14731141 - (D) (P.T.A.B. Aug. 7, 2020)

MiCasa Technologies LLC

Patent Trials and Appeals BoardAug 7, 2020

14731141 - (D) (P.T.A.B. Aug. 7, 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. 14/731,141 06/04/2015 Shubber ALI 3647.0040000 2224 26111 7590 08/07/2020 STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C. 1100 NEW YORK AVENUE, N.W. WASHINGTON, DC 20005 EXAMINER SPIELER, WILLIAM ART UNIT PAPER NUMBER 2159 NOTIFICATION DATE DELIVERY MODE 08/07/2020 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): e-office@sternekessler.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte SHUBBER ALI and JAMES SHEPPARD1 ________________ Appeal 2019-005659 Application 14/731,141 Technology Center 2100 ________________ Before ALLEN R. MacDONALD, BRADLEY W. BAUMEISTER, and MICHAEL J. STRAUSS, Administrative Patent Judges. BAUMEISTER, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s non- final rejection of claims 1–24. Appeal Br. 5.2 We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Pursuant to our discretionary authority under 37 C.F.R. § 41.50(b), we newly reject claim 7 under 35 U.S.C. § 101. 1 Appellant identifies Centriq Technology, Inc (formerly MiCasa Technologies LLC) as the real party in interest. Appeal Brief filed March 29, 2019 (“Appeal Br.”), 3. 2 Rather than repeat the Examiner’s positions and Appellant’s arguments in their entirety, we refer to the above mentioned Appeal Brief, as well as the following documents for their respective details: the Non-Final Action mailed May 1, 2018 (“Non-Final Act.”); the Examiner’s Answer mailed May 17, 2019 (“Ans.”); and the Reply Brief filed July 16, 2019 (“Reply Br.”). Appeal 2019-005659 Application 14/731,141 2 CLAIMED SUBJECT MATTER Appellant describes the present invention as follows: Disclosed herein are system, method, and computer program product embodiments for establishing communication channels related to assets. An embodiment enables users of home assets such as appliances to share content related to that asset through a centralized clearinghouse of asset content. Aggregated content reduces redundant searches across sources by many users looking for the same content. New data pathways from user to users, manufacturers, and various third parties are established through the connections created in relation to assets. Abstract. Independent claim 1 illustrates the appealed claims: 1. A system, comprising: an asset inventory database containing a first instance and a second instance of an asset definition, wherein the first instance and the second instance are data object instantiations of the asset definition, the first instance associated with a first account associated with a first property and the second instance associated with a second account, the first instance containing first asset content; an asset content database storing the first asset content and a reference from the asset definition to the first asset content; and an asset server configured to automatically provide a subset of the first asset content to the second account due to the second asset instance having a data object instantiation relationship with the asset definition and wherein to automatically provide the subset of the first asset content to the second account, the asset server is configured to: retrieve the first asset content from the asset content database based on the second asset instance being an instance of the asset definition; and associate the first asset content with the second asset instance. Appeal 2019-005659 Application 14/731,141 3 STATEMENT OF THE REJECTIONS Claims 1–24 stand rejected under 35 U.S.C. § 112(a) as failing to comply with the written description requirement. Non-Final Act. 7–8. Claims 1, 4, 5, 7, 10, 11, 13, 16, 17, and 19–24 stand rejected under 35 U.S.C. § 102(a)(1) as anticipated by Bodrozic (US 2010/0047082 A1; published Feb. 23, 2012). Non-Final Act. 9–13. Claims 2, 3, 6, 8, 9, 12, 14, 15, and 18 stand rejected under 35 U.S.C. § 103 as being unpatentable over Bodrozic and DeWolf (US 2002/0032626 A1; published Mar, 14, 2002). Non-Final Act. 13–17. The Examiner initially rejected the claims under 35 U.S.C. § 101 for being directed to a judicial exception to patent eligible subject matter without reciting significantly more and also rejected the claims under 35 U.S.C. § 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter that the inventor regards the invention. Non-Final Action 4–9. The Examiner subsequently withdrew these rejections in the Examiner’s Answer. Ans. 3. STANDARD OF REVIEW The Board conducts a limited de novo review of the appealed rejections for error based upon the issues identified by Appellant, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). Appeal 2019-005659 Application 14/731,141 4 35 U.S.C. § 112(A) I. The Examiner finds that claims 1–24 fail to comply with the written- description requirement because the claims contain subject matter that was not described in the Specification in such a way as to reasonably convey to one skill in the art that the inventor had possession of the claimed invention at the time the application was filed. Non-Final Act. 7–8. More specifically, the Examiner notes that each of independent claims 1, 7, and 13 recites, “the first instance and the second instance are data object instantiations of the asset definition” and “the second asset instance having a data object instantiation relationship with the asset definition. Id. at 8. The Examiner finds that the as-filed Specification does not mention instantiating data objects. Id. Appellant argues, “FIG. 3 depicts an asset definition for ‘Refrigerator A’ in the ‘Home Asset Content Database.’ FIG. 3 also display[s] data object instantiations of ‘Refrigerator A’ in the ‘Home Asset Inventory Database’ with multiple instances of the asset definition.” Appeal Br. 13–14. As a threshold matter, we agree with Appellant’s statement of the law: “[t]he subject matter of the claim need not be described literally (i.e., using the same terms or in haec verba) in order for the disclosure to satisfy the description requirement.” Reply Br. 2 (citing MPEP § 2163.02) (emphasis omitted). We, instead, must determine whether Appellant’s originally filed Specification indicates that persons of ordinary skill in the art would recognize that Appellant invented what is claimed. In re Gosteli, 872 F.2d 1008, 1020 (Fed. Cir. 1989). Appeal 2019-005659 Application 14/731,141 5 Our task, then, is to determine whether Appellant’s Specification indicates that Appellant invented instantiating data objects. Unfortunately, neither the Examiner nor Appellant proffer any definition for the claim term “data object” or any explanation of what it means to instantiate data objects. See generally Appeal Br. 13–15; Reply Br. 2–3; Non-Final Act. 8; Ans. 3. We, therefore, turn to extrinsic evidence. According to an on-line technical tutorial, A data object represents an entity—in a sales database, the objects may be customers, store items, and sales; in a medical database, the objects may be patients; in a university database, the objects may be students, professors, and courses. Data objects are typically described by attributes. Data objects can also be referred to as samples, examples, instances, data points, or objects. Han et al., Data Mining: Concepts and Techniques, 3ed. O’Reilly Online Learning (available at https://www.oreilly.com/library/view/data-mining- concepts/9780123814791/xhtml/ST0010_CHP002.html). Based on this broad definition of the term “data object,” we agree with Appellant, “[t]he Examiner has not met the initial burden of presenting by a preponderance of evidence why a person skilled in the art would not recognize in an applicant’s disclosure a description of the invention defined by the claims.” Reply Br. 2–3 (citing MPEP § 2163.04). II. The Examiner additionally determines that the originally filed Specification does not provide support for the independent claims’ recitation, “associating the first asset content with the second asset instance.” Non-Final Act. 8. The Examiner reasons that the relevant disclosure of the Specification does not recite an association step. Id. (citing Spec. ¶ 73). Appeal 2019-005659 Application 14/731,141 6 According to the Examiner, “the association already exists due to the two instances being instances of the same asset.” Id. The Examiner further explains, “[n]o explicit step of associating the asset content with the second asset instance is described. No new information linking the asset content to the second asset instance is generated. No explicit step of associating is described.” Ans. 3–4. Appellant argues that at least the following passage of the Specification provides adequate written-description support: User 2 902 is associated with an instance of the same asset that User 1 904 identified in step 912. In step 922 and 924, Home Asset Management Server 906 locates the instance of the asset in the Home Asset Inventory Database 908 associated with User 2 902. Next, in step 926, Home Asset Management Server 906 retrieves from Home Asset Content Database 910 content related to the asset, including the content provided by User 1 904 in step 912. Then the content is delivered to User 2 902 in step 928. Thus, the data path of content from User 1 904 to user 2 902 is complete. Any other user accessing an instance of the same asset will also receive any other content stored in Home Asset Content Database 910. Appeal Br. 15 (citing Spec. ¶ 73). Appellant’s arguments persuade us that the originally-filed Specification, including the cited passage and Figure 9, sufficiently discloses and depicts associating the asset content with the second asset instance, as claimed. For the reasons noted in subsections I and II, then, we reverse the rejection of claims 1–24 under 35 U.S.C. § 112(a). Appeal 2019-005659 Application 14/731,141 7 35 U.S.C. §§ 102 and 103 Determinations and Contentions The Examiner finds that Bodrozic discloses all of the limitations of independent claims 1, 7, and 13. Final Act. 4–7. Appellant argues that Bodrozic fails to recite