McCrory, Gerry et al.

Patent Trials and Appeals Board

Feb 3, 2020

14215015 - (D) (P.T.A.B. Feb. 3, 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.
14/215,015 03/16/2014 Gerry McCrory 86423-0001 1638
29693 7590 02/03/2020
WILEY
1776 K STREET N.W.
WASHINGTON, DC 20006
EXAMINER
WHITAKER, ANDREW B
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
02/03/2020 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):
ptodocket@wiley.law
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GERRY McCRORY,
KEVIN McCLOSKEY,
LINDA F. MONTEMAYOR, and
MATTHEW EVAN SHERMAN

Appeal 2019–004090
Application 14/215,015
Technology Center 3600

Before HUBERT C. LORIN, CYNTHIA L. MURPHY, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
LORIN, 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 11–15 and 21–27. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

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 SCOIR, Inc.
Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The claimed subject matter “relates to methods and systems for
managing an application process, such as the college application process. In
particular, the instant disclosure relates to methods and systems for matching
the attributes of applicants (e.g., high school students) to the attributes of
institutions to which they are applying (e.g., colleges and universities).”
(Spec., para. 2). Claim 23, reproduced below with emphasis added, is
illustrative of the claimed subject matter:
23. A method of matching applicant attributes to institutional
attribute criteria, comprising:
(a) establishing a user interface via a server device;
(b) receiving at the server device, through the user
interface, a response by an applicant to an assessment question,
wherein the assessment question is written to require application
of the applicant's creative intelligence (CQ);
(c) publishing the response by the applicant to the
assessment question to a plurality of users other than the
applicant;
(d) receiving at the server device, through the user
interface, feedback on the published response from the plurality
of users other than the applicant;
(e) quantifying the CQ of the applicant using the received
feedback;
(f) storing the quantified CQ of the applicant as an
applicant profile in an applicant database;
(g) repeating steps (b), (c), (d), (e), and (f) at least one
time, thereby storing a plurality of applicant profiles in the
applicant database;
(h) receiving at the server device, through the user
interface, a search query including a quantified CQ criterion;
and
(i) outputting from the server device, through the user
interface, a subset of the plurality of applicant profiles, wherein
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the subset of the plurality of applicant profiles includes applicant
profiles satisfying the quantified CQ criterion.
Appeal Br. 16 (Claims Appendix).
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Tatsuoka US 6,260,033 B1 July 10, 2001
Thompson US 2004/0210661 A1 Oct. 21, 2004
Blaze US 2009/0187473 A1 July 23, 2009
Galimore US 2011/0306028 A1 Dec. 15, 2011
Hocking US 2014/0081768 A1 Mar. 20, 2014
Colliander US 2015/0161903 A1 June 11, 2015
REJECTIONS
Claims 11–15 and 21–27 are rejected under 35 U.S.C. § 101 as being
directed to judicially-excepted subject matter.
Claims 15, 21–23, 26 and 27 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Galimore, Tatsuoka, and Colliander.
Claims 24 and 25 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Galimore, Tatsuoka, Colliander, and Thompson.
Claims 11 and 12 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Galimore, Tatsuoka, Colliander, and Blaze.
Claims 13, 14, 18 and 19 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Galimore, Tatsuoka, Colliander, and Hocking.
OPINION
The rejection of claims 11–15 and 21–27 under 35 U.S.C. § 101 as being
directed to judicially-excepted subject matter.
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Claims 13 and 14 are indefinite for the reasons discussed below.
Accordingly, the rejection of claims 13 and 14 under 35 U.S.C. § 101 for
claiming patent-ineligible subject matter must fall, pro forma, because they
necessarily are based on speculative assumptions as to the meaning of the
claims. See In re Steele, 305 F.2d 859, 862–63 (CCPA 1962).
The Appellant argued the claims as a group. See Appeal Br. 9–11.
We select claim 23 as the representative claim for this group, and the
remaining claims 11, 12, 15, 21, 22, and 24–27 stand or fall with claim 23.
37 C.F.R. § 41.37(c)(1)(iv).
Preliminary comment
Previous Office guidance on patent subject matter eligibility has been
superseded by the 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (Jan. 7, 2019), hereinafter “2019 Revised 101 Guidance”.
Id. at 51 (“Eligibility–related guidance issued prior to the Ninth Edition, R–
08.2017, of the MPEP (published Jan. 2018) should not be relied upon.”)
Accordingly, we will not address arguments on the sufficiency of the
Examiner’s position relative to prior guidance but rather our analysis that
follows will comport with the 2019 Revised 101 Guidance. We will address
in particular Appellant’s arguments made in the Reply Brief which are raised
in the context of the 2019 Revised 101 Guidance.
Introduction
35 U.S.C. § 101 provides that “[w]hoever 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.”
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In that regard, claim 23 covers a “process” and is thus statutory
subject matter for which a patent may be obtained.2 This is not in dispute.
However, the § 101 provision “contains an important implicit
exception: Laws of nature, natural phenomena, and abstract ideas are not
patentable.” Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014)
(quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 589 (2013)).
In that regard, notwithstanding claim 23 covers statutory subject
matter, the Examiner has raised a question of patent–eligibility on the
ground that claim 23 is directed to an abstract idea.
Alice identifies a two-step framework for determining whether
claimed subject matter is directed to an abstract idea. Id. at 217.
Alice step one – the “directed to” inquiry
According to Alice step one, “[w]e must first determine whether the
claims at issue are directed to a patent-ineligible concept.” Id. at 218
(emphasis added).
The Examiner determined, inter alia, that claim 23
recite[s], in part, a method and system for receiving profile
criterion inputs from an applicant, defining a plurality of
applicant attributes from the profile criterion inputs, including a
quantified attribute, storing the plurality of attributes as an
applicant profile, receiving a search query comprising a
quantified applicant attribute criterion, and outputting a subset of

2 This corresponds to Step 1 of the 2019 Revised 101 Guidance which
requires determining whether “the claim is to a statutory category.” Id. at 53.
See also sentence bridging pages 53 and 54 (“consider[–] whether the
claimed subject matter falls within the four statutory categories of patentable
subject matter identified by 35 U.S.C. 101.”).
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applicant profiles that satisfy a quantified applicant attribute
criterion. These steps describe the concept of organizing human
activities, which corresponds to concepts identified as abstract
ideas by the courts … .
Final Act. 5.
Appellant argues that the claims are not directed to an abstract idea
but rather “on an improvement in the art (e.g., college admissions).” Appeal
Br. 10.
Accordingly, there is a dispute over whether claim 23 is directed to an
abstract idea. Specifically, is claim 23 directed to steps that describe a
concept of organizing human activities (Final Act. 5) or an improvement in
the art?
Claim Construction3

3 “[T]he important inquiry for a § 101 analysis is to look to the claim.”
Accenture Glob. Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336,
1345 (Fed. Cir. 2013). “In Bancorp Servs., L.L.C. v. Sun Life Assurance Co.
of Can., 687 F.3d 1266, 1273 (Fed. Cir. 2012), the court observed that
‘claim construction is not an inviolable prerequisite to a validity
determination under § 101.’ However, the threshold of § 101 must be
crossed; an event often dependent on the scope and meaning of the claims.”
Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1347–48
(Fed. Cir. 2015).

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We consider the claim as a whole4 giving it the broadest reasonable
construction5 as one of ordinary skill in the art would have interpreted it in
light of the Specification6 at the time of filing.
Claim 23 sets a scheme for facilitating the selection of applicant
profiles satisfying a “quantified creative intelligence [‘CQ’] criterion.” The
steps are
1. “receiving” A “by an applicant”;
2. “publishing” A “to a plurality of users other than the
applicant”;
3. “receiving” B “from the plurality of users other than the
applicant”;
4. “quantifying” C “of the applicant using” B;
5. “storing” C “of the applicant as” D “in an applicant
database”;
6. “repeating steps (b), (c), (d), (e), and (f) at least one time,
thereby storing” E “in the applicant database”; and,
7. “receiving” F “including” G; and,
8. “outputting” H;

4 “In determining the eligibility of respondents’ claimed process for patent
protection under § 101, their claims must be considered as a whole.”
Diamond v. Diehr, 450 U.S. 175, 188 (1981).

5 2019 Revised 101 Guidance, page 53, footnote 14 (“If a claim, under its
broadest reasonable interpretation . . . .”)

6 “First, it is always important to look at the actual language of the claims.
… Second, in considering the roles played by individual limitations, it is
important to read the claims ‘in light of the specification.’” Smart Sys.
Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1387 (Fed. Cir.
2017) (J. Linn, dissenting in part and concurring in part), citing Enfish, LLC
v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016), among others.

