Work, James Duncan. et al.

Patent Trials and Appeals Board

Oct 2, 2019

14675723 - (D) (P.T.A.B. Oct. 2, 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.
14/675,723 03/31/2015 James Duncan Work 60352-0371 4150
106752 7590 10/02/2019
Hickman Palermo Becker Bingham /LinkedIn/Microsoft
1 Almaden Boulevard, Floor 12
San Jose, CA 95113
EXAMINER
SENSENIG, SHAUN D
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
10/02/2019 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):
usdocket@h35g.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JAMES DUNCAN WORK,
ALLEN J. BLUE, and REID HOFFMAN
_______

Appeal 2018-007229
Application 14/675,723
Technology Center 3600
____________

Before HUBERT C. LORIN, NINA L. MEDLOCK, and
CHARLES J. BOUDREAU, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
James Duncan Work, et al. (Appellant)1 seeks our review under
35 U.S.C. § 134(a) of the Examiner’s decision to reject claims 1–20, which
constitute all the claims pending in this application. We have jurisdiction
under 35 U.S.C. § 6(b).

SUMMARY OF DECISION
We AFFIRM-IN-PART.

1 The Appellant identifies Microsoft Corporation as the real party in interest.
Appeal Br. 2.
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THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A computer-implemented method for matching a plurality of
results to a search request and sorting the plurality of results
based on determinations of diversity scores representing
diversities of networks of a plurality of target members, the
diversity scores being usable as components for determining
authenticities of profiles of the plurality of target members, the
method comprising:
[1] storing a plurality of relationships between a plurality of
members of a social network, the plurality of members including
a searching member and the plurality of target members;
[2] receiving the search request, the search request initiated
on behalf of the searching member;
[3] processing the search request to identify the plurality of
results, the plurality of results including profiles of the plurality
of target members;
[4] analyzing the plurality of relationships to determine the
diversity scores representing the diversities of the networks of
the plurality of target members; and
[5] sorting the plurality of results for providing to the
searching member based on the diversity scores, one or more
modules incorporated into a networked system to configure one
or more processors of the networked system to perform the
storing, receiving, processing, analyzing, and sorting.

THE REJECTION
The following rejection is before us for review:
Claims 1–20 are rejected under 35 U.S.C. § 101 as claiming patent-
ineligible subject matter.

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ISSUE
Did the Examiner err in rejecting claims 1–20 under 35 U.S.C. § 101
as claiming patent-ineligible subject matter?

ANALYSIS
The rejection of claims 1–20 under 35 U.S.C. § 101 as claiming patent-
ineligible subject matter.
Independent claims 1 and 8, and dependent claims 2–7 and 9–14
Representative claim
Our discussion will focus on independent claim 1, as the Appellant
relies on the same arguments for independent claim 8. See, e.g., Appeal Br.
19–21. The Appeal Brief separately argues dependent claims 2–7 and 9–14.
Appeal Br. 30–32. We will address those arguments after we discuss the
merits of the rejection as it relates to the subject matter covered by claim 1.

Preliminary comment
In the briefs, the Appellant refers to prior USPTO guidance. See, e.g.,
Appeal Br. 10–11 (“2014 Interim Guidance on [Patent] Subject Matter
Eligibility [2014 Interim Guidance on Patent Subject Matter Eligibility,
79 Fed. Reg. 74,618–633 (Dec. 16, 2014)]”); id. at 19–22 (“Quick Reference
Sheet of the July 2015 Update”). Said guidance has been superseded by the
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (hereinafter “2019 Revised 101 Guidance”). Id. at 51
(“Eligibility-related guidance issued prior to the Ninth Edition, R-08.2017,
of the MPEP (published Jan. 2018) should not be relied upon.”).
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Accordingly, our analysis will not address the sufficiency of the
Examiner’s rejection against the cited prior guidance. Rather, our analysis
will comport with the 2019 Revised 101 Guidance.

Introduction
35 U.S.C. § 101 provides that “[w]hoever invents or discovers any
new and useful process, machine, manufacture, or composition of matter, or
any new and useful improvement thereof, may obtain a patent therefor.”
In that regard, claim 1 covers a “process” and is, thus, statutory
subject matter for which a patent may be obtained.2 This is not in dispute.
However, the § 101 provision “contains an important implicit
exception: Laws of nature, natural phenomena, and abstract ideas are not
patentable.” Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014)
(quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 589 (2013)).
In that regard, notwithstanding claim 1 covers statutory subject
matter, the Examiner has raised a question of patent-eligibility on the ground
that claim 1 is directed to an abstract idea. Eligibility is a question of law
based on underlying facts. SAP Am., Inc. v. InvestPic, LLC, 890 F.3d 1016,
1020 (Fed. Cir. 2018).

2 This corresponds to Step 1 of the 2019 Revised 101 Guidance, which
requires determining whether a “claim is to a statutory category.” 2019
Revised 101 Guidance, 84 Fed. Reg. at 53; see also id. at 53–54
(“[C]onsider[] whether the claimed subject matter falls within the four
statutory categories of patentable subject matter identified by 35 U.S.C.
[§] 101 . . . .”).
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Alice identifies a two-step framework for determining whether
claimed subject matter is directed to an abstract idea. Alice, 573 U.S. at 217.

Alice step one – the “directed to” inquiry
According to Alice step one, “[w]e must first determine whether the
claims at issue are directed to a patent-ineligible concept.” Id. at 218
(emphasis added).
The Examiner determined that claim 1 is “directed to collecting and
comparing profile data to sort search request results” (Non-Final Act. 2),
which the Examiner determined is similar to several other abstract ideas
identified by the courts, including “‘organizing information through
mathematical calculations’. (see DigiTech3)” (id. at 4), and “‘using
categories to organize, store and transmit information’ (Cyberfone4)” (id.
at 5). The Examiner further determined:
The claims collect and compare data in order to determine
results that match the search request, the matching made by
comparisons among data. These results include profile data of
other users. The claims “analyze” the relationships
(relationship data is part of profile data typically found in a
profile) to determine diversity scores. In order to determine the
diversity scores, the profile data of multiple users is compared
in order to determine differences/diversities.

Ans. 6.

