Lindsay, Robert Taaffe. et al.

Patent Trials and Appeals Board

Jan 10, 2020

13533625 - (D) (P.T.A.B. Jan. 10, 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.
13/533,625 06/26/2012 Robert Taaffe Lindsay 26295-19404/US 6918
87851 7590 01/10/2020
Facebook/Fenwick
Silicon Valley Center
801 California Street
Mountain View, CA 94041
EXAMINER
TORRICO-LOPEZ, ALAN
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
01/10/2020 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):
fwfacebookpatents@fenwick.com
ptoc@fenwick.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT TAAFFE LINDSAY, SEAN MICHAEL BRUICH, and
FREDERICK ROSS LEACH
Appeal 2019-000620
Application 13/533,625
Technology Center 3600
Before JAMES B. ARPIN, MIRIAM L. QUINN, and
AMBER L. HAGY, Administrative Patent Judges.
HAGY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 3–12, 14, 15, and 17–26, which are
all of the pending claims. Final Act. 1; see Appeal Br. 23. 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(a). Appellant identifies the real party in interest as
Facebook, Inc. Appeal Br. 2. (Appellant’s Appeal Brief lacks page
numbers; references herein to pages of the Appeal Brief assume the cover
page is page 1.)
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CLAIMED SUBJECT MATTER
According to Appellant, the claimed invention provides systems and
methods “for obtaining structured data from freeform text answers in a
research poll.” Spec. ¶ 4. By way of background, Appellant’s Specification
describes a common way of conducting polls as using multiple choice
questions, but notes a drawback of that technique is that the presentation of
possible answers may bias the results of the poll. Id. ¶ 2. On the other hand,
Appellant’s Specification also notes that using open-ended questions may
result in differently worded responses that are difficult to quantify. Id. ¶ 3.
Appellant’s invention purports to address the drawbacks of open-ended
questions by allowing freeform text answers while providing auto-fill
responses based on partial user input, in which possible answers are stored
as objects in a database and are provided as candidate answers based on how
well they match a user’s partial input. Id. ¶¶ 4, 5.
Claims 1, 11, 12, 20, and 22 are independent. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A method comprising:
storing a plurality of objects corresponding to possible
answers to poll questions, each object associated with at
least one category of poll question;
presenting a user interface for a natural language poll to a
user, the poll comprising a poll question in the category of
poll questions and an answer field for receiving open
ended text input from the user;
receiving a partial input from the user via the answer field of
the user interface;
ranking, by a processor, one or more objects in the stored
plurality of objects as one or more candidate answers to
the poll question based on how well text in the user’s
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partial input matches text in any position of the possible
answers corresponding to the plurality of objects;
determining, by the processor, how well each of the one or
more ranked objects matches the category of the poll
question;
presenting to the user via the user interface the one or more
candidate answers associated with the highest ranking text
matched objects that also match the category of the poll
question;
receiving a selection from the user of an answer from the one
or more candidate answers; and
logging the selected candidate answer as the user’s response
to the poll question.
REFERENCES
The Examiner relies on the following references:
Name2 Number Date
Melet US 6,615,238 B1 Sept. 2, 2003
Pereira US 2006/0242109 A1 Oct. 26, 2006
Gross US 2006/0248078 A1 Nov. 2, 2006
Rothman US 2009/0164453 A1 June 25, 2009
Nicolov US 2009/0306967 A1 Dec. 10, 2009
Gupta US 2010/0217592 A1 Aug. 26, 2010
Marcucci US 2011/0196922 A1 Aug. 11, 2011
Henderson US 2012/0166929 A1 June 28, 2012
Pendergast US 2012/0210220 A1 Aug. 16, 2012
Rampson US 2013/0091411 A1 April 11, 2013

2 All reference citations are to the first named inventor only.
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REJECTIONS3
Claims 1, 3–12, 14, 15, and 17–26 stand rejected under 35 U.S.C.
§ 101 as directed to patent-ineligible subject matter (abstract idea). Final
Act. 5–7.
Claims 1, 3–12, 14, 15, and 17–26 stand rejected under 35 U.S.C.
§ 112(a) as failing to comply with the written description requirement. Id. at
2–4.
Claims 1, 5–7, 12, 17, 18, and 25 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combined teachings of Henderson,
Rampson, and Gross. Id. at 8–16.
Claims 3 and 14 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combined teachings of Henderson, Rampson, Gross,
and Melet. Id. at 16–17.
Claims 4 and 15 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combined teachings of Henderson, Rampson, Gross,
and Gupta. Id. at 17–18.
Claims 8 and 19 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combined teachings of Henderson, Rampson, Gross,
and Pereira. Id. at 18–19.
Claims 9 and 20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combined teachings of Henderson, Rampson, Gross,
and Nicolov. Id. at 19–20.

