Baoshi Yan et al.

Patent Trials and Appeals Board

Sep 30, 2019

14473740 - (D) (P.T.A.B. Sep. 30, 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.
14/473,740 08/29/2014 Baoshi Yan 3080.322US1 6112
45839 7590 09/30/2019
Schwegman Lundberg & Woessner / LinkedIn/Microsoft
PO BOX 2938
MINNEAPOLIS, MN 55402
EXAMINER
GARCIA-GUERRA, DARLENE
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
09/30/2019 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):
USPTO@slwip.com
slw@blackhillsip.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BAOSHI YAN, JIAQI GUO, SAVELIY URYASEV,
LEAH M. M. MCGUIRE, and CRAIG MARTELL
____________

Appeal 2018-003737
Application 14/473,740
Technology Center 3600
____________

Before ST. JOHN COURTENAY III, MONICA S. ULLAGADDI, and
JOHN D. HAMANN, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a second non-final
rejection of claims 1–4 and 6–19, which are all the claims pending in this
application.1 Claim 5 is canceled. We have jurisdiction over the pending
claims under 35 U.S.C. § 6(b).
We affirm.

1 The real party in interest is appeal is the assignee, Microsoft Technology
Licensing, LLC, recorded Nov. 1, 2017.

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STATEMENT OF THE CASE 2
Introduction
Appellants’ claimed invention “relates to the technical fields of
computer software and, in one example embodiment, to discovery of
contacts and accounts based on customer relationship management (CRM).”
Spec. ¶ 2.
Rejection
Claims 1–4 and 6–19 are rejected under 35 U.S.C. § 101, as being
directed to a judicial exception, without significantly more. See Non-Final
Act. 5.

ANALYSIS
We reproduce representative independent claim 1 in Table One, infra.
We have considered all of Appellants’ arguments and any evidence
presented. To the extent Appellants have not advanced separate, substantive
arguments for particular claims, or other issues, such arguments are waived.
See 37 C.F.R. § 41.37(c)(1)(iv).
Rejection of Claims 1–4 and 6–19 under 35 U.S.C. § 101
Issue: Under 35 U.S.C. § 101, did the Examiner err by rejecting
claims 1–4 and 6–19 as being directed to a judicial exception, without
significantly more?

2 We herein refer to the Non-Final Office Action, mailed March 23, 2017
(“Non-Final Act.”); Appeal Brief, filed Sept. 8, 2017 (“App. Br.”);
Examiner’s Answer, mailed Dec. 22, 2017 (“Ans.”), and the Reply Brief,
filed Feb. 22, 2018 (“Reply Br.”).
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Principles of Law — 35 U.S.C. § 101
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “‘[L]aws of nature, natural phenomena, and abstract
ideas’ are not patentable.” Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 70 (2012) (quoting Diamond v. Diehr, 450 U.S. 175, 185
(1981)).
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 Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 217–18
(2014) (citing Mayo, 566 U.S. at 75–77). In accordance with that
framework, we first determine what concept the claim is “directed to.” See
Alice, 573 U.S. at 219 (“On their face, the claims before us are drawn to the
concept of intermediated settlement, i.e., the use of a third party to mitigate
settlement risk.” (emphasis omitted)); 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 of rubber products” (Diehr, 450 U.S. at 193); “tanning,
dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores”
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(id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. (15 How.) 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
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 (citation 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).
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“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.

Subject Matter Eligibility — 2019 Revised Guidance
The USPTO recently published revised guidance on the application of
35 U.S.C. § 101. See 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019 Revised Guidance”). This
new guidance is applied in this Opinion. 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, mental processes,
or certain methods of organizing human activity such as a
fundamental economic practice or managing personal behavior
or relationships or interactions between people);3 and
(2) additional elements that integrate the judicial
exception into a practical application (see Manual of Patent
Examining Procedure (“MPEP”) §§ 2106.05(a)–(c), (e)–(h)).4, 5
See 2019 Revised Guidance, 84 Fed. Reg. at 51–52, 55.
A claim that integrates a judicial exception into a practical application
applies, relies on, or uses 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. See 2019

3 Referred to as “Step 2A, Prong One” in the Revised Guidance (hereinafter
“Step 2A, prong 1”).
4 Referred to as “Step 2A, Prong Two” in the Revised Guidance (hereinafter
“Step 2A, prong 2”).

