Geoffry A. Westphal

Patent Trials and Appeals Board

Sep 3, 2019

12394458 - (D) (P.T.A.B. Sep. 3, 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.
12/394,458 02/27/2009 Geoffry A. Westphal 31083.29US1 2585
34018 7590 09/03/2019
Greenberg Traurig, LLP
77 W. Wacker Drive
Suite 3100
CHICAGO, IL 60601-1732
EXAMINER
EVANS, KIMBERLY L
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
09/03/2019 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):
chiipmail@gtlaw.com
clairt@gtlaw.com
jarosikg@gtlaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GEOFFRY A. WESTPHAL
____________

Appeal 2017-011558
Application 12/394,458
Technology Center 3600
____________

Before JOHN A. EVANS, CARL L. SILVERMAN, and SCOTT E. BAIN,
Administrative Patent Judges.

EVANS, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claim 1. App. Br. 2, 7. We have jurisdiction
under 35 U.S.C. § 6(b).

1 Appellant states the real party in interest is W.W. Grainger, Inc. App. Br.
2.
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We AFFIRM.2
STATEMENT OF THE CASE
The claim relates to a system for providing a reference collection that
is personalized for a consumer. See Abstract.

Invention
An understanding of the invention can be derived from a reading of
Claim 1, the sole claim pending in the Application, which is reproduced
below with some formatting added:
1. A system for providing a reference collection that is
personalized for a consumer, comprising:
a server computer operated by a vendor of products
having an associated data repository in which is stored an
aggregation of links to sources of on-line information wherein
each link within the aggregation is mapped to one or more of a
plurality of different consumer communities; and
a non-transitory, computer readable media associated
with the server computer having stored thereon instructions
executable by the server computer,
wherein the instructions place the consumer into at least
one of the plurality of different consumer communities as a
function of at least one product found in a prior purchasing
history of the consumer, cause a client computer to display a

2 Rather than reiterate the arguments of Appellant and the Examiner, we
refer to the Appeal Brief (filed April 5, 2017, “App. Br.”), the Reply Brief
(filed September 14, 2017, “Reply Br.”), the Examiner’s Answer (mailed
July 27, 2017, “Ans.”), the Final Action (mailed October 21, 2016, “Final
Act.”), and the Specification (filed February 27, 2009, “Spec.”) for their
respective details.
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webpage that includes the reference collection that is
personalized for the consumer,
wherein the reference collection comprises a listing of
those links within the aggregation of links to sources of on-line
information that have been mapped within the data repository to
the at least one of the plurality of different consumer
communities into which the consumer was placed, and
wherein the links to sources of on-line information
include links to at least one of product handling instructions and
product safety information sheets for the at least one product.

References and Rejection3
1. Claim 1 stands rejected under 35 U.S.C. § 101 as directed to
patent-ineligible subject matter. Final Act. 5–9.
2. Claim 1 stands rejected under 35 U.S.C. § 103 as unpatentable
over Snodgrass (US 7,827,055 B1; Nov. 2, 2010) and Swanson (US
7,299,202 B2; Nov. 20, 2007). Final Act. 9–14.

ANALYSIS
We have reviewed the rejections of Claim 1 in light of Appellant’s
arguments that the Examiner erred. We have considered in this decision
only those arguments Appellant actually raised in the Briefs. Any other
arguments which Appellant could have made but chose not to make in the
Briefs are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv). We are
not persuaded that Appellant identifies reversible error. Upon consideration

3 The present application was examined under the pre-AIA first to invent
provisions. Final Act. 2.
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of the arguments presented in the Appeal Brief and Reply Brief, we agree
with the Examiner that all the pending claim is unpatentable. We adopt as
our own the findings and reasons set forth in the rejection from which this
appeal is taken and in the Examiner’s Answer, to the extent consistent with
our analysis below. We provide the following explanation to highlight and
address specific arguments and findings primarily for emphasis. We
consider Appellant’s arguments as they are presented in the Appeal Brief,
pages 3–6, and the Reply Brief, pages 2–5.

