pMDsoft, Inc.

Patent Trials and Appeals Board

Jul 16, 2020

2019000328 (P.T.A.B. Jul. 16, 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.
14/644,069 03/10/2015 Adam Russell Kenney pMD-01US01 8877
91414 7590 07/16/2020
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EXAMINER
KIM, HEE SOO
ART UNIT PAPER NUMBER
2457
NOTIFICATION DATE DELIVERY MODE
07/16/2020 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ADAM RUSSELL KENNEY, SIAVOSH BAHRAMI, and
PHILIPPE MICHEL d’OFFAY
____________________

Appeal 2019-000328
Application 14/644,069
Technology Center 2400
____________________

Before ERIC S. FRAHM, JUSTIN BUSCH, and JAMES W. DEJMEK,
Administrative Patent Judges.

BUSCH, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1–20. Oral arguments were heard on May 19, 2020. A transcript of
the hearing was placed in the record on June 3, 2020. We have jurisdiction
over the pending claims under 35 U.S.C. § 6(b).
We affirm.

1 We use the term Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42 (2017). Appellant identifies pMDsoft, Inc. as the real party in
interest. Appeal Br. 1.
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STATEMENT OF THE CASE
Introduction
Appellant’s disclosure generally relates to systems and methods that
provide “secure messaging of healthcare data and prompts message
responses using prioritized hierarchical reminders.” Spec. ¶ 3. More
specifically, the claimed subject matter encodes messages, receives a
message from a sender, identifies the message recipient, securely transmits
the message to the recipient’s device, sets two timers, transmits a first
notification to the recipient indicating the user has a secure message,
monitors for an indication the recipient has read the message, sends a first
reminder after the first time expires if no indication was received, and sends
a second reminder of a different type after the second timer expires if no
indication was received. Spec. ¶¶ 3, 13–15, Fig. 2. Claims 1 and 11 are
independent claims, and claim 1 is reproduced below:
1. A computer system for secure healthcare messaging and
reminder management, the computer system comprising:
a communication device for receiving and sending
messages;
one or more processing units; and
computer storage storing computer program instructions
which, when executed by the one or more processing units, cause
the computer system to:
encode messages for secure transmission through
the communication device,
receive a first message securely transmitted from a
sending user device by a sending user,
identify a recipient user device of a recipient user
based on the received first message,
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securely transmit the first message to the recipient
user device,
set a first timer to count down a predetermined
amount of time after transmitting the first message,
transmit a first notification to the recipient user
indicating that there is a secure message for the recipient
user,
monitor for a communication from the recipient
user device indicating that the first message has been read,
in response to expiration of the first timer without
having received a communication that the first message
has been read, send a first reminder to the recipient user
indicating that there is a secure message for the recipient
user, and
in response to expiration of a second timer without
having received a communication that the first message
has been read, send a second reminder to the recipient user
indicating that there is a secure message for the recipient
user, wherein the second reminder is of a different type
than the first reminder.
The Pending Rejection
Claims 1–20 stand rejected under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter. Final Act. 2–6.
ANALYSIS
Appellant generally argues the claims as a group. See Appeal Br. 3–9.
Appellant nominally argues dependent claims 6 and 16 separately, asserting
that these claims recite more than the abstract idea because the claims send a
message back to the original sender. Therefore, we select independent claim
1 as representative of all pending claims on appeal, but we also address the
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additional arguments regarding claims 6 and 16. See 37 C.F.R.
§ 41.37(c)(1)(iv).
If a claim falls within one of the statutory categories of patent
eligibility, the Supreme Court’s two-step framework guides our analysis of
patent eligibility under 35 U.S.C. § 101—i.e., evaluating whether the claim
is directed to a judicially recognized exception. Alice Corp. v. CLS Bank
Int’l, 573 U.S. 208, 217 (2014). We also consider the United States Patent
and Trademark Office’s revised guidance for applying the Alice framework
when evaluating subject matter eligibility under 35 U.S.C. § 101. USPTO,
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (“Guidance”); USPTO, October 2019 Patent Eligibility
Guidance Update (Oct. 18, 2019), https://www.uspto.gov/PatentEligibility
(“Guidance Update”).
