Jorn Lyseggen

Patent Trials and Appeals Board

Feb 24, 2020

14794610 - (D) (P.T.A.B. Feb. 24, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/794,610 07/08/2015 Jorn LYSEGGEN 085178-523175 4584
68769 7590 02/24/2020
HOUSTON OFFICE OF
POLSINELLI PC
1000 LOUISIANA STREET
Suite 6400
HOUSTON, TX 77002
EXAMINER
MCQUITERY, DIEDRA M
ART UNIT PAPER NUMBER
2166
NOTIFICATION DATE DELIVERY MODE
02/24/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
PatentDocketing@Polsinelli.com
houstonipassistant@polsinelli.com
salaniz@polsinelli.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JORN LYSEGGEN
____________________

Appeal 2018-0089561
Application 14/794,610
Technology Center 2100
____________________

Before ROBERT E. NAPPI, ERIC S. FRAHM, and MICHAEL T. CYGAN,
Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

1 Throughout this opinion, we refer to: (1) the Final Office Action mailed
April 4, 2017 (“Final Act.”); (2) the Appeal Brief filed March 19, 2018
(“Appeal Br.”); (3) the Examiner’s Answer mailed July 13, 2018 (“Ans.”);
and (4) the Reply Brief filed Sept. 13, 2018 (“Reply Br.”).

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STATEMENT OF CASE
Introduction
Appellant2 appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 21–25 and 28–42, all of the claims pending in the application.
Claims 1–20, 26, and 27 have been canceled. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
Appellant’s Disclosed and Claimed Invention
Appellant’s disclosed invention pertains to a search engine (see e.g.,
Fig. 1, search engines 12, 18, 22) for searching large numbers of documents
on the intranet or Internet (see e.g., Fig. 1, network 16) using search terms
(see Title; Abstract; Spec. 1), and more specifically to a method and
apparatus for searching for ranking the relevancy of documents using the
author or publisher (e.g., source of the document) (see Spec. 1–2; Fig. 10,
step 50; Fig. 11, step 52; Fig. 12, step 56). Accordingly, Appellant’s
disclosed and claimed invention provides for a searching process that takes
into account the author or publisher of documents (see Spec. 2; Abstract;
independent claims 21, 39, and 40).

2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. “The word ‘applicant’ when used in this title refers to the
inventor or all of the joint inventors, or to the person applying for a patent as
provided in §§ 1.43, 1.45, or 1.46.” 37 C.F.R. § 1.42(a). Appellant
identifies the real party in interest as the inventor, Jorn Lyseggen (Appeal
Br. 2).
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Exemplary Claim
Exemplary claim 21 under appeal, with bracketed lettering/numbering
and emphases added to key portions of the claim at issue, reads as follows:
21. An electronic device comprising:
a processor;
a non-transitory storage medium coupled to the processor
and configured to store instructions for execution by the
processor to cause the electronic device to:
receive at least one search term from an interface;
receive at least one pre-qualified information source from the
interface;
search a network for documents that comprise at least a
portion of the at least one search term;
determine an information source of resulting documents
of the search;
[A1] determine the relevance of the resulting documents
based at least on the information source of the resulting
documents comprising qualifying the source of the resulting
documents based at least on:
[A2] reputation of the information source; and
[A3] equivalence to at least one pre-qualified
information source;
sort the resulting documents based at least on the
qualifying the information source of the resulting
documents, wherein the information source is one of an
author or publisher.
Appeal Br. 26, Claims Appendix (emphases and bracketed
lettering/numbering added).
The Examiner’s Rejections
(1) Claims 21–25 and 28–42 stand rejected under 35 U.S.C. § 101 as
being directed to patent-ineligible subject matter (an abstract idea), without
significantly more. Final Act. 5–8.
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(2) Claims 21–25, 38–30, 36, and 38–40 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Guha (US 7,603,350 B1; issued Oct. 13,
2009) (hereinafter, “Guha 1”),3 and Troy et al. (US 2006/0248076 A1;
published Nov. 2, 2006) (hereinafter, “Troy”). Final Act. 8–14.
(3) Claims 31–35 and 41 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Guha 1, Troy, and McBeath et
al. (US 2006/0112084 A1; published May 25, 2006) (hereinafter,
“McBeath”). Final Act. 14–16.
(4) Claim 42 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Guha 1, Troy, McBeath, and Jones et
al. (US 2007/0143345 A1; published June 21, 2007) (hereinafter, “Jones”).
Final Act. 16–17.
(5) Claim 37 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over the base combination of Guha 1, Troy, and Awadallah et
al. (US 2005/0027699 A1; published Feb. 3, 2005) (hereinafter,
“Awadallah”). Final Act. 17–18.
Principal Issues on Appeal
Based on Appellant’s arguments (Appeal Br. 9–19; Reply Br. 1–10),
and because claims 21–25, 28–30, 36, and 38–40 contain commensurate
limitations, we select claim 21 as representative of claims 21–25 and 28–42
rejected under 35 U.S.C. § 101 for patent-ineligibility. Based on Appellant’s
obviousness arguments (Appeal Br. 20–24; Reply Br. 10–11), and because

3 In making the obviousness rejection of claims 21, 39, and 40, the Examiner
relies upon Guha 1 as incorporating by reference several portions of Guha
(US 2007/0038616 A1; published Feb. 15, 2007) (hereinafter, “Guha 2”).
See Final Act. 9–10.
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claims 21–25, 28–30, 36, and 38–40 contain commensurate limitations, we
select claim 21 as representative of claims 21–25, 28–30, 36, and 38–40
rejected under 35 U.S.C. § 103(a) for obviousness over the base combination
of Guha 1 and Troy. For similar reasons, we decide the outcome of claims
31–35, 37, 41, and 42 (rejected over the base combination taken with various
other prior art references), which ultimately depends from independent claim
21, on the same bases as claim 21.
Therefore, based on Appellant’s arguments in the Appeal Brief
(Appeal Br. 9–25) and the Reply Brief (Reply Br. 1–13), the following
principal issues are presented on appeal:
(1) Has Appellant shown the Examiner erred in rejecting claims 21–
25 and 28–42 under 35 U.S.C. § 101 as being directed to patent-ineligible
subject matter (i.e., a judicial exception such as an abstract idea, without
significantly more)?
(2) Did the Examiner err in rejecting claims 21–25 and 28–42 under
35 U.S.C. § 103(a) as being unpatentable over the base combination of Guha
1 and Troy because the base combination fails to teach or suggest limitations
A1–A3 recited in representative claim 21?

ANALYSIS
Patent Eligibility Under 35 U.S.C. § 101
Section 101 of the Patent Act provides “[w]hoever invents or
discovers any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof, may
obtain a patent therefor, subject to the conditions and requirements of this
title.” 35 U.S.C. § 101. However, the Supreme Court has long interpreted
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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.” 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.
(15 How.) 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
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statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 176; 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
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (internal 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 published revised guidance on the application of § 101.
USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the Guidance, we first look to
whether the claim recites:
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(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 1); 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.,
Rev. 08.2017, 2018) (Step 2A, Prong 2).
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 (Step 2B).
See Guidance, 84 Fed. Reg. at 54–56.
Even if the claim recites an abstract idea, the Federal Circuit explains
the “directed to” inquiry is not simply asking whether the claims involve a
patent-ineligible concept:
The “directed to” inquiry . . . cannot simply ask whether the
claims involve a patent-ineligible concept, because essentially
every routinely patent-eligible claim involving physical
products and actions involves a law of nature and/or natural
phenomenon—after all, they take place in the physical world.
See Mayo, 132 S. Ct. at 1293 (“For all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural
phenomena, or abstract ideas.”) Rather, the “directed to”
inquiry applies a stage-one filter to claims, considered in light
of the specification, based on whether “their character as a
whole is directed to excluded subject matter.”
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Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016); see
also Diehr, 450 U.S. at 188 (“In determining the eligibility of respondents’
claimed process for patent protection under § 101, their claims must be
considered as a whole.”); McRO, Inc. v. Bandai Namco Games Am. Inc., 837
F.3d 1299, 1314 (Fed. Cir. 2016) (the question is whether the claims as a
whole “focus on a specific means or method that improves the relevant
technology or are instead directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery”).
Step 1
Under Step 1 of the patent-eligibility inquiry under § 101, we
determine whether a claim is directed to one of the four statutory categories
of invention, i.e., a process, machine, manufacture, or composition of matter.
In the instant case on appeal, claim 21, and claims 22–38, 41, and 42
depending therefrom, recite “[a]n electronic device” including “a processor;
“a non-transitory storage medium,” “an interface,” and “a network” (claim
21). Claim 39 recites “[a] computer implemented method” having a series
of steps (claim 39). Claim 40 recites “[a] non-transitory medium operating
in “an electronic device” connected to “an interface” and “a network” (claim
40). Therefore, (i) claim 21 (and claims 22–38, 41, and 42 depending
therefrom); (ii) claim 39; and (iii) claim 40, each recite at least one of the
enumerated categories (e.g., process, machine, or manufacture) of eligible
subject matter in 35 U.S.C. § 101.
As a result, as to claims 21–25 and 28–42, we continue our analysis
under Step 2A, Prong 1 of the Guidance to determine whether representative
the claims (1) recite a judicial exception (a law of nature, natural
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phenomenon, or subject matter within the enumerated groupings of abstract
ideas above); and (2) are patent-eligible.
Step 2A, Prong 1
At a high level, representative claim 21 simply recites an electronic
device (i.e., computer) that includes a process and a storage medium (i.e.,
memory) for searching documents (having source information) on a network
(i.e., a search engine). This is supported by the Specification (see Title;
Abstract; Spec. 1–4) and Drawings (see Fig. 1). In particular, Appellant
describes that the source search engine of the alleged invention “may be
included in computer hardware (e.g., a server, a personal computer, or other
electronic device)” (Spec. 3:20–21).
The Examiner determines, and we agree, that claim 21 (i) is “directed
to the abstract idea of determining the relevance of documents based upon
the qualifications of information sources” (Final Act. 5); (ii) “is akin to the
abstract idea of analyzing information in a way that can be performed
mentally as a human can analyze an information source and determine other
qualified information sources through the use of keywords, terms,
reputation/credibility of an information source, etc.” (Ans. 5); and (iii)
drawn to limitations previously found by the courts to be ineligible, such as
“the abstract idea of collecting information, analyzing it, and displaying
certain results” (Ans. 6; see also Ans. 9), “filtering” or sorting (Ans. 10), and
“customizing information based on particular characteristics” (Ans. 12).
This is in agreement with Appellant’s disclosure that the invention relates to
a search engine (see Title) and method for searching for relevant documents
(Abstract; Spec. 1–4; see also Figs. 10–15). Appellant’s disclosed and
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claimed invention are “a source search engine which outputs a list of
documents in response to entering a search term” (Spec. 4:6–7; see Fig. 1).
Appellant contends “[t]he claimed subject matter cannot be
implemented absent a computer system” (Appeal Br. 12) because “the
problem addressed by Appellant’s presently claimed subject matter is rooted
in computer technology as currently, the large amount of documents (e.g.,
web sites) are available only because of the evolution of the Internet and
because the current methodologies of searching these large amounts of
documents” (Appeal Br. 12) (emphasis in original). Appellant also contends
the claimed process cannot be performed mentally by humans because
millions of documents must be searched via the Internet to locate the
relevant documents of a search (Reply Br. 7). However, claim 21 does not
recite a large number of documents such that the claim cannot be practically
performable in the human mind or with pen and paper (see claim 21 recites a
device to “search a network for documents” to find “resulting documents”
and then “sort the resulting documents” based on relevance). Claim 21 only
recites operating on a plurality of documents, which could mean a million,
one hundred, or even just two or three. Therefore, under the broadest
reasonable interpretation, claim 21 covers a process for search just two or
three documents.
We determine that the limitations of claim 21 are focused on, and
generally relate to mental steps such as forming opinions, evaluations, or
judgments, i.e., the ranking relevant document sources by reputation of the
sources (see generally claim 21; Figs. 10–12; Spec. 2:15–3:10;
Abstract). See Gottschalk v. Benson, 409 U.S. 63, 67 (1972). As such, the
claimed invention recites a mental process, which is an abstract idea. See,
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e.g., Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1146 (Fed.
Cir. 2016) (“analyzing information by steps people [can] go through in their
minds, or by mathematical algorithms, without more [are] mental
processes within the abstract-idea category.”); Digitech Image Techs., LLC
v. Electronics for Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014) (process of
organizing information through mathematical correlations found ineligible);
Digitech Information Systems, Inc. v. BMW Auto Leasing, LLC, 504 F. App’x
920 (mem.) (Fed. Cir. 2013) (rendering a decision based on data and
mathematical formulas and finding process of operating on information
using mathematical formulas/correlations patent ineligible); Clarilogic v.
Formfree Holdings, 681 Fed. App’x. 950, 954–55 (Fed. Cir. 2017)
(gathering, analyzing, and outputting financial data/assessment is an abstract
idea that is patent ineligible).
Because we conclude, and Appellant does not contest, claim 21
recites an abstract idea, we proceed to Step 2A, Prong 2 of the Guidance to
determine whether claim 21 is “directed to” the judicial exception, by
determining whether additional elements of the claim integrate the abstract
idea into a practical application. Such additional elements may reflect an
improvement to a technology or technical field. See Guidance, 84 Fed. Reg.
at 55.
Step 2A, Prong 2 – Practical Application
Under Step 2A, Prong 2, we determine whether the recited judicial
exception is integrated into a practical application of that exception. If the
recited judicial exception is integrated into a practical application, the claim
is not directed to the judicial exception.
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The claimed invention (see claim 21) receives data (e.g., search terms
from pre-qualified information sources), searches a network for relevant
documents having information sources, and then sorts the resulting
documents based on certain criteria (e.g., qualifications of the information
source of the documents) – this is merely conventional data gathering and
analysis. See MPEP § 2106.05(g); OIP Techs., Inc. v. Amazon.com, Inc.,
788 F.3d 1359, 1363 (Fed. Cir. 2015); Elec. Power Grp., LLC v. Alstom S.A.,
830 F.3d 1350, 1354 (Fed. Cir. 2016). As such, based on the record before
us, we determine that the claimed invention is not integrated into a practical
application.
Merely adding a programmed computer to perform generic computer
functions does not automatically overcome an eligibility rejection. Alice,
573 U.S. at 223–24. Furthermore, the use of a general purpose computer to
apply an otherwise ineligible algorithm does not qualify as a particular
machine. See Ultramercial, 772 F.3d at 716–17; In re TLI Commc’ns LLC
v. AV Automotive, LLC, 823 F.3d 607, 613 (Fed. Cir. 2016) (mere recitation
of concrete or tangible components is not an inventive concept); Eon Corp.
IP Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616, 623 (Fed. Cir. 2015)
(noting that Alappat’s rationale that an otherwise ineligible algorithm or
software could be made patent-eligible by merely adding a generic computer
to the claim was superseded by the Supreme Court’s Bilski and Alice
decisions).
For the reasons discussed above, we conclude Appellant’s claim 21
(and claims 22–25 and 28–40 grouped therewith) invokes generic computer
and/or network components (an “electronic device” having “a processor”
and “storage medium” connected to “an interface” and “a network”) merely
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as a tool in which the computer instructions apply the judicial exception and,
thus, the abstract idea is not integrated into a practical application. Because
Appellant has not persuaded us the Examiner’s determination that claim 21
recites an abstract idea under Step 2A is in error, and claim 21 recites a
judicial exception (i.e., the abstract idea of a mental process) that is not
integrated into a practical application, in accordance with the Guidance, we
conclude claim 21 and claims 22–25 and 28–42 grouped therewith, are
directed to an abstract idea under Step 2A, and the eligibility analysis with
regard to claims 21–25 and 28–42 proceeds to Step 2B.
Step 2B – Inventive Concept
Having determined claim 21 and claims 22–25 and 28–42 grouped
therewith are directed to an abstract idea that is not integrated into a practical
application, we now evaluate whether the additional elements add a specific
limitation that is not well-understood, routine, or conventional activity in the
field, or simply append well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the abstract idea. See generally Guidance.
We agree with the Examiner that “[t]he claims do not include
additional elements that are sufficient to amount to significantly more than
the judicial exception [e.g., a mental process] because the additional
elements when considered both individually and as an ordered combination
do not amount to significantly more than the abstract idea” (Final Act. 6).
Claim 21 recites the additional limitations of an electronic device, a
processor, and a storage medium to perform the searching and ranking
process over an interface with a network. Thus, we also agree with the
Examiner that “[t]hese components are recited at a high level of generality
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and are recited for performing generic computer functions routinely used in
computer applications” (Final Act. 6).
Appellant has not shown claim 21 recites additional elements that
integrate the judicial exception into a practical application, either by way of
evidence or argument. In particular, Appellant has not shown the additional
computer and communication network elements, alone or in some
combination, integrate the judicial exception into a practical application.
In the instant case on appeal, the additional elements recited in claim
21 (“a processor” and “storage medium” of an “electronic device,” “an
interface,” and “a network”) do not “contain[] an ‘inventive concept’
sufficient to ‘transform’ the claimed abstract idea into a patent-eligible
application.” Alice, 573 U.S. at 221 (internal quotation marks omitted), or
“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). Instead, claim 21 merely
requires a generic computer and/or network implementation and fails to
transform that abstract idea into a patent-eligible invention. Id.
Here, the Examiner determines, and we agree, that the only elements
beyond the abstract idea are generic computer components used to perform
generic computer functions (Final Act. 6–8; Ans. 7–8) — a determination
that is supported by Appellant’s Figure 1 and the accompanying description
found in the Specification (see, e.g., Fig. 1; Spec. 3:19–4:16). And,
Appellant’s Specification only shows (see Fig. 1) and describes (see Spec.
3:19–4:16) well-understood, routine, conventional computer or search
engine (Fig. 1, 18, and network components used for searching the Internet
(e.g., a processor, storage medium, network 16, and interface 14) that are in
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a general purpose computing and communication network environment in a
manner that indicates the components and the functions they perform were
well-known in the art. See Hybritech Inc. v. Monoclonal Antibodies, Inc.,
802 F.2d 1367, 1384 (Fed. Cir. 1986) (explaining that “a patent need not
teach, and preferably omits, what is well known in the art”); see also
USPTO, Memorandum on Changes in Examination Procedure Pertaining to
Subject Matter Eligibility, Recent Subject Matter Eligibility Decision
(Berkheimer v. HP, Inc.) at 3 (Apr. 19, 2018), available at
https://www.uspto.gov/sites/default/files/documents/memo-berkheimer-
20180419.PDF (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);
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.”).
As a result, we are not persuaded that the sorting and searching
operations recited in claim 21 are anything beyond generic computer and/or
communication network functions as opposed to an improvement to a
mental process. Considering the elements of claim 21 individually and as an
ordered combination, claim 21 does no more than simply instruct the
practitioner to implement the abstract idea on a generic computer, processor,
database, and/or communication network. Dealertrack, Inc. v. Huber, 674
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F.3d 1315, 1333–34 (Fed. Cir. 2012) (“Simply adding a ‘computer aided’
limitation to a claim covering an abstract concept, without more, is
insufficient to render [a] claim patent eligible.”)
Claim 21 neither explicitly recites (i) improving the efficiency or
speed of the computing system, engines, or components, nor (ii) reducing
needed memory storage space. Instead, claim 21 merely recites computer
elements performing generic computer functions to perform the abstract idea
(i.e., a mental process for searching and sorting documents, and does not
“include ‘additional features’ to ensure ‘that the [claim] is more than a
drafting effort designed to monopolize the [abstract idea].’” Alice, 573 U.S.
at 221 (alterations in original) (quoting Mayo, 566 U.S. at 77). Thus, the
electronic device for searching and sorting doucments recited in Appellant’s
claim 21 does not exhibit the type of activity that distinguishes inventions
having significantly more than the abstract idea from those claims that do no
more than generically link the use of the method to a particular technological
environment, that is, by computers, memories, processors, communication
networks including gateways, or engines. Alice, 573 U.S. at 226. Instead,
claim 21 merely requires generic computer implementation and fails to
transform that abstract idea into a patent-eligible invention. Id.
Appellant does not persuasively argue any specific limitation or
combination thereof is not well-understood, routine, or conventional in the
field (see generally Appeal Br. 13–15; Reply Br. 6–8). Nor does Appellant
persuasively argue the Examiner erred in that aspect. In particular,
Appellant’s arguments that “[t]here has not, to date, been any factual
determination sufficient under Berkheimer” (Reply Br. 8) is not persuasive
in light of the Examiner’s findings at pages 7 through 8 of the Examiner’s
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Answer, citing several court decisions discussed in MPEP § 2106.05(d)(II)
(see Ans. 8), as required by Berkheimer. See USPTO, Memorandum on
Changes in Examination Procedure Pertaining to Subject Matter Eligibility,
Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.) at 4
(Apr. 19, 2018), available at
https://www.uspto.gov/sites/default/files/documents/memo-berkheimer-
20180419.PDF.
Additionally, as noted in MPEP § 2106.05(d)(II), the courts have
previously recognized that using computer processors and memories to
collect and search data, keep records, perform repetitive calculations like
sorting/filtering, and/or receive/send data are well‐understood, routine, and
conventional functions when they are claimed in a merely generic manner
(e.g., at a high level of generality) or as insignificant extra-solution activity
(see MPEP § 2106.05(d)(II)(i)–(iv). See also Berkheimer v. HP Inc., 881
F.3d 1360, 1366 (Fed. Cir. 2018) (acts of parsing, comparing, storing, and
editing data are abstract ideas); SAP Am., Inc. v. Investpic, LLC, 890 F.3d
1016, 1021 (Fed. Cir. 2018) (“merely presenting the results of abstract
processes of collecting and analyzing information . . . is abstract as an
ancillary part of such collection and analysis”); Intellectual Ventures I LLC
v. Capital One Fin. Corp., 850 F.3d 1332, 1340 (Fed. Cir. 2017)
(“collecting, displaying, and manipulating data” is an abstract idea); Smart
Sys. Innovations, LLC v. Chicago Transit Authority, 873 F.3d 1364, 1372
(Fed. Cir. 2017) (concluding “claims directed to the collection, storage, and
recognition of data are directed to an abstract idea.”).
As a result, Appellant’s contentions (Appeal Br. 13–15; Reply Br. 6–
8) that the Examiner has failed to make appropriate findings under Step 2B
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of the analysis for patent eligibility are unpersuasive, and Appellant has not
persuaded us the Examiner erred with respect to the Guidance’s Step 2B
analysis. See Guidance, 84 Fed. Reg. at Step 2B.
In view of the foregoing, Appellant has not sufficiently shown the
Examiner erred in determining claims 21–25 and 28–42 are directed to
patent-ineligible subject matter (an abstract idea such as a mental process),
without significantly more.

