Palo Alto Research Center Incorporated

Patent Trials and Appeals Board

Jun 17, 2020

14089623 - (D) (P.T.A.B. Jun. 17, 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.
14/089,623 11/25/2013 Oliver Brdiczka PARC-20130576US01 7054
35699 7590 06/17/2020
PVF -- PARC
c/o PARK, VAUGHAN, FLEMING & DOWLER LLP
2820 FIFTH STREET
DAVIS, CA 95618-7759
EXAMINER
LAMARDO, VIKER ALEJANDRO
ART UNIT PAPER NUMBER
2126
NOTIFICATION DATE DELIVERY MODE
06/17/2020 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):
jenny@parklegal.com
sy_incoming@parklegal.com
tia@parklegal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte OLIVER BRDICZKA, MICHAEL ROBERTS, and
DAVID R. GUNNING
____________________

Appeal 2019-002446
Application 14/089,623
Technology Center 2100
____________________

Before JUSTIN BUSCH, JAMES W. DEJMEK, and
MATTHEW J. McNEILL, Administrative Patent Judges.

DEJMEK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1–10, 12–15, and 17–22. Appellant has canceled claims 11 and 16.
See Appeal Br. 38, 40. We have jurisdiction over the remaining pending
claims under 35 U.S.C. § 6(b).
We affirm.

1 Throughout this Decision, we use the word “Appellant” to refer to
“applicant” as defined in 37 C.F.R. § 1.42 (2018). Appellant identifies Palo
Alto Research Center Incorporated as the real party in interest. Appeal
Br. 1.
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STATEMENT OF THE CASE
Introduction
Appellant’s disclosed and claimed invention generally relates to
managing and gathering information about a user’s interaction in digital and
physical environments in order “to advise the user on managing data,
privacy, activities, and life.” Spec. ¶ 19. In a disclosed embodiment, a
user’s information may be encapsulated in a “digital self” that may be
represented as an avatar. Spec. ¶ 20. According to the Specification, the
digital self can perceive a user’s physical environment, and keep a digital
trace (via a semantic graph) “of all the user’s interactions with the digital
world.” Spec. ¶ 29. In addition, the disclosed system may generate and
customize rules based on the collected user information. Spec. ¶ 31. Thus,
as an example, if a user were to enter information on a website having a
privacy policy inconsistent with the user’s past behaviors, the avatar could
generate and communicate a warning to the user. See Spec. ¶ 9.
Claim 1 is representative of the subject matter on appeal and is
reproduced below:
1. A computer-executable method for advising a user,
comprising:
generating a set of rules for a digital representation of the
user in a rule base and rule engine running, on a computer, in
association with a semantic graph;
perceiving, using a sensor, a physical environment of the
user;
aggregating, by the computer in the semantic graph, data
indicating a digital trace of the user, wherein the digital trace
includes a historical data trail associated with the user’s
interactions in a digital environment and the physical
environment;
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customizing the set of rules for the user in the semantic
graph based on both the digital trace data and an acceptance rate
of a respective customized rule among a plurality of users,
wherein a respective customized rule has a first triggering
parameter that depends on the user’s digital trace and differs
from a second triggering parameter associated with another user
of the plurality of users;
generating a warning or recommendation to maximize the
user’s psychological well-being, based on the respective
customized rule and an interest of the user learned from the
digital trace data, including the interactions in the physical
environment; and
in response to the respective customized rule being
triggered by a recent interaction of the user, communicating to
the user the warning or recommendation,
which causes the user to perform a subsequent interaction
in the digital environment or the physical environment, wherein
the subsequent interaction modifies the user’s digital trace and
causes the system to further customize the set of rules for the
user.

The Examiner’s Rejection
Claims 1–10, 12–15, and 17–22 stand rejected under 35 U.S.C. § 101
as being directed to patent-ineligible subject matter. Final Act. 2–5.

