Christopher Holt

Patent Trials and Appeals Board

Dec 15, 2021

2021002536 (P.T.A.B. Dec. 15, 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.
11/487,526 07/14/2006 Christopher Holt 31547-357 / LEN0081PA 5805
146524 7590 12/15/2021
Dinsmore & Shohl LLP
255 E. Fifth Street
Suite 1900
Cincinnati, OH 45202
EXAMINER
RUHL, DENNIS WILLIAM
ART UNIT PAPER NUMBER
3687
NOTIFICATION DATE DELIVERY MODE
12/15/2021 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):
CincyPAIR@dinsmore.com
elise.merkel@dinsmore.com
jennifer.baker@dinsmore.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CHRISTOPHER HOLT
________

Appeal 2021–002536
Application 11/487,526
Technology Center 3600
____________

Before HUBERT C. LORIN, JOSEPH A. FISCHETTI, and
BIBHU R. MOHANTY, Administrative Patent Judges

LORIN, Administrative Patent Judge

DECISION ON APPEAL

STATEMENT OF THE CASE
Christopher Holt (Appellant1) seeks our review under 35 U.S.C.
§ 134(a) of the Examiner’s final rejection of claims 10–14 and 21–30. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42 (2018). The Appellant identifies Reed Technology and
Information Services, Inc., as the real party in interest. Appeal Br. 2.
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THE INVENTION
Claim 10, reproduced below, is illustrative of the subject matter on
appeal.
10. A method of accessing data in a database of patent
related writings, using over a wide area network within an
information-gathering environment a server computing
device having a computer processor, the method comprising:
receiving, over the wide area network at the computer
processor of the server computing device, a search request
database query that includes an examiner identifier
identifying a patent examiner, an assignee identifier
identifying an assignee and also includes an indication of a
rejection basis, the indication including a specifically
identified statutory provision of a patent law;
utilizing the computer processor of the server
computing device to identify a patent related writing in the
database that includes an examiner asserted denial of patent
issuance based on a rejection noted as being under the
statutory provision, that is part of a file history of an
application assigned to the identified assignee and that was
written by the identified patent examiner as part of the
prosecution of the patent application;
wherein identifying further comprises using the
computer processor of the server computing device to
reference an indication of which patent related writing was
written by which examiner and referencing which patent
related writing is associated with the file history of an
application assigned to the identified assignee, and wherein
identifying comprises accessing, with the computer
processor, the database such that a combined set of patent
related writings that were written by the identified patent
examiner and that are part of the file histories of patent
applications that are assigned to the assignee are checked for
the rejection basis; and
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presenting, over the wide area network to a client
computing device, the identified patent related writing for
review by the user.
Appeal Br. 19, Claims App..

THE REJECTION
The following rejections are before us for review:
Claims 10–14 and 21–30 are rejected under 35 U.S.C. § 101 for
claiming patent-ineligible subject matter. Final Act. 2–9.

ISSUE
Did the Examiner err in rejecting claims 10–14 and 21–30 under 35
U.S.C. § 101 because the claimed invention is directed to an abstract idea
without significantly more?

ANALYSIS
The Appellant argued these claims as a group. See Appeal Br. 8–18.
Consistent with the Appellant’s discussion, we select claim 10 as the
representative claim for this group, and the remaining claims 11–14 and 21–
30 stand or fall with claim 10. 37 C.F.R. § 41.37(c)(1)(iv).
The subject application has been before us previously. See Appeal
2017–005999; Decision mailed April 10, 2019. The subject matter of claim
10 differs from that of previous claim 10 in that it now includes a “server”
computing device in “a wide area network within an information-gathering
environment.” Also, the process now involves a “search request database
query” rather than simply a “search request.” The added language is
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italicized in claim 10 reproduced above. Notwithstanding these additions,
we will be repeating much of what we said in the prior decision.

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 10 covers a “process” and is thus statutory
subject matter for which a patent may be obtained.1 This is not in dispute.
However, the section 101 provision “contains an important implicit
exception: Laws of nature, natural phenomena, and abstract ideas are not
patentable.” Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 216
(2014) (citing Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569
U.S. 576, 589 (2013)).
In that regard, notwithstanding claim 10 covers statutory subject
matter, the Examiner has raised a question of patent–eligibility on the
ground that claim 10 is directed to an abstract idea.
Alice identifies a two-step framework for determining whether
claimed subject matter is directed to an abstract idea. Id. at 217.

