eBay Inc.

Patent Trials and Appeals Board

Feb 11, 2020

14056762 - (D) (P.T.A.B. Feb. 11, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/056,762 10/17/2013 Sandra Lynn Godsey P2159US1/EBAY.281048 8198
150601 7590 02/11/2020
Shook, Hardy & Bacon L.L.P.
(eBay Inc.)
2555 Grand Blvd.
KANSAS CITY, MO 64108-2613
EXAMINER
STAMBER, ERIC W
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
02/11/2020 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):
IPDOCKET@SHB.COM
docket.shb@clarivate.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SANDRA LYNN GODSEY, STEVEN ROMERO, and
JEREMIAH JOSEPH AKIN
Appeal 2019-000571
Application 14/056,762
Technology Center 3600
Before JEAN R. HOMERE, DANIEL N. FISHMAN, and
DAVID J. CUTITTA II, Administrative Patent Judges.
FISHMAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–15, all of the pending claims. Appeal
Br. i. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as eBay, Inc. Appeal
Br. 3.
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CLAIMED SUBJECT MATTER
The claims are directed to “systems, methods and media to provide
user intent tracking streams . . . based on aspects of consolidated contextual
or personal data, allowing improved presentation of actionable or relevant
information to users.” Spec. ¶ 1. Claim 1, reproduced below, is illustrative
of the claimed subject matter:
1. An intent tracking system comprising:
an identification module, implemented using at least one
hardware processor of one or more hardware processors, to
identify a plurality of aspects of contextual or personal
information relating to a user;
an analysis module, implemented using at least one
hardware processor of the one or more hardware processors, to
analyze the plurality of aspects of contextual or personal
information to identify a user intent or a likelihood relating to a
pre-determined action or event;
a correlation module, implemented using at least one
hardware processor of the one or more hardware processors, to
correlate the user intent or likelihood with at least a subset of the
analyzed aspects of contextual or personal information to
identify an intent tracking stream for the user, the intent tracking
stream based on the correlated sub-set and maintained in an
intent tracking data structure;
a tracking module, implemented using at least one
hardware processor of the one or more hardware processors, to
track the intent tracking stream as a user identifier or a predictor
of the pre-determined action or event; and
a restriction module, implemented using at least one
hardware processor of the one or more hardware processors, to
restrict an electronic notification in an electronic device based on
a result of the analysis, the electronic notification meeting criteria
of issuance defined by an application.
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REJECTIONS2
Claims 1–15 are rejected under 35 U.S.C. § 112(b) as indefinite.
Final Act. 31–32.
Claims 1–15 are rejected under 35 U.S.C. § 101 as directed to patent
ineligible subject matter. Id. at 32–38.
Claims 1–15 are rejected under 35 U.S.C. § 102(a)(1) as anticipated
by Ciurea (US 2011/0047072 A1). Id. at 38–54.
OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(iv).

Section 112
Claims 1, 6, and 11 recite “a restriction module . . . to restrict an
electronic notification in an electronic device based on a result of the
analysis, the electronic notification meeting criteria of issuance defined by
an application.” The Examiner finds, these limitations (hereinafter the
“restricting limitations”) would be confusing to the ordinarily skilled artisan
because the restricting limitations “indicate electronic notification meeting
criteria for issuance but other limitations indicate still being restricted
(which corresponds to failing to meet a criteria for issuance or meeting
criteria for restriction/non-issuance).” Final Act. 31–32. Specifically, the

2 The application was filed after March 16, 2013 and, thus, we apply the
post-AIA sections of Title 35.
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Examiner finds “[i]t is unclear how restricting a notification and meeting a
criteria for issuance are reconciled.” Id. at 32. The Examiner further finds
dependent claims 2–5, 7–10, and 12–15 include these same indefinite
recitations and, thus are rejected for the same reason. Id.
Appellant argues,
[The restricting limitations], however, do not conflict. For
example, a global positioning system (GPS) application may be
configured to issue an electronic notification when the GPS
device is within one mile of a specified destination; thus, the
limitation “the electronic notification meeting criteria of issuance
defined by an application.” The electronic notification may be
restricted, however, in the electronic device that would display
the notification. Thus, the electronic notification both meets the
criteria of issuance defined by an application and is restricted in
the electronic device.
Appeal Br. 9 (emphasis omitted).
The Examiner further finds Appellant’s argument is unpersuasive
because it is unsupported by the Specification. Ans. 3. The Examiner
observes that the term “restriction module” appears nowhere in the
Specification or originally filed claims whereas the other recited modules are
expressly identified in the Specification and original claims.3 Ans. 4. Thus,
the Examiner finds the only possible support for the restricting limitations

3 We similarly discern no support in the Specification (including the
originally filed claims) for the claimed “restriction module” and, thus,
suggest the Examiner reconsider the Examiner’s earlier withdrawal of a
rejection under 35 U.S.C. § 112(a) for lack of written description. We
further suggest the Examiner consider whether the Specification includes
sufficient structure corresponding to each of the recited “modules” to avoid
interpretation in accordance with 35 U.S.C. § 112(f) as “means-plus-
function” elements.
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must be found in the other disclosed, and originally claimed, modules (i.e.,
the identification module, analysis module, correlation module, and tracking
module), which collectively perform the analysis to determine that “the
electronic notification [meets] criteria of issuance defined by an
application.” See Ans. 5; see also Ans. 6 (“[The restricting] limitations do
not appear in the specification, and so in order to support sufficient written
description, the limitations must be interpreted to be the result of the
combined customer segmentation modules analysis.”). The Examiner then
finds the originally disclosed modules perform processing that identifies
notifications that meet a “criteria of issuance,” and, at the same time, that
same notification would be restricted from appearing on the electronic
device based on that same analysis. See id. at 6–7. We agree with the
Examiner that such a determination that a notification both meets the criteria
for issuance and is restricted based on the same analysis is indefinite. See id.
at 7.
For the above reasons, we sustain the Examiner’s rejection of claims
1–15 as indefinite under 35 U.S.C. § 112(b).

Section 102 Rejection
In view of the above discussion, it is unclear what is meant by the
recited functions of the “restriction module.” We conclude “those skilled in
the art would [not] understand what is claimed when the claim is read in
light of the specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc.,
806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations omitted). Because “no
reasonably definite meaning can be ascribed to certain terms in the claim . . .
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the claim becomes indefinite.” See In re Wilson, 424 F.2d 1382, 1385
(CCPA 1970).
In view of the ambiguities discussed above, comparing the invention
of claims 1, 6, and 11 (and their respective dependent claims) with the prior
art would require “considerable speculation as to [the] meaning of the terms
employed and assumptions as to the scope of [the] claims.” In re Steele, 305
F.2d 859, 862 (CCPA 1962). It is improper to rely on such “speculative
assumptions as to the meaning of the claims” to maintain an art-based
rejection thereon. Id. at 863. Accordingly, to avoid such improper
speculation as to the scope of the claims, we are constrained to reverse, pro
forma, the Examiner’s rejection of independent claims 1–14 under 35 U.S.C.
§ 102(a). We hasten to add, however, that the reversal is a procedural
reversal (pro forma) rather than one based upon the merits of this rejection.

Section 101
Having reviewed the Appellant’s arguments regarding this § 101
rejection, we are not persuaded the Examiner erred. We agree with and
adopt the Examiner’s findings in the Final Office Action and the Answer as
our own and add any additional findings of fact appearing below for
emphasis.
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).
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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.
Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 75–77 (2012)). In accordance with that framework, we first
determine what concept the claim is “directed to.” See Alice, 573 U.S. at
219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 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))).
If the claim is “directed to” an abstract idea, we turn to the second part
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
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abstract idea must include ‘additional features’ to 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.
Patent Office Guidance
The U.S. Patent and Trademark Office (USPTO) published revised
guidance on the application of § 101. USPTO’s January 7, 2019
Memorandum, 2019 Revised Patent Subject Matter Eligibility Guidance, 84
Fed. Reg. 50 (“January 2019 Memorandum”).4 Under that guidance, we
first look to whether the claim recites:
(1) (see January 2019 Memorandum at 54, Step 2A – Prong One) 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) (see January 2019 Memorandum at 54, Step 2A – Prong Two)
additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h)).5

4 The Office issued a further memorandum on October 17, 2019 (the
“October 2019 Memorandum”) clarifying guidance of the January 2019
Memorandum in response to received public comments. See https://
www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.pdf.
Moreover, “[a]ll USPTO personnel are, as a matter of internal agency
management, expected to follow the guidance.” January 2019 Memorandum
at 51; see also October 2019 Memorandum at 1.
5 We acknowledge that some of these considerations may be properly
evaluated under second part of the Alice/Mayo analysis (Step 2B of Office
guidance). Solely for purposes of maintaining consistent treatment within
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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 January 2019 Memorandum at 56, Step 2B.
Step 1 – Claims Directed to Statutory Categories
Claims 1–5 each recite a system (i.e., a machine), claims 6–10 each
recite a method (i.e., a process), and claims 11–15 each recite a machine
readable media including computer instructions (i.e., an article of
manufacture). Thus, the pending claims (1–15) are directed to recognized
statutory categories of § 101, and we turn to the two-part Alice/Mayo
analysis to determine whether the claims are directed to a judicial exception
to eligibility. January 2019 Memorandum at 53.
Step 2A Prong 1 – Claims Recite Abstract Ideas
Applying the Alice/Mayo analysis, the Examiner determines that the
claims (1–15) “are directed to the abstract idea of identifying consumers
from observing their behavior, categorizing them by that behavior, and using
that information to predict their actions or make targeted offers.” Final Act.
33. The Examiner characterizes claim 1 as “identifying consumers from

