Reso Holdings, Inc.

Patent Trials and Appeals Board

Feb 5, 2020

14206569 - (D) (P.T.A.B. Feb. 5, 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.
14/206,569 03/12/2014 Adam Hiatt 46XK-219506 5920
133759 7590 02/05/2020
Sheppard Mullin Richter & Hampton LLP
650 Town Center Drive, 10th Floor
Costa Mesa, CA 92626
EXAMINER
VETTER, DANIEL
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
02/05/2020 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):
SheppardMullin_Pair@firsttofile.com
dmipdocketing@sheppardmullin.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ADAM HIATT, JOHN PAUL SHAY,
YANN SCHWERMER, and BEN YACO
____________

Appeal 2018-002512
Application 14/206,569
Technology Center 3600
____________

Before STEFAN STAICOVICI, BENJAMIN D. M. WOOD, and
BRADLEY B. BAYAT, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE.
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision in the Final Office Action (dated January 25, 2017, hereinafter
“Final Act.”) rejecting claims 1–13, 15–28, and 30–32.2 We have
jurisdiction over this appeal under 35 U.S.C. § 6(b).

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Reso Holdings, Inc. is identified as the real party in interest
in Appellant’s Appeal Brief (filed July 24, 2017, hereinafter “Appeal Br.”).
Appeal Br. 2.
2 Claims 14 and 29 are canceled. See Appeal Br. 42, 49 (Claims App.).
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SUMMARY OF DECISION
We AFFIRM and enter a NEW GROUND of REJECTION pursuant
to our authority under 37 C.F.R. § 41.50(b).

INVENTION
Appellant’s invention is directed “to a system and method for
automated reservation management.” Spec. para. 1.
Claims 1 and 16 are independent. Claim 16 is illustrative of the
claimed invention and is reproduced below (with reference indicators added
in brackets):
16. A method for facilitating booking of service events based
on a previous vendor location, the method being implemented
in a computer system comprising one or more physical
processors executing one or more computer program
instructions which, when executed, perform the method, the
method comprising:
[i] receiving, at the one or more physical processors, a
user request for a service event of a first service event type for a
user;
[ii] determining, by the one or more physical processors,
a location of a previous vendor that provided a previous service
event for the user;
[iii] selecting, by the one or more physical processors,
based on the location of the previous vendor, a vendor to
provide a first service event of the first service event type for
the user such that the selected vendor is at a location within a
predetermined proximity threshold from the location of
the previous vendor;
[iv] determining, by the one or more physical processors,
scheduling information for the first service event based on a
first calendar associated with the user and a second calendar
associated with the selected vendor, wherein the scheduling
information comprises at least one of a date for the first
service event or a time for the first service event;
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[v] determining, by the one or more physical processors,
a reservation for the first service event with the selected vendor
based on the scheduling information;
[vi] providing, by the one or more physical processors, to
the user, a request to accept the reservation;
[vii] responsive to the user accepting the reservation:
[viii] adding, by the one or more physical processors,
information about the reservation to the first calendar;
[ix] associating, by the one or more physical processors,
first payment information with the reservation for execution of
payment upon completion of the first service event; and
[x] adding, by the one or more physical processors,
information about the reservation to the second calendar;
[xi] receiving, by the one or more physical processors,
from the vendor, an indication that the first service event is
completed;
[xii] executing, by the one or more physical processors,
payment for the first service event based on the completeness
indication and the first payment information;
[xiii] obtaining, by the one or more physical processors,
an indication from the user that the first service event should be
automatically re-booked;
[xiv] predicting, by the one or more physical processors,
at least one of a next date or a next time at which the re-book
the first service event responsive to the obtained indication
from the user that the first service event should be automatically
re-booked; and
[xv] determining, by the one or more physical processors,
a second reservation for the re-booked first service event based
on at least one of the predicted next date or the predicted next
time.

REJECTIONS
I. The Examiner rejects claims 1–13, 15–28, and 30–32 under 35
U.S.C. § 101 as being directed to patent-ineligible subject
matter.
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II. The Examiner provisionally rejects claims 1–13, 15–28, and 30–
32 on the ground of non-statutory double patenting as being
unpatentable over claims 1–20 and 31–34 of copending US
Application No. 14/206,502.
III. The Examiner rejects claims 1, 4–9, 12, 16, 19–24, 27, and 32
under 35 U.S.C. § 103 as being unpatentable over Norton,3
Katz,4 Niessen,5 and Behrens.6
IV. The Examiner rejects claims 2, 3, 17, and 18 under 35 U.S.C.
§ 103 as being unpatentable over Norton, Katz, Niessen,
Behrens, and Hirka.7
V. The Examiner rejects claims 10, 11, 13, 25, 26, and 28 under 35
U.S.C. § 103 as being unpatentable over Norton, Katz, Niessen,
Behrens, and Tavakoli.8
VI. The Examiner rejects claims 15 and 30 under 35 U.S.C. § 103 as
being unpatentable over Norton, Katz, Niessen, Behrens, Hirka,
and Giordano.9
VII. The Examiner rejects claim 31 under 35 U.S.C.
§ 103 as being unpatentable over Norton, Katz, Niessen,
Behrens, and Srimuang.10

