Ceri Stuart. Jerome et al.

Patent Trials and Appeals Board

Jul 18, 2019

12242593 - (D) (P.T.A.B. Jul. 18, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/242,593 09/30/2008 Ceri Stuart Jerome 2043.584US1 8921
49845 7590 07/18/2019
SCHWEGMAN LUNDBERG & WOESSNER/EBAY
P.O. BOX 2938
MINNEAPOLIS, MN 55402
EXAMINER
OFORI-AWUAH, MAAME
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
07/18/2019 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):
SLW@blackhillsip.com
USPTO@SLWIP.COM
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CERI STUART JEROME and MANISH JAIN
____________

Appeal 2018-0024461
Application 12/242,5932
Technology Center 3600
____________

Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and
NINA L. MEDLOCK, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 26, 29–45, 49, 51, 52, and 54–57. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 Our decision references Appellants’ Appeal Brief (“App. Br.,” filed
June 26, 2017) and Reply Brief (“Reply Br.,” filed January 2, 2018), and the
Examiner’s Answer (“Ans.,” mailed October 30, 2017) and Final Office
Action (“Final Act.,” mailed December 27, 2016).
2 Appellants identify eBay Inc. as the real party in interest. App. Br. 2.
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CLAIMED INVENTION
Appellants describe that the claimed invention “relate[s] generally to
the technical field of data management, and in one specific example, to a
system and a method for organizing meet-ups based on transaction
information” (Spec. ¶ 1).
Claims 26, 40, and 49 are the independent claims on appeal.
Claim 26, reproduced below with bracketed notations added, is illustrative
of the claimed subject matter:
26. A method of automatically generating suggestions
of meet-up events for presentation in a user interface of a client
system of a first user of a network-based publication system and
automatically communicating invitations pertaining to at least
one of the suggested meet up events to client systems of a subset
of other users of the network-based publication system based on
a selection of the at least one of the suggested meet-up events
being made by the first user via the user interface, the method
comprising:
[(a)] receiving a definition of an inclusion zone from the
client system of the first user;
[(b)] receiving listings from client systems of the other
users of the network-based publication system;
[(c)] identifying a subset of the listings based on
associations between the subset of the listings and the inclusion
zone;
[(d)] identifying popularities of the subset of the listings
based on a number of closed transactions pertaining to each of
the subset of the listings;
[(e)] generating the suggestions of the meet-up events for
presentation in the user interface of the client system of the first
user, each of the suggestions including a meet-up location and a
set of meet-up listings, the meet-up location based on the
inclusion zone and the set of meet-up listings based on the
identifying of the subset of the listings and the identifying of the
popularities of the subset of the listings; and
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[(f)] communicating the invitations to the client systems
of the subset of the other users based on the selection of the at
least one of the suggested meet-up events being made by the first
user via the user interface, the subset of the other users
corresponding to the set of meet-up listings included in the at
least one of the suggested meet-up events.
REJECTION
Claims 26, 29–45, 49, 51, 52, and 54–57 are rejected under 35 U.S.C.
§ 101 as directed to a judicial exception without significantly more.
ANALYSIS
Appellants argue the independent claims as a group (App. Br. 19–28).
We select independent claim 26 as representative. Independent claims 40
and 49 stand or fall with claim 26. See 37 C.F.R. §41.37(c)(1)(iv).
Appellants argue that dependent claims 29–39, 41–45, 51, 52, and 54–
57 are directed to patent-eligible subject matter both based on their
dependence from claims 26, 40, and 49 (see App. Br. 28), and independently
of the independent claims (id. at 28–31).
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 Supreme Court, however, has long 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).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), “for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
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patent-eligible applications of those concepts.” Alice Corp., 573 U.S. at 217.
