Hawkins, Rylan Michael. et al.

Patent Trials and Appeals Board

Dec 31, 2019

13485917 - (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.
13/485,917 05/31/2012 Rylan Michael Hawkins MS2-0164US 4822
142810 7590 12/31/2019
Newport IP, LLC
1400 112th Ave SE
Suite 100
Bellevue, WA 98004
EXAMINER
KAZEMINEZHAD, FARZAD
ART UNIT PAPER NUMBER
2657
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):
docketing@newportip.com
eofficeaction@appcoll.com
scott@newportip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RYLAN MICHAEL HAWKINS, ERIC SCOTT ALBRIGHT,
NICHOLAS A. BEAL, PETER GEOFFREY CONSTABLE,
WADE H. CURTISS, ERIK FORTUNE, ANDREW STUART GLASS,
and SAMUEL AARON BEARD

Appeal 2018-004554
Application 13/485,917
Technology Center 2600
Before MAHSHID D. SAADAT, ERIC S. FRAHM, and JOHN A. EVANS,
Administrative Patent Judges.
SAADAT, Administrative Patent Judge.

DECISION ON APPEAL1

Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–4, 6–19, 21, and 22.3 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 An oral hearing scheduled on December 6, 2019, for this appeal has been
waived.
2 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a) (2017). Appellant identifies the real party in interest as Microsoft
Technology Licensing, LLC. Appeal Br. 3.
3 Claims 5 and 20 have been canceled.
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STATEMENT OF THE CASE
Introduction
Appellant’s invention relates to “techniques for configuring a device
to select resources from the resource set in response to a resource request,”
by calculating a weight “representing a suitability of the language for the
resource request, and identify a selection order according to the weights of
the selected languages.” Spec. ¶ 5.
Exemplary Claim
1. A method of providing language-specific resources
to an application executing on a device having a processor and
having access to a resource set of resources respectively
associated with at least one language, the method comprising:
executing, on the processor, instructions that cause the
device to:
receive from a user a user preference order of at
least two selected languages that are available on the device; and
fulfill a resource request by the application for a
resource of the resource set by:
for each language available on the device,
calculating a weight representing a suitability of the language
specifically for the resource request;
identifying an application selection order
according to the weights of the at least two languages; and
meshing the user preference order and the
application selection order to identify, among the languages that
are associated with at one resource of the resource set, a selected
language;
from at least two resources of the resource,
identify a selected resource that is associated with the selected
language; and
presenting the selected resource to the
application to fulfill the resource request.
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Rejections
Claims 1–4, 6–19, 21, and 22 stand rejected under 35 U.S.C. § 101 as
being directed to patent-ineligible subject matter. See Non-Final Act. 6–8.
Claims 1–4, 6–8, 10–14, 17–19, 21, and 22 stand rejected under
35 U.S.C. § 103 as unpatentable over Lim (US 8,639,701 B1; iss. Jan. 28,
2014) and Reitan (US 2012/0316860 A1, pub. Dec. 13, 2012). See Non-
Final Act. 10–23.
Claim 9 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Lim, Reitan, and Etzioni (US 8,209,164 B2, iss. June 26, 2012). See Non-
Final Act. 23–25.
Claims 15 and 16 stand rejected under 35 U.S.C. § 103 as
unpatentable over Lim, Reitan, and Gupta (US 8,600,993 B1, iss. Dec. 3,
2013). See Non-Final Act. 25–28.4
ANALYSIS
35 U.S.C. § 101 Rejection
Arguments
The Examiner determines that the claims are directed to “an
application on behalf of a user receiving a resource in one or more languages
according to his language selection,” which the Examiner characterizes as “a
mathematical manipulation of data; i.e., in so doing it employs a weighting
scheme in order to determine a selection order which is used in presenting
the resources.” Non-Final Act. 6–7. The Examiner adds that:
There are no pre and or post processing steps claimed, which
could bring the claimed steps within range of normal human

