Microsoft Corporation

Patent Trials and Appeals Board

Sep 1, 2020

2020000469 (P.T.A.B. Sep. 1, 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.
14/162,731 01/23/2014 Scott Fynn 13768.3970 2288
47973 7590 09/01/2020
WORKMAN NYDEGGER/MICROSOFT
60 EAST SOUTH TEMPLE
SUITE 1000
SALT LAKE CITY, UT 84111
EXAMINER
SIDDIQI, EMAD H
ART UNIT PAPER NUMBER
2458
NOTIFICATION DATE DELIVERY MODE
09/01/2020 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@wnlaw.com
usdocket@microsoft.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SCOTT FYNN, ROBERT HOWARD and
BLAISE H. AGUERA Y ARCAS
___________

Appeal 2020-000469
Application 14/162,731
Technology Center 2400
____________

Before CARL W. WHITEHEAD JR., BRADLEY W. BAUMEISTER and
JEREMY J. CURCURI, Administrative Patent Judges.

WHITEHEAD JR., Administrative Patent Judge.

DECISION ON APPEALSTATEMENT OF THE CASE1
Appellant2 is appealing the final rejection of claims 1–20 under
35 U.S.C. § 134(a). Appeal Brief 1. Claims 1, 8 and 15 are independent.
We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.

1 Rather than reiterate Appellant’s arguments and the Examiner’s
determinations, we refer to the Appeal Brief (filed March 8, 2019), the
Reply Brief (filed October 23, 2019), the Final Action (mailed September 4,
2018) and the Answer (mailed August 23, 2019), for the respective details.

2 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies Microsoft Technology Licensing, LLC.,
which is related to Microsoft Corporation, as the real party in interest.
Appeal Brief 2.
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Introduction
According to Appellant, the invention is directed to customizing a
user’s experience “by associating activities with a badge, and allowing the
activities to be initiated for the user.” Specification ¶ 2.
Representative Claim3
Claim 1 is reproduced below for reference (bracketed step lettering
added):
1. A device storage medium that stores executable
instructions to initiate activities, the executable instructions,
when executed by a device, causing the device to perform acts
comprising:
[a] identifying a set of information related to the user, the
information being obtained from the user, from observing
behavioral patterns of the user, or both;
[b] based on the set of information, creating a badge
associated with the user, the badge describing an attribute or
behavioral pattern of the user;
[c] identifying a plurality of activities relevant to the
attribute or behavioral pattern, the activities comprising
obtaining and displaying a type of information that is different
from any other type of information obtained by another activity
associated with the badge, the information obtained from one or
more sources external to the device;
[d] associating the plurality of activities with the badge;
[e] displaying, on the device, a user interface comprising
the badge along with a badge category;
[f] detecting a context of a user of said device;

3 For the § 101 rejection, Appellant argues claims 1–20 as a group, focusing
on subject matter common to independent claims 1, 8 and 16. See Appeal
Brief 15–17. We select independent claim 1 as the representative claim. See
37 C.F.R. § 41.37(c)(1)(iv).

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[g] responsive to detecting the context, choosing an
activity from the plurality of different activities based on said
context;
[h] initiating, on behalf of the user without user
intervention, said activity on said device; and
[i] displaying on the user device, information related to
the initiated activity in conjunction with the badge.

References
Name4 References Date
Deo US 2010/0076857 A1 March 25, 2010
Aguera y Arcas US 8,326,831 B1 December 4, 2012
Antin US 2013/0086484 A1 April 4, 2013

Rejections on Appeal
Claims 1–20 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to patent-ineligible subject matter. Final
Action 6–11.
Claims 1–20 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Aguera y Arcas, Antin and Deo. Final Action 12–19.
PRINCIPLES OF LAW
A. Section 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.
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. E.g., Alice Corp. v. CLS Bank Int’l, 573
U.S. 208, 216 (2014).

