Adobe Inc.

Patent Trials and Appeals Board

Sep 29, 2021

2021001000 (P.T.A.B. Sep. 29, 2021)

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.
14/827,583 08/17/2015 Zeke Koch P2182-US 1602
108982 7590 09/29/2021
FIG. 1 Patents
116 W. Pacific Avenue
Suite 200
Spokane, WA 99201
EXAMINER
GETACHEW, WODAJO
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
09/29/2021 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):
Fig1Docket@fig1patents.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ZEKE KOCH, BALDO FAIETA, JEN-CHAN CHIEN,
MARK M. RANDALL, OLIVIER SIRVEN, PHILIPP KOCH, and
DENNIS G. NICHOLSON
____________

Appeal 2021-001000
Application 14/827,5831
Technology Center 3600
____________

Before JOSEPH A. FISCHETTI, JAMES P. CALVE, and
TARA L. HUTCHINGS, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
Final Rejection2 of claims 36–38, 41–45, and 47–58. We have jurisdiction
under 35 U.S.C. § 6(b).

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies Adobe, Inc. as the real party in
interest (Appeal Br. 3).
2 All references to the Final Office Action refer to the Final Office Action
mailed on March 18, 2020.
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SUMMARY OF DECISION
We affirm.
THE INVENTION
Appellant states its invention relates to “[c]ontent creation suggestion
techniques” (Spec. ¶ 3).
Claim 36, reproduced below, is representative of the subject matter on
appeal.
36. In a non-transitory digital medium environment for
controlling image creation suggestions, a method implemented
by a computing device, the method comprising:
monitoring, by the computing device, search inputs of
searches for images that are made available via a network by a
content sharing service, the search inputs including keywords;
detecting, by the computing device, a trend in the
keywords by identifying unique keywords of the keywords, the
unique keywords having utilization above a threshold and the
unique keywords having previous utilization below the
threshold;
analyzing, by the computing device, search results of the
searches for images based on the search inputs that include the
unique keywords;
determining, by the computing device, the searches for
images based on the search inputs that include the unique
keywords are failed searches based on the search results; and
generating, by the computing device, a suggestion based
on the failed searches in a user interface to guide creation of a
subsequent image.

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THE REJECTIONS3
The Examiner relies upon the following as evidence of
unpatentability:
Holman US 2015/0106628 A1 Apr. 16, 2015
Wickenkamp US 2016/0314203 A1 Oct. 27, 2016

The following rejections are before us for review:
Claims 36–38, 41–45, and 47–58 under 35 U.S.C. § 101 as being
directed to an abstract idea without significantly more.
Claims 36–38, 41–45, and 47–58 under 35 U.S.C. § 112(b) or
35 U.S.C. § 112 (pre-AIA), second paragraph, as being indefinite.
Claims 36–38, 41, 43–45, 47, 49, 50, 52, and 54–56 under 35 U.S.C.
§ 102(a)(2) as being anticipated by Wickenkamp.
Claims 42, 48, 51, 53, 57, and 58 under 35 U.S.C. § 103 as being
unpatentable over Wickenkamp in view of Holman.
FINDINGS OF FACT
We adopt the Examiner’s findings as set forth on pages 15–19 in the
Final Office Action and on pages 3–17 in the Examiner’s Answer,
concerning only the 35 U.S.C. § 101 rejection.

