VAANANEN, Mikko

Patent Trials and Appeals Board

Apr 22, 2020

15412087 - (D) (P.T.A.B. Apr. 22, 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.
15/412,087 01/23/2017 Mikko VAANANEN P150606US 3293
129597 7590 04/22/2020
Mikko Kalervo Vaananen
PO Box 346
Street address: Unioninkatu 20-22, Suite B351
Helsinki, 00131
FINLAND
EXAMINER
RANKINS, WILLIAM E
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
04/22/2020 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):
patents@suinno.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MIKKO VAANANEN
____________

Appeal 2019-000288
Application 15/412,087
Technology Center 3600
____________

Before PHILIP J. HOFFMANN, CYNTHIA L. MURPHY, and
TARA L. HUTCHINGS, Administrative Patent Judges.

MURPHY, Administrative Patent Judge.

DECISION ON APPEAL
The Appellant1 appeals from the Examiner’s rejection of claims 1, 3,
6, 10, 11, 13, 16, 20, 21, 23, 26, 28, and 30–36 under 35 U.S.C. § 101.
We REVERSE.2

1 The Appellant is the “applicant” (e.g., “the inventor”) as defined in
37 C.F.R. § 1.42. The real party in interest is the inventor, Mikko Vaananen.
(See Appeal Br. 6.)
2 We have jurisdiction over this appeal under 35 U.S.C. § 134(a) and
35 U.S.C. § 6(b). An oral hearing was held on April 6, 2020.
Appeal 2019-000288
Application 15/412,087
2
BACKGROUND
The Appellant’s invention “relates to a cloud based method of filing
legal documents” (Spec. 1, l. 4), so that “individuals can prosecute their
simple legal matters economically and correctly without the expensive help
of an attorney” (id. at 2, ll. 22–23).
ILLUSTRATIVE CLAIM
(with paragraphing modified and bracketed text added)
1. A computer system present over a cloud network for
managing preparation and processing of legal documents, the
computer system comprising a server computer and a terminal
device, and user data stored into or accepted through at least
one of the mobile terminal device and the server computer,
wherein the computer system is configured to:
[(a)] provide to the user, having at least one of an official
matter and a business matter with a governmental or civil
authority access via a mobile application of user terminal
device;
[(b)] provide, to the user, electronic form or letter
template related to the at least one of the official matter and the
business matter, wherein the electronic form or letter template
is provided based on coded instructions related to the at least
one of official matter and business matter;
[(c)] prefill the, electronic form or letter template based
on the user data and data identified by an interdocket check
between a present docket and past dockets;
[(d)] file the, electronic form or letter electronically to at
least one authority of the plurality of authorities;
[(e)] make payment of fees related to the at least one of
official matter and business matter with the at least one
authority; and
[(f)] provide at least one of automatic, semiautomatic,
and manual electronic archiving of correspondence and
documents by associating a docket number with a matter, and
documents or data being copied automatically from one docket
to another docket.
Appeal 2019-000288
Application 15/412,087
3
REJECTION
The Examiner rejects of claims 1, 3, 6, 10, 11, 13, 16, 20, 21, 23, 26,
28, and 30–36 under 35 U.S.C. § 101 as being “directed to” a judicial
exception (i.e., an abstract idea) “without significantly more.” (Final
Action 3.)
JUDICIAL EXCEPTIONS
The Patent Act defines subject matter eligible for patent protection as
“any new and useful process, machine, manufacture, or composition of
matter, or any new and useful improvement thereof.” (35 U.S.C. § 101.)
However, the Supreme Court has “long held” that this provision contains an
important implicit exception: “[l]aws of nature, natural phenomena, and
abstract ideas are not patentable.” (Ass’n for Molecular Pathology v. Myriad
Genetics, Inc., 569 U.S. 576, 589 (2013).) These three concerns are
“judicially created exceptions to § 101,” or more concisely, “judicial
exception[s].” (McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d
1299, 1311–12 (Fed. Cir. 2016).) Thus, an abstract idea is a judicial
exception to subject matter (e.g., a method) that seemingly falls within a
category listed in the statute.
THE ALICE TEST
In Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014), the Supreme
Court provided a two-step test to guard against an attempt to patent a purely
an abstract idea. (Alice, 573 U.S. at 217–18.) In Alice step one, a
determination is made as to whether the claim at issue is “directed to” an
abstract idea. (Id. at 218.) If a claim is “not directed to an abstract idea
under step one of the Alice [test], we do not need to proceed to step two.”
Appeal 2019-000288
Application 15/412,087
4
(Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016).)
More succinctly, “we stop at [Alice] step one.” (Id.)
Thus, if a claim is not “directed to” an abstract idea so as to satisfy
Alice step one, the Alice test for patent eligibility is complete, and the claim
passes muster under 35 U.S.C. § 101.3
2019 § 101 GUIDANCE
The 2019 Revised Patent Subject Matter Eligibility Guidance (“2019
§ 101 Guidance”) provides us with a two-pronged step (Step 2A) for
analyzing whether a claim is “directed to” an abstract idea so as to satisfy
Alice step one. (See Federal Register Vol. 84, No. 4, 50 (Jan. 7, 2019).) In
the first prong of Step 2A (Prong One), we determine whether the claim
recites a judicial exception; and, in the second prong of Step 2A (Prong
Two), we determine whether “the judicial exception is integrated into a
practical application of the judicial exception.” (Id. at 50.) “If the recited
exception is integrated into a practical application of the exception, then the
claim is eligible at Prong Two” and “[t]his concludes the eligibility
analysis.” (Id. at 54.)
Thus, if a claim integrates an abstract idea into a practical application
under Prong Two of Step 2A, the Alice test for patent eligibility is complete,

3 If the claim at issue is directed to an abstract idea so as to satisfy Alice step
one, the second step of the Alice test must be performed. In Alice step two, a
determination is made as to whether additional elements in the claim
“amount[] to significantly more” than the abstract idea itself. (Alice, 573
U.S. at 218.) This determination involves evaluating whether these
additional elements are well-understood, routine, and/or conventional
functions, individually, or as an ordered combination. (Id. at 225.)
Appeal 2019-000288
Application 15/412,087
5
and the claim passes muster under 35 U.S.C. § 101.4 In other words, if an
examiner does not establish that a claim fails to integrate a recited abstract
idea into a practical application, we must reverse the rejection of this claim
under 35 U.S.C. § 101.
ANALYSIS
Independent claim 1 sets forth a “computer system” that would be
invoked when a person (i.e., a “user”) has “at least one of an official matter
and a business matter.” (Appeal Br., Claims App.) More specifically,
claim 1 sets forth a computer system that would be invoked when this user
needs to file a legal document (i.e., a “form” or a “letter”) related to this
matter with a “government or civil authority.” (Id.) According to the
Appellant, a person will typically hire an attorney to manage the
preparation and processing of such a legal document. (See Spec. 2, ll. 1–3.)
Step 2A—Prong One
Per the 2019 § 101 Guidance, we begin with the first prong of
Step 2A (Prong One), where we determine whether the claim “recites” an
abstract idea. (2019 § 101 Guidance, 84 Fed. Reg. at 54.) The Guidance
“extracts and synthesizes key concepts identified by the courts as abstract
ideas,” and these concepts include “[c]ertain methods of organizing human
activity,” and, more particularly “legal interactions.” (Id. at 52.) For
example, the Federal Circuit has held that providing, preparing, filling in,

4 If it is determined under Step 2A that the claim at issue is directed to an
abstract idea, Step 2B of the 2019 § 101 Guidance must be performed. In
Step 2B attention is given, for the first time, as to whether additional
elements in the claim are well-understood, conventional and/or routine.
(See 2019 § 101 Guidance, Federal Register Vol. 84, No. 4, 56.)
Appeal 2019-000288
Application 15/412,087
6
and submitting a legal document related to a legal obligation is an abstract
idea. (See In re Comiskey 554 F.3d 967, 981 (Fed. Cir. 2009.)
The Appellant’s claimed system is “for managing preparation and
processing of legal documents” (i.e., the system is a “manager”). (Appeal
Br., Claims App.) As indicated above, the management of the preparation
and processing of a legal document is typically handled by an attorney (i.e.,
the attorney is the “manager”). The claimed system is configured to
perform steps (a)–(f); and these steps recite tasks that mirror those
performed by an attorney when he/she is the “manager” preparing and
processing a legal document on behalf of a client.
Specifically, in step (a), the user is provided with “access” to the
manager; in step (b), the user is provided with a “form” or “letter” relating
the legal matter at hand; in step (c), the form/letter is “prefill[ed]” with
obtainable data about the user; in step (d), the form/letter is “file[d]” with
the government or civil authority; in step (e), a “payment of fees” is made
to the authority; and, in step (f), correspondence and documents are
archived. (Appeal Br., Claims App.) Independent claim 1 also recites, in
steps (c) and (f), “a docket number,” “present and past” dockets, and the
copying of “documents or data.” (Id.)
When an attorney (rather than a computer system) is the manager,
the user is provided with access to the attorney (e.g., by visiting his/her
office); the attorney provides the client with the relevant form/letter; the
attorney prefills this form/letter with information already available; the
attorney files the form/letter with the authority on behalf of the client; the
attorney handles the payment of the filing fee for this form/letter on behalf
of the client; and the attorney saves (i.e., archives) correspondence and
documents in a folder. These tasks usually entail, at some point, the
Appeal 2019-000288
Application 15/412,087
7
docketing of legal matters, and the copying of documents so that they can
be placed in the client’s folder.
Consequently, independent claim 1 recites limitations aligned with a
legal interaction between a person, an attorney hired by this person, and a
government or civil authority.5 And a “legal interaction[]” is a certain
method of organizing human activity that constitutes an abstract idea.
(2019 § 101 Guidance, 84 Fed. Reg. at 52.)
Thus, independent claim 1 recites an abstract idea under Prong One of
Step 2A of the 2019 § 101 Guidance. However, this alone does not mean
that claim 1 is “directed to” this abstract idea so as to satisfy Alice step one.
We must further determine, under Prong Two of Step 2A of the Guidance,
“whether the claim as a whole integrates the recited judicial exception into a
practical application of the exception.” (2019 § 101 Guidance, Federal
Register Vol. 84, No. 4, at 54.)
Step 2A—Prong Two
When doing this Prong-Two determination, we identify “additional
elements recited in the claim beyond the judicial exception[],” and we then
evaluate whether the so-identified additional elements “integrate the
exception into a practical application.” (2019 § 101 Guidance, Federal
Register Vol. 84, No. 4, at 54–55.) Additional elements are “claim features,
limitations, and/or steps that are recited in the claim beyond the identified
judicial exception.” (Id. at 55, n 24.) Thus, here, the additional elements are

5 Thus, we agree with the Examiner that independent claim 1 recites an
abstract idea related to “the creation and filing of legal documents.” (Final
Action 3.)
Appeal 2019-000288
Application 15/412,087
8
those claim features and limitations that are beyond those prevalent in a
legal interaction between a person, his/her attorney, and an authority.
Step (a) requires the system to provide “access via a mobile
application of [a] user terminal device,” and step (b) requires the system to
provide an “electronic” form/letter to the user “based on coded
instructions.” (Appeal Br., Claims App.) These limitations contain
additional elements that are beyond what would occur when, for example,
the user is provided with access to the attorney by visiting his/her office,
and/or the attorney provides the client with the relevant form/letter.
Step (c) requires the system to prefill the electronic form/letter “based
on [stored] user data and data identified by an interdocket check between a
present docket and past dockets.” (Appeal Br., Claims App.) Step (f)
requires the system to provide “electronic archiving of correspondence by
associating a docket number with a matter and documents or data being
copied automatically from one docket to another docket.” (Id.) These
limitations contain additional elements beyond an attorney’s docketing of
legal matters, and/or copying of documents.
The Examiner seems to address each additional element individually,
and explain why each additional element, individually, fails to integrate the
abstract idea into a practical application. For example, the Examiner
explains that the terminal device “is generically recited” (Final Action 4);
the Examiner explains that “online fee payments” are routine (Answer 4);
the Examiner explains that “storing data” is a generic computer function
(Final Action 4); and the Examiner explains that simply “programming a
computer” to do docket-related activities is not enough to transform claim 1
Appeal 2019-000288
Application 15/412,087
9
into patent eligible subject matter (Answer 4).6 In other words, the
Examiner determines that each additional element recited in independent
claim 1 is a generic computer component.
However, per the 2019 § 101 Guidance, “[i]t is critical that examiners
consider the claim as a whole when evaluating whether the judicial
exception is meaningfully limited by integration into a practical application
of the exception.” (2019 § 101 Guidance, Federal Register Vol. 84, No. 4,
at 54.) Although “[s]ome elements may be enough on their own to
meaningfully limit an exception, . . . other times it is the combination of
elements that provide the practical application.” (Id.) Thus, “examiners
should give careful consideration to both the element and how it is used or
arranged in the claim as a whole.” (Id.) Indeed, the Federal Circuit has
plainly told us that it is sometimes possible for “an inventive concept” to
reside in “the non-conventional and non-generic arrangement of known,
conventional pieces,” such as “a set of generic computer components.”
(Bascom Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341,
1350 (Fed. Cir. 2016).)
Here, the record does not reflect that careful consideration was given
to the claimed combination (e.g., the ordered arrangement) of the additional
elements recited in independent claim 1. (See Final Action 2–4; see also
Answer 3–4.) The Examiner does not acknowledge the claimed
combination of these additional elements, much less explain why this

6 When an additional element in a claim is a “computer,” the relevant
question is not whether the claim requires the computer to accomplish a
recited function. (Alice, 573 U.S. at 223.) Rather, “the relevant question” is
whether the claim does more than simply “instruct the practitioner to
implement the abstract idea” on a computer. (Id. at 225.)
Appeal 2019-000288
Application 15/412,087
10
claimed combination fails to integrate the abstract idea into a practical
application. Rather, the Examiner determines that “the additional limitations
do not add significantly more” (Final Action 4) without any discussion
whatsoever of the ordered arrangement of these additional elements in
claim 1.
As such, we agree with the Appellant that the Examiner does not
carefully consider the “cumulative” effect of additional elements recited in
independent claim 1. (Appeal Br. 7.)
Thus, the Examiner fails to establish, on the record before us, that
independent claim 1 is “directed to” an abstract idea so as to satisfy Alice
step one. As such, there is no need to perform Step 2B of the 2019 § 101
Guidance (and/or Alice step two), and “this concludes the eligibility
analysis.” (2019 § 101 Guidance, Federal Register Vol. 84, No. 4, at 54.)
Summary
We do not sustain the Examiner’s rejection of independent claim 1,
and claims 3, 6, 10, 31, and 32 depending therefrom. Independent claims 11
and 21 recite the same or similar additional elements, and the Examiner
addresses all of the claims collectively. (See Final Action 3–4.) Thus, we
likewise do not sustain the Examiner’s rejections of independent claims 11
and 21, and claims 13, 16, 20, 23, 26, 30, and 33–36 depending therefrom.
Appeal 2019-000288
Application 15/412,087
11
CONCLUSION
Claims
Rejected
Basis Affirmed Reversed
1, 3, 6, 10, 11, 13,
16, 20, 21, 23, 26,
28, 30–36
§ 101 – subject
matter eligibility
1, 3, 6, 10,
11, 13, 16,
20, 21, 23,
26, 28, 30–36

REVERSED