4 All reference citations are to the first named inventor only.

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In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-part framework, described in Mayo and Alice.
Alice at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 75–77 (2012)). 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
(1981)); “tanning, dyeing, making waterproof 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.”).
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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. (citation omitted) (citing Benson and Flook); see, 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 part
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 (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, 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 § 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (January 7, 2019)
(“2019 Revised Guidance”).5 “All USPTO personnel are, as a matter of

5 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (the “October
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internal agency management, expected to follow the guidance.” 2019
Revised Guidance at 51; see also October 2019 Update at 1.
Under the 2019 Revised Guidance and the October 2019 Update, 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) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th
ed. Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).6
2019 Revised Guidance 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 look, under
Step 2B, 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.
2019 Revised Guidance at 52–56.

2019 Update”) (available at https://www.uspto.gov/sites/default/files/
documents/peg_oct_2019_update.pdf).
6 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See 2019 Revised Guidance at 54–55.
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ANALYSIS
35 U.S.C. § 101 Rejection
The Examiner determines claims 1–20 are directed to a judicial
exception to patent-eligible subject matter under 35 U.S.C. § 101. Final
Action 6; see Alice, 573 U.S. at 217 (describing the two-step framework “for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts”).
We are not persuaded the Examiner’s rejection is in error. Unless
otherwise indicated, we adopt the Examiner’s findings and conclusions as
our own. We add the following primarily for emphasis and clarification
with respect to the 2019 Revised Guidance.

Step 2A—Prongs 1 and 2 identified in the 2019 Revised Guidance
Prong One
The Examiner determines in the Answer, after the publishing of the
2019 Revised Guidance, that the claims are directed to “a judicial exception,
an abstract idea, and more specifically a method of organizing human
activity.” Answer 4.
The Specification discloses in the Background:
It is possible to predict what sort of personalized
experience a user is likely to want, by inferring certain attributes
about the user. For example, if a user frequently “checks in” at
tapas restaurants, one can infer that the user is a tapas enthusiast.
If the user attends a Seattle Mariners game once a week in the
summer, it is possible to infer that the user is a Mariners fan.
Some systems that have obtained user permission to analyze a
user’s behavior may assign a “badge” to the user based on such
inferences, where the badge describes some attribute or
behavioral pattern of the user. However, systems that draw these
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inferences and that personalize an experience based on the
inferences run the risk of offending the user. Some users find it
intrusive, and are left with a sense that they are secretly being
“watched,” when the system customizes the experience form
them in a way that appears too accurate — particularly when the
users do not understand how the system determined to customize
the experience in a particular way.
Specification ¶ 2.
The Specification discloses in the Summary:
A user experience may be customized by associating
activities with a badge, and allowing the activities to be initiated
for the user. With a user’s permission, a system may gather
information about the user and may assign badges to the user
based on that behavior. The system may then initiate activities
based on the user’s badges. The user may be given the
opportunity to choose which activities to associate with the
badge, and may also be offered additional activities in exchange
for the user’s providing some information about himself or
herself. Moreover, different activities may be initiated based on
context — e.g., the same badge might cause one activity to be
initiated when the user is traveling with his smart phone, and may
cause a different activity to be initiated when the user is at home
using his tablet.
Specification ¶ 3 (emphasis added).
Claim 1’s preamble recites “executable instructions to initiate
activities.” Claim 1 further recites identifying information related to the user
wherein the information is either obtained from the user, from observing
behavioral patterns of the user, or both, in limitation [a]. Claim 1 further
recites creating a badge describing a user’s attribute or behavioral pattern
based upon the obtained information in limitation [b]. Claim 1 also recites
identifying activities obtained by different types of information and
associating the activities with the badge in limitations [c]–[d]. Claim 1
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recites choosing an activity from a plurality of different activities based upon
the user’s context in limitations [f]–[g].
These steps recite commercial or legal interactions (including
agreements in the form of contracts; legal obligations; advertising,
marketing or sales activities or behaviors; business relations). Thus, the
claim recites the abstract idea of “certain methods of organizing human
activity.” See 2019 Revised Guidance, Section I (Groupings of Abstract
Ideas).
Furthermore, our reviewing court has found claims to be directed to
abstract ideas when they recited similar subject matter. See Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed Cir. 2014) (holding that claim
“describ[ing] only the abstract idea of showing an advertisement before
delivering free content” is patent ineligible); see also buySAFE, Inc. v.
Google, Inc., 765 F.3d. 1350, 1355 (Fed. Cir. 2014) (holding that concept of
“creating a contractual relationship—a ‘transaction performance guaranty’”
is an abstract idea). Therefore, we conclude the claims recite an abstract
idea pursuant to Step 2A, Prong One, of the 2019 Revised Guidance. See
2019 Revised Guidance, Section III(A)(1) (Prong One: Evaluate Whether
the Claim Recites a Judicial Exception).
Prong Two
Under Prong Two of the 2019 Revised Guidance, we must determine
“whether the claim as a whole integrates the recited judicial exception
into a practical application of the exception.” 2019 Revised Guidance,
Section III(A)(2). We note that 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
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that the claim is more than a drafting effort designed to monopolize the
judicial exception.” 2019 Revised Guidance, Section III(A)(2).
Appellant contends7 the claimed invention “figures out what should
happen, monitors the context, and then automatically performs tasks on
behalf of the user when the context indicates that they should be performed”
and, therefore, “[t]here cannot be any question that the claims recite
improved utility of the device because it allows the device to automatically
perform tasks on behalf of the user that were not performed automatically
before.” Response 9 (emphasis added). Appellant concludes, “[t]his is the
very definition of improving the device or improving the technology of the
device. Thus, under McRO[8] the claims recite an improvement to
technology and are not directed to an abstract idea.” Response 9.
We do not find Appellant’s arguments persuasive of Examiner error.
Our ruling Court has held that the “mere automation of manual processes
using generic computers does not constitute a patentable improvement in
computer technology.” Credit Acceptance Corp. v. Westlake Services, 859
F.3d 1044, 1055 (Fed. Cir. 2017).
To be sure, in McRO, the Federal Circuit concluded the claim, when
considered as a whole, was directed to a “technological improvement over
the existing, manual 3-D animation techniques” through the “use [of] limited
rules . . . specifically designed to achieve an improved technological result in
conventional industry practice.” McRO, 837 F.3d at 1316. Specifically, the

7 “Appellant reasserts the arguments made in the REMARKS section of its
Request for Continued Examination, filed on April 9, 2018 [‘Section B
(pp. 7–14)’].” Appeal Brief 7.
8 McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, (Fed. Cir.
2016).
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Federal Circuit found the claimed rules allow computers to produce accurate
and realistic lip synchronization and facial expressions in animated
characters that previously could only be produced by human animators; and
the rules are limiting because they define morph weight sets as a function of
phoneme sub–sequences. McRO, 837 F.3d at 1313 (internal citations
omitted).
However, we find no evidence of record here that the present situation
is like the one in McRO where computers were previously unable to make
certain subjective determinations, i.e., regarding morph weight and phoneme
timings, which could only be made prior to the claimed invention by human
animators. See Response 9; Reply Brief 4; Specification ¶¶ 17, 18. The
Background section of the McRO ‘576 patent includes a description of the
admitted prior art method and the shortcomings associated with the prior
method. See McRO, 837 F.3d at 1303–06. There is no comparable
discussion in Appellant’s Specification or elsewhere of record.
In Core Wireless9, our reviewing court held that claims that recited an
interface were patent eligible because the claims recited specific limitations
of the interface such as (1) an application summary that can be reached
through a menu, (2) the data being in a list and being selectable to launch an
application, and (3) additional limitations directed to the actual user interface
displayed and how it functions. Core Wireless, 880 F.3d at 1363. The court
found that the claims were directed to an improved user interface and not the
abstract concept of an index, as the claim “limitations disclose a specific
manner of displaying a limited set of information to the user, rather than

9 Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc., 880 F.3d 1356
(Fed. Cir. 2018).
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using conventional user interface methods to display a generic index on a
computer.” Core Wireless, 880 F.3d at 1363; see also Trading Techs. Int’l,
Inc. v. CQG, Inc., 675 F. App’x 1001 (Fed. Cir. 2017) (holding that a user
interface with a prescribed functionality directly related to the interface’s
structure, that is addressed to and resolves a problem in the art, is patent
eligible.).
In the present case, though, merely using a device to receive
information related to a user is unlike patent-eligible claims directed to
particular technical ways of displaying data such as the claimed user
interface in Core Wireless. See 2019 Revised Guidance at 55; see also
Response 9, 10.
Accordingly, we find Appellant’s arguments unpersuasive. Claim 1
does not recite any improvement to the claimed devices. Instead, claim 1
only uses a device to receive and display information related to a user. See
Specification ¶¶ 17, 18. Additionally, we detect no additional element (or
combination of elements) recited in Appellant’s representative claim 1 that
integrates the judicial exception into a practical application. See 2019
Revised Guidance, Section III(A)(2). For example, Appellant’s claimed
additional elements (e.g., device storage medium, device, user’s device) do
not: (1) improve the functioning of a computer or other technology; (2) is
not applied with any particular machine (except for generic devices);
(3) does not effect a transformation of a particular article to a different state;
and (4) is not applied in any meaningful way beyond generally linking the
use of the judicial exception to a particular technological environment, such
that the claim as a whole is more than a drafting effort designed to
monopolize the exception. See MPEP §§ 2106.05(a)–(c), (e)–(h).
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We, therefore, determine claim 1 does not integrate the recited judicial
exception into a practical application. See 2019 Revised Guidance,
Section III(A)(2) (Prong Two: If the Claim Recites a Judicial Exception,
Evaluate Whether the Judicial Exception Is Integrated Into a Practical
Application).
Step 2B identified in the 2019 Revised Guidance
In Step 2B, we need to consider whether an additional or combination
of elements, “[a]dds a specific limitation or combination of limitations that
are not well-understood, routine, conventional activity in the field, which is
indicative that an inventive concept may be present” or “simply appends
well-understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception,
which is indicative that an inventive concept may not be present.”
2019 Revised Guidance at 56.
Appellant argues the Examiner has not made the proper showing that
the elements recited in the claims or the combination of elements recited in
the claims are “well-understood, routine and conventional to a skilled
artisan.” Response 11 (citing Berkheimer v. HP Inc., 881 F.3d 1360, (Fed.
Cir. 2018).
The 2019 Revised Guidance states, “In accordance with existing
guidance, an examiner’s conclusion that an additional element (or
combination of elements) is well understood, routine, conventional activity
must be supported with a factual determination. For more information
concerning evaluation of well-understood, routine, conventional activity, see
MPEP 2106.05(d), as modified by the USPTO Berkheimer Memorandum.”
2019 Revised Guidance, 84 Fed. Reg. 56 n.36 (Section III(B)) (emphasis
added).
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The Berkheimer Memorandum Section III(A) states when formulating
rejections, “[i]n a step 2B analysis, an additional element (or combination of
elements) is not well-understood, routine or conventional unless the
examiner finds, and expressly supports a rejection in writing.” Berkheimer
Memorandum at 3. The Berkheimer Memorandum provides four criteria for
the Examiner to utilize to provide support for the additional elements to be
considered to be well–understood, routine or conventional.10
In the present case, the Examiner determines:
when taken individually[,] creating badges, associating activities
with the badges, displaying a user interface comprising the badge
and initiating an activity on the device fails to recite an inventive
concept in any non-conventional or non-generic arrangement and
does not transform the claimed invention into something
significantly more than the abstract idea itself.
Final Action 10 (emphasis added); see Specification ¶¶ 29–32.
We do not find Appellant’s argument persuasive because, in
determining if the additional elements (or combination of additional
elements) represent well-understood, routine, conventional activity, the
Examiner supported the determination based upon a factual determination,

10 Berkheimer Memorandum at 3–4 (Section III(A)). (“1. A citation to an
express statement in the specification or to a statement made by an applicant
during prosecution that demonstrates the well-understood, routine,
conventional nature of the additional element(s) . . . . 2. A citation to one or
more of the court decisions discussed in MPEP § 2106.05(d)(II) as noting
the well-understood, routine, conventional nature of the additional
element(s). . . . 3. A citation to a publication that demonstrates the well-
understood, routine, conventional nature of the additional element(s) . . . .
4. A statement that the examiner is taking official notice of the well-
understood, routine, conventional nature of the additional element(s).”).

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supported by evidence drawn from the record, as specified in the Berkheimer
Memorandum. See Berkheimer Memorandum at 3–4 (Section III(A)(1).
In Bascom, our reviewing court found that while the claims of the
patent were directed to an abstract idea, the patentee alleged an “inventive
concept can be found in the ordered combination of the claim limitations
that transform the abstract idea of filtering content into a particular, practical
application of that abstract idea.” Bascom Global Internet Services, Inc., v.
AT&T Mobility LLC, 827 F.3d 1341, 1352 (Fed. Cir. 2016). In particular,
the patent in Bascom claimed “a technology-based solution (not an abstract-
idea-based solution implemented with generic technical components in a
conventional way) to filter content on the Internet that overcomes existing
problems with other Internet filtering systems.” Bascom at 1351.
Claim 1 is distinguishable, as it recites an abstract-idea-based
solution, that is, a method of providing personalized advertisement (a set of
information related to the user) implemented with a generic technical
component (e.g., device), in a conventional way. See generally
Specification. Therefore, we are not persuaded that ordered combination of
limitations in representative claim 1 provides an inventive concept, and we
determine the claims simply append a well-understood, routine and
conventional activity to the judicial exception. See 2019 Revised Guidance
at 56; see also Response 11.
Accordingly, we conclude claims 1–20 are directed to commercial or
legal interactions (including agreements in the form of contracts; legal
obligations; advertising, marketing or sales activities or behaviors; business
relations). As such, the claim recites the abstract idea of “certain methods of
organizing human activity” identified in the 2019 Revised Guidance; and
thus, an abstract idea with the claims failing to recite limitations that amount
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to significantly more than the abstract idea itself. We sustain the Examiner’s
§ 101 rejection of claims 1–20.
35 U.S.C. § 103 Rejection
Appellant argues the cited art fails to disclose or teach the ordered
sequence of claim 1’s recited method. See Appeal Brief 18. Appellant
further argues that claim 1’s limitations recite a badge that describes “an
attribute or behavioral of a user” and also recite “[a]ctivities that are relevant
to the attribute or behavioral pattern [ ] associated with a badge.” Appeal
Brief 22.
Antin discloses, “[t]he system may automatically track and record
users’ online activities and apply conditional logic to automatically award
badges once the users’ behavioral criteria have been met.” Antin ¶ 21
(emphasis added); see Final Action 13–14.
Appellant contends:
The [claimed] activities are activities that the system invokes on
behalf of the user, rather than activities that a user performs to
earn the badge. Thus, the activities/behavioral patterns of Antin
associated with the badges of Antin are different than the
activities of the claim. The activities/behavioral patterns of
Antin must completed by the user before earning the badge. The
activities of the claim are invoked by the system on behalf of the
user after the badge has been created and assigned to the user.
Appeal Brief 22 (footnote omitted).
We find Appellant’s argument persuasive because upon review of the
Specification and, most importantly, the language of the claim, we agree that
claim 1 imposes a specific order for performing the method steps. See
Altiris Inc. v. Symantec Corp., 318 F.3d 1363, 1371, 65 USPQ2d 1865,
1869–70 (Fed. Cir. 2003). Accordingly, we reverse the Examiner’s
obviousness rejection of independent claims 1 and 8, both drawn to a
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method. We, likewise, reverse the obvious rejection of dependent claims 2–
7 and 9–14.
Appellant contends, “[a]lthough different, the elements of
independent claims 8 and 15 are similar to independent claim 1” and
therefore claims 8 and 15 “stand or fall with claim 1.” Appeal Brief 27.
Claim 15 is drawn to a device and not a method so there is no imposition of
a specific order or sequence for the claim limitations. Appellant proffers no
arguments in regard to the Examiner’s obviousness rejection of claim 15 in
spite of Appellant’s acknowledgement that claim 15 is different from
claim 1. See Appeal Brief 27. Appellant attempts to retrofit the arguments
for claim 1 to claim 15 in the Reply Brief, however we do not consider the
arguments to be specific to the metes and bounds of claim 15. See Reply
Brief 15. Accordingly, we sustain the Examiner’s obviousness rejection of
independent claim 15, as well as, dependent claims 16–20.

CONCLUSION
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–20 101 Eligibility 1–20
1–20 103 Obviousness 15–20 1–14
Overall
Conclusion
1–20

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(1)(v).
AFFIRMED