The first step in that analysis is to “determine whether the claims at issue are
directed to one of those patent-ineligible concepts.” Id. If the claims are not
directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry
ends. Otherwise, the inquiry proceeds to the second step where the elements
of the claims are considered “individually and ‘as an ordered combination’”
to determine whether there are additional elements that “‘transform the
nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo,
566 U.S. at 79, 78). This is “a 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 (alteration in original).
Applying the Mayo/Alice framework, and treating independent
claim 26 as representative, the Examiner determined here that the pending
claims are directed to an abstract idea similar to other concepts that the
courts have held abstract (id. at 9 (explaining that the “activities” recited in
claim 26 are similar to those held abstract in SmartGene3 in that “claim 26
describes using new/stored information (e.g.[,] inclusion zone, listings,
popularities of the subset of listings) and rules (e.g.[,] user selection) to
identify options (e.g.[,] suggestions of the meet-up events, communication of
invitations)),” and that certain steps of the claimed method represent steps
that are performable by a human user, which “further underscor[es] that the
claim is directed to an abstract idea”))). The Examiner also determined that
the claims do not include additional elements that are sufficient to amount to

3 SmartGene, Inc. v. Advanced Biological Labs, SA, 555 F. App’x 950
(Fed. Cir. 2014).
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significantly more than the judicial exception (id. at 10–11), noting that the
additional elements in representative claim 26, i.e., “a network-based
publication system to perform the step of receiving of listings” and a “user
interface of the client system,” simply limit the abstract idea to a particular
technological environment or include the use of a generic computer to
perform generic computer functions, i.e., receiving user selections and
displaying information (id. at 10).
Appellants maintain that the § 101 rejection cannot be sustained at
least because the Examiner has failed to establish a prima facie case of
patent-ineligibility (App. Br. 19–23; see also Reply Br. 2–34). In this regard,
Appellants argue that the Examiner’s failure to establish a prima facie case
is “readily apparent” in that the Examiner has failed to articulate the concept
to which the claims are directed with enough specificity to ensure that the
inquiry under step one of the Mayo/Alice framework is meaningful, and also
apparent in that the Examiner has failed to adequately explain why any
additional elements do not add significantly more to the judicial exception
(id.).
We agree that the Examiner could have provided additional analysis
in the Final Office Action. But we are not persuaded that the rejection is so
uninformative as to fail to comply with the notice requirement of 35 U.S.C.
§ 132 — the standard by which the sufficiency of the Examiner’s rejection is
properly assessed. See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011)
(holding that the USPTO carries its procedural burden of establishing a

4 We note that the pages of Appellants’ Reply Brief are unnumbered; we
refer to the title page as page 1 and treat the pages that follow as though
consecutively numbered.
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prima facie case when its rejection satisfies the requirements of 35 U.S.C.
§ 132); Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990) (“Section
132 is violated when a rejection is so uninformative that it prevents the
applicant from recognizing and seeking to counter the grounds for
rejection.”). See also “July 2015 Update: Subject Matter Eligibility,”5 p. 6
(setting forth a general notice requirement to establish a prima facie rejection
under 35 U.S.C. § 101); May 4, 2016 Memorandum, p. 2 (“[T]he rejection . .
. must provide an explanation . . . which [is] sufficiently clear and specific to
provide applicant sufficient notice of the reasons for ineligibility and enable
the applicant to effectively respond.”) (emphasis added).
We also note, for the record, that the Examiner provides additional
analysis in the Answer, specifically addressing the concept to which
Appellants maintain the claims are directed, i.e., “automatically generating
suggestions of meet-up events for presentation in a user interface of a client
system of a first user of a network-based publication system” and
“automatically communicating invitations pertaining to at least one of the
suggested meet up events to client systems of a subset of other users of the
network-based publication system based on a selection of the at least one of
the suggested meet-up events being made by the first user via the user
interface” (see, e.g., Ans. 6–7).
After Appellants’ briefs were filed, and the Examiner’s Answer
mailed, the USPTO published revised guidance for use by USPTO personnel
in evaluating subject matter eligibility under 35 U.S.C. § 101.
2019 REVISED PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE,

5 Available at https://www.uspto.gov/sites/default/files/documents/ieg-july-
2015-update.pdf.
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84 Fed. Reg. 50, 57 (Jan. 7, 2019) (the “2019 Revised Guidance”). That
guidance revised the USPTO’s examination procedure with respect to the
first step of the Mayo/Alice framework by (1) providing groupings of subject
matter that is considered an abstract idea; and (2) clarifying that a claim is
not “directed to” a judicial exception if the judicial exception is integrated
into a practical application of that exception. Id. at 50. The 2019 Revised
Guidance, by its terms, applies to all applications, and to all patents resulting
from applications, filed before, on, or after January 7, 2019. Id.