4 The rejection of claims 1–4, 6–19, 21, and 22 for lack of written
description has been withdrawn. See Ans. 2.
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activity except perhaps “calculating a weight” which is merely
a mathematical manipulation of data and hence an abstract idea.
The “weight” is an abstract concept, and the process of “a
selection order” amounts to “Organizing information through
mathematical correlations”, one of the abstract idea categories
listed in the “July 2015 Update: Interim Eligibility Guidance
Identifying Abstract Ideas” and updated in December 2016.
Non-Final Act. 7. Additionally, the Examiner finds “the additional
limitation simply calls for the implementation of the abstract idea on a
processor, e.g., a conventional computer” and therefore do not “amount to
significantly more than the abstract idea itself.” Id.
Appellant argues the claims do not recite an abstract idea of “a
mathematical manipulation of data employing a weighting scheme. . . ”
Appeal Br. 21. Instead, Appellant argues that “[t]he inclusion of a
‘mathematical manipulation of data,’ as one of many steps of a technique
that is otherwise applied in a specific useful context, is not an adequate
rationale for rejecting the claim under 35 U.S.C. § 101,” as the claims
include limitations that are similar to those in court cases found to be patent
eligible, such as McRO, Inc. v. Bandai Namco Games America Inc., 837
F.3d 1299 (Fed. Cir. 2016), Enfish, LLC v. Microsoft Corp., 822 F.3d 1327
(Fed. Cir. 2016), Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253
(Fed. Cir. 2017), and Diamond v. Diehr, 450 U.S. 175 (1981)), Amdocs
(Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016),
BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341
(Fed. Cir. 2016), and DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d
1245 (Fed. Cir. 2014). Appeal Br. 22 (emphasis omitted). Appellant also
argues the claimed techniques are directed to “a specific technical solution to
a specific technical problem,” and “the result of such techniques is,
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centrally, an improvement in the functioning of the device itself: i.e., a
resolution of conflicting information to provide the selection of an optimal
resource to provide to an application.” Appeal Br. 25. Appellant further
argues that certain dependent claims (i.e., dependent claims 2, 3, 4, 6, 7, 8, 9,
10, 11, 12, 13, 14, 15, 16, 17, 18, and 22) recite additional elements that are
significantly more than the abstract idea. See Appeal Br. 26–27; see also
Reply Br. 6.
Legal Principles
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 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 Supreme Court’s two-step 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.” 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
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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 187 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1854))); 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
Supreme 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 Supreme 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. (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
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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
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.
The PTO recently published revised guidance on the application of
§ 101. USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (Jan. 7, 2019) (“Revised Guidance”). Under that 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 OF PATENT EXAMINING
PROCEDURE (“MPEP”) §§ 2106.05(a)–(c), (e)–(h) (9th ed.
2018)).
See 2019 Revised Guidance, 84 Fed. Reg. at 52, 55–56. 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 Revised Guidance, 84 Fed. Reg. at 54–56.
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The Judicial Exception – Abstract Idea
Under the Revised Guidance, we begin our analysis by first
considering whether the claims recite any judicial exceptions, including
certain groupings of abstract ideas, in particular: (a) mathematical concepts,
(b) mental steps, and (c) certain methods of organizing human activities.
Turning to independent claim 1, we observe the claim recites, inter alia,
“executing, on the processor, instructions that cause the device to” perform
the following functions:
receive from a user a user preference order of at least
two selected languages that are available on the device;
fulfill a resource request by the application for a
resource of the resource set by:
. . ., calculating a weight representing a suitability of the
language specifically for the resource request;
identifying an application selection order according to
the weights of the at least two languages; and
meshing the user preference order and the application
selection order to identify, . . ., a selected language;
. . ., identify a selected resource that is associated with
the selected language; and
presenting the selected resource to the application to
fulfill the resource request.
Claim 1 (emphases added).
Thus, we conclude the aforementioned receive a user preference and
fulfill the request by: calculating a weight, identifying an application
selection, meshing the preference and selection orders, identifying a selected
resource functions could be performed alternatively as mental processes,
i.e., concepts performed in the human mind or using pen and paper
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(including an observation, evaluation, judgment, and opinion) under the
2019 Revised Guidance, 84 Fed. Reg. at 52.5 Contrary to Appellant’s
assertion that the claim as a whole is more than “manipulation of weights”
(Reply Br. 3–4), a person can perform the above-mentioned steps of claim 1
by using their minds (or pen and paper) in the claimed manner. For
example, a person can obtain the user preference order and fulfill the request
by memorizing or writing down the application selection order and compute
the meshed user preference order and the application selection order based
on the calculated weight for each order of at least two languages, using their
minds or pen and paper.
We note remaining independent claims 19 and 21 recite similar
language of commensurate scope that we conclude also falls into the abstract
idea category of a mental process including the abstract idea subcategories
of an observation, evaluation, judgment, opinion. Id. Claim 21 recites the
additional non-abstract generic limitation of “a computer-readable storage
device comprising instructions that, when executed on a processor,”