Obviousness Under 35 U.S.C. § 103
We have reviewed the Examiner’s obviousness rejection of
representative claim 21 (Final Act. 8–11) and response to Appellant’s
arguments in the Appeal Brief (Ans. 12–15), in light of Appellant’s
arguments in the briefs (Appeal Br. 20–24; Reply Br. 10–12) that the
Examiner has erred. We disagree with Appellant’s arguments. With regard
to representative independent claim 21, we adopt as our own (1) the findings
and reasons set forth by the Examiner in the action from which this appeal is
taken (Final Act. 9–11), and (2) the reasons set forth by the Examiner in the
Examiner’s Answer (Ans. 12–15) in response to Appellant’s Appeal Brief.
We concur with the findings and conclusions reached by the Examiner. We
provide the following for emphasis only.
Appellant’s main contentions (see Appeal Br. 21–23; Reply Br. 11–
12) are unpersuasive, namely that Guha 1 and Guha 2 disclose searching
based on trust, and are silent as to, and do not teach or suggest, searching (i)
“based on search input terms” to determine “the documents that should be
displayed to a user” (i.e., relevant documents), based on reputation and
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equivalence to user pre-qualified sources4 (Appeal Br. 21); or (ii) based on
‘“reputation of the information source” (Reply Br. 11–12), as claimed.
Appellant argues (Appeal Br. 22) that paragraph 33 of the Specification
explains reputation as based on, for example, credibility, and Guha 1 and
Guha 2 fail to teach or suggest searching based on reputation as claimed.
This is not persuasive, since one of ordinary skill in the art of searching
would understand that reputation or credibility of something is related to the
measure or degree of trust one has in something (or something they have
written in the past), and thus trusting a source suggests that you have
qualified the source as having a trustworthy reputation. In any event, both
Troy (¶ 37) and Guha 2 (¶¶ 55, 92) teach using relevance, and Guha 1 teach
searching based on reputation. In addition, we agree with the Examiner’s
finding (see Ans. 13) that although Appellant’s Specification (see Spec.
11:3–15) describes determining credibility of a source based on reputation,
the same portion/paragraph of the Specification also states that “[o]ne of
ordinary skill in the art would appreciate other ways of reputation of a
source may be assigned” (Spec. 11:14–15).
Appellant’s arguments are also not persuasive, because Guha 1
teaches (i) searching “according to a measure of trust associated with
entities” (Guha 1 col. 1, ll. 56–57); (ii) using “the degree to which[] one
entity trusts another entity” (Guha 1 col. 3, ll. 2–3) or a “degree of trust”
(Guha 1 col. 4, l. 32); and (iii) “a method for processing search results with
trust ranks” (Guha 1 col. 3, ll. 39–40) and using “trust information” (Guha 1