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where,
A is “a response … to an assessment question, wherein the
assessment question is written to require application of the
applicant's creative intelligence (CQ)”;
B is “feedback on the published response”;
C is “the CQ”;
D is “an applicant profile”;
E is “a plurality of applicant profiles”;
F is “a search query”;
G is “ a quantified CQ criterion”; and,
H is “a subset of [E], wherein the subset of [E] includes applicant
profiles satisfying [G].
Claim 23 is reasonably broadly construed as a scheme for facilitating
the selection of particular applicant profiles; that is, those which satisfy a
“quantified creative intelligence [‘CQ’] criterion.”
The Specification describes various limitations in application
processes, such as for colleges and universities. Paras. 2–22. For example,
Colleges have limited or no measurement methods to validate
whether a student is truly committed to attending their institution,
other than making an offer and awaiting the response. This is,
alas, at the end of the application process and often results in
colleges making offers to students who do not accept the offer,
or in colleges neglecting to make offers to qualified students who
are very interested in attending their institution. There is a need
to manage/gauge the true intent of applicants.
Id. at 22. The invention contemplates the consideration of “psychometric
attribute[s] other than an analytical intelligence (IQ) attribute [such as] …
creative intelligence (CQ) attribute, a practical intelligence (EQ) attribute,
or a personality attribute” in the assessment questions of the application
process. Id. at para 25. The assessment includes publishing the response to
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the application to parties other than the applicant and using the feedback to
place the applicant according to a desired criterion. Id. at para. 27. This
procedure facilitates the selection of certain applicants.
Given the method as claimed as reasonably broadly construed above
and in light of the Specification’s description of the invention, based on the
record before us, we reasonably broadly construe claim 23 as being directed
to a scheme for facilitating the selection of particular applicants.
The Abstract Idea7
Above, where we reproduce claim 23, we identify in italics the
limitations we believe recite an abstract idea. Based on our claim
construction analysis (above), we determine that the identified limitations
describe a scheme for facilitating the selection of particular applicants.
Facilitating the selection of particular applicants is a matter of
managing interactions between people which falls within the enumerated
“[c]ertain methods of organizing human activity” grouping of abstract ideas
set forth in the 2019 Revised 101 Guidance.8

7 This corresponds to Step 2A of the 2019 Revised 101 Guidance. Step 2A
determines “whether a claim is ‘directed to’ a judicial exception,” such as an
abstract idea. Step 2A is two prong inquiry.

8 This corresponds to Prong One [“Evaluate Whether the Claim Recites a
Judicial Exception”] (b) of Step 2A of the 2019 Revised 101 Guidance. “To
determine whether a claim recites an abstract idea in Prong One, examiners
are now to: . . . (b) determine whether the identified limitation(s) falls within
the subject matter groupings of abstract ideas enumerated in Section 1 of the
[2019 Revised 101 Guidance].” Id. at 54. This case implicates subject matter
grouping “(b)”:
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Improvement In the Functioning of a Computer9 (Appellant’s
Argument)
The Examiner’s characterization of what the claim is directed to set
forth in the Answer is similar to ours, albeit ours is at a lower level of
abstraction. “An abstract idea can generally be described at different levels
of abstraction.” Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir.
2016). Cf. Id. at 1241 (The Board’s “slight revision of its abstract idea
analysis does not impact the patentability analysis.”)

(b) Certain methods of organizing human activity—fundamental
economic principles or practices (including hedging, insurance,
mitigating risk); commercial or legal interactions (including
agreements in the form of contracts; legal obligations; advertising,
marketing or sales activities or behaviors; business relations);
managing personal behavior or relationships or interactions between
people (including social activities, teaching, and following rules or
instructions);
Id. at 52.

9 This corresponds to Prong Two [“If the Claim Recites a Judicial Exception,
Evaluate Whether the Judicial Exception Is Integrated Into a Practical
Application”] of Step 2A of the 2019 Revised 101 Guidance. “A claim that
integrates a judicial exception into a practical application will apply, rely on,
or use the judicial exception in a manner that imposes a meaningful limit on
the judicial exception, such that the claim is more than a drafting effort
designed to monopolize the judicial exception.” Id. at 54. One consideration,
implicated here, that is “indicative that an additional element (or
combination of elements) may have integrated the exception into a practical
application” (id., at 55) is if “[a]n additional element reflects an
improvement in the functioning of a computer, or an improvement to other
technology or technical field” (id. at 55).

