Jain, Kamal

Patent Trials and Appeals Board

Mar 13, 2020

12820323 - (D) (P.T.A.B. Mar. 13, 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.
12/820,323 06/22/2010 Kamal Jain 329806.01 1952
69316 7590 03/13/2020
MICROSOFT CORPORATION
ONE MICROSOFT WAY
REDMOND, WA 98052
EXAMINER
LI, SUN M
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
03/13/2020 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):
chriochs@microsoft.com
usdocket@microsoft.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________ 

Ex parte KAMAL JAIN
________________

Appeal 2018-003881
Application 12/820,323
Technology Center 3600
________________

Before JOHN A. EVANS, JASON J. CHUNG, and SCOTT E. BAIN,
Administrative Patent Judges.

CHUNG, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals the Non-Final
Rejection of claims 1–6, 8–13, 15–18, 22, and 25–27.2 We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.
INVENTION
The invention relates to a commercial transaction. Abstract. Claim 1
is illustrative of the invention and is reproduced below:

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. According to Appellant, Microsoft Technology Licensing,
LLC is the real party in interest. Appeal Br. 3.
2 Claims 7, 14, 19 – 21, 23, and 24 are cancelled. Appeal Br. 59–62.
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1. A method of fulfilling a query of a user of a user
device comprising a display, the method involving a server
having a processor and comprising:
executing, on the processor, instructions that cause the
server to:
for respective agents of an agent set:
estimate a response probability of the agent to the
query; and
receive from the agent a response cost incurred by
the agent to generate a response to the query;
select the agents of the agent set that present:
highest response probabilities to the query among
the agents of the agent set, and
lowest response costs of responding to the query
among the agents of the agent set,
as a responder set of responders to the query, and limiting
the responder set by a target responder count;
transmit the query to the responders of the responder set;
send, to the user device, instructions that, when executed
by the user device, cause the user device to present, on the
display, a visual response interface of responses of the
responders to the query; and
upon receiving, from a responder, a response that fulfills
the query of the user, send, to the user device, instructions that,
when executed by the user device, cause the user device to
display the response from the responder within the visual
response interface presented on the display.

Appeal Br. 57 (Claims Appendix) (emphases added).

REJECTION
Claims 1–6, 8–13, 15–18, 22, 25–27 stand rejected under 35 U.S.C.
§ 101 as being directed to patent ineligible subject matter. Non-Final Act.
14–22.

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ANALYSIS
I. Claims 1–6, 8–13, 15–18, 22, 25–27 Rejected Under 35 U.S.C. § 101
A. Principles of Law
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to
include implicit exceptions: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573
U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-part framework, described in Mayo and Alice.
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
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(1981)); “tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Court held that “a claim drawn to subject matter otherwise statutory does not
become nonstatutory simply because it uses a mathematical formula.”
Diehr, 450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as
nothing more than a process for molding rubber products and not as an
attempt to patent a mathematical formula.”). Having said that, the Court
also indicated that a claim “seeking patent protection for that formula in the
abstract . . . is not accorded the protection of our patent laws, and this
principle cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment.” Id. (citation omitted)
(citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that
an application of a law of nature or mathematical formula to a known
structure or process may well be deserving of patent protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted).
“A claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo,
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566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention.” Id.
B. USPTO Section 101 Guidance
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“2019 Revised Guidance”).3 “All USPTO personnel are, as a matter of
internal agency management, expected to follow the guidance.” Id. at 51;
see also October 2019 Update at 1.
Under the 2019 Revised Guidance and the October 2019 Update, we
first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th ed.
Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).4

3 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (the “October
2019 Update”) (available at
https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p
df).
4 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
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2019 Revised Guidance, 84 Fed. Reg. at 52–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
Step 2B, to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
2019 Revised Guidance, 84 Fed. Reg. at 52–56.
C. The Examiner’s Conclusions and Appellant’s Arguments
The Examiner concludes the present claims recite certain methods of
organizing human activity. Non-Final Act. 11, 13; Ans. 4–5, 13. The
Examiner also determines the present claims do not amount to significantly
more than an abstract idea itself because the abstract idea is implemented on
additional elements that are well-understood, routine, and conventional.
Non-Final Act. 6–7, 18–19 (citing Spec. ¶ 53, Fig. 8; Ultramercial, Inc. v.
Hulu, LLC, 772 F.3d 709, 716–17 (Fed. Cir. 2014); buySAFE, Inc. v.
Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014)); Ans. 6–8.
Appellant argues the present claims recite an improvement in
computer-related technology. Appeal Br. 52–54 (citing McRO, Inc. v.
Bandai Namco Games America Inc., 837 F.3d 1299, 1308–14 (Fed. Cir.
2016); Spec. ¶¶ 45–46); Reply Br. 9–11 (citing Core Wireless Licensing

practical application. See 2019 Revised Guidance - Section III(A)(2), 84
Fed. Reg. 54–55.
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S.A.R.L. v. LG Electronics, Inc., 880 F.3d 1356 (Fed. Cir. 2018)). Appellant
argues the present claims are necessarily rooted in computer technology to
solve problems specifically arising in that realm. Appeal Br. 35–40 (citing
DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014));
Reply Br. 9–11. Appellant argues the present claims do not preempt any
abstract idea. Appeal Br. 37. We disagree with Appellant.
D. Discussion
1. Step 2A, Prong 1
Patent eligibility under 35 U.S.C. § 101 is a question of law that is
reviewable de novo. See Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333
(Fed. Cir. 2012). We, therefore, conclude the emphasized portions of claim
1,5 reproduced above (see supra at 2), recite managing personal behavior or
relationships or interactions between people (including social activities)
because claim 1 requires interactions between two people (i.e., a user and an
agent). That is, the present claims recite managing personal behavior or
relationships or interactions between people (including social activities)
because they require the user to send a query pertaining to a product and an
agent is chosen to answer the user’s query based on response probability and
cost. According to the Memorandum, managing personal behavior or
relationships or interactions between people (including social activities) fall