the Office, we evaluate it under first part of Alice/Mayo analysis (Step 2A of
Office guidance). See January 2019 Memorandum at 51.
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observing their behavior, categorizing them by that behavior, and using that
information to predict their actions or make targeted offers” and determines
this corresponds to a fundamental economic practice—an abstract idea. Id.
at 33–34 (citing generally Alice). In addition, the Examiner finds this
characterization of claim 1 corresponds to an idea of itself, e.g., a mental
process that can be performed in the human mind, or by a human using a pen
and paper. Id. at 34 (citing generally Alice).
Mental Process
Appellant contends the claims are not directed to a mental process
(i.e., an idea of itself) because the recited functions “are not performed by a
human mind or using a pen and paper,” and, “these elements are performed
by machines and not by humans.” Appeal Br. 16. Appellant further argues,
“[c]ontrary to the Examiner’s assertion, restricting an electronic notification
in an electronic device is not ‘an idea is [sic] capable of being so performed’
in the human mind or using a pen and paper . . . it is the electronic device
that restricts the electronic notification in the claimed embodiment.” Id.
(emphasis omitted). Appellant contends the restricting limitations
specifically require restriction “in an electronic device” and, hence,
“excludes embodiments that can be performed without technology,” “i.e.,
not capable of being performed by the human mind alone or with pen and
paper.” Id. at 17.
We are not persuaded by Appellant’s arguments. The Examiner finds,
and we agree, “the standard is not whether the invention is expressly
described as being performed in the human mind or using a pen and paper
but rather whether such an idea is capable of [practically] being so
performed.” Ans. 8. Claim 1 recites, in essence:
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(1) an identification module to identify contextual or personal
information relating to a user;
(2) an analysis module to analyze the information to identify a
user intent or a likelihood relating to a pre-determined
action or event;
(3) a correlation module to correlate the result of the analysis
module with a subset of the identified information to
identify an intent tracking stream for the user based on
the correlated subset and maintaining the stream in an
intent tracking data structure;
(4) a tracking module to track the intent tracking stream as a
user identifier or a predictor of the pre-determined action
or event; and
(5) a restriction module to restrict an electronic notification in
an electronic device based on the result of the analysis.
Accordingly, the function of each of these claimed modules (1–5) can
be reasonably characterized as reciting a judicial exception to patent-eligible
subject matter. Module (1) can identify the recited information by mere
observation of a user by a human. Modules (2), (3), and (4) can be
characterized as merely evaluating the observed information—analysis that
can be practically performed in the human mind to determine a user
identifier or a predictor of the pre-determined action or event. The last
module (5) can be performed by a human’s judgment that a particular
notification should or should not be provided to the user based on the
identification and evaluation of the information. The January 2019
Memorandum expressly recognizes mental processes, including
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observations, evaluations, judgments, and opinions that can be performed in
the human mind. January 2019 Memorandum at 52. That the modules
maintain the stream in a data structure and the restriction is, arguably, done
by an “electronic device” does not change otherwise ineligible subject
matter into patentable subject matter.
If 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 performed in the
mind. See Intellectual Ventures I LLC v. Symantec Corp., 838
F.3d 1307, 1318 (Fed. Cir. 2016) (“[W]ith the exception of
generic computer-implemented steps, there is nothing in the
claims themselves that foreclose them from being performed by
a human, mentally or with pen and paper.”).
Id. n.14. Storing/maintaining information in a data structure and the
restriction, arguably, taking place within an “electronic device,” requires
nothing more than typical computer technology. Accordingly, claim 1 can
be characterized as reciting a mental process—an abstract idea.
Fundamental Economic Practice
Appellant argues the claims are not directed to a fundamental
economic practice but, instead, “the claims at issue are directed to a specific
set of operations for restricting notifications in an electronic device.”
Appeal Br. 17. Appellant further argues “this is not just the computerization
of some long standing practice, but something that is necessarily ‘rooted in
computer technology’ like DDR Holdings by virtue of the restriction of an
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electronic notification in an electronic device.”6 Id. at 18. Still further,
Appellant argues the Examiner’s assertion that the claims are directed to a
fundamental economic practice is devoid of requisite “authoritative
documentation that the identified economic component is long prevalent in
our system of commerce.” Id. at 18–19.
The Examiner responds that the claim limitations “identify consumers
from observing their behavior, categorize them by that behavior, and use that
information to predict their actions or make targeted offers, where
notifications to users will be segmented into subsets either subject to
notification or restricted from notification.” Ans. 9. The Examiner further
finds,
None of said claim limitations deviate from the basic market
research concepts of identifying consumers from observing their
behavior, categorizing them by that behavior, and using that
information to predict their actions or make targeted offers to
those individuals an organization deems most useful for their
business purposes, and so the claims present the fundamental
economic practice consumer market segmentation, which is even
more fundamental and well-known than e.g. risk management or
intermediated settlement.
Id.
We are not persuaded the Examiner erred in characterizing the claims
as directed to customer/market segmentation—a fundamental economic
practice and, hence, an abstract idea. Although the independent claims make
no specific reference to customers or markets, the application make clear
that commerce is a key application of the claimed invention. The claims, as