at least “provid[ing] a subset of the first asset content to the second account due to the second asset instance having a data object instantiation relationship with the asset definition,” as recited in the independent claims. Appeal Br. 16. According to Appellant, “Bodrozic operates in a conventional manner, storing information and allowing users to manually search for the information and manually add a property checklist.” Id. at 17. Appellant argues, independent claims 1, 7, and 13 recite “automatically providing a subset of the first asset content to the second account due to the second asset instance having a data object instantiation relationship with the asset definition . . .” In this manner, the claims recite a specific communication pathway using an asset definition-based data architecture that differs from the manual searching and selecting features described in Bodrozic. Id. The Examiner acknowledges that in Bodrozic a second user with a septic tank (an asset) has to perform a search for a septic tank checklist (asset content). Bodrozic describes inventory item records for fixed inventory items. Bodrozic [0054]. A septic tank is a fixed inventory item, as it is fixed to the property and is usually sold with the property. Bodrozic [0074]. A first user creates a checklist for an instance of their septic tank (first asset instance), and shares it (first asset content). Bodrozic [0110]. A second user with a septic tank, therefore having a second asset instance of a septic tank due to the way that the fact that the user has a septic tank is stored in the system as a fixed inventory item, searches for a checklist to Appeal 2019-005659 Application 14/731,141 8 maintain the septic tank that they have, which [search result] is delivered to the second user due to them having a septic tank. “Having a septic tank” is represented by an inventory item, and the fact that it is a septic tank as opposed to, e.g., a furnace is because it “has a data object instantiation relationship” with the asset definition of “septic tank”, where “asset definition of septic tank” is nothing more than information that identifies the asset as being a septic tank as opposed to some other sort of asset. Ans. 4 (emphasis added). The Examiner reasons that this is all that claim 1 requires: Insofar as the reference teaches communicating this checklist for a first septic tank, represented by a first inventory item, to a second user having a second septic tank, represented by a second inventory item, where both the first septic tank and the second septic tank are identifiable as “septic tanks,” therefore having an instantiation relationship with something that defines them as septic tanks, a pathway for communicating the checklist exists, and Appellant is silent as to how this pathway differs from their “specific” pathway. Ans. 4. Analysis Contrary to the Examiner’s reasoning, claim 1 does not merely require that an instantiation relationship exist. Claim 1 more specifically requires “an asset server configured to automatically provide a subset of the first asset content to the second account.” Claim 1 (emphasis added). The Examiner acknowledges that Bodrozic does not provide the septic tank information to the second customer automatically, but that the second customer has to search for and request the information. Ans. 4. Furthermore, Bodrozic confirms that this functionality is performed manually. Bodrozic ¶¶ 110–11 (explaining that after a first customer publishes his property checklist, a second customer creates an account, Appeal 2019-005659 Application 14/731,141 9 “navigate[s] to the Community portion of the property asset system application, and search[es] for all the user authored property checklists that have been published to the community”). For these reasons, Appellant has persuaded us of error in the Examiner’s anticipation rejection of independent claim 1. We, therefore, reverse the Examiner’s anticipation rejection of that claim and of claim 4, 5, 7, 10, 11, 13, 16, 17, and 19–24, which either depend from claim 1 or otherwise recite similar limitations. With respect to the remaining, obviousness rejection of claims 2, 3, 6, 8, 9, 12, 14, 15, an 18, the Examiner does not rely on DeWolf to cure the deficiency of the anticipation rejection, noted above. See Non-Final Act. 12–14 (wherein the Examiner relies on DeWolf for teaching an automatic registration module); id. at 14–16 (relying on DeWolf for teaching the first account transfers the first asset instance to a third account); id. at 16–17 (relying on Bodrozic for teaching a manufacturer business intelligence module that provides business intelligence data to asset manufacturers). We. therefore, reverse the obviousness rejection of these claims for the reasons set forth above in relation to claim 1. 