5 Claim 1, reproduced above with emphases, recites similar features as
independent claims 25 and 26. Appellant does not argue claims 2–6, 8–13,
15–18, 22, and 25–27 separately with particularity, but asserts the § 101
rejection of those claims should be withdrawn for at least the same reasons
as argued for independent claim 1. Appeal Br. 31–56. We, therefore, group
claims 1–6, 8–13, 15–18, 22, and 25–27 together and refer to those claims as
the “present claims.”
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into the category of certain methods of organizing human activity. See
Memorandum, 84 Fed. Reg. at 52. Moreover, those certain methods of
organizing human activity are a type of abstract idea. See id.
Because the present claims recite managing personal behavior or
relationships or interactions between people (including social activities),
which fall into the category of certain methods of organizing human activity
(i.e., an abstract idea), we proceed to prong 2.
2. Step 2A, Prong 2
The additional elements of the present claims do not integrate the
abstract idea into a practical application because they do not impose any
meaningful limits on practicing the abstract idea for the following reasons.
We disagree with Appellant’s argument that the present claims recite an
improvement in computer-related technology. Appeal Br. 52–54 (citing
McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1308–14
(Fed. Cir. 2016); Spec. ¶¶ 45–46); Reply Br. 9–11.
Appellant does not identify persuasively how the Specification sets
forth an improvement in technology. The USPTO October 2019 Patent
Eligibility Guidance Update (“Update”) addresses how we consider
evidence of improvement that is presented to us. The Update states:
[d]uring examination, the examiner should analyze the
“improvements” consideration by evaluating the specification
and the claims to ensure that a technical explanation of the
asserted improvement is present in the specification, and that the
claim reflects the asserted improvement. Generally, examiners
are not expected to make a qualitative judgment on the merits of
the asserted improvement. If the examiner concludes the
disclosed invention does not improve technology, the burden
shifts to applicant to provide persuasive arguments supported by
any necessary evidence to demonstrate that one of ordinary skill
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in the art would understand that the disclosed invention improves
technology. Any such evidence submitted under 37 C.F.R.
§ 1.132 must establish what the specification would convey to
one of ordinary skill in the art and cannot be used to supplement
the specification. For example, in response to a rejection under
35 U.S.C. § 101, an applicant could submit a declaration under
§ 1.132 providing testimony on how one of ordinary skill in the
art would interpret the disclosed invention as improving
technology and the underlying factual basis for that conclusion.
Update, 13 (emphasis added).
In this case, the Examiner concludes the present claims do not recite
an improvement to technology. Non-Final Act. 8–9, 11–12, 14, 20; Ans. 9,
13–14, 16. Consequently, we focus on any evidence Appellant cites, as
directed in the Update. Here, although Appellant merely identifies
paragraphs 45–46 of the Specification, those paragraphs describe lowering
response times for agents responding to a user’s query (i.e., certain methods
of organizing human activity), which fall within the category of an abstract
idea as discussed supra, not an improvement to technology. Appeal Br. 52–
54 (citing Spec. ¶¶ 45–46); Reply Br. 9–11. Paragraphs 45–46 of the
Specification are unlike the technological improvements in McRO.
The subject claims considered by the McRO court concerned a method
for automatically animating lip synchronization and facial expressions.
McRO, 837 F.3d at 1303. The McRO court concluded the subject claims did
not recite an abstract idea because the computer animation improved the
prior art through the use of rules, rather than artists, to set morph weights
and transitions between phonemes. Id. at 1308. Thus, the claimed invention
in McRO allowed for computer performance of animation steps that
previously had to be performed by human animators. Id. at 1313. The
subject claims in McRO used “limited rules in a process specifically
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designed to achieve an improved technological result” over “existing,
manual 3-D animation techniques.” Id. at 1316, 1314. Unlike the claims of
McRO, the present claims do not recite rules for lip sync and facial
expression animation or an improvement in computer technology.
We also disagree with Appellant’s argument that the present claims
recite an improvement in computer-related technology. Reply Br. 9–11
(citing Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc., 880 F.3d
1356 (Fed. Cir. 2018)). In Core Wireless, the court noted that the invention
improved the efficiency of using an electronic device by consolidating “‘a
limited list of common functions and commonly accessed stored data,’
which can be accessed directly from the main menu.” Core Wireless, 880
F.3d at 1363. Moreover, displaying selected data or functions of interest in
the summary window allowed the user to view the most pertinent data or
functions “‘without actually opening the application window up.’” Id. at
1367 (emphasis omitted). As a result, the user’s navigation speed through
various views and windows is improved because it saves the user from
having to navigate to the required application, opening the application, and
then navigating within that application to enable the data of interest to be
seen or a function of interest to be activated. Id. Unlike the claims of Core
Wireless, the present claims do not recite a graphical user interface for
mobile devices that displays commonly accessed data on a main menu or an
improvement in the functioning of computers.
Instead, the present claims recite an abstract idea as discussed supra,
in § I.D.1. or at best, improving an abstract idea—not a technological
improvement. The Specification indicates the additional elements (i.e.,
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“processor,”6 “server,”7 “user device,” “display,” “visual response
interface,” and “agent device”8) recited in the present claims are merely
generic computer components used to implement the abstract idea. Spec.
¶¶ 24, 27, 51, 53. Further, the generic computer components, individually or
in combination, do not integrate the judicial exception into a practical
application.
Additionally, “a claim for a new abstract idea is still an abstract idea.”
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir.
2016). “[U]nder the Mayo/Alice framework, a claim directed to a newly
discovered law of nature (or natural phenomenon or abstract idea) cannot
rely on the novelty of that discovery for the inventive concept necessary for
patent eligibility . . . .” Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369,
1376 (Fed. Cir. 2016) (citations omitted).
Appellant also argues that the present claims necessarily are rooted in
computer technology to solve problems specifically arising in that realm,
similar to the claim in DDR. Appeal Br. 35–40. We disagree. The subject
claim considered by the DDR court pertained to a visitor of a host’s website
clicking on an advertisement for a third-party product displayed on the
host’s website, the visitor is no longer being transported to the third party’s
website. DDR, 773 F.3d at 1257. In DDR, instead of losing visitors to the
third-party’s website, the host website can send its visitors to a web page on
an outsource provider’s server that (1) incorporates “look and feel” elements
from the host website and (2) provides visitors with the opportunity to

6 This feature is recited in claims 1 and 26, but not recited in claim 25.
7 This feature is recited in claims 1 and 26, but not recited in claim 25.
8 This feature is recited in claim 26, but not recited in claims 1 and 25.
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purchase products from the third-party merchant without actually entering
that merchant’s website. Id. at 1257–58. In contrast to the claims of DDR,
the present claims do not recite incorporating “look and feel elements” from
a host website and providing visitors with the opportunity to purchase
products from a third-party merchant without actually entering the
merchant’s website.
Appellant’s argument that the present claims do not preempt any
abstract idea does not persuade us that the claims are eligible. Appeal Br.
37. Although preemption may denote patent ineligibility, its absence does
not demonstrate patent eligibility. See FairWarning, IP, LLC v. Iatric Sys.,
Inc., 839 F.3d at 1098. For claims covering a patent-ineligible concept,
preemption concerns “are fully addressed and made moot” by an analysis
under the Mayo/Alice framework. Ariosa Diagnostics, Inc. v. Sequenom,
Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
Appellant does not make any other arguments pertaining to step 2A,
prong 2. Because the present claims recite an abstract idea that is not
integrated into a practical application, we proceed to Step 2B.
3. Step 2B
We agree with the Examiner’s determination that the abstract idea is
implemented with additional elements that are well-understood, routine, and
conventional. Non-Final Act. 6–7, 18–19 (citing Spec. ¶ 53, Fig. 8;
Ultramercial, 772 F.3d at 716–17; buySAFE, 765 F.3d at 1355); Ans. 6–8.
The Specification also supports the Examiner’s determination in this regard
because it explains that “processor,” “server,” “user device,” “display,”
“visual response interface,” and “agent device” are generic components.
Spec. ¶¶ 24, 27, 51, 53. Appellant’s Specification indicates these additional
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elements were well-understood, routine, and conventional components
because it describes them at a high level of generality and in a manner that
indicates that they are sufficiently well-known. Id. Moreover, the additional
elements recited in the present claims, analyzed individually or in
combination, do not result in the claim, as a whole, amounting to
significantly more than the judicial exception.
In addition, the present claims recite an abstract idea using additional
elements that are generic computer components as discussed supra, in
§§ I.D.1. and I.D.2. or at best, improving an abstract idea—not an inventive
concept for the reasons discussed in § I.C.2. Accordingly, Appellant’s
assertion fails to identify error in the Examiner’s findings.
Appellant does not argue claims 2–6, 8–13, 15–18, 22, and 25–27
separately with particularity, but asserts the § 101 rejection of those claims
should be withdrawn for at least the same reasons as argued for independent
claim 1. Appeal Br. 31–56. Accordingly, we sustain the Examiner’s
rejection of (1) independent claims 1, 25, and 26; and (2) dependent claims
2–6, 8–13, 15–18, 22, and 27 under 35 U.S.C. § 101.
We have only considered those arguments that Appellant actually
raised in the Briefs. Arguments Appellant could have made, but chose not to
make, in the Briefs have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(iv).

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CONCLUSION

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See
37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–6, 8–13,
15–18, 22,
25–27
101 Eligibility 1–6, 8–13,
15–18, 22,
25–27