Kari Steinberg

Patent Trials and Appeals Board

Mar 29, 2021

2020004209 (P.T.A.B. Mar. 29, 2021)

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.
15/288,537 10/07/2016 Kari Steinberg KFS-00100 8113
34209 7590 03/29/2021
WESTBERG LAW OFFICES
569 Clyde Ave. Ste. 530
Mountain View, CA 94043
EXAMINER
ARAQUE JR, GERARDO
ART UNIT PAPER NUMBER
3689
MAIL DATE DELIVERY MODE
03/29/2021 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KARI STEINBERG
Appeal 2020-004209
Application 15/288,537
Technology Center 3600
Before RICHARD M. LEBOVITZ, JEFFREY N. FREDMAN, and
TAWEN CHANG, Administrative Patent Judges.
CHANG, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–29 and 31–34. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Kari Francis
Steinberg. Appeal Br. 2.
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STATEMENT OF THE CASE
“The invention relates to crowd sourced review systems and in
particular to a system wherein giving users submit reports regarding
receiving entities.” Spec. ¶ 2. “In some aspects of embodiments of the
invention, reports or comments are provided to a user and a user may
approve or reject comments.” Id. at ¶ 5.

CLAIMED SUBJECT MATTER
The claims are directed to a method of receiving and publishing or
generating reports. Claim 1 is illustrative:
1. A method for receiving and publishing reports, comprising
the steps of:
creating a profile for a receiving entity, wherein the
profile is stored in a database;
receiving, by a processor, a report from a giving user
regarding the receiving entity;
generating, by the processor, a report code uniquely
associated with the report;
passing a physical representation of the report code from
the giving user to the receiving entity;
associating, by the processor, the report code received by
the receiving entity with the profile of the receiving entity;
receiving from the receiving entity, by the processor, an
approval or a rejection of the report associated with the report
code; and
publishing, by the processor, the report on the profile of
the receiving entity, if the processor received approval of the
report from the receiving entity.
Appeal Br. 27 (Claims App.).

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REJECTION(S)
A. Claims 1–29 and 31–34 are rejected under 35 U.S.C. § 101 as being
directed toward judicial exceptions to patent-subject matter, without
significantly more. Ans. 3.
B. Claims 1–6, 12, 21–27, 29, and 31–33 are rejected under 35 U.S.C.
§ 103 as being unpatentable over Xiong2 and Kinsey3. Ans. 3.
C. Claims 7, 8, 13–15, 19, and 20 are rejected under 35 U.S.C. § 103 as
being unpatentable over Xiong, Kinsey, and Mote4. Ans. 3.
D. Claim 9 is rejected under 35 U.S.C. § 103 as being unpatentable over
Xiong, Kinsey, and Wilson5. Ans. 3.
E. Claims 10 and 11 are rejected under 35 U.S.C. § 103 as being
unpatentable over Xiong, Kinsey, and Carden6. Ans. 3.
F. Claim 16 is rejected under 35 U.S.C. § 103 as being unpatentable over
Xiong, Kinsey, Mote, and Wilson. Ans. 3–4.
G. Claims 17 and 18 are rejected under 35 U.S.C. § 103 as being
unpatentable over Xiong, Kinsey, Mote, Wilson, and Carden. Ans. 4.
H. Claims 28 and 34 are rejected under 35 U.S.C. § 103 as being
unpatentable over Xiong, Kinsey, and official notice. Ans. 4.

2 US 2011/0178885 A1, published July 21, 2011. (“Xiong”).
3 US 2014/0136443 A1, published May 15, 2014. (“Kinsey”).
4 US 2014/0230053 A1, published Aug. 14, 2014. (“Mote”).
5 US 2015/0235243 A1, published Aug. 20, 2015. (“Wilson”).
6 US 7,263,655 B1, published Aug. 28, 2007. (“Carden”).
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OPINION
A. Rejection under 35 U.S.C. § 101 (claims 1–29 and 31–34)
1. Issue
The Examiner concludes that, under the broadest reasonable
interpretation of the claims, the limitations recited in the claims “cover[]
performance of the limitation[s] in the mind but for the recitation of generic
computer processor” and “fall[] within the ‘Mental Processes’ and ‘Certain
Methods of Organizing Human Activities’ groupings of abstract ideas.”
Final Act. 6.
The Examiner finds that the abstract idea(s) recited in the claims are
not integrated into a practical application, because the only element in
addition to the abstract idea(s) is “using a generic processor to perform” the
claimed steps that may also be manually performed by a human. Final Act.
6. The Examiner notes that “[t]he generic processor in the steps are recited
at a high-level of generality (i.e., as a generic processor performing generic
computer functions . . . ) such that it amounts [to] no more than mere
instructions to apply the exception using a generic processor.” Id. at 6–7.
Finally, the Examiner finds that the claims do not include “additional
elements that are sufficient to amount to significantly more than the judicial
exception,” because “[m]ere instructions to apply an exception using a
generic computer component cannot provide an inventive concept.” Final
Act. 7.
Appellant contends that the Examiner has not established a prima
facie case that the claims are not patent eligible under 35 U.S.C. § 101.
Appeal Br. 7. Appellant contends that additional elements in the claims
integrate any recited abstract ideas into a practical application by providing a
“technological solution that arises in the context of computer systems” and
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“improv[ing] the functioning of the computer.” Id. at 9–10. Appellant
contends that claims recite significantly more than a judicial exception
because they recite an inventive concept involving a “non-routine manner of
conveying information, providing access to stored information and
authenticating a user to a computer system.” Id. at 12.
Appellant does not separately argue the claims.7 Accordingly, we
focus our analysis on claim 1 as representative. The issue with respect to
this rejection is whether a preponderance of evidence of record supports the
Examiner’s determination that claim 1 is directed to a judicial exception to
patent-eligible subject matter, without significantly more.

7 Appellant purports to separately argue independent claims 15 and 21 and
dependent claims 23, 24, 32, and 33. Appeal Br. 14–17. However,
Appellant’s arguments with respect to claims 15 and 21 consist essentially of
a recitation of the additional limitations in the claims and a conclusory
statement that “[t]hese additional limitations, in combination with the
inventi[ve] concept discussed in connection with claim 1, re-inforce the
conclusion that the claimed invention is directed toward patent-eligible
subject matter.” Id. at 14, 15. Appellant’s arguments with respect to claims
23, 24, 32, and 33 are equally conclusory. With respect to claims 23 and 32,
Appellant only recites the additional limitations in these claims relating to “a
human perceptible representation of the report code” and states that, “[t]aken
in combination with the [independent claim] limitations . . . , these [human
perceptible] representations [of the report code] are not abstract.” Id. at 14–
15, 16. With respect to claims 24 and 33, Appellant only states that the
claims “explicitly require[] ‘manually entering the report code,’” that “[t]his
is an integral part of the claimed process and is, therefore, not mere pre-
solution data gathering or post-solution activity,” and that “[t]his is another
reason why dependent claim[s] 24 [and 33 are] patent eligible.” Id. at 16,
17. However, arguing the claims separately requires more than reciting
additional claim elements without explanations as to why these limitations
render the claims patent eligible. In re Marco Guldenaar Holding B.V., 911
F.3d 1157, 1162 (Fed. Cir. 2018) (holding that “Board did not err in treating
claim 1 as representative of Appellant’s rejected claims”).
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2. Analysis
We analyze this case under the framework set forth by the Supreme
Court in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566
U.S. 66 (2012), and applied by our reviewing court in Ariosa Diagnostics,
Inc. v. Sequenom, Inc., 788 F.3d 1371 (Fed. Cir. 2015). As the Ariosa court
explained:
In Mayo . . . , the Supreme Court set forth a framework for
distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-
eligible applications of those concepts. First, we determine
whether the claims at issue are directed to a patent-ineligible
concept. . . . If the answer is yes, then we next consider the
elements of each claim both individually and “as an ordered
combination” to determine whether additional elements
“transform the nature of the claim” into a patent-eligible
application. . . . The Supreme Court has described the second
step of this analysis as a search for an “inventive concept”—
i.e., an element or combination of elements that is “sufficient to
ensure that the patent in practice amounts to significantly more
than a patent upon the [ineligible concept] itself.”
Id. at 1375.
Whether the Claims Are Directed to Patent-Ineligible Concept
We begin with the first step of the Mayo test, namely whether a claim
is “directed to” a patent-ineligible concept. On January 7, 2019, the Director
of the USPTO issued the “2019 Revised Patent Subject Matter Eligibility
Guidance” (“Revised Guidance”), which provides further details regarding
how the Patent Office analyzes patent-eligibility questions under 35 U.S.C.
§ 101. 84 Fed. Reg. 50–57 (Jan. 7, 2019). Under the Revised Guidance, the
first step of the Mayo test (i.e., Step 2A of the Revised Guidance) is “a two-
pronged inquiry.” Id. at 54. In prong one, we evaluate whether the claim
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recites a judicial exception, such as laws of nature, natural phenomena, or
abstract ideas. Id. The Revised Guidance explains that
the abstract idea exception includes the following groupings of
subject matter, when recited as such in a claim limitation(s)
(that is, when recited on their own or per se):
(a) Mathematical concepts—mathematical relationships,
mathematical formulas or equations, mathematical calculations;
(b) Certain methods of organizing human activity—
fundamental economic principles or practices (including
hedging, insurance, mitigating risk); commercial or legal
interactions (including agreements in the form of contracts;
legal obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior or
relationships or interactions between people (including social
activities, teaching, and following rules or instructions); and
(c) Mental processes—concepts performed in the human
mind (including an observation, evaluation, judgment, opinion).
Id. at 52 (footnotes omitted). The Guidance states that, except in rare
circumstances, “[c]laims that do not recite matter that falls within these
enumerated groups of abstract ideas should not be treated as reciting abstract
ideas” and thus would be patent-eligible. Id. at 53. If the claim recites a
judicial exception, the claim is further analyzed under prong two, which
requires “evaluat[ion of] whether the claim recites additional elements that
integrate the exception into a practical application of that exception.” Id.
The Revised Guidance explains that, “[i]f the recited exception is integrated
into a practical application of the exception, then the claim is eligible at
Prong Two of . . . Step 2A [of the Revised Guidance].” Id.