5 If a method can be performed by human thought alone, or by a human
using pen and paper, it is merely an abstract idea and is not patent eligible
under § 101. CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
1372–73 (Fed. Cir. 2011); see also Synopsys, Inc. v. Mentor Graphics Corp.,
839 F.3d 1138, 1146–47 (Fed. Cir. 2016) (“While the Supreme Court has
altered the § 101 analysis since Cyber Source in cases like Mayo and Alice,
we continue to ‘treat[ ] analyzing information by steps people go through in
their minds, or by mathematical algorithms, without more, as essentially
mental processes within the abstract-idea category’” (brackets in original)
(quoting Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed.
Cir. 2016).); 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.”).
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provides “language-specific resources to an application executing on the
device” by performing functions discussed above in claim 1. Claim 1 recites
the additional non-abstract generic limitations of a device including a
processor, a memory storing instructions for performing the functions
recited in claim 1.
We also note the recited “calculating a weight” and “meshing the user
preference order and the application selection order,” as well as “presenting
the selected resources” functions of claim 1, and similar language recited in
other independent claims merely access and manipulate information. Courts
have found such data gathering steps to be insignificant extra-solution
activity. See, e.g., In re Bilski, 545 F.3d 943, 963 (Fed. Cir. 2008) (en banc),
aff'd sub nom Bilski, 561 U.S. 593 (characterizing data gathering steps as
insignificant extra-solution activity).6
Because we conclude all claims on appeal recite an abstract idea, as
discussed above, under Step 2A, Prong One, we proceed to Step 2A, Prong
Two. Although claim 1 recites an abstract idea based on these mental
processes, we, nevertheless, 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 Revised Guidance, 84 Fed.
Reg. at 54–55. We, therefore, (1) identify whether there are any additional

6 We agree with the Examiner that the steps of “calculating a weight . . . of
the language” and “meshing the user preference order and the application
selection order” could alternatively be characterized as “mathematical
manipulation” or the abstract idea of mathematical concepts. See Non-Final
Act. 7.
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recited elements beyond the abstract idea, and (2) evaluate those elements
individually and collectively to determine whether they integrate the
exception into a practical application. See id.
Integration of the Judicial Exception into a Practical Application
Further pursuant to the Revised Guidance, we consider whether there
are additional elements set forth in the claims that integrate the judicial
exception into a practical application. See Revised Guidance, 84 Fed. Reg.
at 54–55. We have identified supra, the additional non-abstract limitations
recited in independent claim 1 as a processor, a resource set of resources,
and instructions executed on the processor. Claims 19 and 21 recite
additional elements, such as a computer-readable medium comprising
instructions, a processor, and a memory. See Appeal Br. 36, 40, 41 (Claims
App.).
Under MPEP § 2106.05(a) (“Improvements to the Functioning of a
Computer or to Any Other Technology or Technical Field”), Appellant
contends the claims amount to significantly more than an abstract idea and
assert the recited function provide “an improvement in the functioning of the
device itself: i.e., a resolution of conflicting information to provide the
selection of an optimal resource to provide to an application.” Appeal Br.
25. We, however, note the remaining elements recited in claim 1, as well as
other independent claims, do not integrate the above-identified abstract ideas
into a practical application.
The written description indicates that each of these elements
encompass commonplace generic components. See Spec. ¶¶ 24, 25, 45, 56;
Figs. 1, 6. Appellant does not describe the “processor,” “resources,” and
“computer-readable medium” with any specificity. For example,
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Appellant’s Specification describes the processor as the “processor of device
102” or “processor 412 of device 410” (Spec. ¶¶ 25, 30) and the computer-
readable medium 402 as including DRAM, SDRAM, CD-R, DVD-R, or a
platter of a hard disk drive, etc. Spec. ¶¶ 24, 25.
Other than disclosing these additional elements performing their
accustomed functions utilizing standard techniques—the processor
executing instructions, and the processor calculating a weight and
identifying an application selection order using the calculated weight—the
written description describes these components in functional, result-oriented
terms with no technical details. See, e.g., Spec. ¶¶ 40–43 (Providing no
specific definition for the term “processor” and “computer-readable
medium” other than listing different types of a generic computer processor
including processing instructions that are stored in a generic memory or
storage device). These descriptions show that additional elements are
generic. See Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367,
1384 (Fed. Cir. 1986) (“[A] patent need not teach, and preferably omits,
what is well known in the art.”); Intellectual Ventures I LLC v. Erie Indem.
Co., 850 F.3d 1315, 1331 (Fed. Cir. 2017) (“The claimed mobile interface is
so lacking in implementation details that it amounts to merely a generic
component (software, hardware, or firmware) that permits the performance
of the abstract idea, i.e., to retrieve the user-specific resources.”). Simply
adding generic hardware and computer components to perform abstract ideas
does not integrate those ideas into a practical application. See 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).
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Even assuming, without deciding, that the claimed invention can
automatically identify the application selection order based on the calculated
weights and mesh the user preference order and the application selection
order more efficiently than a human, the increased efficiency comes from
the capabilities of the generic computer components, not the recited process
itself including the weight calculation and meshing. See FairWarning IP,
LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1095 (Fed. Cir. 2016) (“[T]he fact
that the required calculations could be performed more efficiently via a
computer does not materially alter the patent eligibility of the claimed
subject matter.” (Quoting Bancorp Servs., L.L.C. v. Sun Life Assurance Co.
of Can. (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012))); see also Intellectual
Ventures I LLC v. Erie Indem. Co., 711 F. App. 1012, 1017 (Fed. Cir. 2017)
(unpublished) (alteration in original) (citation omitted) (“Though the claims
purport to accelerate the process of finding errant files and to reduce error,
we have held that speed and accuracy increases stemming from the ordinary
capabilities of a general-purpose computer ‘do[ ] not materially alter the
patent eligibility of the claimed subject matter.’”). Like the claims in Fair
Warning, the focus of claim 1 is not on an improvement in computer
systems or databases as tools, but on certain independently abstract ideas
that use generic computing components to lookup values in a database as
tools. See FairWarning, 839 F.3d at 1095.
Appellant’s claim 1 can be distinguished from patent-eligible claims
such as those in Enfish that are directed to “a specific improvement to the
way computers operate.” Enfish, 822 F.3d at 1336. Appellant’s claims can
also be distinguished from patent-eligible claims such as those that solve a
technology-based problem (see BASCOM Glob. Internet Servs., Inc. v.
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AT&T Mobility LLC, 827 F.3d 1341, 1349–52 (Fed. Cir. 2016)), or a method
“rooted in computer technology in order to overcome a problem specifically
arising in the realm of computer [technology]” (DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014)). Contrary to