As part of our inquiry, we “look 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 (Fed. Cir. 2016); see Alice, 573 U.S.
at 217 (“First, we determine whether the claims at issue are directed to one
of those patent-ineligible concepts.”). The Guidance breaks this “directed
to” inquiry (“Step 2A”) into two prongs of analysis: (i) does the claim recite
a judicial exception (e.g., an abstract idea) (“Prong 1”), and (ii) if so, is the
judicial exception integrated into a practical application (“Prong 2”).
Guidance, 84 Fed. Reg. at 54.
If we determine the claim is directed to an abstract idea, we then
examine “the elements of each claim both individually and ‘as an ordered
combination’ to determine whether the additional elements ‘transform the
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nature of the claim’ into a patent-eligible application.” Alice, 573 U.S. at
217 (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S.
66, 78, 79 (2012)). That is, we examine the claims for an “inventive
concept,” “an element or combination of elements that is ‘sufficient to
ensure that the patent in practice amounts to significantly more than a patent
upon the [ineligible concept] itself.’” Alice, 573 U.S. at 217–18 (alteration
in original) (quoting Mayo, 566 U.S. at 72–73); see Guidance, 84 Fed.
Reg. at 56 (directing us to consider whether the additional claim elements
add “a specific limitation or combination of limitations that are not well-
understood, routine, conventional activity in the field” or “simply append[]
well-understood, routine, conventional activities previously known to the
industry” (“Step 2B”)).
Guidance Step 2A (The Alice “Directed To” Inquiry)
The Examiner concludes the claims are not patent eligible under
35 U.S.C. § 101. Final Act. 2–6. Specifically, the Examiner determines the
claims are similar to claims directed to collecting and analyzing information
and displaying results that the Federal Circuit previously found ineligible.
Final Act. 4 (“Several cases have found concepts relating to processes of
organizing information that can be performed mentally abstract, such as
collecting information, analyzing, and displaying certain results of the
collection and analysis in Electric Power Group and collecting and
comparing known information in Classen.”). The Examiner explains that
the claims are directed to mental processes and the “claimed concept
describes an idea standing alone such as a uninstantiated concept, plan or
scheme, as well as a mental process (thinking) that ‘can be performed in the
human mind, or by a human using a pen and paper.’” Final Act. 4. The
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Examiner further determines the claimed concept to which the claims are
directed is “sending reminders to recipients indicating there is a secure
message and the computer system is merely used as [a] tool.” Final Act. 5;
see Ans. 4 (explaining that identifying recipients, setting timers, and
monitoring for communications are all analysis steps that a person could
perform mentally). The Examiner characterizes sending reminders as
abstract because it is “an ancillary part of such collection and analysis.”
Ans. 4.
In general, we agree with the Examiner’s characterization. More
specifically, the claims are directed to conveying a secure message,
monitoring for an indication that a recipient has read the message, and
sending reminders after a certain amount of time has elapsed without the
recipient having read the secure message (hereinafter “managing message
delivery”). Therefore, we conclude representative claim 1 is directed to
mental processes (i.e., a concept performed in the human mind, such as, an
observation, evaluation, judgment, and opinion), which are abstract ideas.
See Guidance, 84 Fed. Reg. at 52.
This is consistent with how Appellant describes the claimed
embodiments of the invention. See, e.g., Spec. ¶¶ 3 (“A system provides
secure messaging of healthcare data and prompts message responses using
prioritized hierarchical reminders,” and “[t]he system can provide message
notifications and multiple reminders to ensure that a user is reliably
receiving and also reading messages.”), 15 (“By receiving ‘message read’
indications from instances of the app 124 executing on mobile devices 120,
the server 110 can keep track of which users have read which secure
messages and can then send reminders to users to read unread messages as
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countdown timers 140 expire.”); Title (“HEALTHCARE SECURE
MESSAGING AND REMINDER SYSTEM”); accord Appeal Br. 7
(asserting the claimed steps “do accomplish a desired result of reminding a
recipient user that there is a secure message, but they accomplish it in a very
specific way.”), 7–8 (arguing the “combination of receiving a message,
identifying a recipient user device, securely transmitting the message, setting
a timer, sending a notification, monitoring whether the message has been
read, and conditionally sending different types of reminders involves a level
of detail that goes far beyond and does not preempt the more general concept
of” secure messaging and reminders).
Although we describe the abstract idea slightly differently than the
Examiner, the Examiner’s characterization of the idea is not erroneous. “An
abstract idea can generally be described at different levels of abstraction.”
Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016). The
level of abstraction an examiner uses to describe an abstract idea need not
“impact the patentability analysis.” Apple, 842 F.3d at 1241. That is true
here. Regardless of the level of generality used to describe the abstract idea
recited, the claims are directed to an abstract idea. Cf. Accenture Glob.
Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1344–45 (Fed.
Cir. 2013) (“Although not as broad as the district court’s abstract idea of
organizing data, it is nonetheless an abstract concept.”).
Consistent with our Guidance and case law, as discussed below, we
conclude that managing message delivery is directed to an abstract idea
because it is a mental process that is applied and performed in a computing
environment. See Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350,
1354 (Fed. Cir. 2016) (concluding claims that focused on “analyzing
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information by steps people go through in their minds, or by mathematical
algorithms, without more, as essentially mental processes within the
abstract-idea category”); Intellectual Ventures I LLC v. Symantec Corp., 838
F.3d 1307, 1318 (Fed. Cir. 2016) (noting that the claimed methods were
similar to methods used by the United States Postal Service for managing
mail and concluding the claims were abstract because they were directed to
generic computer implementations for applying business rules to manage
receiving and forwarding e-mails and the claims did not preclude performing
the steps mentally or with pen and paper); see also WhitServe LLC v. Donuts
Inc., No. 2019-2240, 2020 WL 1815758, at *3–4 (Fed. Cir. Apr. 10, 2020)
(concluding claims whose focus was “on the idea of keeping track of
deadlines for clients and carrying out two-way communications with clients
relevant to meeting those deadlines, using computers and networks to do so”
were abstract).
Guidance Step 2A, Prong 1 (Recite an Abstract Idea)
Claim 1 is reproduced below and includes the following claim
limitations that recite aspects of the mental steps constituting the abstract
idea of managing message delivery, emphasized in italics:
1. A computer system for secure healthcare messaging and
reminder management, the computer system comprising:
a communication device for receiving and sending
messages;
one or more processing units; and
computer storage storing computer program instructions
which, when executed by the one or more processing units, cause
the computer system to:
encode messages for secure transmission through
the communication device,
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receive a first message securely transmitted from a
sending user device by a sending user,
identify a recipient user device of a recipient user
based on the received first message,
securely transmit the first message to the recipient
user device,
set a first timer to count down a predetermined
amount of time after transmitting the first message,
transmit a first notification to the recipient user
indicating that there is a secure message for the recipient
user,
monitor for a communication from the recipient
user device indicating that the first message has been
read,
in response to expiration of the first timer without
having received a communication that the first message
has been read, send a first reminder to the recipient user
indicating that there is a secure message for the recipient
user, and
in response to expiration of a second timer without
having received a communication that the first message
has been read, send a second reminder to the recipient
user indicating that there is a secure message for the
recipient user, wherein the second reminder is of a
different type than the first reminder.
In other words, the abstract mental process of managing message
delivery comprises (i) identifying a message’s recipient device; (ii) setting
two timers (the claim explicitly recites setting a first time and also
performing an action in response to a second timer expiring);
(iii) monitoring for a read receipt (i.e., and indicating that the recipient has
read the message); (iv) determining first and second timers have expired
without having received a read receipt; and (v) sending reminders when the
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reminders’ respective timers expire. These limitations recite mental steps
comprising aspects of the abstract idea of managing message delivery.
Guidance, 84 Fed. Reg. at 52 (describing the mental process category of
abstract ideas as including concepts performed in the human mind, such as
observations, evaluations, judgments, and opinions). Parsing information to
extract a portion of the information (identifying a recipient device in a
received message), monitoring for an indication that the recipient has read
the message, and determining that timers have expired are merely
observations or evaluations. Sending reminders encompasses written
notifications (i.e., pen and paper).
Appellant argues, without further explanation, that the recited steps
(i.e., identifying a recipient user device, setting timers, and monitoring for a
communication from the recipient) are not mental processes. Reply Br. 2.
We disagree because the steps can be performed either mentally or with pen
and paper (e.g., determining that a timer expired merely involves counting in
one’s head). See Symantec, 838 F.3d at 1318; accord Guidance, 84 Fed.
Reg. at 52 n.14; Guidance Update 9. It is well settled that merely reciting
generic computer components performing steps that could otherwise be
performed mentally does not change their characterization as mental steps.
