Traxo, Inc.

Patent Trials and Appeals Board

Jul 6, 2020

2020001721 (P.T.A.B. Jul. 6, 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.
14/822,498 08/10/2015 Andres Fabris TRAX01-00007 1074
23990 7590 07/06/2020
DOCKET CLERK
P.O. DRAWER 800889
DALLAS, TX 75380
EXAMINER
VETTER, DANIEL
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
07/06/2020 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):
munckwilson@gmail.com
patents@munckwilson.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte ANDRES FABRIS and RICHARD PENDERGAST
________________

Appeal 2020-001721
Application 14/822,498
Technology Center 3600
________________

Before KALYAN K. DESHPANDE, JOHNNY A. KUMAR,
JUSTIN BUSCH, Administrative Patent Judges.

KUMAR, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals the Final Rejection
of claims 1, 4, 6–8, 11, 13–15, 18, and 20–29. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
INVENTION
The claimed invention relates to identifying, processing, and handling
travel reservations that are made outside of a company travel policy. Spec.
¶ 1. Claim 1 is illustrative of the invention and is reproduced below:
1. A method by at least one processor, the method

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. According to Appellant, Traxo, Inc. is the real party in
interest. Appeal Br. 2.
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comprising:
receiving, by the at least one processor, an email from an email
server, the email having a record of a hotel reservation made by an
employee of a company, wherein the at least one processor receives
the email from the email server after the email server executes a
keyword based filter to identify that the email includes the record of
the hotel reservation;

determining, by the at least one processor, based on information
extracted from the record of the hotel reservation, whether the hotel
reservation is for leisure travel;

determining, by the at least one processor, whether the hotel
reservation complies with a travel policy of the company by
determining whether the email having the record of the hotel
reservation was sent from an email address or email domain that is
predetermined to be in accordance with the travel policy;

determining, by the at least one processor, whether the hotel
reservation meets an exception to the travel policy;

determining, by the at least one processor, whether the hotel
reservation is fully cancelable without penalty, the determining
comprising (i) executing computer instructions comprising a parsing
algorithm to parse the record of the hotel reservation and determine
whether the record includes one or more text strings or keywords
associated with a cancellation policy, and (ii) interpreting the one or
more text strings or keywords to determine the cancellation policy;
and

upon a determination that (i) the hotel reservation is not for
leisure travel, (ii) the hotel reservation does not comply with the travel
policy, (iii) the hotel reservation does not meet an exception to the
travel policy, and (iv) the hotel reservation is fully cancelable,
sending, by the at least one processor, a notification email to the
employee so the employee may cancel the hotel reservation, and
determining a list of recommended hotels that are within the travel
policy for presentation to the employee.

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Appeal Br. 23–24 (Claims App.) (emphases added to indicate additional,
i.e., non-abstract, elements).
REJECTION
Claims 1, 4, 6–8, 11, 13–15, 18, and 20–29 stand rejected under
35 U.S.C. § 101 as being directed to patent-ineligible subject matter. Final
Act. 3–8.
ANALYSIS
We have only considered those arguments that Appellant actually
raised in the Briefs.2 Arguments Appellant could have made, but chose not
to make, in the Briefs have not been considered and are deemed to be
waived. See 37 C.F.R. § 41.37(c)(1)(iv) (2018).
A. 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 U.S. 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. 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 Court’s two-part 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

2 In the instant appeal, claims 4, 6–8, 11, 13–15, 18–20, 25, 27, and 28 are
not argued separately from claim 1 in either of Appellant’s briefs (Appeal
Br. 10–22; Reply Br. 2–9) and will not be addressed separately.
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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 waterproof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted).
“A claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (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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B. USPTO Section 101 Guidance
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“2019 Revised Guidance”).3 “All USPTO personnel are, as a matter of
internal agency management, expected to follow the guidance.” Id. at 51;
see also Update at 1.
Under the 2019 Revised Guidance and the Update, 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) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th ed.
Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).4
2019 Revised Guidance, 84 Fed. Reg. at 52–55.

