Liang Gou et al.

Patent Trials and Appeals Board

Oct 4, 2019

14453081 - (D) (P.T.A.B. Oct. 4, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/453,081 08/06/2014 Liang Gou ARC920130154US1 2920
141852 7590 10/04/2019
IBM CORP. (WIP)
c/o WALDER INTELLECTUAL PROPERTY LAW, P.C.
1701 N. COLLINS BLVD.
SUITE 2100
RICHARDSON, TX 75080
EXAMINER
ZIMMERMAN, MATTHEW E
ART UNIT PAPER NUMBER
3684
MAIL DATE DELIVERY MODE
10/04/2019 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 LIANG GOU, ADITYA PAL, FEI WANG,
and MICHELLE X. ZHOU
____________

Appeal 2018-008387
Application 14/453,081
Technology Center 3600
____________

Before KARA L. SZPONDOWSKI, SCOTT B. HOWARD, and
STEVEN M. AMUNDSON, Administrative Patent Judges.

AMUNDSON, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) from a final
rejection of claims 1–20, i.e., all pending claims. 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
International Business Machines Corporation. Appeal Br. 2.
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STATEMENT OF THE CASE
The Invention
According to the Specification, the invention concerns “matching
products to users in ecommerce environments.” Spec. ¶ 1.2 The
Specification explains that (1) “[b]rands and users are matched by
determining their personalities and pairing them based on user-brand
associations”; (2) “[m]odeling parameters are estimated based on the
personalities of each pair”; (3) “[a]dditional pairs of users and brands having
unknown associations are identified” and scored “based on the modelling
parameters”; and (4) “[b]rands and users having unknown associations are
matched based on their correlations scores matching one or more criteria.”
Id. at 51 (Abstract). The Specification also explains that “[t]he greater the
correlation between user characteristics that consistently and distinctively
describe the user’s actual or ideal identity, and those that describe a brand,”
the “greater the likelihood may be that the user will prefer the brand to other
brands.” Id. ¶ 2. Hence, the invention endeavors to “utilize personalities
associated with a brand” to “match the brand” to “one or more users.” Id.
¶ 3.
Exemplary Claim
Independent claim 1 exemplifies the claims at issue and reads as
follows:

2 This decision uses the following abbreviations: “Spec.” for the
Specification, filed August 6, 2014; “Final Act.” for the Final Office Action,
mailed December 13, 2017; “Appeal Br.” for the Appeal Brief, filed
May 11, 2018; “Ans.” for the Examiner’s Answer, mailed June 27, 2018;
and “Reply Br.” for the Reply Brief, filed August 24, 2018.
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1. A method, in a data processing system comprising at
least one memory and at least one processor, the method
comprising:
configuring the at least one memory with instructions,
which are executed by the at least one processor and configure
the at least one processor to implement a matching system for
matching brands to users and a database;
determining, by a personality scale determination module
executing within the matching system, personalities of a set of
users and of a set of brands stored in the database;
identifying, by the matching system, a first set of user-
brand pairs, wherein elements of each pair in the first set of
user-brand pairs have known associations stored in the
database;
estimating, by a parameter estimation module executing
within the matching system, one or more modelling parameters
based on the first set of user-brand pairs;
identifying, by an analytics tool executing within the
matching system, a second set of user-brand pairs, wherein
elements of each pair in the second set of user-brand pairs have
unknown associations stored in the database;
determining, by a user-brand affinity score determination
module executing within the matching system, correlations
between elements of one or more pairs in the second set of user-
brand pairs based on the modelling parameters;
matching, by a selection module executing within the
matching system, based on the correlations, one or more of:
a select set of brands whose corresponding
correlation to a given user satisfies a first threshold
criteria; or
a select set of users whose corresponding
correlation to a given brand satisfies a second threshold
criteria;
wherein the first and second threshold criteria are
identical or different;
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generating, by a recommendation module executing
within the matching system, a recommendation comprising
information specifying the selected set of brands or the selected
set of users; and
transmitting, by the matching system, the
recommendation to a user.
