Rennison, Earl F. et al.

Patent Trials and Appeals Board

Jan 22, 2020

13872925 - (D) (P.T.A.B. Jan. 22, 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.
13/872,925 04/29/2013 Earl F. Rennison 23424-19341 US 2080
758 7590 01/22/2020
FENWICK & WEST LLP
SILICON VALLEY CENTER
801 CALIFORNIA STREET
MOUNTAIN VIEW, CA 94041
EXAMINER
BAHL, SANGEETA
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
01/22/2020 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):
PTOC@Fenwick.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte EARL F. RENNISON, PRAVEEN ARASADA, and JUN LUO
__________________
Appeal 2019-003296
Application 13/872,925
Technology Center 3600
_________________

Before JAMES B. ARPIN, PHILLIP A. BENNETT, and
IFTIKHAR AHMED, Administrative Patent Judges.

ARPIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
non-final rejection of claims 1, 3–15, 17–28, 35, and 36, all of the pending
claims. Non-Final Act. 2.2 Claims 2 and 16 are cancelled, and claims 29–34
are withdrawn. Id. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 “Appellant” here refers to “applicant” as defined in 37 C.F.R. § 1.42.
Appellant identifies the real party-in-interest as Monster Worldwide, Inc.
Appeal Br. 2.
2 In this Decision, we refer to Appellant’s Appeal Brief (“Appeal Br.,” filed
September 19, 2018) and Reply Brief (“Reply Br.,” filed March 22, 2019);
the Non-Final Office Action (“Non-Final Act.,” mailed April 19, 2018); the
Examiner’s Answer (“Ans.,” mailed January 24, 2019); and the originally-
filed Specification (“Spec.,” filed April 29, 2013). Rather than repeat the
Examiner’s findings and determinations and Appellant’s contentions in their
entirety, we refer to these documents.
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STATEMENT OF THE CASE
Appellant’s claimed methods relate “generally to identifying
educational courses for a user of a job search application.” Spec. ¶ 1. In
particular, the claimed methods are “for identifying gaps in a user’s resume,
targeting educational courses to the user, and ranking the user’s resume.” Id.
¶ 22.
As noted above, claims 1, 3–15, 17–28, 35, and 36 are pending.3
Claims 1 and 15 are independent. Appeal Br. 22–23 (claim 1), 26–27
(claim 15) (Claims App.). Claims 3–14, 35, and 36 depend directly or
indirectly from claim 1; and claims 17–28 depend directly or indirectly from
claim 15. Id. at 23–31.
Claim 1, with disputed limitations emphasized, is representative.
1. A computer-implemented method for identifying gaps in a
resume, the method comprising:
storing in a computer system a skill knowledge base
comprising a collection of skills;
storing in the computer system a requisition knowledge base
comprising a collection of job requisitions, each job requisition
associated with one or more skills in the skill knowledge base;
storing in the computer system a resume knowledge base
comprising a collection of resumes, each resume associated with
one or more skills in the skill knowledge base;
storing in the resume knowledge base a resume of a user
received into the computer system, the resume associated with
one or more skills in the skill knowledge base that match resume
skills in the resume;
receiving an input query from the user;

