KONINKLIJKE PHILIPS N.V.

Patent Trials and Appeals Board

Mar 27, 2020

14056152 - (D) (P.T.A.B. Mar. 27, 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.
14/056,152 10/17/2013 AART TIJMEN VAN HALTEREN 2011P01306US02 5787
24737 7590 03/27/2020
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus Avenue
Suite 340
Valhalla, NY 10595
EXAMINER
REYES, REGINALD R
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
03/27/2020 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):
katelyn.mulroy@philips.com
marianne.fox@philips.com
patti.demichele@Philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte AART TIJMEN VAN HALTEREN,
JOYCA PETRA WILMA LACROIX, GIJS GELEIJNSE,
MARTIN JEROEN PIJL, PRIVENDER KAUR SAINI,
MAURITS CLEMENS KAPTEIN, JOSE LUIS GRACIA FERRON,
and ROGER HOLMES
__________

Appeal 2019-002092
Application 14/056,1521
Technology Center 3600
__________

Before FRANCISCO C. PRATS, RACHEL H. TOWNSEND, and
MICHAEL A. VALEK, Administrative Patent Judges.

TOWNSEND, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a
computerized method and system of selecting and sending fitness coaching
messages, which have been rejected as directed to patent-ineligible subject
matter. 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
KONINKLIJKE PHILIPS N.V. (Appeal Br. 2.)
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STATEMENT OF THE CASE
According to Appellant’s Specification, coaching “is about a
purposeful interaction between a coach and the participant(s) being coached
with the aim of achieving an agreed goal.” (Spec. 2.) “Without the proper
level of personalization and timing, coaching will quickly become
inefficient, annoying and consequently is potentially counter-productive.”
(Id.)
“[O]ne of the main challenges for online coaching is to make the
communication sufficiently personalized to the person/participant that is
being coached.” (Id.) “[A]ssessing the relevant profile and providing
personalized coaching based on this profile for a large number of users
increases the workload of a coach. As an effect, the coach does not have
adequate time to develop a sufficient level of personalization for each user
and still coach a large number of users. Consequently, the cost effectiveness
of the coaching solution is affected.” (Id.) Appellant’s invention is directed
at a method of coaching using a “system providing a coaching experience to
the subject that is dynamic and responsive to current customer responses,
behavior, and psychological aspects.” (Id.)
Claims 1–20 are on appeal. Claim 1 is representative and reads as
follows:
1. A method implemented by a computing resource for
promoting a healthy lifestyle to a subject, the method
comprising:
receiving data, the data comprising any combination of
one or more responses by the subject to one or more questions,
questions by the subject, or monitored activity of the subject,
the monitored activity including a reaction by the subject to a
prior message;
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maintaining a plurality of user profiles for plural
subjects;
reviewing, from among the plurality of user profiles, a
user profile associated with the subject, wherein the user profile
includes a psychological profile comprising at least one
modifiable psychological construct and an activity profile
comprising behavior data associated with the subject;
updating the user profile of the subject based on the
received data;
using the received data to update a rules database;
searching a text fragment database including a collection
of text fragments, each of the text fragments comprising at least
a portion of a potential personalized message to influence a
change in behavior by the subject;
selecting, using the updated rules database, at least one of
the text fragments from the collection of text fragments based at
least in part on at least the updated user profile of the subject,
the at least one of the text fragments further selected based on
an influencing strategy inferred from the reaction by the subject
as effective in influencing the subject; and
sending at least one of the text fragments selected in the
selecting step to a client device associated with a coach for
review, amendment, or forwarding to a client device associated
with the subject.
(Appeal Br. 33–34.)

The following ground of rejection by the Examiner is before us on
review:
Claims 1–20 under 35 U.S.C. § 101 as directed to non-statutory
subject matter.