ANALYSIS2
Appellant disputes the Examiner’s conclusion that the pending claims
are directed to patent-ineligible subject matter. Appeal Br. 14–32; Reply

2 Throughout this Decision, we have considered the Appeal Brief, filed
October 12, 2018 (“Appeal Br.”); the Reply Brief, filed January 30, 2019
(“Reply Br.”); the Examiner’s Answer, mailed December 6, 2018 (“Ans.”);
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Br. 8–16. In particular, Appellant argues the claims are not directed to, and
do not recite, an abstract idea (i.e., a mathematical concept, mental process,
or certain method of organizing human activity) but instead provide an
improvement to computer functionality or other technology (e.g., gathering
historical information regarding a user’s digital trace). Appeal Br. 16–24
(citing DDR Holdings,3 Enfish,4 McRO,5 and Visual Memory6); Reply Br. 8–
16. In addition, Appellant asserts the claims recite significantly more than
the alleged abstract idea and are, therefore, patent eligible. Appeal Br. 26–
32.
The Supreme Court’s two-step framework guides our analysis of
patent eligibility under 35 U.S.C. § 101. Alice Corp. v. CLS Bank Int’l, 573
U.S. 208, 217 (2014). In addition, the Office has published revised guidance
for evaluating subject matter eligibility under 35 U.S.C. § 101, specifically
with respect to applying the Alice framework. USPTO, 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Office
Guidance”). If a claim falls within one of the statutory categories of patent
eligibility (i.e., a process, machine, manufacture, or composition of matter)
then the first inquiry is whether the claim is directed to one of the judicially
recognized exceptions (i.e., a law of nature, a natural phenomenon, or an
abstract idea). Alice, 573 U.S. at 217. As part of this inquiry, we must “look

and the Final Office Action, mailed May 15, 2018 (“Final Act.”), from
which this Appeal is taken.
3 DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014).
4 Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016).
5 McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed.
Cir. 2016).
6 Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253 (Fed. Cir. 2017).
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at the ‘focus of the claimed advance over the prior art’ to determine if the
claim’s ‘character as a whole’ is directed to excluded subject matter.”
Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257–58 (Fed.
Cir. 2016). Per the Office Guidance, this first inquiry has two prongs of
analysis: (i) does the claim recite a judicial exception (e.g., an abstract idea
such as a mental process), and (ii) if so, is the judicial exception integrated
into a practical application. Office Guidance, 84 Fed. Reg. at 54. Under the
Office Guidance, if the judicial exception is integrated into a practical
application, see infra, the claim passes muster under § 101. Office
Guidance, 84 Fed. Reg. at 54–55. If the claim is directed to a judicial
exception (i.e., recites a judicial exception and does not integrate the
exception into a practical application), the next step is to determine whether
any element, or combination of elements, amounts to significantly more than
the judicial exception. Alice, 573 U.S. at 217; Office Guidance, 84 Fed.
Reg. at 56.
Here, we conclude Appellant’s claims recite an abstract idea because
they recite mental processes. If a claim, under its broadest reasonable
interpretation, covers performance in the mind but for the recitation of
generic computer components, then it is still in the mental processes
category unless the claim cannot practically be performed in the mind. See
Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed.
Cir. 2016) (“[W]ith the exception of generic computer-implemented steps,
there is nothing in the claims themselves that foreclose them from being
performed by a human, mentally or with pen and paper.”); see also
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir.
2011) (holding that the incidental use of a “computer” or “computer readable
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medium” does not make a claim otherwise directed to a process that “can be
performed in the human mind, or by a human using a pen and paper” patent
eligible); Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66,
71 (2012) (explaining mental processes are not patentable); Office
Guidance, 84 Fed. Reg. at 52–53 nn.14–15.
More specifically, Appellant’s claims are generally directed to
generating an indication (e.g., a warning or recommendation) to a user when
a user’s activity in a digital or physical environment triggers a rule that has
been customized based on the user’s historical activity in the digital and
physical environments. This is consistent with how Appellant describes the
claimed invention. See Spec. ¶¶ 5 (describing an embodiment as a system
for advising a user based on the user’s interactions in a digital or physical
environment), 19–21; Appeal Br. 5 (explaining the claims are “directed
toward . . . advising a user based on the user’s digital trace”); Reply Br. 8–9
(“the instant claims are directed to a system for advising a user based on the
user’s digital trace”). But for the recitation of generic computer components
performing generic computing functions (as discussed further below; see
also Spec. ¶¶ 56–59, Fig. 6), generating an indication (e.g., a warning or
recommendation) to a user when a user’s activity in a digital or physical
environment triggers a rule that has been customized based on the user’s
historical activity in the digital and physical environments is a series of
observations, evaluations, judgments, and opinions that can be performed by
a human, mentally or with pen and paper.
Consistent with our Office Guidance and case law, we conclude that
the concept of generating an indication (e.g., a warning or recommendation
to a user) when a user’s activity in a digital or physical environment triggers
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a rule that has been customized based on the user’s historical activity in the
digital and physical environments, is a mental process and, thus, an abstract
idea. See 84 Fed. Reg. at 52; see also Elec. Power Grp., LLC v. Alstom S.A.,
830 F.3d 1350, 1354 (Fed. Cir. 2016) (concluding that “analyzing
information by steps people go through in their minds, or by mathematical
algorithms, without more, as essentially mental processes within the
abstract-idea category”); Content Extraction & Transmission LLC v. Wells
Fargo Bank, Nat. Ass’n, 776 F.3d 1343, 1347–48 (Fed. Cir. 2014)
(explaining that claims drawn to data collection, recognition, and storage are
“undisputedly well-known” and, absent more, are directed to an abstract
idea); CyberSource, 654 F.3d at 1371–72 (concluding claims directed to
“detecting credit card fraud based on information relating [to] past
transactions” can be performed in the human mind and were drawn to a
patent-ineligible mental process); FairWarning IP, LLC v. Iatric Sys., Inc.,
839 F.3d 1089, 1093–94 (Fed. Cir. 2016) (concluding claims directed to
“collecting and analyzing information to detect misuse and notifying a user
when misuse is detected” to be mental processes within the abstract-idea
category).
In addition, we are mindful that “[a]n abstract idea can generally be
described at different levels of abstraction.” Apple, Inc. v. Ameranth, Inc.,
842 F.3d 1229, 1240 (Fed. Cir. 2016). Thus, alternatively, the concept of
generating an indication (e.g., a warning or recommendation to a user) when
a user’s activity in a digital or physical environment triggers a rule that has
been customized based on the user’s historical activity in the digital and
physical environments, may also be considered a certain method of
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organizing human activity (e.g., managing personal behavior), which is also
an abstract idea. See, e.g., Office Guidance, 84 Fed. Reg. at 52.
Claim 1 is reproduced below and includes the following claim
limitations that recite generating an indication (e.g., a warning or
recommendation to a user) when a user’s activity in a digital or physical
environment triggers a rule that has been customized based on the user’s
historical activity in the digital and physical environments, emphasized in
italics:
1. A computer-executable method for advising a user,
comprising:
generating a set of rules for a digital representation of the
user in a rule base and rule engine running, on a computer, in
association with a semantic graph;
perceiving, using a sensor, a physical environment of the
user;
aggregating, by the computer in the semantic graph, data
indicating a digital trace of the user, wherein the digital trace
includes a historical data trail associated with the user’s
interactions in a digital environment and the physical
environment;
customizing the set of rules for the user in the semantic
graph based on both the digital trace data and an acceptance rate
of a respective customized rule among a plurality of users,
wherein a respective customized rule has a first triggering
parameter that depends on the user’s digital trace and differs
from a second triggering parameter associated with another user
of the plurality of users;
generating a warning or recommendation to maximize the
user’s psychological well-being, based on the respective
customized rule and an interest of the user learned from the
digital trace data, including the interactions in the physical
environment; and
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in response to the respective customized rule being
triggered by a recent interaction of the user, communicating to
the user the warning or recommendation,
which causes the user to perform a subsequent interaction
in the digital environment or the physical environment, wherein
the subsequent interaction modifies the user’s digital trace and
causes the system to further customize the set of rules for the
user.
More particularly, the concept of generating an indication (e.g., a
warning or recommendation to a user) when a user’s activity in a digital or
physical environment triggers a rule that has been customized based on the
user’s historical activity in the digital and physical environments comprises
(i) gathering information about a user’s interactions in digital and physical
environments (i.e., the claimed steps of perceiving a physical environment of
the user and aggregating data indicating a digital trace of the user—
observations); (ii) generating and customizing rules for a user based on the
user’s interactions in the digital and physical environments (i.e., the claimed
steps of generating a set of rules for a user (digital representation of the user)
and customizing the rules based on the digital trace of the user—a judgment
or opinion); and (iii) generating an indication to the user when the user’s
activity triggers a rule (i.e., the claimed steps of generating a warning or
recommendation and communicating the indication to the user in response to
a trigger event—an evaluation or judgment).
Because the claim recites a judicial exception, we next determine
whether the claim integrates the judicial exception into a practical
application. Office Guidance, 84 Fed. Reg. at 54. To determine whether the
judicial exception is integrated into a practical application, we identify
whether there are “any additional elements recited in the claim beyond the
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judicial exception(s)” and evaluate those elements to determine whether they
integrate the judicial exception into a recognized practical application.
Office Guidance, 84 Fed. Reg. at 54–55 (emphasis added); see also MPEP
§ 2106.05(a)–(c), (e)–(h).
Here, we find the additional limitations do not integrate the judicial
exception into a practical application. More particularly, the claims do not
recite (i) an improvement to the functionality of a computer or other
technology or technical field (see MPEP § 2106.05(a)); (ii) a “particular
machine” to apply or use the judicial exception (see MPEP § 2106.05(b));
(iii) a particular transformation of an article to a different thing or state
(see MPEP § 2106.05(c)); or (iv) any other meaningful limitation
(see MPEP § 2106.05(e)). See Office Guidance, 84 Fed. Reg. at 55.
Specifically, the additional limitations merely provide additional
detail to the customization of rules based on the user’s digital trace to
include an acceptance rate of the rule among a plurality of users and to set
triggering parameters. This level of refinement of the abstract idea fails to
confer patent eligibility. Similarly, the subsequent action of the user
(causing another entry in the user’s digital trace) is simply extra-solution
activity that does not transform the claim into a patent-eligible claim. See
Parker v. Flook, 437 U.S. 584, 590 (1978) (explaining “[t]he notion that
post-solution activity, no matter how conventional or obvious in itself, can
transform an unpatentable principle into a patentable process exalts form
over substance”); see also MPEP § 2106.05(f)–(h). In addition, the use of a
sensor (or processor or computing system) does not rise to the level of a
particular machine required to practice the claimed invention. See MPEP
§ 2106.05(b); see also Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d
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1306, 1335 (Fed. Cir. 2015) (explaining that in order for a machine to add
significantly more, it must “play a significant part in permitting the claimed
method to be performed, rather than function solely as an obvious
mechanism for permitting a solution to be achieved more quickly”). Rather,
as discussed below, these components are described at a high level of
generality and are simply generic computing elements performing generic
computing functions. See Spec. ¶¶ 56–59, Fig. 6.
Contrary to Appellant’s assertions (see, e.g., Appeal Br. 16–24), the
claims do not recite an improvement to the functionality of a computer or
other technology or technical field. See MPEP § 2106.05(a). As the court in
Enfish explained, “the first step in the Alice inquiry . . . asks whether the
focus of the claims is on the specific asserted improvement in computer
capabilities . . . or, instead, on a process that qualifies as an ‘abstract idea’
for which computers are invoked merely as a tool.” Enfish, 822 F.3d at
1335–36. As discussed above, the focus of the pending claims is on
generating an indication (e.g., a warning or recommendation) to a user when
a user’s activity in a digital or physical environment triggers a rule that has
been customized based on the user’s historical activity in the digital and
physical environments and the recited computing elements (i.e., computing
system, processor, and sensor) are invoked merely as a tool. See Enfish, 822
F.3d at 1335–36. Further, we note that using a computer to perform tasks
more quickly or efficiently does not confer patent eligibility on an otherwise
ineligible abstract idea. See, e.g., Bancorp Servs., L.L.C. v. Sun Life Assur.
Co. of Can. (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012) (“[T]he fact that
the required calculations could be performed more efficiently via a computer
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does not materially alter the patent eligibility of the claimed subject
matter.”); see also Ans. 4–5.
Further, in DDR Holdings, the Federal Circuit determined “the
claimed solution amount[ed] to an inventive concept for resolving [a]
particular Internet-centric problem,” i.e., a challenge unique to the Internet.
DDR Holdings, 773 F.3d at 1257–59; see Synopsys, Inc. v. Mentor Graphics
Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (noting that “[i]n DDR
Holdings, we held that claims ‘directed to systems and methods of
generating a composite web page that combines certain visual elements of a
‘host’ website with content of a third-party merchant’ contained the requisite
inventive concept”). The Federal Circuit explained that the patent-eligible
claims specified “how interactions with the Internet are manipulated to yield
a desired result . . . that overrides the routine and conventional sequence of
events ordinarily triggered by the click of a hyperlink.” DDR Holdings,
773 F.3d at 1258. The court reasoned that those claims recited a
technological solution “necessarily rooted in computer technology” that
addressed a “problem specifically arising in the realm of computer
networks.” DDR Holdings, 773 F.3d at 1257.
Also, the claims at issue in McRO—unlike the claims here—recited a
“specific . . . improvement in computer animation” using “unconventional
rules” that related “sub-sequences of phonemes, timings, and morph weight
sets” to automatically animate lip synchronization and facial expressions for
three-dimensional characters that only human animators could previously
produce. McRO, 837 F.3d at 1302–03, 1307–08, 1313–15. In McRO, “the
incorporation of the claimed rules” improved an existing technological
process. McRO, 837 F.3d at 1314.
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In Visual Memory, the court determined that the claimed
“programmable operational characteristics” of a computer memory system
provided an improvement over conventional memory systems. See Visual
Memory, 867 F.3d at 1259. In particular, the court looked to the
specification to describe the alleged improvements. Visual Memory, 867
F.3d at 1259.
Here, unlike the claims at issue in DDR Holdings or McRO,
Appellant’s claims do not address a problem specifically arising in the realm
of computer networks. See Ans. 5. Instead, considered as a whole, the
instant claims relate to generating an indication (e.g., a warning or
recommendation to a user) when a user’s activity in a digital or physical
environment triggers a rule that has been customized based on the user’s
historical activity in the digital and physical environments. Although the
claimed method occurs within a computer network (e.g., tracing a user’s
interactions on the Internet), this amounts merely to limiting the judicial
exception to a particular technological environment or field of use, which is
insufficient to confer patent eligibility. See MPEP § 2106.05(h); see also
Elec. Power, 830 F.3d at 1354 (explaining that “limiting the claims to [a]
particular technological environment . . . is, without more insufficient to
transform them into patent-eligible applications of the abstract idea at their
core”); Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014)
(“use of the Internet does not transform an otherwise abstract idea into
patent-eligible subject matter”).
Moreover, as discussed, the pending claims do not improve an
existing technological process, but rather merely use computers and
computer devices that operate in their normal, expected manner. See DDR
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Holdings, 773 F.3d at 1258–59; see also Enfish, 822 F.3d at 1335–36
(distinguishing between claims wherein the focus of the claims is on an
improvement in computer capabilities and those that invoke a computer as a
tool).
As set forth in the October 2019 Update: Subject Matter Eligibility
(available at https://www.uspto.gov/sites/default/files/documents/peg_
oct_2019_update.pdf) (“October Update”), the alleged improvement as
described in the specification must be apparent to an ordinarily skilled
artisan and, if so, “the claim must be evaluated to ensure that the claim itself
reflects the disclosed improvement. That is, the claim includes the
components or steps of the invention that provide the improvement
described in the specification.” October Update at 12.
Unlike the claims in Visual Memory, which provided an improvement
to computer functionality or a technical field, Appellant’s alleged
improvements (e.g., generating rules to send warnings or recommendations
to a user (see Appeal Br. 19); gathering of historical information regarding a
user’s digital trace (see Appeal Br. 21); protecting the security of the user’s
data (see Appeal Br. 24); or “maximizing the user’s well-being” (Spec.
¶ 38)) relate to the abstract idea, and do not improve a computer, technology,
or a technical field. Cf. Customedia Techs., LLC v. Dish Network Corp., 951
F.3d 1359, 1365 (Fed. Cir. 2020) (determining that “the claimed invention is
at most an improvement to the abstract concept of targeted advertising
wherein a computer is merely used as a tool. This is not an improvement in
the functioning of the computer itself.”).
For at least the foregoing reasons, the claims do not integrate the
judicial exception into a practical application.
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Because we determine the claims are directed to an abstract idea or
combination of abstract ideas, we analyze the claims under step two of Alice
(i.e., step 2B of the Office Guidance) to determine if there are additional
limitations that individually, or as an ordered combination, ensure the claims
amount to “significantly more” than the abstract idea. Alice, 573 U.S. at
217–18 (citing Mayo, 566 U.S. at 77–79). As stated in the Office Guidance,
many of the considerations to determine whether the claims amount to
“significantly more” under step two of the Alice framework are already
considered as part of determining whether the judicial exception has been
integrated into a practical application. Office Guidance, 84 Fed. Reg. at 56.
Thus, at this point of our analysis, we determine if the claims add a specific
limitation, or combination of limitations, that is not well-understood, routine,
conventional activity in the field, or simply append well-understood, routine,
conventional activities at a high level of generality. Office Guidance, 84
Fed. Reg. at 56. “Whether something is well-understood, routine, and
conventional to a skilled artisan at the time of the patent is a factual
determination.” Berkheimer v. HP Inc., 881 F.3d 1360, 1369 (Fed. Cir.
2018).
Here, Appellant’s claims do not recite specific limitations (alone or
when considered as an ordered combination) that are not well-understood,
routine, and conventional. Instead, when describing the computer system for
advising a user, Appellant describes the system and components at a high
level of generality. See Spec. ¶ 56 (describing the computer system as
comprising a processor, memory, and storage device). Consistent with the
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Berkheimer Memorandum,7 we agree with the Examiner’s findings that the
claims merely recite generic computer components (e.g., a computing device
comprising a processor and memory) performing generic computing
functions that are well-understood, routine, and conventional (e.g., receiving
and transmitting data, processing data, and presenting the results of the data
processing). See Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811
F.3d 1314, 1324–25 (Fed. Cir. 2016) (generic computer components, such as
an “interface,” “network,” and “database,” fail to satisfy the inventive
concept requirement); Alice, 573 U.S. at 226 (“Nearly every computer will
include a ‘communications controller’ and [a] ‘data storage unit’ capable of
performing the basic calculation, storage, and transmission functions
required by the method claims.”); 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.”); Concaten, Inc. v. Ameritrak Fleet Solutions, LLC, 131
F. Supp. 3d 1166, 1176 (D. Colo. 2015) (explaining the use of generic
computing components such as sensors is insufficient to transform an
abstract idea into a patentable invention).