CLAIM 1: INELIGIBLE SUBJECT MATTER
Based upon our de novo review of the record in light of recent
Director Policy Guidance4 with respect to the rejection under 35 U.S.C.
§ 101, we affirm the rejection of claim 1 for the reasons discussed below.
“Whether a claim is drawn to patent-eligible subject matter is an issue of law
that we review de novo.” SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d
1319, 1331 (Fed. Cir. 2010). The patent eligibility inquiry may contain
underlying issues of fact. Mortg. Grader, Inc. v. First Choice Loan Servs.
Inc., 811 F.3d 1314, 1325 (Fed. Cir. 2016). In particular, “[t]he question of
whether a claim element or combination of elements is well-understood,
routine and conventional to a skilled artisan in the relevant field is a question
of fact.” Berkheimer v. HP Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018).

4 USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50–57 (January 7, 2019) (“Revised Guidance,” “Rev. Guid.”).
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PRINCIPLES OF LAW
A. 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 Services v. Prometheus
Labs., Inc., 566 U.S. 66, 70 (2012) (citing 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. 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.”); 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; see also Bilski, 561 U.S. at
611); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95
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(1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 69
(1972)). Concepts determined to be patent eligible include physical and
chemical processes, such as “molding rubber products” (Diehr, 450 U.S. at
191); “tanning, dyeing, making water-proof cloth, vulcanizing India rubber,
smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. (15
How.) 252, 267–68 (1853))); 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 “[a] claim drawn to subject matter otherwise statutory
does not become nonstatutory simply because it uses a mathematical
formula.” Diehr, 450 U.S. at 176; 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.”).
Abstract ideas may include, but are not limited to, fundamental
economic practices, methods of organizing human activities, and
mathematical formulas or relationships. Alice, 573 U.S. at 217–21. Under
this guidance, we must therefore ensure at step one that we articulate what
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the claims are directed to with enough specificity to ensure the step one
inquiry is meaningful. Id. at 217 (“[W]e tread carefully in construing this
exclusionary principle lest it swallow all of patent law.”).
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. (quoting Mayo, 566 U.S. at 77). “[M]erely requir[ing]
generic computer implementation[] fail[s] to transform that abstract idea into
a patent-eligible invention.” Id.
B. USPTO Revised Guidance
The PTO recently published revised guidance in the Federal Register
concerning the application of § 101. Under the Revised Guidance, we first
look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see Manual for Patent Examining Procedure
(“MPEP”) §§ 2106.05(a)–(c), (e)–(h)).
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Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that are not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Revised Guidance.
Step 2A(i) — Abstract Idea
Informed by our judicial precedent, the Revised Guidance extracts and
synthesizes key concepts identified by the courts as abstract ideas to explain
that the abstract idea exception includes the following groupings of subject
matter, when recited as such in a claim limitation:
(a) Mathematical concepts—mathematical relationships, mathematical
formulas or equations, mathematical calculations;
(b) Certain methods of organizing human activity — fundamental
economic principles or practices (including hedging, insurance,
mitigating risk); commercial or legal interactions (including
agreements in the form of contracts; legal obligations; advertising,
marketing or sales activities or behaviors; business relations);
managing personal behavior or relationships or interactions between
people (including social activities, teaching, and following rules or
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instructions); and
(c) Mental processes—concepts performed in the human mind
(including an observation, evaluation, judgment, opinion).
Under the Revised Guidance, if the claim does not recite a judicial
exception (a law of nature, natural phenomenon, or subject matter within the
enumerated groupings of abstract ideas above), then the claim is patent-
eligible at Step 2A(i). This determination concludes the eligibility analysis,
except in rare situations identified in the Revised Guidance. However, if the
claim recites a judicial exception (i.e., an abstract idea enumerated above, a
law of nature, or a natural phenomenon), the claim requires further analysis
for a practical application of the judicial exception in Step 2A(ii).