35 U.S.C. § 101 Pursuant to our discretionary authority under 37 C.F.R. § 41.50(b), we enter a new ground of rejection for claim 7 under 35 U.S.C. § 101 as being directed to a judicial exception to patent-eligible subject matter (an abstract idea) without reciting significantly more. Appeal 2019-005659 Application 14/731,141 10 The Claim Language Independent claim 7 is reproduced below with paragraph designators added for clarity and emphasis added to the claim language that recites an abstract idea: 7. A method of delivering content from a first asset account associated with a first property to a second asset account, the method comprising: [(a)] instantiating a first asset instance and a second asset instance in an asset inventory database corresponding to an asset definition in an asset content database, wherein the first asset instance and the second asset instance are data object instantiations of the asset definition, the first asset instance associated with the first asset account and the second asset instance associated with the second asset account; [(b)] storing first asset content from the first asset account in the first asset instance in the asset inventory database; [(c)] storing the first asset content in the asset content database; [(d)] generating a reference from the asset definition to the first asset content; and [(e)] automatically providing the first asset content to the second asset account by an asset server due to the second asset instance having a data object instantiation relationship with the asset definition and wherein automatically providing the first asset content to the second asset account comprises: retrieving the first asset content from the asset content database based on the second asset instance being an instance of the asset definition; and associating the first asset content with the second asset instance. Appeal 2019-005659 Application 14/731,141 11 Principles of Law A. SECTION 101: Inventions for a “new and useful process, machine, manufacture, or composition of matter” generally constitute patent-eligible subject matter. 35 U.S.C. § 101. However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit exceptions: “[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). In determining whether a claim falls within an excluded category, we are guided by the Court’s two-step framework, described in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012), and Alice. Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S. at 75– 77). In accordance with that framework, we first determine what concept the claim is “directed to.” See Alice, 573 U.S. at 219 (“On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept of hedging, or protecting against risk.”). Concepts determined to be abstract ideas, and thus patent ineligible, include certain methods of organizing human activity, such as fundamental economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191 Appeal 2019-005659 Application 14/731,141 12 (1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). In Diehr, the claim at issue recited a mathematical formula, but the Court held that “a claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as nothing more than a process for molding rubber products and not as an attempt to patent a mathematical formula.”). Having said that, the Court also indicated that a claim “seeking patent protection for that formula in the abstract . . . is not accorded the protection of our patent laws, and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment.” Id. at 191 (citing Benson and Flook); see also, e.g., id. at 187 (“It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.”). If the claim is “directed to” an abstract idea, we turn to the second step of the Alice and Mayo framework, where “we must examine the elements of the claim to determine whether it contains an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent- eligible application.” Alice, 573 U.S. at 221 (internal quotation marks omitted). “A claim that recites an abstract idea must include ‘additional features’ to ensure ‘that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo, Appeal 2019-005659 Application 14/731,141 13 566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[] fail[s] to transform that abstract idea into a patent-eligible invention.” Id. B. USPTO SECTION 101 GUIDANCE: In January 2019, the U.S. Patent and Trademark Office (“USPTO”) published revised guidance on the application of 35 U.S.C. § 101. See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019 Guidance”), updated by USPTO, October 2019 Update: Subject Matter Eligibility (available at https://www.uspto.gov/sites/ default/files/documents/peg_oct_2019_update.pdf) (“October 2019 Guidance Update”); see also October 2019 Patent Eligibility Guidance Update, 84 Fed. Reg. 55942 (Oct. 18, 2019) (notifying the public of the availability of the October 2019 Guidance Update). “All USPTO personnel are, as a matter of internal agency management, expected to follow the guidance.” 2019 Guidance, 84 Fed. Reg. at 51; see also October 2019 Guidance Update at 1. Under the 2019 Guidance, we first look to whether the claim recites the following: (1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activities such as a fundamental economic practice, or mental processes); and (2) additional elements that integrate the judicial exception into a practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h)). 