Prong One of Step 2A of Revised Guidance
Following the Revised Guidance, we first consider whether claim 1
recites a judicial exception such as an abstract idea. Having considered the
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Examiner’s findings and conclusions and Appellant’s arguments, which are
discussed later in this opinion, we agree with the Examiner that claim 1
recites an abstract idea. Final Act. 6.
Courts have held that patent-ineligible abstract ideas include certain
methods of organizing human activity, such as fundamental economic
practices, commercial or legal interactions, and managing personal behavior
or relationships or interactions between people. See, e.g., Alice, 573 U.S. at
219–20; Bilski, 561 U.S. at 611. Abstract ideas also include mental
processes, including subject matter that covers performance in the mind but
for the recitation of generic computer components. See, e.g., Ericsson Inc. v.
TCL Commc’n Tech. Holdings Ltd., 955 F.3d 1317, 1327 (Fed. Cir. 2020)
(holding claims to a system for “controlling access to a platform” to be
directed to an abstract idea because “[c]ontrolling access to a resource is
exact the sort of process that ‘can be performed in the human mind, or by a
human using a pen and paper,’ which [the Federal Circuit] have repeatedly
found unpatentable”).
We find that the steps of claim 1, collectively as an ordered
combination, recite a method of receiving and generating/publishing reports
from “a giving user” or “giving users” regarding a “receiving entity.” Such
method encompasses “crowd sourced review[s],” Spec. ¶ 2, and is a method
of organizing human activity: It is a method of managing personal behavior
or relationships or interactions between people and, when the user is a
customer and the receiving entity is a merchant, it is also a commercial
interaction.
In addition, we note that among the steps of claim 1, there are also
those that may be performed entirely in the human mind and therefore fall
within the category of mental processes, which are also abstract ideas. For
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instance, claim 1 recites “creating a profile for a receiving entity,” “receiving
. . . a report from a giving user regarding the receiving entity,” “generating
. . . a report code uniquely associated with the report,” “associating . . . the
report code received by the receiving entity with the profile of the receiving
entity,” and “receiving . . . an approval or a rejection of the report.” Appeal
Br. 27 (Claims App.).
Accordingly, we agree with the Examiner that claim 1 recites abstract
ideas, namely methods of organizing human activity—specifically,
commercial interactions and/or methods of managing personal behavior or
relationships or interactions between people—as well as mental processes.
See 84 Fed. Reg. at 52.

Prong Two of Step 2A of Revised Guidance
The second prong of Step 2A asks whether the claims as a whole
integrate the judicial exception into a practical application of the
exception. Revised Guidance, 84 Fed. Reg. at 54. In order to answer this
question, we first “[i]dentify[] whether there are any additional elements
recited in the claim beyond the judicial exception(s)” and, if so, “evaluat[e]
those additional elements individually and in combination to determine
whether they integrate the exception into a practical application.” Id. at 54–
55. As explained earlier, although Appellant’s claims recite abstract ideas,
they would still be patent-eligible if the answer to the above question is
affirmative.
Having considered the Examiner’s findings and conclusions and
Appellant’s arguments, which are discussed later in this opinion, we find
that the claims do not recite additional elements that integrate the recited
product of nature into a practical application of the idea. In particular, the
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only elements in the claims in addition to the abstract ideas are a database
and a processor. However, the “database” and “processor” limitations in
these claims merely recite using these computer elements “as a tool to
perform an abstract idea,” which does not integrate a judicial exception into
a practical application. 84 Fed. Reg. at 55.

Whether the Claims Amount to “Significantly More”
Finally, as to the second step of the Mayo test (and Step 2B of the
Revised Guidance), the Revised Guidance directs us to consider whether the
claims include “additional elements . . . [that] provide[] ‘significantly more’
than the recited judicial exception.” 84 Fed. Reg. at 56. The Revised
Guidance states that an additional element that “simply appends well-
understood, routine, conventional activities previously known in the
industry, specified at a high level of generality, to the judicial exception, . . .
is indicative that an inventive concept may not be present.” Id.; see also
SAP America, Inc. v. InvestPic, LLC, 898 F.3d 1161, 1170 (Fed. Cir. 2018)
(where database and processor limitations “require no improved computer
resources,” but rather rely on “already available computers, with their
already available basic functions, to use as tools in executing the claimed
process,” such limitations “are insufficient to pass the test of an inventive
concept in the application of an abstract idea”).
As discussed above, here the only elements recited in the claims in
addition to the abstract ideas are a database and a processor. These
limitations, however, are generic computer components performing generic
computer functions, such as storing, receiving, associating and/or displaying
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information. For example, with respect to the processor and database
limitations, the Specification generically states:
Aspects of embodiments of the present invention
may be implemented on personal computing devices such
as smartphones and personal digital assistants. Such
personal computing devices may include a processor and
memory storing instructions to be executed by the
processor, where the memory may include instructions
implementing aspects of embodiments of the present
invention. The personal computing devices may include a
camera, a microphone, a display, a user input device
(e.g., a touch sensitive panel and buttons), and a network
adapter (e.g., a cellular modern and/or a Wi-Fi modem)
configured to connect the personal computing devices to
a network such as the Internet.
Aspects of embodiments of the present invention
may also be implemented on one or more server
computer devices that include a processor and memory
storing instructions to be executed by the processor,
where the memory may include instructions
implementing aspects of embodiments of the present
invention. The server computing devices may also
include a persistent storage device which may store one
or more databases. The server computing devices may
include network adapters configured to connect the
server computing devices to a network such as the
Internet.
Spec. ¶¶ 82–83. These disclosures in the Specification make clear that the
processor and database limitations recited in the claims refer to already
available computer components performing traditional computer functions.
Finally, considered as an ordered combination, the components of the
claims add nothing that is not already present when they are considered
separately. Viewed as a whole, the claims simply recite the recited abstract
ideas (i.e., mental processes and methods of organizing human activity), as
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performed by generic computer components and/or conventional, already
available systems.
In sum, the combination of elements recited in claim 1 does not
amount to significantly more than the judicial exceptions themselves, and
under 35 U.S.C. § 101 the claimed method is not eligible for patenting.

