Rafei, Keyvan et al.

Patent Trials and Appeals Board

Jan 29, 2020

13493390 - (D) (P.T.A.B. Jan. 29, 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.
13/493,390 06/11/2012 Keyvan Rafei 11-199-US 5817
98804 7590 01/29/2020
Reed Smith LLP
P.O. Box 488
Pittsburgh, PA 15230
EXAMINER
GARCIA-GUERRA, DARLENE
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
01/29/2020 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):
gdonovan@reedsmith.com
ptoipinbox@reedsmith.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KEYVAN RAFEI, ALEX TARANENKO,
SALEH AL-GHAFARI, DERAR ALI, and JENNIFER LOPATIN
____________

Appeal 2019-001378
Application 13/493,390
Technology Center 3600
____________

Before HUBERT C. LORIN, NINA L. MEDLOCK, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2019-001378
Application 13/493,390

2
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–30. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED INVENTION
Appellant’s claimed invention “relates to a system and method for
determining the level of influence of a group of persons” (Spec. ¶ 2).
Claims 1, 11, and 21 are the independent claims on appeal. Claim 1,
reproduced below with bracketed notations added, is illustrative of the
claimed subject matter:
1. A computer-implemented method executed by one
or more computing devices for determining the level of influence
of a group of persons, comprising:
[(a)] populating, by at least one of the one or more
computing devices, biographical data for at least one member of
the group of persons by searching a plurality of network sources
for information relevant to the at least one member of the group
of persons, scraping the information relevant to the at least one
member of the group of persons, and storing the information
relevant to the at least one member of the group of persons in at
least one data structure;

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Our decision references Appellant’s Appeal Brief (“Appeal Br.,”
filed June 18, 2018) and Reply Brief (“Reply Br.,” filed December 5, 2018),
and the Examiner’s Answer (“Ans.,” mailed October 5, 2018) and Non-Final
Office Action (“Non-Final Act.,” mailed May 17, 2017). Appellant
identifies Geographic Services, Inc. as the real party in interest. Appeal
Br. 1.
Appeal 2019-001378
Application 13/493,390

3
[(b)] determining, by at least one of the one or more
computing devices, a level of influence score for the at least one
member of a group of persons based on the biographical data
corresponding to the at least one member of the group of persons
stored in the at least one data structure;
[(c)] aggregating, by at least one of the one or more
computing devices, the level of influence scores for the at least
one member of the group of persons;
[(d)] determining, by at least one of the one or more
computing devices, a composite level of influence for the group
of persons based on the aggregate level of influence score;
[(e)] monitoring, by at least one of the one or more
computing devices, the plurality of network sources for
additional information relevant to the at least one member of the
group of persons; and
[(f)] in response to detecting additional information
relevant to the at least one member of the group of persons,
updating, by at least one of the one or more computing devices,
the at least one data structure, the level of influence score for the
at least one member of a group of persons, the aggregate level of
influence score, and the composite level of influence for the
group of persons.
REJECTION
Claims 1–30 are rejected under 35 U.S.C. § 101 as directed to patent-
ineligible subject matter.
ANALYSIS
Appellant argues the pending claims as a group (Appeal Br. 4–17).
We select independent claim 1 as representative. The remaining claims,
thus, stand or fall with claim 1. See 37 C.F.R. §41.37(c)(1)(iv).
Under 35 U.S.C. § 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. The Supreme Court, however, has long interpreted § 101
Appeal 2019-001378
Application 13/493,390

4
to include an implicit exception: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S.
208, 216 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), “for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts.” Alice Corp., 573 U.S. at 217.
The first step in that analysis is to “determine whether the claims at issue are
directed to one of those patent-ineligible concepts.” Id. If the claims are not
directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry
ends. Otherwise, the inquiry proceeds to the second step where the elements
of the claims are considered “individually and ‘as an ordered combination’”
to determine whether there are additional elements that “‘transform the
nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo,
566 U.S. at 79, 78). This is “a search for an ‘inventive concept’ — i.e., an
element or combination of elements that is ‘sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself.’” Id. at 217–18 (alteration in original).
We are not persuaded, as an initial matter, by Appellant’s argument
that the Examiner has failed to establish a prima facie case of patent
eligibility (Appeal Br. 6–10). The Federal Circuit has observed repeatedly
that “the prima facie case is merely a procedural device that enables an
appropriate shift of the burden of production.” Hyatt v. Dudas, 492 F.3d.
1365, 1369 (Fed. Cir. 2007) (citing In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992)). The court has, thus, held that the USPTO carries its
Appeal 2019-001378
Application 13/493,390