2019 Guidance, 84 Fed. Reg. at 52–55. Appeal 2019-005659 Application 14/731,141 14 Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look to whether the claim: (3) adds a specific limitation beyond the judicial exception that is not “well-understood, routine, [and] 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. 2019 Guidance, 84 Fed. Reg. at 56. Analysis STEP 2A, PRONG 1: Under step 2A, prong 1, of the 2019 Guidance, we first look to whether the claim recites any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activities such as a fundamental economic practice, or mental processes). 2019 Guidance, 84 Fed. Reg. at 52–54. Limitation (a) recites, instantiating a first asset instance and a second asset instance in an asset inventory database corresponding to an asset definition in an asset content database, wherein the first asset instance and the second asset instance are data object instantiations of the asset definition, the first asset instance associated with the first asset account and the second asset instance associated with the second asset account. Appeal Br. 21. Appellant’s Specification defines an instance of an asset as “a representation of an asset.” Spec. ¶ 18. Instantiating first and second Appeal 2019-005659 Application 14/731,141 15 instances in an asset inventory database, then, entails creating representations of the data in a database. Spec. ¶ 29. Creating representations of data constitutes a mental process, such as an observation, evaluation, judgment, or opinion that can be performed in the human mind. Prior to the Examiner withdrawing the rejection under section 101, Appellant argued that the PTAB has already interpreted the 2019 Guidance to hold that collecting usage information is not a mental process or an abstract idea. Appeal Br. 12 (citing Ex Parte Fanaru, Appeal 2017-002898, at 8 (PTAB Jan. 22, 2019)). This argument is unpersuasive. First, as Ex Parte Fanaru is not designated as a precedential Board opinion, that opinion is not binding on the present Panel. Second, regardless of how the PTAB may have interpreted the claim language of Fanaru, for the reasons set forth above, limitation (a) here merely recites gathering representations of data. As such, limitation (a) does recite a mental process. The 2019 Guidance recognizes mental processes, including observations, evaluations, judgments, and opinions, as constituting a patent- ineligible abstract idea. 2019 Guidance, 84 Fed. Reg. at 52. Accordingly, limitation (a) recites a patent-ineligible abstract idea. Limitations (b) and (c) of claim 7 recite two data storing steps: (b) storing first asset content from the first asset account in the first asset instance in the asset inventory database; (c) storing the first asset content in the asset content database. Appellant defines a “database” broadly as “any method of storing data, including persistent relational data stores, persistent document stores, or any kind of non-persistent data store in memory.” Limitations (b) and (c), then, read on manually entering records into a ledger with paper and pencil. Appeal 2019-005659 Application 14/731,141 16 As such, storing data in a database constitutes a mental process, such as an evaluation, judgment, or opinion that can be performed in the human mind, potentially with the aid of pencil and paper. The 2019 Guidance also recognizes human activities that are aided by pencil and paper as constituting mental processes. October 2019 Guidance Update at 9 (“A claim that encompasses a human performing the step(s) mentally with the aid of a pen and paper recites a mental process”) (emphasis omitted). Accordingly, limitations (b) and (c) recite a patent- ineligible abstract idea. Limitation (d) of claim 7 recites “generating a reference from the asset definition to the first asset content.” Generating a reference from the asset definition to the asset content entails making an association between the definition and the content. Making such a reference or association constitutes a mental observation, evaluation, judgment, or opinion. Accordingly, limitation (d) recites a patent-ineligible abstract idea. Limitation (e) of claim 7 recites, inter alia, . . . providing the first asset content to the second asset account . . . due to the second asset instance having a data object instantiation relationship with the asset definition and wherein . . . providing the first asset content to the second asset account comprises: retrieving the first asset content from the asset content database based on the second asset instance being an instance of the asset definition; and associating the first asset content with the second asset instance. Retrieving content (or information) and providing the content to a second account constitutes updating records of a database. For the reasons Appeal 2019-005659 Application 14/731,141 17 set forth above, recordkeeping constitutes a mental process that can be performed in the human mind or with the aid of pencil and paper. Accordingly, limitation (e) recites a patent-ineligible abstract idea. STEP 2A, PRONG 2: Under step 2A, prong 2, of the 2019 Guidance, we next analyze whether claim 7 recites additional elements that individually or in combination integrate the judicial exception into a practical application. 