Dropbox, Inc.

Patent Trials and Appeals Board

Jul 24, 2020

13827129 - (D) (P.T.A.B. Jul. 24, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/827,129 03/14/2013 Akhil Wable 085118-523310_P86US1 1424
78189 7590 07/24/2020
Dropbox
c/o Polsinelli PC
1401 Eye (
Washington, DC 20005
EXAMINER
KIM, PAUL
ART UNIT PAPER NUMBER
2169
NOTIFICATION DATE DELIVERY MODE
07/24/2020 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):
DropboxMail@Polsinelli.com
patentdocketing@polsinelli.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________ 

Ex parte AKHIL WABLE, ADITYA AGARWAL, RUCHI SANGHVI, and
JOSHUA JENKINS
________________

Appeal 2019-002739
Application 13/827,129
Technology Center 2100
________________

Before JOHNNY A. KUMAR, JASON J. CHUNG, and BETH Z. SHAW,
Administrative Patent Judges.

KUMAR, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals the Final Rejection
of claims 1–3, 5–21, 23, and 24. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.

INVENTION
The claimed invention relates to a search technique for user profiles
that provides suggested search terms as suggested search term-facet

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. According to Appellant, Dropbox, Inc. is the real party in
interest. Appeal Br. 3.
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combinations. Spec. ¶ 4. Claim 15 is illustrative of the invention and is
reproduced below:
15. A system comprising:
at least one processor; and
a memory having stored therein instructions which, when
executed by the at least one processor, cause the at least one processor
to:
receive a search term;
search fields in a plurality of user profiles in a network to
identify particular fields containing the search term;
for each particular field identified as containing the
search term, form a suggested search term-facet combination by
pairing each field that contains the received search term with the
search term;
display the suggested search term-facet combinations;
identify a particular user profile from the user profiles
based on a selected one of the suggested search term-facet
combinations; and
in response to identifying the particular user profile,
establish a communication session between a first device associated
with the search term and a second device associated with the
particular user profile.

Appeal Br. 34–35 (Claims App.) (emphases added to indicate additional,
i.e., non-abstract, elements).
REJECTION
Claims 1–3, 5–21, 23, and 24 stand rejected under 35 U.S.C. § 101 as
being directed to patent-ineligible subject matter. Final Act. 2–5.

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ANALYSIS
We have only considered those arguments that Appellant actually
raised in the Briefs. Arguments Appellant could have made, but chose not to
make, in the Briefs have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(iv) (2018).
A. Principles of Law
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to
include implicit exceptions: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573
U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-part framework, described in Mayo and Alice.
Alice, 573 U.S. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See Alice, 573
U.S. at 219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
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mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Court held that “a claim drawn to subject matter otherwise statutory does not
become nonstatutory simply because it uses a mathematical formula.” Diehr,
450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as
nothing more than a process for molding rubber products and not as an
attempt to patent a mathematical formula.”). Having said that, the Court also
indicated that a claim “seeking patent protection for that formula in the
abstract . . . is not accorded the protection of our patent laws, and this
principle cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment.” Id. (citation omitted)
(citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that
an application of a law of nature or mathematical formula to a known
structure or process may well be deserving of patent protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted).
“A claim that recites an abstract idea must include ‘additional features’ to
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ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo,
566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention.” Id.
B. USPTO Section 101 Guidance
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“2019 Revised Guidance”).2 “All USPTO personnel are, as a matter of
internal agency management, expected to follow the guidance.” Id. at 51; see
also Update at 1.
Under the 2019 Revised Guidance and the Update, we first look to
whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th ed.
Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).3