Step One of the Mayo/Alice Framework (2019 Revised Guidance, Step 2A)
The first step in the Mayo/Alice framework, as mentioned above, is to
“determine whether the claims at issue are “directed to” a patent-ineligible
concept, e.g., an abstract idea. Alice Corp., 573 U.S. at 217. This first step,
as set forth in the 2019 Revised Guidance (i.e., Step 2A), is a two-prong test;
in Step 2A, Prong One, we look to whether the claim recites a judicial
exception, e.g., one of the following three groupings of abstract ideas:
(1) mathematical concepts; (2) certain methods of organizing human
activity, e.g., fundamental economic principles or practices, commercial or
legal interactions; and (3) mental processes. 2019 Revised Guidance,
84 Fed. Reg. at 54. If so, we next consider whether the claim includes
additional elements, beyond the judicial exception, “that integrate the
[judicial] exception into a practical application,” i.e., that apply, rely on, or
use the judicial exception in a manner that imposes a meaningful limit on the
judicial exception, such that the claim is more than a drafting effort designed
to monopolize the judicial exception (“Step 2A, Prong Two”). Id. at 54-55.
Only if the claim (1) recites a judicial exception and (2) does not integrate
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that exception into a practical application do we conclude that the claim is
“directed to” the judicial exception, e.g., an abstract idea.
Here, we are not persuaded by Appellants’ argument that the
Examiner erred in determining that the claims are directed to an abstract idea
(App. Br. 23–25). The Federal Circuit has explained that “the ‘directed to’
inquiry applies a stage-one filter to claims, considered in light of the
[S]pecification, based on whether ‘their character as a whole is directed to
excluded subject matter.’” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327,
1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network,
Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). It asks whether the focus of the
claims is on a specific improvement in relevant technology or on a process
that itself qualifies as an “abstract idea” for which computers are invoked
merely as a tool. See id. at 1335–36. Here, it is clear from the Specification,
including the claim language, that the claims focus on an abstract idea, and
not on any improvement to computer technology and/or functionality.
The Specification is entitled “TRANSACTION INFORMATION
BASED MEET-UPS,” and states that embodiments of the present invention
relate generally to data management, and in one specific example, to
organizing meet-ups based on transaction information (Spec. ¶ 1). The
Background section of the Specification describes that with the advancement
of communication and networking technologies, more and more people
spend time on the Internet, e.g., searching for information, shopping, and
participating in discussion forums and social networking (id. ¶ 2). Service
providers and online businesses try to reach potential clients and customers
via, for example, online advertisements, and electronic messaging; the
widespread use of handheld communication devices, e.g., cell phones and
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personal data assistants (PDAs), also has made users of such devices easy
targets for online advertisements and online transactions (id.).
The Specification discloses that embodiments of the present invention
include organizing meet-ups based on transaction information, and describes
that in an exemplary embodiment, a server associated with an online
publication system receives an inclusion zone, e.g., a selection of a
geographical area, from a first user (id. ¶¶ 17, 18). The server identifies
listings, e.g., offers to buy or sell goods or services, in the online publication
system associated with the inclusion zone, e.g., buyers/sellers within a
predefined radium from the location of the scheduled meet-up (id. ¶ 18), and
forwards suggested meet-up events, including a meet-up location and a set
of meet-up listings, to the first user for consideration (id.). Invitations are
then communicated to other users based on the first user’s selection of one
or more of the suggested events; the invitees may be related to one or more
of the listings in the online publication system associated with the user-
defined inclusion zone (id.).
Consistent with this disclosure, claim 26 recites a method of
automatically generating suggestions of meet-up events for presentation to a
first user of a network-based publication system by: (1) receiving
information from publication system users — an inclusion zone from the
first user and listings from other users, i.e., “receiving a definition of an
inclusion zone from the client system of the first user” and “receiving
listings from client systems of the other users of the network-based
publication system” (steps (a) and (b)); (2) analyzing the information —
identifying listings associated with the inclusion zone, determining the
popularity of the listings, and generating meet-up event suggestions, i.e.,
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“identifying a subset of the listings based on associations between the subset
of the listings and the inclusion zone,” “identifying popularities of the subset
of the listings based on a number of closed transactions pertaining to each of
the subset of the listings,” and “generating the suggestions of the meet-up
events for presentation in the user interface of the client system of the first
user . . . including a meet-up location and a set of meet-up listings . . . based
on the inclusion zone and . . . on the identifying of the subset of the listings
and the identifying of the popularities of the subset of the listings” (steps (c),
(d), and (e)); and (3) presenting the results of the collection and analysis —
presenting meet-up event suggestions to the first user and forwarding
invitations to a selected meet-up event to other users, who correspond to
listings for the selected event, i.e., “communicating the invitations to the
client systems of the subset of the other users based on the selection of the at
least one of the suggested meet-up events being made by the first user via
the user interface” (step (f)). Simply put, and consistent with Appellants’
own characterization (see App. Br. 20), claim 26 recites generating
suggestions of meet-up events for presentation to a first user of a network-
based publication system and communicating invitations to at least one of
the suggested meet up events to a subset of other users of the network-based
publication system based on a selection of at least one of the suggested
meet-up events by the first user — in other words, managing relationships or
interactions between people, which is a method of organizing human activity
and, therefore, an abstract idea. See 2019 Revised Guidance, 84 Fed. Reg.
at 52.
The Federal Circuit has held similar concepts to be abstract. Thus, for
example, the Federal Circuit has held that abstract ideas include receiving
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and sending information over a network — with no further details or
specification, see, e.g., buySAFE, Inc. v. Google, Inc., 765 F.3d 1350
(Fed. Cir. 2014) (“That a computer receives and sends the information over
a network — with no further specification—is not even arguably
inventive.”), and that abstract ideas also include collecting data, analyzing
the data, and displaying the results of the collection and analysis, including
when limited to particular content. See, e.g., Intellectual Ventures I LLC v.
Capital One Fin. Corp., 850 F.3d 1332, 1340 (Fed. Cir. 2017) (identifying
the abstract idea of collecting, displaying, and manipulating data); Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016)
(characterizing collecting information, analyzing information by steps
people go through in their minds, or by mathematical algorithms, and
presenting the results of collecting and analyzing information, without more,
as matters within the realm of abstract ideas). Networking technologies,
including social networking, also are a known technique for facilitating
human interactions, including targeting potential clients and customers
(Spec. ¶ 2).
Having concluded that claim 26 recites a judicial exception, i.e., an
abstract idea (Step 2A, Prong 1), we next consider whether the claim recites
“additional elements that integrate the judicial exception into a practical
application” (Step 2A, Prong 2).
The Examiner determined, and we agree, that the only elements
recited in claim 26, beyond the abstract idea, are the clamed “network-based
publication system” and “client systems,” including a “user interface” —
elements that, as the Examiner observes, are described in the Specification at
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a high level of generality (Final Act. 10), i.e., as generic computer
components (see, e.g., Spec. ¶¶ 17, 23, 47–51).
We find no indication in the Specification, nor do Appellants direct us
to any indication, that the operations recited in claim 26 invoke any
assertedly inventive programming, require any specialized computer
hardware or other inventive computer components, i.e., a particular machine,
or that the claimed invention is implemented using other than generic
computer components to perform generic computer functions. See DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014)
(“[A]fter Alice, there can remain no doubt: recitation of generic computer
limitations does not make an otherwise ineligible claim patent-eligible.”).
We also find no indication in the Specification that the claimed
invention effects a transformation or reduction of a particular article to a
different state or thing. Nor do we find anything of record, short of attorney
argument, that attributes an improvement in technology and/or a technical
field to the claimed invention or that otherwise indicates that the claimed
invention integrates the abstract idea into a “practical application,” as that
phrase is used in the 2019 Revised Guidance.6
Appellants maintain that the claims are not directed to an abstract
idea, and summarily assert that, as with the self-referential table in Enfish,

6 The Revised Guidance references the MANUAL OF PATENT EXAMINING
PROCEDURE (“MPEP”) § 2106.05(a)–(c) and (e)–(h) in describing the
considerations that are indicative that an additional element or combination
of elements integrates the judicial exception, e.g., the abstract idea, into a
practical application. Id. at 55. If the recited judicial exception is integrated
into a practical application, as determined under one or more of these MPEP
sections, the claim is not “directed to” the judicial exception.
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“the plain focus of the claims at issue . . . is an improvement to computer
functionality, . . . not on economic or other tasks for which a computer is
used in its ordinary capacity” (App. Br. 23). Yet, we fail to see how, and
Appellants have not explained how, the court’s holding in Enfish impacts the
present analysis under the Mayo/Alice framework. For example, Appellants
do not point to anything in the claims that resembles the inventive self-
referential data structure at issue in Enfish. We also find nothing in the
Specification, nor do Appellants direct us to anything in the Specification,
that attributes an improvement in computer functionality to the claimed
invention.
Specifically referencing independent claim 40, Appellants argue that
“one or more modules are incorporated into the network-based publication
system to configure one or more processors of the network-based
publication system to perform the recited operations” and that a person
skilled in the art would understand that a generic computer would be
incapable of performing these recited operations (App. Br. 27). Yet, as
described above, we find nothing in the Specification to indicate that the
operations recited in the claims, including in claim 40, require any
specialized or inventive computer component, invoke any assertedly
inventive programming, or that the claimed invention is implemented using
other than generic computer components. Cf. In re Katz Interactive Call
Processing Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011) (“Absent a
possible narrower construction of the terms ‘processing,’ ‘receiving,’ and
‘storing,’ . . . those functions can be achieved by any general purpose
computer without special programming”).
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Responding to the Examiner’s Answer, Appellants argue in the Reply
Brief that Figure 1 (reference numerals 180–186) and corresponding
paragraphs 17–22 of the Specification show that a computer is changed and
improved, and that further changes and improvements to the computer are
described with respect to other figures (Reply Br. 5). But, even accepting
Appellants’ argument, there is a fundamental difference between computer
functionality improvements, on the one hand, and uses of existing computers
as tools to perform a particular task, on the other. Indeed, the Federal
Circuit applied this distinction in Enfish in rejecting a § 101 challenge at the
step one stage in the Alice analysis because the claims at issue focused on a
specific type of data structure, i.e., the self-referential table, designed to
improve the way a computer carries out its basic functions of storing and
retrieving data, and not on asserted advances in uses to which existing
computer capabilities could be put. Id. at 1335–36.
We find no parallel here between the pending claims and the claims in
Enfish nor any comparable aspect in the present claims that represents “an
improvement to computer functionality.” The alleged changes to which
Appellants refer do not concern an improvement to computer capabilities but
instead relate to the implementation of various tasks, e.g., displaying a map
on a user interface, for which a computer is used in its ordinary capacity.
Appellants further assert in the Reply Brief that the claimed concept,
i.e., “automatically generating suggestions of meet-up events for
presentation in a user interface of a client system of a first user of a network-
based publication system” and “automatically communicating invitations
pertaining to at least one of the suggested meet up events to client systems of
a subset of other users of the network-based publication system based on a
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selection of the at least one of the suggested meet-up events being made by
the first user via the user interface,” is more similar to concepts that the
courts have identified as directed to patent-eligible subject matter than it is
to concepts that the courts have identified as patent-ineligible subject matter,
and that the claims are directed to “a user interface improvement, as in, for
example, DDR Holdings and Trading Tech. v. CQG [Trading Technologies
International v. CQG Inc., 675 F. App’x 1001 (Fed. Cir. 2017)]” (Reply
Br. 4–5; see also id. at 8). Yet, we find nothing in the Specification, nor do
Appellants direct to anything in the Specification, to indicate that claimed
invention involves more than simply displaying information on a generic
user interface.
In Trading Technologies, where the Federal Circuit affirmed the
district court’s holding that the patented claims (which recited a method and
system for displaying market information on a graphical user interface) were
not directed to an abstract idea, the district court found, and the Federal
Circuit agreed, that the challenged patents did not simply claim displaying
information on a graphical user interface; instead, the claims required “a
specific, structured graphical user interface paired with a prescribed
functionality directly related to the graphical user interface’s structure that is
addressed to and resolves a specifically identified problem in the prior state
of the art.” Id. at 1004.7 The Federal Circuit, thus, found that the district

7 Specifically, the district court found that with prior art GUIs, the best bid
and best ask prices changed based on updates received from the market;
therefore, there was a risk with these GUIs that a trader would miss her
intended price as a result of prices changing from under her pointer at the
time she clicked on the price cell on the GUI. The patents-in-suit provided a
system and method whereby traders could place orders at a particular,
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court’s ruling was in accord with precedent that has recognized that “specific
technologic modifications to solve a problem or improve the functioning of a
known system generally produce patent-eligible subject matter.” Id.
at 1004–05
Appellants assert here that the claims are directed to a user interface
improvement (Reply Br. 4). But Appellants do not identify any problem
with prior user interfaces that the present interface was specifically designed
to resolve.
The present claims, in our view, are like those claims that the courts in
Trading Technologies distinguished as patent-ineligible. Rather than
solving a technological problem, the present claims simply call for
displaying certain information in a user interface. See Trading Techs.,
2015 WL 774655, at *4 (“If the claims simply provided for ‘setting,
displaying, and selecting’ data information, CQG would be correct in its
assessment that the claims are directed to an abstract idea”); Trading Techs.,
675 F. App’x at 1005 (“ineligible claims generally lack steps or limitations
specific to a solution of a problem, or improvement in the functioning of
technology”).
Finally, we are not persuaded of Examiner error by Appellants’
argument that the claims are not directed to an abstract idea because the
specific claim limitations “do[ ] not preempt approaches that identify meet-
up locations in a different way or communicate invitations based on different

identified price level, not necessarily the highest bid or the lowest ask price
by keeping the prices static in position, and allowing the quantities at each
price to change. Trading Techs. Int’l, Inc. v. CQG, Inc., No. 05-cv-4811,
2015 WL 774655 *4 (N.D. Ill. Feb. 24, 2015).
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factors” (App. Br. 24; see also Reply Br. 6). There is no dispute that the
Supreme Court has described “the concern that drives [the exclusion of
abstract ideas from patent eligible subject matter] as one of pre-emption.”
Alice Corp., 573 U.S. at 216. But, characterizing preemption as a driving
concern for patent eligibility is not the same as characterizing preemption as
the sole test for patent eligibility. “The Supreme Court has made clear that
the principle of preemption is the basis for the judicial exceptions to
patentability” and “[f]or this reason, questions on preemption are inherent in
and resolved by the § 101 analysis.” Ariosa Diagnostics, Inc. v. Sequenom,
Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (citing Alice Corp., 573 U.S.
at 216–17). “[P]reemption may signal patent ineligible subject matter, [but]
the absence of complete preemption does not demonstrate patent eligibility.”
Id.
We conclude, for the reasons outlined above, that claim 26 recites a
method of organizing human activity, i.e., an abstract idea, and that the
additional elements recited in the claim are no more than generic computer
components used as tools to perform the recited abstract idea. As such, they
do not integrate the recited abstract idea into a practical application. See
Alice Corp., 573 U.S. at 223–24 (“[W]holly generic computer
implementation is not generally the sort of ‘additional feature[e]’ that
provides any ‘practical assurance that the process is more than a drafting
effort designed to monopolize the [abstract idea] itself.’” (quoting Mayo,
566 U.S. at 77)). Accordingly, we agree with the Examiner that claim 26 is
directed to an abstract idea.
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Step Two of the Mayo/Alice Framework (2019 Revised Guidance, Step 2B)
Having determined under step one of the Mayo/Alice framework that
claim 26 is directed to an abstract idea, we next consider under Step 2B of
the 2019 Revised Guidance, the second step of the Mayo/Alice framework,
whether claim 26 includes additional elements or a combination of elements
that provide an “inventive concept,” i.e., whether the additional elements
amount to “significantly more” than the judicial exception itself. 2019
Revised Guidance, 84 Fed. Reg. at 56.
Appellants argue that even if the claims are directed to an abstract
idea, the claims are nonetheless patent-eligible because “the specific
implementation set forth in the claim limitations shows that the claims . . .
are directed to ‘significantly more’” than an abstract idea (App. Br. 25).
Appellants attempt to draw an analogy between the present claims and those
at issue in BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC,
827 F.3d 1341 (Fed. Cir. 2016), arguing that “the pending claims are ‘not an
abstract-idea-based solution implemented with generic technical components
in a conventional way’” but instead “recite a specific solution for ‘generating
suggestions of meet-up events’ and ‘communicating invitations pertaining to
at least one of the suggested meet-up event[s] to client systems of a subset of
the other users’” (id. at 26; see also Reply Br. 7–8). But we can find no
parallel between the pending claims and those at issue in BASCOM.
There, the Federal Circuit held that the second step of the Mayo/Alice
framework was satisfied because the claimed invention “represents a
‘software-based invention[ ] that improve[s] the performance of the
computer system itself.’” BASCOM, 827 F.3d at 1351 (stating that like DDR
Holdings, where the patent “claimed a technical solution to a problem
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unique to the Internet,” the patent in BASCOM claimed a “technology-based
solution . . . to filter content on the Internet that overcomes existing
problems with other Internet filtering systems . . . making it more dynamic
and efficient”) (citations omitted). We are not persuaded that “generating
suggestions of meet-up events” and “communicating invitations pertaining
to at least one of the suggested meet-up event[s] to . . . other users” is a
technological improvement comparable to the situation in BASCOM. And to
the extent Appellants maintain that the claims are patent-eligible because
they recite a “specific solution” for generating suggestions of meet-up events
and communicating inventions to at least one of the suggested meet-up
events (App. Br. 26), we note that a specific abstract idea is still an abstract
idea. For example, “cases have not distinguished among different laws of
nature according to whether or not the principles they embody are
sufficiently narrow.” Mayo, 566 U.S. at 88–89 (citing Parker v. Flook,
437 U.S. 584 (1978) (holding narrow mathematical formula unpatentable)).
Appellants also misapprehend the controlling precedent to the extent
Appellants maintain that “the recited operations are not conventional
operations, as evidenced by the fact that there is not even a novelty (102) or
obviousness (103) rejection outstanding in this case” (App. Br. 26–27).
Neither a finding of novelty nor a non-obviousness determination
automatically leads to the conclusion that the claimed subject matter is
patent-eligible. Although the second step in the Mayo/Alice 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 significantly more than a patent upon the [ineligible
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concept] itself.’” Alice Corp., 573 U.S. at 217–18 (citation omitted).
“Groundbreaking, innovative, or even brilliant discovery does not by itself
satisfy the § 101 inquiry.” Ass’n for Molecular Pathology v. Myriad
Genetics, Inc., 569 U.S. 576, 591 (2013). A novel and non-obvious claim
directed to a purely abstract idea is, nonetheless, patent-ineligible. See
Mayo, 566 U.S. at 90; see also Diamond v. Diehr, 450 U.S. 175, 188–89
(1981) (“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.”).
We are not persuaded, on the present record, that the Examiner erred
in rejecting independent claim 26 under 35 U.S.C. § 101. Therefore, we
sustain the Examiner’s rejection of claim independent 26, and independent
claims 40 and 49, which fall with claim 26.
Appellants’ Separate Arguments Regarding the Dependent Claims
We decline Appellants’ invitation to find error in the Examiner’s
decision not to address the patent-eligibility of each of the dependent claims
separately (App. Br. 28). There is no dispute that examiners are instructed
to evaluate the patent-eligibility of each claim individually. But,
consideration of each claim individually does not require a separate written
analysis for each individual claim. Moreover, we agree with the Examiner
that the pending claims are all directed to the same abstract idea, albeit at
differing levels of specificity. Cf. Content Extraction & Transmission LLC
v. Wells Fargo Bank, N.A., 776 F.3d 1343, 1348 (Fed. Cir. 2014) (explaining
that when all claims are directed to the same abstract idea, “addressing each
claim of the asserted patents [is] unnecessary.”).
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Appellants maintain that dependent claims 29–39, 41–45, 51, 52, and
54–57 are directed to patent-eligible subject matter independently of the
independent claims. But aside from summarily asserting that the additional
recited elements “distinguish the concept to which the claims are directed
from any of the cases cited by the Examiner” and that “these additional
elements further limit the preemption concerns,”8 (App. Br. 28–31; see also
Reply Br. 9–10), Appellants offer no substantive arguments for the patent-
eligibility of these dependent claims.
We are not persuaded, on the present record, that the Examiner erred
in rejecting these dependent claims under 35 U.S.C. § 101. Therefore, we
sustain the Examiner’s rejection.
DECISION
The Examiner’s rejection of claims 26, 29–45, 49, 51, 52, and 54–57
under 35 U.S.C. § 101 is affirmed.
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

8 As described above, the absence of complete preemption does not
demonstrate patent-eligibility.