Step 2A(ii) — Practical Application
If a claim recites a judicial exception in Step 2A(i), we determine
whether the recited judicial exception is integrated into a practical
application of that exception in Step 2A(ii) by: (a) identifying whether there
are any additional elements recited in the claim beyond the judicial
exception(s); and (b) evaluating those additional elements individually and
in combination to determine whether they integrate the exception into a
practical application.
The seven identified “practical application” sections of the MPEP,
cited in the Revised Guidance under Step 2A(ii), are:
(1) MPEP § 2106.05(a) Improvements to the Functioning of
a Computer or To Any Other Technology or Technical Field
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(2) MPEP § 2106.05(b) Particular Machine
(3) MPEP § 2106.05(c) Particular Transformation
(4) MPEP § 2106.05(e) Other Meaningful Limitations
(5) MPEP § 2106.05(f) Mere Instructions To Apply An
Exception
(6) MPEP § 2106.05(g) Insignificant Extra-Solution Activity
(7) MPEP § 2106.05(h) Field of Use and Technological
Environment
If the recited judicial exception is integrated into a practical
application as determined under one or more of the MPEP sections cited
above, then the claim is not directed to the judicial exception, and the patent-
eligibility inquiry ends. If not, then analysis proceeds to Step 2B.
Step 2B — “Inventive Concept” or “Significantly More”
Under our precedent, it is possible that a claim that does not
“integrate” a recited judicial exception under Step 2A(ii) is nonetheless
patent eligible. For example, the claim may recite additional elements that
render the claim patent eligible even though a judicial exception is recited in
a separate claim element. The Federal Circuit has held claims eligible at the
second step of the Alice/Mayo test (USPTO Step 2B) because the additional
elements recited in the claims provided “significantly more” than the recited
judicial exception (e.g., because the additional elements were
unconventional in combination). Therefore, if a claim has been determined
to be directed to a judicial exception under Revised Step 2A, we must
evaluate the additional elements individually and in combination under Step
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2B to determine whether they provide an inventive concept (i.e., whether the
additional elements amount to significantly more than the exception itself).
Under the Revised Guidance, we must consider in Step 2B whether an
additional element or combination of elements: (1) “Adds a specific
limitation or combination of limitations that are not well-understood,
routine, conventional activity in the field, which is indicative that an
inventive concept may be present”; or (2) “simply appends well-understood,
routine, conventional activities previously known to the industry, specified
at a high level of generality, to the judicial exception, which is indicative
that an inventive concept may not be present.” See Revised Guidance, III.B.
In the Step 2B analysis, an additional element (or combination of
elements) is not well-understood, routine or conventional unless the
examiner finds an evidentiary basis, and expressly supports a rejection in
writing with, one or more of the following:
1. A citation to an express statement in the specification or
to a statement made by an applicant during prosecution that
demonstrates the well-understood, routine, conventional nature
of the additional element(s);
2. A citation to one or more of the court decisions discussed
in MPEP § 2106.05(d)(II) as noting the well-understood,
routine, conventional nature of the additional element(s);
3. A citation to a publication that demonstrates the well-
understood, routine, conventional nature of the additional
element(s);
4. A statement that the examiner is taking official notice of
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the well-understood, routine, conventional nature of the
additional element(s).
See Berkheimer Memo.5 The analysis in Step 2B further determines whether
an additional element or combination of elements:
(a) Adds a specific limitation or combination of limitations that
are not well-understood, routine, conventional activity in the
field, which is indicative that an inventive concept may be
present; or
(b) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception, which is indicative
that an inventive concept may not be present.
Revised Guidance, and see Berkheimer Memo.
If the Examiner or the Board determines under Step 2B that the
element (or combination of elements) amounts to significantly more than the
exception itself, the claim is eligible, thereby concluding the eligibility
analysis. However, if a determination is made that the element and
combination of elements does not amount to significantly more than the
exception itself, the claim is ineligible under Step 2B, and the claim should
be rejected for lack of subject matter eligibility.