4 One of ordinary skill in the art of searching for good literature would
understand that searching based on an author or publisher’s reputation would
be determining a user pre-qualified source as claimed.
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col. 5, l. 12) to perform “search result ranking” (Guha 1 col. 5, l. 14). Guha
1 discloses that “[a]n ‘entity’ may be a specific person, group organization,
website, business, institution, government agency or the like” (col. 5, ll. 8–
10). Further, Guha 2, incorporated by reference in Guha 1 (see Guha 1 col.
7, ll. 58–62), teaches a search engine system that determines relevance (see
Guha 2 ¶ 55) using “rating scales” (Guha 2 ¶ 77) or “weightings” (Guha 2 ¶
119) in order to find an “author” (Guha 2 ¶ 60), “source” (Guha 2 ¶¶ 199,
240), or entities “who publish” that are the “most authoritative or useful for
particular topics” (Guha 2 ¶ 92).
Troy plainly teaches “identif[ying] experts in a field of knowledge by
determining relevance of one or more information source[s] considered in a
search, wherein such information source is associated with an author” and
where “[a]n author can be an individual, a group of individuals, an
institution (e.g., university), a publisher, [etc.]” (Troy ¶ 37) (emphases
added). Troy’s Title is “. . . Ranking and Literature Search Based on
Authorship in Large Document Collections” (see Title). Thus, we agree
with the Examiner’s findings (see Final Act. 11) that Troy teaches sorting
search result documents by qualifying the information source by author or
publisher. In this light, Appellant’s general dispute of the Examiner’s
findings of Troy,5 is unpersuasive.
Appellant has not adequately shown that the combination of Guha 1
(incorporating Guha 2) and Troy teaches or suggests the electronic device

