HEWLETT-PACKARD DEVELOPMENT COMPANY, L.P.

Patent Trials and Appeals Board

Jun 30, 2020

14909488 - (D) (P.T.A.B. Jun. 30, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/909,488 02/02/2016 Adi Kidron 90149773 6633
146568 7590 06/30/2020
MICRO FOCUS LLC
500 Westover Drive
#12603
Sanford, NC 27330
EXAMINER
HOLZMACHER, DERICK J
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
06/30/2020 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):
software.ip.mail@microfocus.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ADI KIDRON and
EITAN KATZ

Appeal 2019–004278
Application 14/909,488
Technology Center 3600

Before HUBERT C. LORIN, BIBHU R. MOHANTY, and
TARA L. HUTCHINGS, Administrative Patent Judges.

LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s Final decision to reject claims 1–18.1 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(a). Appellant identifies Entit Software LLC as the real party
in interest. Appeal Br. 3.
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CLAIMED SUBJECT MATTER
The claimed subject matter relates to smartphones or other computing
devices “[h]aving an abundance of communications applications installed”
(Spec., para. 9). Claim 15, reproduced below with emphasis added, is
illustrative of the claimed subject matter:
15. A method for message delivery, comprising:
intercept, by a processor of a computing device, a first
message sent from a sender via a first communications
application and addressed for delivery to a receiver via the first
communications application;
selecting, by the processor, a communications application
preferred by the receiver to deliver the first message to the
receiver, including:
obtaining past behaviors data of the receiver with
respect to utilization of communications applications,
identifying, from the past behaviors data, a relevant
circumstance with respect to utilization of a communication
application by the receiver, and
counting occurrences that the receiver utilized the
preferred communications application relative to other
communications applications during the relevant circumstance;
and
transmitting, by the processor, the first message to the
receiver via the preferred communications application, wherein
the first message is not transmitted to the receiver via the first
communications application.
REFERENCE
The prior art relied upon by the Examiner is:
Name Reference Date
Luna US 2013/0203433 A1 Aug. 8, 2013

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REJECTIONS
Claims 1–18 are rejected under 35 U.S.C. § 101 as being directed to
judicially-excepted subject matter.
Claims 1–18 are rejected under 35 U.S.C. § 102(a)(2) as being
anticipated by Luna.
OPINION
The rejection of claims 1–18 under 35 U.S.C. § 101 as being directed to
judicially-excepted subject matter.
The rejection of claims 1–18 under 35 U.S.C. § 101 as being directed
to judicially-excepted subject matter.
The Appellant argues these claims as a group. See Appeal Br. 7–12.
We select claim 15 as the representative claim for this group, and the
remaining claims 1–14 and 16–18 stand or fall with claim 15. See 37 C.F.R.
§ 41.37(c)(1)(iv).

Preliminary comment
Previous Office guidance on patent subject matter eligibility has been
superseded by the 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (Jan. 7, 2019), hereinafter “2019 Revised 101 Guidance.”
See 2019 Revised 101 Guidance, 84 Fed. Reg. at 51 (“Eligibility–related
guidance issued prior to the Ninth Edition, R–08.2017, of the MPEP
(published Jan. 2018) should not be relied upon.”). Accordingly, we will not
address arguments on the sufficiency of the Examiner’s position relative
prior guidance but rather our analysis that follows will comport with the
2019 Revised 101 Guidance. We will pay particular attention to the
Examiner’s position taken in the Answer and Appellant’s arguments made in
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the Reply Brief which are expressed in the context of the 2019 Revised 101
Guidance.

Introduction
35 U.S.C. § 101 provides that “[w]hoever invents or discovers any
new and useful process, machine, manufacture, or composition of matter, or
any new and useful improvement thereof, may obtain a patent therefor.”
In that regard, claim 15 covers a “process” and is thus statutory
subject matter for which a patent may be obtained.2 This is not in dispute.
However, the 35 U.S.C. § 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) (quoting Ass’n for Molecular Pathology v. Myriad Genetics,
Inc., 569 U.S. 576, 589 (2013)).
In that regard, notwithstanding claim 15 covers statutory subject
matter, the Examiner has raised a question of patent eligibility on the ground
that claim 15 is directed to an abstract idea.
Alice identifies a two-step framework for determining whether
claimed subject matter is directed to an abstract idea. Alice, 573 U.S. at 217.