3 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (“Update”)
(available at https://www.uspto.gov/sites/default/files/documents/
peg_oct_2019_update.pdf).
4 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See 2019 Revised Guidance - Section III(A)(2), 84
Fed. Reg. 54–55.
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Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
Step 2B, to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
2019 Revised Guidance, 84 Fed. Reg. at 52–56.
C. The Examiner’s Rejection and Appellant’s Arguments
The Examiner determines that the claims recite certain methods of
organizing human activity and mental processes. Final Act. 4–5. The
Examiner further determines that the abstract ideas are not integrated into a
practical application because the additional elements, taken individually or
as an ordered combination, provide a general technological environment in
which to carry out the judicial exception and do not improve a technological
field or the functioning of the computer components themselves. Id. 5–6.
The Examiner determines that the additional elements are well-understood,
routine, and conventional. Id. 6–7 (citing Spec. ¶¶ 22, 27–30, 58–61; SAP
Am., Inc. v. InvestPic, LLC, 890 F.3d 1016, 1023 (Fed. Cir. 2018); Alice,
573 U.S. at 224–25; Intellectual Ventures I LLC v. Symantec Corp., 838
F.3d 1307 (Fed. Cir. 2016); Versata Dev. Group, Inc. v. SAP Am., Inc., 793
F.3d 1306, 1334 (Fed. Cir. 2015)). The Examiner additionally determines
that the dependent claims similarly fail to integrate the abstract idea into a
practical application and do not recite additional elements that amount to
significantly more than the abstract idea. Final Act. 7–8.
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Appellant disputes that the additional elements do not integrate the
abstract idea into a practical application. Appeal Br. 12–16; Reply Br. 2– 5
(citing Example 40 of the Subject Matter Eligibility Examples5). Appellant
additionally contends that the claims do not preempt the use of the abstract
idea in all fields. Appeal Br. 18. Appellant argues that the Examiner does
not provide evidence required by the Berkheimer Memorandum6 to support
the finding that the additional elements are well-understood, routine, and
conventional. Id. at 16–17; Reply Br. 6–7. Appellant argues that the lack of
a prior art rejection indicates that the combination of elements in the claims
is not well-understood, routine, and conventional. Appeal Br. 18; Reply
Br. 7. Appellant further argues that the Examiner’s analysis is deficient,
because it fails to consider all of the additional elements and the limitations

5 Subject Matter Eligibility Examples: Abstract Ideas (available at
http://ptoweb.uspto.gov/patents/exTrain/documents/101-examples-37-
42.pdf) (“Subject Matter Eligibility Examples”)
6 In response to Berkheimer v. HP Inc., 881 F.3d 1360, 1367, 1369
(Fed. Cir. 2018), the USPTO published a Memorandum of Changes in
Examination Procedure Pertaining to Subject Matter Eligibility,
Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.)
(“Berkheimer Memorandum”) requiring at least one of four categories
of information to support a finding that an additional element is well-
understood, routine, or conventional: (1) A citation to an express
statement in the specification or to a statement made by an applicant
during prosecution that demonstrates the well-understood, routine,
conventional nature of the additional element(s); (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); (3) A citation to a publication that demonstrates
the well-understood, routine, conventional nature of the additional
element(s); or (4) A statement that the examiner is taking official
notice of the well-understood, routine, conventional nature of the
additional element(s). Berkheimer Memorandum at 3–4.

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directed to sending a notification email upon four determinations being
made. Appeal Br. 17–18; Reply Br. 5–6. Appellant argues that dependent
claims 21–24, 26, and 29 integrate the abstract idea into a practical
application and amount to significantly more than the abstract idea. Appeal
Br. 18–20; Reply Br. 7–8.
D. Step 2A, Prong One: The Judicial Exception
Claim 1 requires receiving a record of a hotel reservation made by an
employee of a company; determining whether the hotel reservation is for
leisure travel; determining whether the hotel reservation complies with a
travel policy of the company; determining whether the hotel reservation
meets an exception to the travel policy; determining whether the hotel
reservation is fully cancelable without penalty, the determining comprising
parsing the record of the hotel reservation to determine whether the record
includes one or more text strings or keywords associated with a cancellation
policy, and interpreting the one or more text strings of keywords to
determine the cancellation policy; and upon a determination that the hotel
reservation is not for leisure travel, does not comply with the travel policy,
does not meet an exception to the travel policy, and is fully cancelable,
sending a notification to the employee.
The present claims recite concepts relating to commercial or legal
interactions, which fall into the category of certain methods of organizing
human activity. See id. Moreover, those certain methods of organizing
human activity are a type of abstract idea. See id. Namely, the claims recite
features such as, “receiving . . . a record of a hotel reservation made by an
employee of a company;” “determining . . . based on information extracted
from the record of the hotel reservation, whether the hotel reservation is for
leisure travel;” “determining. . . whether the hotel reservation complies with
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a travel policy of the company by determining whether . . . the record of the
hotel reservation was sent from an email address or email domain that is
predetermined to be in accordance with the travel policy;” “determining . . .
whether the hotel reservation meets an exception to the travel policy;”
“determining . . . whether the hotel reservation is fully cancelable without
penalty, the determining comprising (i) . . . pars[ing] the record of the hotel
reservation and determin[ing] whether the record includes one or more text
strings or keywords associated with a cancellation policy, and (ii)
interpreting the one or more text strings of keywords to determine the
cancellation policy;” and “upon a determination that (i) the hotel reservation
is not for leisure travel, (ii) the hotel reservation does not comply with the
travel policy, (iii) the hotel reservation does not meet an exception to the
travel policy, and (iv) the hotel reservation is fully cancelable, sending . . . a
notification . . . to the employee so the employee may cancel the hotel
reservation, and determining a list of recommended hotels that are within the
travel policy for presentation to the employee,” which are all features that
recite business relations, and therefore fall under certain methods of
organizing human activity. In particular, the limitations above recite
identifying and handling a company’s out-of-policy hotel reservations made
by an employee, and as such, constitute business relations, i.e., an abstract
idea.
Further, the present claims recite concepts that can be performed in
the mind or with the assistance of pen and paper, which are concepts
performed in the human mind (including an observation, evaluation,
judgment, opinion). Concepts performed in the human mind fall under the
category of mental processes (i.e., an abstract idea). Namely, the claims
require features such as, “receiving . . . a record of a hotel reservation made
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by an employee of a company;” “determining . . . based on information
extracted from the record of the hotel reservation, whether the hotel
reservation is for leisure travel;” “determining . . . whether the hotel
reservation complies with a travel policy of the company;” “determining . . .
whether the hotel reservation meets an exception to the travel policy of the
company by determining whether . . . the record of the hotel reservation was
sent from an email address or email domain that is predetermined to be in
accordance with the travel policy;” “determining . . . whether the hotel
reservation is fully cancelable without penalty, the determining comprising
(i) . . . pars[ing] the record of the hotel reservation and determin[ing]
whether the record includes one or more text strings or keywords associated
with a cancellation policy, and (ii) interpreting the one or more text strings
or keywords to determine the cancellation policy; and “upon a determination
that (i) the hotel reservation is not for leisure travel, (ii) the hotel reservation
does not comply with the travel policy, (iii) the hotel reservation does not
meet an exception to the travel policy, and (iv) the hotel reservation is fully
cancelable, sending . . . a notification . . . to the employee so the employee
may cancel the hotel reservation, and determining a list of recommended
hotels that are within the travel policy for presentation to the employee,”
which are all features that can be performed practically in the human mind
or with the assistance of pen and paper, and therefore are abstract ideas. In
particular, these claim features are similar to receiving a paper hotel
reservation record; parsing, i.e., reading, the hotel reservation record to
determine whether certain conditions are met; and upon determining that the
conditions are met, sending a notification, which are tasks that humans
routinely and for many years have performed mentally or with pen and paper
to determine employee compliance with company policies.
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However, we must still determine whether the abstract idea is
integrated into a practical application, namely whether the claim applies,
relies on, or uses the abstract idea in a manner that imposes a meaningful
limit on the abstract idea, such that the claim is more than a drafting effort
designed to monopolize the abstract idea. See 2019 Revised Guidance, 84
Fed. Reg. at 54–55. We therefore (1) identify whether there are any
additional recited elements beyond the abstract idea, and (2) evaluate those
elements both individually and collectively to determine whether they
integrate the exception into a practical application. See id.
Accordingly, we proceed to Prong 2.
E. Step 2A, Prong 2: Integration of the Judicial Exception into a
Practical Application
Here, the only elements in the claims beyond the abstract idea are “at
least one processor,” “an email,” “an email server,” “a keyword based
filter,” “a parsing algorithm,” and “a notification email.” See 2019 Revised
Guidance, 84 Fed. Reg. at 52. The additional elements of the present claims
do not integrate the abstract idea into a practical application because they do
not impose any meaningful limits on practicing the abstract idea for the
following reasons.
The additional elements, taken individually, do not serve to integrate
the abstract idea into a practical application. Here, the “at least one
processor,” “an email,” “an email server,” “a keyword based filter,” “a
parsing algorithm,” and “a notification email” are disclosed simply as
generic computer components for executing the mental processes or business
relations, i.e., abstract ideas, described above. Appellant’s Specification
discloses that these elements encompass generic components, such as a
generic processor (Spec. ¶ 27, Fig. 2), generic emails (Spec. ¶¶ 32, 41, 58), a
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generic server (Spec. ¶¶ 22, 32), a generic keyword based filter (Spec. ¶ 32),
and a generic parsing algorithm (Spec. ¶¶ 32, 48, 54). Merely adding
generic hardware and computer components to perform abstract ideas does
not integrate those ideas into a practical application. See 2019 Revised
Guidance, 84 Fed. Reg. at 55 (identifying “merely includ[ing] instructions to
implement an abstract idea on a computer” as an example of when an
abstract idea has not been integrated into a practical application).
In addition, the additional elements “an email” and “an email server”
do not themselves carry out any of the steps recited in the claims. See
MPEP § 2106.05(g) (“The term ‘extra-solution activity’ can be understood
as activities incidental to the primary process or product that are merely a
nominal or tangential addition to the claim.”). Rather, we conclude that
these additional elements merely act as data inputs for carrying out the
abstract ideas recited in the claims, such that they constitute extra-solution
activity. Id. (“Extra-solution activity includes both pre-solution and post-
solution activity. An example of pre-solution activity is a step of gathering
data for use in a claimed process.”). For example, courts have found data
gathering steps to be insignificant extra-solution activity. See, e.g., In re
Bilski, 545 F.3d 943, 963 (Fed. Cir. 2008) (en banc) (characterizing data
gathering steps as insignificant extra-solution activity), aff’d sub nom., Bilski
v. Kappos, 561 U.S. 593 (2010).
Considering the claims as a whole, the additional elements merely add
generic computer activity to determine whether an employee’s hotel
reservation is outside of company policy and to notify the employee, which
is insufficient to integrate the judicial exception into a practical application.
See MPEP § 2106.05(a).
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We disagree with Appellant’s argument that the present claims are
similar to Claim 1 of Example 40 of the Subject Matter Eligibility Examples.
See Appeal Br. 14–16; Reply Br. 3–5. The invention in Example 40 relates
to network visibility tools, specifically NetFlow protocol, which has a
technical problem of large records, high traffic volume, and reduced network
performance. See Subject Matter Eligibility Examples 10. Notably, in
Example 40, the claimed invention reduces traffic volume by limiting
collection of additional NetFlow protocol data to instances when initially
collected data indicates an abnormal condition. Id. at 10–11. Claim 1 of
Example 40 integrates the additional elements into a practical application,
because “the claim as a whole is directed to a particular improvement in
collecting traffic data,” whereby excess traffic volume on the network is
avoided, and network performance and network monitoring are improved.
Id. at 11.
In contrast to Claim 1 of Example 40, the present invention is not
directed to reducing either record flows or network traffic volume, or
improving performance or monitoring of a network. For example,
Appellant’s Specification does not disclose a technological problem with
large flows or volumes of emails, nor are the claims directed to a solution to
such problem. See, generally, Spec. In contrast, the present claims create
more emails, because they require receiving an email, parsing the email, and
sending another email if certain conditions are met. See claim 1.
Instead, the present claims are more analogous to those considered by
the Federal Circuit in FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d
1089 (Fed. Cir. 2016). The subject claim in FairWarning relates to a
method for detecting fraud by an otherwise-authorized use of a patient’s
protected health information (“PHI”), comprising generating a rule for
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monitoring audit log data; applying the rule to audit log data to determine if
an event has occurred, the event occurring if at least one criterion has been
met; storing, in memory, a hit if the event has occurred; and providing
notification if the event has occurred. FairWarning, 839 F.3d at 1092. The
court determined that the claims “merely implement an old practice in a new
environment.” Id. at 1094 (citation omitted). In particular, the court
determined:
The claimed rules ask whether accesses of PHI, as reflected in
audit log data, are 1) ‘by a specific user,’ 2) ‘during a
predetermined time interval,’ or 3) ‘in excess of a specific
volume.’ These are the same questions (though perhaps
phrased with different words) that humans in analogous
situations detecting fraud have asked for decades, if not
centuries. Although FairWarning’s claims require the use of a
computer, it is this incorporation of a computer, not the claimed
rule, that purportedly ‘improve[s] [the] existing technological
process’ by allowing the automation of further tasks.

Id. at 1094–95.
Similarly, the rules recited in the present claims ask whether 1) a hotel
reservation is not for leisure travel, 2) the hotel reservation does not comply
with company travel policy, 3) the hotel reservation does not meet an
exception to the company travel policy, and 4) the hotel reservation is fully
cancelable. See claim 1. Like in FairWarning, these questions are the same
that humans determining and responding to hotel reservations made outside
of a company travel policy have asked for decades, and therefore, merely
form part of the abstract ideas discussed above.
Similarly, Appellant’s contention that the invention allows for
“intelligently identifying and parsing cancellation information from a hotel
reservation record” (Appeal Br. 14), is not persuasive to show a
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technological improvement. This alleged improvement is an improvement
in business relations, which falls within the category of an abstract idea, as
discussed supra, not an improvement to technology. “[A] claim for a new
abstract idea is still an abstract idea.” Synopsys, Inc. v. Mentor Graphics
Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (emphasis added). “[U]nder
the Mayo/Alice framework, a claim directed to a newly discovered law of
nature (or natural phenomenon or abstract idea) cannot rely on the novelty of
that discovery for the inventive concept necessary for patent eligibility . . . .”
Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016)
(citations omitted).
Appellant’s argument that the present claims do not preempt use of an
abstract idea (Appeal Br. 18), do not persuade us that the claims are eligible.
Although preemption may denote patent ineligibility, its absence does not
demonstrate patent eligibility. See FairWarning, 839 F.3d at 1098. For
claims covering a patent-ineligible concept, preemption concerns “are fully
addressed and made moot” by an analysis under the Mayo/Alice framework.
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015).
We are unpersuaded that any of dependent claims 21–24, 26, or 29
recite additional elements that integrate the abstract idea into a practical
application. Appeal Br. 18–20; Reply Br. 7–8. Specifically, we disagree
that claims 21, 26, and 29 recite additional elements. Instead, those claims
merely further limit the abstract idea, discussed supra, of determining, based
on information extracted from the record of the hotel reservation, whether
the hotel reservation is for leisure travel. Although claims 22–24 recite “an
email notification” (see Claims App.), Appellant’s Specification discloses
that the emails of the present invention are generic emails. See Spec. ¶¶ 32,
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41, 58. As discussed above, merely adding generic hardware and computer
components to perform abstract ideas does not integrate those ideas into a
practical application. See 2019 Revised Guidance, 84 Fed. Reg. at 55.
Appellant does not make any other arguments pertaining to Step 2A,
Prong 2. Because the present claims recite an abstract idea that is not
integrated into a practical application, we proceed to Step 2B.

F. Step 2B: The Inventive Concept
We disagree with Appellant’s argument that the Examiner does not
support the finding that the additional elements are well-understood, routine,
and conventional, and does not include an analysis of all the additional
elements. Appeal Br. 16–18 (citing Berkheimer Memorandum).
As an initial matter, Appellant’s argument that the additional elements
include the “four determining operations associated with four different
conditions” (Appeal Br. 17–18; see, also, Reply Br. 6–7), namely those
discussed supra in conjunction with FairWarning, appears misplaced
because all of the claim limitations, with the exception of the additional
elements identified above, are directed to the abstract idea, as discussed
supra, in § D. An inventive concept “cannot be furnished by the
unpatentable law of nature (or natural phenomenon or abstract idea) itself.”
Genetic, 818 F.3d at 1376; see also 2019 Revised Guidance, 84 Fed. Reg. at
56; Alice, 573 U.S. at 217 (explaining that, after determining a claim is
directed to a judicial exception, “we then ask, ‘[w]hat else is there in the
claims before us?’” (emphasis added, brackets in original) (quoting Mayo,
566 U.S. at 78)). Instead, an “inventive concept” is furnished by an element
or combination of elements that is recited in the claim in addition to the
judicial exception and sufficient to ensure the claim as a whole amounts to
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significantly more than the judicial exception itself. Alice, 573 U.S. at 218
19 (citing Mayo, 566 U.S. at 72–73); see BSG Tech LLC v. Buyseasons, Inc.,
899 F.3d 1281, 1290 (Fed. Cir. 2018) (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)).
Furthermore, the Examiner has supplied the evidence required by the
Berkheimer Memorandum at least by providing a citation to the
Specification and to one or more court decisions. See Final Act. 6–7 (citing
Spec. ¶¶ 22, 27–30, 58–61; SAP Am., Inc., 890 F.3d at 1023; Alice, 573 U.S.
at 224–25; Intellectual Ventures I, 838 F.3d at 1307; Versata., 793 F.3d at
1334). Appellant’s argument that “[w]hile the Examiner cites some court
cases, the holdings in those cases do not demonstrate that all of the elements
of Claim 1 are well-understood, routine, and conventional” (Reply Br. 7)
does not, without more, persuade of error in the Examiner’s finding to the
contrary.
The Examiner also determines, and we agree, that the Specification at
paragraphs 22, 27–30, and 58–61, describes the additional elements as
known and conventional generic computing elements in a manner that
indicates that they are sufficiently well-known. Final Act. 6–7. The
Specification supports the Examiner’s determination in this regard, because
it explains that “at least one processor,” “an email,” “an email server,” “a
keyword based filter,” “a parsing algorithm,” and “a notification email,” are
generic components and describes them at a high level of generality. ¶¶ 22,
27, 32, 41, 48, 54, 58, Fig. 2.
With regard to Appellant’s argument that the claims are not well-
understood, routine, or conventional because the prior art of record does not
Appeal 2020-001721
Application 14/822,498
18
disclose or suggest the claim limitations (Appeal Br. 18; Reply Br. 7),
Appellant improperly conflates the requirements for eligible subject matter
(§ 101) with the independent requirements of novelty (§ 102) and non-
obviousness (§ 103). “The ‘novelty’ of any element or steps in a process, or
even of the process itself, is of no relevance in determining whether the
subject matter of a claim falls within the § 101 categories of possibly
patentable subject matter.” Diehr, 450 U.S. at 188–89; see also Genetic, 818
F.3d at 1376 (stating that, “under the Mayo/Alice framework, a claim
directed to a newly discovered law of nature (or natural phenomenon or
abstract idea) cannot rely on the novelty of that discovery for the inventive
concept necessary for patent eligibility”).
We disagree with Appellant’s additional argument that dependent
claims 21–24, 26, and 29 recite significantly more and create an ordered
combination that is not well-understood, routine, or conventional. Appeal
Br. 18–20; Reply Br. 7–8. As discussed above, claims 21, 26, and 29 do not
recite any additional elements that could amount to significantly more.
Claims 22–24 recite only the additional element of “a notification email,”
which is discussed at a high degree of generality in Applicant’s Specification
(see Spec. ¶¶ 32, 41, 58), and is not purported to improve the functioning of
the computer itself or any other technology or technical field.
Therefore, on the record before us, Appellant has not shown that the
claims on appeal add a specific limitation beyond the judicial exception that
is not well-understood, routine, and conventional, when the claim
limitations are considered both individually and as an ordered combination.
See MPEP § 2106.05(d).
For at least the above reasons, we conclude, under the 2019 Revised
Guidance, that each of Appellant’s claims 1, 4, 6–8, 11, 13–15, 18, and 20–
Appeal 2020-001721
Application 14/822,498
19
29, considered as a whole, is directed to a patent-ineligible abstract idea that
is not integrated into a practical application, and does not include an
inventive concept. We therefore sustain the Examiner’s rejection of claims
1, 4, 6–8, 11, 13–15, 18, and 20–29 under 35 U.S.C. § 101.
CONCLUSION
The Examiner did not err in rejecting claims 1, 4, 6–8, 11, 13–15, 18,
and 20–29 under 35 U.S.C. § 101, as being directed to a judicial exception,
without significantly more.
DECISION SUMMARY

FINALITY AND 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)(iv). See
37 C.F.R. § 41.50(f).

AFFIRMED

Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 4, 6–8,
11, 13–15,
18, 20–29
101 Eligibility 1, 4, 6–8,
11, 13–15,
18, 20–29