5
procedural burden of establishing a prima facie case when its rejection
satisfies the requirements of 35 U.S.C. § 132 by notifying the applicant of
the reasons for the rejection, “together with such information and references
as may be useful in judging of the propriety of continuing the prosecution of
[the] application.” See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011)
(alteration in original). Thus, what is required of the Office is that it sets
forth the statutory basis of the rejection in a sufficiently articulate and
informative manner as to meet the notice requirement of § 132. Id.; see also
Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990) (“Section 132 is
violated when a rejection is so uninformative that it prevents the applicant
from recognizing and seeking to counter the grounds for rejection.”).
Here, in rejecting the pending claims under 35 U.S.C. § 101, the
Examiner analyzed the claims in accordance with the Mayo/Alice two-step
framework, and consistently with the USPTO guidance in effect at the time
the Non-Final Office Action was mailed. The Examiner, thus, notified
Appellant that claim 1 is directed to “determining the level of influence of a
group of persons,” i.e., to a method of organizing human activity, an idea of
itself, and/or a mental process, and, therefore, to an abstract idea (Non-Final
Act. 8–10) and that the claim does not include additional elements that are
sufficient to amount to significantly more than the abstract idea itself (id.
at 10–12). The Examiner explained that claims 2–30 are patent ineligible
based on the same rationale (id. at 12).
The Examiner, in our view, set forth the statutory basis of the
rejection in a sufficiently articulate and informative manner as to meet the
notice requirement of 35 U.S.C. § 132. And we find that, in doing so, the
Examiner established a prima facie case of patent ineligibility.
Appeal 2019-001378
Application 13/493,390

6
After Appellant’s briefs were filed, and the Examiner’s Answer
mailed, the U.S. Patent and Trademark Office (the “USPTO”) published
revised guidance on January 7, 2019 for use by USPTO personnel in
evaluating subject matter eligibility under 35 U.S.C. § 101. 2019 REVISED
PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50, 57
(Jan. 7, 2019) (the “2019 Revised Guidance”). That guidance revised the
USPTO’s examination procedure with respect to the first step of the
Mayo/Alice framework by (1) “[p]roviding groupings of subject matter that
[are] considered an abstract idea”; and (2) clarifying that a claim is not
“directed to” a judicial exception if the judicial exception is integrated into a
practical application of that exception. Id. at 50. The 2019 Revised
Guidance, by its terms, applies to all applications, and to all patents resulting
from applications, filed before, on, or after January 7, 2019. Id.2,3
Step One of the Mayo/Alice Framework (2019 Revised Guidance, Step 2A)
The first step in the Mayo/Alice framework, as mentioned above, is to
determine whether the claims at issue are “directed to” a patent-ineligible

2 The 2019 Revised Guidance supersedes MANUAL OF PATENT EXAMINING
PROCEDURE (“MPEP”) § 2106.04(II) and also supersedes all versions of the
USPTO’s “Eligibility Quick Reference Sheet Identifying Abstract Ideas.”
See 2019 Revised Guidance, 84 Fed. Reg. at 51 (“Eligibility-related
guidance issued prior to the Ninth Edition, R-08.2017, of the MPEP
(published Jan. 2018) should not be relied upon.”). Accordingly,
Appellant’s arguments challenging the sufficiency of the Examiner’s
rejection will not be addressed to the extent those arguments are based on
now superseded USPTO guidance.
3 The USPTO issued an update on October 17, 2019 (the “October 2019
Update: Subject Matter Eligibility,” available at https://www.uspto.gov/sites/
default/files/documents/peg_oct_2019_update.pdf) clarifying the 2019
Revised Guidance in response to comments solicited from the public.
Appeal 2019-001378
Application 13/493,390