5 All references to the MPEP are to the Ninth Edition, Revision 08.2017
(rev. Jan. 2018).
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Revised Guidance, 84 Fed. Reg. at 54. When the judicial exception is so
integrated, then the claim is not directed to a judicial exception and is patent
eligible under 35 U.S.C. § 101. Id.
Only if a claim: (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then evaluate
whether the claim provides an inventive concept. See 2019 Revised
Guidance, 84 Fed. Reg. at 56; Alice, 573 U.S. at 217–18.
For example, we look 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, and
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial exception.
6
See 2019 Revised Guidance, 84 Fed. Reg. at 56.
Because there is no single definition of an “abstract idea” under Alice
step 1, the PTO has recently synthesized, for purposes of clarity,
predictability, and consistency, key concepts identified by the courts as
abstract ideas to explain that the “abstract idea” exception includes the
following three groupings:
1. Mathematical concepts—mathematical relationships,
mathematical formulas or equations, mathematical
calculations;
2. Mental processes— concepts performed in the human mind
(including an observation, evaluation, judgment, opinion);
and

6 Items (3) and (4) continue to be collectively referred to as “Step 2B” of the
Supreme Court’s two-step framework, described in Mayo and Alice.
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3. 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).
See 2019 Revised Guidance, 84 Fed. Reg. at 52.
According to the 2019 Revised Guidance, “[c]laims that do not recite
[subject] matter that falls within these enumerated groupings of abstract
ideas should not be treated as reciting abstract ideas,” except in rare
circumstances. Even if the claims recite any one of these three groupings of
abstract ideas, these claims are still not “directed to” a judicial exception
(abstract idea), and thus are patent eligible, if “the claim as a whole
integrates the recited judicial exception into a practical application of that
exception.” See 2019 Revised Guidance, 84 Fed. Reg. at 53.
For example, limitations that are indicative of integration into a
practical application include:
1. Improvements to the functioning of a computer, or to any
other technology or technical field — see MPEP
§ 2106.05(a);
2. Applying the judicial exception with, or by use of, a
particular machine — see MPEP § 2106.05(b);
3. Effecting a transformation or reduction of a particular
article to a different state or thing — see MPEP
§ 2106.05(c); and
4. Applying or using the judicial exception in some other
meaningful way beyond generally linking the use of the
judicial exception to a particular technological
environment, such that the claim as a whole is more than
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a drafting effort designed to monopolize the exception
— see MPEP § 2106.05(e).
In contrast, limitations that are not indicative of integration into a
practical application include:
1. Adding the words “apply it” (or an equivalent) with the
judicial exception, or merely include instructions to
implement an abstract idea on a computer, or merely uses a
computer as a tool to perform an abstract idea — see MPEP
§ 2106.05(f);
2. Adding insignificant extra-solution activity to the judicial
exception — see MPEP § 2106.05(g); and
3. Generally linking the use of the judicial exception to a
particular technological environment or field of use — see
MPEP 2106.05(h).
See 2019 Revised Guidance, 84 Fed. Reg. at 54–55 (“Prong Two”).

2019 Revised Guidance, Step 2A, Prong One7
The Judicial Exception
Under the 2019 Revised Guidance, we begin our analysis by first
considering whether the claims recite any judicial exceptions, including
certain groupings of abstract ideas, in particular: (a) mathematical concepts,
(b) mental steps, and (c) certain methods of organizing human activities.
The Examiner concludes claims 1–4 and 6–19 recite an abstract idea,
“specifically the concept of discovery of contacts.” Non-Final Act. 5.