Guidance, 84 Fed. Reg. at 52 n.14. As explained above, the Federal Circuit
has determined claims directed to similar concepts were abstract. See, e.g.,
Symantec, 838 F.3d 1307; WhitServe, 2020 WL 1815758. The claims in
these Federal Circuit cases also included hardware and involved transferring
content between devices. Without further explanation or evidence,
Appellant fails to persuasively demonstrate that these steps could not be
performed mentally or with pen and paper.
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Appellant also argues the Examiner does not identify or define a
specific abstract idea to which the claims are directed and the “claims go
much further than merely sending read receipts and cannot be simply
reduced to this individual and isolated concept.” Reply Br. 3–4. Appellant
misinterprets the Examiner’s findings and conclusions.
The Examiner determines that the concept to which the claims as a
whole are directed is to send reminders that a recipient has a secure message.
Final Act. 5. As noted above, we agree with the Examiner’s
characterization. In distinguishing the claims in Finjan, Inc. v. Blue Coat
Sys., Inc., 879 F.3d 1299 (Fed. Cir. 2018) from Appellant’s claims, the
Examiner was simply clarifying that using read receipts is insufficient to add
significantly more to the abstract idea recited in the claims, not that using
read receipts is the concept to which the claims are directed. Ans. 6.
Accordingly, the claims recite abstract ideas—i.e., mental processes.
Guidance Step 2A, Prong 2 (Integrate Into a Practical Application)
Because claim 1 recites an abstract idea, we next determine whether it
integrates the abstract idea into a practical application. 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 judicial exception(s)” and evaluate those
elements to determine whether they integrate the judicial exception into a
recognized practical application. Guidance, 84 Fed. Reg. at 54–55
(emphasis added); see also Manual of Patent Examining Procedure
(“MPEP”) § 2106.05(a)–(c), (e)–(h) (9th ed., Rev. 08.2017, Jan. 2018).
Here, we find the additional limitations do not integrate the judicial
exception into a practical application. More particularly, the claims do not
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recite (i) an improvement to the functionality of a computer or other
technology or technical field (see MPEP § 2106.05(a)); (ii) using 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 also Guidance, 84 Fed. Reg. at 55.
The Examiner finds the receiving a message step and the securely
transmitting a message step are the additional elements beyond the abstract
idea. Final Act. 5–6; see also Ans. 3 (explaining that receiving and sending
messages are mere data collection). The Examiner finds these steps, taken
individually or in combination, are insignificant extra-solution activity and
fail to improve a technology, computer, or technical field or otherwise add
meaningful limitations beyond merely linking the abstract idea to a
particular technological environment. Final Act. 5–6.
Appellant argues the claims are not directed to an abstract idea
because the claims are necessarily rooted in technology. Appeal Br. 4; see
also Reply Br. 2 (asserting, without further explanation, that the sending
reminder steps “cannot be properly characterized as merely presenting the
results of abstract processes of collecting and analyzing information”).
More specifically, Appellant contends the claims address problems
specifically arising with respect to securely transmitting messages in
computer systems, and Appellant argues the claims are not directed to
merely collecting and analyzing information and displaying the results.
Appeal Br. 5. Appellant also argues that, similar to the claims held eligible
in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014),
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Appellant’s claims relate to computer networks because they recite
communicating through communication devices. Reply Br. 4.
The additional limitations (i.e., those limitations not included in the
recited abstract idea) simply recite at a high level of generality (1) a
“computer system” that includes a communication device, processing units,
and computer storage; (2) encoding messages for secure transmission; and
(3) receiving a securely transmitted message.
Contrary to Appellant’s assertion, merely utilizing a computer
network to receive data from, or send data to, an electronic device does not
integrate the judicial exception into a practical application. Appellant’s
claims are not rooted in technology; rather, the claims merely use computers
that operate in their normal, expected manner. See DDR Holdings, 773 F.3d
at 1258–59. 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, LLC v. Microsoft Corp., 822 F.3d 1327, 1335–36 (Fed. Cir.
2016). As discussed above, the focus of the pending claims is on managing
message delivery, and the recited computing elements are invoked merely as
a tool. See Enfish, 822 F.3d at 1335–36.
Similarly, the encoding messages step and receiving a secure message
step are insufficient to integrate the invention into a practical application.