Appellant’s Arguments
Appellant contends that the Examiner has not established a prima
facie case that the claims are not patent eligible under 35 U.S.C. § 101
because, among other things, “the two-part . . . test required by Mayo and
Alice has been conflated into a single, conclusory step,” the Examiner fails
to state “whether the claimed invention falls into one of the four statutory
categories” or to determine “whether the analysis can be streamlined,” and
the Examiner neither “attempt[s] to determine the broadest reasonable
interpretation of the claims as a whole” or “treat the claim as a whole.”
Appeal Br. 8; see also Reply Br. 3, 4–5.
As to Appellant’s arguments that the Examiner conflated the two parts
of the test required by Mayo and Alice and also failed to determine whether
eligibility analysis may be streamlined, we are not persuaded because the
Examiner conducted a full, albeit compact, Mayo/Alice analysis, determining
(a) that the claims are directed to subject matter falling within a recognized
judicial exception (i.e., mental processes and/or certain methods of
organizing human activities), see Final Act. 5–7, and (b) that the claims do
not recite significantly more than the judicial exception, see id. at 7. As
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discussed above, we agree with the Examiner that the claims are directed to
abstract ideas without significantly more.
Neither are we persuaded by Appellant’s apparent argument that the
Examiner fails to establish a prima facie case of lack of subject matter
eligibility because the Examiner fails to state “whether the claimed invention
falls into one of the four statutory categories” and/or determine the broadest
reasonable interpretation of the claims as a whole.
“[T]he prima facie case is merely a procedural device that enables an
appropriate shift of the burden of production,” and the PTO “satisfies its
initial burden of production by ‘adequately explain[ing] the shortcomings it
perceives so that the applicant is properly notified and able to respond.’” In
re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (quoting Hyatt v. Dudas, 492
F.3d 1365, 1369–1370 (Fed. Cir. 2007). The Examiner’s rejection is not
based on the claimed invention being outside of the four statutory categories.
Thus, that the Examiner did not explicitly state that the claims are directed to
a method, i.e., a “process,” one of the statutory categories of patent-eligible
subject matter under 35 U.S.C. § 101, does not preclude establishment of a
prima facie case.
Likewise, to the extent Appellant’s complaint is that the Examiner did
not provide an on-the-record claim construction of claim 1, we note that
“[t]here has never been a requirement for an examiner to make an on-the-
record claim construction of every term in every rejected claim . . . in order
to make out a prima facie rejection.” In re Jung, 637 F.3d at 1363; see also
Bancorp Services, L.L.C. v. Sun Life Assurance Co. of Canada (U.S.), 687
F.3d 1266, 1273 (Fed. Cir. 2012) (stating that “claim construction is not an
inviolable prerequisite to a validity determination under § 101”). Appellant
has not explained how Examiner’s alleged failure to “determine the broadest
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reasonable interpretation of the claims as a whole” prevented Appellant
from responding to the rejection. Finally, to the extent Appellant’s
complaint is that the Examiner failed to consider the claim as a whole in the
rejection, we are not persuaded for the reasons discussed below.
Appellant notes that independent claims 1 and 15 require (1) “a report
to be received at a processor from a giving user regarding the receiving
entity and for a report code that is uniquely associated with the report to be
generated by the processor”; (2) the giving user “passing a physical
representation of the report code . . . to the receiving entity”; and (3) the
processor associating “the report code ‘received from the receiving entity’
. . . with a profile of the receiving entity.” Appeal Br. 8. Appellant
contends that,
in combination, these steps provide a technological
solution that allows the processor to associate
information (i.e. the report) that was previously provided
to the processor with the correct receiving entity. This
process also provides the receiving entity control over
whether the report is, in fact, associated with the
receiving entity (since the receiving entity can chose not
to provide the report code to the processor and therefore
the receiving entity can elect to not “claim” the report).
And, importantly, neither the giving user, nor the
receiving entity needs to be identified to the other.
Id. at 9; see also Reply Br. 2 (arguing that “[t]he invention is an
improvement over prior computer-based review systems” because “the
parties can remain anonymous to each other, the receiving entity need not
pre-register and the system promotes positive reviews by giving the
receiving entity control over associating the review with the profile of the
receiving entity”).
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We are not persuaded. To the extent the recited steps provide a
solution to a problem, Appellant has not persuasively shown that such a
solution is a technical solution. That is, to the extent there is any
improvement to the prior art methods and systems of receiving and
publishing reports, such as methods and systems of publishing crowd-
sourced reviews, the improvement resides in improvement to the abstract
idea itself, e.g., the abstract idea that a report is published only with the
participation and approval of the subject of the report. The steps in the claim
identified by Appellant involve the “passing” and “receiving” of
information, which itself is an abstract idea. In short, similar to SAP
America, here “the focus of the claims is not any improved computer or
network,” but on the alleged improved method of managing personal
behavior or relationships or interactions between people. SAP America, 898
F.3d at 1168; see also Electric Power Grp., LLC v. Alstom S.A., 830 F.3d
1350, 1354 (holding claims to be directed to abstract ideas where “the focus
of the claims is not on . . . improvement in computers as tools, but on certain
independently abstract ideas that use computers as tools”).
Appellant contends that its invention provides “a technological
solution that arises in the context of computer systems and, more
particularly, in the context of how computer systems associate information.”
Appeal Br. 10. Appellant contends that “[t]he invention improves
functioning of the computer by its improvement to the authentication of
entities attempting to access information, and by its improvement to the
manner of communicating a code (i.e. the report code) that enables access to
information held by the computer.” Id.; see also Reply Br. 3 (“The
invention improves functioning of the computer system by providing an
improved manner of conveying information, providing access to stored
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information and authenticating a user to a computer system.”). Appellant
contends that integral to this improvement to computer function is a
“tangible and physical action that occurs outside the computer, namely, the
passing of the physical representation of the report code from the giving user
to the receiving entity.” Appeal Br. 10; see also Reply Br. 4.
We are not persuaded. As already discussed above, the “solution”
recited in claim 1 to the alleged problems is not a “technical” solution.
Moreover, contrary to Appellant’s apparent contention and unlike the
situation in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258
(Fed Cir. 2014), the alleged problems solved—i.e., the need to associate
information with a particular entity, to authenticate the identity of entities
attempting to access information, and to provide information to entities to