6 Appellant refers to DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245
(Fed. Cir. 2014)) (“DDR”).
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paraphrased above, recite systems and functions to track user information to
identify the user (e.g., as a consumer of certain goods and services) and to
predict events and actions for the user. Dependent claims 2, 7, and 12
specifically reference tracking the intent tracking stream “in a marketplace
environment.” Furthermore, dependent claims 3, 8, and 13 specifically
reference a targeting module to present “targeted information” to the user
and the Specification makes clear that “targeted information” includes
“commercial art, smart advertisement . . . ‘ad content.’” See Spec. ¶¶ 25–26.
More generally, the Specification makes clear that commerce and economics
are a key application of the claimed invention. See id. ¶¶ 33 (“Merchants
and online content providers, for example, can focus on selected clients or
consumer segments without having to resort to batch emailing techniques,
data dumps, or analyzing sparse or imprecise click-through rates.
Frustration and screen clutter generated by unsolicited notifications or
advertisements can be minimized. In appropriate applications, brand equity
or awareness can be enhanced while meeting the requirements of consumer
privacy laws.”), 46 (“targeted information publication modules 420 (in
certain examples, these can also include commerce modules, advertising
modules, and marketplace modules, to name a few)”), 47 (referring to
advertisements, payment services, redemption of offers, checkout, coupons,
“discount deals,” etc.). Still further, the Specification makes frequent
reference to “merchant 130” and “merchant server 280.” See Spec. Fig. 1,
Fig. 2, ¶¶ 34–36, 43, 50.
Accordingly, the claims recite tracking information to categorize or
segment of users as customers to predict events/actions for each user (e.g., to
target marketing information to the user). These systems and functions
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recite systems and techniques for advertising, marketing or sales activities or
behaviors—a fundamental economic practice, which is a certain method of
organizing human activity and, hence, and abstract idea. See January 2019
Memorandum at 52.
Step 2A Prong 2 – Not Integrated Into A Practical Application
Having determined that the claims recite an abstract idea, and, thus, a
judicial exception to subject matter eligibility, we next determine whether
the claims include additional elements that integrate the judicial exception
into a practical application. January 2019 Memorandum at 54.
The Examiner determines the claimed additional elements
(“modules,” “hardware processors,” “application”) of the limitations “are
recited at a high level of generality” and utilize only generic computer
components and functions such that “the claim merely amounts to the
application or instructions to apply the abstract idea on a computer.” Final
Act. 35. The Examiner further finds,
The claim does not result an improvement to another technology
or technical field, improvements to the functioning of the
computer itself, or a transformation of subject matter into a
different state or thing. Thus, taken alone, the additional
elements do not amount to significantly more than the above-
identified judicial exception (the abstract idea).
Looking at the limitations of each independent claim 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 any other technology.
Their collective functions merely provide conventional computer
implementation.
Id. at 36.
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Appellant argues that claims recite specific “modules” implemented
using a hardware processor and, thus, recite a specially-configured computer
rather than a generic computer on which an abstract idea is implemented.
Appeal Br. 22–23. Appellant further argues the recited steps/functions are
recited with a low level of generality as compared to the claims in Bilski and
Alice. Id. at 23–24. Still further, Appellant argues the Examiner failed to
consider the claims as an ordered combination and argues the claims do not
“seek to tie up any judicial exception so that others cannot practice it” and
“do not preempt the making, using, and selling of basic tools of scientific
and technological work.” Appeal Br. 30–32.
The Examiner responds that, “[r]eciting that a device is a special
purpose computer, without any other additional Details, is Insufficient to
Make Claim Eligible because the label of ‘special purpose’ does not change
the functions recited, nor does this result in eligibility.” Ans. 13 (citing Eon
Corp. IP Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616 (Fed. Cir.
2015)). The Examiner further determines, contrary to Appellant’s assertion,
the claims provide no (low level) details regarding how the recited functions
are performed and discloses “no structure beyond a generic computing
environment and Appellant admits such general limitations function in a
generic computing environment.” Id. at 13–14 (citing Spec. ¶¶ 56, 61).
We are not persuaded by Appellant’s arguments and agree with the
Examiner that the claims merely recite functions to be performed in a
generic computing environment. As the Examiner observes, the named
“modules” are defined only by the result they are intended to achieve, in a
computing environment, without any further disclosure of structure of the
modules or how the results are achieved. See Ans. 14. Furthermore,
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contrary to Appellant’s assertion, the Examiner did consider the claims as an