Appellant’s arguments (see supra and Appeal Br. 22 (contending [a] number
of recent cases from the Court of Appeals for the Federal Circuit involved
such “manipulation,” yet were found to be patent-eligible), claim 1 is not a
technological improvement or an improvement in a technology. Appellant’s
claim 1 does not “improve the functioning of the computer itself” or “any
other technology or technical field.” Alice, 573 U.S. at 225. Nor does it
provide a technological solution to a technological problem. See DDR
Holdings, 773 F.3d at 1257; MPEP § 2106.05(a). Appellant fails to
sufficiently and persuasively explain how the instant claims are directed to
an improvement in the way computers operate, nor has Appellant identified
any technical advance or improvement or specialized computer components.
See Appeal Br. 19–27; Reply Br. 3–6.
Thus, the claims do not integrate the judicial exception into a practical
application. The claims do not (1) improve the functioning of a computer or
other technology, (2) are not applied with any particular machine (except for
a generic computer), (3) do not effect a transformation of a particular article
to a different state, and (4) are not applied in any meaningful way beyond
generally linking the use of the judicial exception to a particular
technological environment, such that the claim as a whole is more than a
drafting effort designed to monopolize the exception. See MPEP
§§ 2106.05(a)–(c), (e)–(h).
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Inventive Concept
Because we determine claim 1 is “directed to” an abstract idea, we
consider whether claim 1 recites an “inventive concept.” Under the Revised
Guidance, if a claim: ( 1) recites a judicial exception, and (2) does not
integrate that exception into a practical application, we then look to whether
the claim adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or, simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high level of
generality, to the judicial exception. See Revised Guidance, 84 Fed. Reg. at
56.
The Examiner determined claim 1 does not recite an inventive concept
because “[t]here is nothing special about the “processor” and/or its
associated programs doing the weight calculation and/or determining the
selection order, by reciting a special technique specifically designed in doing
those respective calculations.” See Final Act. 7.
Appellant argues that the inventive steps includes “the presently
claimed techniques are obviously directed to a specific technical solution to
a specific technical problem, and that the result of such techniques is,
centrally, an improvement in the functioning of the device itself: i.e., a
resolution of conflicting information to provide the selection of an optimal
resource to provide to an application,” which is not disclosed by any of the
prior art references applied by the Examiner. Appeal Br. 25. Appellant
specifically argues “[t]he omission of any such statement in the cited
references demonstrates the general failure to recognize this problem, as
well as the absence of any techniques that address this problem.” Id.
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We are unpersuaded. First, Appellant’s claims can be distinguished
from patent-eligible claims such as those in Bascom, where the system
claims were directed to a “content filtering system for filtering content
retrieved from an Internet computer network,” which the court held were
directed to an abstract idea. Bascom, 827 F.3d at 1348–49. The court further
held the claims included an inventive concept in the ordered combination of
system components, including a local client computer and a remote ISP
server connected to the client computer and Internet computer network
providing for “the installation of a filtering tool at a specific location, remote
from the end-users, with customizable filtering features specific to each end
user.” Id. at 1350. Appellant has failed to establish that claim 1 includes a
similar or analogous arrangement or “ordered combination” of components,
and, instead, make only the conclusory statement that the recited first and
second databases used to determine intermediate property values or target
property values are “non-traditional” and “improve[] the functioning of the
computer.” Appeal Br. 22, 25.
Second, the additional elements recited in the independent claims
include a processor, a memory, a resource set of resources, instructions
executed on the processor, and a computer-readable medium comprising
instructions. The claim recites these elements at a high level of generality,
and the written description provides no details about receiving a user
preference order, calculating a weight, identifying an application selection
order based on the weight, or meshing the user preference order and the
application selection order. See, e.g., Spec. ¶¶ 21 (describing generic and
routine ways for selecting resources and calculating a weight for the
selections), 4 (describing high level process that meshes the language
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selected by the user and the languages requested by the application), 46
(describing generic implementation of the instructions on a processor based
on modules, functions, and objects using data structures, and the like).
Consequently, we find that the above-identified claim elements constitute no
more than what would have been well-understood, routine and conventional
to a skilled artisan. See Berkheimer v. HP Inc., 881 F.3d 1360, 1368
(2018).7
Dependent Claims
We are also not persuaded by Appellant’s contentions that dependent
claims 2–4, 6–18, and 22 are separately patent-eligible. For the reasons
indicated by the Examiner, we agree with the Examiner’s conclusion that
dependent claims 2–4, 6–18, and 22 do not recite additional elements that
are significantly more than the underlying abstract idea. See Final Act. 8.
Conclusion
For at least the above reasons, we agree with the Examiner that claims
1–4, 6–19, 21, and 22 are “directed to” an abstract idea, and do not recite an
“inventive concept.” Accordingly, we sustain the Examiner’s rejection of
claims 1–4, 6–19, 21, and 22 under 35 U.S.C. § 101.

7 A specification demonstrates the well-understood, routine, conventional
nature of additional elements when it describes the additional elements as
well-understood or routine or conventional (or an equivalent term), as a
commercially available product, or 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). Memorandum on Changes in Examination Procedure
Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility
Decision (Berkheimer v. HP, Inc.) (Apr. 19, 2018) available at:
https://www.uspto.gov/sites/default/files/documents/memo-berkheimer-
20180419.PDF
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35 U.S.C. § 103 REJECTION
In rejecting claim 1, the Examiner finds Lim discloses all the recited
elements of the claim, but not “the application selection order” and
“meshing the user preference order and the application selection order to
identify among the languages that are associated with at [least] one resource
of the resource set,” for which the Examiner relies on Reitan. See Final Act.
10–13. The Examiner finds Reitan teaches “the application selection order”
as the process for selecting a target language in paragraphs 9, 19, 26, and 33.
Non-Final Act. 14. The Examiner further finds Reitan discloses:
[M]eshing the user preference order and the application
selection order to identify among the languages that are
associated with at [least] one resource of the resource set, a
selected language (¶ 0026 lines 3–-6: “the system may
automatically select” (meshing) “the target language using a
browser language setting” (application selection order with)
“user profile information” (user’s preferred language or his
preference order because according to ¶ 0015 line 8 “user’s”
“profile” “determines the selected language”); ¶ 0041: “In some
implementations, the caption translation system receives the
target language from a browser query string. In some cases,
users may wish to override” (meshing) “their browser’s
language setting” (application selection order) “and receive
captions” (associated with a resource) “in another language”
(with a user “language” (i.e. user preference order)) “The
system can provide a user interface control or other interface for
allowing the user to select another language” (selected by the
user)).
Non-final Act. 14.
Appellant contends the Examiner’s rejection is in error because Lim
and Reitan are unrelated to the specific problem the claimed invention
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solves: “i.e., conflicts arising between different sources of information about
the selection of resources.” Appeal Br. 30. Appellant also argues:
However, nothing in these portions of Reitan - nor
elsewhere in Reitan – is provided a discussion of meshing a
user selection order and an application selection order to select
a language based on both sources of information. Rather, these
portions of Reitan merely indicate that in different cases, a
device may receive the selection from different sources.
Nothing in these portions indicates that the device may
concurrently receive such selection from different sources - let
alone that such selections may conflict - let alone that meshing
together such different orders, based on calculated weights, may
enable a selection that addresses the conflict.
Appeal Br. 34. According to Appellant, “‘overriding’ implies that the
selection has been made without meshing - i.e., the operating system selects
a language based solely on the browser setting - and the user subsequently
chooses to override the browser setting.” Reply Br. 17.8
Based on our review of Reitan, we are persuaded by Appellant’s
contention that the Examiner has not explained how overriding a selection
by the user meets the disputed claim limitation. We disagree with the
Examiner that the alternative language in paragraph 26 of Reitan, as
manifested by using “[t]he operator ‘or’ implies that ‘target language’
‘select[ion]’ is allowed to use a combination (meshing) of the “browser
language setting” (application selection order) as well as ‘user profile
information’ (user preference order).” Ans. 15. The cited portion of Reitan
discloses “[t]he system may automatically select the target language using a
browser language setting, user profile information, source Internet Protocol

8 We do not address Appellant’s other contentions because this contention is
dispositive of the issue on appeal.
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(IP) address of the received request, or any other information.” Reitan ¶ 26.
It is not apparent, and the Examiner does not clearly explain, how selecting
the target language based on alternate settings/information would teach or
suggest combining those settings or the recited “meshing the user preference
order and the application selection.” Reply Br. 17.
Therefore, Appellant’s arguments have persuaded us of error in the
Examiner’s position with respect to the rejection of claim 1, and independent
claims 19 and 21 which recite similar limitations. The Examiner has not
identified any teachings in the other applied prior art that would cure the
deficiency of the combination of Lim and Reitan. We, therefore, do not
sustain the rejection of claims 1, 19, and 21, as well as claims 2–4, 6–18, and
22, dependent therefrom.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–4, 6–19, 21,
22
101 Eligibility 1–4, 6–
19, 21, 22

1–4, 6–8, 10–
14, 17–19, 21,
22
103 Lim, Reitan 1–4, 6–8,
10–14, 17–
19, 21, 22
9 103 Lim, Reitan,
Etzioni
9
15, 16 103 Lim, Reitan, Gupta 15, 16
Overall
Outcome

1–4, 6–
19, 21, 22

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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