Appeal Br. 19–20 (Claims App.).
The Rejection on Appeal
Claims 1–20 stand rejected under 35 U.S.C. § 101 as directed to
patent-ineligible subject matter. Final Act. 2–6.
ANALYSIS
We have reviewed the rejection in light of Appellant’s arguments that
the Examiner erred. For the reasons explained below, we agree with the
Examiner’s conclusion concerning ineligibility under § 101. We adopt the
Examiner’s findings and reasoning in the Final Office Action and Answer.
See Final Act. 2–7; Ans. 3–8. We provide the following to address and
emphasize specific findings and arguments.
Introduction
The Patent Act defines patent-eligible subject matter broadly:
“Whoever 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. In Mayo and Alice, the
Supreme Court explained that § 101 “contains an important implicit
exception” for laws of nature, natural phenomena, and abstract ideas. Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012);
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014); see Diamond v.
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Diehr, 450 U.S. 175, 185 (1981). In Mayo and Alice, the Court set forth a
two-step analytical framework for evaluating patent-eligible subject matter.
Mayo, 566 U.S. at 77–80; Alice, 573 U.S. at 217–18.
Under Mayo/Alice step one, we “determine whether the claims at
issue are directed to” a judicial exception, i.e., an abstract idea, a law of
nature, or a natural phenomenon. Alice, 573 U.S. at 217. Step one involves
looking at the “focus” of the claims at issue and their “character as a whole.”
SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018).
In January 2019, the PTO issued revised guidance for determining
whether claims are directed to a judicial exception. See 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019
Guidance”). The 2019 Guidance applies to the Board. Id. at 50–51, 57 n.42;
see 35 U.S.C. § 3(a)(2)(A) (investing the Director with responsibility “for
providing policy direction” for the PTO). Neither the Examiner nor
Appellant had the benefit of the 2019 Guidance when presenting their
respective positions concerning subject-matter eligibility.
The 2019 Guidance specifies two prongs for the analysis under
Mayo/Alice step one (PTO step 2A). 84 Fed. Reg. at 54–55. Prong one
requires evaluating “whether the claim recites a judicial exception, i.e., an
abstract idea, a law of nature, or a natural phenomenon.” Id. at 54. “If the
claim does not recite a judicial exception, it is not directed to a judicial
exception,” and it satisfies § 101. Id. “If the claim does recite a judicial
exception, then it requires further analysis” under prong two. Id. Prong two
requires evaluating “whether the claim as a whole integrates the recited
judicial exception into a practical application of the exception.” Id. “When
the exception is so integrated, then the claim is not directed to a judicial
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exception,” and it satisfies § 101. Id. “If the additional elements do not
integrate the exception into a practical application, then the claim is directed
to the judicial exception,” and it “requires further analysis” under
Mayo/Alice step two (PTO step 2B). Id.
Under Mayo/Alice step two, we “consider the elements of each claim
both individually and ‘as an ordered combination’ to determine whether the
additional elements” add enough to transform the “nature of the claim” into
“significantly more” than the judicial exception. Alice, 573 U.S. at 217–18,
221–22 (quoting Mayo, 566 U.S. at 78–79). Step two involves the search for
an “inventive concept.” Alice, 573 U.S. at 217–18, 221; Univ. of Fla.
Research Found., Inc. v. Gen. Elec. Co., 916 F.3d 1363, 1366 (Fed.
Cir. 2019). “[A]n inventive concept must be evident in the claims.”
RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017).
Mayo/Alice Step One: PTO Step 2A Prong One
For Mayo/Alice step one, the Federal Circuit has noted that “[a]n
abstract idea can generally be described at different levels of abstraction.”
Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016). Here,
the Examiner determines that the claims are directed to “using parameters,
correlations, and personalities to match brands to users and generate
recommendations.” Final Act. 4–5 (emphasis omitted); see Ans. 5; Spec.,
51 (Abstract). The Examiner explains that “such activity is considered a
‘certain method of organizing human activity’” because it involves
(1) “interpersonal and intrapersonal activities, such as advertising,
marketing, and sales activities or behaviors,” and (2) “the economy and
commerce, such as the performance of financial transactions.” Final Act.
4–5; see Ans. 5–6.
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Appellant disputes that independent claims 1, 8, and 15 are directed to
an abstract idea. See Appeal Br. 7–17; Reply Br. 2–7. Appellant asserts that
the Examiner “oversimplifies and generalizes the claimed invention.”
Appeal Br. 8–9, 14. Appellant argues that the claims recite (1) “absolutely
no human activity, interpersonal or intrapersonal activities, advertising
activities, marketing activities, or sales activities” and (2) “absolutely no
performance of financial transactions.” Id. at 10. But Appellant concedes
that the “claims recite advertising or marketing” by “recit[ing] outputting a
recommendation to a user in the final step.” Id.
We disagree that the Examiner errs under Mayo/Alice step one. In
determining that the claims are directed to an abstract idea, the Examiner
accurately assesses the “focus” of the claims and their “character as a
whole.” See Final Act. 4–5; Ans. 5–6; see also SAP Am., 898 F.3d at 1167.
In addition, we determine that the claims recite abstract ideas falling
within one of the three groupings of abstract ideas specified in the 2019
Guidance, i.e., “certain methods of organizing human activity.” See 84 Fed.
Reg. at 51–52. The 2019 Guidance explains that “certain methods of
organizing human activity” include “advertising, marketing or sales
activities or behaviors.” Id. at 52. For the reasons explained below, each
independent claim recites “advertising, marketing or sales activities or
behaviors” in various limitations.
For instance, claim 1 recites the following limitations:
● “configuring . . . a matching system for matching
brands to users”;
● “determining . . . personalities of a set of users and
of a set of brands”;
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● “identifying . . . a first set of user-brand pairs, wherein
elements of each pair in the first set of user-brand pairs
have known associations”;
● “estimating . . . one or more modelling parameters based
on the first set of user-brand pairs”;
● “identifying . . . a second set of user-brand pairs, wherein
elements of each pair in the second set of user-brand
pairs have unknown associations”;
● “determining . . . correlations between elements of one
or more pairs in the second set of user-brand pairs”;
● “matching . . . one or more of: a select set of brands
whose corresponding correlation to a given user satisfies
a first threshold criteria; or a select set of users whose
corresponding correlation to a given brand satisfies a
second threshold criteria; wherein the first and second
threshold criteria are identical or different”;
● “generating . . . a recommendation comprising
information specifying the selected set of brands
or the selected set of users”; and
● “transmitting . . . the recommendation to a user.”
Appeal Br. 19–20. Claims 8 and 15 recite similar limitations. Id. at 22–23,
25–27.
The above-identified limitations encompass “advertising, marketing
or sales activities or behaviors” because they (1) determine brand
personalities and user personalities, (2) manipulate personality data to match
brands to users, and (3) recommend a brand to a user based on personality
data. In short, the limitations relate to targeted advertising.
As noted above, the 2019 Guidance identifies “advertising, marketing
or sales activities or behaviors” as among the enumerated methods of
organizing human activity, and thus an abstract idea. 84 Fed. Reg. at 52;
see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1361–63
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(Fed. Cir. 2015) (deciding that the claimed concept of “offer-based price
optimization” is an abstract idea “similar to other ‘fundamental economic
concepts’ found to be abstract ideas by the Supreme Court and this court”).
In addition, targeted advertising and the “tailoring of content based on
information about the user . . . is an abstract idea that is as old as providing
different newspaper inserts for different neighborhoods.” Affinity Labs of
Tex., LLC v. Amazon.com Inc., 838 F.3d 1266, 1271 (Fed. Cir. 2016).
Appellant asserts that “advertising is outside the scope of the claim.”