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DISCUSSION
Patent-Ineligible Subject Matter
The Dispute
The Examiner finds that all of the method limitations of claims 1–20
are directed to an abstract idea in and of itself, namely collecting
information, analyzing it, and displaying it, and is, thus, patent-ineligible.
(Final Action 4–5; Ans. 3.) In particular, the Examiner contends that the
step of receiving information is similar to collecting information. (Id.) The
steps of maintaining, reviewing, updating, searching, and selecting are
similar to that of analyzing information. (Id.) And finally, the sending step
is similar to displaying information. (Id.)
The Examiner further finds that the additional elements of the claimed
method, namely the “computing resource,” the databases, the processor and
memory are conventional and carry out well-understood, routine, and
conventional activities. (Final Action 5.) The Examiner further finds that
these elements “do not add meaningful limitations to the claim identified
abstract ideas(s) claimed beyond generally linking the judicial exception to a
particular technological environment, that is, implementation via
computers.” (Id.) Moreover, the Examiner finds “[t]here is no indication
that the combination of elements improves the functioning of a computer or
improves any other technology.” (Id.) Rather, explains the Examiner, the
method “use[s] conventional computer and network technology to
implement the method steps.” (Ans. 5.) The Examiner finds that “[t]he
improvement arguably is in the process of communicating [a] specific
message to a recipient rather than the computer technology itself.” (Id. at 4.)
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Appellant contends that the claims are directed to more than mere
collecting information, analyzing it, and displaying because there is selection
based on rules, which is not collecting information, and because decision-
making is not “neatly categorized into either analysis or collection.”
(Appeal Br. 8–9.) Appellant argues that the claims are factually distinct
from those in the Electric Power Group case relied on by the Examiner to
reject the claims, and that the Examiner has misapplied the principles set out
in that case. (Id. at 12–13.) Appellant argues also that, contrary to the
Examiner’s position, the improvements made “in the form of personalization
in messaging used in online coaching systems/methods” is an improvement
to a technological process “made possible by improvements in the claimed
‘computing resource.’” (Id. at 10–11.)
For the reasons discussed below, we conclude that the Examiner has
the better position.
The Analysis
The Supreme Court has established a two-step framework for
“distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts.” Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014). “First,
we determine whether the claims at issue are directed to” a patent-ineligible
concept. Id. If so, “we consider the elements of each claim both
individually and ‘as an ordered combination’ to determine whether the
additional elements ‘transform the nature of the claim’ into a patent-eligible
application.” Id. (quoting Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 78–79 (2012)).
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Applying the 2019 Revised Patent Subject Matter Eligibility Guidance
(“Guidance”), 84 Fed. Reg. 50–57 (January 7, 2019),2 we agree with the
Examiner’s conclusion that the claims are addressed to ineligible subject
matter. We address representative claim 1. We note that although claim 12
claims a system, it is a system that includes “a memory storing instructions
executable by the processor, wherein the instructions when executed by the
processor cause the system to” carry out the method steps that are recited in
claim 1. (Appeal Br. 36.)
STEP 2A, Prong One:
Under the Guidance, in determining what concept a claim is “directed
to” in step one of the Supreme Court’s two-step framework, we first look to
whether the claim recites any judicial exceptions, such as (a) mathematical
concepts, (b) methods of organizing human activity including managing
personal behavior or interactions between people, and/or (c) mental
processes including an observation, evaluation, judgment, or opinion.
Guidance, 84 Fed. Reg. at 52, 54 (Step 2A, Prong One).
Appellant’s Specification states that “one of the main challenges for
online coaching is to make the communication sufficiently personalized to
the person/participant that is being coached.” (Spec. 2.) The Specification
goes on to note, not that personalization was not being effected by trainers
who collect information about their client and mentally evaluate the client