5 “Changes in Examination Procedure Pertaining to Subject Matter
Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP,
Inc.).” April 19, 2018.
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C. THE CLAIM AT ISSUE.
Step 1
Claim 1 is a system which recites one of the enumerated categories of
eligible subject matter in 35 U.S.C. § 101. Therefore, the issue before us is
whether it is directed to a judicial exception without significantly more.
Step 2A(i): Does the Claim Recite a Judicial Exception?
The Examiner determines the claim describes the concept of
providing consumers with personalized reference collections which
corresponds to concepts such as agreements between people in the form of
contracts, legal obligations, and business relations which the courts have
identified as abstract ideas. Final Act. 6 (citing buySAFE, Inc. v. Google,
Inc., 765 F.3d 1350 (Fed. Cir. 2014)). The Examiner further finds the claim
is related to an idea of itself having common characteristics such as
“comparing new and stored information and using rules to identify options.”
Id. (citing SmartGene, Inc. v. Advanced Biological Labs., SA, 555 F. App’x
950 (Fed. Cir. 2014)). And the Examiner finds the claim “uses categories to
organize, store and transmit information.” Id. (citing Cyberfone Sys., LLC v.
CNN Interactive Grp., Inc., 558 F. App’x 988 (Fed. Cir. 2014)).
Appellant contends claim 1 sets forth a technological improvement in
the interface that e-commerce consumers use to increases the efficiency and
accuracy of the e-commerce procurement process and thus provides a real-
world, valuable function in a twenty-first-century technological innovation.
App. Br. 5. Specifically, Appellant argues claim 1 sets forth a programmatic
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structure that functions to provide to an e-commerce consumer links to
sources of on-line information, particularly product handling instructions
and product safety information for a product that is determined to be
relevant to that particular e-commerce consumer. Id.
The preamble of Claim 1 recites: “[a] system for providing a
reference collection that is personalized for a consumer, comprising.” Claim
1 further recites the following limitations as set forth in the left column of
Table I below. Table I applies the further limitations of Claim 1 to the
categories of abstract ideas as set forth in the Revised Guidance.
Table I
Claim 1 Revised Guidance
[a]6 a server computer operated by a
vendor of products having an
associated data repository in which
is stored an aggregation of links to
sources of on-line information
wherein each link within the
aggregation is mapped to one or
more of a plurality of different
consumer communities;
The claimed “server computer”
hardware limitation to which the
Guidance is not applicable.

Recitations relating to the specific
data transacted by the server are non-
functional descriptive material and,
as such, are not entitled to patentable
weight.
[b] a non-transitory, computer
readable media associated with the
server computer having stored
thereon instructions executable by
the server computer,
A hardware limitation to which the
Guidance is not applicable.

6 Indicia, e.g., “[a],” added to facilitate discussion of individual limitations.
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[c] wherein the instructions place
the consumer into at least one of the
plurality of different consumer
communities as a function of at
least one product found in a prior
purchasing history of the consumer,
Mental processes: concepts
performed in the human mind.7

[d] cause a client computer to
display a webpage that includes the
reference collection that is
personalized for the consumer,
Displaying a webpage is
insignificant extra-solution activity
to the judicial exception. Rev. Guid.
55, n.31. Data displayed are non-
functional descriptive material.
[e] wherein the reference collection
comprises a listing of those links
within the aggregation of links to
sources of on-line information that
have been mapped within the data
repository to the at least one of the
plurality of different consumer
communities into which the
consumer was placed,
Recitations relating to data in the
“reference collection” are non-
functional descriptive material and,
as such, are not entitled to patentable
weight.
[f] and wherein the links to sources
of on-line information include links
to at least one of product handling
instructions and product safety
Linked data are non-functional
descriptive material and, as such, are
not entitled to patentable weight.