3 We note that, in various papers, the Examiner and Appellant misstate the
claims at issue. See, e.g., Appeal Br. 6; Ans. 3; Reply Br. 2.
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conducting a search of the requisition knowledge base for job
requisitions using the input query as input to the search;
identifying, by the search of the requisition knowledge base,
a set of job requisitions matching the input query;
identifying, from each of the job requisitions of the matching
set, other skills listed in the job requisition that are desired in
users applying for a job;
assigning a distinct weight to each of the other skills based on
a frequency of occurrence of the other skill across the collection
of job requisitions in the requisition knowledge base;
selecting, based on the assigned weights, other skills from
each of the job requisitions in the matching set to be designated
as required skills for the input query;
conducting a search of the resume knowledge base using the
required skills as input to the search;
identifying, from results of the search, additional skills of
other users listed in resumes that are subsumed by the required
skills, the additional skills being designated as implied required
skills for the input query;
assigning a distinct weight to each of the implied required
skills based on a frequency of occurrence of the implied required
skills in the collection of resumes in the resume knowledge base;
computing a score, by a processor of the computer system, for
each of the implied required skills based on the weights assigned
to the implied required skills and the weights assigned to the
required skills;
selecting, based on the scores, a subset of the implied required
skills;
comparing the resume skills of the user with the subset of
implied required skills;
identifying, based on the comparison, gap skills of the user
that are skills present in the subset of implied required skills and
absent from the resume skills of the user; and
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providing for display to the user the gap skills, which indicate
what skills the user is missing and may need to acquire to be hired
for a job matching the user’s input query.
Id. at 22–23 (emphases added).
REFERENCES AND REJECTIONS
The Examiner relies upon the following references in rejecting the
pending claims:
Name4 Number Pub’d/Issued Filed
Pennington US 2010/0233663 A1 Sept. 16, 2010 Mar. 8, 2010
Rennison ’125 US 7,827,125 B1 Nov. 2, 2010 June 1, 2007
Rennison ’060 US 7,836,060 B1 Nov. 16, 2010 Apr. 13, 2007
Sweeney US 2012/0143880 A1 June 7, 2012 Dec. 30, 2011
Zhu US 2012/0232944 A1 Sept. 13, 2012 Mar. 11, 2011
Megargel US 2012/0264098 A1 Oct. 18, 2012 Apr. 13, 2011
The Examiner rejects claims 1, 3–15, 17–28, 35, and 36 under
35 U.S.C. § 101 as directed to patent ineligible subject matter. Non-Final
Act. 3–7. The Examiner also rejects claims 1, 5, 6, 9–15, 19, 20, and 23–28
under 35 U.S.C. § 103 as obvious over the combined teachings of
Rennison ’125 and Pennington (id. at 7–15); claims 7 and 21 under
35 U.S.C. § 103 as obvious over the combined teachings of Rennison ’125,
Pennington, and Zhu (id. at 15–16); claims 3, 4, 17, and 18 under 35 U.S.C.
§ 103 as obvious over the combined teachings of Rennison ’125,
Pennington, and Megargel (id. at 16–18); claims 8 and 22 under 35 U.S.C.
§ 103 as obvious over the combined teachings of Rennison ’125,
Pennington, and Sweeney (id. at 19); claim 35 under 35 U.S.C. § 103 as

4 All reference citations are to the first named inventor only.
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obvious over the combined teachings of Rennison ’125, Pennington, and
Rennison ’060 (id. at 19–20); and claim 36 under 35 U.S.C. § 103 as
obvious over the combined teachings of Rennison ’125, Pennington,
Rennison ’060, and Sweeney (id. at 21–22).5
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(iv). For the
reasons given below, we reverse the rejections of the pending claims.
ANALYSIS
I. Patent Eligible Claims
A. Section 101
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to
include implicit exceptions: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573
U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-part framework, described in Mayo and Alice.
Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 75–77 (2012)). In accordance with that framework, we first

5 The Examiner also rejected claims 1, 3–15, 17–28, 35, and 36 under 35
U.S.C. § 112, ¶ 2, as indefinite (Non-Final Act. 2–3), but withdrew that
rejection (Ans. 3).
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determine what concept the claim is “directed to.” See Alice, 573 U.S. at
219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”). According to the Court, concepts determined to be abstract
ideas and, thus, patent ineligible, include certain methods of organizing
human activity, such as fundamental economic practices (Alice, 573 U.S. at
219–20; Bilski, 561 U.S. at 611); mathematical formulas (Parker v. Flook,
437 U.S. 584, 594–95 (1978)); and mental processes (Gottschalk v. Benson,
409 U.S. 63, 67 (1972)).
In Diamond v. Diehr, the claim at issue recited a mathematical
formula, but the Court held that “a claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diamond v. Diehr, 450 U.S. 175, 187 (1981).
Having said that, the Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . . is not accorded the protection
of our patent laws, . . . and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment.” Id. at 191 (citing Benson and Flook). Nevertheless, the
Court noted that “[i]t is now commonplace that an application of a law of
nature or mathematical formula to a known structure or process may well be
deserving of patent protection.” Id. at 187; see also BASCOM Glob. Internet
Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1352 (Fed. Cir. 2016)
(Even if the individual components were known, “an inventive concept can
be found in the ordered combination of claim limitations that transform the
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abstract idea of filtering content into a particular, practical application of
that abstract idea” (emphasis added).).
If the claim is “directed to” an abstract idea, we next “must examine
the elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted). “A
claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo,
566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention.” Id.
B. Office Patent Eligibility Guidance
In an effort to achieve clarity and consistency in how the Office
applies the Court’s two-part test, the Office published revised guidance on
the application of § 101. 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019).6 In Step One of our analysis, we
look to see whether the claims, as written, fall within one of the four
statutory categories identified in § 101. Id. at 53 (“Examiners should
determine whether a claim satisfies the criteria for subject matter eligibility
by evaluating the claim in accordance with the criteria discussed in

6 “All USPTO personnel are, as a matter of internal agency management,
expected to follow the guidance.” 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. at 51; see also October 2019 Update:
Subject Matter Eligibility, 2 (Oct. 17, 2019) (“Note, the feedback received
was primarily directed to examination procedures and, accordingly, this
update focuses on clarifying practice for patent examiners. However, all
USPTO personnel are expected to follow the guidance.”).
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MPEP7 § 2106, i.e., whether the claim is to a statutory category (Step 1) and
the Alice/Mayo test for judicial exceptions (Steps 2A and 2B)”) (emphasis
added).
Under the guidance, we then look to whether the claim recites:
(1) Step 2A – Prong One: any judicial exceptions, including
certain groupings of abstract ideas (i.e., mathematical concepts,
certain methods of organizing human activity, such as a
fundamental economic practice, or mental processes); and
(2) Step 2A – Prong Two: additional elements that integrate the
judicial exception into a practical application (see MPEP
§§ 2106.05(a)–(c), (e)–(h)).
See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg.
at 54–55 (“Revised Step 2A”).
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, conventional” in the field (see
MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See id. at 56 (“Step 2B: If the Claim Is Directed to a Judicial Exception,
Evaluate Whether the Claim Provides an Inventive Concept.”).

7 All Manual of Patent Examining Procedure (“MPEP”) citations herein are
to MPEP, Rev. 08.2017, January 2018.
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C. Step One – Claims Directed to Statutory Categories
Appellant’s independent claims 1 and 15 and their associated
dependent claims are directed to methods (i.e., a “process”). Non-Final
Act. 3; see Appeal Br. 22–31 (Claims App.). Thus, the pending claims are
directed to a recognized statutory category.
D. Two-Part Alice/Mayo Analysis
1. Independent Claims 1 and 15
a. Step 2A, Prong One – Claims Recite Abstract Ideas
Applying the first part of the Alice/Mayo analysis (Step 2A), the
Examiner determines claim 1 recites mental processes and certain methods
of organizing human activity. Ans. 4; see October 2019 Update: Subject
Matter Eligibility at 2 (“Other claims may recite multiple abstract ideas,
which may fall in the same or different groupings, or multiple laws of
nature. In these cases, examiners should not parse the claim.”). For the
reasons given below, we agree.
Claim 1 broadly recites the steps of (1) collecting job skills (“storing
. . . a skill knowledge base comprising a collection of skills”); (2) collecting
job requisition skills corresponding to the collected job skills (“storing . . . a
requisition knowledge base comprising a collection of job requisitions, each
job requisition associated with one or more skills in the skill knowledge
base”); (3) collecting resumes comprising candidates’ skills corresponding
to collected job skills (“storing . . . a resume knowledge base comprising a
collection of resumes, each resume associated with one or more skills in the
skill knowledge base”); (4) adding a received resume to the collected
resumes, the received resume comprising a candidate’s skills corresponding
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to collected job skills (“storing in the resume knowledge base a resume of a
user received into the computer system, the resume associated with one or
more skills in the skill knowledge base that match resume skills in the
resume”); (5) receiving a query (“receiving an input query from the user”);
(6) searching for and identifying job requisitions based on the query
(“conducting a search of the requisition knowledge base for job requisitions
using the input query as input to the search” and “identifying, by the search
of the requisition knowledge base, a set of job requisitions matching the
input query”); (7) identifying desired or undesired skills other than required
skills8 from the identified job requisitions (“identifying, from each of the job
requisitions of the matching set, other skills listed in the job requisition that
are desired in users applying for a job”); (8) assigning a weight to each of
the desired skills based on their frequency of occurrence in the collected job
requisitions (“assigning a distinct weight to each of the other skills based on
a frequency of occurrence of the other skill across the collection of job
requisitions in the requisition knowledge base”); (9) selecting desired skills
based on their assigned weights and adding them to the required skills
(“selecting, based on the assigned weights, other skills from each of the job
requisitions in the matching set to be designated as required skills for the
input query”); (10) searching the collected resumes using the required skills
(“conducting a search of the resume knowledge base using the required
skills as input to the search”); (11) identifying additional skills in the

8 The Examiner interprets “other skills” as undesired or desired skills, i.e.,
skills other than required skills. Non-Final Act. 9. Appellant does not
contest this interpretation. For purposes of this Decision, we adopt this
interpretation.
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collected resumes sought by other users that are subsumed in the required
skills and designating those additional skills as “implied required skills”
(“identifying, from results of the search, additional skills of other users listed
in resumes that are subsumed by the required skills, the additional skills
being designated as implied required skills for the input query”);
(12) assigning a weight to each of the “implied required skills” based on a
frequency of their occurrence in the collected resumes (“assigning a distinct
weight to each of the implied required skills based on a frequency of
occurrence of the implied required skills in the collection of resumes in the
resume knowledge base”); (13) calculating a score based on the weights
assigned to the “implied required” and the required skills (“computing a
score . . . for each of the implied required skills based on the weights
assigned to the implied required skills and the weights assigned to the
required skills”); (14) selecting a subset of the “implied required skills,” i.e.,
subset skills (“selecting, based on the scores, a subset of the implied required
skills”); (15) comparing the skills in the received resume to the subset skills
(“comparing the resume skills of the user with the subset of implied required
skills”); (16) identifying subset skills missing from the resume skills, i.e.,
gap skills (“identifying, based on the comparison, gap skills of the user that
are skills present in the subset of implied required skills and absent from the
resume skills of the user”); and (17) displaying the gap skills (“providing for
display to the user the gap skills, which indicate what skills the user is
missing and may need to acquire to be hired for a job matching the user’s
input query”). Appeal Br. 22–23 (Claims App.); see Final Act. 4. Thus,
claim 1 recites collecting sets of employee and job-related information,
analyzing the information sets, comparing the analyzed information sets, and
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displaying the results of the comparisons. See Electric Power Grp., LLC v.
Alstrom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) (“collecting information,
analyzing it, and displaying certain results of the collection and analysis” is
not patent eligible); see also Cellspin Soft, Inc. v. Fitbit, Inc., 927 F.3d 1306,
1319 (Fed. Cir. 2019) (citing Electric Power Grp. with approval).
Independent claim 15 recites substantially similar limitations. Appeal
Br. 26–27 (Claims App.).
Appellant contends the claims do not recite a method of organizing
human activities identified in the 2019 Revised Patent Subject Matter
Eligibility Guidance (84 Fed. Reg. at 52). Reply Br. 3. However, claim 1’s
limitations, under their broadest reasonable interpretation, recite providing
methods for evaluating resumes in view of job requisitions and job skills
(e.g., making hiring-related decisions), which are fundamental economic
practices and “commercial or legal interactions (including agreements in the
form of contracts [and] business relations); [and] managing personal
behavior or relationships or interactions between people (including . . .
following rules or instructions).” See Spec. ¶¶ 1–5, 22; 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. at 52 n.13 (citing In re
Ferguson, 558 F.3d 1359, 1364 (Fed Cir. 2009) (holding methods “directed
to organizing business or legal relationships in the structuring of a sales
force (or marketing company)” to be ineligible)). Thus, we determine the
claims recite “certain methods of organizing human activities.”9 Ans. 4.

9 See October 2019 Update: Subject Matter Eligibility at 5 (“Finally, the
sub-groupings encompass both activity of a single person (for example, a
person following a set of instructions or a person signing a contract online)
and activity that involves multiple people (such as a commercial interaction),
and thus, certain activity between a person and a computer (for example a
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Appellant also contends that the claims do not recite a mental process
that can be “performed in the mind by human observation, evaluation,
judgement or opinion.” Reply Br. 3. In particular, Appellant contends
“[t]he recitation of data processing techniques implemented to process vast
amounts of data associated with user’s resumes and job position within an
online environment precludes an interpretation of the claims where the
elements are performed in the human mind.” Id. However, the claims do
not recite that “vast amounts of data” are associated with either user’s
resumes or job positions, or both. E.g., Appeal Br. 22–23 (Claims App.).
Moreover,
Claims can recite a mental process even if they are claimed as
being performed on a computer. Suggestions were made that an
examiner should determine that a claim, when given its broadest
reasonable interpretation, recites a mental process only when the
claim is performed entirely in the human mind. After
consideration, this suggestion will not be adopted, and the
current “mental processes” grouping in the 2019 PEG will be
retained, since it is consistent with current case law. The courts
have found claims requiring a generic computer or nominally
reciting a generic computer may still recite a mental process even
though the claim limitations are not performed entirely in the
human mind.
October 2019 Update: Subject Matter Eligibility at 8. Here, we determine
that, although the methods are intended to be performed on a computer, the
recited methods, as a practical matter, could be performed in the human
mind, or by a human using a pen and paper. See id. at 9 (citing CyberSource
Corp. v. Retail Decisions, Inc. 654 F.3d 1366, 1372, 1375–76 (Fed. Cir.

method of anonymous loan shopping that a person conducts using a mobile
phone) may fall within the ‘certain methods of organizing human activity’
grouping.”).
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2011) (distinguishing Research Corp. Techs. v. Microsoft Corp., 627 F.3d
859 (Fed. Cir. 2010), and SiRF Tech., Inc. v. Int'l Trade Comm’n, 601 F.3d
1319 (Fed. Cir. 2010))). Thus, we determine the claims also recite “mental
processes.” Ans. 4.
b. Step 2A, Prong Two – Abstract Ideas Not Integrated Into
Practical Application
As the Office has explained,
the evaluation of Prong Two requires the use of the
considerations (e.g. improving technology, effecting a particular
treatment or prophylaxis, implementing with a particular
machine, etc.) identified by the Supreme Court and the Federal
Circuit, to ensure that the claim as a whole “integrates [the]
judicial exception into a practical application [that] will 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.” These considerations are set forth in the 2019 PEG,
MPEP 2106.05(a) through (c), and MPEP 2106.05(e) through
(h). Note, a specific way of achieving a result is not a stand-
alone consideration in Step 2A Prong Two. However, the
specificity of the claim limitations is relevant to the evaluation
of several considerations including the use of a particular
machine, particular transformation and whether the limitations
are mere instructions to apply an exception.
October 2019 Update: Subject Matter Eligibility at 11. Appellant contends,
however:
Examiner merely concludes that because there are generic
computer components, there are just mere instructions to apply
the exception using a generic computer. See [Ans. 4]. However,
Examiner fails to perform any actual analysis of any of the
additional claim limitations beyond the computer components
and the few limitations noted as the abstract idea.
Reply Br. 4. We disagree.
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The Examiner finds:
This judicial exception is not integrated into a practical
application. In particular, the claim only recites the additional
elements–computer system; [“]computing a score, by a processor
of the computing system”. The processor; computing system,
display in steps are recited at a high-level of generality (i.e., as a
generic processor performing a generic computer function of
receiving and searching and displaying data) such that it amounts
to no more than mere instructions to apply the exception using a
generic computer component. Accordingly, this additional
element does not integrate the abstract idea into a practical
application because it does not impose any meaningful limits on
practicing the abstract idea. The claim is directed to an abstract
idea.
Ans. 4; see Non-Final Act. 5 (“The processor system in the instant
application merely receives, processes and stores data. The claims do not
recite an improvement to another technology or technical field, an
improvement to the functioning of the computer itself, or meaningful
limitations beyond generally linking the use of an abstract idea to a
particular technological environment.”). Moreover, the Examiner finds:
Taking the additional claimed elements individually and in
combination, the computer components at each step of the
process perform purely generic computer functions. Viewed as
a whole, the claims do not purport to improve the functioning of
the computer itself, or to improve any other technology or
technical field. Use of an unspecified, generic computer does not
transform an abstract idea into a patent-eligible invention. Thus,
the claim does not amount to significantly more than the abstract
idea itself. Further, claims to a system and computer-readable
storage medium are held ineligible for the same reason, e.g., the
generically-recited computers add nothing of substance to the
underlying abstract idea.10

10 We acknowledge that some of the considerations at Step 2A, Prong Two,
properly may be evaluated under the second part of Alice/Mayo analysis
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Non-Final Act. 6.
As the Examiner found, the claims do not recite the particular
technology employed in the recited methods, except in the most general
terms. Id. at 5–6; Ans. 4; see Spec. ¶¶ 37 (known computer systems), 38
(known system components), 52 (typically performed on-line searches), 62
(known nested search techniques), 121 (known collections of resumes), 132
(known algorithmic descriptions), 134 (“general-purpose computing
devices”). The methods of claims 1 and 15 merely invoke generic hardware
and generic data collecting, storage, retrieval, and display techniques, and
the recited methods are not linked to any particular machine (MPEP
§ 2106.05(b)) and merely apply generic computer hardware and software to
facilitate the solution to a business problem (MPEP § 2106.05(f)). Non-
Final Act. 5–6; Ans. 4; see 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. at 55 nn.27, 30.
In view of Appellant’s claim recitations and Specification and
consistent with the Examiner’s determinations, we are persuaded the
rejected claims do not recite:
(i) an improvement to the functioning of a computer;
(ii) an improvement to another technology or technical field;
(iii) an application of the abstract idea with, or by use of, a
particular machine;
(iv) a transformation or reduction of a particular article to a
different state or thing; or
(v) other meaningful limitations beyond generally linking the

(Step 2B of the Office’s guidance). For purposes of maintaining consistent
treatment within the Office, we evaluate those considerations under first part
of the Alice/Mayo analysis (Step 2A of the Office’s guidance). See 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. at 55
nn.25, 27–32.
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use of the abstract idea to a particular technological
environment.
See MPEP §§ 2106.05(a)–(c), (e)–(h). Thus, we conclude that the pending
claims do not integrate the judicial exceptions into a practical application
and that the claims are directed to abstract ideas.
c. Step 2B – Significantly More Than the Abstract Ideas
Because we determine that the claims are directed to abstract ideas
and do not integrate those abstract ideas into a practical application, we now
consider whether the claims include additional limitations, such that the
claims amount to significantly more than the abstract ideas. As noted above,
applying second part of the Alice/Mayo analysis, the Examiner concludes:
The claim does not include additional elements that are sufficient
to amount to significantly more than the judicial exception. As
discussed above with respect to integration of the abstract idea
into a practical application, the additional element of using a
processor, computer system and display to perform both the
sending and receiving steps amounts to no more than mere
instructions to apply the exception using a generic computer
component. Mere instructions to apply an exception using a
generic computer component cannot provide an inventive
concept. The claims are not patent eligible.
Ans. 4. Appellant contends:
With regards to step 2B, the additional limitations of the
claims amount to significantly more than the alleged abstract. As
described above, Examiner fails to perform any actual analysis
of any of the additional claim limitations beyond the computer
components and the few limitations noted as the abstract idea.
These additional limitations do not merely recite well-
understood and conventional activities for the reasons explained
in the Appeal Brief. If Examiner disagrees with Appellant’s
arguments, Examiner is required to provide evidence according
to the updates to the 2019 Guidance in view of Berkheimer.
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Reply Br. 5 (emphasis added). In particular, Appellant contends
the Berkheimer [Memorandum] states that 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 the following:
1. A citation to an express statement in the specification or
to a statement made by an applicant during prosecution
2. A citation to one or more of the court decisions
discussed in MPEP § 2106.05(d)(II)
3. A citation to a publication that demonstrates the well-
understood, routine, conventional nature of the additional
element(s).
4. A statement that the examiner is taking official notice
of the well-understood, routine, conventional nature of the
additional element(s).
Appeal Br. 12 (citing Changes in Examination Procedure Pertaining to
Subject Matter Eligibility, Recent Subject Matter Eligibility Decision
(Berkheimer v. HP., Inc.), 3–4 (Apr. 19, 2018) (the “Berkheimer
Memorandum”)); see October 2019 Update: Subject Matter Eligibility at 16
(“For instance, when the examiner has concluded that certain claim elements
recite well-understood, routine, conventional activity in the relevant field,
the examiner must expressly support such a rejection in writing with one of
the four options specified in Section III.A. of the Berkheimer
Memorandum.”). We agree with Appellant.
The Examiner’s reliance on the determination that the claims fail to
integrate the recited abstract ideas into a practical application is not
sufficient to support the finding that the claim limitations, considered
individually and as a ordered combination, are well-known, routine, and
conventional and do not amount to significantly more than the abstract ideas.
See Ans. 4–5. We are persuaded that the Examiner has not adequately
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addressed the requirements of the Berkheimer Memorandum in this second
part of the patent eligibility analysis. Berkheimer v. HP, Inc., 881 F.3d
1360, 1368 (Fed. Cir. 2018) (“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. Any fact, such as
this one, that is pertinent to the invalidity conclusion must be proven by
clear and convincing evidence.”). Thus, we are persuaded, on this record,
that the Examiner erred in determining that independent claims 1 and 15 are
patent ineligible, and we do not sustain that rejection.
2. Dependent Claims 3–14, 17–28, 35, and 36
The Examiner determines that dependent claims 3–14, 17–28, 35, and
36 also are directed to abstract ideas and fail to recite significantly more than
the identified abstract ideas. Non-Final Act. 6. The Examiner, however,
does not find the dependent claims patentably ineligible separately from
their base claims, independent claims 1 and 15. Id.; see Appeal Br. 13;
Ans. 3–4. Therefore, for the reasons given above, we also do not sustain the
patent ineligibility rejection of the dependent claims.
II. Lack of Obviousness Over Rennison ’125 and Pennington,
Alone or in Combination with Other References
A. Independent Claims 1 and 15
As noted above, the Examiner rejects independent claims 1 and 15
under 35 U.S.C. § 103 as obvious over the combined teachings of
Rennison ’125 and Pennington. Non-Final Act. 8–12. With respect to
claim 1, the Examiner determines that Rennison ’125 teaches or suggests
most of the claim limitations, but the Examiner acknowledges that
Rennison ’125 does not specifically teach,
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identifying, based on the comparison, gaps in a resume;
identifying gap skills/titles of the user that are skills present in
the subset of implied required skills and absent from the resume
skills of the user; and
providing for display to the user the gap skills, which
indicated what skills the user is missing and may need to acquire
to be hired for a job matching the user’s input query.
Id. at 11 (quoting Claim 1) (underlining added by the Examiner)). However,
the Examiner finds that Pennington teaches these claim limitations. Id.
Pennington’s Figure 1 is reproduced below.

Figure 1 depicts a skills competency system configuration. Pennington ¶ 18;
see id. ¶¶ 60–62, 66–67 (describing Fig. 1). The Examiner finds Pennington
teaches
generat[ing] a mapped job gap assessment that comprises
difference job and competency profile elements. The difference
job and competency profile elements identify elements of the
current job and the functional competency definitions and the
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skills inventory functional competency definitions that do not
match. . . . The job and competency mapping logic 126 generates
and displays a job gap assessment for the current [query.] . . . The
job and competency mapping logic 126 generates the current job
and competency training gap 162 for the user 152.
Non-Final Act. 11. In particular, Pennington discloses “[t]he workforce
transformation roadmap 158 may include current job to model job definition
gap 160, a current job and competency training gap 162, and mapped jobs
166.” Pennington ¶ 67.
Pennington further discloses that:
A skills competency tool provides a quick and efficient way to
assess an organization’s workforce capability maturity, and
generate a workforce transformation roadmap. The skills
competency tool provides a way to assess and recommend
modifications to job and competency profiles defined by an
organization.
Pennington, Abstract (emphasis added); see Non-Final Act. 12. The
Examiner concludes that a person of ordinary skill in the art would have had
reason to combine the teachings of Rennison ’125 and Pennington to achieve
the methods recited in claim 1, as well as those recited in claim 15. Non-
Final Act. 12.
Appellant contends “Rennison [’125] does not disclose ‘assigning a
distinct weight to each of the other skills based on a frequency of occurrence
of the other skill across the collection of job requisitions in the requisition
knowledge base.” Reply Br. 6 (emphases added); see Appeal Br. 16. As
noted above, the Examiner interprets “other skills” as “undesired or desired
skills i.e. skills other than required.” Non-Final Act. 9.
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Rennison ’125’s Figure 15b is reproduced below.

