminded that “the ‘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 this court 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
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‘significantly more’ than that ineligible concept.” BSG Tech LLC v.
Buyseasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018).
We determine that the functions recited in Appellant’s claims 1–7 do
not add any meaningful limitations beyond generally linking the abstract
idea to the particular technological environment.
Accordingly, we sustain the Examiner’s rejection of claims 1–7 under
35 U.S.C. § 101 as patent-ineligible. We do not sustain the rejection of
claims 8–20 as patent-ineligible under 35 U.S.C. § 101.

II. Section 103 Rejection
Claim 1 recites a “web form requesting a plurality of requested data
items” and “receive metadata from a network data service, the metadata
including a mapping defining a correspondence between the plurality of
requested data items requested and the plurality of standardized data items.”
The Examiner finds that paragraph 27 of Cahoon teaches this limitation in
describing brand names and incentives that are linked to germane content via
a direct mapping with the generic functional names included in the required
item lists within instructional content. Final Act. 6.
Appellant contends that the germane content of Cahoon does not teach
a “plurality of requested data items” as claimed because the germane content
of Cahoon is not requested by a web form included in a network page
requested by a data consumer, as set forth in claim 1. Appeal Br. 8. The
Examiner does not address this argument in the Answer. See Ans. 19–20.
We agree with Appellant for the reasons given in the Appeal Brief.
We do not sustain the rejection of claims 1–7 under 35 U.S.C. § 103 as
unpatentable over Cahoon and Warren.
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Claim 8 recites “generate a subset of the plurality of requested data
items requested by the web form based at least in part on the metadata and
the plurality of standardized data items.” The Examiner finds that
paragraphs 26 and 27 of Cahoon teach that when content to be experienced
by the public is submitted, it will be encoded with resource description
framework for serialization and later processing. Final Act. 11. The
Examiner also finds that paragraphs 21, 72, and Figures 2–6 of Warren teach
displaying a pre-configured view for displaying a data item and a user-
accessible utility for altering the pre-configured display item to create user-
defined views. Id.
Appellant argues that the combination of Cahoon and Warren does not
teach “generate the plurality of data items requested by the form” as
claimed. Appeal Br. 12–13. We agree with Appellant for the reasons given
by Appellant in the Appeal Brief.
We do not sustain the rejection of claims 8–14 under 35 U.S.C. § 103
as unpatentable over Cahoon and Warren.
Claim 15 recites “receiving, via at least one of the one or more
computing devices, metadata from a network service, the metadata
comprising a mapping of a plurality of standardized data items to the
plurality of requested data items.” The Examiner finds that paragraph 27 of
Cahoon teaches this limitation in describing brand names and incentives that
are linked to germane content via a direct mapping with the generic
functional names included in the required item lists within instructional
content. Final Act. 14.
Appellant contends that the germane content of Cahoon does not teach
a “plurality of requested data items” as claimed because the germane content
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of Cahoon is not requested by a web form included in a network page
requested by a data consumer, as set forth in claim 1. Appeal Br. 13–14.
We agree with Appellant for the reasons given in the Appeal Brief.
We do not sustain the rejection of claims 15–20 under 35 U.S.C.
§ 103 as unpatentable over Cahoon and Warren.

III. New Ground of Rejection – 35 U.S.C. Section 102
As provided by 37 C.F.R. § 41.50(b), we reject independent claims 1,
8, and 15 under 35 U.S.C. § 102 as anticipated by Markus,8 and designate
this rejection as a new ground.9
Claim 1 recites “receive a plurality of standardized data items from a
network service corresponding to a data provider, the plurality of
standardized data items corresponding to standardized data types
promulgated by a metadata central authority.” Claim 8 recites “a data store
comprising a cache of metadata,” where “the metadata including a plurality
of standardized data items.” Markus discloses these limitations in describing
receiving a user’s raw data file corresponding to pre-named, standard fields
from raw data profile storage. Markus, Abstract, col. 5, ll. 6–9, 45–48, col.
8, ll. 50–58, col. 10, ll. 60–66, col. 13, ll. 49–50, Fig. 3B, Fig. 6.
Claim 1 recites “determine that a network page including a web form
has been requested by a data consumer, the web form requesting a plurality