7 If a claim, under its broadest reasonable interpretation, covers performance
in the mind but for the recitation of generic computer components, then it is
still in the mental processes category unless the claim cannot practically be
performed in the mind. See Intellectual Ventures I LLC v. Symantec Corp.,
838 F.3d 1307, 1318 (Fed. Cir. 2016) (“[W]ith the exception of generic
computer-implemented steps, there is nothing in the claims themselves that
foreclose them from being performed by a human, mentally or with pen and
paper.”). Rev. Guid. 52, n.31.
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information sheets for the at least
one product.

Under Step 2A(i) and based on the analysis in Table I, we determine
that limitation [c] recites a judicial exception.
Step 2A(ii) – Practical Application
We next look for the presence of additional elements that integrate the
judicial exception into a practical application. The Revised Guidance is
“designed to more accurately and consistently identify claims that recite a
practical application of a judicial exception [] and thus are not ‘directed to’ a
judicial exception.” Revised Guidance, at 53. The claims recite a practical
application where an additional element reflects an improvement in the
functioning of a computer, or an improvement to other technology or
technical field.8 Revised Guidance, at 55.
For the following reasons, we conclude that Appellant’s claim does
not integrate the judicial exception into a practical application. See MPEP
§§ 2106.05(a)-(c) and (e)-(h). We address these “practical application”
MPEP sections seriatim:

MPEP § 2106.05(a) “Improvements to the Functioning of a Computer
or To Any Other Technology or Technical Field.”

8 The Revised Guidance also finds integration into a practical application
where the judicial exception is used in medical treatment or to transform an
article to a different state. Revised Guidance, at 55. Such considerations are
not before us.
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“In determining patent eligibility, examiners should consider whether
the claim ‘purport(s) to improve the functioning of the computer itself’” or
“any other technology or technical field.” MPEP § 2106.05(a).
Appellant acknowledges “[a]bstraction is avoided or overcome when
a proposed new application or computer-implemented function is not simply
the generalized use of a computer as a tool to conduct a known or obvious
process, but instead is an improvement to the capability of the system as a
whole.” App. Br. 4 (citing Enfish, LLC v. Microsoft Corp., 822 F.3d 1327,
1335, 1336 (Fed. Cir. 2016). Appellant then contends:
because the claims - considered as a whole - set forth a use of a
programmatic structure, i.e., a programmatic structure that uses
past purchasing histories of an e-commerce consumer to
implicitly create a personalized reference collection for that
particular e-commerce consumer, that improves the functioning
of technology, and which is more than the generalized use of a
computer as a tool.
Id. at 5.
The Examiner finds the claimed “server computer” with its
“associated data repository” merely facilitates “collecting information,
analyzing it, and displaying certain results of the collection and analysis”
Ans. 4 (citing Electric Power Grp., 830 F.3d 1350 (Fed. Cir. 2016)).
Appellant contends: “it is evident that the Office is not considering,
among other things, the programmatic structure that is expressly recited in
the claim at issue.” Reply Br. 2 (underlining omitted).
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As can be seen in the analysis of Table I, we expressly consider each
limitation of Claim 1. We disagree with Appellant’s characterization of
those limitations.
Appellant contends: “as with Enfish’s self-referential table and
Trading Techs, Int’l’s static price index, the subject claims are directed to a
technological improvement in the computer art.” Reply Br. 3 (underlining
omitted). Specifically, Appellant argues the improvement in computer
technology inheres in:
the use of a programmatic structure that functions to use past
purchasing histories of an e-commerce consumer to implicitly
create a personalized reference collection for that particular e-
commerce consumer whereby an e-commerce consumer is
provided with links to sources of on-line information,
particularly product handling instructions and product safety
information, for product that is determined to be relevant to that
particular e-commerce consumer.
Id.
We disagree because Appellant does not describe (and the claim does
not recite) a technological improvement to a computer. Rather, Appellant
describes a conventional computer system which collects and analyses a
subset of available data. Every system that collects, analyses, and displays
information must have some rule to specify and limit the data collected. We
note Appellant’s Specification discloses very conventional computing
facilities:
[a]ccordingly, those skilled in the art will appreciate that the
processing device 20 may be embodied in any device having
the ability to execute instructions such as, by way of example, a
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personal computer, mainframe computer, personal-digital
assistant (“PDA”), cellular telephone, or the like.
Spec. 4, ll. 7–10. Such generic recitations of computing elements fail to
transform a patent ineligible concept into an eligible one. See Mortgage
Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324–25 (Fed.
Cir. 2016) (generic computer components, such as an “interface,”
“network,” and “database,” fail to satisfy the inventive concept requirement;
Alice, 573 U.S. at 226 (“Nearly every computer will include a
‘communications controller’ and [a] ‘data storage unit’ capable of
performing the basic calculation, storage, and transmission functions
required by the method claims.”).