3 The Examiner withdraws the rejection of claims 36–38, 41–45, and 47–58
rejected under 35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA), first
paragraph, as failing to comply with the written description requirement
(Answer 3).
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ANALYSIS
35 U.S.C. § 112(b) REJECTION
The Examiner rejected claims 36–38, 41–45, and 47–58 under 35
U.S.C. § 112(b) or 35 U.S.C. § 112 (pre-AIA), second paragraph, as being
indefinite for failing to particularly point out and distinctly claim the subject
matter which the inventor or a joint inventor, or for pre-AIA the Appellant
regards as the invention (Answer 17).
The Examiner’s finding is that “the claims are not clear because the
claims are directed to ‘a method implemented by a computing device’
(Claim 36), ‘a system comprising: one or more processors of a processing
system;’ (Claim 43), and ‘a computer-readable storage medium having
instructions stored thereon’ (Claim[] 49” (Answer 18 (emphasis omitted)).
The Examiner goes on:
It is unclear to one of ordinary skill if the claims are directed to
acts performed by a computing device, a system comprising: one
or more processors of a processing system, a computer-readable
storage medium having instructions stored thereon that, and
computer-readable storage media storing instructions or in
combination with network, content sharing service and user
interface. Therefore, the scope of the claim is unclear and the
rejection be sustained including all dependent claims in
accordance with (In re Zletz, 893 F.2d 319 (Fed. Cir. 1989)).
Id. at 18–19.
We disagree with the Examiner. 35 U.S.C. § 101 states: “Whoever
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, subject to the conditions and requirements of this
title.” Thus, 35 U.S.C. § 101 enumerates several categories of invention,
namely, “new and useful process, machine, manufacture, or composition of
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matter, or any new and useful improvement thereof.” Nothing in the statute
enumerates that the categories are mutually exclusive. In fact, as between
method claims and structural claims in certain 35 U.S.C. § 101 cases, the
Court has found, for structural claims, they are
no different from the method claims in substance. The method
claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic computer
components configured to implement the same idea. This Court
has long “warn[ed] . . . against” interpreting § 101 “in ways that
make patent eligibility ‘depend simply on the draftsman’s art.’”
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 226 (2014) (citation omitted).
See also Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381
F.3d 1111, 1117 (Fed. Cir. 2004) (“[E]ven where a patent describes only a
single embodiment, claims will not be ‘read restrictively unless the patentee
has demonstrated a clear intention to limit the claim scope using ‘words or
expressions of manifest exclusion or restriction.’” (quoting Liebel-Flarsheim
Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004))).
Nor are claims 43, 44, 47–53, and 58 indefinite because they are
hybrid claims. That claimed subject matter covers both as a “process” or a
“machine” does not make them indefinite. See, e.g., MPEP § 2173.05(p)
(“[W]hen a claim recites a product and additional limitations which focus on
the capabilities of the system, not the specific actions or functions performed
by the user, the claim may be definite under 35 U.S.C. 112(b) or pre-AIA 35
U.S.C. 112, second paragraph. See Mastermine Software, Inc. v. Microsoft
Corp., 874 F.3d 1307 (Fed. Cir. 2017).”); CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011) (a Beauregard claim is
a computer readable medium containing program instructions for a computer
to perform a process per In re Beauregard, 53 F.3d 1583 (Fed. Cir. 1995)).
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The Examiner also finds, “[c]laims 36, 43 and 49 recite the terms
‘failed searches’ which is relative term that renders the claim indefinite. The
term ‘failed searches’ is not defined by the claim, the specification does not
provide a standard for ascertaining the requisite degree, and one of ordinary
skill in the art would not be reasonably apprised of the scope of the
invention” (Final Act. 21 (emphasis omitted)).
We disagree with the Examiner because “failed” is a term of degree
and we find the Specification does provide some standard for measuring that
degree in that it describes “failed” in the context of, “[t]he content sharing
service, for instance, may determine that a threshold number of searches
have been performed that have resulted in less than a threshold number of
results.” Specification ¶ 19. A term of degree is definite when the
specification provides some standard for measuring that degree. See Seattle
Box Company, Inc. v. Industrial Crating & Packing, Inc., 731 F.2d 818, 826
(Fed. Cir. 1984).
Therefore, we will not sustain the rejection of claims 36–38, 41–45,
and 47–58 under 35 U.S.C. § 112(b).
35 U.S.C. § 101 REJECTION
We will affirm the rejection of claims 36–38, 41–45, and 47–58 under
35 U.S.C. § 101.
The Appellant argues the claims as a group (Appeal Br. 21–31). We
select claim 36 as the representative claim for this group, and so the
remaining claims stand or fall with claim 36. See 37 C.F.R.
§ 41.37(c)(1)(iv) (2015).
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
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However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. E.g., Alice, 573 U.S. at 216.
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Alice, 573 U.S. 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 id. at 219 (“On their face, the claims before us are drawn to the concept
of intermediated settlement, i.e., the use of a third party to mitigate
settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010)
(“Claims 1 and 4 in petitioners’ application explain the basic concept of
hedging, or protecting against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “a claim drawn to subject matter otherwise
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statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, and this principle cannot be circumvented by attempting
to limit the use of the formula to a particular technological environment.”
Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace
that an application of a law of nature or mathematical formula to a known
structure or process may well be deserving of patent protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted).
“A claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo,
566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention.” Id.
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
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Revised Guidance” or “Guidance”).4 “All USPTO personnel are, as a matter
of internal agency management, expected to follow the guidance.” Id. at
51;5 see also October 2019 Update at 1.
Under the 2019 Revised Guidance, we first look to whether the claim
recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes) (“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”).6
Guidance, 84 Fed. Reg. at 52–55.