Figure 15b depicts “a high-level block diagram illustrating a search query
example showing scoring of a resume degree of match, according to one
embodiment of the [Rennison ’125’s] invention.” Rennison ’125, 10:65–67
(emphasis added). Referring to Figure 15b, the Examiner finds
Rennison ’125 teaches a weight is assigned to each of various skills, such as
C++ programming or JAVA programming. Ans. 6 (citing Rennison ’125,
40:62–41:2). The weight assigned each skill allegedly indicates number of
resumes that listed those skills, i.e., the frequency of occurrence of those
skills in the resumes. Id. (citing Rennison ’125, 43:1–10). A skill may be
identified by its importance based on this weighing. Id. (citing
Rennison ’125, 48:45–58, 49:1–15, 62–65, Table I). Nevertheless, the cited
portions of Rennison ’125 refer to weighting based on occurrences in
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resumes, not occurrences in job requisitions, as recited in claims 1 and 15.11
Thus, we are persuaded that the Examiner fails to demonstrate that
Rennison ’125 teaches or suggests this limitation.
Consequently, we are persuaded that the Examiner erred in rejecting
claims 1 and 15 as rendered obvious over the combined teachings of
Rennison ’125 and Pennington, and we do not sustain the rejection of those
claims.
B. Dependent Claims 3–14, 17–28, 35, and 36
The Examiner determines that dependent claims 3–14, 17–28, 35, and
36 are rendered obvious over the combined teachings of Rennison ’125 and
Pennington, alone or in combination with the teachings of one or more other
references. See Non-Final Act. 12–22. Appellant does not challenge the
obviousness rejections of the dependent claims separately from their base
claims, independent claims 1 and 15. Appeal Br. 18–20; Reply Br. 8–9.
Therefore, for the reasons given above, we also do not sustain the
obviousness rejections of the dependent claims.
DECISIONS
1. The Examiner erred in rejecting claims 1, 3–15, 17–28, 35, and 36 under
35 U.S.C. § 101, as directed to patent ineligible subject matter;
2. The Examiner erred in rejecting claims 1, 3–15, 17–28, 35, and 36 under

11 We note that claim 1 further recites “assigning a distinct weight to each of
the implied required skills based on a frequency of occurrence of the implied
required skills in the collection of resumes in the resume knowledge base.”
Appeal Br. 23 (Claims App.). Unlike the limitation discussed above, this
limitation assigns weights based on frequency of occurrence in resumes,
rather than job requisitions.
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35 U.S.C. § 103, as obvious over the combined teachings of
Rennison ’125 and Pennington, alone or in combination with the
teachings of one or more of Zhu, Megargel, Sweeney, and
Rennison ‘060.
3. Thus, on this record, claims 1, 3–15, 17–28, 35, and 36 are not
unpatentable.
CONCLUSION
We reverse the Examiner’s rejections of claims 1, 3–15, 17–28, 35,
and 36.
In summary:
Claims
Rejected
35 U.S.C. § Basis/References Affirmed Reversed
1, 3–15, 17–
28, 35, 36
101 Eligibility 1, 3–15,
17–28, 35,
36
1, 5, 6, 9–15,
19, 20, 23–28
103 Rennison ’125,
Pennington
1, 5, 6, 9–
15, 19, 20,
23–28
7, 21 103 Rennison ’125,
Pennington, Zhu
7, 21
3, 4, 17, 18 103 Rennison ’125,
Pennington,
Megargel
3, 4, 17, 18
8, 22 103 Rennison ’125,
Pennington,
Sweeney
8, 22
35 103 Rennison ’125,
Pennington,
Rennison ’060
35
36 103 Rennison ’125,
Pennington,
Rennison ’060,
Sweeney
36
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Overall
Outcome
1, 3–15,
17–28, 35,
36

REVERSED