7
concept, e.g., an abstract idea. Alice Corp., 573 U.S. at 217. This first step,
as set forth in the 2019 Revised Guidance (i.e., Step 2A), is a two-prong test;
in Step 2A, Prong One, we look to whether the claim recites a judicial
exception, e.g., one of the following three groupings of abstract ideas:
(1) mathematical concepts; (2) certain methods of organizing human
activity, e.g., fundamental economic principles or practices, commercial or
legal interactions; and (3) mental processes. 2019 Revised Guidance,
84 Fed. Reg. at 54. If so, we next consider whether the claim includes
additional elements, beyond the judicial exception, that “integrate the
[judicial] exception into a practical application,” i.e., that apply, rely on, or
use the judicial exception in a manner that imposes a meaningful limit on the
judicial exception, such that the claim is more than a drafting effort designed
to monopolize the judicial exception (“Step 2A, Prong Two”). Id. at 54–55.
Only if the claim (1) recites a judicial exception and (2) does not integrate
that exception into a practical application do we conclude that the claim is
“directed to” the judicial exception, e.g., an abstract idea.
We are not persuaded here that the Examiner overgeneralized the
claims as directed to “determining the level of influence of a group of
persons” or that the Examiner otherwise failed to consider the claims as a
whole (Appeal Br. 5–6; see also id. at 9). Instead, Examiner’s
characterization is, in our view, fully consistent with the Specification, as
described below, including the claim language. That the claims include
more words than the phrase the Examiner used to articulate the abstract idea,
and that the Examiner, thus, articulates the abstract idea at a higher level of
abstraction than would Appellant is an insufficient basis to persuasively
argue that the claim language has been mischaracterized or that the
Appeal 2019-001378
Application 13/493,390

8
Examiner has failed to consider the claims as a whole. See Apple, Inc. v.
Ameranth, Inc., 842 F.3d 1229, 1240–41 (Fed. Cir. 2016) (“An abstract idea
can generally be described at different levels of abstraction. As the Board
has done, the claimed abstract idea could be described as generating menus
on a computer, or generating a second menu from a first menu and sending
the second menu to another location. It could be described in other ways,
including, as indicated in the specification, taking orders from restaurant
customers on a computer.”).
We also are not persuaded that the Examiner erred in determining that
claim 1 is directed to an abstract idea. The Federal Circuit has explained
that “the ‘directed to’ inquiry applies a stage-one filter to claims, considered
in light of the specification, based on whether ‘their character as a whole is
directed to excluded subject matter.’” Enfish, LLC v. Microsoft Corp.,
822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. v.
Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). It asks whether
the focus of the claims is on a specific improvement in relevant technology
or on a process that itself qualifies as an “abstract idea” for which computers
are invoked merely as a tool. See id. at 1335–36. Here, the Specification
(including the claim language) makes clear that the claims focus on an
abstract idea, and not on any improvement to computer technology and/or
functionality.
The Specification is entitled “METHOD, APPARATUS, AND
COMPUTER-READABLE MEDIUM FOR THE DETERMINATION OF
LEVELS OF INFLUENCE OF A GROUP” and describes, in the
Background section, that conducting operations, e.g., construction projects,
business operations, political events, military operations, humanitarian aid,
Appeal 2019-001378
Application 13/493,390

9
or other activities, in a foreign country can be a complicated endeavor at
least because in many situations, there are no clear cut rules concerning how
to operate or from whom to obtain appropriate authorization (Spec. ¶ 3).
The Specification, thus, describes that “a failure to recognize and
communicate with those who wield influence can lead to disastrous
consequences” (id.).
The claimed invention is ostensibly intended to address this issue by
providing a system and method that “allow users unfamiliar with a
geopolitical landscape to quickly understand and quantify the levels of
influence wielded by groups of people in a particular geographic area” (id.
¶ 4). Claim 1, thus, recites a method for determining the level of influence
of a group of persons comprising: (1) receiving and storing biographical data
relevant to one or more members of the group, i.e.,
populating, by at least one of the one or more computing
devices, biographical data for at least one member of the group
of persons by searching a plurality of network sources for
information relevant to the at least one member of the group of
persons, scraping the information relevant to the at least one
member of the group of persons, and storing the information
relevant to the at least one member of the group of persons in at
least one data structure
(step (a)); (2) determining, based on the biographical data, a level of
influence for each of the one or more group members, i.e.,
determining, by at least one of the one or more computing
devices, a level of influence score for the at least one member of
a group of persons based on the biographical data corresponding
to the at least one member of the group of persons stored in the
at least one data structure
Appeal 2019-001378
Application 13/493,390