3 The Leahy-Smith America Invents Act (“AIA”) included revisions to 35
U.S.C. §§ 103 and 112 that became effective on March 16, 2013. Because
the present application was filed before March 16, 2013, the Examiner
applies the pre-AIA version of the statutory bases for unpatentability. See
Final Act. 2.
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Claims 10 and 21 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combined teachings of Henderson, Rampson, Gross,
Nicolov, and Pereira. Id. at 20–22.
Claims 11 and 22 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combined teachings of Henderson, Nicolov, Marcucci,
Rampson, and Gross. Id. at 22–30.
Claims 23 and 24 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combined teachings of Henderson, Rampson, Gross,
and Pendergast. Id. at 30–31.
Claims 26 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over the combined teachings of Henderson, Rampson, Gross, and Rothman.
Id. at 32.
OPINION
I. Section 101 Rejection4
The Examiner rejects all of the pending claims under 35 U.S.C. § 101
as patent-ineligible because they are directed to a judicial exception without
significantly more. Final Act. 5–7. Appellant argues that the claims are not
directed to an abstract idea, are directed to patent-eligible subject matter, and
the Examiner’s rejection should be reversed. Appeal Br. 6–17. For the
reasons explained below, we are not persuaded of Examiner error in the
§ 101 rejection, and we, therefore, sustain that rejection.

4 With regard to the Examiner’s § 101 rejection, Appellant argues all claims
together with claim 1 (Appeal Br. 17), and we consider claim 1
representative of the claimed subject matter on appeal. See 37 C.F.R.
§ 41.37(c)(1)(iv).
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A. Principles of Law
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. The U.S. Supreme Court, however, has interpreted § 101
to include an implicit exception: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S.
208, 216 (2014) (citation omitted).
The Court, in Alice, reiterated the two-part framework previously set
forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc.,
566 U.S. 66, 75–77 (2012), “for distinguishing patents that claim laws of
nature, natural phenomena, and abstract ideas from those that claim patent-
eligible applications of those concepts.” Alice, 573 U.S. at 217. The first
part in the analysis is to “determine whether the claims at issue are directed
to one of those patent-ineligible concepts.” Id. For example, abstract ideas
include, but are not limited to, fundamental economic practices, methods of
organizing human activities, an idea of itself, and mathematical formulas or
relationships. Id. at 218–20. The “directed to” inquiry asks not whether
“the claims involve a patent-ineligible concept,” but instead whether,
“considered in light of the specification, . . . ‘their character as a whole is
directed to excluded subject matter.’” Enfish, LLC v. Microsoft Corp.,
822 F.3d 1327, 1335 (Fed. Cir. 2016) (internal citations omitted). In that
regard, we determine whether the claims “focus on a specific means or
method that improves the relevant technology” or are “directed to a result or
effect that itself is the abstract idea and merely invoke generic processes and
machinery.” McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299,
1314 (Fed. Cir. 2016).
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If, in the first part of the Alice/Mayo analysis, we conclude that the
claims are not directed to a patent-ineligible concept, they are considered
patent eligible under § 101 and the inquiry ends. Rapid Litig. Mgmt. Ltd. v.
CellzDirect, Inc., 827 F.3d 1042, 1047 (Fed. Cir. 2016).
If the claims are directed to a patent-ineligible concept, the second
part in the Alice/Mayo analysis is to consider the elements of the claims
“individually and ‘as an ordered combination’” to determine whether there
are additional elements that “‘transform the nature of the claim’ into a
patent-eligible application.” Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S.
at 79, 78). In other words, the second part is to “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 217–18 (brackets in original)
(quoting Mayo, 566 U.S. at 72–73). The prohibition against patenting an
abstract idea “‘cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment’ or adding ‘insignificant
postsolution activity.’” Bilski v. Kappos, 561 U.S. 593, 610–11 (2010)
(internal citation omitted).
The U.S. Patent and Trademark Office (the “Office”) has published
revised guidance on the application of 35 U.S.C. § 101. 2019 Revised
Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50–57 (Jan. 7,
2019) (“2019 Guidance”). Under the 2019 Guidance, the Office first looks
to whether the claim recites: (1) any judicial exceptions, including certain
groupings of abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic practice, or
mental processes); and (2) additional elements that integrate the judicial
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exception into a practical application. See 2019 Guidance at 52, 54–55; see
also MPEP § 2106.05(a)–(c), (e)–(h).5
Only if a claim (1) recites a judicial exception, and (2) does not
integrate that exception into a practical application, does the Office then
look to whether the claim: (3) adds a specific limitation beyond the judicial
exception that are not “well-understood, routine, conventional” in the field
(see MPEP § 2106.05(d)); or (4) simply appends well-understood, routine,
conventional activities previously known to the industry, specified at a high
level of generality, to the judicial exception. See 2019 Guidance at 56. We
follow this guidance here.6
In reviewing the Examiner’s rejection under § 101, we group all
claims together and select claim 1 as representative of the group, as the
Examiner and Appellant have done. See Final Act. 5–7; Appeal Br. 8, 17;
37 C.F.R. § 31.47(c)(1)(iv). Accordingly, all claims stand or fall with
claim 1. We address the claims generally where possible, but when it is
helpful to refer to explicit claim language, we refer to claim 1.

5 Unless otherwise specified herein, all references to the MPEP are to Rev.
08.2017 (Jan. 2018).
6 “All USPTO personnel are, as a matter of internal agency management,
expected to follow the guidance.” 2019 Guidance at 51; see also October
2019 Update: Subject Matter Eligibility, 2 (Oct. 17, 2019) (“October 2019
Update”) (“Note, the feedback received was primarily directed to
examination procedures and, accordingly, this update focuses on clarifying
practice for patent examiners. However, all USPTO personnel are expected
to follow the guidance.”).
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B. Application of Legal Principles7
1. Step 2A of 2019 Guidance
Prong 1: Claims Recite an Abstract Idea
In applying the framework set out in Alice/Mayo, and as the first part
of that analysis, the Examiner concludes the claims recite steps amounting to
“collection and analysis of partial input from a user and display[ing] results
in the presented candidate answers to the user,” which the Examiner
determines are analogous to “collecting information, analyzing it, and
displaying certain results of the collection and analysis” determined to be an
abstract idea in Electric Power Group,8 and also recite steps amounting to
“collection of a partial user input and compar[ing] this information to objects
to determine candidate answers,” which the Examiner determines are
analogous to “collecting and comparing known information” determined to
be an abstract idea in Claussen.9 Final Act. 6. In the Answer, the Examiner
clarifies that “a person using pen and paper would be capable of presenting a
natural language poll, receiv[ing] partial input through an answer field,
ranking based on how well text matches, and presenting candidate
answers.” Ans. 3.
In challenging the Examiner’s determination that the claims recite an
abstract idea, Appellant argues that the claim limitations “cannot be

7 Because it is undisputed that Appellant’s claims are directed to recognized
statutory categories of processes and machines, we move directly to the two-
part Alice/Mayo analysis. 2019 Guidance at 53 (“Examiners should
determine whether a claim satisfies the criteria for subject matter eligibility
by evaluating the claim in accordance with the criteria discussed in MPEP
2106, i.e., whether the claim is to a statutory category (Step 1) and the
Alice/Mayo test for judicial exceptions (Steps 2A and 2B).”).
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executed by the human mind.” Appeal Br. 9. In particular, Appellant
contends a human mind could not perform the recited steps “in the same way
as a computer processor.” Id. at 10.
We evaluate the Examiner’s § 101 rejection by applying the 2019
Guidance, which uses enumerated groupings of abstract ideas that are rooted
in U.S. Supreme Court precedent, as well as Federal Circuit decisions
interpreting that precedent. See 2019 Guidance at 51–52. By grouping the
abstract ideas, the 2019 Guidance synthesizes the holdings of various court
decisions to facilitate examination. The 2019 Guidance describes one
category of abstract ideas as including “[m]ental processes”; that is,
“concepts performed in the human mind (including an observation,
evaluation, judgment, opinion).” Id. at 52 (footnotes omitted). The October
2019 Update10 provides additional clarification on “mental processes” by
providing an example of claims that recite mental processes as including “a
claim to ‘collecting information, analyzing it, and displaying certain results
of the collection and analysis,’ where the data analysis steps are recited at a
high level of generality such that they could practically be performed in the
human mind . . . .” October 2019 Update at 7 (citing Electric Power
Group). The October 2019 Update also gives as an example of a claim
reciting a “mental process” a “claim to collecting and comparing known

8 Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016).
9 Classen Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057 (Fed. Cir.
2011).
10 Available at https://www.uspto.gov/sites/default/files/documents/
peg_oct_2019_update.pdf.
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information . . . , which are steps that can be practically performed in the
human mind . . . .” Id. at 8 (citing Classen).
We agree with the Examiner that the claims recite steps that fall
within the category of mental processes (see Final Act. 5–7), consistent with
the 2019 Guidance. See 2019 Guidance at 52; see also October 2019 Update
at 7–8. In particular, claim 1 recites “receiving a partial input from the user
. . .”; “ranking . . . one or more objects in the stored plurality of objects as
one or more candidate answers to the poll question based on how well text in
the user’s partial input matches text in any position of the possible answers
corresponding to the plurality of objects”; “determining . . . how well each
of the one or more ranked objects matches the category of the poll question”;
“presenting to the user . . . the one or more candidate answers associated
with the highest ranking text matched objects that also match the category of
the poll question”; “receiving a selection from the user of an answer from
the one or more candidate answers”; and “logging the selected candidate
answer as the user’s response to the poll question,” each of which qualifies
as a step of collecting information, analyzing it, comparing it to known
information, and/or providing the results. Each of these steps could be
performed in the human mind or with the aid of pen and paper; hence, they
each fall within the category of mental processes, and, thus, the claim recites
an abstract idea. See Ans. 3.
Appellant’s reasoning that the steps would not be performed in the
human mind in the same way as a processor would perform them is not
persuasive, as this is not the proper test. As the 2019 Guidance states, “[i]f a
claim, under its broadest reasonable interpretation, covers performance in
the mind but for the recitation of generic computer components, then it is
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still in the mental processes category unless the claim cannot practically be
performed in the mind.” See 2019 Guidance at 52 n.14 (emphasis omitted).
Here, with the exception of generic computer implemented functions or
steps, there is nothing in the claims themselves that foreclose them from
being performed by a human, mentally or with pen and paper. See
Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed.
Cir. 2016) (holding that claims to screening messages in the context of
electronic communications were directed to an abstract idea because they
could, but for the recitation of generic computer-implemented steps, be done
by a human with the aid of pen and paper); see also October 2019 Update at
8 (“The courts have found claims requiring a generic computer or nominally
reciting a generic computer may still recite a mental process even though the
claim limitations are not performed entirely in the human mind.”).
Thus, under Prong 1 of Step 2A in accordance with the 2019
Guidance, we conclude the claims recite a judicial exception of mental
processes, and we, therefore, agree with the Examiner’s conclusions that the
claims recite an abstract idea.
Prong 2: Claims Fail to Integrate the Abstract
Idea Into a Practical Application11
In accordance with Prong 2 of Step 2A of the 2019 Guidance, we
evaluate the claims to determine whether they recite additional elements
beyond the abstract idea, and, if so, we evaluate the additional elements to