1 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, 53. See also sentence bridging pages 53 and 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 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.” Alice 573 U.S. at
218 (emphasis added).
The Examiner determined that
the claim(s) recite(s) an abstract idea of data gathering
(performing research) by filtering content based on a search
request to identify certain information and presenting the
identified information for review, which defines a method of
organizing human activities and that can also be considered
as reciting a mental process capable of being performed in
the human mind, as the PTAB concluded in their decision of
04/10/19 [2017–005999].
Final Act. 2.
The Appellant contends that claim 10 is
directed to specific applications of computer-implemented
patent data accessing systems and computer–implemented
methods of accessing data in a database of patent writings to
new and useful ends.
. . . .
Such computer-implemented methods of accessing data
in a database of patent related writings and data accessing
systems are inextricably tied to computer technology and
distinct from the types of concepts typically found as
abstract.
Appeal Br. 8–10. The Appellant further argues that
[s]imilar to the claims at issue in Enfish [Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016)], which are
directed to steps of configuring a computer memory in
accordance with a self-referential table, the claims of the
present application are not claims "where a general-purpose
computer components are added post–hoc to a fundamental
economic or mathematical equation." Id. [at 1339.]
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Particularly, the claims of the present application solve a
problem in the software arts (existing programs do not
provide a user with an ability to gather information on an
examiner-specific basis (see present application at page 1
line 1 - page 3 line 6) that affect a real world result (users'
inability to have information regarding an examiner with
whom they are interacting (see id. at page 2 line 26 - page 3
line 6)). As such, the claims are patent eligible as were the
claims held patent eligible in Enfish.
Appeal Br. 11.
Accordingly, there is a dispute over what claim 10 is directed to. Is it
directed to “compar[ing] stored data with input data” (Final Act. 2) or
“solv[ing] a problem in the software arts” (Appeal Br. 11)?

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Claim Analysis2
We consider the claim as a whole3 giving it the broadest reasonable
construction4 as one of ordinary skill in the art would have interpreted it in
light of the specification5 at the time of filing.
According to claim 10, a “server computing device having a computer
processor” “over a wide area network within an information-gathering
environment” “access[es] data in a database.”
Specifically, first, the claim calls upon the processor of the server
computing device, over the wide area network, to “receiv[e] . . . a search

2 “[T]he important inquiry for a [section] 101 analysis is to look to the
claim.” Accenture Glob. Services, 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 [section] 101.’ However, the threshold of
[section] 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).
3 “In determining the eligibility of respondents’ claimed process for patent
protection under [section] 101, their claims must be considered as a whole.”
Diamond v. Diehr, 450 U.S. 175, 188 (1981).
4 2019 Revised 101 Guidance, page 53, footnote 14 (If a claim, “under its
broadest reasonable interpretation.”) (emphasis added.)
5 “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 [S]pecification.’” Smart
Systems Innovations, LLC v. Chicago Transit Authority, 873 F.3d 1364,
1387 (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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request database query.” The search request database query includes four
items:
1) “an examiner identifier identifying a patent examiner,”
2) “an assignee identifier identifying an assignee and also
includes”
3) “an indication of a rejection basis, the indication including”
4) “a specifically identified statutory provision of a patent
law”.
Second, the claim calls upon said processor to be “utiliz[ed] … to
identify a patent related writing in the database.” The database includes:
an examiner asserted denial of patent issuance based on a
rejection noted as being under the statutory provision, that is
part of a file history of an application assigned to the identified
assignee and that was written by the identified patent examiner
as part of the prosecution of the patent application.
The “identify[ing]” . . .
comprises using the computer processor of the server
computing device to reference an indication of which patent
related writing was written by which examiner and
referencing which patent related writing is associated with
the file history of an application assigned to the identified
assignee, and wherein identifying comprises accessing, with
the computer processor, the database such that a combined
set of patent related writings that were written by the
identified patent examiner and that are part of the file
histories of patent applications that are assigned to the
assignee are checked for the rejection basis.
Lastly, claim 10 calls for “presenting, over the wide are network to a
client computing device, the identified patent related writing for review by
the user.”
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We reasonably broadly construe claim 10 as being directed to a data–
gathering scheme comprising receiving a particular search request database
query, filtering content to identify certain information, and presenting the
identified information for review, implemented on a generic computer
system comprising a generic server, processor, network, client device, and
database.
The Abstract Idea6
We reproduce claim 10, identifying in italics the limitations we
believe recite an abstract idea.7
10. A method of accessing data in a database of patent related
writings, using over a wide area network within an information-
gathering environment a server computing device having a
computer processor, the method comprising:
receiving, over the wide area network at the computer
processor of the server computing device, a search request
database query that includes an examiner identifier identifying a
patent examiner, an assignee identifier identifying an assignee
and also includes an indication of a rejection basis, the
indication including a specifically identified statutory provision
of a patent law;
utilizing the computer processor of the server computing
device to identify a patent related writing in the database that
includes an examiner asserted denial of patent issuance based
on a rejection noted as being under the statutory provision, that