Reply Br. 6. But Appellant concedes that the “claims recite advertising or
marketing” by “recit[ing] outputting a recommendation to a user in the final
step.” Appeal Br. 10. Further, each independent claim recites “matching
brands to users.” Id. at 19, 22, 25–26. And “matching brands to users”
corresponds to “advertising, marketing or sales activities or behaviors,” i.e.,
targeted advertising.
Mayo/Alice Step One: PTO Step 2A Prong Two
Because we determine that each independent claim recites an abstract
idea, we consider whether each claim as a whole integrates the recited
abstract idea into a practical application. See 84 Fed. Reg. at 54–55. “Only
when a claim recites a judicial exception and fails to integrate the exception
into a practical application, is the claim ‘directed to’ a judicial exception
. . . .” Id. at 51.
As additional elements, the independent claims recite computer-
system components. Appeal Br. 19–20, 22–23, 25–27. Specifically, method
claim 1 recites a “processor,” a “memory,” and a “database.” Id. at 19–20.
System claim 8 recites (1) a “computer device” with a “processor” and
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a “storage device” and (2) a “database.” Id. at 22–23. Product claim 15
recites a “processor,” a “storage device,” and a “database.” Id. at 25–27.
We determine that each independent claim as a whole does not
integrate the recited abstract idea into a practical application because the
additional elements do not impose meaningful limits on the abstract idea.
See 84 Fed. Reg. at 53–54; see also Final Act. 3–7; Ans. 3–8. Instead, the
claimed computer-system components constitute generic computer-system
components that perform generic computer functions. See Final Act. 6;
Spec. ¶¶ 100–106, 111–116.
Appellant contends that the “claims are not merely generic computing
elements performing generic computing functions.” Appeal. Br. 7. But the
claimed computer-system components operate in their ordinary capacities to
collect, manipulate, and communicate data. Appellant does not explain how
the claimed computer-system components do anything other than collect,
manipulate, and communicate data. See id. at 7–17.
Appellant argues that the “claims are directed to eliminating human
activity from the process of matching brands to users by automating that
process.” Appeal Br. 8. “But the need to perform tasks automatically is not
a unique technical problem.” Cellspin Soft, Inc. v. Fitbit, Inc., 927 F.3d
1306 (Fed. Cir. 2019). Thus, the “mere automation of manual processes
using generic computers does not” suffice for patent eligibility. Credit
Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017).
Appellant contends that the claimed invention (1) “is rooted in
computer technology,” (2) “addresses a problem specific to computer
technology,” and (3) provides “a technological solution to a technological
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problem for matching brands to users.” Appeal Br. 7. But Appellant admits
that “matching brands to users is not a technology.” Reply Br. 7.
We agree that matching brands to users is not a technological
problem. As the Examiner reasons, matching brands to users “is not a
problem that specifically arose because of the creation of computers and
the Internet.” Ans. 4; see Final Act. 7; Ans. 3. And as the Examiner also
reasons, “‘using a personality scale determination module, one or more
modelling parameters, an analytics tool, and correlations between elements
of one or more pairs in the second set of user-brand pairs based on the
modelling parameters to match brands to users and generate
recommendations’ is not a technology or technical field” for § 101 purposes.
Ans. 7 (quoting Appeal Br. 12).
Additionally, in Bilski the Supreme Court did not view balancing risk
positions as a technological problem. See Bilski v. Kappos, 561 U.S. 593,
599, 609–13 (2010). Moreover, in Alice the Court did not view mitigating
settlement risk as a technological problem. See Alice, 573 U.S. at 212–14
& n.2, 219–23. Here, matching brands to users parallels balancing risk
positions in Bilski and mitigating settlement risk in Alice.
Appellant contends that the claims concern the “the technological
field of artificial intelligence.” Appeal Br. 10–11; see Reply Br. 2, 6.
Further, Appellant asserts that the claims employ “artificial intelligence” to
“create a new computer tool that performs activities that would normally
require human intelligence.” Reply Br. 6–7.