2 “All USPTO personnel are, as a matter of internal agency management,
expected to follow the guidance.” Id. at 51; see also USPTO, October 2019
Update: Subject Matter Eligibility 1 (the “October 2019 Update”) (available
at https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_
update.pdf).
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and what might be a useful personalized response to an activity, but rather,
just that
assessing the relevant profile and providing personalized
coaching based on this profile for a large number of users
increases the workload of a coach. As an effect, the coach does
not have adequate time to develop a sufficient level of
personalization for each user and still coach a large number of
users.
(Id.) In essence, Appellant’s claims seek to automate pen and paper
methodologies to improve the speed of personalizing coaching messages as
a business activity. The claim limitations are addressed below.
Claim 1 requires eight steps, namely: (1) “receiving data” from the
subject or monitored activity of the subject; (2) “maintaining” a database of
another type of data about the subject—user profiles of subjects; (3)
“reviewing” a user profile; (4) “updating” the user profile “based on the
received data”; (5) updating a rules database “using the received data”; (6)
“searching” a database that has a collection of text message fragments; (7)
“selecting” a text fragment “using the updated rules database”; (8) “sending”
the selected text fragment to a “client device” associated with a coach. We
find that several of these steps recite mental processes.
A claim recites a mental process when the claim encompasses acts
people can perform using their minds or pen and paper. See, e.g.,
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372–73 (Fed.
Cir. 2011) (determining that a claim whose “steps can be performed in the
human mind, or by a human using a pen and paper” is directed to an
unpatentable mental process). This is true even if the claim recites that a
generic computer component performs the acts. See, e.g., Versata Dev.
Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) (“Courts
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have examined claims that required the use of a computer and still found that
the underlying, patent-ineligible invention could be performed via pen and
paper or in a person’s mind.”); see also Guidance, 84 Fed. Reg. at 52 n.14
(“If a claim, under its broadest reasonable interpretation, covers performance
in the mind but for the recitation of generic computer components, then it is
still in the mental processes category unless the claim cannot practically be
performed in the mind.”).
Each of the reviewing, searching, and selecting steps involves making
determinations based on stored and received information. Such
determinations reasonably can be characterized as mental processes in that
they are an evaluation or judgment that can be performed in the human mind
but for the claimed computer application. Furthermore, maintaining a user
profile database and updating it based on received data from the subject or
monitored activity data, as well as updating a “rules database” based on
received user profile data are activities that can be carried out with a pencil
and paper. That the “rules” are provided in a database and are used by the
computer to make a selection does not mean that these same rules cannot be
stored by a coach using pen and paper and reasonably applied in the mind of
a coach in an analysis of what would be an appropriate personalized
message for a client.
Appellant describes the invention recited in claim 1 as “more than
mere collecting or analyzing – there is rules-based selection processing
recited to personalize the messaging . . . . Selections based on rules is not
collecting information –it is determining information in an intelligent way.”
(Appeal Br. 9.) Appellant further argues “even assuming arguendo rules
processing involves an analysis of data, there is decision-making that simply
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cannot be neatly categorized into either analysis or collection.” (Id.)
Appellant’s description that the collected information is selected by a
determination that is made in an intelligent way does not differentiate the
process as being more than collection of data and analysis thereof. That the
personalized message selected is based on rules that take into account
collected data about the client does not avoid the fact that a mental process is
being performed, i.e., data about the subject is collected and analyzed to
inform selection of a particular text message or message type to be sent to
that subject in much the same way that one would consider the context of
their prior communications with a person when formulating their next
message.3 Indeed, such contextual analysis is a quintessential mental
process that human’s regularly perform using their brains. “That purely
mental processes can be unpatentable, even when performed by a computer,
was precisely the holding of the Supreme Court in Gottschalk v. Benson.”
CyberSource Corp., 654 F.3d at 1373, 1375; Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016) (“[A]nalyzing
information by steps people go through in their minds, or by mathematical
algorithms, without more, [is characterized] as essentially mental processes
within the abstract-idea category.”)

3 Furthermore, we note that the claim does not recite any particular rules for
performing this analysis, nor require a particular way of analyzing the data
using the rules database to select a text fragment. The Specification also
does not elucidate the particulars in this regard. (See Spec. 9 (explaining
without specificity that “inference rules,” which “may be generated
manually” or “may be created automatically” are used “to propose the at
least one personalized message to the human coach”).)