Encoding and receiving information (messages) is insignificant pre-solution
activity that merely obtains and formats information necessary to perform
the abstract idea. Guidance, 84 Fed. Reg. at 55 n.31 (explaining that pre-
solution activity, such as data gathering, is insufficient to integrate the
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abstract idea into a practical application). See MPEP § 2106.05(g); see also
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir.
20122) (explaining that data gathering is insignificant extra-solution
activity); Alice, 573 U.S. at 223 (“[T]he mere recitation of a generic
computer cannot transform a patent-ineligible abstract idea into a patent-
eligible invention.”).
Even considering the additional elements in combination with the
abstract idea, using the generic computer system to perform these steps, at
most, limits the abstract idea to a particular technological environment,
which is insufficient to integrate the abstract idea into a practical application.
See Guidance, 84 Fed. Reg. at 55. The additional physical elements are
generic computer devices; the additional steps these computing devices
perform (receiving and encoding information) are recited at a high level of
generality. 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.”).
Notably, the Federal Circuit has explained that the addition of computer
functionality to abstract concepts does not confer patent eligibility.
Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363,
1370 (Fed. Cir. 2015).
Appellant asserts the claims do not merely “send[] reminders to
recipients indicating that there is a secure message” because the claims
accomplish the result in a specific way. Appeal Br. 7; see Appeal Br. 7–8
(arguing the entirety of the claim recites a combination of steps that
“involves a level of detail that goes far beyond and does not preempt the
more general concept of ‘transmitting secure messages to users and
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reminding those users with a notification.’”). We disagree. “[W]hile
preemption may signal patent ineligible subject matter, the absence of
complete preemption does not demonstrate patent eligibility.” FairWarning
IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1098 (Fed. Cir. 2016) (quoting
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed.
Cir. 2015)); see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359,
1362–63 (Fed. Cir. 2015) (“[T]hat the claims do not preempt all price
optimization or may be limited to price optimization in the e-commerce
setting do not make them any less abstract.”). Further, “[w]here a patent’s
claims are deemed only to disclose patent ineligible subject matter under the
Mayo framework, as they are in this case, preemption concerns are fully
addressed and made moot.” Ariosa, 788 F.3d at 1379.
Moreover, Appellant does not persuasively explain how the claims
allegedly solve a technological problem in a particular way or are otherwise
similar to claims the Federal Circuit has held eligible. Here, instead of
providing a solution to a technical limitation of the computing devices or
other technology, Appellant’s claims use computing devices to perform the
abstract idea. Accord Ans. 5 (“The advance Appellants purport to make is a
process of gathering and analyzing information of specified content, then
displaying the results, and not any particular assertedly inventive technology
for performing those functions.”). At most, Appellant limits the invention to
particular information and a particular technological environment and the
additional limitations do not improve a technology or otherwise integrate the
abstract idea into a practical application.
In DDR Holdings, the Federal Circuit determined “the claimed
solution amount[ed] to an inventive concept for resolving [a] particular
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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.
Rather than reciting a technical solution rooted in computer
technology as in DDR, Appellant’s claimed subject matter neither changes
how the devices receive, encode, and send messages nor otherwise alters
how the recited components work. Instead, the claims merely keep track of
whether a message has been read and send reminders and other notifications
at appropriate intervals. Simply using similar verbs in the claims does not
explain how the claims allegedly override the routine and conventional
functions of a technology.
For at least the foregoing reasons, the claims do not integrate the
judicial exception into a practical application. Accordingly, the claims are
directed to an abstract idea.
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Guidance Step 2B (Inventive Concept/Significantly More)
Because we determine representative claim 1 is directed to an abstract
idea or combination of abstract ideas, we evaluate whether the claims
include an inventive concept. See Guidance, 84 Fed. Reg. at 56. As stated
in the Guidance, many of the considerations to determine whether the claims
amount to “significantly more” under step two of the Alice framework
already are considered as part of determining whether the judicial exception
has been integrated into a practical application. Guidance, 84 Fed. Reg. at
56. Thus, at this point of the analysis, we determine whether the claims
(1) add a specific limitation, or combination of limitations, that is not well-
understood, routine, conventional activity in the field, or (2) simply append
well-understood, routine, conventional activities at a high level of generality.
Guidance, 84 Fed. Reg. at 56.
Appellant argues the Examiner has not identified evidence supporting
the finding that the additional elements were well-understood, routine, and
conventional. Appeal Br. 8. Appellant does not articulate what additional
elements allegedly constitute more than well-understood, routine, and
conventional elements, whether considered alone or in combination. See
Appeal Br. 8.
As explained above, the only additional elements recited in the claims
are the generic computer system and its components (communication device,
processing units, and computer storage), encoding messages, and receiving a
secure message. These elements and steps, considered alone and in
combination, fail to provide an inventive concept.
The Examiner finds the additional limitations recited in both the
independent and dependent claims merely add well-understood, routine, and
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conventional activities, and the Examiner cites Appellant’s Specification to
support the finding that the receiving, encoding, and transmitting messages
steps and the generic computing devices were well-understood, routine, and
conventional. Final Act. 5–6; Ans. 6–7 (citing Spec. ¶¶ 9, 24, 33); see
Ans. 6–7 (noting the Specification omits the particulars regarding encoding
and securely transmitting messages, which suggests these aspects were well-
understood, routine, and conventional), 7–9 (characterizing the dependent
claims’ limitations as insignificant extra-solution activity, ancillary to the
abstract idea (e.g., displaying) or well-understood, routine, and
conventional).
We agree.
Consistent with the Berkheimer Memorandum,2 we agree with the
Examiner’s findings that the claims merely recite generic computer
components (e.g., a computer system including a communication device,

2 On April 19, 2018, the Deputy Commissioner for Patent Examination
Policy issued a memorandum titled: 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, Berkheimer v. HP Inc., 881 F.3d 1360
(Fed. Cir. 2018)) (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. Additionally, a specification that describes additional
elements “in a manner that indicates that the additional elements are
sufficiently well-known that the specification does not need to describe the
particulars of such additional elements to satisfy 35 U.S.C. § 112(a)” can
show that the elements are well-understood, routine, and conventional.
Berkheimer Memorandum at 3.
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processing units, and computer storage) performing generic computing
functions that are well-understood, routine, and conventional (e.g., receiving
data, generically encoding data, and sending data). See Spec. ¶¶ 8 (“In other
instances, well-known devices, components, and methods have not been
described in detail so as not to unnecessarily obscure aspects of the present
invention.”), 9, 13 (“In one embodiment, the secure connection is
established using HTTPS, but other secure communication techniques can
be used. The server 110 can include a coding unit, module or application to
provide secure communications.”), 22 (“Reminders can be sent, for example,
using e-mail, an SMS text message, an automated phone call, an Apple iOS
push app notification, an Android app notification, or any other notification
technique.”), 24, 33.
Of note, our reviewing court has recognized that receiving,
processing, and storing data as well as receiving or transmitting data over a
network are well-understood, routine, and conventional activities. Mortg.
Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314 (Fed.
Cir. 2016) (generic computer components, such as an “interface,”
“network,” and “database,” fail to satisfy the inventive concept
requirement); In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607 (Fed.
Cir. 2016); Elec. Power, 830 F.3d 1350. There is no indication that the
recited elements override the conventional use of known features or involve
an unconventional arrangement or combination of elements such that the
particular combination of generic technology results in anything beyond
well-understood, routine, and conventional data gathering and output.
Alice, 573 U.S. at 223 (“[T]he mere recitation of a generic computer cannot
transform a patent-ineligible abstract idea into a patent-eligible invention.”);
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Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359, 1366 (Fed.
Cir. 2020) (“[T]he invocation of ‘already-available computers that are not
themselves plausibly asserted to be an advance . . . amounts to a recitation of
what is well-understood, routine, and conventional.’” (quoting SAP Am., Inc.
v. InvestPic, LLC, 898 F.3d 1161, 1170 (Fed. Cir. 2018))); buySAFE, 765
F.3d at 1355 (“That a computer receives and sends the information over a
network—with no further specification—is not even arguably inventive.”).
The remaining steps form part of the recited abstract ideas, and the
Examiner is not required to show that the abstract ideas are well-understood,
routine, and conventional. Although we evaluate the claims as a whole for
an inventive concept by considering how the additional elements interact
with the abstract idea, the inventive concept “cannot be furnished by the
unpatentable law of nature (or natural phenomenon or abstract idea) itself.”
Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016);
see also Guidance, 84 Fed. Reg. at 56; Alice, 573 U.S. at 217 (explaining
that, after determining a claim is directed to a judicial exception, “we then
ask, ‘[w]hat else is there in the claims before us?’” (emphasis added,
brackets in original) (quoting Mayo, 566 U.S. at 78)). Instead, an “inventive
concept” is furnished by an element or combination of elements that is
recited in the claim in addition to the judicial exception and sufficient to
ensure the claim as a whole amounts to significantly more than the judicial
exception itself. Alice, 573 U.S. at 218–19 (citing Mayo, 566 U.S. at 72–
73); see BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir.
2018) (“[T]he relevant inquiry is not whether the claimed invention as a
whole is unconventional or non-routine. . . . It has been clear since Alice that
a claimed invention’s use of the ineligible concept to which it is directed
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cannot supply the inventive concept that renders the invention ‘significantly
more’ than that ineligible concept.” (first emphasis added)); Bridge & Post,
Inc. v. Verizon Commc’ns, Inc., 778 F. App’x 882, 892 (Fed. Cir. 2019) (“At
Alice step two we assess ‘whether the claim limitations other than the
invention’s use of the ineligible concept to which it was directed were well-
understood, routine, and conventional.’” (quoting BSG, 899 F.3d at 1290)).
We thus find this argument unpersuasive.
Accordingly, Federal Circuit cases and the Specification provide the
requisite evidence to support the Examiner’s findings.
The only dependent claims Appellant nominally argues separately in
the Appeal Brief are dependent claims 6 and 16. Appellant asserts the
additional limitations in dependent claims 6 and 16, which recite sending a
notification to the sender if a third timer expires without receiving an
indication that the recipient received the message, are not part of the
Examiner’s characterization of the abstract idea—namely, sending secure
messages and reminders to a message recipient. Appeal Br. 8.
We disagree that transmitting a notification to the sender is not
properly considered part of the abstract idea. As discussed above, we
characterize the abstract idea slightly differently than the Examiner. Our
characterization of the abstract idea— managing message delivery—would
encompass sending a read receipt (or, in this case, the opposite—a
notification that the message has not been read after a certain amount of time
has elapsed) to the original sender because it is a part of the entire process of
managing message delivery.
Moreover, to the extent this step would not properly be considered
part of the abstract idea, it merely presents the results of the abstract idea.
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Therefore, similar to the sending reminder steps, these additional steps, at
most, would constitute insignificant post-solution activity.
We are also unpersuaded by Appellant’s nominal arguments regarding
dependent claims 2–9. See Reply Br. 6–8. Appellant argues the Examiner
failed to sufficiently explain why the additional elements are either
insignificant extra-solution activity or well-understood, routine, and
conventional activity. We discussed claims 6 and 16 above. As the
Examiner notes, the additional steps recited in claims 2 through 5 and 7
through 9 (and commensurately recited in claims 12 through 15 and 17
through 19) merely (1) provide additional detail regarding the notifications’
and reminders’ (a) formats (audible or visual (claims 2, 7, 8, 12, 17, and
18)); (b) types (e.g., e-mail, text message, phone call (claims 3, 4, 13, and
14)); and (c) security (i.e., secure or not secure (claims 5 and 15)), (2) send
additional messages (claims 7, 8, 17, and 18), or (3) perform additional
mental steps that constitute part of the abstract idea of managing message
delivery by creating a contact list (claims 9 and 19). See Final Act. 6;
Ans. 7–9.
Claims 2 through 8 and 12 through 18, merely add further detail
regarding the content or format of a message and sending additional
messages. This does not change the character of the information and,
therefore, at most, adds insignificant extra-solution activity—i.e., sending
and receiving particular information. See Elec. Power, 830 F.3d at 1353
(“Accordingly, we have treated collecting information, including when
limited to particular content (which does not change its character as
information), as within the realm of abstract ideas.”). Regarding claims 9
and 19, the additional limitations merely recite generating a contact list by
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checking various information. These steps clearly are part of managing
message delivery and, furthermore, are steps that could be performed
mentally. Accordingly, even considering Appellant’s argument with respect
to the dependent claims that was raised for the first in the Reply Brief, we
are not persuaded the dependent claims recite patent-eligible subject matter.
For the reasons discussed supra, we sustain the Examiner’s rejection
of claims 1–20 under 35 U.S.C. § 101. See 37 C.F.R. § 41.37(c)(1)(iv).
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § References/
Basis
Affirmed Reversed
1–20 101 Ineligible
Subject Matter
(Abstract Idea)
1–20

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