MPEP § 2106.05(b) Particular Machine.
At the outset, we note that the Bilski machine-or-transformation test is
only applicable to method or process claims on appeal. Thus, this section
only applies to the extent the system claim on appeal implements a method.
This section of the MPEP guides: “When determining whether a claim
recites significantly more than a judicial exception, examiners should
consider whether the judicial exception is applied with, or by use of, a
particular machine.” See Bilski, 561 U.S. at 604 (“[T]he machine-or-
transformation test is a useful and important clue, an investigative tool” for
determining whether a claim is patent eligible under § 101). MPEP
§ 2106.05(b).
MPEP § 2106.05(b) provides further guidance regarding what
constitutes a particular machine:
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[A]s described in MPEP §2106.05(f), additional elements that
invoke computers or other machinery merely as a tool to
perform an existing process will generally not amount to
significantly more than a judicial exception. See, e.g., Versata
Development Group v. SAP America, 793 F.3d 1306, 1335
(Fed. Cir. 2015) (explaining that in order for a machine to add
significantly more, it must “play a significant part in permitting
the claimed method to be performed, rather than function solely
as an obvious mechanism for permitting a solution to be
achieved more quickly”).

We find the claim on appeal is silent regarding specific limitations
directed to an improved computer system, processor, memory, network,
database, or Internet, nor does Appellant direct our attention to such specific
limitations. “[T]he mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.” Alice, 573
U.S. at 223; see also BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility
LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016) (“An abstract idea on ‘an
Internet computer network’ or on a generic computer is still an abstract
idea”). Applying this reasoning here, we conclude Appellant’s claim are not
directed to a particular machine, but rather merely implement an abstract
idea using generic computer components. Thus, we conclude Appellant’s
claim fails to satisfy the “tied to a particular machine” prong of the Bilski
machine-or-transformation test.

MPEP § 2106.05(c) Particular Transformation.
This section of the MPEP guides: “Another consideration when
determining whether a claim recites significantly more is whether the claim
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effects a transformation or reduction of a particular article to a different state
or thing.” “[T]ransformation and reduction of an article ‘to a different state
or thing’ is the clue to patentability of a process claim that does not include
particular machines.” Bilski, 561 U.S. at 658 (quoting Benson, 409 U.S. at
70).
Claim 1 operates to select and analyze certain electronic data, i.e.,
consumer purchasing behavior and product information. The selection of
electronic data is not a “transformation or reduction of an article into a
different state or thing constituting patent-eligible subject matter[.]” See In
re Bilski, 545 F.3d 943, 962 (Fed. Cir. 2008) (emphasis added). See also
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir.
2011) (“The mere manipulation or reorganization of data . . . does not satisfy
the transformation prong.”). Applying this guidance here, we conclude
Appellant’s claim fails to satisfy the transformation prong of the Bilski
machine-or-transformation test.

MPEP § 2106.05(e) Other Meaningful Limitations.