Appellant’s arguments do not persuade us of Examiner error because
they rest on unclaimed features. The claims do not require “artificial
intelligence.” Unclaimed features do not support patent eligibility. See
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ChargePoint, Inc. v. SemaConnect, Inc., 920 F.3d 759, 769 (Fed. Cir. 2019);
Berkheimer v. HP Inc., 881 F.3d 1360, 1369–70 (Fed. Cir. 2018); Two-Way
Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1338–39
(Fed. Cir. 2017); Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d
1315, 1331–32 (Fed. Cir. 2017). Consistent with the claims, the
Specification does not discuss “artificial intelligence.”
Appellant analogizes the claims here to the claims in the following
cases: McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299
(Fed. Cir. 2016); Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir.
2016); and Finjan, Inc. v. Blue Coat Systems, Inc., 879 F.3d 1299, 1305
(Fed. Cir. 2018). See, e.g., Appeal Br. 11–15; Reply Br. 4–5. But the claims
here do not resemble the claims in any of those cases.
In McRO, the claims recited a “specific . . . improvement in computer
animation” using “unconventional rules” that related “sub-sequences of
phonemes, timings, and morph weight sets” to automatically animate lip
synchronization and facial expressions for three-dimensional characters that
only human animators could previously produce. McRO, 837 F.3d at
1302–03, 1307–08, 1313–15. The Federal Circuit decided that the claims
satisfied § 101 under Mayo/Alice step one because “the incorporation of the
claimed rules” improved an existing technological process. Id. at 1314–16.
Unlike the claims in McRO, the claims here do not improve an
existing technological process. See Alice, 573 U.S. at 223 (explaining that
“the claims in Diehr were patent eligible because they improved an existing
technological process”); see also Final Act. 6–7; Ans. 6–8. The Examiner
correctly finds that the claims do not recite “an improvement in a computer”
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or “an improvement in another technology or technical field.” Final Act. 6;
see Ans. 6–7.
In Enfish, the Federal Circuit decided that the claims satisfied § 101
under Mayo/Alice step one because they recited a “specific improvement to
the way computers operate,” i.e., an improved database configuration that
permitted faster and more efficient searching. Enfish, 822 F.3d at 1330–33,
1336, 1339. Further, the Federal Circuit has explained that the claims in
Enfish “did more than allow computers to perform familiar tasks with
greater speed and efficiency” and “actually permitted users to launch and
construct databases in a new way.” Finjan, 879 F.3d at 1305; see also
Secured Mail Sols. LLC v. Universal Wilde, Inc., 873 F.3d 905, 910
(Fed. Cir. 2017) (explaining that the claims in Enfish “focused on an
improvement to computer functionality”).
In Finjan, the claims recited “a system and method for providing
computer security by attaching a security profile to a downloadable,” i.e.,
“an executable application program . . . downloaded from a source computer
and run on [a] destination computer.” Finjan, 879 F.3d at 1302–03. The
claimed “security profile” included “details about the suspicious code in the
received downloadable,” such as “all potentially hostile or suspicious code
operations that may be attempted by” the downloadable. Id. at 1304. The
Federal Circuit explained that the claimed “security profile” produced
“a new kind of file that enable[d] a computer security system to do things
it could not do before.” Id. at 1304–05. The court decided that the claims
satisfied § 101 under Mayo/Alice step one because they provided an
“improvement in computer functionality.” Id. at 1305–06.
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Unlike the claims in Enfish and Finjan, the claims here do not provide
an improvement in computer functionality. See Final Act. 6–7; Ans. 6–8.
For instance, the claims do not recite an advance in hardware or software
that causes a processor itself or a memory itself to operate faster or more
efficiently. As discussed above, the Examiner correctly finds that the claims
do not recite “an improvement in a computer” or “an improvement in
another technology or technical field.” Final Act. 6; see Ans. 6–7.
The 2019 Guidance identifies exemplary considerations indicating
that additional elements in claims “may have integrated the [judicial]
exception into a practical application.” 84 Fed. Reg. at 55 & nn.25–29
(citing Manual of Patent Examining Procedure §§ 2106.05(a)–(c),
2106.05(e) (9th ed. rev. 08.2017 Jan. 2018)). As the above analysis
indicates, we have evaluated Appellant’s arguments in light of those
exemplary considerations. For the reasons discussed above, however, we
determine that each independent claim as a whole does not integrate the
recited abstract idea into a practical application. Thus, each claim is directed
to a judicial exception and does not satisfy § 101 under Mayo/Alice step one.
Mayo/Alice Step Two: PTO Step 2B
Because we determine that each independent claim is directed to a
judicial exception, we “consider the elements of each claim both
individually and ‘as an ordered combination’ to determine whether the
additional elements” add enough to transform the “nature of the claim” into
“significantly more” than the judicial exception. See Alice, 573 U.S.
at 217–18, 221–22 (quoting Mayo, 566 U.S. at 78–79). Under Mayo/Alice
step two, we “look with more specificity at what the claim elements add, in
order to determine ‘whether they identify an “inventive concept” in the
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application of the ineligible subject matter’ to which the claim is directed.”
Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1258
(Fed. Cir. 2016) (quoting Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d
1350, 1353 (Fed. Cir. 2016)). An “inventive concept” requires more than
“well-understood, routine, conventional activity already engaged in” by the
relevant community. Rapid Litig. Mgmt. Ltd. v. CellzDirect, Inc., 827 F.3d
1042, 1047 (Fed. Cir. 2016) (quoting Mayo, 566 U.S. at 79–80). But a
“non-conventional and non-generic arrangement of known, conventional
pieces” may provide an “inventive concept” satisfying step two. BASCOM
Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350
(Fed. Cir. 2016).
As discussed above, the independent claims recite computer-system
components, i.e., a “computer device,” a “processor,” a “memory” or
“storage device,” and a “database.” Appeal Br. 19–20, 22–23, 25–27. As
also discussed above, the claimed computer-system components constitute
generic computer-system components that perform generic computer
functions. See Final Act. 6; Spec. ¶¶ 100–106, 111–116.
The Specification describes the claimed computer-system components
generically and evidences their conventional nature. See Spec. ¶¶ 100–106,
111–116. As an example, the Specification describes a “computing device”
as including the following “internal components”:
● “one or more processors”;
● “one or more computer-readable RAMs”;
● “one or more computer-readable ROMs”;
● “one or more buses”;
● “one or more operating systems”; and
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● “one or more computer-readable tangible
storage devices.”
Id. ¶ 100.
As another example, the Specification describes a “storage device” as
“an electronic storage device, a magnetic storage device, an optical storage
device, an electromagnetic storage device, a semiconductor storage device,
or any suitable combination of the foregoing.” Spec. ¶ 112. Further, the
Specification identifies the following items for use as a “memory”:
a portable computer diskette, a hard disk, a random access
memory (RAM), a read-only memory (ROM), an erasable
programmable read-only memory (EPROM or Flash memory),
a static random access memory (SRAM), a portable compact
disc read-only memory (CD-ROM), a digital versatile disk
(DVD), a memory stick, a floppy disk, a mechanically encoded
device such as punch-cards or raised structures in a groove
having instructions recorded thereon, and any suitable
combination of the foregoing.
Id. In addition, the Specification describes a “processor” as part of “a
general purpose computer, special purpose computer, or other programmable
data processing apparatus.” Id. ¶ 116.
Simply implementing an abstract idea using conventional machines or
devices “add[s] nothing of substance.” See Alice, 573 U.S. at 226–27; see
also Mayo, 566 U.S. at 84–85 (explaining that “simply implementing a
mathematical principle on a physical machine” does not suffice for patent
eligibility) (citing Gottschalk v. Benson, 409 U.S. 63, 64–65, 71 (1972)).