3 Digitech Image Techs., LLC v. Elecs. For Imaging, Inc., 758 F.3d 1344
(Fed. Cir. 2014).
4 Cyberfone Systems, LLC v. CNN Interactive Group, Inc., 558 F. App’x 988
(Fed. Cir. 2014).
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The Appellant contends that “the plain focus of the claims at issue in
this case is an improvement to computer functionality.” Appeal Br. 22.
Accordingly, there is a dispute over what claim 1 is directed to. Is it
directed to “collecting and comparing profile data to sort search request
results” (Non-Final Act. 2) or “an improvement to computer functionality”
(Appeal Br. 22)?

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Claim Construction5
We consider the claim as a whole,6 giving it the broadest reasonable
construction7 as one of ordinary skill in the art would have interpreted it in
light of the Specification8 at the time of filing.
Claim 1 sets forth a method whose objective is “matching a plurality
of results to a search request and sorting the plurality of results.” The
sorting is done “based on determinations of diversity scores.” The diversity
scores “represent[] diversities of networks of a plurality of target members”

5 “[T]he important inquiry for a § 101 analysis is to look to the claim.”
Accenture Glob. Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336,
1345 (Fed. Cir. 2013). “In Bancorp Servs., L.L.C. v. Sun Life Assurance Co.
of Can., 687 F.3d 1266, 1273 (Fed. Cir. 2012), the court observed that
‘claim construction is not an inviolable prerequisite to a validity
determination under § 101.’ However, the threshold of § 101 must be
crossed; an event often dependent on the scope and meaning of the claims.”
Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1347–48
(Fed. Cir. 2015).
6 “In determining the eligibility of respondents’ claimed process for patent
protection under § 101, their claims must be considered as a whole.”
Diamond v. Diehr, 450 U.S. 175, 188 (1981).
7 2019 Revised 101 Guidance, 84 Fed. Reg. at 53 n.14 (If a claim, “under its
broadest reasonable interpretation . . . ”).
8 “First, it is always important to look at the actual language of the claims. . .
. Second, in considering the roles played by individual limitations, it is
important to read the claims ‘in light of the specification.’” Smart Sys.
Innovations, LLC v. Chicago Transit Authority, 873 F.3d 1364, 1378 (Fed.
Cir. 2017) (J. Linn, dissenting-in-part and concurring-in-part), citing Enfish,
LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016), among
others.

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and are “usable as components for determining authenticities of profiles of
the plurality of target members.” The method for accomplishing this
objective calls upon “one or more modules incorporated into a networked
system to configure one or more processors of the networked system to
perform” five steps, the “one or more modules” and “one or more
processors” being a combination of generic devices.9 See, e.g., Spec.,
paras. 17–22. The steps are:
1. “storing” Information A;
2. “receiving” Information B;
3. “processing” Information B “to identify” Information C;
4. “analyzing” Information A “to determine” Information D;
5. “sorting” Information C “for providing to the searching member based
on” Information D;
Where:

9 Cf. Maxon, LLC v. Funai Corp., 726 F. App’x 797, 799–800 (Fed. Cir.
2018) (nonprecedential) (“The district court correctly found that the claims
recite only generic computing processes using functional language.
Analyzing the physical components of the claims, the district court noted
that the specifications do not limit the breadth of elements such as
‘computer-readable medium,’ ‘logic,’ ‘processor,’ or ‘transceiver.’. . . We
agree that the representative claim does not recite anything beyond the
application of routine and conventional computer components.”); Smartflash
LLC v. Apple Inc., 680 F. App’x 977, 984 (Fed. Cir. 2017) (nonprecedential)
(“we find here that ‘interfaces,’ ‘program stores,’ and ‘processors’ are all
generic computer components . . .”).

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Information A is “a plurality of relationships between a plurality of
members of a social network, the plurality of members including a
searching member and the plurality of target members;”
Information B is “the search request, the search request initiated on
behalf of the searching member;”
Information C is “the plurality of results, the plurality of results
including profiles of the plurality of target members;” and
Information D is “the diversity scores representing the diversities of
the networks of the plurality of target members.”
The claim provides no structural details10 that would distinguish the
“one or more modules incorporated into a networked system” and “one or
more processors of the networked system” from generic computer systems
that were well known at the time the application was filed. For example,
there is no recitation of how the “one or more modules” are “incorporated
into a networked system” in a particular way.
Functionally, claim 1 calls on the “one or more modules incorporated
into a networked system” and “one or more processors of the networked
system” to perform “storing,” “receiving,” “processing,” “analyzing,” and
“sorting” various types of information “for providing to the searching
member.” These are common functions that generic computers are known
to perform. The difference between the claimed “one or more modules
incorporated into a networked system” and “one or more processors of the
networked system” and other well-known computer systems in performing

10 Cf. Move, Inc. v. Real Estate Alliance Ltd., 721 F. App’x 950, 954 (Fed.
Cir. 2018) (nonprecedential) (“Claim 1 is aspirational in nature and devoid
of any implementation details or technical description that would permit us
to conclude that the claim as a whole is directed to something other than the
abstract idea identified by the district court.”).
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said common functions is that the claimed “one or more modules
incorporated into a networked system” and “one or more processors of the
networked system” perform said functions on certain types of information.
But that difference alone is not patentably consequential. This is so because
“[c]laim limitations directed to the content of information and lacking a
requisite functional relationship are not entitled to patentable weight because
such information is not patent eligible subject matter under 35 U.S.C.
§ 101.” Praxair Distrib., Inc. v. Mallinckrodt Hosp. Prods. IP Ltd., 890
F.3d 1024, 1032 (Fed. Cir. 2018).
Based on the record before us, the claim steps of “storing,”
“receiving,” “processing,” “analyzing,” and “sorting” various types of
information do not ask the “one or more modules incorporated into a
networked system” and “one or more processors of the networked system”
to go beyond a generic computer system’s common information-processing
functions. Although computer-based instructions can be patentably
significant (see Enfish and Ancora Techs., Inc. v. HTC Am., Inc., 908 F.3d
1343 (Fed. Cir. 2018)), here the instant record does not sufficiently support
the view that said steps have any non-conventional effect on the generic
computer components. To the contrary, the record supports viewing the
phrase “one or more modules incorporated into a networked system to
configure one or more processors of the networked system” as amounting to
a mere instruction to implement the recited searching scheme on a generic
computer. Cf. Alice, 573 U.S. at 225–26 (“Instead, the claims at issue
amount to ‘nothing significantly more’ than an instruction to apply the
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abstract idea of intermediated settlement using some unspecified, generic
computer.”).
According to the Specification, “[t]he present invention can be
implemented by an apparatus for performing the operations described
herein,” which “may comprise a general-purpose computer, selectively
activated or reconfigured by a computer program stored in the computer.”
Spec. para. 17. The Specification further discloses that “[t]he algorithms
and displays presented herein are not inherently related to any particular
computer or other apparatus” and “[v]arious general-purpose systems may
be used with programs in accordance with the teachings herein . . . .” Id.
para. 18. And “any of the methods according to the present invention can be
implemented . . . by programming a general-purpose processor or by any
combination of hardware and software.” Id. The Specification also
discloses that “[t]he methods of the invention may be implemented using
computer software” and “the present invention is not described with
reference to any particular programming language.” Id. para. 19. According
to the Specification, “[i]t will be appreciated that a variety of programming
languages may be used to implement the teachings of the inventions as
described herein.” Id. The Specification also discloses that “[o]ne
embodiment of the present invention may be implemented as computer
software incorporated as part of an online social networking system” that
“operates with a computer system using a Windows, Macintosh, UNIX,
Linux or other operating system equipped with a Web browser application,
or other Web-enabled device capable of connecting to the Internet or other
network system.” Id. para. 22.
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In light of the Specification, we construe the limitation “one or more
modules incorporated into a networked system to configure one or more
processors of the networked system” as encompassing any software, in any
programming language, for programming a general-purpose processor to
perform the claimed steps.
Looking at the steps themselves, their combination describes a
searching scheme; that is, by “storing,” “receiving,” “processing,”
“analyzing,” and “sorting” various types of information as claimed, a
searching member can be provided with search results.
Accordingly, we reasonably broadly construe claim 1 as being
directed to a searching scheme implemented on a generic computer system.

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The Abstract Idea11
Above, where we reproduce claim 1, we identify in italics the
limitations we conclude recite an abstract idea.12 This is consistent with the
Examiner’s view. See Non-Final Act. at 2–8. Based on our claim
construction analysis (above), we determine that the identified limitations
describe a type of searching scheme. Searching for information and
analyzing information to provide sorted search results involves evaluation of
information, which is a mental process and, accordingly, an abstract idea.13
Cf. Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315, 1328

11 This corresponds to Step 2A of the 2019 Revised 101 Guidance. Step 2A
determines “whether a claim is ‘directed to’ a judicial exception,” such as an
abstract idea. 2019 Revised 101 Guidance, 84 Fed. Reg. at 53. Step 2A is a
two prong inquiry.

12 This corresponds to Prong One (a) of Step 2A of the 2019 Revised 101
Guidance. “To determine whether a claim recites an abstract idea in Prong
One, examiners are now to: (a) Identify the specific limitation(s) in the
claim under examination (individually or in combination) that the examiner
believes recites an abstract idea . . . .” 2019 Revised 101 Guidance,
84 Fed. Reg. at 54.

13 This corresponds to Prong One (“Evaluate Whether the Claim Recites a
Judicial Exception”) (b) of Step 2A of the 2019 Revised 101 Guidance. “To
determine whether a claim recites an abstract idea in Prong One, examiners
are now to: . . . (b) determine whether the identified limitation(s) falls within
the subject matter groupings of abstract ideas enumerated in Section I of the
[2019 Revised 101 Guidance].” 2019 Revised 101 Guidance, 84 Fed. Reg.
at 54. This case implicates subject matter grouping “(c)”: (c) Mental
processes—concepts performed in the human mind (including an
observation, evaluation, judgment, opinion). Id. at 52.

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(Fed. Cir. 2017) (“[T]he heart of the claimed invention lies in creating and
using an index to search for and retrieve data . . . an abstract concept.”);
Netflix, Inc. v. Rovi Corp., 114 F. Supp. 3d 927, 941 (N.D. Cal. 2015), aff’d,
670 F. App’x 704 (Fed. Cir. 2016) (claims are “directed to the abstract idea
of filtering search results using selectable categories.”)
The method of claim 1 also involves “determining authenticities of
profiles.” Determining authenticity is a fundamental business practice (e.g.,
to prevent fraud) and as such is a method of organizing human activity.
Accordingly, it is an abstract idea.14 Cf. Easyweb Innovations, LLC v.
Twitter, Inc., No. 11-CV-4550, 2016 WL 1253674, at *28 (E.D.N.Y.
Mar. 30, 2016) (“[T]he Court concludes that EasyWeb’s patents are directed
to an abstract idea of authentication.”), aff’d, 689 F. App’x 969 (Fed. Cir.
2017). The remaining (i.e., not italicized) limitations do no more than call
upon a generic computer system (i.e., “one or more modules incorporated
into a networked system to configure one or more processors of the
networked system”) to be used as a tool to perform this abstract idea, as

14 See 2019 Revised 101 Guidance, 84 Fed. Reg. at 52, subject matter
grouping “(b)”: (b) Certain methods of organizing human activity—
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).

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discussed below in our analysis under Prong Two of Step 2A of the 2019
Revised 101 Guidance.15

Improvement in the Functioning of a Computer16 (Appellant’s
Argument)
The Examiner’s characterization of what the claim is directed to
(“collecting and comparing profile data to sort search request results”) (Non-
Final Act. 2) is similar to our own, albeit our characterization is described at
a somewhat higher level of abstraction. Cf. Apple, Inc. v. Ameranth, Inc.,
842 F.3d 1229, 1240–41 (Fed. Cir. 2016) (“An abstract idea can generally be
described at different levels of abstraction. As the Board has done, the

15 Because we determine that claim 1 recites a mental process and a method
of organizing human activity, we need not address the Examiner’s
determination that the claims also involve “mathematical calculations”
(Non-Final Act. 4) (citing Digitech, 758 F.3d 1344) or the Appellant’s
corresponding arguments that the claims are not directed to mathematical
algorithms (Appeal Br. 24).
16 This corresponds to Prong Two (“If the Claim Recites a Judicial
Exception, Evaluate Whether the Judicial Exception Is Integrated Into a
Practical Application”) of Step 2A of the 2019 Revised 101 Guidance. 2019
Revised 101 Guidance, 84 Fed. Reg. at 54. “A claim that integrates a
judicial exception into a practical application will apply, rely on, or use the
judicial exception in a manner that imposes a meaningful limit on the
judicial exception, such that the claim is more than a drafting effort designed
to monopolize the judicial exception.” Id. One consideration, implicated
here, that is “indicative that an additional element (or combination of
elements)[] may have integrated the exception into a practical application”
(id. at 55) as if “[a]n additional element reflects an improvement in the
functioning of a computer, or an improvement to other technology or
technical field” (id.).

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claimed abstract idea could be described as generating menus on a computer,
or generating a second menu from a first menu and sending the second menu
to another location. It could be described in other ways, including, as
indicated in the specification, taking orders from restaurant customers on a
computer.”)
The Appellant disputes the Examiner’s characterization. See Appeal
Br. 18–26. Presumably, the Appellant would equally dispute our
characterization.
We have reviewed the record and are unpersuaded as to error in our or
the Examiner’s characterization of what claim 1 is directed to.
The Appellant argues that “the Examiner failed to establish a prima
facie case that the claims at issue are directed to patent-ineligible subject
matter.” Appeal Br. 18. We disagree. The rejection is three pages and
includes extensive detail to fully inform the Appellant of Examiner’s
position. See Non-Final Act. 2–4. And the Examiner has provided
additional explanation in response to the Appellant’s arguments. See id.
at 4–8; Ans. 5–17. The Appellant responded with 14 pages of rebuttal
reflecting an understanding of the Examiner’s position. See Appeal Br. 18–
32. The record shows that the rejection did not fail to comply with the
notice requirement of 35 U.S.C. § 132 — the standard by which the
sufficiency of the Examiner’s rejection is properly assessed. See In re Jung,
637 F.3d 1356, 1362 (Fed. Cir. 2011) (holding that the USPTO carries its
procedural burden of establishing a prima facie case when its rejection
satisfies the requirements of 35 U.S.C. § 132); Chester v. Miller, 906 F.2d
1574, 1578 (Fed. Cir. 1990) (“Section 132 is violated when a rejection is so
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uninformative that it prevents the applicant from recognizing and seeking to
counter the grounds for rejection.”).
The Appellant further argues that
as with the self-referential table in Enfish, the plain focus of the
claims at issue in this case is an improvement to computer
functionality (e.g., “one or more modules incorporated into a
networked system to configure one or more processors of the
networked system . . . for matching a plurality of results to a
search request and sorting the plurality of results based on
determinations of diversity scores representing diversities of
networks of a plurality of target members, the diversity scores
being usable as components for determining authenticities of
profiles of the plurality of target members”), not economic or
other tasks for which a computer is used in its ordinary capacity.
Appeal Br. 22–23.
Yet we do not see, and Appellant does not direct us to, any discussion
in the Specification of “one or more modules incorporated into a networked
system to configure one or more processors of the networked system” that
supports the argument that the claimed modules provide an improvement to
any computer or computer network. As we pointed out above in our Claim
Construction analysis, the claim limitation of “one or more modules
incorporated into a networked system to configure one or more processors of
the networked system” encompasses any software for programming a
general-purpose processor to perform the claimed steps, i.e., generic
computer components. The recited modules do not impart any specific
structure, but are generic modules for some recited function devoid of
implementation details.

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Because the claims are directed to an abstract idea, the claims
must include an “inventive concept” in order to be patent-
eligible. No such inventive concept is present here. Instead,
the claims “add” only generic computer components such as an
“interface,” “network,” and “database.” These generic
computer components do not satisfy the inventive concept
requirement.

Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324–
1325 (Fed. Cir. 2016) (internal citations and quotation marks omitted).
See also LendingTree, LLC v. Zillow, Inc., 656 F. App’x 991, 994 (Fed. Cir.
2016) (holding that a claim reciting a system comprising “a program
module, stored in said memory storage device for providing instructions to
said processing unit; said processing unit responsive to said instructions of
said program module, operable” to receive, filter, and forward data was
directed to ineligible subject matter under 35 U.S.C. § 101).
Specific asserted improvements over prior technology, when claimed,
can render claimed subject matter not directed to an abstract idea. Cf.
McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1316 (Fed.
Cir. 2016) (“When looked at as a whole, claim 1 is directed to a patentable,
technological improvement over the existing, manual 3-D animation
techniques.”). See also MPEP § 2106.05(a) (“Improvements to the
Functioning of a Computer or To Any Other Technology or Technical
Field.”) and Alice, 573 U.S. at 225–26 (“The method claims do not, for
example, purport to improve the functioning of the computer itself. See
[CLS Bank Int’l v. Alice Corp., 717 F.3d 1269, 1286 (Fed. Cir. 2013)
(Lourie, J., concurring)] (‘There is no specific or limiting recitation of . . .
improved computer technology . . .’); Brief for United States as Amicus
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Curiae 28–30. Nor do they effect an improvement in any other technology
or technical field. See, e.g., Diehr, 450 U.S., at 177–78, 101 S. Ct. 1048.”).
However, there is insufficient evidence in the record before us that the
claimed subject matter reflects an asserted improvement over prior
technology.
“The ‘abstract idea’ step of the inquiry calls upon us to look at the
‘focus of the claimed advance over the prior art’ to determine if the claim’s
‘character as a whole’ is directed to excluded subject matter.’” Affinity Labs
of Texas v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting
Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir.
2016)); see also Enfish, 822 F.3d at 1335, quoted in Apple, 842 F.3d at
1241; see also Ancora, 908 F.3d at 1347:
We examine the patent’s “‘claimed advance’ to determine
whether the claims are directed to an abstract idea.” Finjan, Inc.
v. Blue Coat Sys., Inc., 879 F.3d 1299, 1303 (Fed. Cir. 2018). “In
cases involving software innovations, this inquiry often turns on
whether the claims focus on ‘the specific asserted improvement
in computer capabilities . . . or, instead, on a process that qualifies
as an “abstract idea” for which computers are invoked merely as
a tool.’’’ Id. (quoting Enfish, 822 F.3d at 1335–36); see BSG
Tech LLC v. Buyseasons, Inc., 899 F.3d 1281, 1285–86 (Fed. Cir.
2018). Computers are improved not only through changes in
hardware; “[s]oftware can make non-abstract improvements to
computer technology . . . .” Enfish, 822 F.3d at 1335. See Finjan,
879 F.3d at 1304. We have several times held claims to pass
muster under Alice step one when sufficiently focused on such
improvements.
The Specification, in a section entitled BACKGROUND, explains that
“social networks may be regarded as networks of people connected by trust,
shared values, and/or a mutual need for cooperation,” and “[s]ocial
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communities, cooperative business relationships, and professional
associations are all examples of social networks.” Spec. para. 4. According
to the Specification, “[s]ocial networking systems create social networks to
find business partners, clients and people with shared interests and values”
and “are also used to share knowledge, build and strengthen communities,
build teams, and map and analyze complex organizational networks.” Id.
The Specification further discloses that “[t]his concept has expanded to
online communities where people share and use these contacts to find new
friends, romantic interests, and business partners or employees,” which
“provides an easier and more organized way to manage and develop one’s
social network.” Id. para. 5. “In addition, many of these online
communities have some sort of reputation system . . . ,” the purpose of
which “is to build confidence and trust in and between users in the online
community.” Id. para. 6. According to the Specification, “[s]earchers use
these stored references and endorsements to enhance their ability to find
others who not only appear to match their requirements, but who have also
received positive endorsements.” Id. The Specification explains that a
problem with existing systems is that as “associations get more and more
remote, the searcher’s confidence level wanes” and “a typical search may
return large lists of potential targets that are quite far removed from the
searcher’s most trusted and reliable contacts . . . .” Id. para. 9. The
Specification states that “[p]resently available reputation systems for online
social network communities are inadequate to provide the appropriate level
of confidence and validity and to allow further communication with an
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endorser of a person” and that “[t]he present invention addresses these
inadequacies.” Id. para. 11.
Thus, the Specification supports the view that the heart of the
invention lies in a searching scheme, not the “one or more modules
incorporated into a networked system to configure one or more processors of
the networked system,” which, as discussed above, are merely generic. It is
the searching scheme which appears to be the advance. Rather than being
directed to any specific asserted improvement over prior technology, the
record supports the view that the claimed subject matter is directed to a
searching scheme.17
The Appellant next argues that “as with the process for achieving
automated lip-synchronization of 3-D characters in McRO and the
generating of a security profile that identifies suspicious code in Finjan, the
specific way in which the steps are performed prevents broad preemption of
the subject matter” and “different approaches of sorting a plurality of results
are not preempted.” Appeal Br. 23.
The difficulty with this argument is that it confuses the pre-emption
concern with the level of abstraction describing the abstract idea. With
respect to the pre-emption concern, “[w]hat matters is whether a claim
threatens to subsume the full scope of a fundamental concept, and when

17 See 2019 Revised 101 Guidance, 84 Fed. Reg. at 55 (“The courts have
also identified examples in which a judicial exception has not been
integrated into a practical application: An additional element merely recites
the words ‘apply it’ (or an equivalent) with the judicial exception, or merely
includes instructions to implement an abstract idea on a computer, or merely
uses a computer as a tool to perform an abstract idea.”).
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those concerns arise, we must look for meaningful limitations that prevent
the claim as a whole from covering the concept’s every practical
application.” CLS Bank Int’l, 717 F.3d at 1281 (Lourie, J., concurring).
Here, the argued-over claim limitations (Appeal Br. 23 (“‘analyzing the
plurality of relationships to determine the diversity scores representing the
diversities of the networks of the plurality of target members’ and ‘sorting
the plurality of results for providing to the searching member based on the
diversity scores’”)) simply narrow the searching scheme so that it is
described at a lower level of abstraction. The limitations do not render the
abstract idea to which the claim is directed any less an abstract idea. Pre-
emption is not a separate test.
To be clear, the proper focus is not preemption per se, for some
measure of preemption is intrinsic in the statutory right granted
with every patent to exclude competitors, for a limited time, from
practicing the claimed invention. See 35 U.S.C. § 154. Rather,
the animating concern is that claims should not be coextensive
with a natural law, natural phenomenon, or abstract idea; a
patent-eligible claim must include one or more substantive
limitations that, in the words of the Supreme Court, add
“significantly more” to the basic principle, with the result that
the claim covers significantly less. See Mayo[Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71–72 (2012)].
Thus, broad claims do not necessarily raise § 101 preemption
concerns, and seemingly narrower claims are not necessarily
exempt.
CLS Bank Int’l, 717 F.3d at 1281 (Lourie, J., concurring). See also Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)
(“While preemption may signal patent ineligible subject matter, the absence
of complete preemption does not demonstrate patent eligibility.”). Because
we find the claimed subject matter covers patent-ineligible subject matter,
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the pre-emption concern is necessarily addressed. “Where a patent’s claims
are deemed only to disclose patent ineligible subject matter under the Mayo
framework, . . . preemption concerns are fully addressed and made moot.”
Id. at 1379.
The Appellant argues that the cases cited by the Examiner are
distinguishable from the claims before us. Appeal Br. 24–26. For example,
the Appellant argues that the claims are not similar to the claims in
Cyberfone because “[h]ere, the claims at issue are not directed to a well-
established concept like transmitting information according to its
classification or protecting against risk.” Id. at 24. According to the
Appellant, “the claims are directed to a particular way of matching a
plurality of results to a search request and sorting the plurality of results
based on determinations of diversity scores representing diversities of
networks of a plurality of target members.” Id. at 24–25.
The Appellant does not persuasively show that any claim limitation
supports viewing the focus of the claims as not directed to an abstract idea
but rather rooted in technology. Notwithstanding that claim 1 recites “a
particular way of matching . . . and sorting” (id. at 24), that does not make
the claim any less abstract. See Mayo, 566 U.S. at 88–89 (“[O]ur cases have
not distinguished among different laws of nature according to whether or not
the principles they embody are sufficiently narrow. See, e.g., [Parker v.]
Flook, 437 U.S. 584 [(1978)] (holding narrow mathematical formula
unpatentable).”)
In the Reply Brief, the Appellant further argues that Core Wireless
Licensing S.A.R.L. v. LG Elecs., Inc., 880 F.3d 1356 (Fed. Cir. 2018)
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matches this case because “the claims in this case recite a specific
improvement over prior systems, particularly the ability to present search
results that are sorted by network diversity scores representing authenticated
users.” Reply Br. 7. But the court in Core Wireless held that the claims
were patent-eligible because they were directed to a “particular manner of
summarizing and presenting information in electronic devices.” Core
Wireless, 880 F.3d at 1362. In particular, the claims required “a specific
manner of displaying a limited set of information to the user, rather than
using conventional user interface methods to display a generic index on a
computer.” Id. at 1363. In contrast, claim 1 does not require any particular
manner of presenting information on any user interface.
We have considered all the Appellant’s arguments challenging the
Examiner’s determination under step one of the Alice framework and find
them unpersuasive. For the foregoing reasons, the record supports the
Examiner’s determination that claim 1 is directed to an abstract idea.

Alice step two – Does the Claim Provide an Inventive Concept?18
Step two is “a search for an ‘inventive concept’—i.e., an element or
combination of elements that is ‘sufficient to ensure that the patent in

18 This corresponds to Step 2B of the 2019 Revised 101 Guidance (84 Fed.
Reg. at 56) (“[I]f a claim has been determined to be directed to a judicial
exception under revised Step 2A, examiners should then evaluate the
additional elements individually and in combination under Step 2B to
determine whether they provide an inventive concept (i.e., whether the
additional elements amount to significantly more than the exception
itself).”).
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practice amounts to significantly more than a patent upon the [ineligible
concept] itself.’” Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S. at 73).
In that regard, the Examiner determined the following:
The claim(s) does/do not include additional elements that
are sufficient to amount to significantly more than the judicial
exception. The limitations of storing data, receiving data,
comparing data for matches, searching data, sorting data,
analyzing data to determine characteristics, calculating
percentage, using degrees of separation, and comparing and
grouping profiles. These are well-known, routine and
conventional practices that require no more than a generic
computer to perform generic computer functions. (Please refer to
July 2015 Update: Subject Matter Eligibility; page 7 for a listing
of computer functions found by the courts to be well-understood,
routine and conventional.) It should be noted the limitations of
the current claims are performed by the generically recited
general-purpose computer. (See specification at [0017].)
The claims do not recite an improvement to another
technology or technical field, an improvement to the functioning
of the computer itself, or meaningful limitations beyond
generally linking the use of an abstract idea to a particular
technological environment. For the role of a computer in a
computer implemented invention to be deemed meaningful in the
context of this analysis, it must involve more than performance
of “well-understood, routine, [and] conventional activities
previously known to the industry.” Id. at 2359 (quoting Mayo,
132 S. Ct. at 1294 (internal quotation marks and brackets
omitted)). Further, “the mere recitation of a generic computer
cannot transform a patent ineligible abstract idea into a patent-
eligible invention.” Id. at 2358. None of the hardware offers a
meaningful limitation beyond generally linking the system to a
particular technological environment, that is, implementation via
computers. Viewed as a whole, the claims do not purport to
improve the functioning of the computer itself, or to improve any
other technology or technical field. Use of an unspecified,
generic computer does not transform an abstract idea into a
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patent-eligible invention. Thus, the claim does not amount to
significantly more than the abstract idea itself. See Alice Corp.
v. CLS Bank lnt’l, 110 USPQ2d 1976 (U.S. 2014).
Non-Final Act. 3–4.
We agree with the Examiner’s analysis and determination.
The Appellant cites BASCOM Global Internet Services Inc. v. AT&T
Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016) as matching this case. Appeal
Br. 27–28. We disagree. Unlike in BASCOM, here no improvement in
computer functionality has been shown. See BASCOM, 827 at 1351 (“[T]he
claims may be read to ‘improve[ ] an existing technological process.’”)
(emphasis added).
The Appellant argues that “the claims at issue recite a specific
solution,” and the Appellant reproduces various limitations of claim 1.
Appeal Br. 27. In particular, the Appellant contends that “the one or more
recited modules are not generic modules” and “the one or more modules
provide specific non-conventional functionality, as recited and explained in
the as-filed specification (see, e.g., reputation system 41 of FIG. 2 and
paragraphs [0053], [0080], [0106]).” Id.
The difficulty with this argument is that we can find no basis for it in
the claim or the written description. Claim 1 does not specify any
arrangement of the claimed “one or more modules” or the “one or more
processors” beyond calling for them to be “incorporated into a networked
system” in some unspecified fashion. “Many of [A]ppellant’s arguments fail
from the outset because, . . . they are not based on limitations appearing in
the claims.” In re Self, 671 F.2d 1344, 1348 (CCPA 1982). Nowhere in the
record is there any suggestion that the arrangement of the claimed “one or
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more modules” and “one or more processors” is non-conventional and non-
generic as the Appellant argues. The Appellant cites Figure 2 and
paragraphs 53, 80, and 106 of the Specification. We have reviewed the cited
portions and are unable to find any disclosure of any modules, much less
“one or more modules incorporated into a networked system” in any
particular way. For example, Figure 2 depicts “a software architecture for
supporting methods of the present invention” (Spec. para. 12), but we do not
see any “modules incorporated into a networked system.” Rather, Figure 2
depicts a “Client Personal Computer/Appliance 12” in communication via
network 10 with “Server(s) 14, 16.” See id. para. 25 (“As shown in FIG. 2,
client 12 includes a client application program 18, which may make use of a
conventional Web browser 20 . . .”); id. para. 30 (“server 14 may be a Web
server having a server-side database, and client-side Web browsers may
interact with server 14 using conventional Internet communication
protocols.”) Cf. Intellectual Ventures I LLC v. Capital One Bank (USA), 792
F.3d 1363, 1370 (Fed. Cir. 2015) (“Rather, the ‘interactive interface’ simply
describes a generic web server with attendant software, tasked with
providing web pages to and communicating with the user’s computer.”).
Claim 1 does not recite any client, host, or server. The argument is not
commensurate in scope with what is claimed and, because the record does
not reflect it, amounts to mere attorney argument. Attorney argument,
however, cannot take the place of record evidence. See In re Geisler, 116
F.3d 1465, 1470 (Fed. Cir. 1997); Johnston v. IVAC Corp., 885 F.2d 1574,
1581 (Fed. Cir. 1989).
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We note that the Specification discloses a software architecture that
comprises various agents, such as “personal search agent 26” (Spec.
para. 25) and “search agents 34” (id. para. 27). However, claim 1 does not
recite any agent, and the Appellant does not contend that the claimed “one or
more modules” correspond to any of the agents described in the
Specification. See Accenture, 728 F.3d at 1345 (“[T]he complexity of the
implementing software or the level of detail in the specification does not
transform a claim reciting only an abstract concept into a patent-eligible
system or method.”); see also Intellectual Ventures I LLC v. Symantec
Corp., 838 F.3d 1307, 1322 (Fed. Cir. 2016) (“The district court erred in
relying on technological details set forth in the patent’s specification and not
set forth in the claims to find an inventive concept” (citing Accenture, 728
F.3d at 1345; Content Extraction & Transmission LLC v. Wells Fargo Bank,
Nat. Ass’n, 776 F.3d 1343, 1346 (Fed. Cir. 2014))).
The Appellant further argues that “the recited operations are not
conventional operations, as evidenced by the fact that there is not even a
novelty (102) or obviousness (103) rejection outstanding in this case.”
Appeal Br. 27.
Claim limitations found to be novel and/or nonobvious can affect a
patent-eligibility determination. Cf. Ariosa, 788 F.3d at 1377 (“For process
claims that encompass natural phenomenon, the process steps are the
additional features that must be new and useful.”) Thus, novelty is a factor
to be considered when determining “whether the claims contain an
‘inventive concept’ to ‘transform’ the claimed abstract idea into patent-
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eligible subject matter.” Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715
(Fed. Cir. 2014).
However, a finding of novelty or nonobviousness does not necessarily
lead to the conclusion that subject matter is patentable eligible.
“Groundbreaking, innovative, or even brilliant discovery does not by itself
satisfy the § 101 inquiry.” Ass’n for Molecular Pathology, 569 U.S. at 591.
Indeed, “[t]he ‘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.” Diamond v.
Diehr, 450 U.S. 175, 188–89 (1981) (emphasis added); see also
Mayo, 132 S. Ct. at 1303–04 (rejecting “the Government’s
invitation to substitute §§ 102, 103, and 112 inquiries for the
better established inquiry under § 101”). Here, the jury’s general
finding that Symantec did not prove by clear and convincing
evidence that three particular prior art references do not disclose
all the limitations of or render obvious the asserted claims does
not resolve the question of whether the claims embody an
inventive concept at the second step of Mayo/Alice.
Intellectual Ventures I v. Symantec, 838 F.3d at 1315.
Nor does a finding of obviousness necessarily lead to the conclusion
that subject matter is patent-ineligible. See also Rapid Litig. Mgmt. Ltd. v.
CellzDirect, Inc., 827 F.3d 1042, 1050 (Fed. Cir. 2016) (“That each of the
claims’ individual steps (freezing, thawing, and separating) were known
independently in the art does not make the claim unpatentable.”). “[P]atent-
eligibility does not turn on ease of execution or obviousness of application.
Those are questions that are examined under separate provisions of the
Patent Act.” Id. at 1052 (citing Mayo, 566 U.S. at 90).
Notwithstanding that “‘the § 101 patent-eligibility inquiry and, say,
the § 102 novelty inquiry might sometimes overlap,’ . . . a claim for a new
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abstract idea is still an abstract idea.” Synopsys, Inc. v. Mentor Graphics
Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (quoting Mayo, 566 U.S. at 90).
The question in step two of the Alice framework is not whether an additional
feature is novel but whether the implementation of the abstract idea involves
“more than performance of ‘well-understood, routine, [and] conventional
activities previously known to the industry.’” Content Extraction, 776 F.3d
at 1347–48 (quoting Alice, 575 U.S. at 2359).
In that regard, the Appellant has not shown novel features that
transform the abstract idea into patent-eligible subject matter. The Appellant
does not explain what features in the claim would render the subject matter
significantly more than the searching scheme we have determined the claim
to be directed to. At most, the claimed scheme uses “one or more modules
incorporated into a networked system to configure one or more processors of
the networked system,” but, as we have discussed, that alone adds little to
transform the abstract idea into an inventive concept. Accordingly, this
argument is unpersuasive.
The Appellant argues that “the claims at issue in this case go beyond
‘well-understood, routine, conventional activities,’ just as in” DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014). Appeal
Br. 28. We disagree. Unlike in that decision, no improvement in computer
functionality has been shown here. See DDR, 773 F.3d at 1258 (“[T]he
claims at issue here specify how interactions with the Internet are
manipulated to yield a desired result—a result that overrides the routine and
conventional sequence of events ordinarily triggered by the click of a
hyperlink.”) (emphasis added). Much like the “data storage unit” and
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“computer, coupled to said storage unit” in the claims of Alice
(US 7,149,720, claim 1), the claims here do not “do more than simply
instruct the practitioner to implement the abstract idea . . . on a generic
computer.” Alice, 573 U.S. at 225. For the reasons discussed above, we are
unpersuaded that the record supports interpreting the searching scheme
recited in the claim as yielding any improvement in technology as the
Appellant has argued.
On page 28 of the Appeal Brief, the Appellant cites Amdocs (Israel)
Ltd. v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016), but the
Appellant does not provide any particular argument or explanation of how
that case is relevant, and accordingly the argument is not persuasive of
Examiner error.
The Appellant argues that “especially in view of Berkheimer [v. HP
Inc., 881 F.3d 1360 (Fed. Cir. 2018)], the Examiner was required to provide
an acceptable form of evidence that each of the following elements, recited
in each of the independent claims at issue, are well-understood, routine, or
conventional, both individually and in combination” and then Appellant
reproduces every limitation of claim 1. Reply Br. 2–3.
We cited the Specification in our discussion as intrinsic evidence that
the claimed element, “one or more modules incorporated into a networked
system to configure one or more processors of the networked system,”
encompasses a generic computer system. In doing so, we have followed
“Changes in Examination Procedure Pertaining to Subject Matter Eligibility,
Recent Subject Matter Eligibility Decision (Berkheimer v. HP Inc.,” USPTO
Memorandum, Robert W. Bahr, Deputy Commissioner For Patent
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Examination Policy, April 19, 2018 (the “Berkheimer Memo”)). The court
in Berkheimer held that “[t]he patent eligibility inquiry may contain
underlying issues of fact.” Berkheimer, 881 F.3d at 1365 (quoting Mortg.
Grader, 811 F.3d at 1325 (“The § 101 inquiry ‘may contain underlying
factual issues.”’)). But the court also held that “[w]hen there is no genuine
issue of material fact regarding whether the claim element or claimed
combination is well-understood, routine, [and] conventional to a skilled
artisan in the relevant field, this issue can be decided on summary judgment
as a matter of law.” Id. at 1368 (emphasis added). This qualification has
been subsequently reiterated.
If there is a genuine dispute of material fact, Rule 56 requires that
summary judgment be denied. In Berkheimer, there was such a
genuine dispute for claims 4–7, but not for claims 1–3 and 9 . . . .
[I]n accordance with Alice, we have repeatedly recognized the
absence of a genuine dispute as to eligibility for the many claims
that have been defended as involving an inventive concept based
merely on the idea of using existing computers or the Internet to
carry out conventional processes, with no alteration of computer
functionality.
Berkheimer v. HP Inc., 890 F.3d 1369, 1371–74 (Fed. Cir. 2018) (Moore, J.,
concurring). Here, the Specification indisputably shows the claimed “one or
more modules incorporated into a networked system to configure one or
more processors of the networked system” covers a generic computer system
that was conventional at the time of filing. Accordingly, no genuine issue of
material fact exists as to the well-understood, routine, or conventional nature
of the claimed “one or more modules incorporated into a networked system
to configure one or more processors of the networked system,” individually
or in the combination as claimed.
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No other persuasive arguments having been presented, we conclude
that no error has been committed in the determination under Alice step two
that claim 1 does not include an element or combination of elements
circumscribing the patent-ineligible concept it is directed to so as to
transform the concept into an inventive application.
We have considered all of the Appellant’s remaining arguments
(including those made in the Reply Brief) and find them unpersuasive.
Accordingly, we sustain the Examiner’s rejection of independent claim 1,
and independent claim 8, which is not separately argued, for being judicially
excepted from 35 U.S.C. § 101. Cf. LendingTree, 656 F. App’x at 997 (“We
have considered all of LendingTree’s remaining arguments and have found
them unpersuasive. Accordingly, because the asserted claims of the patents
in suit are directed to an abstract idea and do not present an ‘inventive
concept,’ we hold that they are directed to ineligible subject matter under
35 U.S.C. § 101.”); see, e.g., OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d
1359, 1364 (Fed. Cir. 2015); FairWarning IP, LLC v. Iatric Sys., Inc., 839
F.3d 1089, 1098 (Fed. Cir. 2016).
Dependent claims 2–7 and 9–14
On pages 30–32 of the Appeal Brief, the Appellant reproduces claim
language from six groupings of dependent claims: claims 2, 9, and 16;
claims 3, 10, and 17; claims 4, 11, and 18; claims 5, 12, and 19; claims 6, 13,
and 20; and claims 7 and 14 . The argument is identical for each group:
With respect to the Mayo step one analysis, these additional
elements further distinguish the concept to which the claims are
directed from any of the cases cited by the Examiner.
Additionally, these additional elements further limit the
preemption concerns. With respect to the Mayo step two
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analysis, these additional elements go beyond any alleged
abstract idea with even further specificity than the additional
elements discussed above with respect to the independent
claims.

Id. at 30–32 (repeated for each of the six groups). As we have explained
above, preemption is not a separate test for patent-eligibility. As to the
argument that the dependent claims add “even further specificity,” in the
absence of any persuasive argument as to how any particular limitation
amounts to more than the abstract idea of searching recited in the
independent claims, we are not persuaded of error in the rejection. We also
note that the Appellant has not raised any genuine of issue of material fact as
to any dependent claim. Accordingly, we sustain the Examiner’s rejection
of dependent claims 2–7 and 9–14 for being judicially excepted from
35 U.S.C. § 101 for the same reasons as for independent claims 1 and 8 from
which they depend.

Independent claim 15 and dependent claims 16–20
Claim 15 recites five means-plus-function limitations: “means for
storing,” “means for receiving,” “means for processing,” “means for
analyzing,” and “means for sorting.” Means-plus-function claim language
must be construed in accordance with 35 U.S.C. § 112(f) by “look[ing] to
the specification and interpreting] that language in light of the corresponding
structure, material, or acts described therein, and equivalents thereof, to the
extent that the specification provides such disclosure.” In re Donaldson Co.,
16 F.3d 1189, 1193 (Fed. Cir. 1994) (en banc).
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Per our holding, the “broadest reasonable interpretation” that an
examiner may give means-plus-function language is that
statutorily mandated in paragraph six. Accordingly, the PTO
may not disregard the structure disclosed in the specification
corresponding to such language when rendering a patentability
determination.

Id. at 1194–95. See also MPEP § 2181, subsection I (“If a claim limitation
recites a term and associated functional language, the examiner should
determine whether the claim limitation invokes 35 U.S.C. 112(f) or pre-AIA
35 U.S.C. 112, sixth paragraph.”) (citing Donaldson). There is no indication
in the record that the required analysis was performed.
Because the Examiner has not performed the required claim
construction analysis in the first instance to enable us to determine whether
the corresponding structure integrates the judicial exception into a practical
application, we do not sustain the Examiner’s rejection of independent claim
15 and claims 16–20 which depend therefrom.

CONCLUSION
In summary:
Claims
Rejected
Basis Affirmed Reversed
1–20 § 101 1–14 15–20

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).

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AFFIRMED-IN-PART