allow access—are not problems that arise specifically in the context of
computers or the Internet. Finally, with respect to Appellant’s argument that
the claims are patent-eligible because “passing of the physical representation
of the report code from the giving user to the receiving entity” is a “tangible
and physical action that occurs outside of the computer” and is integral to
the alleged improvement to the functioning of the computer system, we note
that “the abstract idea exception does not turn solely on whether the claimed
invention comprises physical versus mental steps.” In re Marco Guldenaar,
911 F.3d at 1161.
In the Reply Brief, Appellant cites to Park Assist, LLC v. San Diego
County Regional Authority, 402 F.Supp.3d 956 (S.D. Cal. 2019), in support
of its arguments. Reply Br. 5. Because Appellant cites to this case for the
first time in the Reply Brief, without providing any explanation as to why
the case could not have been cited in the Appeal Brief, Appellant’s
arguments with respect to the case have been waived. See Ex parte
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Nakashima, 93 USPQ2d 1834 (BPAI 2010) (informative) (arguments and
evidence not timely presented in the Principal Brief will not be considered
when filed in a Reply Brief, absent a showing of good cause explaining why
the argument could not have been presented in the Principal Brief); Ex parte
Borden, 93 USPQ2d 1473, 1477 (BPA1 2010) (informative) (explaining that
“the Rules do not require the Board to take up a belated argument that has
not been addressed by the Examiner, absent a showing of good cause”).
In any event, even if the district court case were binding on this panel,
Park Assist is inapposite. The claims in that case relate to “[a] method of
managing a plurality of parking spaces.” Park Assist, 402 F.Supp.3d at 958.
The specification notes that a problem with prior art parking guidance
systems is that “they do ‘not enable remote viewing of individual parking
spaces, enabling human intervention to correct mistakes . . . or provide real-
time feedback to improve system accuracy.’” Id. at 960–961. The claimed
method comprises the steps of “displaying a thumbnail image of [a] parking
space on a graphic user interface (GUI),” “deciding whether [assigned]
occupied status is incorrect, based on a visual review of said thumbnail
image on said GUI,” and “correcting said occupied status, by inputting
computer-readable instructions to a computer terminal of said GUI” if the
thumbnail image shows the occupancy status to be incorrect. Park Assist,
402 F.Supp.3d at 958. A dependent claim further recites a step of
“executing . . . machine-readable code to modify [classification algorithm
for assigning [occupied/vacant] statuses in response to said correcting.” Id.
at 958–959.
The district court found that “[t]he claims, read in light of the
specification, purport to solve . . . problems [with the prior art parking
guidance systems] by providing technical improvements through an
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improved ‘parking lot management system that relies on intelligent
processing of images.’” Park Assist, 402 F.Supp.3d at 961 (emphasis
added). More particularly, the district court notes that “the claims and
specification disclose technological improvements to the graphical user
interface (‘GUI’), which improve the accuracy of the cameras detecting and
determining whether a parking space is occupied.” Id. (emphasis added).
Thus, although the district court does note that “the prior art did not . . .
allow human intervention to . . . correct mistakes and provide real-time
feedback” and that therefore “the claims disclose an improved system by
allowing the parking guidance system to do things it could not do before,”
the improvement that integrates the abstract idea into a practical application
is not an improvement to the abstract idea itself but rather a technical
improvement to the graphical user interface. In contrast, as discussed above,
the alleged improvement in the instant case is at most an improvement to the
method of organizing human activity, i.e., the abstract idea itself.
Finally, Appellant contends that claims recite significantly more than
a judicial exception because they
recite[] an inventive concept, namely, use of a computer processor in
such a manner as to associate stored information (i.e. the report) with
the correct entity (i.e., the receiving entity) while also giving that
entity control over the association of the report to the receiving entity
and without needing to identify the giving user, nor the receiving
entity, to the other. This inventive concept is accomplished, in part, by
the physical passing of the report code from the giving user to the
receiving entity along with computer-implemented steps discussed
herein. The inventive concept, therefore, involves an inventive and
non-routine manner of conveying information, providing access to
stored information and authenticating a user to a computer system.
Appeal Br. 11–12; see also Reply Br. 5–6. Appellant contends that the
Examiner “has not established that the combination of elements of
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[Appellant’s] inventive concept . . . is, in fact, well-understood, routine, or
conventional” under the standard set forth in Berkheimer v. HP Inc., 881
F.3d 1360 (Fed. Cir. 2018). Appeal Br. 12–13; see also Reply Br. 3.
We are not persuaded. The limitations Appellant alleges to be
inventive—e.g., “generating . . . a report code uniquely associated with the
report,” “passing a physical representation of the report code from the giving
user to the receiving entity,” “associating . . . the report code received by the
receiving entity with the profile of the receiving entity,” and publishing the
report if the receiving entity approves the report—are part of the abstract
method of managing interactions between people. The claim does not recite
with any specificity how these steps are performed, but rather recites them in
a “result-oriented way,” which does not take them out of the realm of
abstract ideas. See Interval Licensing LLC v. AOL, Inc., 896 F.3d 1335,
1343 (Fed. Cir. 2018). As our reviewing court has explained, however, the
“inventive concept” of a claim cannot be the abstract idea itself. Berkheimer
v. HP, Inc., 890 F.3d 1369, 1374 (Fed. Cir. 2018) (Moore, J., concurring)
(“It is clear from Mayo that the ‘inventive concept’ cannot be the abstract
idea itself, and Berkheimer . . . leave[s] untouched the numerous cases from
this court which have held claims ineligible because the only alleged
‘inventive concept’ is the abstract idea.”); see also BSG Tech. LLC v.
BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) (“It has been clear
since Alice that a claimed invention’s use of the ineligible concept to which
it is directed cannot supply the inventive concept that renders the invention
‘significantly more’ than that ineligible concept.”).
Instead, as discussed above, the only elements in claim 1, in addition
to recited abstract mental processes and method of managing interactions
between people, are a generic database and generic processor that perform
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routine computer functions such as storing, receiving, associating and/or
displaying information. See Spec. ¶¶ 82–83. Neither do the components of
the claim add anything more when viewed as an ordered combination,
because, viewed as a whole, claim 1 simply recites the abstract ideas (i.e.,
mental processes and method of managing interactions between people) as
performed by generic computer components and/or conventional, already
available systems.
Accordingly, we conclude that the combination of elements recited in
claim 1 does not amount to significantly more than the judicial exceptions
themselves, and under 35 U.S.C. § 101 the claimed method is not eligible for
patenting.