2 This corresponds to Step 1 of the 2019 Revised 101 Guidance which
requires determining whether “the claim is to a statutory category.” 84 Fed.
Reg. at 53. See also id. at 53–54 (“consider[] 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.” Id. at 218
(emphasis added).
The Examiner determined, inter alia, that the claimed subject matter
is directed to an abstract idea, “namely:
"intercept a first message sent from a sender via a first
communications application and addressed for a planned
delivery to a receiver via the first communications application"
"in response to a determination that first is addressed for
delivery to the receiver, select a communications application
preferred by the receiver to deliver the first message to the
receiver, including accessing past behaviors data of the receiver
with respect to utilization of communications applications and
identifying, in consideration of the past behaviors data, a
preferred communications application of the receiver for
delivering the first message to the receiver" "transmit the first
message to the receiver via the preferred communications
application instead of via the first communications application"
are directed to receiving message data, accessing data based on
past behaviors (e.g., responding to stimulus or situation such as
time of day, day of the week, calendar date, presence at a
location, attendance at a scheduled event), selecting a preferred
communication app according to past user behavior and
transmitting the current message to be delivered to the preferred
communication app which is a practice similar to those found by
the courts to be abstract.
Final Act. 16–17.
Appellant argues that the claims “are not directed to an abstract idea
because the features recited in the claims relate to an improvement in
computer-related technology.” Appeal Br. 9.
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Accordingly, there is a dispute over whether claim 15 is directed to an
abstract idea. Specifically, is claim 15 directed to
receiving message data, accessing data based on past behaviors
(e.g., responding to stimulus or situation such as time of day, day
of the week, calendar date, presence at a location, attendance at
a scheduled event), selecting a preferred communication app
according to past user behavior and transmitting the current
message to be delivered to the preferred communication app
(Final Act. 17) or “an improvement in computer technology” (Appeal Br.
9)?

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Claim Construction3
We consider the claim as a whole giving it the broadest reasonable
construction as one of ordinary skill in the art would have interpreted it in
light of the Specification at the time of filing.4,5,6
Claim 15 recites 6 steps in total. They are:
1. “intercept[ing] … a first message sent from a sender
. . . and addressed for delivery to a receiver . . . ;”
2. “selecting . . . a communications application preferred
by the receiver to deliver the first message to the receiver,
including”
3. “obtaining . . . data” A;

3 “[T]he important inquiry for a § 101 analysis is to look to the claim.”
Accenture Glob. Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336,
1345 (Fed. Cir. 2013). “In Bancorp Servs., L.L.C. v. Sun Life Assurance Co.
of Can., 687 F.3d 1266, 1273 (Fed. Cir. 2012), the court observed that
‘claim construction is not an inviolable prerequisite to a validity
determination under § 101.’ However, the threshold of § 101 must be
crossed; an event often dependent on the scope and meaning of the claims.”
Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1347–48
(Fed. Cir. 2015).
4 “In determining the eligibility of respondents’ claimed process for patent
protection under § 101, their claims must be considered as a whole.”
Diamond v. Diehr, 450 U.S. 175, 188 (1981).
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 Sys.
Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1378 (Fed. Cir.
2017) (J. Linn, dissenting in part and concurring in part) (citing Enfish, LLC
v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016)), among others.

6 See 2019 Revised 101 Guidance, 84 Fed. Reg. at 52, n. 14 (“If a claim,
under its broadest reasonable interpretation.”) (emphasis added).
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4. “identifying . . . circumstance” B from A; and,
5. “counting occurrences” C during B; and,
6. “transmitting . . . the first message to the receiver . . .”;
where the first step is conducted “via a first communications
application” and the sixth step is conducted “via the preferred
communications application, wherein the first message is not transmitted to
the receiver via the first communications application” and
where
A is “past behaviors data of the receiver with respect to
utilization of communications applications;”

B is “a relevant circumstance with respect to utilization of a
communication application by the receiver;” and,