2019 Guidance, 84 Fed. Reg. at 53–55. The 2019 Guidance identifies considerations indicative of whether an additional element or combination of elements integrate the judicial exception into a practical application, such as an additional element reflecting an improvement in the functioning of a computer or an improvement to other technology or technical field. Id. at 55; MPEP § 2106.05(a). The analysis under prong 1, above, indicates that virtually all of claim 7’s language recites abstract ideas. The only language of claim 7 that recites an additional element is limitation (e)’s recitation that it is an asset server that provides the first asset content to the second asset account, and that the asset server does so automatically. However, this language does not recite an improvement to server technology or any other computer technology. The language merely recites a generic server that is being used to perform a mental process automatically—or more efficiently. See Alice, 573 U.S. at 226 (determining that the claim limitations “data processing system,” “communications controller,” and “data storage unit” were generic computer components that amounted to mere instructions to implement the abstract idea on a computer); October 2019 Guidance Update at 11–12 (recitation of generic computer limitations for Appeal 2019-005659 Application 14/731,141 18 implementing the abstract idea “would not be sufficient to demonstrate integration of a judicial exception into a practical application”). Furthermore, even if we were to interpret claim 7 as inherently or implicitly requiring all of the recited databases to be computer databases, this interpretation would not affect our conclusion that claim 7’s additional elements fails to integrate the abstract ideas into a practical application. Even if performed by a computer, limitation (a)’s step of instantiating instances of assets in databases merely constitutes extra-solution data gathering. 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, which 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). Limitation (b) and (c)’s recitations of storing asset content, at best, constitutes insignificant intermediary steps between gathering data and transmitting data, all of which steps courts have held constitute insignificant extra-solution activity. See, e.g., FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1097–98 (Fed. Cir. 2016). As such, even if we consider limitations (b) and (c) as reciting an additional element under prong 2 rather than as being part of the abstract idea under prong 1, limitations (b) and (c) are directed to the insignificant extra-solution activity of storing data. As such, they do not integrate the abstract ideas into a practical application. Likewise, even if we interpret limitation (d) as requiring a computer to be used to generate the reference from the asset definition to the first asset content, that interpretation would not be a basis to determine that claim 7 Appeal 2019-005659 Application 14/731,141 19 integrates the abstract ideas into a practical application. The step of generating a reference constitutes performing an analysis. And as such, claim 7, viewed as a whole, at best, entails a computer gathering data through unspecified means, storing data through unspecified means, performing an analysis—or “generating a reference”—through unspecified means, and providing content by the generic means of retrieving content and associating the content with the second asset instance. Previous cases have similarly found that such activities are conventional computer activities or routine data-gathering steps. See, e.g. Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016) (“Nothing in the claims, understood in light of the specification, requires anything other than off-the-shelf, conventional computer, network, and display technology for gathering, sending, and presenting the desired information.”); OIP Techs. v. Amazon.com, Inc., 788 F.3d 1359, 1363, (Fed. Cir. 2015) (claims reciting, inter alia, sending messages over a network, gathering statistics, using a computerized system to automatically determine an estimated outcome, and presenting offers to potential customers found to merely recite “well-understood, routine conventional activities” by either requiring conventional computer activities or routine data-gathering steps); 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.”); Bancorp Servs. v. Sun Life Assurance Co., of Can. (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012) (“The computer required by some of Bancorp’s claims is employed only for its most basic function, the performance