This section of the MPEP guides:

Diamond v. Diehr provides an example of a claim that recited
meaningful limitations beyond generally linking the use of the
judicial exception to a particular technological environment.
450 U.S. 175 (1981). In Diehr, the claim was directed to the
use of the Arrhenius equation (an abstract idea or law of nature)
in an automated process for operating a rubber-molding press.
450 U.S. at 177-78. The Court evaluated additional elements
such as the steps of installing rubber in a press, closing the
mold, constantly measuring the temperature in the mold, and
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automatically opening the press at the proper time, and found
them to be meaningful because they sufficiently limited the use
of the mathematical equation to the practical application of
molding rubber products. 450 U.S. at 184. In contrast, the
claims in Alice Corp. v. CLS Bank International did not
meaningfully limit the abstract idea of mitigating settlement
risk. 573 U.S. __ (2014). In particular, the Court concluded that
the additional elements such as the data processing system and
communications controllers recited in the system claims did not
meaningfully limit the abstract idea because they merely linked
the use of the abstract idea to a particular technological
environment (i.e., “implementation via computers”) or were
well-understood, routine, conventional activity.
MPEP § 2106.05(e).
“[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea . . . on a
generic computer.” Alice, 573 U.S. at 225. Similarly as for Alice, we find
that “[t]aking the claim elements separately, the function performed by the
computer at each step of the process is ‘[p]urely conventional.’” Id. “In
short, each step does no more than require a generic computer to perform
generic computer functions.” Id.
We agree with the Examiner’s conclusion (Ans. 5) that Appellant’s
claim 1 does not add meaningful limitations beyond generally linking the
use of the judicial exception to a particular technological environment.

MPEP § 2106.05(f) Mere Instructions To Apply An Exception.
Appellant does not persuasively argue that claim 1 does any more
than to merely invoke generic computer components merely as a tool in
which the computer instructions apply the judicial exception.
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MPEP § 2106.05(g) Insignificant Extra-Solution Activity.
The claim operates to provide to a user “links” to selected
information. We find displaying information to be a classic example of
insignificant extra-solution activity. See, e.g., Bilski, 545 F.3d at 963 (en
banc), aff’d sub nom, Bilski v. Kappos, 561 U.S. 593 (2010).

MPEP § 2106.05(h) Field of Use and Technological Environment.

[T]he Supreme Court has stated that, even if a claim does not
wholly pre-empt an abstract idea, it still will not be limited
meaningfully if it contains only insignificant or token pre- or
post-solution activity—such as identifying a relevant audience,
a category of use, field of use, or technological environment.
Ultramercial, Inc. v. Hulu, LLC, 722 F.3d 1335, 1346 (Fed. Cir. 2013). We
find the “computer” and “server” limitations are simply a field of use that
attempts to limit the abstract idea to a particular technological environment.
We do not find Appellant’s argument to be persuasive because “[t]he
courts have also identified examples in which a judicial exception has not
been integrated into a practical application.” Revised Guidance, at 55.
Claim 1 fails to recite a practical application where the additional element
does no more than generally link the use of a judicial exception to a
particular technological environment or field of use. Id. The mere
application of an abstract idea in a particular field is not sufficient to
integrate the judicial exception into a practical application. See id. at n. 32.
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In view of the foregoing, we conclude the claim is “directed to” a judicial
exception.

3. Well-understood, routine, conventional.
Because the claim recites a judicial exception and does not integrate
that exception into a practical application, we must then reach the issue of
whether the claim adds a specific limitation beyond the judicial exception
that is not “well-understood, routine, conventional” in the field. Revised
Guidance, at 56.
Appellant describes the claimed computer system consistent with its
being “well-understood, routine, [and] conventional”:
Accordingly, those skilled in the art will appreciate that the
processing device 20 may be embodied in any device having
the ability to execute instructions such as, by way of example, a
personal computer, mainframe computer, personal-digital
assistant (“PDA”), cellular telephone, or the like.
Spec. 4, ll. 7–10.
We find such “well-understood, routine, [and] conventional”
limitations fail to indicate the presence of an inventive concept.