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We have reviewed the record and are unpersuaded as to error in our or
the Examiner’s characterization of what claim 23 is directed to.
Appellant’s arguments are unpersuasive principally because they are
not commensurate in scope with what is claimed. Cf. In re Self, 671 F.2d
1344, 1348 (CCPA 1982) (“Many of appellant’s arguments fail from the
outset because, . . . they are not based on limitations appearing in the claims
. . . .”)
Appellant argues that “[j]ust as in McRO [McRO, Inc. v. Bandai
Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016)], the instant
claims require specific characteristics — specific types of user inputs (e.g.,
application of creative intelligence, feedback from users other than the
applicant) that result in specific types of outputs (e.g., the quantification of
creative intelligence through crowdsourcing).” Appeal Br. 10. See also
Reply Br. 4 (“The claims on appeal, however, address these challenges ‘by
offering, inter alia, objective quantifications of creative intelligence arrived
at through the application of crowdsourcing.’”) (quoting from the Bishop
Declaration).
Claim 23 makes no mention of quantifying creative intelligence
through crowdsourcing. The claim calls for the use of “feedback … from [a]
plurality of users other than the applicant” in “quantifying the CQ of the
applicant.” It is not limited to crowdsourcing. Crowdsourcing is “the
practice of obtaining needed services, ideas, or content by soliciting
contributions from a large group of people and especially from the online
community rather than from traditional employees or suppliers”
(https://www.merriam-webster.com/dictionary/crowdsourcing; accessed Jan.
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17, 2020). The claim reasonably broadly covers feedback from any plurality
of users, such as two persons related to the applicant.
Appellant argues that the claim provides a specific method that
improves “the art (e.g., of college admissions).” Appeal Br. 10. However,
there is no mention of college admissions in the claim.
Appellant directs our attention to paras. 12–15 of the May 31, 2018
Declaration of Mr. Don Bishop which are said to “explain[ that] the present
invention addresses the problem of assessing creative intelligence as part of
the college admissions process.” Appeal Br. 10. Setting aside claim 23 is not
directed to a college admissions process, the relevance of what Mr. Bishop
says in paras. 12–15 of the Declaration to the question of whether claim 23
is directed to an abstract idea is unclear to us. It is true that Mr. Bishop
states, for example, that
Indeed, those of ordinary skill in the art recognize the difficulties
associated with assessing creative intelligence. As a result,
despite the value of creative intelligence as a predictor of future
success, many educational institutions do not consider creative
intelligence as part of their admissions process, and may indeed
punish creativity in the admissions.
Para. 14 of the Bishop Declaration. There may be a value to creative
intelligence and it may be desirable to consider it in the college admissions
process, as Mr. Bishop testifies. But the question is what claim 23 is directed
to and whether that which the claim is directed to is an abstract idea. The
Bishop Declaration does not address that question.
In citing McRO, Appellant may be intending to make the argument
that claim 23 “is directed to a patentable, technological improvement over
the existing” art. Id at 837. F.3d 1317.
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In that regard, we have carefully reviewed the claim. Per our previous
claim construction analysis, claim 23 is reasonably broadly construed as
covering a scheme for facilitating the selection of particular applicants. We
see no specific asserted technological improvement recited in the claim. Nor
does the Specification discuss any in the context of a method as broadly as
claim 23 currently presents it. Rather than being directed to any asserted
improvement in technology over the art, the claim and specification support
the opposite view – that the claimed subject matter is directed to a scheme
for facilitating selection of applicants.
Claim 23 mentions a “user interface,” “server device,” and a
“database” but the claim does not otherwise provide any structural details10
that would distinguish them from what was well known at the time the
application was filed. See, e.g., Spec., para. 49 (“general purpose
computers”).
With respect to the “receiving,” “publishing”, “quantifying”,
“storing,” “repeating,” and “outputting” steps, the Specification attributes no
special meaning to any of these operations, individually or in the
combination as claimed. In our view, consistent with the Specification, these
are common computer processing functions that one of ordinary skill in the
art at the time of the invention would have known generic computers were
capable of performing and would have associated with generic computers.

10 Cf. Move, Inc. v. Real Estate Alliance Ltd., 721 F. App’x. 950, 954 (Fed.
Cir. 2018) (Non-precedential). “Claim 1 is aspirational in nature and devoid
of any implementation details or technical description that would permit us
to conclude that the claim as a whole is directed to something other than the
abstract idea identified by the district court.”
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Cf. OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir.
2015):
Beyond the abstract idea of offer-based price optimization, the claims
merely recite “well-understood, routine conventional activit[ies],”
either by requiring conventional computer activities or routine data-
gathering steps. Alice, 134 S. Ct. at 2359 (quoting Mayo, 132 S.Ct. at
1294) (alterations in original). . . . For example, claim 1 recites
“sending a first set of electronic messages over a network to devices,”
the devices being “programmed to communicate,” storing test results
in a “machine-readable medium,” and “using a computerized system
... to automatically determine” an estimated outcome and setting a
price. Just as in Alice, “all of these computer functions are ‘well-
understood, routine, conventional activit[ies]’ previously known to the
industry.” Alice, 134 S.Ct. at 2359 (quoting Mayo, 132 S.Ct. at 1294)
(alterations in original); see also buySAFE[, Inc. v. Google, Inc.], 765
F.3d [1350,] 1355 [(Fed. Cir. 2014)] (“That a computer receives and
sends the information over a network—with no further specification—
is not even arguably inventive.”).
At best, the “user interface,” “server device,” and a “database”
distinguish over other generic devices known at the time the application was
filed in the type of electronic information being processed – that is, for
example, the “database” of claim 23 contains “the quantified CQ of the
applicant as an applicant profile.” But that is not alone a patentably
consequential distinction. This is so because “[c]laim limitations directed to
the content of information and lacking a requisite functional relationship are
not entitled to patentable weight because such information is not patent
eligible subject matter under 35 U.S.C. § 101.” Praxair Distribution, Inc. v.
Mallinckrodt Hosp. Prods. IP Ltd., 890 F.3d 1024, 1032 (Fed. Cir. 2018).
For these reasons, we do not find that claim 23 is directed to a
technological improvement over the existing art.
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Accordingly, within the meaning of the 2019 Revised 101 Guidance,
we find there is no integration of the abstract idea into a practical
application.
We note the discussion in the Reply Brief (pages 4–5) on this question
of whether there is in claim 23 an integration of the abstract idea into a
practical application. The discussion does not adequately explain in what
way claim 23 integrates the abstract idea (i.e., facilitating selection of
applicants) into a practical application. Relying on the Bishop Declaration,
Appellant makes a case for the value of including information about an
applicant’s creative intelligence in an admissions process. But Appellant
does not adequately explain how that meaningfully limits the abstract idea,
i.e., facilitating the selection of particular applicants.
According to the Guidance, “[a] claim that integrates a judicial
exception into a practical application will apply, rely on, or use the judicial
exception in a manner that imposes a meaningful limit on the judicial
exception, such that the claim is more than a drafting effort designed to
monopolize the judicial exception.” 2019 Revised 101 Guidance 53
(emphasis added). Adding consideration of creative intelligence into an
admissions process may be an improvement over what was done before but
it is not a technical improvement. The record evidence weighs in favor of the
view that the claim’s focus is on nontechnical improvements, such as
identifying applicants with certain levels of creative intelligence. Cf. Trading
Tech. Int’l, Inc. v. IBG LLC, 921 F.3d 1378, 1384 (Fed. Cir. 2019) (“The
claims are focused on providing information to traders in a way that helps
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them process information more quickly, ‘556 patent at 2:26–39, not on
improving computers or technology.”)
We have considered Appellant’s other arguments challenging the
Examiner’s determination under step one of the Alice framework and find
them unpersuasive. For the foregoing reasons, the record supports the
Examiner’s determination that claim 23 is directed to an abstract idea.
Alice step two – Does the Claim Provide an Inventive Concept?11
Step two is “a search for an ‘inventive concept’—i.e., an element or
combination of elements that is ‘sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [ineligible
concept] itself.’” Alice, 573 U.S. at 217–18 (quoting Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 73 (2012)).
In that regard, the Examiner determined that “[t]he claim does not
include additional elements that are sufficient to amount to significantly
more than the judicial exception because the additional elements when
considered both individually and as an ordered combination do not amount
to significantly more than the abstract idea.” Final Act. 5–6. We agree.
We addressed the matter of whether there were any purported specific
technological improvements in our analysis above under step one of the
Alice framework. This is consistent with the case law. See Ancora Techs.,

11 This corresponds to Step 2B of the 2019 Revised 101 Guidance 56:

[I]f a claim has been determined to be directed to a judicial exception
under revised Step 2A, examiners should then evaluate the additional
elements individually and in combination under Step 2B to determine
whether they provide an inventive concept (i.e., whether the additional
elements amount to significantly more than the exception itself).
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Inc. v. HTC Am., Inc., 908 F.3d 1343, 1347 (Fed. Cir. 2018) (“We have
several times held claims to pass muster under Alice step one when
sufficiently focused on such improvements.”) Such an argument can also
challenge a determination under step two of the Alice framework. See
buySAFE, 765 F.3d at 1354–55. “[R]ecent Federal Circuit jurisprudence has
indicated that eligible subject matter can often be identified either at the first
or the second step of the Alice/Mayo [framework].” 2019 Revised 101
Guidance at 53; see also id. n.17.
Be that as it may, we are unpersuaded that claim 23 presents an
element or combination of elements indicative of a specific asserted
improvement in computer capabilities, thereby rendering the claimed subject
matter sufficient to ensure that the patent in practice amounts to significantly
more than a patent upon a scheme for facilitating a credit decision
employing a “user interface,” “server device,” and a “database”.
We have reviewed the Specification and, as explained above, we can
find no suggestion of any technical improvements as a result of performing
the steps as broadly as they are recited.
We cited the Specification in our earlier discussion. It is intrinsic
evidence that the claimed “user interface,” “server device,” and a “database”
as claimed are conventional. In doing so, we have followed “Changes in
Examination Procedure Pertaining to Subject Matter Eligibility, Recent
Subject Matter Eligibility Decision (Berkheimer v. HP Inc.[, 881 F.3d 1360
(Fed. Cir. 2018)],” USPTO Memorandum, Robert W. Bahr, Deputy
Commissioner For Patent Examination Policy, April 19, 2018 (the
“Berkheimer Memo”)).
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The court in Berkheimer held that “[t]he patent eligibility inquiry may
contain underlying issues of fact.” Berkheimer, 881 F.3d at 1365 (quoting
Mortgage Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314,
1325 (Fed. Cir. 2016) (“The § 101 inquiry ‘may contain underlying factual
issues.”’)). But the court also held that “[w]hen there is no genuine issue of
material fact regarding whether the claim element or claimed combination is
well-understood, routine, [and] conventional to a skilled artisan in the
relevant field, this issue can be decided on summary judgment as a matter of
law.” Id. at 1368 (emphasis added). This qualification has been subsequently
reiterated.
If there is a genuine dispute of material fact, Rule 56 requires
that summary judgment be denied. In Berkheimer, there was
such a genuine dispute for claims 4–7, but not for claims 1–3
and 9 . . . . [I]n accordance with Alice, we have repeatedly
recognized the absence of a genuine dispute as to eligibility for
the many claims that have been defended as involving an
inventive concept based merely on the idea of using existing
computers or the Internet to carry out conventional processes,
with no alteration of computer functionality.
Berkheimer v. HP Inc., 890 F.3d 1369, 1371–73 (Fed. Cir. 2018) (Order, On
Petition for rehearing en banc, May 31, 2018); see also Aatrix Software, Inc.
v. Green Shades Software, Inc., 890 F.3d 1354, 1368 (Fed. Cir. 2018) (“A
factual allegation or dispute should not automatically take the determination
out of the court’s hands; rather, there needs to be justification for why
additional evidence must be considered—the default being a legal
determination.”).
Here, the Specification indisputably shows the recited “user
interface,” “server device,” and a “database” individually and in the context
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as claimed were conventional at the time of filing. See e.g., para. 49.
Accordingly, there is adequate factual support for the well–
understood, routine, or conventional nature of the “user interface,” “server
device,” and a “database” as broadly recited in claim 23.
Appellant argues that
as discussed in the Bishop Declaration, the claims recite
methods and systems that gather and quantify what has
heretofore been considered subjective information (e.g., by using
crowdsourcing to quantify information that has heretofore been
subjective), leveraging this new data in unconventional fashion.
This recitation of a solution that did not previously exist limits
the scope of the claims in a manner sufficient to transform them
from an abstract idea writ large into a patent-eligible invention.
Appeal Br. 11. The argument is unpersuasive for the reasons already
discussed.
No other persuasive arguments having been presented, we conclude
that no error has been committed in the determination under Alice step two
that claim 23 does not include an element or combination of elements
circumscribing the patent-ineligible concept it is directed to so as to
transform the concept into an inventive application.
We have considered all of the Appellant’s arguments (including those
made in the Reply Brief) and find them unpersuasive.
Accordingly, because we are not persuaded as to error in the
determinations that representative claim 23, and claims 11, 12, 15, 21, 22,
and 24–27 which stand or fall with claim 23, are directed to an abstract idea
and do not present an “inventive concept,” we sustain the Examiner’s
conclusion that they are directed to patent-ineligible subject matter for being
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judicially-excepted from 35 U.S.C. § 101. Cf. LendingTree, LLC v. Zillow,
Inc., 656 F. App’x. 991, 997 (Fed. Cir. 2016) (“We have considered all of
LendingTree’s remaining arguments and have found them unpersuasive.
Accordingly, because the asserted claims of the patents in suit are directed to
an abstract idea and do not present an ‘inventive concept,’ we hold that they
are directed to ineligible subject matter under 35 U.S.C. § 101.”); see, e.g.,
OIP Techs., 788 F.3d at 1364; FairWarning IP, LLC v. Iatric Sys., Inc., 839
F.3d 1089, 1098 (Fed. Cir. 2016).

The rejection of claims 15, 21-23, 26 and 27 under 35 U.S.C. § 103(a) as
being unpatentable over Galimore, Tatsuoka, and Colliander.
We will sustain the rejection. Appellant’s only argument is that the
cited prior art does not disclose crowdsourcing. See e.g., Appeal Br. 12
(“Claim 23 recites, inter alia, a series of steps (e.g., steps (b), (c), (d), and
(e)) that utilize third party crowdsourced responses to an applicant's response
to an assessment question to quantify the applicant's creative intelligence
(CQ). Claim 27 contains similar recitations.”) As we have pointed out
above, the claims are not so limited. Accordingly, the argument cannot be
persuasive as to error in the rejection.
There being no other argument challenging the rejection, the rejection
is sustained.

The rejection of claims 24 and 25 under 35 U.S.C. § 103(a) as being
unpatentable over Galimore, Tatsuoka, Colliander, and Thompson.
The rejection of claims 11 and 12 under 35 U.S.C. § 103(a) as being
unpatentable over Galimore, Tatsuoka, Colliander, and Blaze.
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These rejections are sustained for the same reasons we sustained the
rejection of the independent claims from which they depend.
The rejection of claims 13, 14, 18, and 19 under 35 U.S.C. § 103(a) as being
unpatentable over Galimore, Tatsuoka, Colliander, and Hocking.
Claims 13 and 14 are indefinite for the reasons discussed below.
Accordingly, the rejection of claims 13 and 14 under 35 U.S.C. § 103(a)
must fall, pro forma, because they necessarily are based on speculative
assumptions as to the meaning of the claims. See In re Steele, 305 F.2d 859,
862–63 (CCPA 1962).
The rejection of claims 18 and 19 are sustained for the same reasons
we sustained the rejection of the independent claims from which they
depend.

NEW GROUND OF REJECTION
Claims 13 and 14 are rejected under 35 U.S.C. § 112(b) (AIA), as
being indefinite for failing to particularly point out and distinctly claim the
subject matter which Appellant regards as the invention. Claims 13 and 14
depend from claim 1 which has been cancelled.
DECISION SUMMARY
In summary:
Claims
Rejected
35
U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed New
Ground
11–15,
21–27
101 Eligibility 11, 12, 15,
21–27
13, 14
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15, 21–
23, 26, 27
103(a) Galimore,
Tatsuoka,
Colliander
15, 21–23,
26, 27

24, 25 103(a) Galimore,
Tatsuoka,
Colliander,
Thompson
24, 25
11, 12 103(a) Galimore,
Tatsuoka,
Colliander,
Blaze
11, 12
13, 14,
18, 19
103(a) Galimore,
Tatsuoka,
Colliander,
Hocking
18, 19 13, 14
112(b)
(AIA)
Indefiniteness 13, 14
Overall
Outcome
11, 12, 15,
21–27
13, 14 13, 14

NEW GROUND
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” 37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment
of the claims so rejected or new Evidence relating to the claims
so rejected, or both, and have the matter reconsidered by the
examiner, in which event the prosecution will be remanded to
the examiner. . . .
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(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. . . .

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED–IN–PART; 37 C.F.R. § 41.50(b)