2 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (“Update”)
(available at https://www.uspto.gov/sites/default/files/documents/
peg_oct_2019_update.pdf).
3 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
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2019 Revised Guidance, 84 Fed. Reg. at 52–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
Step 2B, 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.
2019 Revised Guidance, 84 Fed. Reg. at 52–56.
C. The Examiner’s Rejection and Appellant’s Arguments
The Examiner determines that the claims recite abstract ideas. Final
Act. 2–3; Ans. 6–7, 10. The Examiner further determines that the claim
limitations are performed by a generically-recited computer and processor
(Final Act. 3–4; Ans. 7) and do not recite any improvements to searching
within a computer system. Ans. 9. The Examiner determines that the generic
computer performs generic computer functions that are well-understood,
routine, and conventional activities previously known in the industry. Final
Act. 3, 4. The Examiner additionally determines that the additional elements,
taken individually or as an ordered combination, do not amount to
significantly more than the abstract idea, because they provide conventional
computer functions. Final Act. 3–5; Ans. 7–9.

determine whether the claim as a whole integrates the exception into a
practical application. See 2019 Revised Guidance - Section III(A)(2), 84
Fed. Reg. at 54–55.
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Appellant contends that the claims are not directed to an abstract idea,
because they are tied to physical elements and physical steps, namely
network and computer elements, and are “used to identify specific profiles in
a network based on search term-facet combinations and establish an
electronic communication session with users/devices.” Appeal Br. 11–16;
Reply Br. 2–3. Instead, Appellant argues that the claims provide a
technological improvement. Appeal Br. 15–16, 21–22, 24–27 (citing DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014); Spec.
¶¶ 21–22, 37–39); Reply Br. 3–4. Appellant contends that the Examiner does
not identify or address the additional elements or inventive concept. Appeal
Br. 20, 24, 28. Appellant additionally argues that a previous Non-Final
Action acknowledged that the step of establishing a communication session,
amounts to significantly more. Appeal Br. 16, 21, 23, 27–28. Appellant
disputes that the Examiner has provided factual support for the finding that
the claimed elements are well-understood, routine, and conventional, as
required by Berkheimer.4 Id. at 19–20, 23. Appellant additionally argues that

4 Berkheimer v. HP Inc., 881 F.3d 1360, 1367, 1369 (Fed. Cir. 2018).
In response to Berkheimer, the USPTO published a Memorandum of
Changes in Examination Procedure Pertaining to Subject Matter
Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v.
HP, Inc.) (“Berkheimer Memorandum”) requiring at least one of four
categories of information to support a finding that an additional
element is well-understood, routine, or conventional: (1) A citation to
an express statement in the specification or to a statement made by an
applicant during prosecution that demonstrates the well-understood,
routine, conventional nature of the additional element(s); (2) A
citation to one or more of the court decisions discussed in MPEP
§ 2106.05(d)(II) as noting the well-understood, routine, conventional
nature of the additional element(s); (3) A citation to a publication that
demonstrates the well-understood, routine, conventional nature of the
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the novelty of the claims lends to a finding that the elements are not well-
understood, routine, and conventional. Id. at 23; Reply Br. 1. Appellant
argues that the claims do not preempt all ways of identifying user profiles.
Appeal Br. 27; Reply Br. 2. Appellant further argues that the rejection does
not particularly address the dependent claims. Appeal Br. 28–29; Reply Br.
5.
D. Step 2A, Prong One: The Judicial Exception
The non-emphasized portions of claim 15, reproduced above (see
supra at 2), relate to managing personal behavior or relationships or
interactions between people because the present claims require searching
fields in a plurality of user profiles, forming and displaying a suggested
search term-facet combination, identifying a particular user profile based on
the suggested search term-facet combination, and establishing a
communication session between user devices. In other words, searching user
profiles, displaying suggested search terms, identifying a particular user
profile, and establishing a communication session, relate to managing
personal relationships or interactions between people.
According to the 2019 Revised Guidance, managing personal
behavior or relationships or interactions (including social activities,
teaching, and following rules or instructions) fall into the category of certain
methods of organizing human activity. See 2019 Revised Guidance, 84 Fed.
Reg. at 52. See Interval Licensing, 896 F.3d at 1344–45 (concluding that
“[s]tanding alone, the act of providing someone an additional set of

additional element(s); or (4) A statement that the examiner is taking
official notice of the well-understood, routine, conventional nature of
the additional element(s). Berkheimer Memorandum at 3–4.