10
(step (b)); (3) aggregating the level of influence scores and determining a
composite level of influence for the group based on the aggregated scores,
i.e.,
aggregating, by at least one of the one or more computing
devices, the level of influence scores for the at least one member
of the group of persons; [and]
determining, by at least one of the one or more computing
devices, a composite level of influence for the group of persons
based on the aggregate level of influence score
(steps (c) and (d)); and (4) monitoring information sources for additional
information relevant to one or more group members and updating the level
of influence score for the one or more group members and the aggregate
level of influence score and composite level of influence for the group, i.e.,
monitoring, by at least one of the one or more computing
devices, the plurality of network sources for additional
information relevant to the at least one member of the group of
persons; and
in response to detecting additional information relevant to
the at least one member of the group of persons, updating, by at
least one of the one or more computing devices, the at least one
data structure, the level of influence score for the at least one
member of a group of persons, the aggregate level of influence
score, and the composite level of influence for the group of
persons
(steps (e) and (f)). These limitations, when given their broadest reasonable
interpretation, recite determining a level of influence for a group of persons
by collecting and analyzing biographical information.
Claim 1 recites that the method steps are performed by “one or more
computing devices” and that the biographical data are collected by searching
network sources. Yet, the underlying processes recited in the claim are all
acts that, as the Examiner observes (see Non-Final Act. 4), could be
Appeal 2019-001378
Application 13/493,390

11
performed by a human, e.g., mentally or manually, using pen and paper,
without the use of a computer or any other machine. For example, a person,
using pen and paper, could collect biographical information regarding one or
more members of group and, using data, like that included in Table 1 of the
Specification (see Spec. ¶ 45), could determine, either mentally or using pen
and paper, level of influence (“LOI”) scores for the one or more group
members. A person performing calculations in his or her head or using pen
and paper, also could determine an aggregate LOI score, which the
Specification describes “may take the form of a sum, a product, an average,
a median, or some other statistical or mathematical means of combining
each of the LOI scores,” and could compare the aggregate score to various
threshold values to determine a composite LOI for the group (see id. ¶ 22).
Such a person also could monitor information sources for additional
information and update the scores, as appropriate, again either mentally or
using pen and paper. Simply put, claim 1 recites a mental process, i.e., a
concept performed in the human mind, including an evaluation or judgment,
and, therefore, an abstract idea. See 2019 Revised Guidance, 84 Fed. Reg.
at 52. See also CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
1373 (Fed. Cir. 2011) (holding that method steps that can be performed in
the human mind, or by a human using a pen and paper, are unpatentable
mental processes).
Having concluded that claim 1 recites a judicial exception, i.e., an
abstract idea (Step 2A, Prong One), we next consider whether the claim
recites additional elements that integrate the judicial exception into a
practical application (Step 2A, Prong Two).
Appeal 2019-001378
Application 13/493,390

12
The only additional elements recited in claim 1, beyond the abstract
idea, are the “one or more computing devices”; “at least one data structure”;
and “a plurality of network sources” —elements that, as the Examiner
observed, are recited at a high level of generality (Non-Final Act. 11; see
also id. at 5–6), i.e., as generic components (see, e.g., Spec. ¶¶ 53–61). We
find no indication in the Specification that the operations recited in claim 1
require any specialized computer hardware or other inventive computer
components, i.e., a particular machine, invoke any assertedly inventive
programming, or that the claimed invention is implemented using other than
generic computer components to perform generic computer functions. See
DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir.
2014) (“[A]fter Alice, there can remain no doubt: recitation of generic
computer limitations does not make an otherwise ineligible claim patent-
eligible.”).
We also find no indication in the Specification that the claimed
invention effects a transformation or reduction of a particular article to a
different state or thing. Nor do we find anything of record that attributes an
improvement in technology and/or a technical field to the claimed invention
or that otherwise indicates that the claimed invention integrates the abstract
idea into a “practical application,” as that phrase is used in the 2019 Revised
Guidance.4