Moreover, the claimed computer-system components operate to
collect, manipulate, and communicate data. Appeal Br. 19–20, 22–23,
25–27; see Final Act. 6; Ans. 6–8. Court decisions have recognized that
generic computer-system components operating to collect, manipulate, and
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communicate data are well understood, routine, and conventional to a skilled
artisan. See, e.g., Alice, 573 U.S. at 226–27; SAP Am., 898 F.3d at 1164–65
& n.1, 1170; Apple, 842 F.3d at 1234, 1241–42; Intellectual Ventures I LLC
v. Symantec Corp., 838 F.3d 1307, 1316–20 (Fed. Cir. 2016) (“Symantec”);
Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334 (Fed. Cir.
2015); 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).
For example, the system claims in Alice recited a “data processing
system” (e.g., a “processor”) with a “communications controller” and a “data
storage unit” (e.g., a “storage device,” “memory,” or “database”). Alice,
573 U.S. at 226. The Supreme Court decided that the system claims failed
to satisfy § 101 because “[n]early every computer” includes those generic
components for performing “basic calculation, storage, and transmission
functions” and the system claims simply implemented the same abstract idea
as the method claims. Id. at 226–27. The Court reasoned that (1) “the
system claims are no different from the method claims in substance”;
(2) “[t]he method claims recite the abstract idea implemented on a generic
computer”; and (3) “the system claims recite a handful of generic computer
components configured to implement the same idea.” Id. at 226.
Here, the claimed computer-system components perform “basic
calculation, storage, and transmission functions” that nearly every computer
system performs. Appeal Br. 19–20, 22–23, 25–27; see Final Act. 6;
Ans. 6–8. For instance, nearly every computer system includes a
“processor” for manipulating data and a “storage device,” “memory,” or
“database” for storing data. Hence, those generic computer-system
components do not satisfy the “inventive concept” requirement. See, e.g.,
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Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314,
1324–25 (Fed. Cir. 2016) (holding that “generic computer components such
as an ‘interface,’ ‘network,’ and ‘database’” did not satisfy the “inventive
concept” requirement); FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d
1089, 1095–96 (Fed. Cir. 2016) (describing the claimed “microprocessor”
and “user interface” as “generic computer elements”); Prism Techs. LLC v.
T-Mobile USA, Inc., 696 F. App’x 1014, 1016–17 (Fed. Cir. 2017)
(describing the claimed “authentication server,” “access server,” “Internet
Protocol network,” “client computer device,” and “database” as
“indisputably generic computer components”).
Insofar as Appellant relies on the recited abstract ideas to satisfy the
“inventive concept” requirement, Appellant wrongly does so. See, e.g.,
Appeal Br. 7–17; Reply Br. 2–7. A “claimed invention’s use of the
ineligible concept,” e.g., an abstract idea, “cannot supply the inventive
concept that renders the invention ‘significantly more’ than that ineligible
concept.” BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290
(Fed. Cir. 2018). “[U]nder the Mayo/Alice framework, a claim directed to a
newly discovered” abstract idea “cannot rely on the novelty of that discovery
for the inventive concept necessary for patent eligibility.” Genetic Techs.
Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016).
Appellant asserts that the “combination of elements is inventive when
compared to the cited prior art.” Appeal Br. 16–17; see Reply Br. 7. But the
absence of anticipation and obviousness “does not resolve the question of
whether the claims embody an inventive concept” under Mayo/Alice
step two. Symantec, 838 F.3d at 1315; see SAP Am., 898 F.3d at 1163. “The
search for a § 101 inventive concept” differs “from demonstrating § 102
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novelty.” Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151
(Fed. Cir. 2016); see Two-Way Media, 874 F.3d at 1340. “The ‘novelty’ of
any element[s] or steps” in a claim or even the claim itself “is of no
relevance in determining whether the subject matter of a claim” satisfies
§ 101. Diehr, 450 U.S. at 189–90.
Appellant quotes PTO guidance3 about Berkheimer. Appeal Br.