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information without disrupting the ongoing provision of an initial set of
information is an abstract idea,” observing that the district court “pointed to
the nontechnical human activity of passing a note to a person who is in the
middle of a meeting or conversation as further illustrating the basic,
longstanding practice that is the focus of the [ patent ineligible] claimed
invention.”). Id., footnote 13. Moreover, those certain methods of organizing
human activity are a type of abstract idea. See id.
We add that the above-noted recited functions of searching user
profiles, identifying a particular user profile, and establishing a
communication session, relate to managing personal relationships or
interactions between people can also typically be performed entirely
mentally by merely thinking about these identifications and determinations,
or writing them down—both involving mere observation and logical
reasoning. CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
1372 (Fed. Cir. 2011) (noting that a recited step that utilized a map of credit
card numbers to determine the validity of a credit card transaction could be
performed entirely mentally by merely using logical reasoning to identify a
likely instance of fraud by merely observing that numerous transactions
using different credit cards all originated from the same IP address).
Additionally, mental processes remain unpatentable even when automated to
reduce the burden on the user of what once could have been done with pen
and paper. See CyberSource, 654 F.3d at 1375 (“That purely mental
processes can be unpatentable, even when performed by a computer, was
precisely the holding of the Supreme Court in Gottschalk v. Benson.”).
Therefore, the recited functions also fall squarely within the mental
processes category of the agency’s guidelines and, therefore, recite an
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abstract idea for that additional reason. See Guidance, 84 Fed. Reg. at 52
(listing exemplary mental processes including observation and evaluation).
However, we must still determine whether the abstract idea is
integrated into a practical application, namely whether the claim applies,
relies on, or uses the abstract idea in a manner that imposes a meaningful
limit on the abstract idea, such that the claim is more than a drafting effort
designed to monopolize the abstract idea. See 2019 Revised Guidance, 84
Fed. Reg. at 54–55. We therefore (1) identify whether there are any
additional recited elements beyond the abstract idea, and (2) evaluate those
elements both individually and collectively to determine whether they
integrate the exception into a practical application. See id.
Accordingly, we proceed to Prong 2.
E. Step 2A, Prong 2: Integration of the Judicial Exception into a
Practical Application

Here, the only additional elements recited in the independent claims
are “processor,” “memory,”5 “network,”6 “first device,” “second device,”
and “computer-readable storage device.”7 The only additional elements
recited in the dependent claims are “indication” in claim 5; “database” in
claim 6; “social networking site” in claims 6, 11, 14, 16, and 21; “synched
content management system” in claims 9 and 12; “text communication” in
claims 23 and 24; “instant message” in claims 23 and 24; and “voice
communication” in claims 23 and 24. See 2019 Revised Guidance, 84 Fed.

5 This additional element is recited only in claims 10 and 15. See Claims
App.
6 This additional element is recited only in claims 1, 10, and 15. See Claims
App.
7 This additional element is recited only in claim 20. See Claims App.
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Reg. at 52. The additional elements of the present claims do not integrate the
abstract idea into a practical application because they do not impose any
meaningful limits on practicing the abstract idea for the following reasons.
Appellant does not identify persuasively how the Specification sets
forth an improvement in technology. The Update addresses how we consider
evidence of improvement that is presented to us. The Update states:
the evaluation of Prong Two requires the use of the
considerations (e.g. improving technology, effecting a particular
treatment or prophylaxis, implementing with a particular
machine, etc.) identified by the Supreme Court and the Federal
Circuit, to ensure that the claim as a whole “integrates [the]
judicial exception into a practical application [that] will 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.
Update, 11 (emphases added). The Update further states:
During examination, the examiner should analyze the
“improvements” consideration by evaluating the specification
and the claims to ensure that a technical explanation of the
asserted improvement is present in the specification, and that the
claim reflects the asserted improvement. Generally, examiners
are not expected to make a qualitative judgment on the merits of
the asserted improvement. If the examiner concludes the
disclosed invention does not improve technology, the burden
shifts to applicant to provide persuasive arguments supported by
any necessary evidence to demonstrate that one of ordinary skill
in the art would understand that the disclosed invention improves
technology. Any such evidence submitted under 37 C.F.R.
§ 1.132 must establish what the specification would convey to
one of ordinary skill in the art and cannot be used to supplement
the specification. For example, in response to a rejection under
35 U.S.C. § 101, an applicant could submit a declaration under
§ 1.132 providing testimony on how one of ordinary skill in the
art would interpret the disclosed invention as improving
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technology and the underlying factual basis for that conclusion.
Id. at 13 (emphasis added).
Here, the Examiner determines that the claimed invention does not
include features that would improve the functioning of a computer or any
other technology. Final Act. 3–4, 6; Ans. 8–9. Consequently, we focus on
any evidence Appellant cites as discussed in the Update.
Appellant cites the Specification at paragraphs 21, 22, and 37–39 for
disclosing:

an improvement in search methodology and communication
approach that can increase the speed, accuracy and efficiency of
computer and network searches; eliminate the need to use or
limit searches to a particular search nomenclature and allow
searching across systems with different search nomenclature;
speed up the formulation of computer and network searches and
produce suggested search term-facet combinations that the user
may not have formulated on his or her own; provide enhanced
search results, which would not be otherwise available; reduce
or eliminate the need to understand a particular system’s search
nomenclature; support different types of systems and computer
platforms; facilitate communications between users of a
network site; etc.

Reply Br. 3–4; see also Appeal Br. 15–16, 21–22, 24–26. However, these
alleged improvements are improvements to searching and retrieving data for
managing human relationships or interactions, which falls within the
category of an abstract idea, as discussed supra, not an improvement to
technology. “[A] claim for a new abstract idea is still an abstract idea.”
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir.
2016) (emphasis added). “[U]nder the Mayo/Alice framework, a claim
directed to a newly discovered law of nature (or natural phenomenon or
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abstract idea) cannot rely on the novelty of that discovery for the inventive
concept necessary for patent eligibility . . . .” Genetic Techs. Ltd. v. Merial
L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016) (citations omitted).
Furthermore, the additional elements in the present claims, namely
“processor,” “memory,” “network” or “social networking site,” “first
device,” “second device,” “computer-readable storage device,” “indication,”
“database,” “synched content management system, “text communication,”
“instant message,” and “voice communication,” do not, either individually
or in combination, integrate the abstract idea into a practical application.
Appellant’s Specification discloses that these elements encompass generic
components, including a generic processor (Spec. ¶ 32, Fig. 2), generic
memory (id. ¶ 31, Fig. 2), a generic network or social networking site (id.
¶¶ 22, 28, 30, Fig. 2), generic devices (id. ¶ 28, Fig. 1), a generic computer-
readable storage device (id. ¶¶ 34–35), a generic indication (id. ¶ 62, Fig.
8E), a generic database (id. ¶¶ 28, 35, 39, 57), a generic synched content
management system (id. ¶¶ 22, 36), a generic text communication (id.
¶¶ 37–38, 46, 64), a generic instant message (id.), and a generic voice
communication. Id.
Merely adding generic hardware and computer components to
perform abstract ideas does not integrate those ideas into a practical
application. See 2019 Revised Guidance, 84 Fed. Reg. at 55 (identifying
“merely includ[ing] instructions to implement an abstract idea on a
computer” as an example of when an abstract idea has not been integrated
into a practical application). Here, at best, rather than improving technology,
the additional elements simply execute the abstract idea of managing
personal behavior or relationships or interactions between people.
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Furthermore, though the claimed processor might result in the alleged
improvements to speed, accuracy, and efficiency of network searches (see
Appeal Br. 15–16, 21–22, 24–26; Reply Br. 3–4; Spec. ¶¶ 21–22, 37–39),
the processor is disclosed as being merely a general-purpose processor.
Spec. ¶ 32. A general-purpose processor that merely executes the judicial
exception is not a particular machine. Ultramercial, Inc. v. Hulu, LLC, 772
F.3d 709, 716–17 (Fed. Cir. 2014), cited in MPEP § 2106(b)(I). Moreover,
using a computer to achieve a solution more quickly may not be sufficient to
show an improvement to computer technology. See Versata Dev. Group,
Inc. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015).
We also disagree with Appellant’s argument that, similar to DDR
Holdings, the present claims are necessarily rooted in computer technology
to overcome a problem specifically arising in computer networks. Appeal
Br. 24–25. The subject claim considered by the DDR court pertained to a
visitor of a host’s website clicking on an advertisement for a third-party
product displayed on the host’s website, the visitor is no longer being
transported to the third party’s website. DDR Holdings, 773 F.3d at 1257. In
DDR, instead of losing visitors to the third-party’s website, the host website
can send its visitors to a web page on an outsource provider’s server that
(1) incorporates “look and feel” elements from the host website and (2)
provides visitors with the opportunity to purchase products from the third-
party merchant without actually entering that merchant’s website. Id. at
1257–58. In contrast to the claims of DDR, the present claims merely recite
the performance of searching and retrieving data known from the pre-
Internet world. See id. at 1257; Appeal Br. 25. Indeed, the searching
techniques recited in the claims are analogous to pre-Internet searching for a
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particular person in one or all of a telephone book, a college directory, or a
business directory. See also Spec. ¶¶ 3, 23, Figs. 8A–10.
Appellant’s argument that the present claims do not preempt all ways
