Sachin Soni et al.

Patent Trials and Appeals Board

Aug 15, 2019

14450729 - (D) (P.T.A.B. Aug. 15, 2019)

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.
14/450,729 08/04/2014 Sachin Soni 058083-0908099
(4399US01)
8101
72058 7590 08/15/2019
Kilpatrick Townsend & Stockton LLP
Adobe Systems, Inc. 58083
Mailstop: IP Docketing - 22
1100 Peachtree Street, Suite 2800
Atlanta, GA 30309-4530
EXAMINER
ANDERSON, SCOTT C
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
08/15/2019 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):
KTSDocketing2@kilpatrick.foundationip.com
ipefiling@kilpatricktownsend.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SACHIN SONI, ASHISH DUGGAL,
STEPHANE MOREAU, and ANMOL DHAWAN
____________

Appeal 2018‐005877
Application 14/450,7291
Technology Center 3600
____________

Before DAVID M. KOHUT, IRVIN E. BRANCH, and
JOSEPH P. LENTIVECH, Administrative Patent Judges.

LENTIVECH, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants appeal from the
Examiner’s decision to reject claims 1, 3, 4, 8–13, and 17–27. Claims 2, 5–
7, and 14–16 are cancelled. App. Br. 24–25, 27 (Claims Appendix).
We have jurisdiction over the pending claims under 35 U.S.C. § 6(b).
We affirm-in-part.

1 According to Appellants, the real party in interest is “Adobe Systems
Incorporated.” App. Br. 1.
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STATEMENT OF THE CASE
Appellants’ Invention
The invention “relates to conducting marketing campaigns based on
real-time social media-based user content.” Spec. ¶ 1. Claim 1 is illustrative
of the claimed invention and reproduced, below, with emphasis on
“additional elements” (explained infra).
1. A method for automating generation of customized
electronic content based on sentiment data obtained via
system-to-system communication with social media sites, the
method comprising:
generating and scoring, by a marketing system, sentiment
information used for generating the electronic content, wherein
generating and scoring the sentiment information comprises:
identifying, by the marketing system, a first feature of a
target product for a marketing campaign, a second feature
of the target product for the marketing campaign, and a
third feature of the target product,
executing, by a real-time capture engine of the marketing
system, an algorithm that obtains user comment
information from social media sites by generating
messages formatted for application programming
interfaces of the social media sites and obtaining the user
comment information through communications of the
messages over a data network and via the application
programming interfaces,
executing a sentiment engine to automatically compute,
from the user comment information, a first sentiment
score for the first feature, a second sentiment score for
the second feature, and a third sentiment score for the
second feature, wherein the first sentiment score and the
second sentiment score are determined to be greater than
the third sentiment score based on a negative sentiment
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toward the third feature being indicated by the user
comment information, and
increasing, by the marketing system, the first sentiment
score to be greater than the second sentiment score based
on a number of comments or posts, which are described
in the obtained user comment information, involving a
sentiment used to generate the first sentiment score,
generating, by an execution tool of the marketing system and
based on the first sentiment score being greater than the second
sentiment score and third sentiment score, the electronic
content by (i) retrieving electronic information corresponding
to the first feature of the target product rather than the second
and third features of the target product, the electronic
information associated with a target population for the
marketing campaign, and (ii) inserting the retrieved electronic
information that [sic] into the electronic content; and
transmitting, by the execution tool, marketing communications
with the electronic content to the target population.
App. Br. 23–24 (claims appendix).
Rejection
Claims 1, 3, 4, 8–13, and 17–27 stand rejected under 35 U.S.C. § 101
as directed to patent-ineligible subject matter. Non-final Act. 2–5.
PRINCIPLES OF LAW
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 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. Pty. Ltd. v. CLS Bank Int’l,
573 U.S. 208, 216 (2014) (internal quotation marks and citation omitted).
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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. 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 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.”).
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, 69 (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 184 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))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 176; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
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products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme 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. (citing Benson and Flook); see, e.g., id. at 187 (“It 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.”).
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 (internal citation
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. (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.
PTO GUIDANCE
The United States Patent and Trademark Office (USPTO) recently
published revised guidance on the application of § 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“Guidance”). Under the Guidance, we first look to whether the
claim recites:
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(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human interactions such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see Manual of Patent Examining
Procedure (MPEP) § 2106.05(a)–(c), (e)–(h) (9th Ed.,
Rev. 08.2017, Jan. 2018)).
See Guidance, 84 Fed. Reg. at 52, 54–55. Only if a claim (1) recites a
judicial exception and (2) does not integrate that exception into a practical
application, we conclude the claim is directed to a judicial exception (id. at
54) and then look to whether the claim:
(3) adds a specific limitation or combination of limitations
beyond the judicial exception that are not “well-understood,
routine, conventional” activity 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 Guidance, 84 Fed. Reg. at 56.
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CLAIMS 1, 3, 4, 8–13, AND 17–26
Claim 1 is representative of claims 1, 3, 4, 8–13, and 17–26. See
37 C.F.R. § 41.37(c)(1)(iv). There is no dispute that claim 1 falls within a
category of patentable subject matter. See 35 U.S.C. § 101 (“process,
machine, manufacture, or composition of matter”); see also Guidance, 84
Fed. Reg. at 53–54 (“Step 1”). We accordingly turn to the issues raised by
the Guidance and Appellants’ arguments.
Step 2A, Prong One:2 Does the Claim Recite
Any Judicial Exceptions
Turning to the first issue set forth by the Guidance (see supra 6, bullet
“(1)”), we agree with the Examiner that claim 1 recites judicial exceptions.
Specifically, we agree claim 1 recites collecting and analyzing “information

2 The Guidance separates the enumerated issues (1) to (4) (see supra 6) into
Steps 2A(1), 2A(2), and 2B, as follows:
[T]he revised procedure . . . focuses on two aspects [of whether
a claim is “directed to” a judicial exception under the first step
of the Alice/Mayo test (USPTO Step 2A)]: (1) [w]hether the
claim recites a judicial exception; and (2) whether a recited
judicial exception is integrated into a practical application.
[W]hen a claim recites a judicial exception and fails to integrate
the exception into a practical application, . . . further analysis
pursuant to the second step of the Alice/Mayo test (USPTO
Step 2B) . . . is needed . . . in accordance with existing USPTO
guidance as modified in April 2018.[footnote omitted]
84 Fed. Reg. at 51 (referencing, via the omitted footnote, “USPTO
Memorandum of April 19, 2018, ‘Changes in Examination Procedure
Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility
Decision (Berkheimer v. HP, Inc.)’ (Apr. 19, 2018), available at https://
www.uspto.gov/sites/default/files/documents/memo-berkheimer-
20180419.PDF [ . . . ’USPTO Berkheimer Memorandum’].”).
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known [to be] said about a product,” and more particularly “[i]dentifying . . .
product features, determining . . . sentiment scores . . . [to generate] a
ranking [of the features] . . . based on . . . [social media] comments[, and]
. . . [s]electing features for . . . customizing content . . . [of] a marketing
campaign[.]” Non-final Act. 3; see also Ans. 5. We also agree that
analogous features have been judicially-recognized as abstract ideas in
Affinity Labs of Texas, LLC v. Amazon.com Inc., 838 F.3d 1266 (Fed. Cir.
2016). See id. at 1271 (identifying an abstract idea of collecting information
about a product’s use—namely about the media content selected by a
device—and targeting advertisements to the product’s user based thereon).
We add that, except for the additional elements of claim 1 (see
supra 2–3), all claim limitations recite a judicial exception identified by the
Guidance. Specifically, the limitations recite “[c]ertain methods of
organizing human activity— . . . commercial . . . interactions []including . . .
marketing” (Guidance, 84 Fed. Reg. at 52) by reciting steps of identifying
product features, obtaining user comments about the features, ranking the
features based on the comments, and generating a communication that
describes the highest ranking feature. The limitations also recite “[m]ental
processes—concepts performed in the human mind []including an
observation, evaluation, judgment, opinion” (id.) by reciting steps of
determining the sentiment and subject matter of a comment, accordingly
scoring (rating) the subject matter, and weighting (increasing) the score
based on how many times the same sentiment is observed for the subject
matter.
For the foregoing reasons, we find claim 1 recites judicial exceptions.
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Step 2A, Prong Two: Are the Recited Judicial Exceptions
Integrated Into a Practical Application?
Turning to the second issue set forth by the Guidance (see supra 6,
bullet “(2)”), we find that claim 1’s additional elements do not integrate the
judicial exceptions into a practical application. See Guidance, 84 Fed. Reg.
at 53 (describing a “practical application” as a “meaningful limit on the
[recited abstract ideas], such that the claim is more than a drafting effort
designed to monopolize the [ideas]”). Specifically, we agree with the
Examiner that claim 1 recites the following additional elements:
automating; electronic content; system-to-system communications with
websites (“sites”); an engine that formats messages for application
programming interfaces (“APIs”) of the sites; communications occurring
over a data network and via the APIs; an engine that computes scores; and a
tool that, based on the scores, generates and transmits electronic content.
Non-final Act. 4, 8; Ans. 4–6. We also agree that the additional elements do
not meaningfully limit the judicial exceptions because the additional
elements do not constitute a “technical means” or even a particular “way” of
implementing the abstract ideas. Non-final Act. 6; Ans. 4–6.
That is, we agree “[t]he social-media limitations are simply a field of
use that attempts to confine the invention to a particular technological
environment” (Non-final Act. 4) and “[t]he purported ‘automating’ is
[simply] that anything done by a computer is automated to some extent”
(Ans. 5). We also agree the “generic computer components [are merely]
appended to the series of abstract steps” (Non-final Act. 4), i.e., recited as
merely achieving the results of the abstract ideas (id. at 3, 6, 8; Ans. 4).
And, we agree the “scores are computed . . . in no particular way”
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(Non-final Act. 5–6), there is “identifying three features of a target product
. . . in no particular way” (id. at 6), “[t]he formatting is done in no particular
way” (Ans. 4), and there is “obtaining [of] . . . information from social
media sites in the only way in which it is possible to do so (obeying the
format requirements of the sites’ APIs)” (id. at 6).
Claim 1 accordingly lacks, for example, a particular technological
solution to a problem, particular machine, particular transformation of an
article to a different state, or other meaningful restriction of scope. See
Guidance, 84 Fed. Reg. at 55 (“exemplary considerations . . . indicative [of]
a practical application”). The additional elements impart only a field of use,
non-descript automating, and an non-descript network of generic technology
used by all modern businesses to collect and analyze information (e.g.,
software applications (“engines” and “tools”), electronic data, and APIs).
The additional elements thus constitute generic computer components
performing their generic functions (i.e., doing only what these components
ubiquitously do as a class) to merely apply the recited abstract ideas (i.e., are
recited as merely achieving the end-result of the abstract ideas). See
Guidance, 84 Fed. Reg. at 55 (“apply it” bullet corresponding to the
Guidance’s footnote 30); see also MPEP § 2106.05(f) (cited by the
Guidance’s footnote 30 as providing “more information concerning mere
instructions to apply a judicial exception”).3

3 MPEP § 2106.05(f)(1) and (2) instruct on this issue: “When determining
whether a claim simply recites a judicial exception with the words ‘apply it’
(or an equivalent), such as mere instructions to implement an abstract idea
on a computer, examiners may consider the following. (1) Whether the
claim recites only the idea of a solution or outcome i.e., the claim fails to
recite details of how a solution to a problem is accomplished. . . . (2)
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For the foregoing reasons, we find claim 1 does not integrate the
recited judicial exceptions into a practical application and, therefore, is
directed to the recited judicial exceptions.
Step 2B: Does the Claim Recite Anything That Is
Beyond the Recited Abstract Ideas and Not a Well-Understood,
Routine, Conventional Activity?
Turning to the third and fourth issues set forth by the Guidance (see
supra 6, bullets “(3)” and “(4)”), we find claim 1 does not recite
significantly more than the abstract ideas to which the claim is directed.
84 Fed. Reg. at 56. Specifically, we agree with the Examiner that “the
additional claim elements, considered individually and as an ordered
combination, . . . are recited at a high level of generality and only perform
generic computer functions of manipulating information and sharing
information.” Non-final Act. 4; see also Ans. 7–8 (“does not go beyond the
routine and conventional use of common, well-known features of generic
computers”). We also agree the claimed “networks are only [used] for their
routine and customary purpose of sharing information [by] well-known,
routine and conventional . . . APIs and their formats.” Ans. 9; see also id. at
4 (addressing APIs).
The claimed technology is, accordingly, only generic devices
performing their generic functions (individually and in combination). For
example, claim 1 recites a generic software application (capture engine) that
formats generic instructions (messages) for another generic software

Whether the claim invokes computers or other machinery merely as a tool to
perform an existing process . . . (e.g., to receive, store, or transmit data).”
MPEP at 2100–64, 66.
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application (site) and its respective generic interface (API). See e.g., IEEE
100—The Authoritative Dictionary of IEEE Standards Terms 46 (Seventh
Edition 2000) (“application program interface (API)[:] The interface
between the application software and the application platform, across which
all services are provided.”). Abstractly-described information (user
comment information, i.e., posts) is returned through the API and over a
generic data network. Compare In re Lowry, 32 F.3d 1579 (Fed.Cir.1994)
(finding a hierarchical data structure was “[m]ore than mere abstraction”
because it required “specific . . . structural elements . . . [that] provide
tangible benefits” such as “nested operations”). A third generic software
application (sentiment engine) uses the information to automatically
compute more abstractly-described information (product feature scores and
rankings computed from a negative sentiment and quantity of posts). A
fourth generic software application (execution tool) uses the computed
information to indescriptly retrieve, insert, and transmit additional
abstractly-described information (electronic information and content
corresponding to product features).

Appellants’ Arguments
Appellants contend the Examiner describes the claimed invention at a
level of abstraction untethered from claim 1 (App. Br. 5–10) and thereby
neglects the claimed processes for computing and comparing sentiment
scores (id. at 8). We are unpersuaded. As shown above, the Examiner
ascribes each claim feature to either the identified abstract idea or additional
elements. Appellants cannot persuasively rebut the prima facie case by
merely alleging, as they do in the arguments (id. at 5–10), some of the claim
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features are not analogous to the identified abstract idea. Appellants must
rather show the identified abstract idea overgeneralizes a claim feature, e.g.,
overgeneralizes the claimed processing of a sentiment score based on a type
and quantity of sentiment.4 See In re Piasecki, 745 F.2d 1468, 1472 (Fed.
Cir. 1984) (“After a prima facie case . . . has been established, the burden of
. . . [r]ebuttal is . . . a showing of facts supporting the opposite conclusion.”
(internal quotation marks and citation omitted)); SHOW, Black’s Law
Dictionary (10th ed. 2014) (“To make (facts, etc.) apparent or clear by
evidence; to prove”).
Appellants also contend claim 1 provides “even greater technical
particularity” than the patent-eligible claim of McRO, Inc. v. Bandai Namco
Games Am. Inc., 837 F.3d 1311 (Fed. Circ. 2016). App. Br. 11; see also id.
at 10–12. We are unpersuaded. Unlike claim 1, McRO’s claim specifies the
invention’s results and the mechanism yielding those results. 837 F.3d. at
1306–08; see also supra 9–10 (addressing claim 1’s lack of specificity). For
example, McRO’s claimed invention generates a “stream of output morph
weight sets” (result) by evaluating “sub-sequences” within a “timed data file
of phonemes” against rules that define a “morph weight set stream” as a
“function of phoneme sequence and time of said phoneme sequence”
(mechanism). In light of such restrictions, McRO found the claim

4 The Southern District of New York has presented a broader generalization
of even “sentiment calculus for a method and system using social media”
(emphasis added). iSentium, LLC v. Bloomberg Fin. L.P., 343 F. Supp. 3d
379, 382 (S.D.N.Y. 2018). The court particularly found: “The ‘056 Patent
recites individual rules that purport to perform a sentiment analysis that is
actionable by traders. But ultimately, the two independent claims . . .
describe the abstract idea of discerning the meaning of a statement based on
the use of words in context.” Id. at 390.
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sufficiently “specific” inasmuch as reciting a mechanism of the invention
that prevents preemption of the recited abstract idea. Id. at 1314. McRO
explains:
The preemption concern arises when the claims are not directed
to a specific invention and instead improperly monopolize the
basic tools of scientific and technological work. . . . A patent
is not good for an effect, or the result of a certain process
because such patents would prohibit all other persons from
making the same thing by any means whatsoever. A patent
may issue for the means or method of producing a certain
result, or effect, and not for the result or effect produced. We
therefore look to whether the claims in these patents focus on a
specific means or method that improves the relevant technology
or are instead directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and
machinery.
Id. (citations and quotation marks omitted). Appellants’ claim 1 does not
overcome the above concerns, i.e., specify a mechanism that prevents
preemption. The only arguable recitations of a mechanism are the
formatting of messages for API’s and adjusting of sentiment scores “based
on” the polarity (“negative”) and extent (“number”) of sentiments. These
features are basic tools of network communication and sentiment analysis.
They are not claimed with sufficient specificity in a manner similar to the
claims of McRO.
Appellants also contend claim 1 is specific enough to compel a
finding of patent-eligibility under the guidance of Bascom Glob. Internet
Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016) and DDR
Holdings, LLC v. Hotels.com, L.P., (Fed. Cir. 2014). App. Br. 17–21. We
are unpersuaded. Like the claim of McRO, the claims of Bascom and DDR
are patent-eligible because each claim recites a specific mechanism of the
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invention and thereby prevents preemption of the recited abstract ideas.
Bascom, 827 F.3d at 1350–52; DDR, 773 F.3d at 1257–59. As explained
above, Appellants’ claim 1 is not specific in this regard.
Appellants also contend the Examiner errs in relying on Elec. Power
Grp. App. Br. 13–15. Specifically, Appellants contend Elec. Power Grp. is
not instructive because “its reasoning focused on claiming the
mentally-performable step of analyzing data without requiring any
particularity, unlike the specific combination of computer-based operations
in [claim 1].” Id. at 13. We are unpersuaded. The Examiner relies on Elec.
Power Grp. to show that generic computer components, if performing their
generic functions and nothing more, merely “apply” their implemented
abstract ideas (such as implemented mental steps). See id.
Appellants also contend the Examiner errs in relying on Affinity Labs.
App. Br. 15–17. Specifically, Appellants contend Affinity Labs is not
instructive because “[t]he crux . . . was that the ineligible claims merely
required the general outcome of transmitting certain data (i.e., streaming
content), without specifying any particular means for doing so.” Id. at 16.
We are unpersuaded. The Examiner does not rely on this asserted ‘crux’ of
Affinity Labs. The Examiner relies on Affinity Labs to show that collecting
and analyzing “information known [to be] said about a product” is an
abstract idea. Non-final Act. 3.
Appellants also contend “[t]he Berkheimer decision . . . requires a
reversal of the Examiner’s findings regarding the conventionality of
limitations in [claim 1]” because “the Examiner failed to provide evidence
that the combination of limitations . . . are routine or conventional.”
Reply Br. 5; see also id. at 5–7. We are unpersuaded. Neither Berkheimer
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nor the USPTO Berkheimer Memorandum (see supra fn. 2) concerns mere
instructions to implement an abstract idea on a computer. See supra 10–11
(explaining that the Guidance cites MPEP § 2106.05(f) as instructive on
“mere instructions to apply [a judicial] exception”); compare USPTO
Berkheimer Memorandum, 1–2 (“Berkheimer informs the inquiry into . . .
well-understood, routine, conventional activity.”), 3 (“This memorandum
revises the procedures set forth in MPEP § 2106.07(a) . . . and . . . (b)).
Conclusion
For the foregoing reasons, we sustain the Examiner’s 35 U.S.C. § 101
rejection of claims 1, 3, 4, 8–13, and 17–26.
CLAIM 27
Claim 27 depends from claim 1 and adds limitations describing: a
graphical user interface for accessing the target product and features;
function calls, function call instances, and data parameters for executing the
algorithm that obtains user comments; and a two hyperlinks added to the
electronic content to respectively display graphics of the highest ranked
product feature (“first feature”) and cause a server to track interactions
within a webpage. App. Br. 34–35.
The Examiner’s rejection does not address claim 27 with particularity,
stating only: “The dependent claims further do not amount to significantly
more than the abstract idea: claims 3, 9–13, 17–19, 21–24, 26 and 27 simply
recite further manipulation of information, in some cases combined with
further description of the type of information being manipulated.”
Non-final Act. 5. The Answer states:
In regard to claim 27, presenting a GUI with a menu, receiving a
selection, accessing a file matching it somehow and then
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retrieving data from the file were all ubiquitous computer
functions long before the filing of the present invention. The
later steps . . . of identifying a function call and data parameters
and then generating an instance of those simply recite how
computer functions work generally and always have; there is not
only nothing new here, but this is ubiquitous and banal.
Computer functions of this type were described in college
computer programming textbooks of the 1960s.
Ans. 4–5. The Answer further states:
All of the additional features of claim 27 recite routine and
conventional data processing techniques and steps, which were
routine and conventional before the filing of the present
inventions. The original Apple computer in the late 1970s
included a graphical user interface and menus and allowed
people to select things and could access electronic files based on
selections and could retrieve data from them, for example. As
has already been explained, the use of parameters and function
calls was ubiquitous in programming generally by the late 1960s,
and APIs and their formats were ubiquitous in networked
communications between disparate systems by the mid-2000s
and known long before that. None of this goes beyond the use
of well-known, routine and customary data processing.
Id. at 10.
Appellants contend, as they do for claim 1, that “[t]he Berkheimer
decision . . . requires a reversal of the Examiner’s findings regarding the
conventionality of limitations in [claim 1]” because “the Examiner failed to
provide evidence that the combination of limitations . . . are routine or
conventional.” Reply Br. 5; see also id. at 5–7. We agree in the instance of
claim 27. The Examiner finds the features of claim 27 are “well-known,
routine and customary data processing” (as opposed to mere instructions to
apply an abstract idea via generic computer functions, as found for claim 1).
The Examiner must, accordingly, present evidence satisfying the USPTO
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Berkheimer Memorandum. The cited Federal Circuit decisions (see
supra 12–14) do not satisfy the Memorandum. See USPTO Berkheimer
Memorandum (“2. A citation to one or more of the court decisions discussed
in MPEP § 2106.05(d)(II) as noting the well-understood, routine,
conventional nature of the additional element(s).”); MPEP § 2106.05(d)(II)
(presenting a list of computer functions that are judicially-recognized, but
not including the Federal Circuit decisions cited by the Examiner). The
Examiner’s official notice (e.g., “the [claimed] use of parameters and
function calls was ubiquitous . . . by the late 1960s” (Ans. 10)) is improper
insofar as concerning esoteric facts about using function calls to access a
website’s data via its API. See USPTO Berkheimer Memorandum 4 (“4. . . .
Procedures for taking official notice and addressing an applicant’s challenge
to official notice are discussed in MPEP § 2144.03.”); MPEP § 2144.03
(proscribing “notice of facts . . . not capable of instant and unquestionable
demonstration as being well-known” and all “technical facts . . . of esoteric
technology or specific knowledge of the prior art”).
Accordingly, we do not sustain the Examiner’s 35 U.S.C. § 101
rejection of claim 27.
DECISION
The Examiner’s decision rejecting claims 1, 3, 4, 8–13, and 17–26 is
affirmed.
The Examiner’s decision rejecting claim 27 is reversed.
No time period for taking any subsequent action in connection with
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this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED-IN-PART