3 Norton et al., US 2014/0108121 A1, published Apr. 17, 2014.
4 Katz, US 2007/0083400 A1, published Apr. 12, 2007.
5 Niessen et al., US 2008/0154654 A1, published June 26, 2008.
6 Behrens et al., US 2010/0191552 A1, published July 29, 2010.
7 Hirka et al., US 2011/0127324 A1, published June 2, 2011.
8 Tavakoli et al., US 2014/0052613 A1, published Feb. 20, 2014.
9 Giordano et al., US 2002/0152123 A1, published Oct. 17, 2002.
10 Srimuang, US 2003/0061087 A1, published Mar. 27, 2003.
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ANALYSIS
Rejection I
Section 101 states, “[w]hoever invents or discovers any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof, may obtain a patent therefor, subject to the
conditions and requirements of this title.” 35 U.S.C. § 101. However, the
Supreme Court has “long held that this provision contains an important
implicit exception: “[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 Supreme Court’s two-step framework, described in Mayo
and Alice. See Alice, 573 U.S. at 217–18 (citing Mayo Collaborative Servs.
v. Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with
that framework, we first determine what concept the claim is “directed to.”
Id. at 219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 679 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
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(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n. 7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted). “A
claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. ((alteration in the 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.
The PTO has published revised guidance on the application of § 101.
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (hereinafter “2019 Guidance”). Under Step 2A of that
guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h)).
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Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look, in Step 2B, to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
Appellant does not present separate arguments for the patentability of
independent claims 1 and 16. See Appeal Br. 9–26. Therefore, the
following analysis applies equally to both independent claims 1 and 16.

Claims 1 and 16
Step 1 – Statutory Category
We first determine whether independent claims 1 and 16 recite one or
more of the enumerated statutory classes of subject matter, i.e., process,
machine, manufacture, or composition of matter, eligible for patenting under
35 U.S.C. § 101. Here, independent claims 1 and 16 recite a service booking
system (i.e., a “machine”) and a service booking method (i.e., a “process”),
respectively. See Appeal Br. 38, 44 (Claims App.). Thus, we agree with
Appellant that independent claims 1 and 16 recite recognized statutory
categories under 35 U.S.C. § 101. See id. at 9.

Step 2A, Prong 1 – Recitation of Judicial Exception
We next look to whether independent claims 1 and 16 recite any
judicial exceptions, including certain groupings of abstract ideas, i.e.,
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mathematical concepts, certain methods of organizing human activity, or
mental processes.
In determining that independent claims 1 and 16 are directed to a
judicial exception to patent eligibility, the Examiner determines that the
claims recite “the abstract idea of booking service events for a user based on
various criteria including a previous time and location . . . which is a method
of organizing human activities (because it purports to manage and plan the
future undertakings and calendar scheduling of persons) involving basic
economic principles (e.g., scheduling services, executing payment
transaction[]s]).” Final Act. 4–5. The Examiner explains that claims 1 and
16 are similar to the claims held ineligible in In re Maucorps, 609 F. 2d 481
(CCPA 1979), Intellectual Ventures I LLC v. Capital One Bank (USA),
792 F.3d 1363, 1371 (Fed. Cir. 2015), and FairWarning IP, LLC v. Iatric
Sys., Inc., 839 F.3d 1089, 1098 (Fed. Cir. 2016). Id. at 5.
In response, Appellant asserts that “the Examiner has not analyzed the
claims’ character as a whole, and has made a high level abstraction of the
claims, untethered from their actual language.” Appeal Br. 10 (citing Enfish,
LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016)). According to
Appellant, “[t]he character of the claims, as a whole, is not directed to, nor
recites, excluded subject matter, but is instead directed to a concept
inextricably tied to computer technology and distinct from the types of
concepts found to be abstract.” Id (emphasis added).
We agree with the Examiner that independent claims 1 and 16
“merely describe[] abstract efforts to plan human activities and commercial
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relationships with service providers.” Ans. 4 (emphasis added).11, 12 Such a
description is consistent with The 2019 Guidance, which describes “[c]ertain
methods of organizing human activity” in terms of “commercial or legal
interactions.” 2019 Guidance 52; see also October 2019 Update: Subject
Matter Eligibility (“2019 Update”) 4–5. The 2019 Update further describes
“commercial or legal interactions” to include “subject matter relating to
agreements in the form of contracts, legal obligations, advertising, marketing
or sales activities or behaviors, and business relations.” 2019 Update at 5.
Here, booking (scheduling) a vendor to perform a service event, paying the
vendor for performing the service event, and re-booking the vendor for a
future date/time, as per independent claims 1 and 16, requires forming a
commercial interaction in terms of, at least, business relations between the
user and the vendor, which in turn require at least contracts and legal
obligations. As such, the Examiner is correct that “event scheduling and
management . . . is an abstract commercial endeavor that seeks to organize
future activities of human beings.” Ans. 6.
We further note that absent the use of the claimed “physical
processors,” i.e., computer, the Examiner is correct that “[t]here is no reason
. . . why a human could not mentally manage service events in the manner
recited.” Ans. 5 (emphasis added). A claim recites a mental process when

11 Examiner’s Answer, dated Nov. 9, 2017.
12 Although we appreciate that independent claim 1 is drawn to a system, as
claims 1 and 16 recite similar limitations, “the basic character of a process
claim drawn to an abstract idea is not changed by claiming only its
performance by computers, or by claiming the process embodied in program
instructions on a computer readable medium.” See CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1375–76 (Fed. Cir. 2011) (citing In re
Abele, 684 F.2d 902 (CCPA 1982).

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the claim encompasses acts people can perform using their minds or pen and
paper. See, e.g., CyberSource, 654 F.3d at 1372–73 (determining that a
claim whose “steps can be performed in the human mind, or by a human
using a pen and paper” is directed to an unpatentable mental process). This
is true even if the claim recites that a generic computer component, i.e.,
“physical processors,” performs the acts. See, e.g., Versata Development
Group, Inc. v. SAP America, Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015)
(“[C]ourts have examined claims that required the use of a computer and
still found that the underlying, patent-ineligible invention could be
performed via pen and paper or in a person’s mind.”); see also 2019
Guidance 52 n.14 (“If a claim, under its broadest reasonable interpretation,
covers performance in the mind but for the recitation of generic computer
components, then it is still in the mental processes category unless the claim
cannot practically be performed in the mind.”).
Accordingly, we do not agree with Appellant’s position that “the
subjective approach [of a user] that would be used mentally is different than
the claimed method” because it is based on “the user’s prior experiences
rather than an automatic selection by a computer.” Reply Br. 8. 13 For
example, a person (i.e., user) can book (i.e., schedule) a service event with a
vendor by performing the recited steps of claim 16 as follows: (a) manually
using a map to select a vendor located in proximity to the location of a
previous vendor (limitations [i]–[iii] of claim 16); (b) mentally coordinating
user and vendor calendars to determine a first reservation date and/or time
(limitations [iv]–[viii] and [x] of claim 16); manually paying the vendor
upon performing the service event (limitations [ix], [xi], and [xii] of claim

13 Appellant’s Reply Brief, filed Jan. 9, 2018.
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16); and mentally predicting a future date/time when to re-book the vendor
to perform the service event (limitations [xiii]–[xv] of claim 16).14 Thus, the
Examiner is correct that “a person can easily compare their personal
calendar and the calendar of the service provider and predict a need for re-
booking a reservation, as well as payment schedule.” Ans. 5; Reply Br. 7;
see also Electric Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed.
Cir. 2016) (explaining that the Federal Circuit has “treated analyzing
information by steps people go through in their minds, or by mathematical
algorithms, without more, as essentially mental processes within the
abstract-idea category” and determining that the claims at issue involve such
steps).
As such, we have considered each of the specific limitations of
independent claim 1 and 16, and each claim represents mere instructions that
customers (users) can perform using their minds or pen and paper to book a
vendor to perform a service event based on the calendars of the vendor and
the user, pay the vendor for the service, and re-book the vendor to perform
the same service at a future date and/or time. Appellant does not present any
persuasive argument or evidence that the steps of claim 1 and 16 cannot be
performed practically in the human mind using pen (or pencil) and paper.
Accordingly, for the foregoing reasons, because we determine that
independent claims 1 and 16 recite certain methods of organizing human
activity and mental processes that can be performed practically in the human
mind using pen (or pencil) and paper, we conclude that claims 1 and 16
recite an abstract idea, and, thus, we proceed to Prong 2 of Step 2A.

14 We note claim 1 includes similar limitations and, thus, the system of claim
1 can perform the recited steps. See also footnote 13.
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Step 2A, Prong 2 – Integrated Into a Practical Application
If a claim recites a judicial exception, then, in Prong 2, we determine
whether the recited judicial exception is integrated into a practical
application of that exception by: (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception(s); and
(b) evaluating those additional elements individually and in combination to
determine whether they integrate the exception into a practical application.
See 2019 Guidance 54–55. This evaluation requires an additional element or
a combination of additional elements in the claim to 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 exception. See id. at 54.
Appellant contends that “the character of the claims as a whole, in
light of the Specification, is directed to various features and functionality
afforded by a comprehensive computer platform that provides a technical
solution for managing a list of service events . . . for a user.” Appeal Br. 11
(emphasis added). According to Appellant, the functionality of
automatically selecting a vendor located in proximity to the location of a
previous vendor, as per limitation [iii] of claim 16, and predicting a future
date and/or time to re-book the vendor, as per limitation [xiv] of claim 16,
“represents a technological improvement in computer intelligence by
providing the ability to identify vendors of interest and re-booking
times/dates even if not specified by the user.” Id. at 12–13 (emphasis
added). Appellant further asserts that claims 1 and 16 are distinguishable
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from the claims in In re Maucorps, Intellectual Ventures I LLC, and
Fairwarning IP, LLC. Id. at 11–16. In addition, Appellant contends that
claims 1 and 16 are patent-eligible under McRO, Inc. v. Bandai Namco
Games Amer. Inc., 837 F.3d 1299 (Fed. Cir. 2016) and DDR Holdings, LLC
v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014). Id. at 16–21; Reply Br.
7–9.
We are not persuaded by Appellant’s arguments regarding the claims
in In re Maucorps, Intellectual Ventures I LLC, and Fairwarning IP, LLC
because we discern nothing in either of claims 1 or 16 that improves
functionality of a computer, i.e., “computer intelligence.” The Specification
makes clear that the “physical processors” recited in claims 1 and 16 are
generic computing components, which do not invoke particular hardware or
software and are described by their function, i.e., “processors that are
configured to execute computer program components.” See Spec. paras.
145–146, 151 (“processor 102 may include one or more of a digital
processor, an analog processor, a digital circuit designed to process
information, an analog circuit designed to process information, a state
machine, and/or other mechanisms for electronically processing
information.”).
In particular, we note that the “technological improvement in
computer intelligence” that Appellant alludes to, namely, limitations [iii] and
[iv] of claim 16, in fact, recite a result without specifying a way of
achieving the result. See SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161,
1167 (Fed. Cir. 2018) (Eligible “claims . . . transform[ed] a claim from one
claiming only a result to one claiming a way of achieving it.”). At most,
claims 1 and 16 improve the user (customer) experience, and, thus, the
recited features are not problems that are unique or limited to computer
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environments. See Spec. para. 3–4 (the claimed invention overcomes
drawbacks of conventional reservation tools). In other words, although each
of claims 1 and 16 is implemented using a computer and specific computer
operations and structures, these specifics of the claimed invention find direct
analogs in a manual implementation, as discussed supra. See Trading
Techs. Int’l, Inc. v. IBG LLC, 921 F. 3d 1084, 1090 (Fed. Cir. 2019) (“This
invention makes the trader faster and more efficient, not the computer. This
is not a technical solution to a technical problem.”).
We also do not agree with Appellant’s reliance on McRO and DDR
Holdings. In contrast to McRO, Appellant does not identify specific rules
that act in the same way as the specific rules enabling the computer in McRO
to generate the result of a sequence of animated characters. McRO, 837 F.3d
at 1313–16. In other words, here, we have none of the claimed specificity
of technological improvement the Federal Circuit found present in the
invention of McRO. As to DDR Holdings, the claims involved web-page
displays with “at least one active link associated with a commerce object
associated with a buying opportunity of a selected one of a plurality of
merchants.” DDR Holdings, 773 F. 3d at 1249. Here, as discussed
supra, the problem of booking (scheduling) a vendor to perform a service
event, paying the vendor for performing the service event, and re-booking
the vendor for a future date/time, as per independent claims 1 and 16, does
not specifically arise from a technology, such as computers or computer
networks. Hence, neither McRO nor DDR Holdings applies here because
as the Examiner correctly notes, “[t]he claims only manipulate abstract
data elements” and “do not present improvements to another
technological field or the functioning of the computer itself.” Ans. 5.
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As such, for the foregoing reasons, claims 1 and 16 use the ordinary
capabilities of a computer to automate what can be done by a user
(customer). This is not enough to integrate the underlying abstract idea into
a practical application, as “relying on a computer to perform routine tasks
more quickly or more accurately is insufficient to render a claim patent
eligible.” OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed.
Cir. 2015). We agree with the Examiner that the recited “claims merely use
computers in a routine fashion to implement the abstract process.” Ans. 6
(citing Smart Systems Innovations v. Chicago Transit Authority, 873 F.3d
1364, 1372–73 (Fed. Cir. 2017)) (“The claims are not directed to a combined
order of specific rules that improve any technological process, but rather
invoke computers in the collection and arrangement of data. Claims with
such character do not escape the abstract idea exception under Alice step
one.”); see also Reply Br. 6.
Thus, we determine that the recited “additional element[s] merely
recite[] the words ‘apply if (or an equivalent) with the judicial exception, or
merely includes instructions to implement an abstract idea on a computer, or
merely uses a computer as a tool to perform an abstract idea.” 2019
Guidance 55. Accordingly, Appellant’s claims 1 and 16:
(1) do not improve the functioning of a computer or other technology;
(2) are not applied with any particular machine;
(3) do not affect a transformation of a particular article to a different
state;
(4) do not add more than insignificant extra-solution activity; and
(5) are not applied in any meaningful way beyond generally linking
the use of the judicial exception to a particular technological environment.
See MPEP § 2106.05(a)–(c), (f), (g).
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Lastly, Appellant argues that claims 1 and 16 “do not tie up an idea
of booking service events.” See Reply Br. 3; Appeal Br. 17. We are not
persuaded by such an argument because although “preemption may
signal patent ineligible subject matter, the absence of complete
preemption does not demonstrate patent eligibility.” Ariosa Diagnostics,
Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). “Where a
patent’s claims are deemed only to disclose patent ineligible subject
matter under the Mayo[/Alice] framework, as they are in this case,
preemption concerns are fully addressed and made moot.” Id.
In conclusion, we are not persuaded of error in the Examiner’s
determination that claims 1 and 16 are directed to an abstract idea, and
we find that the claimed additional elements do not integrate the abstract
idea into a practical application.

Step 2B – Well-Understood, Routine, Conventional Activity
Having determined that claims 1 and 16 recite a judicial exception,
and do not integrate that exception into a practical application, under Step 2B
we consider whether the claim adds a specific limitation beyond the judicial
exception that is not “well-understood, routine, conventional” in the field.
See 2019 Guidance 56.
The Examiner finds that “[t]he claims do not include additional
elements that are sufficient to amount to significantly more than the judicial
exception because there are no meaningful limitations that transform the
exception into a patent eligible application.” Final Act. 5. According to the
Examiner, “[l]ooking at the limitations as an ordered combination adds
nothing that is not already present when looking at the elements taken
individually.” Id.
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In response, Appellant argues that similar to the claims in Bascom
Global Internet Serv., Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir.
2016), “the instant claims recite significantly more than an alleged abstract
idea,” i.e., “booking service events for a user.” Appeal Br. 21–22.
According to Appellant, “the ordered combination of features” constitutes “a
technological improvement in computer intelligence to be able to identify
vendors of interest and re-booking times/dates even if not specified by the
user.” Id. at 22 (citing limitations from claim 1 that correspond to
limitations [iii] and [xiv] from claim 16). Appellant further contends that
like the claims in Amdocs (Isr.) Ltd. v. Openet Telecom, Inc., 841 F. 3d
1288, 1291, 1300–01 (Fed. Cir. 2016), “the instant claims are tied to the
particular architecture described in the instant [S]pecification,” namely, “the
architecture of computer system 100 and the architecture of its interaction
with client computing devices 30 and vendor computing devices 40.”
Appeal Br. 23–24. Thus, Appellant asserts that the features recited by each
of independent claims 1 and 16 “individually or in combination, do not
comprise well-understood, routine, and conventional activities of a computer
previously known to the industry for at least the reason that the foregoing
features recited by the claims are not a mere conventional use of traditional
computer functionality.” Id. at 26 (emphasis omitted).
We are not persuaded that the Examiner erred in determining that the
elements of claims 1 and 16, considered both individually and as an ordered
combination, do not amount to significantly more than the abstract idea
itself. Ans. 7. As discussed supra, booking (scheduling) a vendor to
perform a service event, paying the vendor for performing the service event,
and re-booking the vendor for a future date/time, as per independent claims
1 and 16, “do not present improvements to another technological field or the
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functioning of the computer itself.” Id. Rather, such features represent
“implement[ing] the abstract service event planning functionality on a
generic processor.” Id.
We further agree with the Examiner that neither Bascom nor Amdocs
“controls the analysis of Appellant’s claims, as the arguments do not
establish that the [claimed] invention contains similar non-conventional
elements.” Id. at 8. The Examiner is correct that “[n]o particular network
architecture is claimed,” and moreover, “[t]he only element other than the
abstract idea in the claims is the generic processor on which it is executed,
which is used for routine and conventional activities (e.g., storing, retrieving,
transmitting data).” Id. In particular, Appellant’s Specification describes
computer system 100 as “a server, a desktop computer, a laptop computer, a
personal digital assistant, smart phone, and/or any other computing device”;
client computing device 30 as “a desktop computer, a laptop computer, a
handheld computer, a tablet computing platform, a Netbook, a Smartphone,
a gaming console, and/or other computing platforms”; and vendor
computing device 40 as “a desktop computer, a laptop computer, a handheld
computer, a tablet computing platform, a Netbook, a Smartphone, a gaming
console, and/or other computing platforms.” Spec. paras. 144–146. As
such, we do not agree with Appellant that “the claimed network architecture
is unconventional at least in that it includes an improved computer that
communicates with both a vendor’s computer system and a user’s computer
system” because communication between computer systems is a
conventional use of computer networks. Reply Br. 10.
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Furthermore, the features Appellant refers to as unconventional (see
Appeal Br. 2215, 25–2616) merely recite the identified judicial exception
discussed above; these limitations are not “additional elements individually
and in combination” that may “provide an inventive concept” amounting to
“significantly more than the exception itself.” 2019 Guidance 55–56.
Accordingly, claims 1 and 16 fail to add a specific limitation beyond the
judicial exception that is not ‘well-understood, routine, conventional” in
the field, and, thus, fail to indicate the presence of an inventive concept.
Therefore, we conclude that none of the limitations of claims 1 and 16,
viewed “both individually and as an ordered combination,” amount to
significantly more than the judicial exception in order to sufficiently
transform the nature of the claims into patent-eligible subject matter. See
Alice, 134 S.Ct. at 2355 (internal quotations omitted) (quoting Mayo, 132
S.Ct. at 1297).
Accordingly, for the foregoing reasons, we sustain the rejection of
claims 1 and 16 under 35 U.S.C. § 101 as being directed to patent-ineligible
subject matter.

Claims 2–13, 15, 17–28, and 30–32
Appellant argues that “the rejection of dependent claims 2-13, 15, 17-
28, and 30-32 under§ 101 . . . is improper because the Examiner improperly
rejects the dependent claims without individually addressing each and every
one of their recited features.” Appeal Br. 27; Reply Br. 10. Appellant

15 Citing limitations from claim 1 that are similar to limitations [iii] and [iv]
of claim 16.
16 Citing limitations from claim 1 that are similar to limitations [ii], [iii], and
[xi]–[xv] of claim 16.
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explains that “the Examiner has not provided an explanation as to why each
claim is unpatentable sufficient to establish a prima facie case with respect
to the subject-matter eligibility analysis.” Id (emphasis added). According
to Appellant, “‘[e]very claim must be examined individually’ and ‘the
eligibility of each claim should be evaluated as a whole.” Id. at 28
(emphasis omitted).
Although we appreciate that the Examiner has not written a separate
rejection for each dependent claims, nonetheless, the Examiner did consider
each claim when finding that “[t]he limitations of the dependent claims
merely set forth further refinements of the abstract idea (e.g., making and
paying for a second service event-claim 2, designating payment
information-claim 3, etc.).” Final Act. 5.
Hence, adding narrowing limitations, as per dependent claims 2–13,
15, 17–28, and 30–32, that are themselves abstract, does not suffice to
transform the claimed abstract idea into patent-eligible subject matter, and,
thus, add nothing beyond the abstract idea set forth in independent claims 1
and 16, from which these claims depend, respectively. Therefore, we agree
with the Examiner that “the limitations of the dependent claims merely
further refine aspects of the abstract idea without adding significantly more.”
Ans. 8. Accordingly, dependent claims 2–13, 15, 17–28, and 30–32 fail to
survive Step 2A, Prong 2, and, for the same reasons, fail to survive Step 2B.
As Appellant provides no substantive explanation as to why any of
dependent claims 2–13, 15, 17–28, and 30–32 recites something
significantly more than the abstract idea recited in their respective
independent claims, dependent claims 2–13, 15, 17–28, and 30–32 are
likewise patent-ineligible.

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Rejection II
We do not reach the merits of the Examiner’s provisional double
patenting rejection because it would be premature to do so at this time,
consistent with the holding of Ex Parte Moncla, 95 USPQ2d 1884, 1885
(BPAI 2010) (precedential). Moreover, Appellant represents that a terminal
disclaimer will be provided when the application underlying this appeal is in
condition for allowance. See Amendment 22 (“Applicant will consider
filing a Terminal Disclaimer once all remaining rejections are
withdrawn.”).17

Rejection III
Claims 1 and 16
Appellant does not present separate arguments for the patentability of
independent claims 1 and 16. See Appeal Br. 28–33. Therefore, the
following analysis applies equally to both independent claims 1 and 16.
Appellant argues that the Examiner arrived at the rejection by
employing impermissible hindsight in “selectively picking and choosing
from among the . . . disclosures of Norton, Katz, Niessen, and Behrens.”
Appeal Br. 28; Reply Br. 11.
We are not persuaded by Appellant’s argument because the Examiner
has provided a sufficient reasoning with rational underpinning to combine
the teachings of Norton, Katz, Niessen, and Behrens. See Final Act. 7–8;
see also In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on
obviousness grounds [require] some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness”) (cited with

17 Appellant’s Amendment, filed Oct. 28, 2016.
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approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)). In
particular, the Examiner determined that it would have been obvious for a
person of ordinary skill in the art to modify the system and process of
Norton with (1) Katz “to ensure payment only occurs for actually provided
services”; (2) Niessen “to determine potential services from nearby vendors
on past similar services the user has already purchased”; and (3) Behrens “to
make the system more intelligent when determining the user’s future service
needs.” See Final Act. 7–8. Appellant has not persuasively argued that the
Examiner’s conclusion lacks rational underpinning.
Appellant also argues that the Examiner’s reliance on Niessen to
disclose “selecting a vendor (to provide a first service event of the first
service event type for the user) at a location within a predetermined
proximity threshold from the location of the previous vendor” is misplaced.
Appeal Br. 29 (citing Niessen, paras. 87, 103, 104). Rather, Appellant
contends, Niessen “relate[s] to a concentric circles algorithm used to identify
consumers ---not vendors--- to whom targeted offers may be made.” Id.
We are not persuaded by Appellant’s arguments because we agree
with the Examiner that Niessen discloses competing merchants, i.e.,
vendors, located in proximity to each other, and a customer, i.e., user, having
the option of selecting between first and second companies (vendors) that
provide a similar service, wherein the second company is located in
proximity to the first company. Ans. 9 (citing Niessen, paras. 87, 103). We
also do not agree with Appellant’s argument that nothing in Niessen
“teaches or motivates one” to combine its teachings with Norton’s “user
selection” search results (see Reply Br. 12) because such an argument
appears to be holding the Examiner to the old TSM standard; such a standard
is not required. KSR, 550 U.S. at 415.
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Appellant further contends that Behrens fails to disclose determining a
second reservation based on a predicted date or time determined in response
to a user indicating that the service should be automatically re-booked. See
Appeal Br. 32–33 (citing Behrens, paras. 91, 112–114, 230). According to
Appellant, “Behrens generally relate[s] to optimizations used to increase the
likelihood that an appointment offered in an appointment availability
placement will be booked by a user” based upon “referenc[ing] historical
usage patterns and tracking, and even offering services if some amount of
time has passed since a user last booked a recurring service.” Id. at 33;
Reply Br. 13–15.
We are not persuaded by Appellant’s arguments because
nonobviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references. [Each reference] must be read, not in isolation, but for what it
fairly teaches in combination with the prior art as a whole.” See In re Merck
& Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). In this case, Norton
discloses determining a second reservation based on a date or time
determined in response to a user indicating that the service should be
automatically re-booked. See Norton, paras. 57, 72 (recurrence rules 508
determine the date or time of the second reservation). Behrens discloses
determining a particular date or time to provide an appointment to a user
based on the user’s historical information, such as the user’s pattern of
booking appointments at particular times or the amount of time passed since
the user last booked a recurrent service. See Behrens, paras. 91, 112, 113.
In other words, based on a user’s historical information of booking an
appointment, Behrens predicts when to book a future appointment. Thus,
we agree with the Examiner that the combined teachings of Norton and
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Behrens disclose “determin[ing] the second reservation for the re-booked
first service event is based on at least one of the predicted next date or the
predicted next time.” Final Act. 8 (emphasis added). Moreover, the
Examiner is correct that Appellant does not adequately explain why
Behrens’ disclosure of booking a future appointment based on the amount of
time passed since the user last booked a recurrent service does not constitute
predicting when to book a future appointment. Ans. 10.
In conclusion, for the foregoing reasons, we sustain the rejection
under 35 U.S.C. § 103 of claims 1 and 16 as unpatentable over Norton, Katz,
Niessen, and Behrens.

Claims 4–6, 8, 9, 12, 19–21, 23, 24, 27, and 32
In regards to the rejection of claims 8, 9, 12, 23, 24, 27, and 32,
Appellant relies on the same unpersuasive arguments discussed above in the
rejection of claims 1 and 16, from which these claims depend, respectively.
See Appeal Br. 33–34.
In particular to the rejection of claims 4–6 and 19–21, in addition to
reciting the limitations of dependent claim 4 (see id. at 34), Appellant makes
the same arguments discussed above regarding the teachings of Niessen.
See id. at 35; Reply Br. 12–13. We are not persuaded by Appellant’s
argument for the same reasons discussed above in the rejection of claims 1
and 16. Moreover, we note that merely pointing out what a claim recites
will not be considered an argument for separate patentability of the claim.
See In re Lovin, 99 USPQ2d 1373, 1379 (Fed. Cir. 2011) (holding that the
Board had reasonably interpreted 37 C.F.R. § 41.37(c)(1)(vii) as requiring
“more substantive arguments in an appeal brief than a mere recitation of the
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claim elements and a naked assertion that the corresponding elements were
not found in the prior art”).
Accordingly, for the foregoing reasons, we sustain the rejection under
35 U.S.C. § 103 of claims 4–6, 8, 9, 12, 19–21, 23, 24, 27, and 32 as
unpatentable over Norton, Katz, Niessen, and Behrens.

Claims 7 and 22
The Examiner finds that paragraphs 112–114 and 125 of Behrens
disclose the limitations of claims 7 and 22. See Final Act. 9–11.
In response, Appellant recites the limitations of claim 7 (see Appeal
Br. 35–36), and argues that “none of the relied-upon passages of Behrens
teach the particular claimed manner by which scheduling information is
determined.” Id. at 36 (emphasis added).18 Thus, According to Appellant,
claims 7 and 22 “set forth a particular manner by which scheduling
information is determined.” Id.
We appreciate that Behrens discloses determining, i.e., predicting, a
future particular date or time to provide an appointment to a user based on
the user’s historical information, such as, the user’s pattern of booking
appointments at particular times or the amount of time passed since the user
last booked a recurrent service and updating historical usage tracking. See
Behrens, paras. 112, 113, 125. However, we could not find any portion of
Behrens, and the Examiner has not pointed to any portion, that discloses
determining scheduling information based on a time interval between service
events, wherein the time interval is based upon first and second amounts of

18 We note that claims 7 and 22 recite similar limitations. Compare Appeal
Br. 41 with, Appeal Br. 48.
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time between previous successive service events. The Examiner has not
sufficiently explained how employing Behrens’ updating of historical usage
results in the specific scheduling procedure of claims 7 and 22. In particular,
the Examiner’s response that Appellant’s arguments “rely on the same
reasoning” is insufficient to explain how Behrens’ disclosure of scheduling
an appointment based on “the amount of time since a user has booked a
service that is identified as recurring” is the same as scheduling an
appointment based on a time interval between successive service events.
Ans. 10.
Accordingly, for the foregoing reasons, we do not sustain the rejection
of claims 7 and 22 over the combined teachings of Norton, Katz, Niessen,
and Behrens.

Rejections IV–VII
Appellant relies on the arguments discussed supra in the rejection of
claims 1 and 16. See Appeal Br. 34. Therefore, for the same reasons
discussed above, we also sustain Rejections IV–VIII.

NEW GROUND OF REJECTION
Claims 7 and 22 are rejected under 35 U.S.C. § 103 as being
unpatentable over Norton, Katz, Niessen, Behrens, and Elwell.19
We adopt the Examiner’s findings regarding the disclosures of
Norton, Katz, Niessen, and Behrens, and reasoning to combine their
teachings, as pertaining to the rejection of claims 1 and 16, from which
claims 7 and 22 depend. See Final Act. 6–9. However, we do not adopt the

19 Elwell et al., US 8,930,820 B1, issued Jan. 6, 2015.
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Examiner’s findings regarding the disclosure of Behrens and reasoning to
combine the teachings of Norton, Katz, Niessen, and Behrens as pertaining
to the rejection of claims 7 and 22. See id. at 9–10 (citing Behrens, paras.
112–114, 125).
Nonetheless, Elwell discloses identifying the date or time of two or
more events or transactions between a user and a vendor and determining a
frequency of events or transactions (determine first and second amounts of
time) as a time difference between the events or transactions. See Elwell,
col. 4, l. 60–col. 5, l. 2; col. 5, l. 59–col. 6, l. 2. Elwell further discloses
calculating the frequency as an average time difference between the events
or transactions (time interval based on first and second amounts of time)20
and scheduling a recurring event or transaction by adding the frequency to
the date or time of the last event or transaction (determining scheduling
information). See id., col. 5, l. 67–col. 6, l. 7, col. 6, ll. 36–46, Abstract.
Thus, it would have been obvious for a person of ordinary skill in the art to
employ Elwell’s scheduling procedure in the process and system of Norton,
as modified by Katz, Niessen, and Behrens, in order to “identify periodic or
recurring dates based on previously attended events” or transactions. See
id., col. 6, ll. 38–40.

DECISION SUMMARY:
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed New
Ground

20 Appellant’s Specification likewise describes the “time interval” as an
“average number of days between . . . service events.” Spec. para. 57
emphasis added).
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1–13, 15–28,
30–32
101 Patent-ineligible
subject matter
1–13, 15–28,
30–32

1, 4–9, 12, 16,
19–24, 27, 32
103 Norton, Katz,
Niessen, Behrens
1, 4–6, 8, 9, 12,
16, 19–21, 23, 24,
27, 32
7, 22
2, 3, 17, 18 103 Norton, Katz,
Niessen, Behrens,
Hirka
2, 3, 17, 18
10, 11, 13, 25,
26, 28
103 Norton, Katz,
Niessen, Behrens,
Tavakoli
10, 11, 13, 25,
26, 28

15, 30 103 Norton, Katz,
Niessen, Behrens,
Hirka, Giordano
15, 30
31 103 Norton, Katz,
Niessen, Behrens,
Srimuang
31
7, 22 103 Norton, Katz,
Niessen, Behrens,
Elwell
7, 22
Overall
outcome
1–13, 15–28,
30–32
7, 22 7, 22

TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new Evidence relating to the claims so rejected, or both,
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and have the matter reconsidered by the examiner, in which event the
prosecution will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same Record. . . .
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
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; 37 C.F.R. § 41.50(b)