4 The 2019 Revised Guidance references MPEP § 2106.05(a)–(c) and (e) in
describing the considerations that are indicative that an additional element or
combination of elements integrates the judicial exception, e.g., the abstract
idea, into a practical application. 2019 Revised Guidance, 84 Fed. Reg.
at 55. If the recited judicial exception is integrated into a practical
Appeal 2019-001378
Application 13/493,390

13
Appellant argues that the claims cannot be properly classified as an
abstract idea because “the claims recite several features that must necessarily
be performed by a computer in a computer network” (Appeal Br. 7). Yet,
the mere fact that claim 1 requires a computer is not a persuasive reason to
argue that the claim is not directed to an abstract idea. Indeed, a
substantially similar argument was expressly rejected by the Court in Alice.
Thus, although the claimed invention in Alice involved a computer system
acting as a third-party intermediary between two parties: “As stipulated, the
claimed method requires the use of a computer to create electronic records,
track multiple transactions, and issue simultaneous instructions; in other
words, ‘[t]he computer is itself the intermediary,”’ Alice Corp., 573 U.S.
at 224, the Court held that “the claims at issue amount to ‘nothing
significantly more’ than an instruction to apply the abstract idea of
intermediated settlement using some unspecified, generic computer.” Id.
at 225–26. See also In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607,
611 (Fed. Cir. 2016) (“[N]ot every claim that recites concrete, tangible
components escapes the reach of the abstract-idea inquiry.”). Although “a
method that can be performed by human thought alone is merely an abstract
idea and is not patent-eligible under § 101,” CyberSource, 654 F.3d at 1373,
it does not automatically follow that methods that arguably cannot be
performed entirely in the human mind or manually, using pen and paper, are,
therefore, not directed to abstract ideas.
We also are not persuaded by Appellant’s argument that the pending
claims are analogous to those held patent eligible in DDR Holdings (Appeal

application, as determined under one or more of these MPEP sections, the
claim is not “directed to” the judicial exception.
Appeal 2019-001378
Application 13/493,390

14
Br. 11–14; see also Reply Br. 5–6). There, the claims were directed to
retaining website visitors, and in particular to a system that modified the
conventional web browsing experience by directing a user of a host website,
on clicking an advertisement, to a “store within a store” on the host website,
rather than to the advertiser’s third-party website. DDR Holdings, 773 F.3d
at 1257–58. The court determined that “the claims address a business
challenge (retaining website visitors) [that] is a challenge particular to the
Internet.” Id. at 1257. The court also determined that the invention was
“necessarily rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer networks,” and that the claimed
invention did not simply use computers to serve a conventional business
purpose. Id. Rather, there was a change to the routine, conventional
functioning of Internet hyperlink protocol. Id.
Appellant argues here that, as in DDR Holdings, the present claims
are “necessarily rooted in computer technology” because the claims
overcome the problem of accurately quantifying influence (a problem that
Appellant characterizes as “specifically arising in the realm of computer
networks (Appeal Br. 12)) by “allowing the dynamic identification,
scraping, and integration of information from a plurality of network sources
into data structures which are used to determine influence” and, additionally,
“through the use of network source monitoring, detection of relevant
information pertaining to persons for whom influence is determined, and
dynamic updating of level of influence metrics based on new information”
(id. at 13). Yet, unlike the situation in DDR Holdings, where the computer
network, rather than operating in its normal, expected manner (i.e., by
sending the website visitor to the third party website connected to the
Appeal 2019-001378
Application 13/493,390

15
clicked advertisement), generates and directs the visitor to a hybrid web
page on the host website — a 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 — there is no indication here
that the claimed “one or more computing devices” are used other than in
their normal, expected, and routine manner for receiving, storing, and
processing information.
We also are not persuaded that identifying and accurately quantifying
the level of influence of a particular person or group of persons is a
challenge specifically arising in the realm of computer networks; instead, it
is a business problem that existed before, and still exists, outside the realm
of computers and the Internet. It has long been known to be beneficial in
any undertaking, and particularly in business ventures, to identify and
communicate with individuals and groups who are in a position to exercise
influence — in fact, Appellant, in the Background section of the
Specification, concedes as much (see Spec. ¶ 3 (disclosing that in
conducting business operations, a failure to recognize and communicate with
those who wield influence can lead to disastrous consequences)).
Appellant’s contention that claim 1 is patent eligible because it recites
a patent-eligible transformation of data into a new and useful purpose
(Appeal Br. 14–17; see also Reply Br. 6) is similarly unpersuasive. The
Federal Circuit has recognized that the machine-or-transformation test,5

5 Under the machine-or-transformation test, a claimed process is patent
eligible if: (1) it is tied to a particular machine or apparatus, or (2) it
transforms a particular article into a different state or thing. In re Bilski,
545 F.3d 943, 954 (Fed. Cir. 2008), aff’d Bilski v. Kappos, 561 U.S. 593
(2010).
Appeal 2019-001378
Application 13/493,390

16
although not the only test, “can provide a ‘useful clue’” to patent eligibility
under the Mayo/Alice framework. Ultramercial, Inc. v. Hulu, LLC,
772 F.3d 709, 716 (Fed. Cir. 2014) (quoting Bilski v. Kappos, 561 U.S. 593,
594 (2010)). As such, satisfying either prong of that test may integrate an
abstract idea into a practical application. See 2019 Revised Guidance,
84 Fed. Reg. at 55 nn.27–28 (citing MPEP § 2106.05(b), (c)).
Appellant argues here that the claims recite the transformation of
biographical information relevant to members of a group of persons, which
is stored on network sources, into a composite level of influence for the
group of persons, and that this transformation effects a change in the
function of the data, i.e., the biographical information is designed to provide
information about a particular person while the composite level of influence
data reflects the influence exerted by a group of which the person is a
member (Appeal Br. 15). But, this alleged “transformation” is, at best,
merely a manipulation of data, which is not sufficient to meet the
transformation prong under 35 U.S.C. § 101. See Gottschalk v. Benson,
409 U.S. 63, 71–72 (1972) (a computer based algorithm that merely
transforms data from one form to another is not patent-eligible).
We conclude, for the reasons outlined above, that claim 1 recites a
mental process, i.e., an abstract idea, and that the additional elements recited
in the claim are no more than generic components used as tools to perform
the recited abstract idea. As such, they do not integrate the abstract idea into
a practical application. See Alice Corp., 573 U.S. at 223–24 (“[W]holly
generic computer implementation is not generally the sort of ‘additional
featur[e]’ that provides any ‘practical assurance that the process is more than
a drafting effort designed to monopolize the [abstract idea] itself.’” (quoting
Appeal 2019-001378
Application 13/493,390

17
Mayo, 566 U.S. at 77)). Accordingly, we agree with the Examiner that
claim 1 is directed to an abstract idea.
Step Two of the Mayo/Alice Framework (2019 Revised Guidance, Step 2B)
Having determined under step one of the Mayo/Alice framework that
claim 1 is directed to an abstract idea, we next consider under Step 2B of the
2019 Revised Guidance, the second step of the Mayo/Alice framework,
whether claim 1 includes additional elements or a combination of elements
that provides an “inventive concept,” i.e., whether an additional element or
combination of elements adds specific limitations beyond the judicial
exception that are not “well-understood, routine, conventional activity” in
the field (which is indicative that an inventive concept is present) or simply
appends well-understood, routine, conventional activities previously known
to the industry to the judicial exception. 2019 Revised Guidance,
84 Fed. Reg. at 56.
Specifically referencing steps (a), (e), and (f), as recited in claim 1,
Appellant argues that the § 101 rejection cannot be sustained because the
Examiner has failed to provide “any support for the conventionality or
routineness of these steps, as required by Berkheimer and the Berkheimer
Memo” (Appeal Br. 7–8; see also Reply Br. 3–5).
There is no dispute that an examiner must show — with supporting
facts — that certain claim elements are well-understood, routine, and
conventional when the examiner has made such a finding. See Berkheimer
v. HP, Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018) (holding that the question
of whether a claim element or combination of elements is well-understood,
routine, and conventional to a skilled artisan in the relevant field is a
question of fact). Indeed, shortly after the Federal Circuit issued its decision
Appeal 2019-001378
Application 13/493,390