of identifying user profiles does not persuade us that the claims are eligible.
Appeal Br. 27; Reply Br. 1–2. Although preemption may denote patent
ineligibility, its absence does not demonstrate patent eligibility. See
FairWarning, IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1098 (Fed. Cir.
2016). For claims covering a patent-ineligible concept, preemption concerns
“are fully addressed and made moot” by an analysis under the Mayo/Alice
framework. Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379
(Fed. Cir. 2015).
Appellant does not make any other arguments pertaining to step 2A,
Prong 2. Because the present claims recite an abstract idea that is not
integrated into a practical application, we proceed to Step 2B.
F. Step 2B: The Inventive Concept
Appellant argues that the claims recite elements that, when considered
individually or as a whole, amount to significantly more than the abstract
idea. Appeal Br. 19–23, 27–28; Reply Br. 4–5. We disagree.
Appellant contends that the current rejection contradicts a previous
Non-Final Action, which “acknowledges that the step of establishing a
communication session, which was at the time recited in dependent claims 4
and 22, amounts to significantly more than an abstract idea when considered
individually and as a whole.” Appeal Br. 16, 21, 23, 27–28. However, this
argument is unavailing to show that the Examiner erred with respect to the
rejection before us. Furthermore, the step of establishing a communication
session merely forms a part of the abstract idea, as discussed above, rather
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than an additional element. An inventive concept “cannot be furnished by
the unpatentable law of nature (or natural phenomenon or abstract idea)
itself.” Genetic, 818 F.3d at 1376; see also 2019 Revised Guidance, 84 Fed.
Reg. at 56; Alice, 573 U.S. at 217 (explaining that, after determining a claim
is directed to a judicial exception, “we then ask, ‘[w]hat else is there in the
claims before us?”’ (emphasis added, brackets in original) (quoting Mayo,
566 U.S. at 78)). Instead, an “inventive concept” is furnished by an element
or combination of elements that is recited in the claim in addition to the
judicial exception and sufficient to ensure the claim as a whole amounts to
significantly more than the judicial exception itself. Alice, 573 U.S. at 218–
19 (citing Mayo, 566 U.S. at 72–73); see BSG Tech LLC v. Buyseasons, Inc.,
899 F.3d 1281, 1290 (Fed. Cir. 2018) (explaining that the Supreme Court in
Alice “only assessed whether the claim limitations other than the invention’s
use of the ineligible concept to which it was directed were well-understood,
routine and conventional” (emphasis added)).
Even assuming, arguendo, that the step of establishing a
communication session is an additional element, it does not, either
individually or in combination with the other additional elements, provide
significantly more to amount to an inventive concept. Notably, the
Specification discloses the step of establishing a communication session in a
generic manner and at a high degree of generality. Spec. ¶¶ 37–38, 46, 64.
Furthermore, establishing a communication session, i.e., sending messages
or over a network (see id.), has been recognized by courts as being nothing
more than well-understood, routine, conventional activity. See OIP Techs.,
Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015); buySAFE,
Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014).
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Additionally, although Appellant argues that the Examiner provides
no support for the finding that the additional elements are well-understood,
routine, and conventional, as required by Berkheimer (Appeal Br. 19–20,
23), we agree with the Examiner’s underlying finding that the additional
elements are nothing more than well-understood, routine, and conventional.
See Final Act. 3, 4.
Specifically, the recited processor, first and second devices, and
indication are well-understood, routine, and conventional in the field of
searching and retrieving data. See Bancorp Servs., L.L.C. v. Sun Life
Assurance Co of Can. (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012);
Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1321 (Fed.
Cir. 2016); Flook, 437 U.S. at 594. Similarly, the storing information or data
in memory, a database, and computer-readable storage device are well-
understood, routine, and conventional. Versata, 793 F.3d at 1334; OIP
Techs., 788 F.3d at 1363. The recited network, social networking site, and
content management site are well-understood, routine, and conventional in
the field. Symantec, 838 F.3d at 1321; OIP Techs., 788 F.3d at 1363;
buySAFE, 765 F.3d at 1355; Ultramercial, 772 F.3d at 716. The recited first
and second devices and indication are also well-understood, routine, and
conventional in the field of searching and retrieving data. See Bancorp, 687
F.3d at 1278. And as discussed above with respect to the step of establishing
a communication session, the recited text communication, instant message,
and voice communication are well-understood, routine, and conventional.
See OIP Techs., 788 F.3d at 1363; buySAFE, 765 F.3d at 1355.
Furthermore, Appellant’s Specification supports a finding that the
additional elements add nothing more than well-understood, routine, and
Appeal 2019-002739
Application 13/827,129

18
conventional activities, because it discloses that they are generic computer
components and are discussed at a high level of generality. See Spec. ¶¶ 22,
26, 28, 30–32, 34–39, 46, 57, 62, 64, Figs. 1, 2. In particular, the
Specification does not provide additional details about any of the additional
elements that would distinguish the recited components from conventional
components, or from generic implementation either individually or in
combination. See id.
With regard to Appellant’s argument that because the claims are novel
and non-obvious over the prior art (Appeal Br. 23; Reply Br. 1), Appellant
improperly conflates the requirements for eligible subject matter (§ 101)
with the independent requirements of novelty (§ 102) and non-obviousness
(§ 103). “The ‘novelty’ of any element or steps in a process, or even of the
process itself, is of no relevance in determining whether the subject matter of
a claim falls within the § 101 categories of possibly patentable subject
matter.” Diehr, 450 U.S. at 188–89; see also Genetic, 818 F.3d at 1376
(stating that, “under the Mayo/Alice framework, a claim directed to a newly
discovered law of nature (or natural phenomenon or abstract idea) cannot
rely on the novelty of that discovery for the inventive concept necessary for
patent eligibility”).
In view of our previous conclusions in the Step 2A, Prong 2 analysis,
and our findings that the additional elements all perform well-understood,
routine, and conventional activity, we determine that the claims do not use
the additional elements—either individually or in combination—in a way
that indicates that the claim provides an inventive concept.
For at least the above reasons, we conclude, under the 2019 Revised
Guidance, that each of Appellant’s claims 1–3, 5–21, 23, and 24 considered
Appeal 2019-002739
Application 13/827,129

19
as a whole, is directed to a patent-ineligible abstract idea, and does not
include an inventive concept. We therefore sustain the Examiner’s rejection
of claims 1–3, 5–21, 23, and 24 under 35 U.S.C. § 101.
CONCLUSION
For the above-described reasons, we affirm the Examiner’s rejection
of claims 1–3, 5–21, 23, and 24 as lacking subject matter eligibility under
35 U.S.C. § 101.
No time period for taking any subsequent action in connection
with this appeal may be extended under 37 C.F.R. § 1.136(a).
37 C.F.R. §41.50(f).

DECISION SUMMARY
In summary:

AFFIRMED

Claim(s)
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
1–3, 5–
21, 23,
24
101 Eligibility 1–3, 5–21,
23, 24