7 Throughout this opinion, we give the claim limitations the broadest
reasonable interpretation consistent with the Specification. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
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TABLE ONE
In the table below, we identify in italics the specific claim limitations
that we conclude recite an abstract idea. We additionally identify in bold
the additional (non-abstract) claim limitations that are generic computer
components:

Independent Claim 1 Revised 2019 Guidance
[a] A computer-
implemented method
comprising:

A process (method) is a statutory
subject matter class. See 35 U.S.C.
§ 101 (“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.”).

[b] performing a similarity
matching process on one or
more fields in account
records obtained from a
Customer Relationship
Management (CRM) system
and corresponding one or
more fields in information
obtained from a social
network service to locate
matches between one or more
accounts in the account
records for a first user and
one or more
company/organizations
in the information obtained
from the social network,
Abstract idea, i.e., similarity
matching could be performed
alternatively as a mental process.
See 2019 Rev. Guid. 52.

The “social network service” is an
additional non-abstract network
limitation.
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wherein performing the
similarity matching
process includes utilizing a
first pass process executing
the following operations:

[c] in a first pass through the
account records for the first user:
Abstract idea, i.e., performing the
first and second passes through the
account records could be performed
alternatively as a mental process.
See 2019 Rev. Guid. 52.

[d] comparing a first field of
each of the account records
for the first user to a first
field in each of a plurality of
company/organization
records to calculate a
similarity value
for each pair of
account record and
company/organization record;

Abstract idea, i.e., comparing fields
and calculating could be performed
alternatively as a mental process.
See 2019 Rev. Guid. 52.

[e] determining, for each pair
of account record and
company/organization record,
whether the corresponding
calculated similarity value
transgresses a preset
similarity threshold;

Abstract idea, i.e., determining could
be performed alternatively as a
mental process. See 2019 Rev. Guid.
52.

[f] forming a set of pairs of
account records and
company/organization
records having calculated
similarity values
transgressing the preset
similarity threshold;
Forming a set of pairs of account
records is insignificant extra-solution
activity. 2019 Revised Guidance, 55
n.31; see also MPEP § 2106.05(g).
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[g] in a second pass through
only account records
contained in the set of pairs;

Abstract idea, i.e., performing the
first and second passes through the
account records could be performed
alternatively as a mental process.
See 2019 Rev. Guid. 52.
[h] for each account record
contained in the set of pairs,
comparing a second field in
the account record with a
second field in the
company/organization with
the account record in the pair
to calculate a revised
similarity value, thus
calculating a revised
similarity value for each pair
of account record and
company/organization record
in the set of pairs;

Abstract idea, i.e., comparing fields
and calculating could be performed
alternatively as a mental process.
See 2019 Rev. Guid. 52.

[i] wherein the first pass is
performed completely prior
to beginning the second pass;

Abstract idea, i.e., performing the
first and second passes through the
account records could be performed
alternatively as a mental process.
See 2019 Rev. Guid. 52.
[j] wherein the first pass
process reduces a number of
processing cycles necessary
for the computer to perform
the comparisons of the
second field in the account
record with the second fields
in the company/organization
record;

Insignificant extra-solution activity.
2019 Revised Guidance, 55 n.31; see
also MPEP § 2106.05(g).

The “computer” is an additional non-
abstract generic computer limitation.
[k] storing a mapping in a
data store for each pair in the
set whose revised similarity
Data collection or gathering for
storage insignificant extra-solution
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value transgresses a preset
threshold; and
activity. 2019 Revised Guidance, 55
n.31; see also MPEP § 2106.05(g).

The “data store” is a generic
computer component such as a
memory or hard drive. See Spec. ¶
27: “in some example embodiments
the CRM system 102 and/or the
CRM data store 106 may be located
on a non-server computer such as a
desktop computer, laptop computer,
or mobile device.”
[l] using mappings stored in
the data store to provide
insights to the first user.

Insignificant post-solution activity.
2019 Revised Guidance, 55 n.31; see
also MPEP § 2106.05(g).

Abstract Ideas — Mental Processes
We conclude the italicized abstract idea steps identified above in
Table One could be performed alternatively as mental processes under the
Revised Guidance. See Claim 1; 2019 Revised Guidance, 84 Fed. Reg. at
52.
If a method can be performed by human thought alone, or by a human
using pen and paper, it is merely an abstract idea and is not patent eligible
under § 101. CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
1372–73 (Fed. Cir. 2011); “That purely mental processes can be
unpatentable, even when performed by a computer, was precisely the
holding of the Supreme Court in Gottschalk v. Benson.” CyberSource, 654
F.3d at 1375; see also Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d
1138, 1146–47 (Fed. Cir. 2016).
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Moreover, “[u]sing a computer to accelerate an ineligible mental
process does not make that process patent-eligible.” Bancorp Servs., LLC v.
Sun Life Assurance Co., 687 F.3d 1266, 1279 (Fed. Cir. 2012); see also OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015)
(“relying on a computer to perform routine tasks more quickly or more
accurately is insufficient to render a claim patent eligible.”).

Additional Limitations
As emphasized in bold supra, we note the “computer,” “social
network service,” and “date store” additional non-abstract limitations of
computer components. See 2019 Revised Guidance, 84 Fed. Reg. at 52. We
note the supporting description of generic computer and network
components in the Specification, for example: “The machine can be a
personal computer (PC), a tablet PC, a set-top box (STB), a personal digital
assistant (PDA), a cellular telephone, a web appliance, a network router,
switch or bridge, or any machine capable of executing instructions
(sequential or otherwise) that specify actions to be taken by that machine.”
Spec. ¶ 116, see also Fig. 13; ¶¶ 27, 28, 105, 111, and 115.
We emphasize that McRO, Inc. v. Bandai Namco Games America
Inc., (837 F.3d 1299 (Fed. Cir. 2016)), guides: “[t]he abstract idea exception
prevents patenting a result where ‘it matters not by what process or
machinery the result is accomplished.’” 837 F.3d at 1312 (quoting O’Reilly
v. Morse, 56 U.S. 62, 113 (1854)) (emphasis added).
Remaining independent claims 10 and 16 recite similar language of
commensurate scope that we conclude also falls into the same abstract idea
category of mental processes, as mapped above for independent claim 1.
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See supra Table One. Because we conclude all claims on appeal recite an
abstract idea, as identified above, under Step 2A, Prong One, we proceed to
Step 2A, Prong Two.

2019 Revised Guidance, Step 2A, Prong Two
Integration of the Judicial Exception into a Practical Application
Pursuant to the 2019 Revised Guidance, we consider whether there
are additional elements set forth in the claims that integrate the judicial
exception into a practical application. See 2019 Revised Guidance, 84 Fed.
Reg. at 54–55.
MPEP § 2106.05(a)
Improvements to the Functioning of a Computer or
to Any Other Technology or Technical Field

Under MPEP § 2106.05(a), Appellants contend the claims are
analogous to the subject claims considered by the court in Enfish, because
the result of the first and second pass “is a significant processing savings, as
only 10,010,000 overall comparisons would have been performed for both
fields, in contrast to the prior art’s 20,000,000.” App. Br. 21.
However, our reviewing court guides: “Using a computer to accelerate
an ineligible mental process does not make that process patent-eligible.”
Bancorp, 687 F.3d at 1279; see also OIP Techs., Inc. v. Amazon.com, Inc.,
788 F.3d 1359, 1363 (Fed. Cir. 2015) (“relying on a computer to perform
routine tasks more quickly or more accurately is insufficient to render a
claim patent eligible.”).
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Enfish
Appellants additionally argue: “as with the self-referential table in
Enfish, the plain focus of the claims at issue in this case is on an
improvement to computer functionality itself, not on economic or other tasks
for which a computer is used in its ordinary capacity.” App. Br. 20.
Regarding Appellants’ arguments analogizing the claims before us on
appeal to the subject claim in Enfish (id.), we note the Enfish court
concluded “the claims at issue . . . are not directed to an abstract idea within
the meaning of Alice. Rather, they are directed to a specific improvement to
the way computers operate, embodied in the self-referential table.” Enfish,
LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016) (emphasis
added).
However, the claims on appeal here are silent regarding any mention
of a database, much less a self-referential table, as was the focus in Enfish.
Although a “data store” is recited in claims 1 and 10, it is not specifically
claimed as being accessed as a database, e.g., with database queries using a
self-referential table. Therefore, Appellants’ claims do not involve a self-
referential database table similar to the specific type of logical table
arrangement the Enfish court found was designed to improve the way a
computer stores and retrieves data in memory. See Enfish, Corp., 822 F.3d
at 1336. Thus, Appellants have not persuasively shown that any features of
the claimed invention improve the way the recited generic computer
components store and retrieve data in a manner analogous to that found by
the court in Enfish.
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McRO
We similarly find Appellants’ argument based upon McRO unavailing
because we conclude Appellants’ computer-implemented method, system, or
medium is unlike the subject claim(s) considered by the court in McRO.8
See independent claims 1, 10, and 16. See App. Br. 22.
The patent at issue in McRO describes that prior character animation
and lip synchronization were accomplished by human animators, with the
assistance of a computer, which involved the use of a so-called “keyframe”
approach in which animators set appropriate parameters, i.e., morph weights,
at certain important times, i.e., in order to produce accurate and realistic lip
synchronization and facial expressions. McRO, 837 F.3d at 1305.
Animators knew what phoneme a character pronounced at a given time from
a time-aligned phonetic transcription (a “timed transcript”). Id.
In accordance with the prior technique, animators, using a computer,
thus, manually determined the appropriate morph weight sets for each
keyframe based on the phoneme timings in the timed transcript. Id. See
also SAP Am. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018)
(distinguishing McRO):
The claims in McRO were directed to the creation of something
physical—namely, the display of “lip synchronization and
facial expressions” of animated characters on screens for
viewing by human eyes. Id. at 1313. The claimed improvement
was to how the physical display operated (to produce better
quality images), unlike (what is present here) a claimed
improvement in a mathematical technique with no improved
display mechanism. The claims in McRO thus were not abstract
in the sense that is dispositive here. And those claims also

8 McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed.
Cir. 2016).
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avoided being “abstract” in another sense reflected repeatedly
in our cases (based on a contrast not with “physical” but with
“concrete”): they had the specificity required to transform a
claim from one claiming only a result to one claiming a way of
achieving it.
SAP, 898 F.3d at 1167 (emphasis added).
In contrast to the claimed invention in McRO that improved how a
physical display operated to produce better quality images (id.), claim 1
merely uses a generic computer and “data store” to perform the recited steps
that result in the final step of “using mappings stored in the data store to
provide insights to the first user.” Thus, Appellants’ claims on appeal do not
improve the operation of a physical display, as was the case in McRO, nor
the operation of any other computer component, such as the “computer”
recited in the preamble of claim 1. See SAP, 898 F.3d at 1167. Moreover,
we conclude Appellants’ generic computer implementation in claim 1
performs steps that can be performed alternatively as mental processes, as
discussed above.

DDR Holdings
Nor is this a case involving eligible subject matter as in DDR
Holdings, LLC v. Hotels.Com, L.P., 773 F.3d 1245 (Fed. Cir. 2014). See
App. Br. 15-16. In DDR, instead of a computer network operating in its
normal, expected manner by sending a website visitor to a third-party
website via a clicked advertisement, the claimed invention in DDR generated
and directed the visitor to a hybrid page that presented: (1) product
information from the third party, and (2) the visual “look and feel” elements
from the host website, thus retaining the visitor at the original website.
DDR, 773 F.3d at 1258–59. Given this particular Internet-based solution,
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the court held that the claimed invention did not merely use the Internet to
perform a business practice known from the pre-Internet world, but rather
was necessarily rooted in computer technology to overcome a problem
specifically arising in computer networks. Id. at 1257.
That is not the case here. Although Appellants’ claimed invention
results in the final step of “using mappings stored in the data store to provide
insights to the first user,” we find this post-solution activity does not
improve the generic “data store” or “computer” recited in claim 1. We
additionally note that an improved abstract idea is still an abstract idea. See
Mayo, 566 U.S. at 90 (holding that a novel and nonobvious claim directed to
a purely abstract idea is, nonetheless patent-ineligible). Therefore, it is our
view that Appellants’ claimed invention is not rooted in computer
technology in the sense contemplated by DDR, in which the claimed
invention solved a challenge particular to the Internet.
Accordingly, on this record, we conclude claim 1 does not recite an
improvement to the functionality of a computer or other technology or
technical field. See MPEP § 2106.05(a).

MPEP §§ 2106.05(b) and (c)
The Bilski Machine-or-Transformation test (“MoT”)
as applied to method claims 41 and 42

The Examiner finds: “The claim[s] fail[] to recite . . . applying the
judicial exception with or by use of a particular machine, [or] effecting a
transformation of a particular article to a different state.” Ans. 6–7.
The Supreme Court cautions that the MoT test is not the sole test, but
may provide a useful clue:
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This Court’s precedents establish that the machine-or-
transformation test is a useful and important clue, an
investigative tool, for determining whether some claimed
inventions are processes under § 101. The machine-or-
transformation test is not the sole test for deciding whether an
invention is a patent-eligible “process.”
Bilski, 561 U.S. at 604 (emphasis added).
We note Appellants advance no arguments traversing the Examiner’s
findings. See Ans. 6–7. Because generic computer components such as a
“computer” and “a data store” are recited in computer-implemented method
claim 1, we conclude claim 1, and the method claims that depend therefrom,
do not define or rely upon a “particular machine.” See MPEP § 2106.05(b).
Further, we conclude method claims 1–9 do not transform an article to a
different state or thing. See MPEP § 2106.05(c).
MPEP § 2106.05(e) — Meaningful Claim Limitations 9
The Examiner finds: “Viewed as a whole, the additional claim
element(s) do not provide meaningful limitation(s) to transform the abstract
idea into a patent eligible application of the abstract idea such that the
claim(s) amounts to significantly more than the abstract idea itself.” Non-
Final Act. 8–9. (emphasis added).
Under MPEP § 2106.05(e), Appellants advance no arguments
pertaining to purportedly meaningful claim limitations. However, because
Appellants urge that “like the claims at issue in BASCOM, the pending

9 MPEP § 2106.05(e): “Applying or using the judicial exception in some
other meaningful way beyond generally linking the use of the judicial
exception to a particular technological environment, such that the claim as a
whole is more than a drafting effort designed to monopolize the exception.”
(emphasis added).

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claims are ‘not an abstract-idea-based solution implemented with generic
technical components in a conventional way’” (App. Br. 23), we will
address Appellants’ BASCOM arguments infra under Step 2B of our analysis
below (Inventive Concept).10
Therefore, on this record, we conclude independent method claim 1
has no other argued meaningful limitations as considered under section
2106.05(e) of the MPEP.

MPEP § 2106.05(f)
Merely including instructions to implement
an abstract idea on a computer, or
Merely using a computer as a tool
to perform an abstract idea

The Examiner finds: “The claims merely amount to the application or
instructions to apply the abstract idea on a general purpose computer, and
require nothing more than a generic computer system to carry out the
abstract idea itself.” Ans. 10.
Without more, we conclude Appellants’ claimed invention merely
implements the abstract idea using generic computer components, including
a computer and data store. See Independent Claims 1, 10, and 16.

10 See BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d
1341 (Fed. Cir. 2016).

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MPEP § 2106.05(g)
Adding insignificant extra-solution activity
to the judicial exception

As mapped in the right column of Table One, supra, we conclude
claim 1 recites extra or post-solution activities that courts have determined to
be insufficient to transform judicially excepted subject matter into a patent-
eligible application. See MPEP § 2106.05(g); 84 Fed. Reg. at 55 n.31.

MPEP § 2106.05(h)
Generally linking the use of the judicial exception to a particular
technological environment or field of use

The Supreme Court guides: “the prohibition against patenting
abstract ideas ‘cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment’ or [by] adding
‘insignificant postsolution activity.’” Bilski v. Kappos, 130 S. Ct. 3218,
3230 (2010), (quoting Diamond v. Diehr, 450 U.S. 175, 191–92 (1981)).
Appellants’ argue: “the claims would not pre-empt any future
inventions on other ways in which a computer could be used to discover
contacts.” App. Br. 22.
However, preemption is not the sole test for patent eligibility. As our
reviewing court has explained, “questions on preemption are inherent in and
resolved by the § 101 analysis,” and, although “preemption may signal
patent ineligible subject matter, the absence of complete preemption does
not demonstrate patent eligibility.” Ariosa Diagnostics, Inc. v. Sequenom,
Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015); accord Synopsys, 839 F.3d at
1150 (“(holding that an argument about the absence of complete preemption
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“misses the mark”); cf. OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359,
1362–63 (Fed. Cir. 2015) (“[T]hat 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.”).
Nor do claims 1–4 and 6–19 on appeal present any other issues as set
forth in the 2019 Revised Guidance regarding a determination of whether the
additional generic elements integrate the judicial exception into a practical
application. See Revised Guidance, 84 Fed. Reg. at 55.
Thus, under Step 2A, Prong Two (MPEP §§ 2106.05(a)–(c) and (e)–
(h)), we conclude claims 1–4 and 6–19 do not integrate the judicial
exception into a practical application. Therefore, we proceed to Step 2B,
The Inventive Concept.

The Inventive Concept – Step 2B
Under the 2019 Revised Guidance, only if a claim: (1) recites a
judicial exception, and (2) does not integrate that exception into a practical
application, do we then look to whether the claim adds a specific limitation
beyond the judicial exception that is not “well-understood, routine,
conventional” in the field (see MPEP § 2106.05(d)); or, simply appends
well-understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception.

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BASCOM 11
Appellants cite to BASCOM in support, and urge: “like the claims at
issue in BASCOM, the pending claims are ‘not an abstract-idea-based
solution implemented with generic technical components in a conventional
way.’” (App. Br. 23). Appellants further contend: “For example, the claims
all specifically describe the operations of a first pass process. This specific
solution constitutes a combination of operations that together comprise
significantly more than the Examiner's purported abstract concept.” Id.
We find Appellants’ analogy to BASCOM unavailing. See App. Br.
23. The Federal Circuit held in BASCOM that the claimed Internet content
filtering, which featured an implementation “versatile enough that it could
be adapted to many different users’ preferences while also installed remotely
in a single location,” expressed an inventive concept in “the non-
conventional and non-generic arrangement of known, conventional pieces.”
BASCOM, 827 F.3d at 1350.
Here, Appellants have not shown a non-conventional, non-generic
arrangement regarding the non-abstract limitations of generic computer
components, as recited in each of independent claims 1 and 10: i.e., the
generic “computer” and “data store.” See 2019 Revised Guidance, 84 Fed.
Reg. at 52.
Therefore, it is our view that Appellants’ claims do not involve any
improvements to another technology, technical field, or improvements to the
functioning of the computer or network, as was seen by the court in
BASCOM. Instead, we conclude Appellants’ claims 1–4 and 6–19 merely

11 BASCOM, 827 F.3d 1341.
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invoke generic computer components as a tool in which the instructions
executing on the computer apply the judicial exception.
Appellants traverse the Examiner’s finding that certain claim
limitations are well-understood, routine, and conventional. See Reply Brief
2–3. In support, Appellants urge that the Examiner has failed to consider
“the novelty of the first pass process as a factor in the second step of the
Alice analysis. As such, the Examiner erred.” Reply Br. 2.
However, any analysis based upon anticipation (or obviousness) is not
relevant to our analysis for patent eligibility under 35 U.S.C. § 101.
Although the second step in the Alice/Mayo test is a search for an “inventive
concept,” the analysis is not directed to novelty or nonobviousness, but
rather searches for elements sufficient to ensure that the claimed invention is
directed to more than a patent ineligible concept, such as an abstract idea.
See Alice, 573 U.S. at 217–18. “Groundbreaking, innovative, or even
brilliant discovery does not by itself satisfy the § 101 inquiry.” Ass’n for
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013);
see also Diamond v. Diehr, 450 U.S. 175, 188–89 (1981) (“The ‘novelty’ of
any element or steps in a process, or even of the process itself, is of no
relevance in determining whether the subject matter of a claim falls within
the § 101 categories of possibly patentable subject matter.”); Affinity Labs of
Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1263 n.3 (Fed. Cir. 2016)
(noting that an eligibility finding does not turn on the novelty of using a
user-downloadable application for the particular purpose recited in the
claims).
“Generally, a claim that merely describes an ‘effect or result
dissociated from any method by which [it] is accomplished’ is not directed
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to patent-eligible subject matter.” Apple, Inc. v. Ameranth, Inc., 842 F.3d
1229, 1244 (Fed. Cir. 2016) (citing Internet Patents Corp. v. Active Network,
Inc., 790 F.3d 1343, 1348 (Fed. Cir. 2015)).
Further regarding the use of the recited generic “computer” and “data
store” (independent claims 1 and 10), the Supreme Court has held “the mere
recitation of a generic computer cannot transform a patent-ineligible abstract
idea into a patent-eligible invention.” Alice, 573 U.S. at 223. The Federal
Circuit provides additional guidance: “[T]he use of generic computer
elements like a microprocessor or user interface do not alone transform an
otherwise abstract idea into patent-eligible subject matter.” FairWarning IP
LLC, v. Iatric Systems, Inc., 839 F.3d 1089, 1096 (Fed. Cir. 2016); OIP
Techs, 788 F.3d at 1363 (claims reciting, inter alia, sending messages over a
network, gathering statistics, using a computerized system to automatically
determine an estimated outcome, and presenting offers to potential
customers found to merely recite “‘well-understood, routine conventional
activit[ies],’ either by requiring conventional computer activities or routine
data-gathering steps.”
This reasoning is applicable here. Therefore, on the record before us,
Appellants have not shown that the claims on appeal add a specific
limitation beyond the judicial exception that is not “well-understood,
routine, and conventional” in the field (see MPEP § 2106.05(d)).
In light of the foregoing, we conclude, under the 2019 Revised
Guidance, that each of Appellants’ claims 1–4 and 6–19, considered as a
whole, is directed to a patent-ineligible abstract idea that is not integrated
into a practical application, and does not include an inventive concept.
Accordingly, for the reasons discussed above, we sustain the Examiner’s
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Rejection under 35 U.S.C. § 101 of claims 1–4 and 6–19.12

CONCLUSION
The Examiner did not err in rejecting claims 1–4 and 6–19 under
35 U.S.C. § 101, as being directed to a judicial exception, without
significantly more.
DECISION
We affirm the Examiner’s decision rejecting claims 1–4 and 6–19
under 35 U.S.C. § 101.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See
37 C.F.R. § 41.50(f).

AFFIRMED

12 To the extent Appellants have not advanced separate, substantive
arguments for particular claims, or other issues, such arguments are waived.
See 37 C.F.R. § 41.37(c)(1)(iv).