18
in Berkheimer, the USPTO issued an April 19, 2018 Memorandum to the
Patent Examining Corps entitled, “Changes in Examination Procedure
Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility
Decision (Berkheimer v. HP, Inc.)” (i.e., the “Berkheimer Memo” that
Appellant references),6 in which the Office revised the procedures set forth
MPEP § 2106.07(a) (Formulating a Rejection For Lack of Subject Matter
Eligibility) and § 2106.07(b) (Evaluating Applicant’s Response). The Patent
Examining Corps was, thus, instructed that “in a step 2B analysis [i.e., an
analysis under step two of the Mayo/Alice framework], 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 with
one or more of” (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)”; and (4) a “statement that the examiner is taking
official notice of the well-understood, routine, conventional nature of the
additional element(s).” Berkheimer Memo at 3–4.
Appellant contends here that the Examiner must provide evidentiary
support for the conventionality or routineness of steps (a), (e), and (f), as
recited in claim 1 (Appeal Br. 11). But, that argument fails at least because

6 Available at https://www.uspto.gov/sites/default/files/documents/memo-
berkheimer-20180419.PDF.
Appeal 2019-001378
Application 13/493,390

19
it is not commensurate with the more limited scope of the Examiner’s
findings.
Appellant references steps (a), (e), and (f), as recited in claim 1. Yet,
these steps are part of the abstract idea itself; they are not additional
elements to be considered when determining whether claim 1 includes
additional elements or a combination of elements that is sufficient to amount
to significantly more than the judicial exception.
It could not be clearer from Alice, that under step two of the
Mayo/Alice framework, the elements of each claim are considered both
individually and “as an ordered combination” to determine whether the
additional elements, i.e., the elements other than the abstract idea itself,
“transform the nature of the claim” into a patent-eligible application.
Alice Corp., 573 U.S. at 217 (internal quotations and citation omitted);
see Mayo, 566 U.S. at 72–73 (requiring that “a process that focuses upon the
use of a natural law also contain other elements or a combination of
elements, sometimes referred to as an ‘inventive concept,’ sufficient to
ensure that the patent in practice amounts to significantly more than a patent
upon the natural law itself” (emphasis added) (internal citation omitted)).
In other words, the inventive concept under step two of the Mayo/Alice
framework cannot be the abstract idea itself:
It is clear from Mayo that the “inventive concept” cannot be the
abstract idea itself, and Berkheimer . . . leave[s] untouched the
numerous cases from this court which have held claims ineligible
because the only alleged “inventive concept” is the abstract idea.
Berkheimer v. HP, Inc., 890 F.3d 1369, 1374 (Fed. Cir. 2018) (Moore, J.,
concurring); see also BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281,
1290 (Fed. Cir. 2018) (“It has been clear since Alice that a claimed
Appeal 2019-001378
Application 13/493,390

20
invention’s use of the ineligible concept to which it is directed cannot supply
the inventive concept that renders the invention ‘significantly more’ than
that ineligible concept.”) (internal citation omitted).
The Examiner determined here, and we agree, that the only claim
elements beyond the abstract idea are the “one or more computing devices”;
“at least one data structure”; and “a plurality of network sources,” i.e.,
generic computer components used to perform generic computer functions
(Non-Final Act. 11; see also id. at 5–6) — a determination amply supported
by, and fully consistent with the Specification (see, e.g., Spec. ¶¶ 53–61).7
We are not persuaded, on the present record, that the Examiner erred
in rejecting independent claim 1 under 35 U.S.C. § 101. Therefore, we
sustain the Examiner’s rejection of independent claim 1, and claims 2–30,
which fall with claim 1.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–30 101 Eligibility 1–30

7 The Berkheimer Memo, as described above, expressly directs that an
examiner may support the position that an additional element (or
combination of elements) is well-understood, routine or conventional with
“[a] citation to an express statement in the specification . . . that
demonstrates the well-understood, routine, conventional nature of the
additional element(s)” (id. at 3).
Appeal 2019-001378
Application 13/493,390

21
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.
§ 1.136(a)(1)(iv).

AFFIRMED