C is “occurrences that the receiver utilized the preferred
communications application relative to other communications
applications.”
Claim 15 employs “a processor of a computing device” (all steps); “a
first communications application” (step 1) and, “a preferred communications
application” (step 6).
Claim 15 is reasonably broadly construed as covering a scheme for
selecting a preferred communications application by which to transmit an
intercepted message to a receiver.
The Specification explains that there is an “abundance of
communications applications installed on a smartphone or other computing
device” giving a “user of the smartphone . . . flexibility . . . to quickly
respond to messages sent by contacts in a format and manner that is
presumably comfortable to the contacts.” Para. 9. However, “there are also
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can be significant drawbacks.” Para. 10. “The smart phone user will thus
invariably receive via communications applications messages that are not
preferred to the user given the subject matter, timing, or other context
factor.” Id. “To address these issues, . . . message delivery via receiver-
preferred communications applications” is provided. Para. 11.
To provide said preferred delivery, the Specification describes using,
inter alia, a selection engine; that is, “a combination of hardware and
programming configured to select a preferred communications application
for delivering the current message to the addressee user. The preferred
application is selected according to past behaviors of the addressee user with
respect to a plurality of communication applications.” Para. 26.
In an example, the selection engine 204 is configured to
identify. from the past behaviors data, a relevant circumstance
with respect to the addressee user's utilization of a
communication application, and to consider of a count of
occurrences that the addressee user utilized the preferred
application relative to other communicate on applications during
the relevant circumstance. In examples, the relevant
circumstance is, or includes, a specific time, time period, date, or
range of dates.
Para. 27. As shown in Figure 2, reproduced below, selection engine 204 is
part of a preferred communications application system 102 that also includes
current message engine 202, selection engine 204, whereby selection engine
204 may access data repository 208 used to store and retrieve data.
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Figure 2 depicts an example of a system for message delivery per a
preferred communications application 102 according to the Specification.
Given the method as claimed as reasonably broadly construed above
and in light of the Specification’s description of the objective of the
invention to provide preferred message delivery, we reasonably broadly
construe claim 15 as being directed to message delivery via a selected
receiver-preferred communications application.

The Abstract Idea7
Above, where we reproduce claim 15, we identify in italics the
limitations we believe recite an abstract idea.8 Based on our claim

7 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 a two prong inquiry.
8 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
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construction analysis (above), we determine that the identified limitations
describe a scheme for message delivery via a selected receiver-preferred
communications application. Message delivery on behalf of a sender to a
receiver per se is a commercial interaction. It has been ubiquitous in
commercial and business circles for decades. A scheme for message delivery
also is a manner for managing interactions between people, including
following rules or instructions. A commercial interaction and managing
interactions between people each falls within the enumerated “[c]ertain
methods of organizing human activity” grouping of abstract ideas set forth in
the 2019 Revised 101 Guidance.9
We note that Appellant includes a section in the Appeal Brief entitled,
in part “Independent Claims 1, 11, and 15 recite features that are not directed
to … Certain Methods of Organizing Human Activity.” Appeal Br. 7. We
have reviewed the section but have been unable to discern why Appellant

claim under examination (individually or in combination) that the Examiner
believes recites an abstract idea.” 84 Fed. Reg. at 54.
9 This corresponds to Prong One [“Evaluate Whether the Claim Recites a
Judicial Exception”] (b) of Step 2A of the 2019 Revised 101 Guidance. “To
determine whether a claim recites an abstract idea in Prong One, examiners
are now to: . . . (b) determine whether the identified limitation(s) falls within
the subject matter groupings of abstract ideas enumerated in Section I of the
[2019 Revised 101 Guidance].” 84 Fed. Reg. at 54. This case implicates
subject matter grouping “(b):” “(b) Certain methods of organizing human
activity—fundamental economic principles or practices (including hedging,
insurance, mitigating risk); commercial or legal interactions (including
agreements in the form of contracts; legal obligations; advertising,
marketing or sales activities or behaviors; business relations); managing
personal behavior or relationships or interactions between people (including
social activities, teaching, and following rules or instructions).” Id. at 52.
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believes the claimed subject matter is not directed to a certain method of
organizing human activity.

Technical Improvement10 (Appellant’s Argument)
Our characterization of what the claim is directed to is similar to that
of the Examiner, albeit the Examiner included several claim limitations to
the characterization and, thus, characterized it at a lower level of abstraction.
“An abstract idea can generally be described at different levels of
abstraction.” Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240, 1241 (Fed.
Cir. 2016) (“The Board’s slight revision of its abstract idea analysis does not
impact the patentability analysis.”).
We have reviewed the record and are unpersuaded as to error in our or
the Examiner’s characterization of what claim 15 is directed to.
A principle argument Appellant makes is that the claimed subject
matter is not directed to an abstract idea, but rather to an improvement in

10 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.” 84 Fed. Reg.
at 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” 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. at 55.

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technology. See Appeal Br. 9–11. However, we do not find that the record
adequately supports it.
Appellant argues that the independent claims “recite a set of rules for
the computing device
to intercept a first message sent from a sender via a first
communications application and addressed for a planned
delivery to a receiver via the first communications application,
select a communications application preferred by the receiver to
deliver the first message to the receiver, and transmit the first
message to the receiver via the preferred communications
application instead of via the first communications application.
App Br. 10.
The argument is unpersuasive. While it is true that claim 15 recites
“intercept[ing],” “selecting,” and, “transmitting” steps, we do not see these
as rules resulting in technological improvements. The steps are recited at a
broad functional level, absent technical detail explaining how the computing
device effects the preferred message delivery. Cf. Interval Licensing LLC v.
AOL, Inc., 896 F.3d 1335, 1346 (Fed. Cir. 2018):
[T]he content data update instructions, which enable updating
the displayed information, are recited only at the broadest,
functional level, without explaining how that is accomplished, let
alone providing a technical means for performing that function.
Because the instructions discuss only broad functions and are not
directed to any technological improvement for performing those
functions, Interval Licensing's reliance on McRO is inapposite.
In McRO, the claim limitations at issue were “limited rules”
which “improved technological result[s].” 837 F.3d at 1316. See
SAP Am., Inc., 890 F.3d at 1021 (explaining that the claims in
McRO, besides being directed to physical display improvements,
also avoided abstraction by adequate specificity as to how to
achieve the improvements).
Appellant argues that
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According to the specification, selecting the receiver’s
preferred communications application allows sending the
message more efficiently and optimized, and thereby saving time
and energy for the message delivery system (See Specification,
at least paragraph [0015]).
Appeal Br. 10.
It is true paragraph 15 of the Specification describes “advantages of
the [claimed method that] will cause customer satisfaction with the mobile
computing devices, and with the optimized communications applications
installed thereon, to increase.” Para. 15. But that alone provides little insight
into the technology yielding said advantages. The technical details by which
an improvement to technology is achieved is not discussed there. Rather,
paragraph 15 of the Specification provides only non-technical aspirations,
such as “optimiz[ing] the recipient user's utilization of his or her multiple
communications applications according to personal preferences.” Id. Cf.
Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1378, 1384 (Fed. Cir. 2019)
(“The claims are focused on providing information to traders in a way that
helps them process information more quickly, ’556 patent at 2:26–39, not on
improving computers or technology.”).
We have carefully reviewed the claim. Per our previous claim
construction analysis, claim 15 is reasonably broadly construed as covering a
scheme for selecting a preferred communications application by which to
transmit an intercepted message to a receiver. We see no specific asserted
improvement in computer capabilities recited in the claim.
The claim provides no additional structural details that would
distinguish the recited “a processor of a computing device” (all steps); “a
first communications application” (step 1) and, “a preferred communications
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application” (step 6) from their generic counterparts.11 See paragraph 9,
where the Specification indicates the “computing device” can be “a
smartphone or other computing device” and paragraph 25 where “a
‘communications application’ refers generally to a web application, software
application, firmware application, or other programming that executes at, or
is accessible at, a computing device and that enables communication
between users of computing devices.”
With respect to the “intercept[ing],” “selecting,” and, “transmitting”
steps, the Specification attributes no special meaning to any of these
operations, individually or in combination, as claimed. In our view,
consistent with the Specification, these are common computer processing
functions that one of ordinary skill in the art at the time of the invention
would have known generic computers were capable of performing and
would have associated with generic computers. 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). . . . 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

