FLORES, ROMELIA H. et al.

Patent Trials and Appeals Board

Dec 31, 2019

13186733 - (D) (P.T.A.B. Dec. 31, 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.
13/186,733 07/20/2011 ROMELIA H. FLORES CHA920110009US1
8134-0130
4910
73109 7590 12/31/2019
Cuenot, Forsythe & Kim, LLC
20283 State Road 7
Ste. 300
Boca Raton, FL 33498
EXAMINER
FISHER, PAUL R
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
12/31/2019 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):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROMELIA H. FLORES, TASSANEE K. SUPAKKUL,
MATHEWS THOMAS, and JULIO WONG
Appeal 2018-008209
Application 13/186,733
Technology Center 3600
Before ROBERT E. NAPPI, JASON J. CHUNG, and JOYCE CRAIG,
Administrative Patent Judges.
CRAIG, 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 26–45. See Final Act. 1. 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. Appellant identifies the real party in interest as IBM Corporation.
Appeal Br. 1.
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CLAIMED SUBJECT MATTER
The claims are directed to providing dynamic recommendations for
points of interest using automatically obtained collective telemetry to
enhance user experience. Spec. 1. Claims 26 and 36, reproduced below, are
illustrative of the claimed subject matter:
26. A computer-implemented method performed within a
recommendation server, comprising:
receiving, from a computer client and by the
recommendation server, user preferences;
collecting, associated with each of a plurality of
geographical points of interest, real-time telemetry;
generating, based upon the user preferences;
recommendation criteria;
generating recommendation options by evaluating the
real-time telemetry using the recommendation criteria; and
forwarding, by the recommendation server and to the
computer client, the recommendation options, wherein
each of the recommendation options is associated with an
individual one of the plurality of geographical points of interest.
36. A recommendation server, comprising:
a hardware processor configured to perform:
receiving, from a computer client and by the
recommendation server, user preferences;
collecting, associated with each of a plurality of
geographical points of interest, real-time telemetry;
generating, based upon the user preferences;
recommendation criteria;
generating recommendation options by evaluating the
real-time telemetry using the recommendation criteria; and
forwarding, by the recommendation server and to the
computer client, the recommendation options, wherein
each of the recommendation options is associated with an
individual one of the plurality of geographical points of interest.
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REJECTIONS
Claims 26–45 stand rejected under 35 U.S.C. § 112, first paragraph, as
lacking written description support. Final Act. 2–5.
Claims 26–45 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to patent-ineligible subject matter. Final Act.
6–9.
Claims 26, 31–36, and 41–45 stand rejected under 35 U.S.C. § 102(b)
as anticipated by Churchill et al. (US 2009/0239552 A1; Sept. 24, 2009)
(“Churchill.”). Final Act. 9–15.
Claims 27–30 and 37–40 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Churchill and Madsen et al. (US
2009/0165022 A1; published June 25, 2009) (“Madsen”). Final Act. 15–19.
ANALYSIS
Rejection of Claims Under 35 U.S.C. § 112, First Paragraph
The Examiner rejected claims 26–45 as failing to comply with the
written-description requirement of § 112, first paragraph, because “the
applicant has provided no guidance as to how they went about programming
the computer to perform” the following recited steps:
generating, based upon the user preferences,
recommendation criteria (Claims 26 and 36),
generating recommendation options by evaluating the
real-time telemetry using the recommendation criteria (Claims
26 and 36),
the recommendation options are individually scored
(Claims 27 and 37),
generating the recommendation options is based upon
historical data associated with the plurality of geographical
points of interest (Claims 29 and 39), and
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generating the recommendation options is based upon the
location information (Claims 31 and 41).

Final Act. 3. Appellant argues claims 26–45 as a group. We select claim 36
as representative of claims 26–45. See 37 C.F.R. § 41.37(c)(1)(iv).
Although the Examiner did not make an explicit finding that
35 U.S.C. § 112, sixth paragraph, applies to claim 36, the Examiner
correctly pointed out that the invention is claimed in functional terms. Final
Act. 4–5.
