David Hardtke et al.

Patent Trials and Appeals Board

Aug 2, 2019

14318467 - (D) (P.T.A.B. Aug. 2, 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.
14/318,467 06/27/2014 David Hardtke 901857-US-
CNT (3080.280US
8752
45839 7590 08/02/2019
Schwegman Lundberg & Woessner / LinkedIn/Microsoft
PO BOX 2938
MINNEAPOLIS, MN 55402
EXAMINER
OUELLETTE, JONATHAN P
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
08/02/2019 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):
USPTO@slwip.com
slw@blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte DAVID HARDTKE, JACOB BOLLINGER, BEN MARTIN, and
EDUARDO VIVAS
____________________

Appeal 2018-004946
Application 14/318,4671
Technology Center 3600
____________________

Before ST. JOHN COURTENAY III, LARRY J. HUME, and
PHILLIP A. BENNETT, Administrative Patent Judges.

BENNETT, 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 1, 2, 4–12, and 14–22. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.

1 Appellants’ Brief (“App. Br.”) identifies Microsoft Technology Licensing,
LLC as the real party in interest. App. Br. 2.
Appeal 2018-004946
Application 14/318,467

2
RELATED APPEAL
Appellants identify Appeal No. 2018-004893 (Application No.
13/662,312) as a related proceeding. We decide the related appeal in a
separate contemporaneously-issued decision.

CLAIMED SUBJECT MATTER
The claimed subject matter relates to methods of “providing a
candidate with a score for a particular job opening, as well as notifying
employers that one or more high scoring candidates for a job opening have
been identified.” Spec. ¶ 1, Title. Claim 1, reproduced below, is illustrative
of the claimed subject matter:
1. A method comprising:
receiving a resume of a candidate, the resume having a tag
indicating an interest level that the candidate has in finding
employment;
receiving a job opening provided by an employer;
receiving information about the candidate from a social
media source, the information including a first-degree
connection of the candidate that is employed by the employer;
identifying a plurality of job features in the job opening;
identifying a plurality of candidate features based on the
received resume and the received information about the
candidate from the social media source;
determining that the interest level exceeds a particular
interest level; and
in response to the determination, calculating, using one or
more processors, a suitability score for the job opening based on
the plurality of candidate features and the plurality of job
features, and wherein the suitability score is further based on
salary information associated with positions that the candidate
had previously held.
App. Br. 19 (Claims App’x).
Appeal 2018-004946
Application 14/318,467

3
REJECTION
Claims 1, 2, 4–12, and 14–22 stand rejected under 35 U.S.C. § 101 as
being directed to ineligible subject matter. Final Act. 2.

ANALYSIS
Legal Standard
In issues involving subject matter eligibility, our inquiry focuses on
whether the claims satisfy the two-step test set forth by the Supreme Court in
Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208 (2014). The Supreme
Court instructs us to “[f]irst . . . determine whether the claims at issue are
directed to [a] . . . patent-ineligible concept[]” (id. at 217), and, in this case,
the inquiry centers on whether the claims are directed to an abstract idea. If
the initial threshold is met, we then move to the second step, in which we
“consider the elements of each claim both individually and ‘as an ordered
combination’ to determine whether the additional elements ‘transform the
nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 79, 78 (2012)).
The Supreme Court describes the second step as 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.’” Alice, 573 U.S. at 217–18 (quoting
Mayo, 566 U.S. at 72–73).
The USPTO recently published revised guidance on the application of
§ 101. USPTO’s 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (Jan. 7, 2019) (“Memorandum”). Under that guidance, we
first look to whether the claim recites:
Appeal 2018-004946
Application 14/318,467

4
(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) (9th Ed., Rev. 08.2017, 2018)).
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 is not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Memorandum.
Examiner’s Findings and Conclusion
In the first step of the Alice inquiry, the Examiner determines the
claims are directed to an abstract idea of “identifying an employment
candidate.” Final Act. 2.
At Alice step 2, the Examiner determines the claims do not recite
elements sufficient to amount to significantly more than the judicial
exception because:
(A) the additional elements or combination of elements in the
independent claims are recitation of generic computer structure
(i.e. a processor to execute instructions to perform the method),
which serves to perform generic computer functions that are
Appeal 2018-004946
Application 14/318,467

5
well-understood, routine, and conventional activities previously
known to the pertinent industry, and do not add a meaningful
limitation to the abstract idea because they would be routine in
any computer implementation. The processor system in the
instant application merely receives, processes and stores data.
The functions of the computer are well-understood and
conventional activities known in the art. (B) because the claims
do not recite an improvement to another technology or technical
field, an improvement to the functioning of the computer itself,
or meaningful limitations beyond generally linking the use of an
abstract idea to a particular technological environment. The
limitations are merely instructions to implement the abstract idea
on a computer and require no more than a generic computer to
perform generic computer functions that are well-understood,
routine and conventional activities previously known to the
industry.
Final Act. 3–4.
The Examiner further determines
[U]nlike the claims at issue in Enfish, which involved a “specific
type of data structure designed to improve the way a computer
stores and retrieves data in memory,” 822 F.3d at 1339, [the
claims] . . . do not improve or change the way a computer
functions; rather, they are directed to the use of conventional or
generic technology in a nascent but well known environment,
without any claim that the invention reflects an inventive
solution to any problem presented by combining the two. Nor do
the claims overcome a problem unique to the Internet as was the
case in DDR Holdings. 773 F.3d at 1258–59.
Final Act. 6.
Appellants’ Contentions
Appellants present several arguments in favor of eligibility of the
claims.2 First, Appellants argue the Examiner “fails to fully analyze the
claim elements, individually or in their ordered combination.” App. Br. 8.

2 Appellants’ arguments do not argue any particular claim with specificity.
Appeal 2018-004946
Application 14/318,467

6
Appellants further argue “the Examiner fails to show that the claimed
features of using a job candidate’s a first-degree connection of the candidate
that is employed by the employer is a well-known, routine, and conventional
activity in the pertinent industry.” App. Br. 9. Appellants further contend
the claims are inextricably tied to a computer, and that “Appellants’ use of
Internet-based social connection external data improves the technology of
simple keyword matching of job candidate data to job opening data.” App.
Br. 11–13.
Revised Guidance, Step 2A, Prong One 3
The Judicial Exception
Applying the guidance set forth in the Memorandum, we are not
persuaded of Examiner error. The Memorandum instructs us first to
determine whether any judicial exception to patent eligibility is recited in the
claim. The guidance identifies three judicially-excepted groupings:
(1) mathematical concepts, (2) certain methods of organizing human activity
such as fundamental economic practices, and (3) mental processes. We
focus here on the third grouping—mental processes. See Memorandum.
Claim 1 recites4 the following limitations: (1) “receiving a resume of a
candidate, the resume having a tag indicating an interest level that the

3 Throughout this opinion, we give the claim limitations the broadest
reasonable interpretation consistent with the Specification. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
4 We select claim 1 as representative. 37 C.F.R. § 41.37(c)(iv) (“When
multiple claims subject to the same ground of rejection are argued as a group
or subgroup by appellant, the Board may select a single claim from the
group or subgroup and may decide the appeal as to the ground of rejection
with respect to the group or subgroup on the basis of the selected claim
alone.”).
Appeal 2018-004946
Application 14/318,467

7
candidate has in finding employment,” (2) “receiving a job opening provided
by an employer,” (3) “receiving information about the candidate from a
social media source, the information including a first-degree connection of
the candidate that is employed by the employer,” (4) “identifying a plurality
of job features in the job opening,” (5) “identifying a plurality of candidate
features based on the received resume and the received information about
the candidate from the social media source,” (6) “determining that the
interest level exceeds a particular interest level,” and (8) “calculating . . . a
suitability score for the job opening based on the plurality of candidate
features and the plurality of job features, and wherein the suitability score is
further based on salary information associated with positions that the
candidate had previously held.” App. Br. 19 (Claims Appendix).
These limitations, under their broadest reasonable interpretation,
recite mental processes as defined in the guidance. This is so because the
limitations all recite steps that a person can perform in his mind or with the
aid of pen and paper. For example, limitations (1), (2), and (3) recite
receiving resumes and job descriptions and also receiving information about
a person from a social media source. These limitations encompass a person
being handed printouts of a stack of resumes and social media webpages
having the recited information printed thereon, i.e., receiving the information
with the aid of pen and paper. Limitations (4) and (5) recite identifying job
features from a job description and candidate features from the resumes and
social media information – these are tasks readily performed in the human
mind by evaluating the information and using judgement. See In re BRCA1
& BCRA 2 – Based Hereditary Cancer Test Patent Litig., 774 F.3d 755, 763
(Fed. Cir. 2014) (concluding that comparing information and making
Appeal 2018-004946
Application 14/318,467

8
determinations based on the comparisons is an “abstract mental process.”).
Limitation (6), which recites determining whether the interest level of the
candidate resume exceeds a threshold, is also a step that can be performed
mentally by comparison. Limitation (7), which recites calculating a
suitability score for job openings based on the information included in the
documents, is also a process that can be performed mentally or with the aid
of pen and paper. Accordingly, we conclude claim 1 recites a judicial
exception of a mental process.
Revised Guidance, Step 2A, Prong Two
Integration of the Judicial Exception into a Practical Application
Having determined that claim 1 recites a judicial exception, our
analysis under the Memorandum turns now to determining whether claim 1
is directed to the recited judicial exception. We do so by determining
whether there are “additional elements that integrate the judicial exception
into a practical application.” See Memorandum (Step 2A, prong 2), see also
MPEP § 2106.05(a)–(c), (e)–(h)). The only element additional to the recited
judicial exception is the recitation that the calculating of the suitability store
is performed “using one or more processors.” However, it is well-
established the nominal recitation of “processors” does not take the claim
limitation out of the mental processes grouping, and is not sufficient to
integrate the judicial exception into a practical application.
Appellants argue the claims “are inextricably tied to the Internet and
online social networks because Appellants’ claimed subject matter could not
be performed in the human mind.” App. Br. 11. We disagree. As we noted
above, each of the limitations recited in claim 1 is recited broadly enough
that it encompasses a mental process as defined in the guidance. Although
Appellants assert “a centralized database of connections among job
Appeal 2018-004946
Application 14/318,467

9
candidates and employers is needed” (App. Br. 11), we observe no
requirement in claim 1 for such a database, and in fact, the word “database”
appears nowhere in the claims.
Appellants further argue “a human mind or pen and paper cannot act
as a centralized, electronic, online social/business connection-mapping such
that connection data can be used to enhance the job application process.”
App. Br. 11. This argument again incorrectly assumes that all of claim 1
requires a computerized implementation. Rather, only the “calculating a
suitability score” limitation recites the use of a “one or more processors.”
Claim 1 requires only that someone (e.g., a person) or something “receive
information about the candidate,” and that the information be “from a social
media source.” Handing a piece of paper with this information to a person is
within the broad scope of the “receiving” limitations of claim 1. In short,
because all of the limitations in claim 1 are part of the abstract idea itself,
any improvements provided by the claim are in the abstract realm, and
insufficient to integrate the recited abstract idea into a practical application.
SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018)
(“[w]hat is needed is an inventive concept in the non-abstract realm”).
Accordingly, we conclude claim 1 is directed to a judicial exception.
The Inventive Concept – Step 2B
Having determined the claim is directed to a judicial exception, we
proceed to evaluating whether the claim adds a specific limitation beyond
the judicial exception that is not “well-understood, routine, conventional” in
the field (see MPEP § 2106.05(d)) or simply appends well-understood,
routine, conventional activities previously known to the industry, specified
at a high level of generality, to the judicial exception. See Memorandum
Appeal 2018-004946
Application 14/318,467

10
(Step 2B). We agree with the Examiner that claim 1 does not add specific
limitations beyond what is well-understood, routine, and conventional. See
Final Act. 4–5.
In Berkheimer v. HP Inc. 881 F.3d 1360, 1370–71 (Fed. Cir. 2018),
the Federal Circuit held that the question of whether certain claim limitations
represent well-understood, routine, conventional activity raised a disputed
factual issue. Appellants filed a Reply Brief on April 10, 2018, two months
after Berkheimer was decided and nine days prior to the issuance of revised
examination procedure published online by the USPTO on April 19, 2018,
entitled “Changes in Examination Procedure Pertaining to Subject Matter
Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP,
Inc.)” (“Berkheimer Memorandum”), which imposed a new fact finding
requirement for Examiners, as applicable to rejections under § 101.
Although Appellants do not raise a challenge under Berkheimer specifically,
Appellants assert that the Examiner has not shown that “the claimed features
of using a job candidate’s first-degree connection of the candidate that is
employed by the employer is a well-known, routine, and conventional
activity in the pertinent industry.” App. Br. 9.
However, as we noted above, other than the single recitation of “one
or more processors,” all the limitations recited in claim 1, form the abstract
idea. As such, the “first-degree connection of the candidate” limitation
relied upon by Appellants cannot be considered “a specific limitation beyond
the judicial exception,” as is forms a part of the judicial exception. See SAP
Am., Inc., 898 at 1168 (“[w]hat is needed is an inventive concept in the non-
abstract realm”). Accordingly, we do not discern in claim 1 any specific
limitation beyond the judicial exception that is not “well-understood,
Appeal 2018-004946
Application 14/318,467

11
routine, conventional,” and instead agree with the Examiner’s analysis and
findings that the claims do not provide an inventive concept sufficient to
transform the judicial exception into patent-eligible subject matter. Final
Act. 4–5, Ans. 5–6.
Because the Examiner correctly concluded claim 1 is directed to a
judicial exception, and because Appellants do not identify any error in the
Examiner’s determination under Alice step 2, we sustain the rejection of
representative claim 1 under 35 U.S.C. § 101.
In light of the foregoing, we conclude, under the Revised Guidance,
that each of Appellants’ claims on appeal, considered as a whole, is directed
to a patent-ineligible abstract idea that is not integrated into a practical
application and does not include an inventive concept.

DECISION
We affirm the Examiner’s rejection of claims 1, 2, 4–12, and 14–22.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37
C.F.R. § 41.50(f).

AFFIRMED