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We conclude that “with the exception of generic computer-
implemented steps, there is nothing in the claims themselves that foreclose
the[] [computer implemented steps] from being performed by a human,
mentally or with pen and paper.” Intellectual Ventures I LLC v. Symantec
Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016).
In light of the above, we conclude that claim 1 recites mental
processes which are abstract ideas, and thus, we proceed to the next step of
the eligibility analysis.
STEP 2A, Prong Two:
In the Prong Two analysis, we examine whether there are additional
elements beyond the judicial exception that integrate it into a practical
application. That is we look to the claim to see if there are additional
elements that “apply, rely on, or use the judicial exception in a manner that
imposes a meaningful limit on the judicial exception.” Guidance, 84 Fed.
Reg. at 54.
Claim 1 requires a generic computer element, “a computing resource,”
that performs normal computer functionality, i.e., receive information, store
information, and process information, and that is used as a tool to perform
the abstract idea. One of the examples in which a judicial exception has
been found not to be integrated into a practical application is when “[a]n
additional element . . . merely includes instructions to implement an abstract
idea on a computer, or merely uses a computer as a tool to perform an
abstract idea.” Guidance, 84 Fed. Reg. at 55. We find no indication in the
Specification, nor does Appellant direct us to any indication therein, that the
operations recited in independent claim 1 require any specialized computer
hardware or software or that the claimed invention is implemented using
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other than generic computer components to perform generic computer
functions. See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245,
1256 (Fed. Cir. 2014) (“[A]fter Alice, there can remain no doubt: recitation
of generic computer limitations does not make an otherwise ineligible claim
patent-eligible.”). To the contrary, the Specification describes the
“computing resource” that implements the method at a very high level of
abstraction, noting that it “includes a processor 107c and a memory 108c
that stores an application[;]” it “may be a server, computer or another device
providing computing capability.” (Spec. 3.) The Specification further
states:
as the term processor is used herein, a processor may include
use of a single integrated circuit (IC), or may include use of a
plurality of integrated circuits or other components connected,
arranged or grouped together, such as controllers,
microprocessors, digital signal processors, parallel processors,
multiple core processors, custom ICs, application specific
integrated circuits, field programmable gate arrays, adaptive
computing ICs, associated memory, such as and without
limitation, RAM, DRAM and ROM, and other ICs and
components.
(Id. at 5.) With respect to the memory, the Specification states “[a] memory
108 may include both volatile and/or nonvolatile memory and data storage
components.” (Id.)
Even the client device to which a text fragment is to be sent is
described in the Specification at a very high level of abstraction. Like the
computing resource, it includes a processor and memory (Spec. 4) and the
client device “may include, for example, a processor-based system such as a
computer system” where the computer system “may be embodied in the
form of a desktop computer, a laptop computer, a personal digital assistant, a
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mobile device, a cellular telephone, a smart phone, a set-top box, a music
player, a web pad, a tablet computer system, a gaming console, or other
devices with like capability” (id.). The Specification explains that “[t]he
client device 102b may be used by the human coach to send the at least one
personalized message either automatically or manually upon confirmation,
selection and/or amendment.” (Id. at 6.)
The Specification further describes the databases that hold the user
profiles, the text fragments, and the rules, as conventional databases that are
stored in the computer memory of the computer resource. (See Spec. 5 (the
memory may include fact database that includes user profiles), 8 (the
memory may include a text fragment database), and 9 (the memory may
further include a rules database).) Furthermore, these databases perform the
conventional activity of storing data and allowing for stored data to be
accessed and updated. For example, the Specification explains that the fact
database with the user profiles is updated by a human or by machine
learning. (Id. at 8.) The text fragment database is described as including “a
collection of standardized text fragments.” (Id. at 6.) The rules database is
described as containing “inference rules, and/or an inference engine 120
including inference evaluation instructions for evaluating inference rules”
where the inference rules “are pairs of condition and action.” (Id. at 9.) The
condition simply “defines which facts from the fact database 112 must hold
for an action to be executed” where the action is the type of message text to
propose or a specific message to construct from the stored text fragments.
(Id.)
Besides the generic computer components recited in claim 1, this
claim includes two steps that are not part of the recited mental processes. In
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particular, claim 1 recites a “receiving data” step where information related
to the subject is collected and a “sending” step where the at least one text
fragment selected using the rules database and the identified mental process
steps recited in the claim is sent to a client device. These receiving and
sending steps are simply data gathering and outputting results of the data
analysis. They do not apply, rely on, or use the judicial exception in a
manner that imposes a meaningful limit on the judicial exception. Both are
reasonably characterized as insignificant extra-solution activity. Guidance,
84 Fed. Reg. at 55; see also MPEP § 2106.05(g); see SAP Am., Inc. v.
InvestPic LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018) (“[M]erely presenting
the results of abstract processes of collecting and analyzing information,
without more (such as identifying a particular tool for presentation), is
abstract as an ancillary part of such collection and analysis.” (citation
omitted)). The Supreme Court states: “the prohibition against patenting
abstract ideas ‘cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment’ or [by] adding
‘insignificant postsolution activity.”’ Bilski v. Kappos, 561 U.S. 593, 611–
12 (2010), (quoting Diamond v. Diehr, 450 U.S. 175, 191–92 (1981)); Elec.
Power Grp., 830 F.3d at 1353 (holding that “collecting information,
analyzing it, and displaying certain results of the collection and analysis” are
“a familiar class of claims ‘directed to’ a patent ineligible-concept”). We
find that the claim does not have the specificity required to transform it
“from one claiming only a result to one claiming a way of achieving it.”
SAP Am., 898 F.3d at 1167.
Appellant contends that the claimed process is an improved
technological process “made possible by improvement in the claimed
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‘computing resource,’” and are patent eligible for that reason, like the claims
in Diehr. (Appeal Br. 10.) That “on-line coaching is not possible without
computing resources operating in one or more networks,” as Appellant
asserts (id.), does not establish that the claimed process improves technology
or is a technological process. We do not find anything of record, short of
attorney argument (id. at 10–11), that attributes any improvement in
computer technology and/or computer functionality to the claimed invention.
At most the recited method makes the trainer more efficient, not the
computer. Such an invention “is not a technical solution to a technical
problem.” See Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1084, 1090
(Fed. Cir. 2019) (“This invention makes the trader faster and more efficient,
not the computer. This is not a technical solution to a technical problem.”);
OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015)
(“[R]elying on a computer to perform routine tasks more quickly or more
accurately is insufficient to render a claim patent eligible”).
Claim 1 uses the ordinary capabilities of a computer to automate what
previously has been done by a trainer.4 This is not enough to integrate the