8 U.S. Patent No. 6,490,601 B1 issued Dec. 3, 2002.
9 In the event of further prosecution, the Examiner should consider whether
dependent claims 2–7, 9–14, and 16–20 are patentable over Markus, either
alone or in combination with U.S. Patent No. 6,981,028 B1 issued Dec. 27,
2005 to Rawat et al., U.S. Patent No. 7,500,178 B1 issued Mar. 3, 2009 to
O’Donnell, or U.S. Patent No. 6,144,988 issued Nov. 7, 2000 to Kappel.
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19
of requested data items.” Claims 8 and 15 recite a similar limitation.
Markus discloses these limitations in describing receiving a request from a
user to fill in a form on the user’s computer. Markus, col. 8, ll. 15–19; see
id. at col. 6, ll. 39–40, col. 7, ll. 1–8, 41–62, col. 9, ll. 51–54, 66-67, Fig. 4A.
Claim 1 recites “receive metadata from a network data service, the
metadata including a mapping defining a correspondence between the
plurality of requested data items requested and the plurality of standardized
data items.” Claims 8 and 15 recite a similar limitation. Markus discloses
these limitations in describing receiving a form mapping containing a set of
associations between fields in the electronic form and the pre-named fields.
Markus, Abstract, col. 5, ll. 2–12, 35–38, 48–52, col. 8, ll. 24–27, col. 8, l.
65–col. 9, l. 18, col. 13, ll. 56–60, Figs. 3A and 3B, Fig. 6.
Claim 1 recites “generate a subset of the plurality of requested data
items requested by the web form based at least in part on the metadata and
the plurality of standardized data items.” Claims 8 and 15 recite a similar
limitation. Markus discloses these limitations in describing utilizing a form
mapping to attach a data string contained in the user’s raw data file to a field
in the electronic form. Markus, Abstract, col. 5, ll. 2–12, col. 10, l. 65–col.
11, l. 5, col. 14, ll. 5–28, Figs. 4A and 6.
Claim 1 recites “execute a service call to the data consumer including
the subset of the plurality of requested items.” Markus discloses this
limitation in describing constructing and transmitting an executable software
module to a remote computer, where the software module is constructed
such that once received by a browser displaying a form, it is executed and
user data is automatically inserted into a form. Markus, Abstract, col. 8, ll.
29–34, col. 10, ll. 43–51, col. 11, ll. 7–14, Fig. 4A.
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Claim 8 recites “cause the plurality of data items to be entered into the
form.” Claim 15 recites a similar limitation. Markus discloses these
limitations in describing a software module constructed such that once
received by a browser displaying a form, it is executed and user data is
automatically inserted into the form. Markus, Abstract, col. 4, ll. 62–65, col.
7, ll. 40–42, col. 8, ll. 22–34, col. 11, ll. 15–27, Figs. 4A and 4B.
Claim 8 recites “submit the form to the network server.” Markus
discloses this limitation in describing submitting the filled out electronic
form to the merchant’s web server. Markus, col. 12, ll. 11–14, Fig. 4B.

DECISION
The rejection of claims 1–7 under 35 U.S.C. § 101 is affirmed.
The rejection of claims 8–20 under 35 U.S.C. § 101 is reversed.
The rejection of claims 1–20 under 35 U.S.C. § 103 as unpatentable
over Cahoon and Warren is reversed.
Claims 1, 8, and 15 are rejected under 35 U.S.C. § 102.
The rejection of claims 1, 8, and 15 is a new ground of rejection.

CONCLUSION
In Summary:
Claims
Rejected
35 U.S.C. § References(s) Basis Affirmed Reversed New
Ground
1–7 101 Judicial Exception 1–7
8–20 101 Judicial Exception 8–20
1–20 103 Cahoon, Warren 1–20
Overall
Outcome
1–7 8–20

1, 8, 15
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This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b) (2011). Section 41.50(b) provides that “[a] new ground of
rejection . . . shall not be considered final for judicial review.”
Section 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record.
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).

AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)