4. Specified at a high level of generality.
It is indicative of the absence of an inventive concept where the
claims simply append well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception. Revised Guidance, at 56.
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Appellant contends: “the programmatic structure that uses past
purchasing histories of an e-commerce consumer to implicitly create a
personalized reference collection for that particular e-commerce consumer.”
Reply Br. 2.
However, claim 1 fails to recite any specific steps of an algorithm to
enable the claimed “programmatic structure,” nor does Appellant cite
Specification disclosure for the required specificity. We find the
“programmatic structure” limitation is specified at such a high level of
generality consistent with the absence of an inventive concept. Therefore,
we conclude that none of the claim limitations, viewed “both individually
and as an ordered combination,” amount to significantly more than the
judicial exception in order to sufficiently transform the nature of the claims
into patent-eligible subject matter. See Alice, 573 U.S. at 217 (internal
quotations omitted) (quoting Mayo, 566 U.S. at 79).
In view of the foregoing, we sustain the rejection of claim 1 under 35
U.S.C. § 101.

CLAIM 1: OBVIOUSNESS OVER SNODGRASS AND SWANSON.
Placing a consumer into a consumer community.
Claim 1 recites, inter alia:
a non-transitory, computer readable media associated with the
server computer having stored thereon instructions executable
by the server computer, wherein the instructions place the
consumer into at least one of the plurality of different consumer
communities as a function of at least one product found in a
prior purchasing history of the consumer, cause a client
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computer to display a webpage that includes the reference
collection that is personalized for the consumer.
Claim 1.
Appellant admits Snodgrass discloses a system in which display lists
are automatically generated for a consumer considering an email address or
a shipping address. App. Br. 6. But Appellant contends Snodgrass does not
teach or suggest placing a consumer into at least one of the plurality of
different consumer communities as a function of at least one product found
in a prior purchasing history of the consumer. Id.
The Examiner finds Snodgrass discloses a “user profile” database
wherein a merchant stores information about prior customers such as the
names, shipping addresses, email addresses, payment information, and
product interest activity histories of the customers. Ans. 11–12 (citing
Snodgrass, col. 4, ll. 54–67). The Examiner finds Snodgrass further
discloses associate-based communities which then may be used to provide
targeted recommendations or other targeted content to members of the
associate-based communities. Id. (citing Snodgrass, col. 5, ll. 47–57). The
Examiner finds Snodgrass discloses the community recommendations
service operates generally by tracking purchases of products and/or other
customer activity within particular communities. Id. at 12. “Communities
based upon related associates are used to gather information about customers
with similar interests. These communities are referred to herein as
‘associate-based communities.’” Snodgrass, col. 5, ll. 44–46. The Examiner
finds these disclosures teach the disputed limitation. Ans. 11.
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Appellant contends: “Snodgrass expressly describes that the
‘associate-based communities’ are only used to determine if two products
should be treated as being related, e.g., to determine if products A and B
may be treated as similar.” Reply Br. 4 (citing Snodgrass, col. 5, ll. 44–col.
6, l. 37) (underlining omitted).
We disagree with Appellant’s characterization of Snodgrass.
Snodgrass teaches that determining whether two products may be treated as
similar is merely an example of what the communities can do:
The following are examples of types of customer actions that
may be included in addition to typical purchase histories. (1)
Placing an item in a personal shopping cart. With this method,
products A and B may be treated as similar if a large percentage
of those who put A in an online shopping cart also put B in the
shopping cart.
Snodgrass, col. 5, ll. 55–61. Appellant’s mischaracterization of Snodgrass
fails to persuade us the Examiner has erred.
Appellant admits Swanson discloses providing links to on-line
information, but contends Swanson fails to teach placing a consumer into a
plurality of consumer communities based on past purchase history. App. Br.
6.
We are not persuaded because, as discussed above, we find Snodgrass
teaches that limitation.

DECISION
The rejection of Claim 1 under 35 U.S.C. § 101 is AFFIRMED.
The rejection of Claim 1 under 35 U.S.C. § 103 is AFFIRMED.
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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.
§ 41.50(f).
AFFIRMED