4 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 (the “October
2019 Update”) (available at https://www.uspto.gov/sites/default/files/
documents/peg_oct_2019_update.pdf).
5 The 2019 Revised Guidance supersedes MANUAL OF PATENT EXAMINING
PROCEDURE (“MPEP”) § 2106.04 and also supersedes all versions of the
USPTO’s “Eligibility Quick Reference Sheet Identifying Abstract Ideas.”
See Guidance, 84 Fed. Reg. 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.”). Accordingly, Appellant’s arguments challenging the
sufficiency of the Examiner’s rejection will not be addressed to the extent
those arguments are based on now superseded USPTO guidance.
6 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 Guidance - Section III(A)(2), 84 Fed. Reg. at
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.
Guidance, 84 Fed. Reg. at 52–56. The U.S. Court of Appeals for the Federal
Circuit has explained that “the ‘directed to’ inquiry applies a stage-one filter
to claims, considered in light of the [S]pecification, based on whether ‘their
character as a whole is directed to excluded subject matter.’” Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir.
2015)). It asks whether the focus of the claims is on a specific improvement
in relevant technology or on a process that itself qualifies as an “abstract
idea” for which computers are invoked merely as a tool. See Enfish,
822 F.3d at 1335–36.
In so doing, as indicated above, we apply a “directed to” two prong
test: 1) evaluate whether the claim recites a judicial exception, and 2) if the
claim recites a judicial exception, evaluate whether the claim “appl[ies],
rel[ies] on, or use[s] 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.” Guidance, 84
Fed. Reg. at 53; see also MPEP §§ 2106.04–2106.05.

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The Specification states:
Content sharing services have been developed as a technique to
provide an online marketplace for creative professionals to sell
content, such as images. A creative professional, for instance,
may capture or create images that are exposed via the content
sharing services to potential customers such as marketing
professionals, casual users, and so on. For example, a creative
professional may capture an image of a coworkers conversing
next to a watercooler. The image is then uploaded and tagged for
availability as part of the content sharing service such that a
marketing professional performing a search for “office” and
“watercooler” may locate the image. The content sharing service
also includes functionality to make the image available for
licensing in response to payment of a fee, e.g., as part of a
subscription service, pay per use, and so forth.
Spec. ¶ 1.
The preamble of claim 36 states it is for “controlling image creation
suggestions.”
Claim 36 recites in pertinent part:
monitoring, . . . search inputs of searches for images that
are made available . . . by a content sharing service, the search
inputs including keywords;
detecting, . . . a trend in the keywords by identifying
unique keywords of the keywords, the unique keywords having
utilization above a threshold and the unique keywords having
previous utilization below the threshold;
analyzing, . . . search results of the searches for images
based on the search inputs that include the unique keywords;
determining, . . . the searches for images based on the
search inputs that include the unique keywords are failed
searches based on the search results; and
generating, . . . a suggestion based on the failed searches
. . . to guide creation of a subsequent image.

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The Examiner found claim 36 is “directed to content recommendation
such as library/cataloging, which is an abstract idea” (Final Act. 15). The
Examiner reasons that claim 36
is grouped within the ‘Certain Methods of Organizing Human
Activity’ grouping of abstract ideas in prong one of step 2A of
the Alice/Mayo test (See 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50, 52, 54 (January 7, 2019))
such as managing relationships because the claims recite act of
managing relationships between content consumers and content
provider as the claims involve in monitoring and analyzing
keywords used by a user to locate/search contents and based on
keywords and based on failed search of contents to generate a
suggestion to the user (solicitation).
Final Act. 15–16.
Accordingly, all this intrinsic evidence shows that the limitations of
claim 36, when given their broadest reasonable interpretation, recite a way
of creating an image based on keyword searches and using failed searches
previously used by people to create the image. This is consistent with the
Examiner’s determination. Using failed actions/searches previous used by
people as a guideline in the creation of an item is way of managing personal
behavior because it tracks peoples’ wants. Managing personal behavior
hence is one of certain methods of organizing human activity that are
judicial exceptions. Guidance, 84 Fed. Reg. at 52.
Another way of describing claim 36’s limitations is as a mental
process. The verbs highlighted in italics in the abridged version of claim 36
above mimic human thought processes of selecting certain information over
others, i.e., evaluation, and creating perhaps with paper and pencil, graphic
data interpretation perceptible only in the human mind. See In re TLI
Commc’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016);
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FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94 (Fed. Cir.
2016). The Federal Circuit has held similar concepts to be abstract. Thus,
for example, the Federal Circuit has held that abstract ideas include the
concepts of collecting data, analyzing the data, and reporting the results of
the collection and analysis, including when limited to particular content.
See, e.g., Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d
1332, 1340–41 (Fed. Cir. 2017) (identifying the abstract idea of organizing,
displaying, and manipulating data); Elec. Power Grp., LLC v. Alstom S.A.,
830 F.3d 1350, 1354 (Fed. Cir. 2016) (characterizing collecting information,
analyzing information by steps people go through in their minds, or by
mathematical algorithms, and presenting the results of collecting and
analyzing information, without more, as matters within the realm of abstract
ideas). Thus, under the first prong, claim 36 also recites the patent ineligible
judicial exception of a mental process.
The last claim limitation, “generating, . . . a suggestion based on the
failed searches . . . to guide creation of a subsequent image,” is insignificant
postsolution activity. See Bilski, 561 U.S. at 610–11 (“Flook stands for the
proposition that the prohibition against patenting abstract ideas ‘cannot be
circumvented by attempting to limit the use of the formula to a particular
technological environment’ or adding ‘insignificant postsolution activity.”’)
(quoting Diehr, 450 U.S. at 191–92).
Turning to the second prong of the “directed to” test, claim 36 only
generically requires a “non-transitory digital medium,” a “computing
device” and a “user interface.” These components are described in the
Specification at a high level of generality. See Spec. ¶¶ 23–26, Figs. 1, 2.
We fail to see how the generic recitations of these most basic computer
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components and/or of a system so integrates the judicial exception as to
“impose[] a meaningful limit on the judicial exception, such that the claim is
more than a drafting effort designed to monopolize the judicial exception.”
Guidance, 84 Fed. Reg. at 53.
Thus, we find that the claims recite the judicial exceptions of a certain
method of organizing human activity and a mental process.
That the claims do not preempt all forms of the abstraction or may be
limited to image creation, does not make them any less abstract. See OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362–63 (Fed. Cir. 2015)
(“And that the claims do not preempt all price optimization or may be
limited to price optimization in the e-commerce setting do not make them
any less abstract.”).
Turning to the second step of the Alice analysis, because we find that
the claims are directed to abstract ideas/judicial exceptions, the claims must
include an “inventive concept” in order to be patent-eligible, i.e., there must
be an element or combination of elements sufficient to ensure that the claim
in practice amounts to significantly more than the abstract idea itself. See
Alice, 573 U.S. at 217–18 (quoting Mayo, 566 U.S. at 72–73).
Concerning this step the Examiner found “[t]he claims do not include
additional elements that are sufficient to amount to significantly more than
the judicial exception” (Final Act. 17). We agree with the Examiner. “[T]he
relevant question is whether the claims here do more than simply instruct the
practitioner to implement the abstract idea . . . on a generic computer.”
Alice, 573 U.S. at 225. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
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computer to retrieve, select, and apply decision criteria to data and modify
the data as a result amounts to electronic data query and retrieval—one of
the most basic functions of a computer. In short, each step does no more
than require a generic computer to perform generic computer functions. The
claims do not, for example, purport to improve the functioning of the
computer itself. The Specification spells out different generic equipment
and parameters that might be applied using this concept and the particular
steps such conventional processing would entail based on the concept of
information access under different scenarios. See, e.g., Spec. ¶¶ 23–26,
Figs. 1, 2. Thus, the claims at issue amount to nothing significantly more
than instructions to apply the abstract idea using some unspecified, generic
computer. Under our precedents, that is not enough to transform an abstract
idea into a patent-eligible invention. See Alice, 573 U.S. at 225–26.
Considered as an ordered combination, the computer components of
Appellant’s claims add nothing that is not already present when the steps are
considered separately. The sequence of data reception-analysis (monitoring/
detecting/analyzing/determining/generating) and storing is equally generic
and conventional or otherwise held to be abstract. See Ultramercial, Inc. v.
Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (sequence of receiving,
selecting, offering for exchange, display, allowing access, and receiving
payment recited an abstraction); Inventor Holdings, LLC v. Bed Bath &
Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017) (holding that sequence
of data retrieval, analysis, modification, generation, display, and
transmission was abstract); Two-Way Media Ltd. v. Comcast Cable
Commc’ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (holding sequence of
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processing, routing, controlling, and monitoring was abstract). The ordering
of the steps is, therefore, ordinary and conventional.
We have reviewed all the arguments Appellant has submitted
concerning the patent eligibility of the claims before us that stand rejected
under 35 U.S.C. § 101 (Appeal Br. 21–31; Reply Br. 3–9). We find that our
analysis above substantially covers the substance of all the arguments, which
have been made. But, for purposes of completeness, we will address various
arguments in order to make individual rebuttals of same.
Appellant argues:
Appellant . . . submits that the Examiner is not considering
the express language of the claims. For example, independent
claim 36 recites “monitoring . . . search inputs of searches for
images that are made available via a network by a content sharing
service, the search inputs including keywords.” From this
language, the Examiner concludes that “the claims recite act of
managing relationships between content consumers and content
provider as the claims involve monitoring and analyzing
keywords used by a user to locate/search contents . . . .”
However, “monitoring . . . search inputs of searches for images”
is not managing a relationship between content consumers and
content providers. This is because “monitoring . . . search inputs
of searches for images” as claimed is completely unrelated to and
disconnected from any relationship between content consumers
and “a content sharing service.”
Appeal Br. 24 (footnote omitted).
We disagree with Appellant that the Examiner’s finding constitutes
error. Although the Appellant and the Examiner describe, at different levels
of abstraction, to what the claims are directed, it is recognized that “[a]n
abstract idea can generally be described at different levels of abstraction.”
Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016). That
need not and, in this case does not, “impact the patentability analysis.” Id.
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at 1241. Here, the Examiner found claim 36 is directed to “content
recommendation” (Final Act. 15). The Examiner reasons that the judicial
exception of one of certain methods of organizing human also applies
because, “managing relationships because the claims recite act[] of
managing relationships between content consumers and content provider as
the claims involve in monitoring and analyzing keywords” (id. at 15–16).
We find no error with the Examiner’s logic because sharing of anything,
e.g., content, food, thought, etc., creates a relationship via the item being
shared.
Appellant next argues that the Examiner’s “public library” analogy is
disconnected from the claim language because “[a] suggestion . . . to guide
creation of a subsequent image is not the same as a library attendant
suggesting a book related to another book because a suggestion to consume
a book is completely different from a suggestion to guide creation of an
image” (Appeal Br. 24–25).
First, as we found above, this last step of generating a suggestion is
deemed an insignificant extrasolution activity which does not have bearing
on the patent eligibility of the claim. Notwithstanding, we see no error in
the Examiner’s attempt to add detail to his “directed to” finding because in
both cases, the mental interactions used prior to the claimed generating step,
are similar, i.e., determining content based on failed searches. The
Examiner’s characterization of claim 36 is, in our view, fully consistent with
the Specification, including the claim language.
In support of its assertion that “the claims as a whole are integrated
into a practical application,” Appellant states “the claims improve content
creation and sharing technology by increasing the likelihood that a content
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creator generates relevant content and increasing the likelihood that a
content consumer will identify content relevant to the consumer” (Appeal
Br. 25–26).
We are not persuaded by Appellant’s argument because the stated
improvements of “increasing the likelihood that a content creator generates
relevant content and increasing the likelihood that a content consumer will
identify content relevant to the consumer,” are abstractions. That is, the
alleged improvement lies in the abstract idea itself, not to any technological
improvement. See BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1281,
1287–88 (Fed. Cir. 2018). Even if the advance over the prior art is to
“improve content creation and sharing technology,” that purported advance
is an abstract idea itself, similar to hedging against financial risk in Bilksi,
561 U.S. at 609, and collecting and analyzing investment data in SAP
America, Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167–68 (Fed. Cir. 2018),
using conventional technology.
Appellant next asserts that its claims are akin to those noted in the
USPTO’s Example 40 of the 2019 Revised Guidance7 because the “subject
claims are directed to a particular improvement in content creation and
sharing technology” (Appeal Br. 27–28).
We disagree with Appellant. Appellant’s argument is unpersuasive
because the claims in Example 40 of the 2019 Revised Guidance, are
distinguishable from claim 36 before us on appeal. We find that claim 1 of
Example 40 affirmatively recites the network processing step of “collecting

7 2019 Revised Guidance, “Subject Matter Eligibility Examples: Abstract
Ideas,” at 10, available at https://www.uspto.gov/sites/default/files/
documents/101_examples_37to42_20190107.pdf.
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additional traffic data relating to the network traffic when the collected
traffic data is greater than the predefined threshold.” Here, we find nothing
in claim 36 resembling this type of machine based action. All steps of claim
36 constitute steps which mimic the mental processes of a human mind,
namely, monitoring, detecting, analyzing, determining and generating.
Second, improvements to computer functionality overcoming a
problem specifically arising in the realm of computers does not cause the
claims to be automatically patent eligible. DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1265 (Fed. Cir. 2014) (Mayer, J.,
dissenting). Improvements to computer functionality need to be claim
based. See Berkheimer v. HP, Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018).
Here, we find no claim limitation reciting how the claimed “determining, by
the computing device, the searches for images based on the search inputs
that include the unique keywords are failed searches based on the search
results,” is effected. The claims do not recite the programming for
“determining,” but only the results to be obtained by any and all means.
At that level of generality, the claims do no more than
describe a desired function or outcome, without providing any
limiting detail that confines the claim to a particular solution
to an identified problem. The purely functional nature of the
claim confirms that it is directed to an abstract idea, not to a
concrete embodiment of that idea.
Affinity Labs of Texas, LLC v. Amazon.com Inc., 838 F.3d 1266, 1269 (Fed.
Cir. 2016).
Also, as we found above, the claimed sequence of data reception-
analysis (monitoring, detecting, analyzing, determining, generating) and
storing is generic and conventional or otherwise held to be abstract. Taken
with the abstract concepts of associating an image based on keyword
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searches and using failed searches previously used by people to guide in the
creation of an image, they “fail to transform th[e] abstract idea into a patent-
eligible invention.” Alice, 573 U.S. at 221.
We also are not persuaded by Appellant’s argument that the claims
are analogous to those at issue in Ancora Technologies, Inc. v. HTC
America, Inc., 908 F.3d 1343 (Fed. Cir. 2018) (Appeal Br. 28–29).
In Ancora,8
The inventive method use[d] a modifiable part of the BIOS
memory—not other computer memory—to store the information
that can be used, when a program is introduced into the
computer, to determine whether the program is licensed to run
on that computer. BIOS memory is typically used for storing
programs that assist in the start-up of a computer, not verification
structures comparable to the software-licensing structure
embodied by the claimed invention. Using BIOS memory, rather
than other memory in the computer, improves computer security,
the patent indicates, because successfully hacking BIOS memory
(i.e., altering it without rendering the computer inoperable) is
much harder than hacking the memory used by the prior art to
store license-verification information.

8 Claim 1 in US Patent 6,411,941 recites:
1. A method of restricting software operation within a license
for use with a computer including an erasable, non-volatile
memory area of a BIOS of the computer, and a volatile memory
area; the method comprising the steps of:
selecting a program residing in the volatile memory,
using an agent to set up a verification structure in the
erasable, non-volatile memory of the BIOS, the verification
structure accommodating data that includes at least one license
record,
verifying the program using at least the verification structure
from the erasable non-volatile memory of the BIOS, and
acting on the program according to the verification.
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908 F.3d at 1345.
Thus, the claims in Ancora were in actuality device limitations
involving specific computer parts and programming which altered the
normal functioning of the computer by, e.g., “set[ing] up a verification
structure in the erasable, non-volatile memory of the BIOS.” To the
contrary, the record on appeal here supports viewing the claimed steps of
monitoring, detecting, analyzing, determining and generating as themselves
amounting to mere instructions to implement the recited organizing human
activity scheme on a generic computer. Cf. Alice, 573 U.S. at 225–26.
Appellant argues:
The present claims entail an unconventional technological
solution (detecting, by the computing device, a trend in the
keywords by identifying unique keywords of the keywords, the
unique keywords having utilization above a threshold and the
unique keywords having previous utilization below the
threshold) to a technological problem of the divide between
content creation and content consumption.
Appeal Br. 30.
We disagree with Appellant because Appellant has offered no
persuasive argument or technical reasoning to demonstrate that the
“detecting, by the computing device, a trend in the keywords by identifying
unique keywords of the keywords” step recited in claim 36 involves more
than well-understood, routine, and conventional computer activities, i.e.,
generic computer functions. Cf. In re Katz Interactive Call Processing
Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011). Simply programming a
general-purpose computer or generic circuitry to perform an abstract idea
does not provide an “inventive concept” such that the claim amounts to
significantly more than that abstract idea. See Alice, 573 U.S. at 221–227
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(applying an abstract idea, such as an algorithm, on a general purpose
computer is not enough to transform a patent-ineligible abstract idea into a
patent-eligible invention); EON Corp. IP Holdings LLC v. AT&T Mobility
LLC, 785 F.3d 616, 623 (Fed. Cir. 2015) (“A general purpose computer is
flexible—it can do anything it is programmed to do.”).
For the reasons identified above, we will sustain the Examiner’s § 101
rejection of claims 36–38, 41–45, and 47–58.
35 U.S.C. §§ 102, 103 REJECTIONS
Claims 36–38, 41, 43–45, 47, 49, 50, 52, and 54–56 are rejected under
35 U.S.C. § 102(a)(2) as being anticipated by Wickenkamp. (Final Act. 21).
Each of independent claims 36, 43, and 49 recites in one form or
another, “determining, by the computing device, the searches for images
based on the search inputs that include the unique keywords are failed
searches based on the search results.”
Concerning this limitation the Examiner cites at least to paragraph 90
of Wickenkamp, finding “[t]hat is, Wickenkamp discloses that in analyzing
a user’s profile of search results, the device of Wickenkamp determined that
words of a searched terms do not exceed a threshold based on the words
frequency of search.” (Answer 31).
Appellant argues:
The Examiner states that Wickenkamp discloses the
above-noted claim features at paragraphs 0004, 0007, 0079,
0080, and 0090 of the reference. However, these cited passages
describe that “control circuitry may display one or more of the
search results obtained based on the modified symbol in
SURPRISE region 504, such that SURPRISE region 504
represents a search result that a user may not expect to appear
based on the symbol entered into search box 502.” Applicant
submits that a displayed unexpected search result based on a
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modified symbol does not correspond to “determining . . . the
searches for images based on the search inputs that include the
unique keywords are failed searches based on the search results”
as claimed. This is because an unexpected search result is not a
failed search.
Appeal Br. 34 (footnote omitted).
We agree with Appellant. The definition of “failed” is “to leave
undone.”9 Yet Wickenkamp discloses that its metric is to “determine[] that
the user rarely searches” a term (Wickenamp ¶ 91), which connotes that the
search did not fail– only that it was searched rarely. Under the novelty
standard of anticipation, these terms are not congruent and thus, the rejection
under § 102(a) cannot be sustained. “A claim is anticipated only if each and
every element as set forth in the claim is found, either expressly or
inherently described, in a single prior art reference.” Verdegaal Bros. v.
Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987).
We also reverse the anticipation rejection of claims 37-38, 41, 44-45,
47, 50, 52, and 54-56 because they depend from independent claims 36, 43
and 49.
The Examiner rejected 42, 48, 51, 53, 57, and 58 under 35 U.S.C.
§ 103 as being unpatentable over Wickenkamp in view of Holman. The
additional reference to Holman does not remedy the shortcomings of
Wickenamp as noted above, and thus the prior art rejections of claims 36–
38, 41–45, and 47–58 cannot be sustained under 35 U.S.C. § 103(a)/
§ 102(a)(2).

9 Merriam-Webster Online Dictionary, https://www.merriam-webster.com/
dictionary/fail.
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CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 36–38,
41–45, and 47–58 under 35 U.S.C. § 101.
We conclude the Examiner erred in rejecting claims 36–38, 41–45,
and 47–58 under 35 U.S.C. §§ 102 and 103.
We conclude the Examiner erred in rejecting claims 36–38, 41–45,
and 47–58 under 35 U.S.C. § 112(b).
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed.
See 37 C.F.R. § 41.50(a)(1).

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
36–38,
41–45,
47–58
101 Eligibility 36–38,
41–45,
47–58

36–38,
41–45,
47–58
112 Indefiniteness 36–38,
41–45,
47–58
36–38, 41,
43–45, 47,
49, 50, 52,
54–56
102 Wickenkamp 36–38, 41,
43–45, 47,
49, 50, 52,
54–56
42, 48, 51,
53, 57, 58
103 Wickenkamp,
Holman
42, 48, 51,
53, 57, 58
Overall
Outcome
36–38,
41–45,
47–58

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED