RESO HOLDINGS, INC.

Patent Trials and Appeals Board

Feb 5, 2020

14206502 - (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.
14/206,502 03/12/2014 Adam Hiatt 46XK-219505 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 2018-002511
Application 14/206,502
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 Jan. 13, 2017, hereinafter “Final Act.”) rejecting
claims 1–20, 33, and 34.2 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 21–32 are canceled. See Appeal Br. 50 (Claims App.).
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SUMMARY OF DECISION
We AFFIRM.

INVENTION
Appellant’s invention is directed “to a system and method for automated
reservation management.” Spec. para. 1.
Claims 1 and 11 are independent. Claim 11 is illustrative of the claimed
invention and is reproduced below (with reference indicators added in brackets):
11. A method for automatically identifying new types of service
requests and facilitating booking of service events based on amounts
of time between previous service events, 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:
[a] generating, by the one or more physical processors, an
electronic user interface comprising a user interactive element
configured to receive an addition, a removal, or an edit of an entry in
a service event list;
[b] receiving, by the one or more physical processors, from a
user, via the user interactive element, event information for an event
to be included in a first calendar associated with the user, wherein the
event is not indicated as a service event by the user;
[c] determining, by the one or more physical processors, that
the event is a service event of a first service event type based on the
event information for the event received from the user;
[d] adding, by the one or more physical processors, the first
service event type to a list of managed service event types for the
user;
[e] determining, by the one or more physical processors, (i) a
first amount of time between a first previous service event of the first
service event type that was scheduled for the user and a second
previous service event of the first service event type that was
scheduled for the user, and (ii) a second amount of time between the
second previous service event and a third previous service event of
the first service event type that was scheduled for the user;
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[f] determining, by the one or more physical processors, a time
interval between service events of the first service event type based
on (i) the first amount of time and (ii) the second amount of time;
[g] predicting, by the one or more physical processors, a need
for a first service event of the first service event type for the user
based on (i) the time interval and (ii) at least one of a date of a
previous service event of the first service event type that was
scheduled for the user or a time of the previous service event;
[h] determining, by the one or more physical processors,
scheduling information for the first service event based on the
predicted need for the first service event, a first calendar associated
with the user, and a second calendar associated with a vendor that
provides service events of the first service event type, wherein the
scheduling information comprises at least one of a first date for the
first service event based on the time interval and the date of the
previous service event of the first service event type or a first time for
the first service event based on the time interval and the time of the
previous service event of the first service event type;
[j] determining, by the one or more physical processors, a
reservation for the first service event based on the need prediction
and the scheduling information;
[k] providing, by the one or more physical processors, to the
user, a request to accept the reservation; and
[l] providing, by the one or more physical processors, based on
the user accepting the reservation, a confirmation of the reservation
to the user and the vendor.

REJECTIONS
I. The Examiner rejects claims 1–20, 33, and 34 under 35 U.S.C. § 101
as being directed to patent-ineligible subject matter.
II. The Examiner provisionally rejects claims 1–20, 33, and 34 on the
ground of non-statutory double patenting as being unpatentable over
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claims 1–13, 15–28, and 30–32 of copending U.S Application No.
14/206,569.3
III. The Examiner rejects claims 1–3, 11–13, and 33 under 35 U.S.C.
§ 103 as being unpatentable over Behrens4 and Elwell.5
IV. The Examiner rejects claims 4, 9, 14, and 19 under 35 U.S.C.
§ 103 as being unpatentable over Behrens, Elwell, and Camp.6
V. The Examiner rejects claims 5 and 15 under 35 U.S.C. § 103 as being
unpatentable over Behrens, Elwell, Grosz,7 and Becker.8
VI. The Examiner rejects claims 6 and 16 under 35 U.S.C. § 103 as being
unpatentable over Behrens, Elwell, and Katz.9
VII. The Examiner rejects claims 7, 8, 17, and 18 under 35 U.S.C.
§ 103 as being unpatentable over Behrens, Elwell, and Srimuang.10
VIII. The Examiner rejects claims 10 and 20 under 35 U.S.C. § 103 as
being unpatentable over Behrens, Elwell, Camp, and Pavlov.11
IX. The Examiner rejects claim 34 under 35 U.S.C. § 103 as being
unpatentable over Behrens, Elwell, and Meltzer.12

3 The rejection of claims 31 and 32 is moot as these claims are canceled. See
Final Act. 14; Appeal Br. 50.
4 Behrens et al., US 2010/0191552 A1, published July 29, 2010.
5 Elwell et al., US 8,930,820 B1, issued Jan. 6, 2015.
6 Camp et al., US 2011/0301985 A1, published Dec. 8, 2011.
7 Grosz, US 2015/0019273 A1, published Jan. 15, 2015.
8 Becker, US 2004/0267580 A1, published Dec. 30, 2004.
9 Katz, US 2007/0083400 A1, published Apr. 12, 2007.
10 Srimuang, US 2003/0061087 A1, published Mar. 27, 2003.
11 Pavlov, US 2008/0114629 A1, published May 15, 2008.
12 Meltzer et al., US 2014/0310045 A1, published Oct. 16, 2014.
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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. Pty. Ltd. 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, 67 (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 (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
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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)).
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
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(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception.

Claims 1 and 11
Step 1 – Statutory Category
We first determine whether independent claims 1 and 11 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 11 recite a system (i.e., a “machine”) and a
method (i.e., a “process”), respectively. See Appeal Br. 41, 46 (Claims App.).
Thus, we agree with Appellant that independent claims 1 and 11 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 11 recite any judicial
exceptions, including certain groupings of abstract ideas, i.e., mathematical
concepts, certain methods of organizing human activity, or mental processes.
In determining that independent claims 1 and 11 are directed to a judicial
exception to patent eligibility the Examiner determines that the claims are directed
to:
[T]he 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]) and mathematical correlations
(e.g., comparing amounts and intervals of time.

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Final Act. 4. The Examiner explains that claims 1 and 11 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.; Reply Br. 4–7.13
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. 11 (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. at 10
(emphasis added).
We agree with the Examiner that independent claims 1 and 11 merely
“describe[] organizing and planning the future activities of human beings” (see
Final Act. 2 (emphasis added)), which constitutes “organizing human commercial
relationships” (see Ans. 6 (emphasis added)).14 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”) at 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, scheduling and booking a vendor to perform a service

13 Appellant’s Reply Brief, filed Jan. 9, 2018.
14 Examiner’s Answer, dated Nov. 9, 2017.
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event, as per independent claims 1 and 11, requires forming a commercial
interaction in terms of, at least, business relations between the user and the vendor
that 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 the future activities of human beings.” Ans. 6.
Accordingly, independent claims 1 and 11 are directed to commercial interactions,
which qualify as an abstract idea, i.e., organizing human activity.
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 determine a service event type for booking an event.” Ans. 5
(emphasis added). A claim recites a mental process when the claim encompasses
acts people can perform using their minds or pen and paper. See, e.g.,
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372–73 (Fed. Cir.
2011) (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,” perform the acts. See, e.g., Versata Development
Group, Inc. v. SAP America, Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) (“Courts
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.”).
In this case, absent the use of “physical processors” that “generate . . . an
electronic user interface,” a person (i.e., user) can identify a new service event and
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schedule and book a vendor to perform the service event by performing the recited
steps of claim 11 as follows:
(1) manually adding, deleting, or editing an entry in a service event list
(limitation [a]);
(2) mentally receiving event information from a user requesting a service
event (limitation [b]);
(3) based on the event information mentally determining that the
requested service event is a service event of the first service event type (limitation
[c]);15
(4) manually adding the first service event type to a user’s list of
managed service event types (limitation [d]);
(5) calculating (mental process) amounts of time and a time interval
between previous service events (limitations [e] and [f]);
(6) mentally predicting a need for a future service event based on the
time interval and the date or time of a previous service event that was scheduled
for the user (limitation [g]);
(7) manually scheduling the first service event based on the predicted
need, the user’s calendar, and the vendor’s calendar (limitation [h]);

15The Examiner is correct that “from a calendar record that simply contains a
name, a person could determine that the event was a haircut-type appointment if
mental analysis determined that the name is the name of the person’s barber.”
Ans. 5; Reply Br. 4; 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).

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(8) manually making a reservation and requesting an acceptance of the
reservation from the user (limitations [j] and [k]); and
(9) mentally confirming the user’s acceptance to the vendor (limitation
[l]).
As such, we have considered each of the specific limitations of independent
claims 1 and 11, and each claim recites mere instructions that customers (users)
can perform using their minds or pen and paper to identify a service event and
book a vendor to perform the service event. Appellant does not present persuasive
arguments or evidence that the steps of claims 1 and 11 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 11 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.

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, 84 Fed.
Reg. at 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
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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 determin[ing] that an
event is a service event of a first service event type based on event information
received from a user even when the event itself is not indicated as a service event
by the user,” as per limitations [b] and [c] of claim 11, “represents a technological
improvement in computer intelligence by providing the ability to determine
service event types even if not specified by a user.” Id. at 12 (emphasis added).
Hence, Appellant asserts that claims 1 and 11 are distinguishable from the claims
in In re Maucorps, Intellectual Ventures I LLC, and FairWarning IP, LLC. Id. at
12–16. In addition, Appellant contends that claims 1 and 11 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. 6–8.
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 11 that improves functionality of a
computer, i.e., “computer intelligence.” The Specification makes clear that
the “physical processors” recited in claims 1 and 11 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. 144–146, 151 (“processor 102
may include one or more of a digital processor, an analog processor, a digital
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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 [b] and [c] of claim 11,
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 11 improve the user (customer)
experience, and, thus, the recited features are not problems that are unique or
limited to computer environments. See Spec. paras. 3–4 (the claimed invention
overcomes drawbacks of conventional reservation tools). In other words,
although each of claims 1 and 11 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. See Appeal Br. 16–21; Reply Br. 6–8. 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
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buying opportunity of a selected one of a plurality of merchants.” DDR
Holdings, 773 F. 3d at 1249. However, here, the Examiner is correct in that
“booking a service event, even when considering unspecified event types, is
[not] a challenge particular to the Internet or any other technology.” Ans. 7.
In other words, the problem of identifying and scheduling service events
based on user and vendor information, as per independent claims 1 and 11, 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.” Final Act. 5.
As such, for the foregoing reasons, claims 1 and 11 use the ordinary
capabilities of a computer to automate what previously has been 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 it’ (or an equivalent) with the judicial exception, or merely
includes instructions to implement an abstract idea on a computer, or merely uses
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a computer as a tool to perform an abstract idea.” 2019 Guidance 55.
Accordingly, Appellant’s claims 1 and 11:
(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).
Lastly, Appellant argues that claims 1 and 11 “do not tie up an idea of
itself nor scheduling [service] events.” See Reply Br. 3; see also Appeal Br.
17–18. 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 11 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 11 recite a judicial exception, and do
not integrate that exception into a practical application, under Step 2B we consider
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whether the claims add 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. 4–5. 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.
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. 23. According to Appellant,
“the ordered combination of features” constitutes “a technological improvement in
computer intelligence to be able to identify new service event types even if not
specified by the user.” Id. (citing limitations form claim 1 that correspond to
limitations [b] and [c] from claim 11). 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. 24–25. Thus, Appellant contends
that the features recited by each of independent claims 1 and 11 “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 27 (emphasis omitted).
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We are not persuaded that the Examiner erred in determining that the
elements of claims 1 and 11, considering all elements both individually and as an
ordered combination, do not amount to significantly more than the abstract idea
itself. As discussed supra, identifying and scheduling service events based on
user and vendor information, as per independent claims 1 and 11, “do not present
improvements to another technological field or the functioning of the computer
itself.” Ans. 7. 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. 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. at 7–8. 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
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system” as communication between computers or servers is a conventional use of
computer networks. Reply Br. 8.
Furthermore, the features Appellant refers to as unconventional (see Appeal
Br. 26–27)16 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 11 fail to add
a specific limitation beyond the judicial exception that is not “well-understood,
routine, conventional” in the field. Thus, we are not persuaded that claims 1 and
11 are directed to a specific application designed to achieve an improved
technological result, as opposed to being directed to merely ordinary functionality
of the above-recited additional elements to apply an abstract idea, and, thus, fails
to indicate the presence of an inventive concept. Therefore, we conclude that
none of the limitations of claims 1 and 11, 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, 573 U.S. at 217–18 (internal quotations omitted) (quoting
Mayo, 566 U.S. at 79).
In conclusion, for the foregoing reasons, we sustain the rejection of claims
1 and 11 under 35 U.S.C. § 101 as being directed to patent-ineligible subject
matter.
Claims 2–10, 12–20, 33, and 34
Appellant argues that “[t]he rejection of dependent claims 2-10, 12-20, 33,
and 34 under § 101 . . . is improper because the Examiner improperly rejects the

16 Citing limitations from claim 1 that are similar to limitations [a]–[d] and
[g]–[l] of claim 11.
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dependent claims without individually addressing each and every one of their
recited features.” Appeal Br. 27; Reply Br. 10. Appellant 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. at 28. Thus, according to Appellant, “‘[e]very claim must
be examined individually’ and ‘the eligibility of each claim should be evaluated as
a whole.” Id (emphasis omitted).
Although we appreciate that the Examiner has not written a separate
rejection for each dependent claim, 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., adding information to the calendars-
claim 2, using average amounts of time-claim 3, etc.).” Final Act. 4. As such,
adding narrowing limitations, as per dependent claims 2–10, 12–20, 33, and 34,
that are themselves abstract, does not suffice to transform the claimed abstract
idea into patent-eligible subject matter. In other words, dependent claims 2–10,
12–20, 33, and 34 add nothing beyond the abstract idea set forth in independent
claims 1 and 11, from which these claims depend, respectively. Thus, 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 2–10, 12–20, 33, and 34 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 these
dependent claims recites something significantly more than the abstract idea
recited in their respective independent claims, dependent claims 2–10, 12–20, 33,
and 34 are 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 Amdt. 11
(“Applicant will consider filing a Terminal Disclaimer once all remaining
rejections are withdrawn.”).17

Rejection III
Each of independent claims 1 and 11 recites “a service event list” and “a list
of managed service event types.” Appeal Br. 41, 46 (Claims App.).
The Examiner finds that Behrens’ paragraphs 124–126 and 217 disclose “a
service event list,” paragraphs 91, 112, and 125 disclose “a list of managed service
event types,” and paragraphs 112 and 124–126 disclose “a first calendar
associated with the user.” See Final Act. 6.
Appellant argues that “[n]one of the relied-upon passages, however, appear
to teach or suggest a service event list.” Appeal Br. 31. According to Appellant,
paragraphs “[0124]-[0126] relate to a user’s ability to select an available
appointment from an appointment availability placement, while [paragraph]
[0217] of Behrens appears to teach that a calendar may be updated to reflect a
booked appointment.” Id.
In response, the Examiner takes the position that because “[a] service event
list is merely a collection of data records about reservations,” Behrens’ “user is

17 Appellant’s Amendment, filed Oct. 28, 2016.
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able to manage their calendar information (which contains records of service
events) by, e.g., adding an entry for a new event into their calendar as required by
the claims.” Ans. 9 (emphasis added). In other words, the Examiner finds that
Behrens’ calendar constitutes both a service event list and a calendar associated
with a user.
As a matter of claim construction, we note that where a claim lists elements
separately, the clear implication is that such elements constitute distinct
components. Becton, Dickinson and Co. v. Tyco Healthcare Grp., LP, 616 F.3d
1249, 1254 (Fed. Cir. 2010) (citing Gaus v. Conair Corp., 363 F.3d 1284,
1288 (Fed. Cir. 2004); Engel Indus., Inc. v. Lockformer Co., 96 F.3d 1398, 1404–
05 (Fed. Cir. 1996)). Here, we do not agree with the Examiner that Behrens’
calendar may read on both a service event list (as per limitation [a]) and a calendar
associated with a user (as per limitation [b]). Therefore, Behrens fails to disclose
a service event list that is distinct from a calendar associated with a user, as called
for by each of independent claims 1 and 11.
As the Examiner does not employ Elwell in any manner to remedy the
deficiency of Behrens, discussed supra, we do not sustain the rejection under 35
U.S.C. § 103 of claims 1–3, 11–13, and 33 as unpatentable over Behrens and
Elwell.

Rejections IV–IX
The Examiner’s use of the Camp, Grosz, Becker, Katz, Srimuang, Pavlov,
and Meltzer disclosures does not remedy the deficiency of Behrens discussed
supra. See Final Act. 8–13. Thus, for the same reasons discussed above in
Rejection III, we also do not sustain Rejections IV–IX.

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CONCLUSION
Claims
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
1–20, 33, 34 101
Eligibility

1–20, 33, 34
1–3, 11–13,
33
103 Behrens, Elwell 1–3, 11–13,
33
4, 9, 14, 19 103 Behrens, Elwell,
Camp
4, 9, 14, 19
5, 15 103 Behrens, Elwell,
Grosz, Becker
5, 15
6, 16 103 Behrens, Elwell,
Katz
6, 16
7, 8, 17, 18 103 Behrens, Elwell,
Srimuang
7, 8, 17, 18
10, 20 103 Behrens, Elwell,
Camp, Pavlov
10, 20
34 103 Behrens, Elwell,
Meltzer
34
Overall
Outcome
1–20, 33, 34

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