16–17. Appellant then asserts that “[t]he Examiner has not established that
the claims fail to claim significantly more than the abstract idea as a matter
of fact.” Id. at 17; see Reply Br. 7.
But the PTO guidance about Berkheimer explains that citations to
court decisions may demonstrate “the well-understood, routine, conventional
nature of the additional element(s).” Apr. 19, 2018 PTO Mem. 4. As
discussed above, court decisions have recognized that generic computer-
system components operating to collect, manipulate, and communicate data
are well understood, routine, and conventional to a skilled artisan. See, e.g.,
Alice, 573 U.S. at 226–27; SAP Am., 898 F.3d at 1164–65 & n.1, 1170;
Apple, 842 F.3d at 1234, 1241–42; Symantec, 838 F.3d at 1316–20; Versata,
793 F.3d at 1334; Ultramercial, 772 F.3d at 715–16; buySAFE, 765 F.3d
at 1355.
Appellant argues that the “claims do not preempt all approaches.”
Appeal Br. 14. That argument does not persuade us of Examiner error.
While preemption may denote patent ineligibility, its absence does not
establish patent eligibility. See FairWarning, 839 F.3d at 1098. For claims

3 USPTO Memorandum, Changes in Examination Procedure Pertaining
to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision
(Berkheimer v. HP, Inc.) (Apr. 19, 2018).
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covering a patent-ineligible concept, preemption concerns “are fully
addressed and made moot” by an analysis under the Mayo/Alice framework.
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015).
“Whether a combination of claim limitations supplies an inventive
concept that renders a claim ‘significantly more’ than an abstract idea to
which it is directed is a question of law.” BSG Tech, 899 F.3d at 1290.
Given the claimed generic computer-system components that perform
generic computer functions, we conclude that the combination of limitations
in each independent claim does not supply an “inventive concept” that
renders the claim “significantly more” than an abstract idea. Thus, each
claim does not satisfy § 101 under Mayo/Alice step two.
Summary for the Independent Claims 1, 8, and 15
For the reasons discussed above, each independent claim fails to
satisfy § 101 under Mayo/Alice step one and step two. Hence, we sustain the
§ 101 rejection of the independent claims.4

4 In the event of continued prosecution, the Examiner should consider (1) the
applicability of 35 U.S.C. § 112(f) to the limitations in the apparatus claims
and (2) whether under 35 U.S.C. § 112(b) the Specification discloses
adequate corresponding structure, e.g., a suitable algorithm, for
accomplishing each function recited in a limitation. See, e.g., Advanced
Ground Info. Sys., Inc. v. Life360, Inc., 830 F.3d 1341, 1349–50 (Fed. Cir.
2016); Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348–54 (Fed. Cir.
2015); EON Corp. IP Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616,
624 (Fed. Cir. 2015). Where a means-plus-function limitation recites two or
more functions, the specification “must disclose adequate corresponding
structure to perform all of the claimed functions.” Media Rights Techs., Inc.
v. Capital One Fin. Corp., 800 F.3d 1366, 1374 (Fed. Cir. 2015) (emphasis
in original); see Williamson, 792 F.3d at 1351–52; see also Noah Sys., Inc. v.
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Dependent Claims 2–7, 9–14, and 16–20
We also sustain the § 101 rejection of dependent claims 2–7, 9–14,
and 16–20 because Appellant does not argue eligibility separately for them.
See Appeal Br. 6–17; Reply Br. 2–7; 37 C.F.R. § 41.37(c)(1)(iv).
CONCLUSION
We affirm the Examiner’s decision to reject claims 1–20.
In summary:
Claims
Rejected 35 U.S.C. § Basis Affirmed Reversed
1–20 101 Eligibility 1–20
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See
37 C.F.R. § 41.50(f).
AFFIRMED

Intuit Inc., 675 F.3d 1302, 1318–19 (Fed. Cir. 2012) (means-plus-function
limitation specifying two functions).