5 Appellant contends the “Guha and Troy are completely silent regarding
this feature [i.e., ‘qualifying the source of the resulting documents’] and, in
fact, the Final Office Action provides no rejection for this feature” (Appeal
Br. 21).
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set forth in claim 21 that searches by determining relevance and ranking
search results based on the reputation of the information sources. In view of
the foregoing, Appellant’s contentions (Appeal Br. 20–24; Reply Br. 10–12)
that the Examiner erred in rejecting claim 21 as being obvious over the base
combination of Guha 1 and Troy are unpersuasive.
Summary
(1) As explained above, under the USPTO’s Revised Patent Eligibility
Guidance, based on the record before us, and informed by our governing
case law concerning 35 U.S.C. § 101, Appellant has not shown the Examiner
erred in rejecting claims 21–25 and 28–42 as being directed to patent-
ineligible subject matter without significantly more, and we sustain the
rejection of claims 21–25 and 28–42 under 35 U.S.C. § 101.
(2) Appellant has not shown the Examiner erred in rejecting claims
21–25 and 28–42 as being unpatentable under 35 U.S.C. § 103. In view of
the foregoing, we sustain the obviousness rejection of representative claim
21, as well as claims 22–25, 28–30, 36, and 38–40 grouped therewith as
being obvious over the base combination of Guha 1 and Troy. For similar
reasons, and because (i) Appellant relies on the arguments presented as to
claim 21 in arguing the remaining claims (claims 22–25 and 28–42); (ii)
claims 39 and 40 recite commensurate limitations as claim 21; and (iii)
claims 22–25 and 28–38 ultimately depend from claim 21, we also sustain
the remaining obviousness rejection of claims 22–25 and 28–38 over the
same base combination.

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CONCLUSION
For all of the reasons above, we hold as follows:
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
21–25,
28–42
101 Eligibility 21–25, 28–42
21–25,
28–30,
36, 38–
40
103(a) Guha 1, Troy 21–25, 28–30,
36, 38–40

31–35,
41
103(a) Guha 1, Troy,
McBeath
31–35, 41
42 103(a) Guha 1, Troy,
McBeath, Jones
42
37 103(a) Guha 1, Troy,
Awadallah
37
Overall
Outcome
21–25, 28–42

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)(1). See 37 C.F.R.
§§ 41.50(f), 41.52(b) (2013).

AFFIRMED