4 Although the claimed method uses rules to automate the process of
personalized messages that was previously performed by the trainer without
automation assistance, we do not find this sufficient to establish patent
eligibility. In McRO, Inc. v. Bandai Namco Games America, Inc., 837 F.3d
1299 (Fed. Cir. 2016), the claimed process used a combined order of specific
rules that rendered information in a specific format that was applied to create
a sequence of synchronized, animated characters. McRO, 837 F.3d at 1315.
The claimed invention improved how a physical display operated to produce
better quality images. See SAP Am., 898 F.3d at 1167 (distinguishing
McRO). Here, the claim recites generic computer implementation and there
is no improvement to any display mechanism as was the case in McRO.
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underlying abstract idea into a practical application. The Federal Circuit has
held that “mere automation of manual processes using generic computers
does not constitute a patentable improvement in computer technology.”
Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1055 (Fed. Cir.
2017).
Furthermore, contrary to Appellant’s contention (Appeal Br. 14;
Reply Br. 3), claim 1 is not analogous to the claims found eligible in DDR
Holdings. In DDR Holdings, the Federal Circuit determined that the claims
addressed the problem of retaining website visitors who, if adhering to the
routine, conventional functioning of Internet hyperlink protocol, would be
transported instantly away from a host’s website after clicking on an
advertisement and activating a hyperlink. DDR, 773 F.3d at 1257. The
claimed invention in DDR Holdings provided for the computer network not
to operate in its normal, expected manner; the claimed invention in DDR
generated and directed the visitor to a hybrid page that presented: (1)
product information from the third party, and (2) the visual “look and feel”
elements from the host website. DDR, 773 F.3d at 1258–59.
Contrary to Appellant’s argument (Appeal Br. 14), claim 1 at issue
here is not similarly addressing a problem specifically arising in the realm of
computer networks and solving that technological problem. That the issue
of personalization does not arise if coaching is performed in person rather
than using computers5 (id.) does not explain how the invention overcomes a

5 Nor do we agree with the premise of Appellant’s argument. If
“personalization” is not an issue when coaching is done face-to-face or over
the phone, it is at least in part because the trainer is performing the recited
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problem that is “rooted” in computer “technology.” The problem
Appellant’s invention addresses, as noted above, is that personalizing
messages to many clients is time consuming for a trainer and not cost
efficient. (Spec. 2.) That is a business problem. Appellant’s claim merely
recites the abstract idea of communicating personalized text messages
selected from a database as applied to the environment of the Internet. This
claim is akin to those the Federal Circuit reviewed in DDR as patent-
ineligible abstract ideas where the “claims in substance were directed to
nothing more than the performance of an abstract business practice on the
Internet or using a conventional computer.” DDR, 773 F.3d at 1256 (citing,
inter alia Alice, 573 U.S. at 224, Ultramercial, Inc. v. Hulu, LLC, 772 F.3d
709, 715–16 (Fed. Cir. 2014), buySAFE, Inc. v. Google, Inc., 765 F.3d 1350,
1355 (Fed. Cir. 2014), Accenture Glob. Servs., GmbH v. Guidewire
Software, Inc., 728 F.3d 1336, 1344–45 (Fed. Cir. 2013)).
Furthermore, for the same reasons discussed above, the additional
elements recited in claim 1 that are not part of the mental processes,
considered as an ordered combination, do not (1) improve the functioning of
a computer or other technology, (2) are not applied with any particular
machine (except for generic computer parts), (3) do not effect a
transformation of a particular article to a different state, and (4) are not
applied in any meaningful way beyond generally linking the use of the
judicial exception to a particular technological environment, such that the

mental processes in their head to provide personalized communication to
their client.
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claim as a whole is more than a drafting effort designed to monopolize the
exception. See MPEP §§ 2106.05(a)–(c), (e)–(h).
In sum, we find that the claimed invention does not integrate the
abstract idea into a “practical application,” as that phrase is used in the
Guidance. See Guidance, 84 Fed. Reg. at 55. We next turn to the second
step of the Alice analysis, i.e., whether the claim includes an “inventive
concept.”
STEP 2B
Step 2B requires that we look to whether the claim, that we have
determined above to set forth the judicial exception of an abstract idea,
“[a]dds a specific limitation [beyond the judicial exception that is] not well-
understood, routine, conventional in the field.” Guidance 84 Fed. Reg. at
56; MPEP § 2106.05(d)).
As discussed above, the Specification describes the computing
resource and profile and rules database as generic components that perform
generic functions. In other words, these additional elements that are not the
abstract idea are well-understood, routine, and conventional.
As Appellant’s Specification makes clear, the receiving of
information about the subject and his or her activity was something that a
trainer was already engaged in though the trainer may not have stored that
information electronically. (Spec. 1–2.)
The sending limitation recited in Appellant’s claim includes sending
the selected at least one text fragment to a client device associated with the
subject. Appellant’s Specification indicates that the sending of a
personalized message based on subject profile information was something
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that was part of the prior art (id.), even though the subject profile
information may not have been stored in a computer database.
Thus, considered individually and as an ordered combination, the
limitations that are beyond the judicial exceptions merely instruct the
practitioner to implement the abstract idea with high-level, generic
technology executing generic functions, i.e., conventional technology, and to
perform conventional steps of data gathering and sending a personalized
communication.
To the extent the Appellant argues that the invention is not directed to
an abstract idea and effects an improvement to technology because it is
novel over the prior art (see Reply Br. 3), an abstract idea does not transform
into an inventive concept just because the prior art does not disclose or
suggest it. See Mayo, 566 U.S. at 78.
In light of the foregoing, we affirm the Examiner’s rejection that
claim 1 is directed to patent-ineligible subject matter.
Appellant has not argued claims 2–20 separately. These claims,
therefore, fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv).
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–20 101 1–20

AFFIRMED