11 Cf. Move, Inc. v. Real Estate Alliance Ltd., 721 F. App’x 950, 954 (Fed.
Cir. 2018) (non-precedential) (“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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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 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.”).
Accordingly, within the meaning of the 2019 Revised 101 Guidance,
we find there is no integration of the abstract idea into a practical
application.
The Reply Brief argues, inter alia, that “the claims recite a unique
operation of the computing device for delivering the messages.” Reply Br. 5.
As in the Appeal Brief, Appellant reiterates that the claim recites
“intercept[ing],” “selecting,” and, “transmitting” steps, but points to no
technical details by which to perform them. See id. (“Specifically, claim 1
recites … [claim 1 is reproduced].” See also Reply Brief 6–8, where
Appellant repeats the steps recited in the claim.
The difficulty with such an argument is that it points to the recited
steps (“intercept[ing],” “selecting,” and, “transmitting”) themselves, the very
subject matter that we, and the Examiner, have characterized as being an
abstract idea. Rather than showing that these steps describe a technical
improvement, the Appellant points to the steps’ result-based functional
language without pointing to any means for achieving any purported
technological improvement. The claimed invention the Appellant points to
— that is, selecting receiver-preferred communications application for
delivering a message — is described by the claim via a scheme
(“intercept[ing],” “selecting,” and, “transmitting”) for selecting a preferred
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communications application by which to transmit an intercepted message to
a receiver.
By setting out what it is aspiring to accomplish without any means for
achieving it, let alone any purported technological improvement, the claim is
in effect presenting the invention in purely result-based functional language,
strengthening our determination under Alice step one that the claim is
directed to an abstract idea. Cf. Two-Way Media Ltd. v. Comcast Cable
Commc’ns, LLC, 874 F.3d 1329, 1337 (Fed. Cir. 2017) (“Claim 1 recites a
method for routing information using result-based functional language. The
claim requires the functional results of ‘converting,’ ‘routing,’ ‘controlling,’
‘monitoring,’ and ‘accumulating records,’ but does not sufficiently describe
how to achieve these results in a non-abstract way.”). See also Uniloc USA
v. LG Elecs. USA, 957 F.3d 1303, 1308 (Fed. Cir. 2020):
The claims we held ineligible in Two-Way Media similarly failed
to concretely capture any improvement in computer
functionality. In Two-Way Media, the claims recited a method of
transmitting packets of information over a communications
network comprising: converting information into streams of
digital packets; routing the streams to users; controlling the
routing; and monitoring the reception of packets by the users.
874 F.3d at 1334. Two-Way Media argued that the claims solved
data transmission problems, including load management and
bottlenecking, but the claimed method was not directed to those
improvements. Id. at 1336–37. We therefore held the claims
ineligible because they merely recited a series of abstract steps
(“converting,” “routing,” “controlling,” “monitoring,” and
“accumulating records”) using “result-based functional
language” without the means for achieving any purported
technological improvement. Id. at 1337.
Appellant’s technical-improvement argument is unpersuasive as to
error in the Examiner’s or our characterization of what the claim is directed
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to because the disclosure Appellant directs us to (i.e., paragraph 15 of the
Specification) fails to adequately support it for the subject matter as broadly
as it is claimed. We are unable to point to any claim language suggestive of
an improvement in technology. An argument that such an improvement
exists is alone insufficient. See generally In re Glass, 474 F.2d 1015, 1019
(CCPA 1973); see also In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974);
and In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); and In re Schulze,
346 F.2d 600, 602 (CCPA 1965).
For the foregoing reasons, we unpersuaded that “the claims recite a
unique operation of the computing device for delivering the messages”
(Reply Br. 5) and that “the claims recite specific details for the computing
device to perform.” (id. at 8).
We have considered Appellant’s other 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 15 is directed to an abstract idea.

Alice step two — Does the Claim Provide an Inventive Concept?12
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

12 This corresponds to Step 2B, of the 2019 Revised 101 Guidance, 84 Fed.
Reg. at 56 “if a claim has been determined to be directed to a judicial
exception under revised Step 2A, examiners should then evaluate the
additional elements individually and in combination under Step 2B to
determine whether they provide an inventive concept (i.e., whether the
additional elements amount to significantly more than the exception itself).”
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practice amounts to significantly more than a patent upon the [ineligible
concept] itself.’” Alice, 573 U.S. at 217–18 (quoting Mayo, 566 U.S. at 73).
In that regard, the Examiner determined that
Claims 1-18 do not include additional elements that are
sufficient to amount to significantly more than the judicial
exception because the additional elements when considered both
individually and as an ordered combination do not amount to
significantly more than the abstract idea. The additional elements
of the "processor", "memory", "communication application(s)",
"communication network" and "non-transitory computer
readable medium" are generically-recited computer related
elements that amount to a mere instruction to "apply it" (the
abstract idea) on the computer-related elements (see MPEP
§ 2106.05 (f) Mere Instructions to Apply an Exception). … There
is no indication that the combination of elements improves the
functioning of a computer or improves any other technology.
Final Act. 18–19. We agree.
We addressed the matter of whether there were any purported specific
asserted improvements in computer capabilities in our analysis above under
step one of the Alice framework. This is consistent with the case law. See
Ancora Techs., Inc. v. HTC Am., Inc., 908 F.3d 1343, 1347 (Fed. Cir. 2018)
(“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. 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].” See 2019 Revised 101
Guidance 53, n.17.
Be that as it may, we are unpersuaded that claim 15 presents an
element or combination of elements indicative of a specific asserted
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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 message delivery via a selected receiver-preferred
communications application employing “a processor of a computing device”
(all steps); “a first communications application” (step 1) and, “a preferred
communications application” (step 6).
We have reviewed paragraph 15 of the Specification and, as explained
above, we can find no suggestion of any improvements to the system as a
result of performing the functions as broadly as they are recited.
We cited the Specification in our earlier discussion. It is intrinsic
evidence that the claimed “a processor of a computing device” (all steps); “a
first communications application” (step 1.) and, “a preferred
communications application” (step 6.) as claimed 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.” See Berkheimer, 881 F.3d at 1365
(quoting Mortgage Grader, Inc. v. First Choice Loan Services Inc., 811 F.3d
1314, 1325 (Fed. Cir. 2016) (“The § 101 inquiry ‘may contain underlying
factual issues.”’)). But the court also held that “[w]hen there is no genuine
issue of material fact regarding whether the claim element or claimed
combination is well-understood, routine, [and] conventional to a skilled
artisan in the relevant field, this issue can be decided on summary judgment
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as a matter of law.” Berkheimer, 881 F.3d 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, 890 F.3d 1369, 1371–73 (Fed. Cir. 2018) (Order, On Petition
for rehearing en banc, May 31, 2018 (J. Moore concurring)); see also Aatrix
Software, Inc. v. Green Shades Software, Inc., 890 F.3d 1354, 1368 (Fed.
Cir. 2018) (Order On Petition for Rehearing En Banc) (Reyna, J., dissenting)
(“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 the recited “a processor of
a computing device” (all steps); “a first communications application” (step
1.) and, “a preferred communications application” (step 6.) individually and
in combination in the context as claimed was conventional at the time of
filing. Accordingly, there is sufficient factual support for the well–
understood, routine, or conventional nature of the claimed “a processor of a
computing device” (all steps); “a first communications application” (step 1)
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and, “a preferred communications application” (step 6), individually or in
the combination as claimed.
According to Appellant, “the prior art documents cited in the Office
Action do not teach or suggest at least the combination of features recited
above. As such, these features constitute a non-conventional and non-generic
arrangement and, thus, an improvement in the computer-related technology.”
Appeal Br. 11–12. According to Appellant, based in part on BASCOM
Global Internet Services v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir.
2016), “the combination of features recited in independent claims 1, 11, and
15 amounts to significantly more than the abstract idea alleged by the
Examiner.” Id. at 12.
We reverse below the anticipation rejection. In that regard, claim
limitations found to be novel (or nonobvious) can affect a patent-eligibility
determination. Cf. Ariosa Diagnostics, Inc., v. Sequenom, Inc., 788 F.3d
1371 (Fed. Cir. 2015) (“For process claims that encompass natural
phenomenon, the process steps are the additional features that must be new
and useful.”) Thus, novelty is a factor to be considered when determining
“whether the claims contain an ‘inventive concept’ to ‘transform’ the
claimed abstract idea into patent-eligible subject matter.” Ultramercial, Inc.
v. Hutu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014). “[N]ovelty in
implementation of the idea is a factor to be considered only in the second
step of the Alice analysis.” Id.
However, although “‘the § 101 patent-eligibility inquiry and, say, the
§ 102 novelty inquiry might sometimes overlap,’ . . . a claim for a new
abstract idea is still an abstract idea.” Synopsys, Inc. v. Mentor Graphics
Corp., 839 F.3d 1138, 1151 (citation omitted) (quoting Mayo, 566 U.S. at
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90). A finding of novelty (or nonobviousness) does not necessarily lead to
the conclusion that subject matter is patentable eligible. “Groundbreaking,
innovative, or even brilliant discovery does not by itself satisfy the § 101
inquiry.” Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct.
2107, 2117 (2013).
Indeed, “[t]he ‘novelty’ of any element or steps in a
process, or even of the process itself, is of no relevance in
determining whether the subject matter of a claim falls within the
§ 101 categories of possibly patentable subject matter.” Diamond
v. Diehr, 450 U.S. 175, 188–89 (1981) (emphasis added); see
also Mayo, 132 S. Ct. at 1303–04 (rejecting “the Government’s
invitation to substitute §§ 102, 103, and 112 inquiries for the
better established inquiry under § 101”). Here, the jury’s general
finding that Symantec did not prove by clear and convincing
evidence that three particular prior art references do not disclose
all the limitations of or render obvious the asserted claims does
not resolve the question of whether the claims embody an
inventive concept at the second step of Mayo/Alice.
Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1315 (Fed.
Cir. 2016).
The question in step two of the Alice framework is not whether an
additional feature is novel but whether the implementation of the abstract
idea involves “more than the performance of ‘well-understood, routine,
[and] conventional activities previously known to the industry.’” Content
Extraction and Transmission LLC v. Wells Fargo Bank, Nat. Ass’n, 776 F.3d
1343, 1347–48 (quoting Alice, 134 S. Ct. at 2359).
In that regard, Appellant points, inter alia, to the selecting steps as a
feature which the prior art does not teach. We agree for the reasons
discussed below. But said selecting step is a feature of the abstract idea. As
such, the selecting step does not add significantly more to the abstract idea.
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In our view, Appellant has not shown this “novel” selecting transforms the
abstract idea into patent-eligible subject matter. Cf. Affinity Labs of Tex.,
LLC v. DIRECTV, LLC, 838 F.3d 1253, 1265 (Fed. Cir. 2016).
In arguing that the ’379 patent contains an “inventive concept,”
Affinity relies on this court’s recent decision in BASCOM Global
Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341
(Fed. Cir. 2016). The patent in that case was directed to systems
for filtering content on the Internet. The claims provided for
individually customizable filtering on a remote Internet service
provider server.

Addressing the “abstract idea” step, the court held that filtering
content is an abstract idea, and that it remained an abstract idea
even when placed in the context of an Internet computer network.
Id. at 1348. The court deferred its discussion of the specific
limitations of the claims until the second step of the analysis. Id.
at 1349.

With respect to that step, the court held that the claims disclosed
an “inventive concept,” consisting of “the installation of a
filtering tool at a specific location, remote from the end-users,
with customizable filtering features specific to each end user.”
Id. at 1350. The invention took advantage of the ability of some
Internet service providers to associate a request for Internet
content with a specific individual account. Exploiting that
capability, the invention was able to provide customized filtering
by locating the filtering system on the Internet service provider’s
server. The specificity of the technical solution provided by the
claims in BASCOM stands in sharp contrast to the absence of any
such specific technical solution in the claims of the '379 patent.

In applying the principles emerging from the developing body of
law on abstract ideas under section 101, this court has noted that
claims that are “so result-focused, so functional, as to effectively
cover any solution to an identified problem” are frequently held
ineligible under section 101. Elec. Power Grp., op. at 1356. That
is true in this case, as the claims are drafted in a way that would
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effectively cover any wireless delivery of out-of-region
broadcasting content to a cellular telephone via a network.

The only limitations on the breadth of the result-focused,
functional claims in this case are (1) that the application used by
the cellular telephone must be wirelessly downloadable, and (2)
that the cellular telephone must have a graphical user interface
display that allows the user to select the regional broadcasting
channel. Those additional limitations describe purely
conventional features of cellular telephones and the applications
that enable them to perform particular functions. They therefore
do not meaningfully limit the scope of the claims.
No other persuasive arguments having been presented, we conclude
that no error has been committed in the determination under Alice step two
that claim 1 does not include an element or combination of elements
circumscribing the patent-ineligible concept it is directed to so as to
transform the concept into an inventive application.
We have considered all of the Appellant’s arguments (including those
made in the Reply Brief) and find them unpersuasive.
Accordingly, because we are not persuaded as to error in the
determinations that representative claim 15, and claims 1–14 and 16–18
which stand or fall with claim 15, 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 F.
App’x 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.,
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788 F.3d at 1364; FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089,
1098 (Fed. Cir. 2016).

The rejection of claims 1–18 under 35 U.S.C. § 102(a)(2) as being
anticipated by Luna.
All the claims call for consideration of “past behaviors data” of a
receiver with respect to a plurality of communication applications in
selecting a communications application preferred by the receiver to deliver a
message.
The Examiner finds said consideration is described at “Fig. 1A; Fig. 1
F; Fig. 2A; Fig. 28; Figs. 3A-38; Fig. 5; Figs.10A; Fig. 108; Fig. 10C;
¶ [0074-0078]; ¶ [0136-0139]; ¶ [0140-0144]; ¶ [0194-0197].” Final Act. 23.
Specifically, the Examiner states that “Luna notes the user profiles list the
different users 191 and the tracked application types 192. The user behavior
habits 193 can be tracked for different applications/application types. The
application timing parameters 194 may be associated with the tracked
behavior/habit 193.” Id. (repeating the disclosure at paragraph 75 of Luna).
Appellant disagrees. According to Appellant, “Luna's system allocates
an optimized "bandwidth" in a wireless network for delivering messages to
the user based on the user's past behavior.” Appeal Br. 14. “[C]ontrary to the
assertion by the Examiner, Luna fails to teach, ‘in response to a
determination that first message is addressed for delivery to the receiver,
select a communications application preferred by the receiver to deliver the
first message to the receiver, . . . .’” Id. (quoting claim 1). Appellant adds
that “becoming aware of the mobile device’s radio states and deciding
whether the mobile device’s radio needs to be activated are unrelated to the
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mobile device's "past behaviors" data, as recited in claim 1 because the
radio's state is not a past behavior of the mobile device.” Reply Br. 10.
We have reviewed Luna. The record supports Appellant’s position.
We do not see Luna describing, expressly or inherently, using “past
behaviors data” of a receiver with respect to a plurality of communication
applications in selecting a communications application preferred by the
receiver to deliver a message. Rather, as Appellant indicates, Luna appears
to disclose, for example, employing a user’s usage habits/behaviors in
allocating resources to the user in a wireless network. See, e.g., para. 357
In process 2312, the resource allocated to the user in the
wireless network based on the user behavior is controlled with
respect to the mobile usage. In general, the resource is allocated
to the user for subsequent sessions of mobile usage, regardless of
whether the subsequent sessions occur on a same device as when
the user behavior was tracked for the user. In some instances,
resource allocation to the user may be device specific, provided
that the user has different usage habits/behaviors or
detectable.[sic]/trackable patterns for different devices.
Furthermore, as Appellant argues, the “past behaviors data” as
claimed refers to a receiver with respect to a plurality of communication
applications. By contrast, Luna’s user’s usage habits/behaviors refer to the
resources used with respect to a network. This is not the same thing.
There must be no difference between the claimed invention and the
reference disclosure, as viewed by a person of ordinary skill in the field of
the invention. Scripps Clinic & Research Found. v. Genentech Inc., 927 F.2d
1565, 1576 (Fed. Cir. 1991). Because of the aforementioned differences,
Luna does not anticipate the claimed subject matter.
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CONCLUSION
The decision of the Examiner to reject claims 1–18 is affirmed.
More specifically:
The rejection of claims 1–18 under 35 U.S.C. § 101 as being directed
to judicially-excepted subject matter is affirmed.
The rejection of claims 1–18 under 35 U.S.C. § 102(a)(2) as being
anticipated by Luna is reversed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–18 101 Eligibility 1–18
1–18 102 Luna 1–18
Overall
Outcome
1–18

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