Matthew Sivertson et al.

Patent Trials and Appeals Board

Jul 2, 2020

14555499 - (D) (P.T.A.B. Jul. 2, 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.
14/555,499 11/26/2014 Matthew Sivertson 37202/609001; 1508676US 7447
57956 7590 07/02/2020
FBFK/Intuit
Robert Lord
9 Greenway Plaza
Suite 500
HOUSTON, TX 77046
EXAMINER
WARDEN, MICHAEL J
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
07/02/2020 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):
docketing@fbfk.law
jhathaway@fbfk.law
rlord@fbfk.law
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHEW SIVERTSON, GANG WANG,
KEVIN MCCLUSKEY, VINAY KUMAR, and JAY JIEBING YU
Appeal 2019-006613
Application 14/555,499
Technology Center 3600
Before CARL W. WHITEHEAD, JR., AMBER L. HAGY, and
PHILLIP A. BENNETT, Administrative Patent Judges.
BENNETT, 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 1–21. We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.

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 Intuit
Inc. Appeal Br. 4.
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CLAIMED SUBJECT MATTER
The claims are directed to a method and system for organized user
experience workflow. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A method for providing user content, comprising:
obtaining a set of fields, wherein the set of fields define an
order to an application workflow, wherein the number of fields
in the set of fields is adjusted during the application workflow
based on first user data obtained from a first user device, wherein
the set of fields includes a first field and a third field, and wherein
a cursor position is set to the first field;
generating, during the application workflow and by a user
content flow driver, a priority field list for the application
workflow, wherein the priority field list provides an order that
the set of fields are used;
sorting, during the application workflow, the set of fields
based on the priority field list to obtain a first sorted plurality of
fields;
selecting a next field from the first sorted plurality of fields
to obtain a selected next field;
generating first content based on the selected next field for
a first context to produce a first generated content;
presenting the first field of the set of fields to a first user
device by transmitting, to a first user experience player on the
first user device, the first generated content to be presented in the
application workflow on the first user device, wherein the first
user experience player corresponds to a first platform, and
wherein the first platform operates on a first operating system;
receiving, during the application workflow and in
response to transmitting the first generated content, second user
data in a first response for the first field;
updating, using the second user data and a plurality of
priority parameters, the priority field list to obtain an updated
priority field list,
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wherein the updated priority field list comprises one
or more fields in a different location from the priority field
list, and
wherein the set of fields is updated in response to
receiving the first response from the user device, by:
removing the third field from the set of fields; and
adding a fourth field to the set of fields, wherein the
fourth field was not present in the set of fields prior to
receiving the first response;
sorting, during the application workflow, the set of fields
based on the updated priority field list to obtain a second sorted
plurality of fields;
determining that a switch from the first context to a second
context is made;
generating a second generated content by modifying the
first content to reflect the second context;
setting the cursor position to the fourth field;
presenting the fourth field to the user device by
transmitting, to a second user experience player on a second user
device, based on the second sorted plurality of fields, and after a
determination is made to switch from the first user experience
player to a second user experience player, the second generated
content to be presented in the application workflow on the second
user device in a graphical user interface,
wherein the second user experience player
corresponds to a second platform that is different from the
first platform, and
wherein the second platform operates on a second
operating system that is different from the first operating
system;
updating the set of fields in response to receiving a second
response from the user device that is to go back to a previous
field, by:
removing the fourth field from the set of fields; and
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adding the third field back to the set of fields;
setting the cursor position to the third field; and
presenting the third field to the user device.
Appeal Br. 29–31 (Claims Appendix).
REJECTION2
Claims 1–21 stand rejected under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter. Final Act. 2–7.
ANALYSIS
Standard for Patent Eligibility
In issues involving subject matter eligibility, our inquiry focuses on
whether the claims satisfy the two-step test set forth by the Supreme Court in
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014). The Court instructs us
to “first determine whether the claims at issue are directed to a patent-
ineligible concept,” id. at 218, and, in this case, the inquiry centers on
whether the claims are directed to an abstract idea. If the initial threshold is
met, we then move to the second step, in which 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. at 217–18 (quoting Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 79, 78 (2012)). The Court
describes the second step as a search for “an ‘“inventive concept”’—i.e., an
element or combination of elements that is ‘sufficient to ensure that the

2 A rejection under 35 U.S.C. § 103 was withdrawn in the Examiner’s
Answer. Ans. 3.
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patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself.’” Id. (quoting Mayo, 566 U.S. at 72–73).
The USPTO has published revised guidance on the application of
§ 101 consistent with Alice and subsequent Federal Circuit decisions.
USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the Guidance, we first look to
whether the claim recites:
(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) (referred to Step 2A, prong 1 in
the Guidance); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a)–(c), (e)–(h))
(referred to Step 2A, prong 2 in the Guidance).
See Guidance, 84 Fed. Reg. at 52–55. Only if a claim (1) recites a judicial
exception and (2) does not integrate that exception into a practical
application, do we then move to Step 2B of the Guidance. There, we look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, conventional” in the field (see
MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See Guidance, 84 Fed. Reg. at 56.
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Examiner’s Findings and Conclusion3
The Examiner rejects the claims as being directed to a judicial
exception without significantly more. Final Act. 2–6; Ans. 3–10. Under the
first step of the Alice inquiry, the Examiner determines the claims are
“directed to the abstract idea of providing information to someone based on
what is known about her, which is similar to the concept identified as
abstract in Affinity Labs.” Final Act. 2. The Examiner further finds the
claims to be abstract because they recite “collecting and analyzing
information in order to provide a desirable information-based result, [which]
is similar to the concept identified as abstract by the court in Electric Power
Group.” Id.
Under the second step of the Alice inquiry, the Examiner determines
the additional claim elements are insufficient to amount to significantly
more than the judicial exception. Final Act. 5. The Examiner determines
that the additional elements “include[] ‘hardware component’ and three
black-box modules described entirely functionally, a ‘first scheduler’, a
‘second scheduler’, a ‘storage device’ and a ‘user interface’.” Id. The
Examiner finds “these elements are recited at an exceedingly high degree of
generality and only perform generic computer functions of manipulating
information and sharing information with persons and/or other devices.” Id.

3 The Final Office Action was mailed prior to the Guidance. It applied the
case-law based approach from previous eligibility guidance in rejecting the
claims under § 101. The Appeal Brief, Examiner’s Answer, and Reply Brief
were filed/mailed subsequent to the issuance of the Guidance—and their
treatment of the eligibility issues applies the Guidance.
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Appellant’s Contentions
Appellant presents several arguments for eligibility. Appellant first
argues the claim4 does not recite a judicial exception under Step 2A, prong 1
of the Guidance. Reply Br. 3–5. Appellant asserts the claim elements
“could not be practically performed in the human mind” and “it is no more
practical to perform such actions mentally than it is to track how much
memory has been allocated to a computer application over a predetermined
time period.” Reply Br. 4.
Appellant further argues that even if the claim recites an abstract idea,
the claim integrates the abstract idea into a practical application under Step
2A, prong 2. Reply Br. 5–7. In that regard, Appellant asserts the claims are
similar to those found eligible in Core Wireless Licensing S.A.R.L. v. LG
Elecs., Inc., 880 F.3d 1356 (Fed. Cir. 2018). See Appeal Br. 24. Appellant
further asserts the invention improves the functioning of a computer (Reply
Br. 7; Appeal Br. 12–14, 17) and also effects a transformation of an article to
a different state or thing (Reply Br. 7, Appeal Br. 17–18).
Appellant also contends the claims are eligible under Step 2B of the
Guidance. Specifically, Appellant argues the Examiner’s analysis is flawed
because “claim 1 recites non-abstract elements in addition to the computer
hardware,” and the Examiner fails to address those limitations. Reply Br. 8.

4 Appellant argues the § 101 rejection of claims generally. We treat claim 1
as representative. 37 C.F.R. § 41.37(c)(1)(iv) (2018) (“When multiple
claims subject to the same ground of rejection are argued as a group or
subgroup by Appellant, the Board may select a single claim from the group
or subgroup and may decide the appeal as to the ground of rejection with
respect to the group or subgroup on the basis of the selected claim alone.”).
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Revised Guidance, Step 2A, Prong 1 5
The Judicial Exception
Applying the Guidance, we are persuaded the Examiner has erred in
rejecting claim 1 as being directed to patent-ineligible subject matter. The
Guidance instructs us first to determine whether any judicial exception to
patent eligibility is recited in the claim. The Guidance identifies three
judicially-excepted groupings: (1) mathematical concepts, (2) certain
methods of organizing human activity such as fundamental economic
practices and commercial interactions (including . . . advertising, marketing
or sales activities or behaviors; business relations), and (3) mental processes.
See Guidance, 84 Fed. Reg. at 52, 54–55.
We agree with Appellant that the claims before us do not recite an
invention within these groupings. The limitations of claim 1 recite a series
of graphical user interface operations that cause a computer to operate and
display outputted data in a specific manner. We discern no mathematical
concepts recited therein, nor does the Examiner find any such operations.
See Final Act. 4–5; Ans. 4–5. We also do not agree with the Examiner that
the claims recite a commercial interaction. Although certain exemplary
embodiments provided in the Specification are deployed in the context of a
tax preparation application (see, e.g., Figs. 12.1–12.5), the claims themselves
make no mention of any commercial practice or business-related concept.
Rather, the claims exclusively recite GUI generation, input, modification,
and output operations. Nor do we find the steps recited in claim 1 as being

5 Throughout this opinion, we give the claim limitations the broadest
reasonable interpretation consistent with the Specification. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
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properly considered part of a mental process. The claimed steps are not the
sort to be practically performed by a human in their mind, as each relate to
how a graphical user interface is constructed and maintained by a computer.
Having determined that claim 1 does not recite a judicial exception,
the analysis need not go any further. See Guidance, 84 Fed. Reg. at 54 (“If
the claim does not recite a judicial exception (a law of nature, natural
phenomenon, or subject matter within the enumerated groupings of abstract
ideas in Section I), then the claim is eligible at Prong One of revised Step
2A. This concludes the eligibility analysis, except in the rare circumstance
described below.”). We, therefore, do not sustain the rejection of
representative claim 1, as well as the remaining claims.
CONCLUSION
We reverse the Examiner’s rejection under 35 U.S.C. § 101.

DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–21 101 Eligibility 1–21

REVERSED