11 We acknowledge that some of these considerations may be properly
evaluated under the second part of the Alice/Mayo analysis (Step 2B of the
2019 Guidance). For purposes of maintaining consistent treatment within
the Office, we evaluate them under the first part of the Alice/Mayo analysis
(Step 2A of the 2019 Guidance). See 2019 Guidance at 54–55.
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determine whether they integrate the abstract idea into a practical
application. 2019 Guidance at 54. The 2019 Guidance at page 55 provides
exemplary considerations, including whether an additional element:
• “reflects an improvement in the functioning of a computer, or
an improvement to other technology or technical field”;
• “implements a judicial exception with, or uses a judicial
exception in conjunction with, a particular machine or
manufacture that is integral to the claim”;
• “effects a transformation or reduction of a particular article [or
thing] to a different state or thing”; or
• “applies or uses the judicial exception in some other meaningful
way beyond generally linking the use of the judicial exception
to a particular technological environment.”
The 2019 Guidance also highlights certain examples in which courts
have held that “a judicial exception has not been integrated into a practical
application,” such as where the claims “merely use[] a computer as a tool to
perform an abstract idea” or the additional element adds “insignificant extra-
solution activity” to the abstract idea. 2019 Guidance at 55 (emphasis
added); see also October 2019 Update at 11–15.
The Examiner determines the claims recite additional elements
beyond the abstract idea, such as a “user interface” and a processor. Final
Act. 7; Ans. 4. The Examiner determines, however, that the additional
element of a user interface “simply link[s] the abstract idea to a particular
technological environment or field of use,” and that “the recited hardware in
the claims only provides implementation/application of the abstract [idea] by
a computer.” Ans. 4. We agree.
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Appellant’s invention is not directed to an improvement in the
functioning of a computer or otherwise to a technological improvement.
Rather, Appellant’s invention is directed to the information collection
problem of quantifying natural language answers to open-ended questions,
and the claims are directed to the information collection solution of
receiving partial answers and comparing them to saved answers, in which
suggested answers are filtered according to the category of a question and
correlated to partial answers by ranking according to text matching, and in
which users are prompted to select a suggested answer—a process in which
a computer is used as a tool in its ordinary capacity to automate a process
that could otherwise be carried out in the human mind, or with the aid of pen
and paper.12 See Final Act. 7.
Appellant argues that the claims are not directed to an abstract idea
because they are analogous to claims determined to be patent-eligible in
McRO. Appeal Br. 13. In particular, Appellant argues,
the claimed process requires that the candidate answers be
displayed in a specific way by ranking candidate answers based
on a user’s partial input and then determining how well ranked
answers match the category of the natural language poll-
question. This is not a generic gathering or analyzing function
as stated in the Decision but is a concrete series of steps that is
used to select candidate answers to present to the users. These
steps also provide the specific “how” that yields a more
specialized approach to presenting candidate answers for the
natural language poll than the prior art. Additionally, as with the

12 Appellant’s Specification confirms that computer-implemented steps may
be performed by a “general-purpose computing device.” Spec. ¶ 33.
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“specific structure” of McRO, the claimed process doesn’t in
effect broadly preempt all score-based selection of content items.
Id.
We disagree that Appellant’s claims are analogous to those deemed
patent eligible in McRO. As Appellant acknowledges, the claims in McRO
did not simply automate an existing process, but were directed towards an
improved method of enhancing visual animation products by generating
accurate and realistic lip synchronization and facial expressions in animated
characters. See Appeal Br. 12 (citing McRO). Specifically, in McRO, the
claims described a way of animating characters that represented a
technological improvement over the existing, manual 3-D animation
techniques. McRO, 837 F.3d at 1316. Appellant’s claims, on the other
hand, do not produce any improved product, such as a visual animation.
Appellant, instead, claims a computer-implemented method of storing data
(possible answers to poll questions), retrieving that data, and comparing that
data to newly received data (pending answers to poll questions) to determine
how well a possible (stored) answer corresponds to a pending answer.
Claim 1’s data-gathering steps reasonably can be characterized as merely
constituting insignificant extra-solution activity:
An example of pre-solution activity is a step of gathering data for
use in a claimed process, e.g., a step of obtaining information
about credit card transactions [that] is recited as part of a claimed
process of analyzing and manipulating the gathered information
by a series of steps in order to detect whether the transactions
were fraudulent.
MPEP § 2106.05(g).
Claim 1’s other steps entail using a computer to rank possible answers
according to text matching and to determine how well one or more ranked
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objects (answers) matches a category of a poll question. But the acts of
ranking and determining merely constitute the underlying abstract ideas—
the mental processes that, as we determine above, can be performed in the
human mind or with pencil and paper. See 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.”); Synopsys, Inc. v. Mentor Graphics
Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (“[A] claim for a new abstract
idea is still an abstract idea.”) (emphasis omitted); SAP America, Inc. v.
InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018) (“What is needed is an
inventive concept in the non-abstract application realm.”).
Consistent with the Examiner’s determination, we determine the
claims do not include an improvement to another technology or technical
field or an improvement to the functioning of the computer itself; we also
find the claims do not include a transformation of an article or meaningful
limitations beyond generally linking the use of an abstract idea to a
particular technological environment. See Final Act. 7; see also Ans. 3–6.
As the U.S. Supreme Court has explained, “if a patent’s recitation of a
computer amounts to a mere instruction to ‘implemen[t]’ an abstract idea ‘on
. . . a computer,’ that addition cannot impart patent eligibility.” Alice, 573
U.S. at 223 (quoting Mayo, 566 U.S. at 84).
In summary, we conclude the claims do not integrate the abstract idea
into a practical application so as to remove them from the realm of reciting
patent-ineligible abstract ideas. Accordingly, in the first part of the
Alice/Mayo analysis, we conclude the claims are directed to an abstract idea.
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2. Step 2B of 2019 Guidance – Claims Fail to Recite Significantly More
Than the Abstract Idea
Regarding second part of the Alice/Mayo analysis, the Examiner finds
the elements of the claims, when considered individually or as an ordered
combination, do not recite significantly more than the abstract idea. Final
Act. 7. In particular, the Examiner finds:
Additional elements such as the processor and user interface in
claim 1, processor and user interface in claim 11, computer-
readable storage media, processor, and user interface in claim 12,
and computer-readable storage media, user interface, and
processor in claim 22, do not add a meaningful limitation to the
abstract idea since these elements are being used in conventional
ways. Additionally, the processors in the claims are only broadly
applied to the abstract ideas at a high level of generality; thus,
none of recited hardware offers a meaningful limitation beyond
generally linking the abstract idea to a particular technological
environment, in this case, implementation via a
processor/computer.
Final Act. 7. We agree.
We find the steps beyond the recited abstract idea, such as “storing a
plurality of objects” and “presenting a user interface,” are directed to
insignificant extra-solution activity. As our reviewing court has explained,
such data gathering and transmissions simply provide data for other method
steps. See, e.g. CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
1370 (Fed. Cir. 2011) (“We have held that mere ‘[data-gathering] step[s]
cannot make an otherwise nonstatutory claim statutory.”’ (alterations in
original) (quoting In re Grams, 888 F.2d 835, 840 (Fed. Cir. 1989))); see
also 2019 Guidance at 55 (identifying “add[ing] insignificant extrasolution
activity to the” abstract idea as an example of when an abstract idea has not
been integrated into a practical application).
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Appellant argues that the Examiner’s rejection “makes a similar
mistake as the overturned district court” in BASCOM Global Internet
Services v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016). Appeal Br.
14–15. In particular, Appellant argues an “inventive concept can be found
in the non-conventional and non-generic arrangement of known,
conventional pieces.” Id. at 15. “For example, claim 1 recites additional
elements that include at least 1) ‘providing a natural language poll’ and
2) ‘presenting . . . one or more candidate answers’ 3) ‘receiving a selection
from the user of an answer’ and 4) ‘logging the selected candidate
answers.’” Id.
We disagree that the claims are analogous to those determined to be
patent-eligible in BASCOM. Appellant does not argue the invention is a
software-based invention that improves the performance of the computer
system itself. Thus, this case is unlike BASCOM, in which an inventive
concept was found in the ordered combination of limitations providing for
“the installation of a filtering tool at a specific location, remote from the end
users, with customizable filtering features specific to each end user.” 827
F.3d at 1350. Here, the claim elements beyond the abstract idea recite only
generic computer functions and components that are well-understood,
routine, and conventional—that is, receiving, storing, and displaying data;
such generic computer functions and components do not convey an
inventive concept. See Alice, 573 U.S. at 217. Appellant is reminded that in
most cases, “relying on a computer to perform routine tasks more quickly or
more accurately is insufficient to render a claim patent eligible.” OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (citing Alice, 573
U.S. at 224 (holding that “use of a computer to create electronic records,
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track multiple transactions, and issue simultaneous instructions” is not an
inventive concept)); Intellectual Ventures I LLC v. Capital One Bank, 792
F.3d 1363, 1370 (“[M]erely adding computer functionality to increase the
speed or efficiency of the process does not confer patent eligibility on an
otherwise abstract idea.”).
To the extent Appellant relies on the particular manipulation of data
recited as indicative of an inventive concept, we have determined above that
such steps amount to mental processes, which is categorized in the 2019
Guidance as an abstract idea. Appellant is reminded that “the ‘inventive
concept’ [under the second part of the Mayo/Alice test] 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.” Berkheimer v. HP Inc., 890
F.3d 1369, 1374 (Fed. Cir. 2018) (Moore, J., concurring). “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.” BSG Tech LLC v.
Buyseasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018).
For the reasons discussed above, we determine that the functions
recited in Appellant’s claims do not add any meaningful limitations beyond
generally linking the abstract idea to the particular technological
environment.
Accordingly, we sustain the Examiner’s rejection of claim 1 under 35
U.S.C. § 101 as patent-ineligible. We also sustain the rejection of claims 3–
12, 14, 15, and 17–26, which are not separately argued (see Appeal Br. 17),
as patent-ineligible under 35 U.S.C. § 101.
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II. Section 112(a) Rejection
The Examiner rejects all pending claims under 35 U.S.C. § 112(a) as
failing to comply with the written description requirement. Final Act. 2–3.
For the reasons stated below, we are persuaded of Examiner error in this
rejection, and we do not sustain it.
The Examiner finds the recitation in independent claims 1, 11, 12, and
22 of both “ranking . . . one or more objects . . . based on how well text in
the user’s partial answer matches the text in any position of the possible
answers” and “determining . . . how well each of the one or more ranked
objects matches the category of the poll question” lacks written description
support in the Specification. Id.; see also Ans. 2–3. The Examiner bases
this finding on reading Appellant’s Specification as describing alternative
embodiments: one embodiment in which the system ranks objects based on
how well they match a user’s partial input, and a separate embodiment in
which the system filters matching objects based on they match the category
of the question. Final Act. 3 (citing Spec. ¶¶ 6, 21). The Examiner
concludes claimed the “determining” step pertains to the described filtering
(see id.), and, thus, finds the claim recites both “ranking” and “filtering”
(id.). The Examiner finds the Specification fails to convey to the ordinarily
skilled artisan that the inventor was in possession of an invention employing
both ranking and filtering. Id.
As our reviewing court has explained, “[t]he ‘written description’
requirement serves a teaching function, . . . in which the public is given
‘meaningful disclosure in exchange for being excluded from practicing the
invention for a limited period of time.”’ Univ. of Rochester v. G.D. Searle &
Co., Inc., 358 F.3d 916, 922 (Fed. Cir. 2004) (citation omitted). Another
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“purpose of the ‘written description’ requirement is . . . [to] convey with
reasonable clarity to those skilled in the art that, as of the filing date [], [the
applicant] was in possession of the invention.” Vas-Cath Inc. v. Mahurkar,
935 F.2d 1555, 1563–64 (Fed. Cir. 1991); see also Enzo Biochem Inc. v.
GenProbe Inc., 296 F.3d 1316, 1329 (Fed. Cir. 2002). The requirement is
satisfied when the specification “set[s] forth enough detail to allow a person
of ordinary skill in the art to understand what is claimed and to recognize
that the inventor invented what is claimed.” Univ. of Rochester, 358 F.3d at
928.
We are persuaded of Examiner error in the rejection under § 112(a)
for lack of written description. As Appellant argues, and we agree, the
Specification describes at least one embodiment in which objects are both
filtered and ranked. Appeal Br. 4–5; Reply Br. 2–3; Spec. ¶¶ 6, 21–22. In
particular, in paragraph 22, Appellant’s Specification describes an example
of a poll question being “What is your favorite brand of soda drink?” For
this question, as further described with reference to Figure 1,
the matching objects 108A and 108B [(names of sodas)] are
filtered from the objects associated with the questions in the same
category stored in the object store 225. Moreover, the matching
object can be ranked based on how many letters are matched to
the user input, and/or the position of the matched letters in the
matching object.
Id. ¶ 22 (emphasis added); see also id. at Fig. 1. Thus, Appellant’s
Specification describes and illustrates an embodiment in which matching
objects are both filtered and ranked.
For these reasons, we agree with Appellant that the Specification
conveys with reasonable clarity to those skilled in the art that, as of the filing
date sought, Appellant was in possession of the invention as now claimed,
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including both “ranking . . . one or more objects in the stored plurality of
objects . . . based on how well text in the user’s partial input matches text”
and “determining . . . how well each of the one or more ranked objects
matches the category of the poll questions,” as recited in independent claim
1 and commensurately recited in independent claims 11, 12, and 22. We,
therefore, do not sustain the Examiner’s 35 U.S.C. § 112(a) rejection for
lack of written description.
III. Section 103 Rejections
We have considered Appellant’s arguments and contentions (Appeal
Br. 17–22; Reply Br. 6–8)13 in light of the Examiner’s findings and
explanations (Final Act. 7–32; Ans. 6–10). For the reasons set forth below,
we are not persuaded of Examiner error in these rejections.
A. Claims 1, 5–7, 12, 17, 18, and 25
The Examiner rejects claims 1, 5–7, 12, 17, 18, and 25 as
unpatentable over the combined teachings of Henderson, Rampson, and
Gross. Final Act. 8–16. The Examiner finds Henderson teaches most of the
limitations of claim 1 (id. at 8–12 (citing Henderson ¶¶ 15, 18, 22, 23, 27,
35, 36, Figs. 3A–3C)), but finds Henderson does “not explicitly” teach
“determining by a processor, how well each of the one or more . . . objects
matches the category of the poll question,” for which the Examiner relies on
Rampson (id. at 12–13 (citing Rampson ¶¶ 41–42)). The Examiner also
finds Henderson does “not explicitly” teach “ranking one or more objects in

13 Only those arguments made by Appellant have been considered in this
decision. Arguments not made are deemed waived. See 37 C.F.R.
§ 41.37(c)(1)(iv).
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a stored plurality of objects as one or more candidate [answer/keywords]
based on how well the text in the user’s partial input matches text in any
position of the possible [answer/keywords] corresponding to the plurality of
objects,” for which the Examiner relies on Gross. Id. at 13–14 (citing Gross
¶¶ 46–47).
Appellant argues the Examiner’s § 103 rejection of claim 1 over
Henderson, Rampson, and Gross is in error for several reasons. Appeal
Br. 17–21. First, Appellant argues Henderson does not disclose or suggest
“presenting . . . a natural language poll,” because Henderson discloses a
“form with an auto-complete function,” which fails to teach “a natural-
language poll question.” Appeal Br. 19; Reply Br. 6–7. We disagree.
As the Examiner finds, Henderson discloses prompting users to enter
values into fields through a “context sensitive user-interface display,” in
which, when users begin to type information into a field, autocomplete
suggestions are displayed based in part on correlations with stored entries
made by other users. Final Act. 9; Henderson ¶¶ 22, 23, 27, 35. We agree.
We are not persuaded by Appellant’s attempts to distinguish a “poll
question,” as recited in claim 1, from Henderson’s teaching of prompts for
user input into a form. First, we note that Appellant’s Specification does not
define the claim term “poll questions” in a manner that would exclude
Henderson’s teaching of prompts for user input into a form. Rather, the
Specification broadly describes “a research poll system that allows a user to
enter freeform text in a text field as an answer to one or more questions in
the poll.” Spec. ¶ 12 (emphasis added). Henderson also discloses a user
entering freeform text in a text field as an answer to one or more questions—
questions, for example, pertaining to a user’s identity and address. E.g.,
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Henderson ¶¶ 35–36, Figs. 3A–3C. Any difference in the information
requested by a form, as taught by Henderson, and information requested in a
“poll question,” as recited, depends on the intention of the entity collecting
the information. Thus, the recitation of a “poll question” is a statement of
intended use, which is not entitled to patentable weight in differentiating
over the prior art. See, e.g., Boehringer Ingelheim Vetmedica, Inc. v.
Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003) (“An intended
use or purpose usually will not limit the scope of [a patent] claim because
such statements usually do no more than define a context in which the
invention operates.”). Although “[s]uch statements often . . . appear in the
claim’s preamble,” a statement of intended use or purpose can appear
elsewhere in a claim. In re Stencel, 828 F.2d 751, 754 (Fed. Cir. 1987).
Certainly, a “poll question” could cover any topic desired by pollster, which
may include requests for information pertaining to the identity of the
respondent (user), as disclosed in Henderson’s example.
Appellant next argues the Examiner’s reliance on Rampson for the
“determining” step is in error because Rampson fails to disclose
“determining . . . how well each of the one or more . . . objects matches the
category.” Appeal Br. 19; Reply Br. 7. In particular, Appellant argues
Rampson discloses making autocomplete suggestions based on the
“structure of the document,” such as by listing suggestions that come from
the same column of a grid. Appeal Br. 19 (citing Rampson ¶ 41). Thus,
according to Appellant, in Rampson “suggestions are made because of the
structure of the document and not the content or category of the information
stored in that structure.” Id. We disagree.
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As the Examiner finds, and we agree, Rampson discloses making
autocomplete suggestions based on categories because the columns represent
categories. Ans. 7–8 (citing Rampson ¶¶ 38, 41, 42, Fig. 8). As illustrated
in Figure 8 of Rampson, each column is labeled with a category, such as
“name” and “major,” and suggestion results are correlated to those
categories (such as “math” or “mechanical engineering” for an entry in the
“major” column that begins with “m”). Thus, Appellant’s argument is
premised on an untenable reading of Rampson and is not persuasive of
Examiner error.
Appellant next argues Henderson does not disclose “presenting . . . the
one or more candidate answers . . . that also match the category of the poll
question.” Appeal Br. 20; Reply Br. 8. In particular, Appellant argues the
Examiner improperly conflates a “category” with a “poll question” and reads
both terms onto Henderson’s disclosure of fields in a form requesting user
information. Appeal Br. 20. According to Appellant, “[t]he term category
loses its meaning if the question is also the category.” Id.
We are not persuaded of Examiner error. Despite insisting that “the
category of a question and the question itself are dissimilar” (id.), Appellant
does not explain the distinction. A review of the Specification, however,
reveals that the “category” of a question may, in the context of Appellant’s
invention, be tied to the content sought by the question. In the example
discussed by reference to Figure 1 of the Specification, the question is
“What is your favorite brand of soda drink?” and the category of that
question, according to the Specification, is “soda drink.” Spec. ¶¶ 21–22.
Thus, Appellant’s Specification confirms the category of the question may
be defined by the question itself. Similarly in Henderson, as the Examiner
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finds, the content sought by a question on a form also indicates its category,
such as the category of “customer” for a form field requesting “customer
name.” Final Act. 10–11 (citing Henderson ¶¶ 35–36, Figs. 3A–3C).
Moreover, in teaching that the autocomplete suggestions are “context
sensitive,” Henderson expressly discloses that the suggestions are linked to
the category of the question, such as entries pertaining to customer names
for the customer name field. Henderson ¶ 35. We agree.
For the foregoing reasons, we are not persuaded of Examiner error in
the obviousness rejection of independent claim 1, or of claims 6, 7, 17, 18,
and 25, which are not argued separately. See Appeal Br. 17, 21. We,
therefore, sustain that rejection.
Appellant presents a separate argument for claim 5, which depends
from claim 1 and additionally recites “wherein the candidate answers are
structured objects collected from at least one of: input from other users, user
profiles, advertisements, product reviews, user comments, and social
network pages and communications.” Appeal Br. 21.14 Appellant argues
the Examiner’s reliance on Henderson is in error because “Henderson does
not disclose all of the claimed sources of candidate answers.” Id. Appellant
then lists all of the options recited in claim 5 (except for “input from other
users”), and asserts the Examiner has not pointed out where those options
are taught in the prior art. Id.

14 Appellant argues independent claim 12 together with claim 5, asserting it
“recites similar limitations.” Appeal Br. 21. We do not see such limitations
in claim 12. Rather, claim 12 recites a “non-transitory computer-readable
storage medium” storing instructions for performing essentially the same
steps as recited in method claim 1. Id. at 27–28 (Claims App.).
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We are not persuaded of Examiner error in the rejection of claim 5.
As the Examiner points out, claim 5 lists the sources of candidate answers in
the alternative, and recites that the objects be collected from “at least one
of” the listed alternatives. Ans. 10. The Examiner finds Henderson teaches
“collection from at least one of the listed items (i.e., input from other users)”
and therefore satisfies this limitation. Id. We agree Henderson teaches
providing candidate answers based on input from other users. E.g.,
Henderson ¶¶ 22–23. Consequently, we sustain the Examiner’s rejection of
claim 5. We also sustain the Examiner’s rejection of claim 12, which is not
separately argued by Appellant.
B. Claims 8 and 19
Claim 8 depends, indirectly, from independent claim 1, and further
recites “determining a number of occurrence for a freeform answer to the
poll question; and in response to the number of occurrence exceeding a
predetermined threshold, storing the freeform answer as a candidate answer
to the poll questions.” Appeal Br. 25–26 (Claims App’x). Claim 19
depends, indirectly, from independent claim 12, and contains a similar
recitation. Id. at 29.
The Examiner rejects claims 8 and 19 over the combined teachings of
Henderson, Rampson, Gross, and Pereira, relying on the teachings of Pereira
for the additional limitation recited in claims 8 and 19. Final Act. 18–19
(citing Pereira ¶¶ 2, 58). In particular, the Examiner finds Pereira teaches
adding a new email recipient if it is not already present on an auto-complete
list, wherein an algorithm (such as one based on usage count) chooses which
entries to keep on an auto-complete list. Id. Appellant argues the
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Examiner’s findings are in error because Pereira has “no minimum threshold
to be populated on the auto complete list.” Appeal Br. 22.
We are persuaded of Examiner error in the rejection. We agree with
Appellant that Pereira does not disclose a minimum threshold of uses to add
an answer as a candidate answer; rather, Pereira teaches that “[e]ntries are
added to the list every time a recipient is resolved,” which is every time “a
user enters the recipient for the first time.” Pereira ¶ 59 (emphasis added).
In other words, if an entry is not already on the list, Pereira teaches that it
will be added every time it is used for the first time, and not in response to
the number of occurrences exceeding a threshold, as recited in the claims.
Although Pereira teaches sorting entries based on usage count, the usage
count determines what entries are discarded once the entry count reaches a
maximum size, and is not used as a criterion for adding an entry, as recited
in claims 8 and 19. We, therefore, do not sustain the Examiner’s § 103(a)
rejection of claims 8 and 19.
C. Claims 3, 4, 9–11, 14, 15, 20–24, and 26
The Examiner also rejects claims 3, 4, 9–11, 14, 15, 20–24, and 26
over the combined teachings of Henderson, Rampson, Gross, and additional
references, as noted above. Final Act. 16–32. Appellant has not particularly
pointed out errors in the Examiner’s reasoning regarding the additional
teachings of the further cited art. Rather, Appellant argues independent
claim 22 together with independent claims 1, 11, and 12, and asserts
patentability of dependent claims 3, 4, 9–11, 14, 15, 20, 21, 23, and 26 based
upon these claims’ dependency from independent claim 1, 11, 12, or 22.
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Appeal Br. 17. For the reasons given above, we also sustain the Examiner’s
rejections of claims 3, 4, 9–11, 14, 15, 20–24, and 26.
CONCLUSION
Because we affirm the rejection of each pending claim, the
Examiner’s decision to reject claims 1, 3–12, 14, 15, and 17–26 is affirmed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Basis/References Affirmed Reversed
1, 3–12, 14,
15, and 17–
26
101 Eligibility 1, 3–12, 14,
15, and 17–
26

1, 3–12, 14,
15, and 17–
26
112(a) Written Description 1, 3–12,
14, 15,
and 17–26
1, 5–7, 12,
17, 18, and
25
103(a) Henderson, Rampson,
Gross
1, 5–7, 12,
17, 18, and
25

3, 14 103(a) Henderson, Rampson,
Gross, Melet
3, 14
4, 15 103(a) Henderson, Rampson,
Gross, Gupta
4, 15
8, 19 103(a) Henderson, Rampson,
Gross, Pereira
8, 19
9, 20 103(a) Henderson, Rampson,
Gross, Nicolev
9, 20
10, 21 103(a) Henderson, Rampson,
Gross, Nicolev,
Pereira
10, 21
11, 22 103(a) Henderson, Nicolev,
Marcucci, Ramspon,
Gross
11, 22
23, 24 103(a) Henderson, Rampson,
Gross, Pendergast
23, 24
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Claims
Rejected
35 U.S.C. § Basis/References Affirmed Reversed
26 103(a) Henderson, Rampson,
Gross, Rothman
26
OVERALL OUTCOME 1, 3–12, 14,
15, and 17–
26

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