of repetitive Appeal 2019-005659 Application 14/731,141 20 calculations, and as such does not impose meaningful limits on the scope of those claims.”). In response to the non-final rejection, Appellant argued that the claims recite an improved user interface as evidenced by the fact that the “specific manner of automatically providing information from a first account to a second account differs from any prior art.” Appeal Br. 11. This argument is unpersuasive because “[t]he ‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.” Diamond v. Diehr, 450 U.S. 175, 188–89 (1981). A novel and nonobvious claim directed to a purely abstract idea is, nonetheless, patent ineligible. See Mayo, 566 U.S. at 90. For these reasons, we determine that claim 7 is not directed to an improvement in the function of a computer or to any other technology or technical field. MPEP § 2106.05(a). Nor is claim 7 directed to a particular machine or transformation. Nor does that claim add any other meaningful limitations for the purposes of the analysis under Section 101. MPEP §§ 2106.05(b), (c), (e). Accordingly, we determine that claim 7 does not integrate the recited abstract ideas into a practical application within the meaning of the 2019 Guidance. See 2019 Guidance, 84 Fed. Reg. at 52–55. STEP 2B: Under step 2B of the 2019 Guidance, we next analyze whether claim 7 adds any specific limitations beyond the judicial exception that, either alone or as an ordered combination, amount to more than “well- understood, routine, conventional” activity in the field. 2019 Guidance, 84 Fed. Reg. at 56; MPEP § 2106.05(d). Appeal 2019-005659 Application 14/731,141 21 Appellant’s Specification, by describing computer-related components at a high level without details of structure or implementation, indicates that the recited additional elements—the asset server, the databases, and the associated computers and networks—are well understood, routine and conventional: Home asset management server 104 contains one or more computing systems. Home asset management server 104 is the primary server platform for the home asset management system, although any aspect of computation or storage may takes place within databases 101–103, client devices 106–108, or any other ancillary computing devices. Home asset management server is connected to client devices 106–108 through a network 105 such as the internet. Network 105 may be any type of network capable of transmitting information either wired or wireless. Client devices 106–108 may be any type of computing platform, such as but not limited to a smartphone, a tablet computer, a laptop computer, a desktop computer, a web browser, or any other computing platform. Users may interact with client devices 106– 108 to access the home asset management system. Spec. ¶ 17; see also, e.g., Spec. ¶ 16 (“Database as used herein refers to any method of storing data, including persistent relational data stores, persistent document stores, or any kind of non-persistent data store in memory.”). Furthermore, Appellant’s Specification does not indicate that consideration of these conventional elements as an ordered combination adds any significance beyond the additional elements, as considered individually. Rather, Appellant’s Specification indicates that the invention is directed to an abstract idea that is made more efficient with generic computer components—sharing information relating to home assets among users and owners of home assets. Spec. ¶¶ 2–3. For these reasons, we determine that claim 7 does not recite additional elements that, either individually or as an ordered combination, amount to Appeal 2019-005659 Application 14/731,141 22 significantly more than the judicial exception within the meaning of the 2019 Guidance. 2019 Guidance, 84 Fed. Reg. at 52–55; MPEP § 2106.05(d). Conclusion Accordingly, we exercise our discretionary authority under 37 C.F.R. § 41.50(b) and newly reject independent claim 7 under 35 U.S.C. § 101 as being directed to an exception to patent-eligible subject matter without reciting significantly more. Although we decline to reject claims 1–6 or 8–24 under 37 C.F.R. § 41.50(b), we emphasize that our decision does not mean that the remaining claims are necessarily patentable. Rather, we merely leave the patentability determination of these claims to the Examiner. See MPEP § 1213.02. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Basis Affirmed Reversed New Ground 1–24 112(a) Written Description 1–24 1, 4, 5, 7, 10, 11, 13, 16, 17, 19–24 102 Bodrozic 1, 4, 5, 7, 10, 11, 13, 16, 17, 19–24 2, 3, 6, 8, 9, 12, 14, 15, and 18 103 Bodrozic, DeWolf 2, 3, 6, 8, 9, 12, 14, 15, and 18 7 101 Patent Eligibility 7 Overall Outcome 1–24 7 Appeal 2019-005659 Application 14/731,141 23 FINALITY AND RESPONSE This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). Rule 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.” Rule 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. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . REVERSE 37 C.F.R. § 41.50(b)