7 On April 19, 2018, the Deputy Commissioner for Patent Examination
Policy issued a memorandum entitled: Changes in Examination Procedure
Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility
Decision (Berkheimer v. HP, Inc.) (i.e., “the Berkheimer Memorandum”)
(discussing the Berkheimer decision) (available at https://www.uspto.gov/
sites/default/files/documents/memo-berkheimer-20180419.PDF). Support
for a finding that an element was well-understood, routine, or conventional
may be shown by citation to one or more court decisions noting the well-
understood, routine, conventional nature of the element(s). See Berkheimer
Memorandum 3–4.
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Additionally, we are unpersuaded that consideration of BASCOM8 or
Amdocs9 alters our determination. See Appeal Br. 26–32. For example, in
BASCOM, the court found “the patent describes how its particular
arrangement of elements is a technical improvement,” and, when construed
in favor of BASCOM,10 the claims may be read to improve an existing
technological process. BASCOM, 827 F.3d at 1350. As discussed above,
the claims do not improve an existing technological process, but rather use
the existing components to perform the abstract idea. See, e.g., Spec. ¶¶ 56–
59, Fig. 6. Additionally, unlike the arrangement of elements (i.e.,
installation of a filtering tool at a specific location) in BASCOM, 827 F.3d at
1349–50 (or the distributed architecture described in Amdocs, 841 F.3d at
1300), Appellant’s claims do not recite a non-conventional and non-routine
arrangement of known elements.
For the reasons discussed supra, we sustain the Examiner’s rejection
of claims 1–10, 12–15, and 17–22 under 35 U.S.C. § 101.

CONCLUSION
We affirm the Examiner’s decision rejecting claims 1–10, 12–15, and
17–22 under 35 U.S.C. § 101.

8 BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341
(Fed. Cir. 2016).
9 Amdocs Ltd. v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016).
10 In BASCOM, BASCOM appealed the district court’s granting of a motion
to dismiss under Fed. R. Civ. P. 12(b)(6). BASCOM, 827 F.3d at 1341.
Appeal 2019-002446
Application 14/089,623

18
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–10, 12–
15, 17–22
101 Patent Eligibility 1–10, 12–
15, 17–22

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).

AFFIRMED