ordered combination and still found the claims fail to recite more than the
abstract idea. Final Act. 36; see also Ans. 18–19. Lastly, we agree with the
Examiner that “while a preemptive claim may be ineligible, the absence of
complete preemption does not guarantee that a claim is eligible.” Ans. 21.
“While preemption may signal patent ineligible subject matter, the absence
of complete preemption does not demonstrate patent eligibility.” Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
Moreover, “[w]here a patent’s claims are deemed only to disclose patent
ineligible subject matter under the Mayo framework, as they are in this case,
preemption concerns are fully addressed and made moot.” OIP Techs., Inc.
v. Amazon.com, Inc., 788 F.3d 1359, 1362–63 (Fed. Cir. 2015), cert, denied,
136 S.Ct. 701 (2015).
Appellant contends the claims are not directed to a judicial exception
because,
The claims recite an improvement to the area of managing
electronic notifications, which is an improvement to the
functioning of the computer itself since it allows the computer to
manage notifications in an electronic device and electronically
restrict notifications in an electronic device (as described in the
specification) to increase the available processing power of the
computing device.
Appeal Br. 33 (citing Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed.
Cir. 2016)).
The Examiner responds that the claims are directed to “generic
implementation, and not technology specific” and “Appellant provides no
specific equation, code or algorithm to alter any computer technology to
improve its processing performance.” Ans. 22–23.
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We are not persuaded by Appellant’s arguments and we agree with
the Examiner that the claims are not directed to any improvement to
computer technology. Appellant provides no evidence that “managing
electronic notifications” improves the functioning of a computer as
Appellant asserts. To the contrary, Appellant’s claimed invention appears to
impose additional processing on systems that generate notifications and
then, after generating such notification, performs further processing to
restrict the generated notifications from being presented on a user’s
electronic device.
Accordingly, we are not persuaded that the claims include additional
elements that integrate the judicial exception into a practical application.
Specifically, we conclude the pending claims do not recite:
(i) an improvement to the functioning of a computer [(or a
mobile device)];
(ii) an improvement to another technology or technical field;
(iii) an application of the abstract idea with, or by use of, a
particular machine;
(iv) a transformation or reduction of a particular article to a
different state or thing; or
(v) other meaningful limitations beyond generally linking the
use of the abstract idea to a particular technological
environment.
See MPEP §§ 2106.05(a)–(c), (e)–(h). Thus, we conclude that the claims are
directed to an abstract idea.
Step 2B – Not Significantly More Than The Abstract Idea
Having determined that the claims recite an abstract idea and the
claims do not include additional elements to integrate the judicial exception
into a practical application, we next determine whether the claims recite
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significantly more to transform the abstract idea into an inventive concept.
Alice, 573 U.S. at 221.
The Examiner finds the claims do not “include additional elements
that are sufficient to amount to significantly more than the judicial
exception” and the claims amount “to nothing more than requiring a generic
computer to perform generic computer functions that are well-understood,
routine and conventional activities previously known to the industry that
amount to no more than implementing the abstract idea with a computerized
system.” Final Act. 35; see also Ans. 14–18.
Appellant argues that management of electronic notifications is not
conventional and, like the claims in DDR, addresses a problem rooted in
computer technology. Appeal Br. 24–29. Appellant further argues the
elements of the claims are not well-understood, routing, or conventional but,
instead, recite “a technology-based solution (not an abstract-idea-based
solution implemented with generic technical components in a conventional
way).” Id. at 35–36 (quoting BASCOM Glob. Internet Servs., Inc. v. AT&T
Mobility LLC, 827 F.3d 1341, 1351 (Fed. Cir. 2016) (“Bascom”)).
We remain unpersuaded of Examiner error. As noted above, in
considering the second prong of Step 2A, the claims as a whole do not recite
significantly more than using computer systems in the manner they are
conventionally used in computing technology, on generic computers,
accessing stored data in the conventional manner, and applying all of these
elements in a conventional computing network environment, all to generate
notifications to be sent to a user’s conventional electronic device—i.e., an
otherwise mental process or a certain method of organizing human activity
and, thus, an abstract idea.
Appeal 2019-000571
Application 14/056,762

20
CONCLUSION
Accordingly, we affirm the Examiner’s decisions rejecting claims 1–
15 under 35 U.S.C. §§ 101 and 112(b) and we reverse the decision rejecting
claims 1–15 under 35 U.S.C. § 102, pro forma. Because we have affirmed
at least one ground of rejection with respect to each claim on appeal, we
affirm the Examiner’s decision. See 37 C.F.R. § 41.50(a)(1).
DECISION SUMMARY
In summary:
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1–15 112(b) Indefinite 1–15
1–15 102(a)(1) Ciurea 1–15
(pro forma)
1–15 101 Ineligible 1–15
Overall
Outcome
1–15
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED