Steven W. Lundberg

Patent Trials and Appeals Board

Dec 19, 2019

14826006 - (D) (P.T.A.B. Dec. 19, 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.
14/826,006 08/13/2015 Steven W. Lundberg 3431.004US2 4124
21186 7590 12/19/2019
SCHWEGMAN LUNDBERG & WOESSNER, P.A.
P.O. BOX 2938
MINNEAPOLIS, MN 55402
EXAMINER
ALLEN, BRITTANY N
ART UNIT PAPER NUMBER
2169
NOTIFICATION DATE DELIVERY MODE
12/19/2019 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):
SLW@blackhillsip.com
uspto@slwip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte STEVEN W. LUNDBERG
____________

Appeal 2019-000099
Application 14/826,006
Technology Center 2100
____________

Before JOHN A. JEFFERY, DENISE M. POTHIER, and JUSTIN BUSCH,
Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Under 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s
decision to reject claims 1–8. 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 Black
Hills IP Holdings, LLC. Appeal Br. 2.
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STATEMENT OF THE CASE
Appellant’s invention (1) manages information disclosure statements
used in connection with patent applications, and (2) controls cross-citations
of prior art references. See Spec. ¶¶ 2–3. To this end, Appellant’s invention
uses software that, among other things, (1) receives a reference document
into a database; (2) associates that document with a first case; and (3)
identifies a set of patent cases related to the first case as potential
propagation target cases for cross-citation of the reference document. Id.
¶ 20. Claim 1 is illustrative:

1. A method comprising:

maintaining a patent case database, wherein the database
includes data about each patent case in the patent case database,
receiving a reference document into the database;

associating the reference document with a first patent
case in the patent case database;

identifying a set of target patent cases including at least
one patent case related to the first patent case as potential
propagation target cases for cross-citation of the reference
document;

identifying a number of propagation levels for each target
patent case in the set of patent cases by assessing a number of
levels between the reference document and each target patent
case in the set of patent cases;

displaying in a user interface the identity of the set of
target patent cases, the user interface including a potential
citation pathway of the reference document for at least one
target patent case from the set of target patent cases, a
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propagation level selection option, and at least one propagation
selection option for the reference document, wherein the
propagation level selection option selects the identified number
of propagation levels between the reference document and the
at least one target patent case;

receiving, from a user via the user interface, a selected
propagation option from the at least one propagation selection
option for the reference document, and a selected propagation
level option;

associating, in response to receiving the selected
propagation option and the selected propagation level option,
the reference document with one or more of the set of target
patent cases based on the selected propagation option, the
selected propagation level option, and a comparison of a
publication or priority date of the reference document and a
priority date of a target patent case of the set of target patent
cases.

THE REJECTIONS
The Examiner rejected claims 1–8 under 35 U.S.C. § 101 as directed
to ineligible subject matter. Final Act. 3–5.2
The Examiner rejected claims 1 and 3–8 under 35 U.S.C. § 103 as
unpatentable over Casey (US 2009/0282054 A1; published Nov. 12, 2009),
Ashley (US 2011/0231449 A1; published Sept. 22, 2011), Rivette (US
2007/0208669 A1; published Sept. 6, 2007), and Lundberg (US
2005/0246194 A1; published Nov. 3, 2005) (“Lundberg ’194”). Final Act.
6–12.

2 Throughout this opinion, we refer to (1) the Final Rejection mailed January
19, 2018 (“Final Act.”); (2) the Appeal Brief filed June 19, 2018 (“Appeal
Br.”); (3) the Examiner’s Answer mailed August 3, 2018 (“Ans.”); and (4)
the Reply Brief filed October 3, 2018 (“Reply Br.”).
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The Examiner rejected claim 2 under 35 U.S.C. § 103(a) as
unpatentable over Casey, Ashley, Rivette, Lundberg ’194, and Lundberg
(US 2006/0190449 A1; published Aug. 24, 2006) (“Lundberg ’449”). Final
Act. 12–13.

RELATED APPEALS
On pages 3 and 4 of the Appeal Brief, Appellant identifies 33
related appeals as follows:

Application Number Appeal Number Appeal Status
10/128,141 2009-005709 Decision mailed Mar. 23, 2010
10/874,486 2009-006404 Decision mailed Aug. 2, 2010
11/061,383 2011-009966 Decision mailed Jan. 31, 2014
11/061,312 2012-004166 Decision mailed Nov. 4, 2014
13/309,080 2015-000319 Decision mailed May 27, 2016
13/309,127 2015-000321 Decision mailed July 26, 2017
13/309,039 2015-003180 Decision mailed Sept. 23, 2016
13/309,146 2015-007422 Decision mailed June 1, 2016
13/309,060 2016-000912 Decision mailed Aug. 25, 2017
11/888,632 2016-001687 Decision mailed Jan. 19, 2017
13/309,200 2016-002121 Decision mailed Aug. 28, 2017
13/310,279 2016-002680 Decision mailed Aug. 30, 2017
12/605,030 2016-002792 Decision mailed Sept. 1, 2017
13/310,368 2016-006797 Decision mailed Aug. 30, 2017
13/573,803 2016-007186 Decision mailed July 28, 2017
13/464,598 2016-007415 Decision mailed July 31, 2017
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13/408,877 2016-007623 Decision mailed Sept. 6, 2017
13/310,322 2016-007787 Decision mailed Sept. 20, 2017
13/253,936 2016-008030 Decision mailed Aug. 3, 2017
13/408,917 2017-000280 Decision mailed Sept. 12, 2017
11/098,761 2017-000386 Decision mailed Nov. 17, 2017
14/010,376 2017-002337 Decision mailed Sept. 8, 2017
14/483,903 2017-003702 Decision mailed Sept. 25, 2017
14/094,542 2017-003815 Decision mailed Sept. 18, 2017
14/010,391 2017-004158 Decision mailed Oct. 25, 2017
14/010,380 2017-004159 Decision mailed Sept. 27, 2017
14/010,400 2017-004188 Decision mailed Nov. 3, 2017
13/409,189 2017-006390 Decision mailed Dec. 18, 2017
13/310,452 2017-006642 Decision mailed Sept. 29, 2017
13/253,811 2017-011247 Decision mailed Nov. 1, 2017
14/608,520 2017-011549 Decision mailed Nov. 27, 2017
14/628,941 2017-011552 Decision mailed Dec. 6, 2017
13/679,830 2018-009240 Decision mailed Sept. 30, 2019

THE INELIGIBILITY REJECTION
The Examiner determines that the claimed invention is directed to an
abstract idea, namely receiving, associating, identifying, and displaying data.
See Final Act. 3–4; Ans. 3–9. The Examiner adds that the claims do not
include elements that add significantly more than the abstract idea, but
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merely recite a conventional computer implementation of the identified
abstract idea. See Final Act. 4–5; Ans. 7, 9.
Appellant argues that the claims are eligible because, among other
things, they are directed to a specific technical improvement that manages
and reduces the number of prior art cross-citations stored and associated
with a reference document—an improvement that is said to reduce the
storage and processing resources involved with those citations. Appeal Br.
9–10, 13–15; Reply Br. 2–4. According to Appellant, not only does the
Examiner oversimplify the claimed invention and characterize it overly
broadly, the Examiner’s reliance on the decision in Electric Power Group,
LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016) is said to be misplaced.
Appeal Br. 9–10, 13–15; Reply Br. 2–4. Appellant adds that not only does
the Examiner fail to provide evidentiary support that the claims are well-
understood, routine, and conventional, the claims recite a specific,
unconventional process that manages cross-citations of reference documents
and, therefore, are not directed to an abstract idea. Appeal Br. 10–13, 15–
17; Reply Br. 2–3.

ISSUE
Under § 101, has the Examiner erred in rejecting claims 1–8 as
directed to ineligible subject matter? This issue turns on whether the claims
are directed to an abstract idea and, if so, whether the recited elements—
considered individually and as an ordered combination—transform the
nature of the claims into a patent-eligible application of that abstract idea.

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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. See, e.g., Alice Corp. v. CLS Bank Int’l, 573 U.S.
208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. 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, 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 187 n.7 (quoting Corning v. Burden, 56 U.S.
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(15 How.) 252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S.
at 67 (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
products and not as an attempt to patent a mathematical formula.”). That
said, 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 (quotation marks omitted). “A
claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo,
566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention.” Id.
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In January 2019, the United States Patent and Trademark Office
(“USPTO”) published revised guidance on the application of § 101. See
USPTO’s 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) (“Guidance”). Under 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 MANUAL OF PATENT EXAMINING
PROCEDURE (MPEP) §§ 2106.05(a)–(c), (e)–(h) (9th ed. Rev.
08.2017, Jan. 2018)).
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, and conventional in the field
(see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, and 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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ANALYSIS
Claims 1–8: Alice/Mayo Step One
Representative independent claim 1 recites a method comprising the
following steps:
maintaining a patent case database, wherein the database
includes data about each patent case in the patent case database,
receiving a reference document into the database;
associating the reference document with a first patent
case in the patent case database;
identifying a set of target patent cases including at least
one patent case related to the first patent case as potential
propagation target cases for cross-citation of the reference
document;
identifying a number of propagation levels for each target
patent case in the set of patent cases by assessing a number of
levels between the reference document and each target patent
case in the set of patent cases;
displaying in a user interface the identity of the set of
target patent cases, the user interface including a potential
citation pathway of the reference document for at least one
target patent case from the set of target patent cases, a
propagation level selection option, and at least one propagation
selection option for the reference document, wherein the
propagation level selection option selects the identified number
of propagation levels between the reference document and the
at least one target patent case;
receiving, from a user via the user interface, a selected
propagation option from the at least one propagation selection
option for the reference document, and a selected propagation
level option;
associating, in response to receiving the selected
propagation option and the selected propagation level option,
the reference document with one or more of the set of target
patent cases based on the selected propagation option, the
selected propagation level option, and a comparison of a
publication or priority date of the reference document and a
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priority date of a target patent case of the set of target patent
cases.

As the disclosure explains, Appellant’s invention (1) manages
information disclosure statements used in connection with patent
applications, and (2) controls cross-citations of prior art references. See
Spec. ¶¶ 2–3. To this end, Appellant’s invention uses software that (1)
receives a reference document into a database; (2) associates that document
with a first case; and (3) identifies a set of patent cases related to the first
case as potential propagation target cases for cross-citation of the reference
document. Id. ¶ 20. The software also (1) receives user input identifying
and selecting cross-citation characteristics of the reference document, and
(2) associates that document with potential target cases based on that
selection. Id.
As shown in Appellant’s Figure 5, a user interface is provided that not
only displays the set of target cases in window 510, but also enables the user
to select various propagation selection options in windows 514 to regulate
the manner in which a reference document is propagated to be cross-cited in
another case or set of patent cases. Id. ¶¶ 21, 52. Propagation options may
be related to the reference document’s cross-citation characteristics
including, among other things, (1) a comparison of the reference document’s
and target cases’ respective priority dates; (2) a score based on occurrences
of a particular keyword in the reference document; (3) the reference
document’s source; (4) the ground of rejection on which the reference
document was cited by a patenting authority; (5) the degree of relation
between the first case and the set of target cases; (6) any instances of prior
cross-citation of the reference document to other patent cases, etc. Id. ¶ 21.
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A reference document may be propagated downstream to be cross-
cited in first, second, or even third sets of target cases. Id. This downstream
propagation from a source to a target case may be assessed in terms of the
number of “hops” or “levels” taken by a reference document to flow from a
source to a target. Id. This hop-number assessment may form the basis of a
cross-citation characteristic, including prior cross-citations. Id. The user
interface can also display the citation pathway for each reference document,
namely (1) where it started, and (2) what cases it flowed through to be cross-
cited against one or more target cases. Id.
Turning to claim 1, we first note that the claim recites a method and,
therefore, falls within the process category of § 101. But despite falling
within this statutory category, we must still determine whether the claim is
directed to a judicial exception, namely an abstract idea. See Alice, 573 U.S.
at 217. To this end, we must determine whether the claim (1) recites a
judicial exception, and (2) fails to integrate the exception into a practical
application. See Guidance, 84 Fed. Reg. at 52–55. If both elements are
satisfied, the claim is directed to a judicial exception under the first step of
the Alice/Mayo test. See id.
In the rejection, the Examiner determines that claim 1 is directed to an
abstract idea, namely receiving, associating, identifying, and displaying data.
See Final Act. 3–4; Ans. 3–9. To determine whether a claim recites an
abstract idea, we (1) identify the claim’s specific limitations that recite an
abstract idea, and (2) determine whether the identified limitations fall within
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certain subject matter groupings, namely, (a) mathematical concepts3; (b)
certain methods of organizing human activity4; or (c) mental processes.5
Here, apart from the recited “database” and “user interface,” all of
claim 1’s recited limitations fit squarely within at least one of the above
categories of the USPTO’s guidelines. When read as a whole, the recited
limitations are directed to associating a reference document with target
patent cases based on (1) selected propagation levels and options, and (2)
document publication or priority date information.
First, the limitations reciting (1) “maintaining a patent case database,
wherein the database includes data about each patent case in the patent case
database,” and (2) “receiving a reference document into the database”
involves at least mental processes, at least to the extent that a person could
merely think about—or write down—information about patent cases and
reference documents, and compile that information into a collection of data
using pen and paper. That is, apart from a database, which has been defined,
quite broadly, as “any electronically-stored collection of data,” In re

3 Mathematical concepts include mathematical relationships, mathematical
formulas or equations, and mathematical calculations. See Guidance, 84
Fed. Reg. at 52.
4 Certain methods of organizing human activity include fundamental
economic principles or practices (including hedging, insurance, mitigating
risk); commercial or legal interactions (including agreements in the form of
contracts; legal obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior or relationships
or interactions between people (including social activities, teaching, and
following rules or instructions). See Guidance, 84 Fed. Reg. at 52.
5 Mental processes are concepts performed in the human mind including an
observation, evaluation, judgment, or opinion. See Guidance, 84 Fed. Reg.
at 52.
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Comiskey, 554 F.3d 967, 981 (Fed. Cir. 2009), the recited patent case data
collection could otherwise be a paper-based collection of patent case
information.
In short, apart from the recited database, the recited “maintaining” and
“receiving” steps can be done entirely mentally or using pen and paper. Cf.
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir.
2011) (noting that a person could construct a map of credit card numbers by
merely writing down a list of credit card transactions made from a particular
IP address). These limitations fall squarely within the mental processes
category of the USPTO’s guidelines and, therefore, recite an abstract idea.
See Guidance, 84 Fed. Reg. at 52 (listing exemplary mental processes
including observation and evaluation).
We reach the same conclusion regarding the limitations calling for (1)
“associating the reference document with a first patent case . . .”; (2)
“identifying a set of target patent cases including at least one patent case
related to the first patent case as potential propagation target cases for cross-
citation of the reference document”; and (2) “identifying a number of
propagation levels for each target patent case in the set of patent cases by
assessing a number of levels between the reference document and each
target patent case in the set of patent cases.” In short, these steps involve
mere observation and logical reasoning. Cf. CyberSource, 654 F.3d at 1372
(noting that a recited step that utilized a map of credit card numbers to
determine the validity of a credit card transaction could be performed
entirely mentally by merely using logical reasoning to identify a likely
instance of fraud by merely observing that numerous transactions using
different credit cards all originated from the same IP address). These
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limitations fall squarely within the mental processes category of the
USPTO’s guidelines and, therefore, recite an abstract idea. See Guidance,
84 Fed. Reg. at 52 (listing exemplary mental processes including
observation and evaluation).
We reach the same conclusion regarding the limitation calling for:
displaying . . . the identity of the set of target patent cases . . .
including [1] a potential citation pathway of the reference
document for at least one target patent case from the set of
target patent cases, [2] a propagation level selection option, and
[3] at least one propagation selection option for the reference
document, wherein the propagation level selection option
selects the identified number of propagation levels between the
reference document and the at least one target patent case.

This display, including the displayed potential citation pathway,
propagation option, and propagation level selection option, involves at least
mental processes, at least to the extent that a person could merely write
down that information on a piece of paper, including the selected number of
propagation levels. Cf. CyberSource, 654 F.3d at 1372 (noting that a person
could construct a map of credit card numbers by merely writing down a list
of credit card transactions made from a particular IP address); see also id.
(noting that a recited step that utilized a map of credit card numbers to
determine the validity of a credit card transaction could be performed
entirely mentally by merely using logical reasoning to identify a likely
instance of fraud by merely observing that numerous transactions using
different credit cards all originated from the same IP address). These
limitations fall squarely within the mental processes category of the
USPTO’s guidelines and, therefore, recite an abstract idea. See Guidance,
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84 Fed. Reg. at 52 (listing exemplary mental processes including
observation and evaluation).
The recited “receiving, from a user . . . , a selected propagation option
from the at least one propagation selection option for the reference
document, and a selected propagation level option” can be performed
entirely mentally by merely reading that information and noting the
associated selections. Cf. CyberSource, 654 F.3d at 1372 (noting that
limitation reciting obtaining information about transactions that have used an
Internet address identified with a credit card transaction can be performed by
a human who simply reads records of Internet credit card transactions from a
pre-existing database). Alternatively, a person could receive that
information by communicating with another person with such knowledge,
such as a colleague, or by writing this information down. Cf. id.; Interval
Licensing LLC v. AOL, Inc., 896 F.3d 1335, 1344 (Fed. Cir. 2018) (noting
that a nontechnical human activity of passing a note to a person who is in a
meeting or conversation as illustrating the invention’s focus, namely
providing information to a person without interfering with the person’s
primary activity); TLI Comm., LLC v. AV Automotive, LLC, 823 F.3d 607,
610–14 (Fed. Cir. 2016) (holding ineligible claims reciting recording and
administering digital images including (1) recording images using a digital
pick-up unit in a telephone unit; (2) storing the recorded images; (3)
transmitting data including the images and classification information to a
server; (4) extracting the received classification information; and (5) storing
the images in the server considering that information); In re Salwan, 681 F.
App. 938, 939–41 (Fed. Cir. 2017) (unpublished) (holding ineligible claims
reciting, among other things, receiving medical records information and
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transmitting reports where the claimed invention’s objective was to enable
electronic communication of tasks that were otherwise done manually using
paper, phone, and facsimile machine); LendingTree, LLC v. Zillow, Inc., 656
F. App. 991, 993–94, 996 (Fed. Cir. 2016) (unpublished) (holding ineligible
claims reciting, among other things, (1) receiving selection criteria from
lending institutions and credit data from a computer user, and (2) forwarding
the credit data to selected lending institutions as directed to an abstract idea).
Therefore, apart from receiving the selected propagation option via a user
interface, the “selected propagation option” receiving clause fits squarely
within the mental processes and certain methods of organizing human
activity categories of the USPTO’s guidelines and, therefore, recites an
abstract idea. See Guidance, 84 Fed. Reg. at 52 (listing exemplary (1)
mental processes including observation and evaluation, and (2) methods of
organizing human activity, including personal interactions and following
rules or instructions).
In addition, the recited “associating, in response to receiving the
selected propagation option and the selected propagation level option, the
reference document with one or more of the set of target patent cases” based
on the selected options and comparison can also be done entirely mentally or
with pen and paper. In short, these steps involve mere observation and
logical reasoning. Cf. CyberSource, 654 F.3d at 1372 (noting that a recited
step that utilized a map of credit card numbers to determine the validity of a
credit card transaction could be performed entirely mentally by merely using
logical reasoning to identify a likely instance of fraud by merely observing
that numerous transactions using different credit cards all originated from
the same IP address). These limitations fall squarely within the mental
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processes category of the USPTO’s guidelines and, therefore, recite an
abstract idea. See Guidance, 84 Fed. Reg. at 52 (listing exemplary mental
processes including observation and evaluation).
Therefore, apart from the recited “database” and “user interface,” all
of claim 1’s limitations fall squarely within the mental processes or certain
methods of organizing human activity categories of the USPTO’s guidelines
and, therefore, recite an abstract idea. See Guidance, 84 Fed. Reg. at 52
(listing exemplary (1) mental processes including observation and
evaluation, and (2) methods of organizing human activity, including
personal interactions and following rules or instructions).
Here, the recited “database” and “user interface” are the only recited
elements beyond the abstract idea, but these additional elements, considered
individually and in combination, do not integrate the abstract idea into a
practical application when reading claim 1 as a whole.
In reaching this conclusion, we are not persuaded that the claimed
invention improves the computer or its components’ functionality or
efficiency, or otherwise changes the way those devices function, at least in
the sense contemplated by the Federal Circuit in Enfish LLC v. Microsoft
Corporation, 822 F.3d 1327 (Fed. Cir. 2016), despite Appellant’s arguments
to the contrary (Appeal Br. 14). The claimed self-referential table in Enfish
was a specific type of data structure designed to improve the way a computer
stores and retrieves data in memory. Enfish, 822 F.3d at 1339. To the extent
Appellant contends that the claimed invention uses such a data structure to
improve a computer’s functionality or efficiency, or otherwise change the
way that device functions, there is no persuasive evidence on this record to
substantiate such a contention.
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To the extent Appellant contends that the claimed invention is rooted
in technology because it is ostensibly directed to a technical solution (see
Appeal Br. 14–15), we disagree. Even assuming, without deciding, that the
claimed invention can manage and associate prior art cross-citations with
reference documents faster than doing so manually, any speed increase
comes from the capabilities of the generic computer components—not the
recited process itself. See FairWarning, 839 F.3d at 1095 (citing Bancorp
Services, LLC v. Sun Life Assurance Co., 687 F.3d 1266, 1278 (Fed. Cir.
2012) (“[T]he fact that the required calculations could be performed more
efficiently via a computer does not materially alter the patent eligibility of
the claimed subject matter.”)); see also Intellectual Ventures I LLC v. Erie
Indemnity Co., 711 F. App. 1012, 1017 (Fed. Cir. 2017) (unpublished)
(“Though the claims purport to accelerate the process of finding errant files
and to reduce error, we have held that speed and accuracy increases
stemming from the ordinary capabilities of a general-purpose computer do
not materially alter the patent eligibility of the claimed subject matter.”)
(quotation marks, bracketed alteration, and citation omitted).
That the claimed invention is used in connection with patent cases,
without more, does not integrate the abstract idea into a practical application,
for merely generally linking the use of an abstract idea to a particular
technological environment or field of use does not render the claimed
invention any less abstract. See Affinity Labs of Texas, LLC v. DirectTV,
LLC, 838 F.3d 1253, 1259 (Fed. Cir. 2016); accord Flook, 437 U.S. at 584,
588–90, 596–97 (holding ineligible method for updating an alarm limit on a
process variable, despite the process involving the catalytic chemical
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conversion of hydrocarbons); see also Guidance, 84 Fed. Reg. at 55 (citing
MPEP § 2106.05(h)).
Like the claims in FairWarning, the focus of claim 1 is not on an
improvement in computer processors as tools, but on certain independently
abstract ideas that use generic computing components as tools. See
FairWarning, 839 F.3d at 1095 (quotation marks and citations omitted). As
with the ineligible claimed invention in BSG Tech LLC v. BuySeasons, Inc.,
899 F.3d 1281, 1284–91 (Fed. Cir. 2018), the claimed invention does not
improve a computer’s functionality or that of its associated components, but
rather the benefits flow from performing the abstract idea in conjunction
with those generic computer components. See BSG, 899 F.3d at 1288
(“While the presentation of summary comparison usage information to users
improves the quality of the information added to the database, an
improvement [in] . . . the information stored by a database is not equivalent
to an improvement in the database’s functionality.”).
In short, the recited additional elements, when considered individually
and as an ordered combination, do not (1) improve the computer itself; (2)
improve another technology or technical field; (3) implement the abstract
idea in conjunction with a particular machine or manufacture that is integral
to the claim; (4) transform or reduce a particular article to a different state or
thing; or (5) apply or use the abstract idea in some other meaningful way
beyond generally linking the abstract idea’s use to a particular technological
environment, such that the claim as a whole is more than a drafting effort
designed to monopolize the exception. See Guidance, 84 Fed. Reg. at 55
(citing MPEP §§ 2106.05(a)–(c), (e)). Rather, the above-noted additional
elements merely (1) apply the abstract idea on a computer; (2) include
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instructions to implement the abstract idea on a computer; or (3) use the
computer as a tool to perform the abstract idea. See id. (citing MPEP
§ 2106.05(f)). Therefore, the recited additional elements, namely the recited
“database” and “user interface,” do not integrate the abstract idea into a
practical application when reading claim 1 as a whole.
We add that the limitations calling for (1) “maintaining a patent case
database, wherein the database includes data about each patent case in the
patent case database,” and (2) “receiving a reference document into the
database” not only can be performed entirely mentally as noted above, but
these steps are also insignificant pre-solution activity that merely gather data
and, therefore, do not integrate the exception into a practical application for
that additional reason. See In re Bilski, 545 F.3d 943, 963 (Fed. Cir. 2008)
(en banc), aff’d on other grounds, 561 U.S. 593 (2010) (characterizing data
gathering steps as insignificant extra-solution activity); see also
CyberSource, 654 F.3d at 1371–72 (noting that even if some physical steps
are required to obtain information from a database (e.g., entering a query via
a keyboard, clicking a mouse), such data-gathering steps cannot alone confer
patentability); accord Guidance, 84 Fed. Reg. at 55 (citing MPEP
§ 2106.05(g)).
In conclusion, although the recited functions may be beneficial by
managing and associating prior art cross-citations with reference documents,
a claim for a useful or beneficial abstract idea is still an abstract idea. See
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379–80 (Fed.
Cir. 2015).
We, therefore, agree with the Examiner that claim 1 is directed to an
abstract idea.
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Claims 1–8: Alice/Mayo Step Two
Turning to Alice/Mayo step two, claim 1’s additional recited elements,
namely the recited “database” and “user interface,” when considered
individually and as an ordered combination, do not provide an inventive
concept such that these additional elements amount to significantly more
than the abstract idea when reading claim 1 as a whole. See Alice, 573 U.S.
at 221; see also Guidance, 84 Fed. Reg. at 56. As noted above, the claimed
invention merely uses generic computing components to implement the
recited abstract idea.
To the extent Appellant contends that the recited limitations, including
those detailed above in connection with Alice step one, add significantly
more than the abstract idea to provide an inventive concept under
Alice/Mayo step two (see Appeal Br. 10–13, 15–17; Reply Br. 2–3), these
limitations are not additional elements beyond the abstract idea, but rather
are directed to the abstract idea as noted previously. See BSG, 899 F.3d at
1290 (explaining that the Supreme Court in Alice “only assessed whether the
claim limitations other than the invention’s use of the ineligible concept to
which it was directed were well-understood, routine and conventional”)
(emphasis added); see also Guidance, 84 Fed. Reg. at 56 (instructing that
additional recited elements should be evaluated in Alice/Mayo step two to
determine whether they (1) add specific limitations that are not well-
understood, routine, and conventional in the field, or (2) simply append
well-understood, routine, and conventional activities previously known to
the industry (citing MPEP § 2106.05(d)).
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Rather, the recited “database” and “user interface” are the only
additional recited elements whose generic computing functionality is well-
understood, routine, and conventional. See Spec. ¶¶ 11–15, 34–38; Figs. 1–
2 (describing exemplary systems that use generic computing components);
see also FairWarning, 839 F.3d at 1096 (noting that using generic
computing components like a microprocessor or user interface does not
transform an otherwise abstract idea into eligible subject matter); Mortgage
Grader Inc. v. First Choice Loan Services, Inc., 811 F.3d 1314, 1324–25
(Fed. Cir. 2016) (noting that components such as an “interface,” “network,”
and “database” are generic computer components that do not satisfy the
inventive concept requirement); accord Final Act. 7 (concluding that the
recited functions merely (1) require no more than a generic computer to
perform generic computer functions that are well-understood, routine, and
conventional, and (2) provide a conventional computer implementation of
the identified abstract idea); Ans. 7 (noting that the hardware that makes up
the system on which the computer operates is a generic computer with
generic components, and this addition is insufficient to improve existing
technology and, therefore, does not add significantly more than the abstract
idea).
Appellant’s reliance on BASCOM Global Internet Services, Inc. v.
AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016) (Appeal Br. 15–17) is
unavailing. There, the court held eligible claims directed to a technology-
based solution to filter Internet content that overcame existing problems with
other Internet filtering systems by making a known filtering solution—
namely a “one-size-fits-all” filter at an Internet Service Provider (ISP)—
more dynamic and efficient via individualized filtering at the ISP.
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BASCOM, 827 F.3d at 1351. Notably, this customizable filtering solution
improved the computer system’s performance and, therefore, was patent-
eligible. See id. But unlike the filtering system improvements in BASCOM
that added significantly more to the abstract idea in that case, the claimed
invention here uses generic computing components to implement an abstract
idea as noted previously.
Appellant’s contention that the Examiner allegedly did not comply
with the evidentiary requirements under the April 2018 USPTO
memorandum mandating these requirements for ineligibility rejections after
Berkheimer v. HP, Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018) (Appeal Br.
10–13; Reply Br. 2–3) is unavailing. To be sure, the Examiner must show—
with supporting facts—that certain claim elements are well-understood,
routine, and conventional where such a finding is made. See Berkheimer,
881 F.3d at 1369 (noting that whether something is well-understood, routine,
and conventional to a skilled artisan at the time of the invention is a factual
determination). In light of this factual determination, the USPTO issued a
memorandum requiring that Examiners support a finding that an additional
element of a claim is well-understood, routine, and conventional. Robert W.
Bahr, Changes in Examination Procedure Pertaining to Subject Matter
Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP,
Inc.), USPTO, Apr. 19, 2018 (“Berkheimer Memo.”), at 2–3 (noting that the
Berkheimer decision clarifies the inquiry whether an additional element (or
combination of additional elements) represents well-understood, routine, and
conventional activity).
As noted previously, the recited “database” and “user interface” are
the only additional recited elements whose generic computing functionality
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is well-understood, routine, and conventional. Therefore, to the extent that
Appellant contends that the Examiner failed to provide evidence that all
recited elements are well-understood, routine, and conventional (see Appeal
Br. 10–13; Reply Br. 3–4), such an argument is not commensurate with the
more limited scope of the Examiner’s finding in this regard. Rather, the
Examiner’s finding is that the elements other than the abstract idea, namely
the additional computer-based elements, provide generic computing
functionality that is well-understood, routine, and conventional. See Final
Act. 7 (concluding that the recited functions merely (1) require no more than
a generic computer to perform generic computer functions that are well-
understood, routine, and conventional, and (2) provide a conventional
computer implementation of the identified abstract idea); Ans. 7 (noting that
the hardware that makes up the system on which the computer operates is a
generic computer with generic components, and this addition is insufficient
to improve existing technology and, therefore, does not add significantly
more than the abstract idea).
As noted previously, there is ample evidence of this generic
computing functionality in not only the cited case law, but also Appellant’s
own Specification. See, e.g., Fair Warning, 839 F.3d at 1096 (noting that
using generic computing components like a microprocessor or user interface
do not transform an otherwise abstract idea into eligible subject matter);
Internet Patents, 790 F.3d at 1343–49 (holding ineligible claims reciting
providing an intelligent user interface to an online application comprising
(1) furnishing plural hyperlinked icons on a displayed web page, and (2)
displaying a dynamically generated online application form set responsive to
activating an icon as directed to the abstract idea of retaining information in
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navigating online forms); Mortgage Grader, 811 F.3d at 1324–25 (noting
that a database is a generic computer component that does not satisfy the
inventive concept requirement); Spec. ¶¶ 11–15, 34–38 (describing generic
computer components used to implement the invention). Therefore, the
additional recited elements, when considered individually and as an ordered
combination, do not add significantly more than the abstract idea to render
the claim patent-eligible.
We reach a similar conclusion regarding the recited insignificant
extra-solution activity, namely (1) “maintaining a patent case database,
wherein the database includes data about each patent case in the patent case
database,” and (2) “receiving a reference document into the database.” That
a patent case database is maintained and can receive reference documents
does not mean that these functions are performed in an unconventional way
to add significantly more than the abstract idea to provide an inventive
concept under Alice/Mayo step two. See Guidance, 84 Fed. Reg. at 56.
Given these limitations’ (1) high level of generality, and (2) use of generic
computing components whose functionality is well-understood, routine, and
conventional for the reasons noted previously, the recited extra-solution
activity does not add significantly more than the abstract idea to provide an
inventive concept under Alice/Mayo step two. To the extent Appellant
contends otherwise (see Appeal Br. 10–13, 15–17; Reply Br. 2–3), we
disagree.
In conclusion, the additional recited elements—considered
individually and as an ordered combination—do not add significantly more
than the abstract idea to provide an inventive concept under Alice/Mayo step
two. See Alice, 573 U.S. at 221; see also Guidance, 84 Fed. Reg. at 56.
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Therefore, we are not persuaded that the Examiner erred in rejecting
claim 1 and claims 2–8 not argued separately with particularity.

THE OBVIOUSNESS REJECTION OVER CASEY, ASHLEY, RIVETTE,
AND LUNDBERG ’194

Regarding independent claim 1, the Examiner finds that Ashley
discloses, among other things, (1) receiving a reference document into a
patent case database; (2) identifying a number of propagation levels, via a
“hops” value, for each target patent case in a set of such cases by assessing a
number of levels between the reference document and each target case; and
(3) displaying, in a user interface, a propagation level selection option that
selects the identified number of propagation levels associated with the
“hops” values. See Final Act. 6–8; Ans. 9–10.
Although the Examiner acknowledges that Ashley does not receive a
selected propagation option for the reference document that is used as a
basis for associating that document with target patent cases, the Examiner
cites Casey for teaching this feature. See Final Act. 7. The Examiner also
cites (1) Rivette for teaching displaying a reference document’s potential
citation pathway in the user interface, and (2) Lundberg ’194 for teaching
comparing the reference document’s and target cases’ respective priority
dates. Final Act. 9–10. Given these collective teachings, the Examiner
concludes that the claim would have been obvious. Final Act. 6–10.
Appellant argues that Ashley does not teach or suggest propagation
levels, let alone a propagation level selection option as claimed. Appeal Br.
18–21; Reply Br. 4–5. According to Appellant, Ashley’s “hops” value on
which the Examiner relies is created and modified by a user, unlike the
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recited propagation level that is an unmodifiable “identified factual value.”
Appeal Br. 18–21; Reply Br. 4–5. Appellant adds that Casey’s reference
export functionality does not teach or suggest the recited selected
propagation option that provides a basis for associating a reference
document with a set of target patent cases. Appeal Br. 21–22.

ISSUE
Under § 103, has the Examiner erred in rejecting claim 1 by finding
that Casey, Ashley, Rivette, and Lundberg ’194 collectively would have
taught or suggested (1) propagation levels, and (2) a selected propagation
level selection option that provides a basis for associating a reference
document with a set of target patent cases?

ANALYSIS
We begin by noting that the Examiner’s reliance on the teachings of
Rivette and Lundberg ’194 is undisputed, as is the cited references’
combinability. Rather, as noted above, this dispute turns solely on the
Examiner’s reliance on Ashley for teaching the recited propagation levels,
and Casey for teaching the recited selected propagation level selection
option. Therefore, we confine our discussion to Ashley and Casey.
Turning to claim 1, the claim recites, in pertinent part, identifying a
number of propagation levels for each target patent case in a set of such
cases by assessing a number of levels between the reference document and
each target patent case in the set. As the Specification’s paragraph 21
explains, a reference document may be propagated downstream to be cross-
cited in first, second, or even third sets of target cases. This downstream
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propagation from a source to a target case may be assessed in terms of the
number of “hops” or “levels” taken by a reference document to flow from a
source to a target. Spec. ¶ 21. This hop-number assessment may form the
basis of a cross-citation characteristic, including prior cross-citations. Id.
Our emphasis on the alternative term “or” above underscores that the
term “levels” is synonymous with “hops” as the Examiner indicates. See
Ans. 10 (noting this point). Given this equivalence, we see no error in the
Examiner’s reliance on the functionality associated with Ashley’s “hop”
values for at least suggesting the recited propagation level identification.
See Final Act. 8; Ans. 9–10.
A key aspect of Ashley’s system is preventing irrelevant material
from migrating between certain cases, such as cases 202 and 206 in Figure 2.
To this end, a “hops” value can be assigned to particular Information
Disclosure Statement (IDS) submissions in a linking case, such as case 204.
Notably, “hops” values can be assigned automatically by, for example,
creating them when a particular document (e.g., an IDS submission) is
created and filed. Ashley ¶ 41.
“Hops” values affect reference migration from one case to another.
See id. (noting that a prior art citation determination for case 202 may drop
any reference cited in case 204 whose “hops” value exceeds a predetermined
value). In one implementation, “hops” values can be incremented by each
case to which it migrates, and some threshold (e.g., hops=2) may be used to
determine whether the reference needs to be reported. Ashley ¶ 42.
Given this functionality, Ashley at least suggests identifying a number
of propagation levels, or “hops,” via a “hops” value—a value incremented
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with each level or “hop” between a reference document and target case as
noted in Ashley’s paragraph 42.
That the user can modify “hops” values in the form 700 in Ashley’s
Figure 7 as Appellant contends (Appeal Br. 19–20; Reply Br. 4–5) does not
change our conclusion. Not only does the claim not preclude user-
modifiable propagation level identifications, but Appellant’s argument
ignores the fact that Ashley’s “hops” values can also be incremented
automatically to reflect the number of cases to which a reference is
migrated. See Ashley ¶¶ 42, 61. This “hop” count functionality effectively
identifies the number of propagation levels or “hops” between a reference
document and a target case, particularly given the linkages between cases as
the Examiner indicates. See Ans. 10. Nor are we persuaded of error in the
Examiner’s reliance on the functionality of Ashley’s form in Figure 7 and
paragraphs 55 and 61 for at least suggesting a propagation level selection
option, particularly given the user’s ability to enter individual “hops” values
in that form. See Final Act. 8. In short, Appellant’s arguments (Appeal Br.
19–20; Reply Br. 4–5) are unavailing and not commensurate with the scope
of the claim.
We are also unpersuaded of error in the Examiner’s reliance on
Casey’s reference export functionality for at least suggesting the recited
selected propagation option that provides a basis for associating a reference
document with a set of target patent cases despite Appellant’s arguments to
the contrary (Appeal Br. 21–22). See Final Act. 7; Ans. 11–12. As shown
in Casey’s Figure 5a, selecting any of the checkboxes causes corresponding
applications to be related. Casey ¶ 33. Moreover, selecting the “Export to
related” function in Casey’s Figure 5b pushes references cited in the
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displayed application to the related applications, or “target patent cases,”
automatically. See Casey ¶ 34; see also Ans. 11. This functionality that not
only relates cases based on certain selected criteria, but also exports
documents to those cases based on a user selection at least suggests the
recited selected propagation option that provides at least a basis for
associating a reference document with a set of target patent cases.
Appellant’s arguments are unavailing and not commensurate with the scope
of the claim.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 1, and claims 3–8 not argued separately with particularity.

THE OTHER OBVIOUSNESS REJECTION
We also sustain the Examiner’s obviousness rejection of claim 2.
Final Act. 12–13. Because this rejection is not argued separately with
particularity, we are not persuaded of error in this rejection for the reasons
previously discussed.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–8 101 Eligibility 1–8
1, 3–8 103 Casey, Ashley, Rivette,
Lundberg ’194
1, 3–8
2 103 Casey, Ashley, Rivette,
Lundberg ’194,
Lundberg ’449
2
Overall
Outcome
1–8

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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)(1).

AFFIRMED