B. Rejection under 35 U.S.C. § 103 over Xiong and Kinsey (claims 1–
6, 12, 21–27, 29, 31–33)
1. Issue
The Examiner finds that Xiong “discloses a system and method for
receiving and managing reports from a reviewer about a reviewee and
allowing the reviewee to review the report and either accept or reject the
report in order to instruct the system on whether the report should be
published.” Final Act. 9. The Examiner finds that Xiong teaches almost all
of the limitations of claims 1 and 21, except that Xiong does not explicitly
disclose “whether the reviewee explicitly instructs the system that they have
approved the report and publishing the report in response to the system
receiving the approval,” and also does not explicitly disclose the limitation
of “passing a physical representation of the report code from the giving user
the receiving entity.” Final Act. 9.
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However, the Examiner finds that Kinsey, “which is also directed
towards managing the publication of reports,” teaches that
it is old and well-known in the art for the reviewee to
choose to approve of or reject the report and for the
system to publish a report . . . in response to the merchant
choosing to accept the report as is. Kinsey discloses that
the user may choose to take action to resolve an issue,
thereby instructing the system to not publish the review,
or the use[r] may positively choose to take no action or
wait a predetermined period of time before allowing the
system to publish the review, unless the reviewer chooses
not to publish the review. One of ordinary skill in the art
would have found it beneficial to program the system
with such rules as this[, which] allows time for all parties
to review the comments made and determine what
actions the system should take, i.e. publish or not publish
the submitted review.
Final Act. 10.
With respect to the claim step of “passing a physical representation of
the report code from the giving user the receiving entity,” the Examiner
finds that Kinsey teaches that
barcodes can be provided in a physical format that can be
scanned and associated with a specific user in order to
identify the user by way of providing the barcode to
another user to have it scanned and identify the user. . . .
Kinsey also teaches that . . . the barcode can be used to
retrieve specific information concerning the user and
present the information to the receiving party, e.g., . . .
information stored by the system . . . . Kinsey also
discloses that the barcode can be used to register a user
for a marketplace and further allow for information about
the user to be used in order to complete a transaction . . . .
As a result, one of ordinary skill in the art looking upon
the teachings of Kinsey would have found it obvious that
a code that is uniquely associated with a user can not
only be used for identifying a user, as is taught by both
Xiong and Kinsey, but that the unique code can be used
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to retrieve a plurality of different types of information,
documents, and the like that is associated with a user.
Final Act. 10.
The Examiner concludes that it would have been obvious to a skilled
artisan at the time of the invention to include in Xiong’s review management
system “the ability to allow a user to choose whether or not to approve a
review for publication and to use a physical code to retrieve information,” as
taught by Kinsey, to arrive at the claimed invention. Final Act. 11. In
particular, the Examiner concludes that this would be merely the
combination of familiar elements according to known methods that yields no
more than predictable results. Id.
Appellant contends that “the cited references do not suggest or
disclose the combination of elements recited by claim 1 in which a report
code, having been generated in association with the report, is physically
transferred from the giving user to the receiving entity and then used to
associate the report with the receiving entity, as recited in claim 1.” Appeal
Br. 17. Appellant further contends that “it would not have been obvious to
modify the Xiong and Kinsey references in such a manner as would have
been required to achieve [Appellant’s] claimed invention,” because “Xiong
and Kinsey references are directed toward traditional negative customer
reviewing systems that require pre-registration of the reviewed entity . . . and
in which each customer review is associated with the reviewed entity
contemporaneously with inputting of the review” and, “[a]s such, the
manner of, and incentives for, accepting or rejecting reviews are completely
different.” Id. at 20.
With respect to claim 33, Appellant further contends that, while the
Examiner finds that Xiong discloses “wherein the receiving party manually
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enters the unique identifier that identifies the user,” Appellant’s “claim 33
recites ‘manually entering the report code.’” Appeal Br. 21. Appellant
contends that “a user identification, as in Xiong, is not the same as the report
code of [Appellant’s] claims.” Id.
The issue with respect to this rejection is whether a preponderance of
evidence of record supports the Examiner’s conclusion that claims 1–6, 12,
21–27, 29, 31–33 are obvious over the combination of Xiong and Kinsey.
2. Analysis
We agree with Appellant that the Examiner has not established a
prima facie case that claims 1–6, 12, 21–27, 29, 31–33 are obvious over the
combination of Xiong and Kinsey.
First, the Examiner concedes that Xiong does not explicitly teach the
limitations in independent claims 1 and 21 of the processor “receiving from
the receiving entity . . . an approval or a rejection of the report” and the
further limitation in claim 1 of “publishing . . . the report . . . if the processor
received approval.” Final Act. 9. The Examiner relies on the following
portion of Kinsey as disclosing these limitations (id. at 9–10):
The system identifies the merchant and presents
the potentially adverse report and the predicted
solution(s) to the merchant, via the merchant’s device,
for resolution (Step 605). The merchant can choose to
take no action or, on the other hand, can prefer to resolve
the issue with the customer so that the adverse report
does not affect any online scoring or online rating that
the merchant can have built up over time. The merchant's
opportunity for responding or not can be limited to a pre-
determined amount of time (Steps 607 and 609). Hence,
if the merchant positively chooses to take no action or if
the predetermined amount of time for responding lapses
without the merchant choosing one or the other, the
marketplace server can be adapted to alert the customer
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to the negative or non-response and can, further,
determine whether or not the customer desires to
withdraw or otherwise cancel the adverse report (Step
617). After receiving the customer’s choice to cancel or
not, the Marketplace Server 100 can be adapted to delete
the adverse report and prevent publicizing thereof should
the customer opt to cancel the adverse report (Step 619).
Kinsey ¶ 337.
In Kinsey’s system, therefore, the merchant (i.e., the receiving entity)
has the options of taking no action (whether by positively choosing to take
no action or by letting a predetermined amount of time lapse), or to try to
resolve the issue with the customer so that a potentially adverse report is not
published. We are not persuaded, however, that either option reads on a
receiving entity (i.e., a reviewed merchant) providing an approval or a
rejection of a report (i.e., the potentially adverse report), as required by
claims 1 and 21, and/or the report being published if approval is received, as
further required by claim 1. That is, we are not persuaded that the broadest
reasonable interpretation of “approval,” 8 when read in light of the
Specification, encompasses choosing to take no action with the knowledge
that a particular result may ensue.
Likewise, the Examiner concedes that Xiong does not explicitly
disclose the limitation in independent claims 1 and 21 of “passing a physical
representation of the report code from the giving user to the receiving
entity.” Final Act. 9. However, the Examiner asserts that this limitation is

8 “approval.” MERRIAM-WEBSTER, https://www.merriam-
webster.com/dictionary/approval (last visited Mar. 11, 2021) (“an act or
instance of approving something : APPROBATION); “approve.” MERRIAM-
WEBSTER, https://www.merriam-webster.com/dictionary/approve (“to have
or express a favorable opinion of,” “to accept as satisfactory,” “to give
formal or official sanction,” or “to : RATIFY”).
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suggested by Kinsey, because Kinsey teaches barcodes that can be provided
in a physical format” and provided to a user to identify or retrieve specific
information (e.g., information stored by the system) concerning another user
associated with the barcode. Id. at 10–11. The Examiner asserts that it
would have been obvious to a skilled artisan at the time of the invention to
include, in a review management system such as Xiong’s, “to use a physical
code to retrieve information,” as taught by Kinsey, to arrive at the claimed
invention, because this would be merely the combination of familiar
elements according to known methods that yields no more than predictable
results. Id. at 11.
While Kinsey may teach using a barcode to retrieve information
associated with a specific user, and while a barcode encoding a report code
uniquely associated with the report may meet the limitation of “a physical
representation of the report code,” the Examiner has not articulated why
Kinsey’s general teaching regarding barcodes—i.e., that a barcode may be
used to identify, and retrieve information concerning, a user associated with
the barcode—would suggest to a skilled artisan to (1) associate a report code
in particular with a barcode and (2) pass a barcode associated with a report
code from the reviewing customer (i.e., a giving user) to the reviewed
merchant (i.e., receiving entity), as required by claims 1 and 21. In this
regard, we note that “obviousness concerns whether a skilled artisan not
only could have made but would have been motivated to make the
combinations or modifications of prior art to arrive at the claimed
invention.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir.
2015); see also In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984) (“The
mere fact that the prior art could be so modified would not have made the
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modification obvious unless the prior art suggested the desirability of the
modification.” (citing cases)).
Accordingly, for the reasons discussed above, we reverse the
Examiner’s rejection of independent claims 1 and 21 as obvious over Xiong
and Kinsey. We reverse the Examiner’s obviousness rejection of claims 2–
6, 12, 22–27, 29, and 31–33, which depend directly or indirectly from claims
1 or 21, for the same reasons. In re Fine, 837 F.2d 1071, 1076 (Fed. Cir.
1988) (“Dependent claims are nonobvious under section 103 if the
independent claims from which they depend are nonobvious.”).
C. Rejection under 35 U.S.C. § 103 over Xiong, Kinsey, and Mote
(claim 7, 8, 13–15, 19, 20)
Independent claim 15 recites a method for receiving and publishing
reports comprising steps similar to those discussed above with respect to
independent claims 1 and/or 21, namely “passing a physical representation
of each report code from each of [a] plurality of giving users to the receiving
entity,” “receiving from the receiving entity, by the processor, an approval
or a rejection of each of the plurality of reports,” and “publishing, by the
processor, each of the plurality of reports on the profile of the receiving
entity, for which the processor received approval from the receiving entity.”
Appeal Br. 30–31 (Claims App.).
The Examiner does not point to any teachings in Mote that would
make up for the deficiencies in Xiong and Kinsey discussed above. We
therefore reverse the Examiner’s rejection of claim 15 as obvious over
Xiong, Kinsey, and Mote for the same reasons discussed with respect to
claims 1 and 21. We also reverse claims 1, 8, 13, 14, 19, and 20, which
depend directly or indirectly from claims 1 or 15, for the same reasons. In re
Fine, 837 F.2d at 1076.
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D. Rejection under 35 U.S.C. § 103 over Xiong, Kinsey, and Wilson
(claim 9)
Claim 9 depends from independent claim 1. The Examiner does not
point to any teachings in Wilson that would make up for the deficiencies in
Xiong and Kinsey discussed above. We therefore reverse the Examiner’s
rejection of claim 9 as obvious over Xiong, Kinsey, and Wilson for the same
reasons discussed with respect to claim 1. In re Fine, 837 F.2d at 1076.
E. Rejection under 35 U.S.C. § 103 over Xiong, Kinsey, and Carden
(claims 10, 11)
Claims 10 and 11 depend indirectly from independent claim 1. The
Examiner does not point to any teachings in Carden that would make up for
the deficiencies in Xiong and Kinsey discussed above. We therefore reverse
the Examiner’s rejection of claims 10 and 11 as obvious over Xiong, Kinsey,
and Carden for the same reasons discussed with respect to claim 1. In re
Fine, 837 F.2d at 1076.
F. Rejection under 35 U.S.C. § 103 over Xiong, Kinsey, Mote, and
Wilson (claim 16)
Claim 16 depends from independent claim 15. The Examiner does
not point to any teachings in Mote and Wilson that would make up for the
deficiencies in Xiong and Kinsey discussed above. We therefore reverse the
Examiner’s rejection of claim 16 as obvious over Xiong, Kinsey, Mote, and
Wilson for the same reasons discussed with respect to claim 15. In re Fine,
837 F.2d at 1076.
G. Rejection under 35 U.S.C. § 103 over Xiong, Kinsey, Mote, Wilson,
and Carden (claims 17, 18)
Claims 17 and 18 depend indirectly from independent claim 15. The
Examiner does not point to any teachings in Mote, Wilson, and Carden that
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would make up for the deficiencies in Xiong and Kinsey discussed above.
We therefore reverse the Examiner’s rejection of claims 17 and 18 as
obvious over Xiong, Kinsey, Mote, Wilson, and Carden for the same reasons
discussed with respect to claim 15. In re Fine, 837 F.2d at 1076.
H. Rejections under 35 U.S.C. § 103 over Xiong, Kinsey, and official
notice (claims 28 and 34)
Claims 28 depends from independent claim 21 and further recites
“wherein the giving user does not receive information that identifies the
receiving entity.” Appeal Br. 34 (Claims App.). Claim 34 depends from
independent claim 1 and further recites “wherein a frequency at which
giving entity can create reports for the receiving entity is limited.” Id. at 35
(Claims App.).
The Examiner finds that the combination of Xiong and Kinsey fails to
explicitly teach the additional limitations in dependent claims 28 and 34.
Final Act. 36, 37. However, with respect to claim 28, the Examiner takes
official notice that “it is old and well-known in the art for users to
communicate anonymously on the Internet.” Final Act. 36. The Examiner
further notes that “Xiong already discloses that anonymous communication
is known in the art and it would have been obvious to one of ordinary skill in
the art to extend such privacy techniques to all types of users.” Id. The
Examiner concludes that it would have been obvious to a skilled artisan that
the difference between the claimed subject matter and the
prior art rests . . . in the substitution of allowing a
receiving entity to communicate anonymously, as taught
by Official Notice, for allowing a giving entity to
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communicate anonymously, as disclosed by the
combination of Xiong and Kinsey.
Final Act. 36–37. The Examiner concludes that “the simpl[e] substitution of
one known element for another producing a predictable result renders the
claim obvious.”
With respect to claim 34, the Examiner takes official notice that “the
concept of controlling spamming is old and well-known in the art” and
concludes that it would have been obvious to a skilled artisan to modify the
ratings system suggested by the combination of Xiong and Kinsey
to control the frequency at which a user can create
reviews, as taught by Official Notice[,] since the claimed
invention is merely a combination of old elements, and in
the combination each element merely would have
performed the same function as it did separately, and one
of ordinary skill in the art would have recognized that the
results of the combination were predictable. As was
stated above, this would increase the quality and
trustworthiness of a merchant’s rating.
Final Act. 37–38.
Appellant “denies and traverses the taking of official notice” in claims
28 and 34. Appeal Br. 23, 25. In particular, Appellant contends that the
Examiner has not shown that “it would have been obvious that
[communicating anonymously and/or controlling spamming] could be
accomplished, [or] how one might do so, in the context recited in
Appellant’s claims.” Id. at 24–25. With respect to claim 34, Appellant
further contends that “[i]t is not clear how a desire to limit ‘spam’ relates to
the creation of reports recited in Appellant’s claims.” Id. at 25.
The official notices taken by the Examiner does not remedy the
deficiencies of Xiong and Kinsey discussed above with respect to the
limitations of independent claims 1 and 21. Accordingly, we reverse the
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rejection of claims 28 and 34 as obvious over Xiong, Kinsey, and official
notices taken by the Examiner. In re Fine, 837 F.2d at 1076.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s) /
Basis
Affirmed Reversed
1–29, 31–34 101 Eligibility 1–29, 31–34
1–6, 12, 21–27,
29, 31–33
103 Xiong, Kinsey 1–6, 12,
21–27, 29,
31–33
7, 8, 13–15, 19,
20
103 Xiong, Kinsey,
Mote
7, 8, 13–15,
19, 20
9 103 Xiong, Kinsey,
Wilson
9
10, 11 103 Xiong, Kinsey,
Carden
10, 11
16 103 Xiong, Kinsey,
Mote, Wilson
16
17, 18 103 Xiong, Kinsey,
Mote, Wilson,
Carden
17, 18
28, 34 103 Xiong, Kinsey,
official notice
28, 34
Overall
Outcome
1–29, 31–34

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