Srivastava, Amarendra et al.

Patent Trials and Appeals Board

Jun 26, 2020

2019001514 (P.T.A.B. Jun. 26, 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.
14/814,652 07/31/2015 Amarendra Srivastava 37202/629001; 1508985US 7568
57956 7590 06/26/2020
FBFK/Intuit
Robert Lord
9 Greenway Plaza
Suite 500
HOUSTON, TX 77046
EXAMINER
JASMIN, LYNDA C
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
06/26/2020 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):
docketing@fbfk.law
jhathaway@fbfk.law
rlord@fbfk.law
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AMARENDRA SRIVASTAVA, SAURABH SAXENA, and
MOHAN SUNKARA
Appeal 2019-001514
Application 14/814,652
Technology Center 3600
Before ERIC S. FRAHM, JOYCE CRAIG and MATTHEW J. McNEILL,
Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–20. See Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Intuit, Inc. Appeal Br.
4.
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CLAIMED SUBJECT MATTER
The claims are directed to logging user activities in an activity feed of
a financial management application so that an activity may be later selected
by the user to be undone. Spec. ¶ 12. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A method for managing a plurality of financial
documents using a financial management application (FMA),
comprising:
performing a plurality of activities of the FMA,
wherein the plurality of activities comprises one or more
actions performed to complete a task of the FMA resulting in at
least one document detailing financial data related to the
operation of an entity;
recording, in an activity feed on a user interface, the
plurality of activities and metadata describing characteristics of
performing the plurality of activities;
selecting, in response to a user request to undo a first
activity of the plurality of activities found on the user interface,
the first activity from the activity feed;
selecting, from the activity feed and further in response to
the user request to undo the first activity, a second activity of the
plurality of activities, wherein the second activity is selected
based on a parent-child relationship with the first activity as
specified by the metadata;
selecting, based on the metadata and from the plurality of
financial documents, a first financial document that was accessed
by the FMA when performing the first activity;
identifying, based on the metadata, a first result of the first
activity on the first financial document; and
modifying the first financial document to remove the first
result of the first activity.
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REJECTIONS
Claims 1–20 stand rejected under 35 U.S.C. § 101 because the claims
are directed to patent-ineligible subject matter. Final Act. 3–9.
Claims 1–20 stand rejected under 35 U.S.C. § 103 as unpatentable
over the combination of McInerney et al. (US 2008/0307333 A1, published
Dec. 11, 2008) (“McInerney”) and Massey et al. (US 2011/0113359 A1,
published May 12, 2011) (“Massey”). Final Act. 9–15.
ANALYSIS
Rejection of Claims 1–20 Under 35 U.S.C. § 101
Appellant argues that the Examiner’s rejection of claim 1 under
35 U.S.C. § 101 as directed to patent-ineligible subject matter is in error.
Appeal Br. 7–13. To the extent Appellant has not advanced separate,
substantive arguments for particular claims, or other issues, such arguments
are waived. 37 C.F.R. § 41.37(c)(1)(iv). Appellant argues claims 1–20 as a
group. See Appeal Br. 7. Given our discretion under 37 C.F.R.
§ 41.37(c)(1)(iv), we decide the § 101 rejection of claims 1–20 based on
representative claim 1.
Legal Standard
“Whether a claim is drawn to patent-eligible subject matter is an issue
of law that we review de novo.” SiRF Tech., Inc. v. Int’l Trade Comm’n, 601
F.3d 1319, 1331 (Fed. Cir. 2010).
The Supreme Court’s two-step framework guides our analysis of
patent eligibility under 35 U.S.C. § 101. Alice Corp. v. CLS Bank Int’l, 573
U.S. 208, 217 (2014). In addition, the Office recently published revised
guidance for evaluating subject matter eligibility under 35 U.S.C. § 101,
specifically with respect to applying the Alice framework. USPTO, 2019
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Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) (“2019 Revised Guidance”). If a claim falls within one of the statutory
categories of patent eligibility (i.e., a process, machine, manufacture, or
composition of matter) then the first inquiry is whether the claim is directed
to one of the judicially recognized exceptions (i.e., a law of nature, a natural
phenomenon, or an abstract idea). Alice, 573 U.S. at 217. As part of this
inquiry, we must “look at the ‘focus of the claimed advance over the prior
art’ to determine if the claim’s ‘character as a whole’ is directed to excluded
subject matter.” Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d
1253, 1257 (Fed. Cir. 2016).
Per the 2019 Revised Guidance, this first inquiry has two prongs of
analysis (i) does the claim recite a judicial exception (e.g., an abstract idea),
and (ii) if so, is the judicial exception integrated into a practical application.
84 Fed. Reg. at 54. Under the 2019 Revised Guidance, if the judicial
exception is integrated into a practical application, see infra, the claim is
patent eligible under § 101. 84 Fed. Reg. at 54–55. If the claim is directed to
a judicial exception (i.e., recites a judicial exception and does not integrate
the exception into a practical application), the next step is to determine
whether any element, or combination of elements, amounts to significantly
more than the judicial exception. Alice, 573 U.S. at 217; 84 Fed. Reg. at 56.
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 (citation omitted).
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To summarize, under the current 2019 Revised 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 Manual for Patent
Examining Procedure (“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 to whether the claim:
(3) adds a specific limitation beyond the judicial
exception that is not “well-understood, routine, conventional”
in the field (see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine,
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial exception.
See 2019 Revised Guidance.
Step 1
Claim 1, a method claim, falls within the process category of § 101.
See 2019 Revised Guidance, 84 Fed. Reg. at 53–54 (citing MPEP § 2106.03,
2106.06).
Step 2A(i): Does the Claim Recite a Judicial Exception?
The Examiner determined that claim 1 is directed to “managing a
plurality of financial documents by modifying them to undo an activity
performed with respect to the document,” which is similar to “collecting
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information, analyzing it,”2 and “displaying certain results of the collection
and analysis.”3 See Final Act. 6. See Appeal Br. 8–11 and Reply Br. 2–5.
We agree with the Examiner that claim 1 recites an abstract idea,
specifically mental processes. The “performing,” “selecting,” “identifying,”
and “modifying” steps, as recited in claim 1, are part of the recited abstract
idea because such rule-based tasks can be performed by the human mind or
with pen and paper. The 2019 Revised Guidance explains that “mental
processes” include acts that people can perform in their minds or using pen
and paper, even if the claim recites that a generic computer component
performs the acts. See Guidance, 84 Fed. Reg. at 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.”); see also Intellectual Ventures I LLC v. Symantec Corp., 838
F.3d 1307, 1318 (Fed. Cir. 2016) (“[W]ith the exception of generic
computer-implemented steps, there is nothing in the claims themselves that
foreclose them from being performed by a human, mentally or with pen and
paper”), quoted in 2019 Revised Guidance, 84 Fed. Reg. at 52 n.14.
Moreover, the 2019 Revised Guidance expressly recognizes mental
processes, including observations, evaluations, judgments, and opinions that
can be performed in the human mind, as patent-ineligible abstract ideas.
Accordingly, because the steps of “performing a plurality of activities,”
“selecting” activities and a document, “identifying” a result, and
“modifying” a document involve observations, evaluations, judgments,

2 Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016).
3 Id.
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and/or opinions, claim 1 can be characterized as reciting a judicial exception
to patent-eligible subject matter.
Because claim 1 recites an abstract idea, we proceed to Prong Two of
Step 2A to determine if the idea is integrated into a practical application, in
which case the claim as a whole would not be “directed to” merely an
abstract idea.
Step 2A(ii): Judicial Exception Integrated into a Practical Application?
Because we determined that claim 1 recites a patent-ineligible
concept, we next 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.
We use the term “additional elements” for claim features, limitations,
or steps that the claim recites beyond the identified judicial exception. See
Revised Guidance at 55 n.24. In claim 1, the additional elements include the
limitation “recording, in an activity feed on a user interface, the plurality of
activities and metadata describing characteristics of performing the plurality
of activities.”
To integrate the exception into a practical application, additional
claim elements must, for example, improve the functioning of a computer or
any other technology or technical field (see MPEP § 2106.05(a)), apply the
judicial exception with a particular machine (see MPEP § 2106.05(b)), affect
a transformation or reduction of a particular article to a different state or
thing (see MPEP § 2106.05(c)), or apply or use the judicial exception in
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some other meaningful way beyond generally linking the use of the judicial
exception to a particular technological environment (see MPEP
§ 2106.05(e)). See 2019 Revised Guidance.
Appellant argues that claim 1 provides additional elements that reflect
an improvement in the functioning of a computer, or an improvement to
other technology or technical field. See Appeal Br. 11–12; Reply Br. 5–7. In
particular, Appellant argues that the claim limitations result in effectively
“rolling back” the financial document to a preferred version that would be
otherwise unrecoverable. See Appeal Br. 11–12. Thus, Appellant argues that
claim 1 provides an improvement in the technical fields of document
management and version control. Id.
Appellant’s arguments are not persuasive. Appellant has not
persuaded us that recording, in an activity feed on a user interface, the
plurality of activities and metadata describing characteristics of performing
the plurality of activities, as in claim 1, “improve[s] the functioning of the
computer, make[s] it operate more efficiently, or solve[s] any technological
problem.” Trading Techs. Int’l Inc. v. IBG LLC, 921 F.3d 1378, 1384–85
(Fed. Cir. 2019). Rather, the claim simply “includes instructions to
implement an abstract idea on a computer” and “does no more than
generally link the use of a judicial exception to a particular technological
environment or field of use.” 2019 Revised Guidance, 84 Fed. Reg. at 55.
Indeed, Appellant acknowledges that the method recited in claim 1 can be
performed on virtually any type of computing system. See Spec. ¶¶ 38–39.
Further, the mere displaying of a plurality of activities on a graphical
user interface, as described by the additional elements noted above, is simply
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an insignificant extra-solution activity added to the judicial exception. See
2019 Revised Guidance, 84 Fed. Reg. at 55.
Appellant also argues that claim 1 is patent-eligible because its
practice does not preempt practice by others. Appeal Br. 15.
While preemption may signal patent ineligible subject matter, the
absence of complete preemption “does not demonstrate patent eligibility, . . .
[w]here a patent’s claims are deemed only to disclose patent ineligible
subject matter under the Mayo framework, as they are in this case,
preemption concerns are fully addressed and made moot.” Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015);
see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362–63
(Fed. Cir. 2015) (“that the claims do not preempt all price optimization or
may be limited to price optimization in the e-commerce setting do not make
them any less abstract”).
Considering claim 1 as a whole, then, Appellant’s invention lacks a
technical solution to a technical problem. Claim 1 as a whole merely uses
instructions to implement the abstract idea on a computer or, alternatively,
merely uses a computer as a tool to perform the abstract idea. Here, the
additional limitation(s) do not integrate the judicial exception into a practical
application. More particularly, the claims do not recite (i) an improvement to
the functionality of a computer or other technology or technical field; (ii) a
“particular machine” to apply or use the judicial exception; (iii) a particular
transformation of an article to a different thing or state; or (iv) any other
meaningful limitation. See 84 Fed. Reg. at 55. Rather, claim 1 recites an
abstract idea as identified in Step 2A(i), supra, and none of the limitations
integrates the judicial exception into a practical application.
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Therefore, because the abstract idea is not integrated into a practical
application, we conclude that the claim is directed to the judicial exception.
Step 2B — “Inventive Concept” or “Significantly More”
If the claims are directed to a patent-ineligible concept, as we
conclude above, we proceed to the “inventive concept” step. For Step 2B we
must “look with more specificity at what the claim elements add, in order to
determine ‘whether they identify an “inventive concept” in the application of
the ineligible subject matter’ to which the claim is directed.” Affinity Labs of
Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1258 (Fed. Cir. 2016)
(quoting Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed.
Cir. 2016)). We look to see whether there are any “additional features” in the
claims that constitute an “inventive concept,” thereby rendering the claims
eligible for patenting even if they are directed to an abstract idea. Alice, 573
U.S. at 221. Those “additional features” must be more than “well-
understood, routine, conventional activity.” Mayo, 566 U.S. at 79.
The Examiner found, and we agree, that the additional elements in
claim 1 amount to a well-understood, routine, conventional activity
previously known to the industry. See Final Act. 7–8 and Ans. 5–7.
Appellant argues that claim 1 includes a “hierarchy of activities” in
which rolled-back changes may be automatically propagated through the
hierarchy to all the child activities. Appellant argues that this combination of
claim elements is not well-understood, routine, and conventional activity in
the industry. See Appeal Br. 13–14, Reply Br. 5–7. Additionally, Appellant
argues that the claims recite an inventive concept, alleging that the
additional elements identified above amount to “significantly more” than the
judicial exception. See Reply Br. 7–8. Finally, Appellant argues that the
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factual findings required by Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir.
2018) have not been satisfied. See Reply Br. 8–9.
We are not persuaded that the Examiner erred. Appellant fails to
provide any evidence as to how the additional elements identified above are
“significantly more” than the well-understood, routine, and conventional
functions outlined by the courts. Rather, Appellant simply recites:
[I]ndependent claim 1 includes receiving a user request to undo
a first activity performed on a financial document, identifying a
result that occurred from performing the first activity on the
financial document, and then modifying the financial document
to remove the result. This effectively rolls back the financial
document to an earlier version of itself, giving the user access to
a preferred version of the financial document that would
otherwise be unrecoverable.
See Reply Br. 9. Based on the above, Appellant asserts, without persuasive
argument, that claim 1 uses different computer functions than the arranging,
storing, retrieving, sorting, eliminating and determining information
described by the courts in Versata.4 Reply Br. 9.
Moreover, as noted in Step 2A(ii) above, the claim limitation that is
an additional element beyond the judicial exception is “recording, in an
activity feed on a user interface, the plurality of activities and metadata
describing characteristics of performing the plurality of activities.” Simply
displaying a list of the plurality of activities, along with the metadata
describing characteristics of performing the respective activities, is a well-
understood, routine and conventional function of a generic computer. See

4 Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1331 (Fed. Cir.
2015).
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Alice, 573 U.S. at 224–25; Versata, 793 F.3d at 1334; see also TLI
Commc’ns LLC Patent Litig., 823 F.3d 607, 612–13 (Fed. Cir. 2016).
Additionally, because the Specification describes the additional
elements in general terms, without describing the particulars, we conclude
the claim limitations may be broad but reasonably construed as reciting
conventional computer components and techniques, particularly in light of
Appellant’s Specification, as cited above. See Berkheimer Memo5 § III.A.1;
Spec. ¶¶ 38–39. We conclude claim 1 does not have an inventive concept
because the claim, in essence, merely recites various computer-based
elements along with no more than mere instructions to implement the
identified abstract idea using the computer-based elements.
Because the claims are directed to a judicial exception, without
significantly more, we sustain the Examiner’s § 101 rejection of independent
claim 1 and grouped claims 2–20, not argued separately with particularity.

Rejection of Claims 1–20 Under 35 U.S.C. § 103(a)
The USPTO “must examine the relevant data and articulate a
satisfactory explanation for its action including a rational connection
between the facts found and the choice made.” Motor Vehicle Mfrs. Ass’n v.
State Farm Mut. Auto. Ins. Co., 463 U.S. 29, 43 (1983) (internal quotation

5 “Changes in Examination Procedure Pertaining to Subject Matter
Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP,
Inc.)” at 3 (Apr. 19, 2018) (explaining that a specification that describes
additional elements “in a manner that indicates that the additional elements
are sufficiently well-known that the specification does not need to describe
the particulars of such additional elements to satisfy 35 U.S.C. § 112(a)” can
show that the elements are well understood, routine, and conventional).
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marks and citation omitted); see Synopsys, Inc. v. Mentor Graphics Corp.,
814 F.3d 1309, 1322 (Fed. Cir. 2016) (stating that, as an administrative
agency, the PTAB “must articulate logical and rational reasons for [its]
decisions” (internal quotation marks and citation omitted)). We will not
resort to speculation or assumptions to cure the deficiencies in the
Examiner’s fact finding. See In re Warner, 379 F.2d 1011, 1017 (CCPA
1967). In this light, and in view of the Examiner’s findings of fact for the
rejection of claim 1 (see Final Act. 9–15; Ans. 7–11), we are persuaded that
the Examiner erred in rejecting claim 1 over the combination of McInerney
and Massey.
In the Final Rejection, the Examiner concluded that the combination
of McInerney and Massey renders claim 1 obvious (see Final Act. 9–15).
More particularly, the Examiner found McInerney teaches a method for
managing a plurality of documents using a management application,
including recording, in an activity feed on a user interface, the plurality of
activities and metadata describing characteristics of performing the plurality
of activities (McInerney ¶¶ 42, 66 and 90), and selecting, from the activity
feed and further in response to the user request to undo the first activity, a
second activity of the plurality of activities (¶ 60). The Examiner also found
the claims do not explicitly require the selection of second activity occur
after both the first and second activity are performed (see Ans. 8).
Appellant argues, and we agree, that claim 1 requires (i) both a first
activity and a second activity be selected in response to a user request to
undo the first activity; (ii) the selection of the first activity and the selection
of the second activity occur after both the first activity and the second
activity are performed; and (iii) the first activity and the second activity are
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selected from the same activity feed. See Appeal Br. 17–18. Further,
Appellant argues that McInerney, and, by extension, the combination of
McInerney and Massey, fails to teach or suggest the second activity being
listed on the activity feed, and further, being selected in response to the
user’s request to undo the first activity. Id. at 17.
As Appellant points out, McInerney teaches a file navigation interface
for managing multiple documents, wherein document backups are
periodically taken as snapshots, each backup showing the existing document
at the time of the snapshot. See Appeal Br. 17, citing ¶¶ 52–53. The user can
choose to access a particular version of a document by selecting a snapshot
and having the corresponding version of the document shown in the
snapshot being restored to the active user interface. Id., citing ¶ 55.
McInerney further teaches that a document may be deleted from all
subsequent snapshots or from a single snapshot. Id., citing ¶¶ 60–61. Based
on the above teachings, Appellant argues, and we agree, that McInerney’s
second activity is not selected in response to a user’s request to undo a first
activity. See Appeal Br. 17–18. Rather, McInerney teaches activity
selections are performed independently of one another.
Additionally, claim 1 requires that all activities be recorded into an
activity feed, from which a user can choose to undo a first activity and select
a second activity. Thus, the first and second activities must be performed
and recorded on the activity feed. If, as alleged by the Examiner, a deletion
operation is the second activity (see Final Act. 10), it would be illogical to
choose to perform the deletion operation on an already deleted document,
even if the deletion operation was recorded on an activity feed.
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As a result, on the record before us, Appellant has shown the
Examiner erred in rejecting independent claims 1, 8, and 15 and, thus,
claims 2–7, 9–14, and 16–20 depending respectively therefrom, under
35 U.S.C. § 103(a). Accordingly, we reverse the Examiner’s obviousness
rejection of claims 1–20 over the combination of McInerney and Massey.6
DECISION
We affirm the Examiner’s decision rejecting claims 1–20 under
35 U.S.C. § 101. We reverse the Examiner’s decision rejecting claims 1–20
under 35 U.S.C. § 103.
Because we affirm at least one ground of rejection with respect to
each claim on appeal, the Examiner’s decision rejecting claims 1–20 is
affirmed. See 37 C.F.R. § 41.50(a)(1).
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–20 101 Eligibility 1–20
1–20 103 McInerney, Massey 1–20
Overall
Outcome:
1–20

6 Because we are persuaded of error with regard to the identified issue,
which is dispositive of the § 103 rejection of claims 1–20 over McInerney
and Massey, we do not reach the additional issues raised by Appellant’s
arguments.
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TIME PERIOD FOR RESPONSE
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