6 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. Step 2A is two prong inquiry.
7 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.” Id. at 54.

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is part of a file history of an application assigned to the identified
assignee and that was written by the identified patent examiner
as part of the prosecution of the patent application;
wherein identifying further comprises using the computer
processor of the server computing device to reference an
indication of which patent related writing was written by which
examiner and referencing which patent related writing is
associated with the file history of an application assigned to the
identified assignee, and wherein identifying comprises
accessing, with the computer processor, the database such that
a combined set of patent related writings that were written by the
identified patent examiner and that are part of the file histories
of patent applications that are assigned to the assignee are
checked for the rejection basis; and
presenting, over the wide area network to a client
computing device, the identified patent related writing for review
by the user.
Appeal Br. 19, Claims App.
The limitations identified above in italics recite a data–gathering
scheme comprising receiving a particular search request database query,
filtering content to identify certain information, and presenting the identified
information for review.8

8 See In re Downing, 754 Fed.Appx. 988, 993 (Fed. Cir. 2018):
This court has consistently treated inventions directed to
collecting, analyzing, and displaying information as abstract
ideas. See, e.g., Elec. Power Grp. v. Alstom S.A., 830 F.3d
1350, 1354 (Fed. Cir. 2016) (“The advance [the claims]
purport to make is a process of gathering and analyzing
information of a specified content, then displaying the
results, and not any particular assertedly inventive
technology for performing those functions. They are
therefore directed to an abstract idea.”).

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Receiving and filtering are reasonably characterized as mental
processes. Receiving and filtering information are operations that can be
performed in the mind.
Regarding “identifying” involving “referencing” certain information
and “accessing” content (in a generic database) to obtain information related
to said certain information, this, too, is a mental process.
The Specification does not define “referencing.” However, the term is
used to mean referring to. See Spec. 8:23–26 (“Most information is instead
made available primarily by reference to an application serial number, a
patent number, or the like, but not based on a link to a particular [P]atent
[E]xaminer.”). This is consistent with its ordinary and customary meaning.
See Webster’s New World Dictionary 1127, (3rd Ed. 1988) (Entry for
“reference”: “to refer to; mention.”). Given this broad meaning,
“referencing” information as claimed is an abstract mental process; that is, it
can be performed mentally. To the extent that the “referencing” more
narrowly requires first knowing what to refer to and then comparing the
information residing in the database until the existence of the information to
be referred to is determined, that, too, can be characterized as a mental
process. Comparing information to determine the existence of a particular
content can be performed in the mind. See footnote 15 of the 2019 Revised
101 Guidance (citing In re BRCA1 & BRCA2–Based Hereditary Cancer Test
Patent Litig., 774 F.3d 755, 763 (Fed. Cir. 2014) (Concluding that the
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concept of “‘comparing BRCA sequences and determining the existence of
alterations’ is an ‘abstract mental process.’”)9
Finally, “presenting,” per se, is a mental process as well as a method
of organizing human activity.
The receiving, filtering, identifying, and presenting of certain types of
information are akin to making observations and evaluations that can be
performed in the human mind and thus are matters that fall within at least

9 See also Intellectual Ventures I LLC v. Erie Indemnity Company, 850 F.3d
at 1327.
We have previously held other patent claims ineligible for
reciting similar abstract concepts that merely collect, classify,
or otherwise filter data. For example, in In re TLI
Communications LLC Patent Litigation, we concluded that
the concept of classifying data (an image) and storing it
based on its classification is abstract under step one. 823
F.3d 607, 611 (Fed. Cir. 2016). In Content Extraction, we
similarly held that the concept of data collection, recognition,
and storage abstract as well. 776 F.3d at 1347. More
recently, in Bascom Global Internet Services, Inc. v. AT&T
Mobility LLC, we held that a claim to a “content filtering
system for filtering content retrieved from an Internet
computer network” was directed to an abstract idea. 827 F.3d
1341, 1348–49 (Fed. Cir. 2016). Here, the claimed creation
of an index used to search and retrieve information stored in
a database is similarly abstract.
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the “Mental processes” enumerated grouping of abstract ideas, both as to
each claim limitation and the claim as a whole.10

Improvement In the Functioning of a Computer11 (Appellant’s
Argument)
Accordingly, we agree with the Examiner’s characterization of what
the claim is directed to.
We have reviewed the record and are unpersuaded as to error in our or
the Examiner’s characterization of what claim 10 is directed to.

10 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 1 of the
[2019 Revised 101 Guidance].” 2019 Revised 101 Guidance 54. This case
implicates subject matter grouping “(c):”
(c) Mental processes — concepts performed in the human mind
(including an observation, evaluation, judgment, opinion).
2019 Revised 101 Guidance 52.
11 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. “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.” 2019
Revised 101 Guidance 54. 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) is 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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The Appellant argues claim 10 is
directed to specific applications of computer-implemented
patent data accessing systems and computer–implemented
methods of accessing data in a database of patent writings to
new and useful ends.
Appeal Br. 8. And,

Such computer–implemented methods of accessing data in a
database of patent related writings and data accessing
systems are inextricably tied to computer technology and
distinct from the types of concepts typically found as
abstract.
Id. at. 10 (further relying on Enfish, LLC v. Microsoft Corp., 822 F.3d 1327
(Fed. Cir. 2016). The Appellant argues that “claims directed to a specific
implementation of a solution to a problem in the software arts are not
directed to an abstract idea.” Id.
Similar to the claims at issue in Enfish, which are
directed to steps of configuring a computer memory in
accordance with a self-referential table, the claims of the
present application are not claims "where a general-purpose
computer components are added post–hoc to a fundamental
economic or mathematical equation." Id. Particularly, the
claims of the present application solve a problem in the
software arts (existing programs do not provide a user with
an ability to gather information on an examiner-specific basis
(see present application at page 1 line 1 - page 3 line 6) that
affect a real world result (users' inability to have information
regarding an examiner with whom they are interacting (see
id. at page 2 line 26 - page 3 line 6)). As such, the claims are
patent eligible as were the claims held patent eligible in
Enfish.
Id. at 11.
We are unpersuaded that claim 10 is directed to solving a problem in
the software arts. To the extent that the Appellant means to argue that the
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“computer processor of the server computing device” and/or “database”
functionality is improved by implementing the recited data–gathering
scheme, it is true that specific asserted improvements in computer
capabilities, 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.”). But there is insufficient evidence in
the record before us that the claimed subject matter reflects any specific
asserted improvement in computer capabilities.
“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. DirectTV, 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. See also Ancora Techns., 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 System, 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,
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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’s description of the problem and solution shows the
advance over the prior art by the claimed invention is not on any
improvement in computer functionality but gathering certain information
from available resources.
The Specification states that “[i]t is natural for a person who is tasked
with influencing a decision-maker to be curious about the decision-maker's
background.” Spec. 1:5–8.
Under the circumstances, it is natural for a person who
is tasked with interacting with a [P]atent [E]xaminer to be
curious about the examiner's background and/or previous
decisions. Unfortunately, at least in the United States, there
is currently no convenient way to efficiently gather
information on an [E]xaminer-specific basis. In fact, it is not
uncommon for an inventor or an advocate to know very little
about the examiner with whom they are interacting during
the process of moving a patent application through the
patenting process.
Spec. 2:26–3:6. To overcome this lack of information about a patent
examiner’s decision–making process, a system is provided which includes a
“data search component . . . . configured, in response to [a] data request, to
retrieve patent-related writings generated by the patent examiner in
prosecuting a plurality of different patent applications.” Spec. 3:14–18. The
Specification discloses various sources from which to obtain said examiner–
specific information, including the USPTO database. Spec 7:3–15. “Thus, it
may technically be possible for a user . . . to obtain some level of
information about a particular patent examiner from [the USPTO’s] data
collection . . . . However, in many cases, there is no efficient means . . . to
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navigate through [the USPTO’s] data collection . . . on an examiner-specific
basis.” Spec. 8:10–15. Accordingly, a database is provided from which
such information can be retrieved. Figure 4, reproduced below, depicts the
database:

Fig. 4 is a diagrammatic illustration demonstrating contents of a database
used in the invention.

“As is shown in Fig. 4, database 116 also includes examiner data sheets 404.
An [E]xaminer data sheet is illustratively a compilation of information about
a particular [E]xaminer. Upon a valid log-in, user 102 is able to search for
and access an [E]xaminer data sheet for a particular [E]xaminer.” Spec.
16:28 –17:3.
Accordingly, the heart of the invention is in the data–gathering
scheme for obtaining certain Patent Examiner–specific information via the
steps recited in claim 10, not the “computer processor of the server
computing device” or “database” which are plainly generic. Cf. Intellectual
Ventures, 850 F.3d at 1328 (“[T]he heart of the claimed invention lies in
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creating and using an index to search for and retrieve data . . . an abstract
concept.”)
We have carefully reviewed the Specification but can find no
disclosure of an improvement to the processor or database. There is no
indication of an implementation of a solution to a problem in the software
arts as the Appellant has argued.
Computing devices, such as servers, having computer processors were
well known at the time the application was filed.12 The Specification
suggests as much in disclosing that the “examiner information
system [can be] maintained on one or more server-type computing devices”
(4:15–17) with which a user can interact by “utilizing a client computing
device” (4:14–15) over the “Internet” (4:22).
Similarly, databases per se were well known at the time the
application was filed. See Intellectual Ventures I LLC v. Erie Indemnity
Company, 850 F.3d 1315 (Fed. Cir. 21017) (claims to searching a database
using an index; US 6,510,434, filed Dec. 29, 1999).

12 Cf. Intellectual Ventures I LLC v. Capital One Financial Corporation,
850 F.3d 1332, 1341 (Fed. Cir. 2017) (“[T]he claims recite [ ] a generic
computer element—a processor.”); Planet Bingo, LLC v. VKGS LLC, 576
Fed. Appx. 1005, 1008 (Fed. Cir. 2014) (nonprecedential) (“[T]he claims at
issue . . . require ‘a computer with a central processing unit,’ ‘a memory,’
‘an input and output terminal,’ ‘a printer,’ in some cases ‘a video screen,’
and ‘a program . . . enabling’ the steps of managing a game of bingo . . . the
claims recite a generic computer implementation of the covered abstract
idea.”); and Smartflash LLC v. Apple Inc., 680 Fed. Appx. 977, 984 (Fed.
Cir. 2017) (nonprecedential) (“[W]e find here that ‘interfaces,’ ‘program
stores,’ and ‘processors’ are all generic computer components.”)

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The claim provides no additional structural details that would
distinguish either the claimed “computer processor of the server computing
device” or “database” from those that were well known at the time the
application was filed.13
Rather, claim 10 describes the “computer processor of the server
computing device” or “database” functionally; that is, the processor (a)
receives a “search request database query” and (b) identifies a “patent related
writing” of a patent Examiner involving accessing certain information in a
database.
Claim 10 calls upon the processor to perform two functions — i.e.,
“receiving” and “identifying.” Neither function is described in any technical
detail that would structurally distinguish it from those that were well known
at the time the application was filed.
The “receiving” of the claimed method involves receiving a search
request, albeit termed a “search request database query” (claim 10) and one
tailored to obtain certain types of information. But search requests per se
were known and processors were commonly known to be capable of
receiving search requests. See Intellectual Ventures, 850 F.3d at 1326
(“[T]he system receives a search request.”). As far as said four items in the
search request are concerned, they specify the type of information sought to
gathered, presumably, from the database, although the claim does not
exactly say. In fact, the claim does not call for performing a search at all.

13 Cf. Move, Inc. v. Real Estate Alliance Ltd., 721 Fed. Appx. 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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The claim simply calls for “receiving … a search request database query”
and then specifies the type of information that is to be gathered. Gathering
certain information from a larger pool of information is a known concept.
Cf. BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC, 827
F.3d 1341, 1350 (Fed. Cir. 2016) (“[F]iltering content on the Internet was
already a known concept.”).
Similarly, the “identifying” of the claimed method involves “utilizing
the computer processor of the server computing device to identify patent
related writing in the database” (claim 10), which database contains the
following information:
an [E]xaminer asserted denial of patent issuance based on a
rejection noted as being under the statutory provision, that is
part of a file history of an application assigned to the identified
assignee and that was written by the identified patent examiner
as part of the prosecution of the patent application.

Appeal Br. 19, Claims App. The “identifying” comprises
using the computer processor of the server computing device to
reference an indication of which patent related writing was
written by which examiner and referencing which patent related
writing is associated with the file history of an application
assigned to the identified assignee, and wherein identifying
comprises accessing, with the computer processor, the database
such that a combined set of patent related writings that were
written by the identified patent examiner and that are part of the
file histories of patent applications that are assigned to the
assignee are checked for the rejection basis.
Id.
As we understand it, by “referencing” certain information contained in
the database and “accessing” said database, patent related writings written
by a particular patent examiner that is part of the file histories of patent
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applications assigned to a particular assignee based on a rejection basis are
“identified.” The claim provides no additional technical detail as to how the
processor is to “reference” certain information in the database and “access”
the database to thereby “identify” the desired “patent related writing in the
database” (see claim 10). Given no additional technical detail, the
“identifying” as claimed (via “referencing” and “accessing”) is reasonably
broadly construed as requiring no more than to filter the information in the
database to obtain the desired “patent related writing” (claim 10). But
filtering information per se was known (see BASCOM, supra) and
processors were commonly known to be capable of filtering information in a
database.
The Specification attributes no special meaning to “receiving” or
“identifying.” In our view, consistent with the Specification, these are
common processing functions one of ordinary skill in the art at the time of
the invention would have associated with generic processors. Cf. OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015):
Beyond the abstract idea of offer-based price optimization,
the claims merely recite “well-understood, routine
conventional activit[ies],” either by requiring conventional
computer activities or routine data-gathering steps. Alice,
134 S.Ct. at 2359 (quoting Mayo, 132 S.Ct. at 1294)
(alterations in original). . . . For example, claim 1 recites
“sending a first set of electronic messages over a network to
devices,” the devices being “programmed to communicate,”
storing test results in a “machine-readable medium,” and
“using a computerized system . . . to automatically
determine” an estimated outcome and setting a price. Just as
in Alice, “all of these computer functions are ‘well-
understood, routine, conventional activit[ies]’ previously
known to the industry.” Alice, 134 S.Ct. at 2359 (quoting
Mayo, 132 S.Ct. at 1294) (alterations in original); see also
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buySAFE[, Inc. v. Google, Inc.], 765 F.3d [1350,] 1355
[(Fed. Cir. 2014)] (“That a computer receives and sends the
information over a network—with no further
[S]pecification—is not even arguably inventive.”).
At best, the claimed processor distinguishes over other generic
processors in the different types of content in the information it “receives”
and “identifies”. Similarly, the claimed database distinguishes from other
known databases because it contains different types informational content,
albeit the content itself is in fact not new. See, e.g., Spec. 7:8–12 (“Much of
this data is freely available through their website (www.uspto.gov) either
through database querying, FTP downloads, requests for non-electronic
copies, requests for data on an electronic storage means, or some other
means.”).
But that informational 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 Distribution, Inc. v. Mallinckrodt
Hospital Products IP Ltd., 890 F.3d 1024, 1032 (Fed. Cir. 2018).
Claim 10 describes a method whereby a generic processor “receives”
a particular search request, identifies (via “referencing” and “accessing” a
database) certain information, and “present[s]” said certain information (i.e.,
“the identified patent related writing”) “for review by the user.” As we
stated, claim 10 is directed to a data–gathering scheme comprising receiving
a particular search request, filtering content in a database to identify certain
information, and presenting the identified information for review.
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The recited data–gathering scheme does not ask the “processor” and
“database” to go beyond its common functions. While instructions a
computer must follow to invoke the performance of certain steps can be
patentably significant (see Enfish, LLC v. Microsoft Corp., 822 F.3d 1327
(Fed. Cir. 2016); see also Ancora Technologies, Inc. v. HTC America, Inc.,
908 F.3d 1343 (Fed. Cir. 2018)), here the instant record does not sufficiently
support the view that the recited steps are caused to be performed by
computer–executable instructions having a non–conventional effect on the
“processor” and/or “database.” To the contrary, the record supports viewing
the “processor” and “database” as themselves amounting to a mere
instruction to implement the recited data–gathering 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
abstract idea of intermediated settlement using some unspecified, generic
computer.”)
Rather than being directed to any improvement in computer
capabilities, the record supports the view that the claimed subject matter is
directed to a data–gathering scheme comprising receiving a particular search
request, filtering content in a database to identify certain information, and
presenting the identified information for review, using a generic processor
and database as tools.14

14 See the 2019 Revised 101 Guidance at 55:

The courts have also identified examples in which a judicial exception
has not been integrated into a practical application:
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Accordingly, within the meaning of the 2019 Revised 101 Guidance,
we find there is no integration into a practical application.
We have considered all of 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 10 is directed to an abstract idea.

Alice step two — Does the Claim Provide an Inventive Concept?15
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
practice amounts to significantly more than a patent upon the [ineligible
concept] itself.’” Alice, 573 U.S. at 221 (quoting Mayo Collaborative Servs.
v. Prometheus Labs., Inc., 566 U.S. 66, 73 (2012)).
In that regard, the Examiner determined that:
For step 2B, the claim(s) does/do not include additional
elements that are sufficient to amount to significantly more

1) 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;
15 This corresponds to Step 2B of the 2019 Revised 101 Guidance (see p.
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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than the judicial exception because they do not amount to
more than simply instructing one to practice the abstract idea
by using computers connected via a network to perform steps
that define the abstract idea. This does not render the claims
as being eligible. See MPEP 2106.05(f). The rationale set
forth for the 2nd prong of the eligibility test above is also
applicable to step 2B in this regard so no further comments
are necessary. This is consistent with the recently issued
2019 PEG..
Final Act. 7.
We addressed the Appellant’s argument as to purported specific
asserted improvements in computer capabilities under step one of the Alice
framework. This is consistent with the case law. See Ancora Technologies,
Inc. v. HTC America, Inc., 908 F.3d 1343, 1347 (“We have several times
held claims to pass muster under Alice step one when sufficiently focused on
such improvements.”) Such an argument can also challenge a determination
under step two of the Alice framework — as the Appellant has done here
(see Appeal Br. 10–12, and Reply Br. 2). See buySAFE, 765 F.3d at 1354–
55. “[R]ecent Federal Circuit jurisprudence has indicated that eligible
subject matter can often be identified either at the first or the second step of
the Alice/Mayo [framework].” 2019 Revised 101 Guidance 53, n.17.
Be that as it may, we are unpersuaded that claim 10 presents an
element or combination of elements indicative of a specific asserted
improvement in computer capabilities, thereby rendering the claimed subject
matter sufficient to ensure that the patent in practice amounts to significantly
more than a patent upon the data–gathering scheme itself.
We have reviewed the Specification and, as explained above, we can
find no suggestion of any improvements to the system as a result of
performing the recited steps. The Specification is focused on obtaining
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certain patent examiner–related information, not on the processor or
database. Rather than focusing on the processor and/or database, the
Specification focuses on the information to be retrieved, the processor and
database acting merely as conduits for its retrieval. Cf. In re TLI
Communications LLC Patent Litigation, 823 F.3d 607, 612 (Fed. Cir. 2016)
(“Put differently, the telephone unit itself is merely a conduit for the abstract
idea of classifying an image and storing the image based on its classification.
Indeed, the specification notes that it ‘is known’ that ‘cellular telephones
may be utilized for image transmission,’ [U.S. Patent 6,038,295,] col. 1 ll.
31–34, and existing telephone systems could transmit pictures, audio, and
motion pictures and also had ‘graphical annotation capability,’ id. at col. 1 ll.
52–59.”)
The Appellant cites DDR [DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245 (Fed. Cir. 2014)] as matching this case. Appeal Br. 12. We
disagree. There “the claims at issue[] 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.” DDR, 773 F.3d at 1258. Unlike in that decision, here no
improvement in computer functionality over what is conventional has been
shown.
We are unpersuaded that the record supports interpreting the steps
recited in the claim as resulting in an improved software as the Appellant has
argued. The record insufficiently supports Appellant’s argument that that
the claimed subject matter “provide[s] a solution to a technological
problem” (Reply Br. 6, referring to claim 21). As discussed above, the
Specification evidences the conventionality of the claim element “computer
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processor of the server computing device” and databases were notoriously
well–known, and the recited “receiving” and “identifying” steps ask nothing
more of them than to use them for their commonly–associated information–
processing functions. Much like the “data storage unit” and “computer,
coupled to said storage unit” in the claims of Alice (U.S. Patent 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 steps recited in the claim as yielding any
improvement in technology such that the generic server, processor, network,
client device and database, as claimed, can be said to add significantly more
to the abstract idea so as to transform the abstract idea into an inventive
concept.
We cited the Specification in our discussion as intrinsic evidence that
the claimed elements “computer processor of the server computing device,”
“client computing device,” and “wide area network” are conventional. In
doing so, we have followed “Changes in Examination Procedure Pertaining
to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision
(Berkheimer v. HP Inc.[, 881 F.3d 1360 (Fed. Cir. 2018)],” USPTO
Memorandum, Robert W. Bahr, Deputy Commissioner For Patent
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
Mortgage Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314,
1325 (Fed. Cir. 2016) (“The [section] 101 inquiry ‘may contain underlying
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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, 1371–73 (Fed. Cir. 2018) (Order, On
Petition for rehearing en banc, May 31, 2018); see also Aatrix Software, Inc.
v. Green Shades Software, Inc., 890 F.3d 1354, 1368 (Fed. Cir. 2018) (“A
factual allegation or dispute should not automatically take the determination
out of the court’s hands; rather, there needs to be justification for why
additional evidence must be considered—the default being a legal
determination.”). Here, the Specification indisputably shows said claimed
elements were conventional at the time of filing. Accordingly, no genuine
issue of material fact exists as to the well–understood, routine, or
conventional nature of said elements as broadly as they are claimed.
We note Appellant’s statement: “[t]he rejection under Step 2B must
be substantiated with evidence as required under the USPTO Memo issued
April 19, 2018 (“Berkheimer Memo”).” Appeal Br. 13. However, as the
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Examiner explains (see Final Act. 7–10), there is no genuine dispute of
material fact here requiring substantiation with evidence. We have carefully
reviewed Appellant’s argument (Appeal Br. 12–18) asserting the claims
provide significantly more than the abstract idea we have characterized the
claims as being directed to. But nowhere does Appellant explain what in the
claim is in addition to the abstract idea that Appellant believes is not
conventional, well–understood, and routine. At best, Appellant reproduces
claims 10 and 21 (see Appeal Br. 14–18) and then indicates that what is
claimed is “a combination of elements that amounts to significantly more
than any abstract idea.” Id. at 16 and 17, respectively. Such an argument
insufficiently calls into question the conventional, well–understood, and
routine nature of the claimed generic server, processor, network, client
device and database elements, individually or in the arrangement as claimed.
Finally, as to the question of preemption, the Appellant argues that
“the claims of the present application do not unduly monopolize the basic
tools of scientific and technological work further weighs in favor of the
patent eligibility of the pending claims.” Appeal Br. 11.
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 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 Intern. v. Alice Corp. Pty. Ltd., 717 F.3d 1269,
1281 (Fed. Cir. 2013) (Lourie, J., concurring). 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
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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 132 S.Ct. at 1294. Thus, broad claims do not
necessarily raise § 101 preemption concerns, and seemingly
narrower claims are not necessarily exempt.
Id. 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, 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.” Ariosa Diagnostics, 788 F.3d
at 1379.
No other persuasive arguments having been presented, we conclude
that no error has been committed in the determination under Alice step two
that claim 10 does not include an element or combination of elements
circumscribing the patent-ineligible data–gathering 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.
We note the Appellant’s discussion of independent claim 21. See,
inter alia, Appeal Br. 17–18. However, the discussion simply repeats what
claim 21 recites and argues for its patent–eligibility for the same reasons
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used to argue for the patent–eligibility of claim 10. Claim 21 parallels claim
10. The arguments relative claim 21 are unpersuasive for the reasons
discussed relative claim 10.
Accordingly, because we are not persuaded as to error in the
determinations that representative claim 10, and claims 11–14 and 21–30
which stand or fall with claim 10, are directed to an abstract idea and do not
present an “inventive concept,” we sustain the Examiner’s conclusion that
they are directed to patent-ineligible subject matter for being judicially-
excepted from 35 U.S.C. § 101. Cf. LendingTree, LLC v. Zillow, Inc., 656
Fed. Appx. 991, 997 (Fed. Cir. 2016) (“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., 788 F.3d at 1364; FairWarning IP, LLC v. Iatric Sys., Inc., 839
F.3d 1089, 1098 (Fed. Cir. 2016).

CONCLUSION
The rejection of claims 10–14 and 21–30 under 35 U.S.C. § 101 for
claiming patent-ineligible subject matter is affirmed.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
10–14, 21–
30
101 Eligibility 10–14, 21–
30

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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