Construing a means-plus-function claim term is a two-step process,
wherein we first identify the claimed function and then determine what
structure, if any, disclosed in the Specification corresponds to the claimed
function. Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d
1205, 1210 (Fed. Cir. 2003); Cardiac Pacemakers, Inc. v. St. Jude Med.,
Inc., 296 F.3d 1106, 1119 (Fed. Cir. 2002).
A computer-implemented means-plus-function term is limited to the
corresponding structure disclosed in the specification and equivalents
thereof, and the corresponding structure is the algorithm. See Aristocrat
Techs. Australia Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed.
Cir. 2008). The corresponding structure must be more than a general purpose
computer or microprocessor. See id. “When dealing with a ‘special purpose
computer-implemented means-plus-function limitation,’ [the Federal
Circuit] require[s] the specification to disclose the algorithm for performing
the function.” Function Media, L.L.C. v. Google, Inc., 708 F.3d 1310, 1318
(Fed. Cir. 2013); accord Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d
1371, 1384 (Fed. Cir. 2009) (“[W]hen a computer is referenced as support
for a function in a means-plus-function claim, there must be some
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explanation of how the computer performs the claimed function.”). “The
specification can express the algorithm ‘in any understandable terms
including as a mathematical formula, in prose, or as a flow chart, or in any
other manner that provides sufficient structure.’” Noah Sys. Inc. v. Intuit
Inc., 675 F.3d 1302, 1312 (Fed. Cir. 2012) (internal quotation and citation
omitted). But a general purpose computer may be sufficient as the
corresponding structure if the claims merely recite a “general computing
function,” such as a “means . . . for storing . . . data.” In re Katz Interactive
Call Processing Patent Litigation, 639 F.3d 1303, 1316 (Fed. Cir. 2011).
We find that claim 36 invokes 35 U.S.C. § 112, sixth paragraph.
Where, as here, the limitations at issue do not recite the word “means,” there
is a rebuttable presumption that § 112, sixth paragraph, does not apply. See
Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348–49 (Fed. Cir. 2015)
(en banc). This presumption can be overcome, however, if “the claim term
fails to ‘recite sufficiently definite structure’ or else recites ‘function without
reciting sufficient structure for performing that function.’” Id. at 1348
(alteration in original) (quoting Watts v. XL Sys., Inc., 232 F.3d 877, 880
(Fed. Cir. 2000)). The relevant question is “not merely the presence or
absence of the word ‘means’ but whether the words of the claim are
understood by persons of ordinary skill in the art to have a sufficiently
definite meaning as the name for structure.” Id.
Although claim 36 does not recite the words “means for,” the claim
does invoke § 112, sixth paragraph. Claim 36 recites “a hardware processor
configured to perform . . . .” This limitation describes the functions the
“hardware processor” performs without reciting any structure for doing so.
The portion of the written description cited by Appellant does not remedy
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this failing. Figure 3 simply describes at step 340 that a schedule and
recommendation(s) are created. Spec. Fig. 3. Thus, we agree with the
Examiner that Figure 3, cited by Appellant, does not provide sufficient
structure, nor or are we aware of any portion of the written description that
describes adequate structure for claim 36. Appellant does not direct us to any
language, steps, or flow charts in the disclosure to show particular hardware
or an algorithm, such that a skilled artisan would understand how to generate
recommendation criteria based on user preferences or generate
recommendation options by evaluating the real-time telemetry using the
recommendation criteria.
For these reasons, we agree with the Examiner that Figure 3 of the
Specification provides insufficient guidance as to the “generating” steps or
functions recited in claim 36. Ans. 11; see Appeal Br. 10.
Accordingly, on the record before us, we are not persuaded the
Examiner erred, and we sustain the written description rejection under
35 U.S.C. § 112, first paragraph, of claim 36, as well as claims 26–35 and
37–45, argued as a group with claim 36.

Rejection of Claims Under 35 U.S.C. § 101
Appellant argues that the Examiner’s rejection of claim 26 under
35 U.S.C. § 101 as directed to patent-ineligible subject matter is in error.
Appeal Br. 15. To the extent Appellant has not advanced separate,
substantive arguments for particular claims, or other issues, such arguments
are waived. 37 C.F.R. § 41.37(c)(1)(iv). Appellant argues claims 26–45 as a
group. Appeal Br. 13. Given our discretion under 37 C.F.R.
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§ 41.37(c)(1)(iv), we decide the § 101 rejection of claims 26–45 based on
representative claim 26.
Legal Standard
“Whether a claim is drawn to patent-eligible subject matter is an issue
of law that we review de novo.” SiRF Tech., Inc. v. Int’l Trade Comm’n, 601
F.3d 1319, 1331 (Fed. Cir. 2010).
The Supreme Court’s two-step framework guides our analysis of
patent eligibility under 35 U.S.C. § 101. Alice Corp. v. CLS Bank Int’l, 573
U.S. 208, 217 (2014). In addition, the Office published revised guidance for
evaluating subject matter eligibility under 35 U.S.C. § 101, specifically with
respect to applying the Alice framework. USPTO, 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Office
Guidance”). If a claim falls within one of the statutory categories of patent
eligibility (i.e., a process, machine, manufacture, or composition of matter)
then the first inquiry is whether the claim is directed to one of the judicially
recognized exceptions (i.e., a law of nature, a natural phenomenon, or an
abstract idea). Alice, 573 U.S. at 217. As part of this inquiry, we must “look
at the ‘focus of the claimed advance over the prior art’ to determine if the
claim’s ‘character as a whole’ is directed to excluded subject matter.”
Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed.
Cir. 2016). Per Office Guidance, this first inquiry has two prongs of analysis
(i) does the claim recite a judicial exception (e.g., an abstract idea), and (ii)
if so, is the judicial exception integrated into a practical application. 84 Fed.
Reg. at 54. Under the Office Guidance, if the judicial exception is integrated
into a practical application, see infra, the claim is patent eligible under §
101. 84 Fed. Reg. at 54–55. If the claim is directed to a judicial exception
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(i.e., recites a judicial exception and does not integrate the exception into a
practical application), the next step is to determine whether any element, or
combination of elements, amounts to significantly more than the judicial
exception. Alice, 573 U.S. at 217; 84 Fed. Reg. at 56. 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 (citation omitted).
To summarize, under the current Office Guidance, 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); and
(2) additional elements that integrate the judicial
exception into a practical application (see Manual for Patent
Examining Procedure (“MPEP”) § 2106.05(a)–(c), (e)–(h)).
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 Office Guidance.
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Step 1
Claim 26, as a method claim, falls within the process category of
§ 101. See Office Guidance, 84 Fed. Reg. at 53–54 (citing MPEP
§§ 2106.03, 2106.06).
Step 2A(i): Does the Claim Recite a Judicial Exception?
Prong One of Step 2A represents a change as compared to prior
guidance. To determine whether a claim recites an abstract idea in Prong
One, we (a) identify the specific limitation(s) in the claim that recites an
abstract idea; and (b) determine whether the identified limitation(s) falls
within the subject matter groupings of abstract ideas under the Office
Guidance.
The Examiner determined that claim 26 is directed to “making
schedules and recommendations,” which is, inter alia, a method of
organizing human activity and, thus, an abstract idea. Final Act. 6. The
Examiner identified the following steps as part of the recited abstract idea:
receiving, from a computer client and by the
recommendation server, user preferences;
collecting, associated with each of a plurality of
geographical points of interest, real-time telemetry;
generating, based upon the user preferences;
recommendation criteria;
generating recommendation options by evaluating the
real-time telemetry using the recommendation criteria; and
forwarding, by the recommendation server and to the
computer client, the recommendation options
Consistent with Appellant’s description of the claims (see, e.g., Spec.
¶ 5), we determine that the limitations above describe advertising, sales, or
marketing activities that are fairly characterized as commercial interactions,
and which fall into the “certain methods of organizing human activity”
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category of abstract ideas. See 84 Fed. Reg. at 52. We also determine that
the “generating” steps recite mental processes, which are concepts
performed in the human mind, including observation, evaluation, judgment,
or opinion. See id.
Appellant argues that the Examiner erred by improperly
characterizing and overgeneralizing the claimed invention. Appeal Br. 15.
Applying the Office Guidance, we are not persuaded that the
Examiner erred in describing the abstract idea. The Specification describes
providing dynamic schedules and recommendations for points of interest
using automatically obtained collective telemetry in order to enhance user
experience. Spec. ¶ 5.
Because we agree with the Examiner that the claim recites an abstract
idea, we proceed to Prong Two of Step 2A to determine if the idea is
integrated into a practical application, in which case the claim as a whole
would not be “directed to” merely an abstract idea.
Step 2A(ii): Judicial Exception Integrated into a Practical Application?
Because we determined that claim 26 recites a patent-ineligible
concept, we next determine whether the recited judicial exception is
integrated into a practical application of that exception by: (a) identifying
whether there are any additional elements recited in the claim beyond the
judicial exception(s); and (b) evaluating those additional elements
individually and in combination to determine whether they integrate the
exception into a practical application.
We use the term “additional elements” for claim features, limitations,
or steps that the claim recites beyond the identified judicial exception. See
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Revised Guidance at 55 n.24. In claim 26, the additional elements include
the limitations “recommendation server” and “computer client.”
The Examiner determined that neither of the additional limitations is
sufficient to amount to significantly more than the judicial exception
because the additional computer elements “fail to establish that the
limitations themselves amount to significantly more than merely the abstract
idea of making recommendations based on collected data.” Final Act. 7. We
agree with the Examiner.
Appellant next argues that claim 26 improves the functioning of a
computer or other technology or technical field for two reasons: (1) the
Specification describes physical attractions offering mobile phone
applications that improve a user’s experience when visiting the attraction;
and (2) claim 26 “involves real-time telemetry, which requires the use of
specialized technology.” Appeal Br. 21.
Appellant’s arguments are not persuasive. Here, even according to
Appellant, it is the user’s experience that is improved, not the computer. Id.
Moreover, Appellant argues that, although applications exist that are able to
provide information based upon telemetry, Appellant’s invention improves
upon this technology by using both user preferences and real-time telemetry.
Reply Br. 4. Appellant, however, provides no details about collecting real-
time telemetry data in claim 26, and the claim reflects no improvement or
specialized technology. Nor has Appellant identified where in the
Specification the alleged improvement is described.
Appellant further argues that claim 26 improves the efficiency of
using an electronic device, as in Core Wireless Licensing S.A.R.L. v. LG
Elecs., Inc., 880 F.3d 1356, 1362 (Fed. Cir. 2018). Appeal Br. 20.
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We are not persuaded. In Core Wireless, the court stated that “[t]he
disclosed invention improves the efficiency of using the electronic device.”
Core Wireless, 880 F.3d at 1363. However, the court also explained that
“[w]e also ask whether the claims are directed to a specific improvement in
the capabilities of computing devices” (id. at 1361), and then determine that
“the claims are directed to an improvement in the functioning of computers”
(id. at 1363). Thus, in Core Wireless, the improved efficiency of using the
electronic devices was related to an identified improvement in the
functioning of computers.
The claims here, however, do not recite an improvement for electronic
devices. Determining which information to recommend to a user, as in claim
26, “does not improve the functioning of the computer, make it operate more
efficiently, or solve any technological problem.” Trading Techs. Int’l, Inc. v.
IBG LLC, 921 F.3d 1378, 1384–85 (Fed. Cir. 2019) (“Trading Techs. II”).
Rather, the claim simply “includes instructions to implement an abstract idea
on a computer” and “does no more than generally link the use of a judicial
exception to a particular technological environment or field of use.” Official
Guidance, 84 Fed. Reg. at 55. Considering claim 26 as a whole, then,
Appellant’s invention lacks a technical solution to a technical problem like
the claims in Core Wireless. Core Wireless involved an interface that
assembled a limited number of applications that could then be launched from
that interface. Here, “[t]he claims are focused on providing information . . .
in a way that helps them process information more quickly, . . . not on
improving computers or technology.” Trading Techs. II, 921 F.3d at 1384.
Claim 26 as a whole, then, merely uses instructions to implement the
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abstract idea on a computer or, alternatively, merely uses a computer as a
tool to perform the abstract idea.
Thus, the additional limitation(s) do not integrate the judicial
exception into a practical application. More particularly, the claims do not
recite (i) an improvement to the functionality of a computer or other
technology or technical field (see MPEP § 2106.05(a)); (ii) a “particular
machine” to apply or use the judicial exception (see MPEP § 2106.05(b));
(iii) a particular transformation of an article to a different thing or state
(see MPEP § 2106.05(c)); or (iv) any other meaningful limitation
(see MPEP § 2106.05(e)). See 84 Fed. Reg. at 55. Rather, claim 26 recites an
abstract idea as identified in Step 2A(i), supra, and none of the limitations
integrates the judicial exception into a practical application.
Therefore, because the abstract idea is not integrated into a practical
application, we conclude that the claim is directed to the judicial exception.
Step 2B — “Inventive Concept” or “Significantly More”
If the claims are directed to a patent-ineligible concept, as we
conclude above, we proceed to the “inventive concept” step. For Step 2B we
must “look with more specificity at what the claim elements add, in order to
determine ‘whether they identify an “inventive concept” in the application of
the ineligible subject matter’ to which the claim is directed.” Affinity Labs of
Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1258 (Fed. Cir. 2016)
(quoting Elec. Power Grp., 830 F.3d at 1353). We look to see whether there
are any “additional features” in the claims that constitute an “inventive
concept,” thereby rendering the claims eligible for patenting even if they are
directed to an abstract idea. Alice, 573 U.S. at 221. Those “additional
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features” must be more than “well-understood, routine, conventional
activity.” Mayo, 566 U.S. at 79.
The Examiner determined that the additional elements in claim 26
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. Ans. 19–20. For support, the Examiner
cited Appellant’s Specification, which states, “computer program
instructions may be provided to a processor of a general purpose computer.”
Id. at 20. The Examiner found that claim 26 describes a problem, recites
purely functional steps that purport to solve the problem, and recites
standard computer operations to perform some of those steps, which does
not amount to “significantly more” than an abstract idea. Id.
Appellant presents no particular arguments directed to the Examiner’s
Step 2B analysis. See, generally, Appeal Br., Reply Br. Indeed, Appellant
does not direct our attention to anything in the Specification that indicates
the computer components perform anything other than well-understood,
routine, and conventional functions. See buySAFE, Inc. v. Google, Inc., 765
F.3d 1350, 1355 (Fed. Cir. 2014) (“That a computer receives and sends the
information over a network—with no further specification—is not even
arguably inventive”); In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607,
614 (Fed. Cir. 2016) (server that receives data, extracts classification
information from the received data, and stores the digital images insufficient
to add an inventive concept); Alice, 573 U.S. at 225–26 (receiving, storing,
sending information over networks insufficient to add an inventive concept).
In response to Appellant’s argument that claim 26 improves upon
prior art telemetry technology (Reply Br. 4), the novelty of any element or
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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. Diamond v. Diehr, 450 U.S.
175, 188–89 (1981). Our reviewing court further guides that “[e]ligibility
and novelty are separate inquiries.” Two-Way Media Ltd. v. Comcast Cable
Commc’ns, LLC, 874 F.3d 1329, 1340 (Fed. Cir. 2017); see also Affinity
Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1263 (Fed. Cir. 2016)
(holding that “[e]ven assuming” that a particular claimed feature was novel
does not “avoid the problem of abstractness”).
Because the Specification describes the additional elements in general
terms, without describing the particulars, we conclude the claim limitations
may be broadly but reasonably construed as reciting conventional computer
components and techniques, particularly in light of Appellant’s
Specification. See Berkheimer Memo2 § III.A.1; Spec. ¶¶ 34, 37. In
paragraph 37, for example, the Specification describes that the
“recommendation server” can be a hardware/software entity “able to receive
data 242, 272 and/or convey notification 270.” Spec. ¶¶ 34, 37. The
Specification also describes that the “recommendation server” can be a
networked element within a networked computing environment, or a
distributed system within a distributed computing network. Id. Similarly,

2 “Changes in Examination Procedure Pertaining to Subject Matter
Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP,
Inc.)” at 3 (Apr. 19, 2018) (explaining that a specification that describes
additional elements “in a manner that indicates that the additional elements
are sufficiently well-known that the specification does not need to describe
the particulars of such additional elements to satisfy 35 U.S.C. § 112(a)” can
show that the elements are well understood, routine, and conventional).
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while the Specification does not describe a “computer client,” as recited in
claim 26, it describes mobile phone 110 of Figure 1 as “an exemplary device
and can include any computing device able to collect and/or communicate
telemetry.” Spec. ¶ 34.
Analyzing the claim elements that are well-understood, routine,
conventional as an ordered combination, in addition to analyzing those claim
elements individually, we conclude claim 26 does not have an inventive
concept because the claim, in essence, merely recites various computer-
based elements along with no more than mere instructions to implement the
identified abstract idea using well-understood, routine, and conventional
computer-based elements.
Because the claims fail under both the Step 2A and Step 2B analyses,
we sustain the Examiner’s § 101 rejection of independent claim 26 and
grouped claims 27–45, argued as a group with claim 26.

Rejection of Claims Under 35 U.S.C. § 102(b)
Appellant contends that the Examiner erred in rejecting claims 26,
31–36, and 41–45 under § 102(b) because Churchill does not disclose the
limitation “generating, based upon the user preferences; recommendation
criteria,” as recited in representative claim 26. Appeal Br. 21–22.
We agree with Appellant that the Examiner erred. Claim 26 recites
both “recommendation criteria” and “recommendation options.” The
Examiner found that Churchill provides “recommendations,” but did not
clearly show that Churchill discloses “recommendation criteria,” as recited
in the disputed limitation. See Ans. 25–27. The Examiner cites paragraphs
48, 51, and 52 of Churchill as disclosing the disputed limitation, but
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nowhere does the Examiner sufficiently explain where the cited paragraphs
disclose that recommendation criteria is generated based on user
preferences, as claim 26 requires.
For these reasons, we reverse the Examiner’s §102(b) rejection of
claim 26 as well as independent claim 36, which recites a similar limitation.
We also reverse the Examiner’s § 102(b) rejection of dependent claims 31–
35 and 41–45, dependent thereon.

Rejection of Claims Under 35 U.S.C. § 103(a)
Appellant seeks to reverse the Examiner’s § 103(a) rejection of
dependent claims 27–30 and 37–40 because Churchill does not teach or
suggest the limitation “generating, based upon the user preferences;
recommendation criteria,” as recited in independent claims 26 and 36,
discussed above. Appeal Br. 27.
We are persuaded to reverse, as Appellant’s arguments are the same
as discussed above for the § 102(b) rejection of independent claims 26 and
36. The Examiner did not address Appellant’s § 103(a) arguments in the
Answer. Nor did the Examiner show that Madsen cures the lack of a
teaching or suggestion of “generating based upon the user preferences;
recommendation criteria” in Churchill.
Accordingly, we reverse the Examiner’s § 103(a) rejection of
dependent claims 27–30 and 37–40, argued as a group. Appeal Br. 27.
DECISION
Because we affirm at least one ground of rejection with respect to
each claim on appeal, the Examiner’s decision rejecting claims 26–45 is
affirmed. See 37 C.F.R. § 41.50(a)(1).
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DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Basis  Affirmed Reversed
26–45 112, first
paragraph
Lack of written
description
26–45
26–45 101 Eligibility  26–45
26, 31–36,
41–45
102(b) Churchill 26, 31–36,
41–45
27–30, 37–40 103(a) Churchill, Madsen 27–30,
37–40
Overall Outcome: 26–45

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