INTERNATIONAL BUSINESS MACHINES CORPORATION

Patent Trials and Appeals Board

Sep 18, 2020

2020003061 (P.T.A.B. Sep. 18, 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.
15/639,417 06/30/2017 Lisa M. Wood Bradley RSW920090032US02 9947
75949 7590 09/18/2020
IBM CORPORATION
C/O: Fabian Vancott
215 South State Street
Suite 1200
Salt Lake City, UT 84111
EXAMINER
GILLS, KURTIS
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
09/18/2020 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):
patents@fabianvancott.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LISA M. WOOD BRADLEY,
TIMOTHY BRANTNER,
JASON M. BROWN, and
HELEN L. GAWOR

Appeal 2020-003061
Application 15/639,417
Technology Center 3600

Before HUBERT C. LORIN, NINA L. MEDLOCK, and
AMEE A. SHAH, 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 1–20.1 We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM IN PART but denominate that which we affirm as a
NEW GROUND of rejection.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies International Business Machines Corporation
as the real party in interest. Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The claimed subject matter relates generally to to-do lists. Spec.
para. 1. Claim 1, reproduced below with emphasis added, is illustrative of
the claimed subject matter:
l. A method for implementing an action-based to-do list,
comprising:
monitoring user actions with a personal management
device to compare the user actions against a task definition file,
which task definition file comprises a number of criteria which:
indicate completion of at least one task: and
are tracked and used to modify the action-based to
do list;
determining when the user actions fulfill a criteria [sic]
within the task definition file;
and
modifying the action-based to-do list with the personal
management device based on fulfilled criteria.
Appeal Br. 28 (Claims Appendix).
REFERENCES
The Examiner relies upon the following as evidence of
unpatentability:
Name Reference Date
James US 2008/0120616 A1 May 22, 2008
Saravanan US 2008/0141247 A1 June 12, 2008
REJECTIONS
Claims 1–20 are rejected under 35 U.S.C. § 101 as being directed to
judicially-excepted subject matter.
Claims 1–20 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Saravanan and James.
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OPINION
The rejection of claims 1–20 under 35 U.S.C. § 101 as being directed to
judicially-excepted subject matter.
Representative claim
The Appellant argues these claims as a group. See Appeal Br. 12–16.
We select claim 1 as the representative claim for this group, and claims 2–12
and 15–20 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv) (2018).
Preliminary comment
Appellant states: “it is unclear why a position is being proposed that is
contrary to the express position of the Board [in Appeal 2015-002683;
Application 12/492,941, now US 9,754,224 B2].” Appeal Br. 13. As for
claims 13 and 14, we agree. As for claims 1–12 and 15–20, we see no
contradiction between the Examiner’s position that claims 1–12 and 15–20
are patent ineligible and our position in the decision (Dec.) in the prior
appeal.
In our decision in Appeal 2015-002683, we reversed a rejection under
35 U.S.C. § 101. Representative claim 1 in that appeal read:
1. A method for implementing an action-based to-do list
comprises:
accessing a task definition file listing an external
application in which a to-do task on the action-based to-do list is
to be performed, in which the task definition file comprises a
number of criteria which are tracked and used to automatically
manipulate the action-based to-do list;
automatically configuring the external application within
the user’s computing environment to facilitate the user
accomplishing the to-do task;
monitoring, with a personal management device, user
actions within the external application;
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comparing, with the personal management device, the user
actions within the external application to the number of criteria
in the task definition file;
determining when the user actions within the external
application fulfill a criteria [sic] within the task definition file;
and
automatically modifying the to-do list with the personal
management device based on the fulfilled criteria.
Dec. 2.
Claim 13 in this appeal, reproduced below, appears to parallel said
representative claim 1:
13. A computer program product for implementing an action-
based to-do list comprising:
a non-transitory computer readable storage medium
having computer readable program code disposed thereon, the
computer readable program code comprising instructions to:
access a task definition file listing an external application
in which a to-do task on the action-based to-do list is to be
performed, in which the task definition file comprises a number
of criteria which:
indicate completion of at least one to-do task; and
are tracked and used to automatically manipulate
the action-based to-do list;
automatically configure the external application within the
user’s computing environment to facilitate the user
accomplishing the to-do task;
monitor, with a personal management device, user actions
within the external application;
compare, with the personal management device, the user
actions within the external application to the number of criteria
in the task definition file;
determine when the user actions within the external
application fulfill a criteria [sic] within the task definition file;
and automatically modify the to-do list with the personal
management device based on the fulfilled criteria.
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The Examiner does not separately explain why claim 13, which
appears to parallel claim 1 that we found patent eligible, is nevertheless
patent ineligible.
Accordingly, the rejection of claim 13, and claim 14 depending
therefrom, under § 101 is reversed for the reasons discussed in the decision
in Appeal 2015-002683.
As for claims 1–12 and 15–20, they do not parallel representative
claim 1 in Appeal 2015-002683.
We stated, in Appeal 2015-002683, that “the claims present an
unconventional technological solution (involving a task definition file;
configuring an external application, etc.).” Dec. 5.
Reading the claims in light of the Specification, it becomes
clear that the solution to the problem the inventors have sought
to overcome is rooted in technology; that is, via a task definition
file comprising a number of criteria; automatically configuring
the external application within the user’s computing
environment to facilitate a user accomplishing a to-do task;
monitoring, with a personal management device, user actions
within the external application; comparing, with the personal
management device, the user actions within the external
application to the number of criteria in the task definition file;
determining when the user actions within the external application
fulfill a criteria within the task definition file; and automatically
modifying the to-do list with the personal management device
based on the fulfilled criteria.
Id. at 4–5 (emphasis original).
Claims 1–12 and 15–20 here do not provide for “automatically
configuring the external application within the user’s computing
environment” and/or “automatically modifying the to-do list with the
personal management device” (emphases omitted).
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Accordingly, our discussion of representative claim 1 in the decision
in the prior appeal does not apply to claims 1–12 and 15–20.

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 1 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. 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 1 covers statutory subject
matter, the Examiner has raised a question of patent eligibility on the ground
that claim 1 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.” 2019
Revised 101 Guidance, 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.” Alice, 573 U.S.
at 218 (emphasis added).
The Examiner determined
[t]he claim(s) recite(s) the following abstract idea indicated by
non-boldface font and additional limitations indicated by
boldface font:
a non-transitory computer readable storage medium
having computer readable program code disposed thereon, the
computer readable program code comprising instructions to:
access a task definition file listing an external application in
which a to-do task on the action-based to-do list is to be
performed, in which the task definition file comprises a number
of criteria which; indicate completion of at least one to-do task;
and are tracked and used to automatically manipulate the action-
based to-do list; automatically configure the external
application within the user’s computing environment to facilitate
the user accomplishing the to-do task; monitor, with a personal
management device, user actions within the external
application; compare, with the personal management device,
the user actions within the external application to the number of
criteria in the task definition file; determine when the user
actions within the external application fulfill a criteria within the
task definition file; and automatically modify the to-do list with
the personal management device based on the fulfilled criteria.
Final Act. 6.
The Examiner’s characterization of the abstract idea to which the
claims are directed to simply duplicates what claim 13 recites. Because we
have already determined (in Appeal 2015-002683) that said recited subject
matter is patent eligible, it cannot be directed to an abstract idea.
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Furthermore, claim 1 is much broader than the “abstract idea” the
Examiner determined it to be directed to.
Be that as it may, as we will explain, claim 1 is directed to a scheme
for managing a to-do list, an abstract idea.
Appellant, on the other hand, argues that “Applicant’s specification is
replete with examples indicating how it improves the functioning of the
computer and/or technology.” Appeal Br. 15.
Accordingly, a dispute over whether claim 1 is directed to an abstract
idea is present. Specifically, is claim 1 directed to a scheme for managing a
to-do list or “improv[ing] the functioning of the computer and/or
technology” (Appeal Br. 15)?
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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 1 describes a “method for implementing an action-based to-do
list.” The method comprises three steps.
The first and third steps involve a “personal management device.” The
Specification exemplifies “computers, laptops, cell phones” as personal
management devices. Spec. para. 31. Accordingly, in light of the
Specification, “personal management device” is reasonably broadly
construed as covering a generic computer. The second step is not attached to
any device and therefore can be practiced mentally.

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 specification.’” Smart Sys.
Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1378 (Fed. Cir.
2017) (Linn, J. 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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The first step calls for “monitoring user actions . . . to compare the
user actions against a task definition file, which task definition file
comprises a number of criteria which: indicate completion of at least one
task: and are tracked and used to modify [an] action-based to do list.” The
Specification does not provide an express definition for “task definition file”
but illustrates said file on a display. See element 300 in Fig. 3. This step thus
covers comparing user actions to certain criteria on display.
The second step calls for “determining when the user actions fulfill a
criteria [sic] within the task definition file.” This step covers looking at the
displayed criteria to determine whether a user action fulfills a criterion.
The third step calls for “modifying the action-based to-do list . . .
based on fulfilled criteria.” This step covers modifying a to-do list based on
a user action fulfilling a displayed criterion.
Claim 1 is reasonably broadly construed as covering a method
employing a generic computer to perform a scheme for managing a to-do list
by comparing user actions to certain criteria on display, determining whether
a user action fulfills a criterion, and, if so, modifying the to-do list
accordingly.
This comports with the Specification.
According to the Specification,
[i]n managing tasks which occur in their day-to-day
schedules, people often use to-do lists. To-do lists describe the
various tasks that the individual or group needs to accomplish.
These to-do lists may take a variety of forms, including paper
and electronic lists. While such lists help prevent the user from
forgetting a task that needs to be performed, in many instances,
managing a to-do list can be time consuming and disruptive. The
user has to take the time to both add tasks to the list as they come
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up and to remove or update tasks on the list as they are fully or
partially completed.
Spec. para. 1. This is the problem the invention seeks to solve. Later, the
Specification discusses the solution:
This specification describes systems and methods of
managing a to-do list that monitor the actions of a user and
interpret these actions with respect to the items on a to-do list so
as to help create and manage the to-do list. In this way, the user
does not always have to manually add items to their to-do list,
and the user does not always need to mark items complete when
they are done because the system will keep track of actions that
constitute completion of at least some of the to-do tasks. The
system recognizes the actions of the user and how they relate to
the to-do list.
Id. at para. 21.
Given the method as claimed as reasonably broadly construed above
and in light of the Specification’s description of the objective of the
invention, i.e., to improve the managing of to-do lists, we reasonably
broadly construe claim 1 as being directed to a scheme for managing a to-do
list by comparing user actions to certain criteria on display, determining
whether a user action fulfills a criterion, and, if so, modifying the to-do list
accordingly. To put it more succinctly, claim 1 is directed to a scheme for
managing a to-do list.
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The Abstract Idea7
Above, where we reproduce claim 1, we identify in italics the
limitations we believe recite an abstract idea.8 Based on our claim
construction analysis (above), we determine that the identified limitations
describe a scheme for managing a to-do list. Managing to-do lists is a form
of managing personal behavior. It falls within the enumerated “[c]ertain
methods of organizing human activity” grouping of abstract ideas set forth in
the 2019 Revised 101 Guidance.9 2019 Revised 101 Guidance, 84 Fed. Reg.
at 52.

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
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).”
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We note that Appellant has challenged the Examiner’s assessment that
the “abstract idea” articulated by the Examiner is a “‘certain method[ ] of
organizing human activity including managing personal behavior or
relationships or interactions between people.’ (See final Action, p. 6).”
Appeal Br. 13. Given that Appellant would likely challenge our similar
assessment for the abstract idea we have articulated, we respond that we are
unpersuaded that managing to-do lists is not a form of managing personal
behavior, and thus falls in the Guidance’s “(b) Certain methods of
organizing human activity” grouping. Appellant argues that “[t]here is no
management, i.e., administration, control, etc. over any action/behavior of
the individual or group of individuals. Accordingly, the claims are not
directed to ‘managing personal behavior or relationships or interactions
between people.’” Appeal Br. 13–14. We disagree. A to-do list is a sort of
control over tasks long associated with efficient administration of personal
behavior. See also Accenture, 728 F.3d at 1339, 1342 (determining that
claims to automated methods for generating task lists to be performed by an
insurance organization were directed to a patent-ineligible abstract idea).

Id. at 52.
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Technical Improvement10 (Appellant’s Argument)
As we pointed out earlier, our characterization of what the claim is
directed to is different from the Examiner’s. Although “[a]n abstract idea
can generally be described at different levels of abstraction” (Apple, Inc. v.
Ameranth, Inc., 842 F.3d 1229, 1240, 1240–41 (Fed. Cir. 2016) (“The
Board’s slight revision of its abstract idea analysis does not impact the
patentability analysis.”)), here where Examiner’s articulation was previously
determined as not being an abstract idea and is not commensurate in scope
with what is now on appeal, our more germane characterization departs
significantly from that of the Examiner.
We have reviewed the record and are unpersuaded as to error in our
characterization of what claim 1 is directed to.
Appellant disagrees that claim 1 is directed to an abstract idea.
Appellant’s position is that claim 1 is directed to an improvement in the
functioning of a computer. In support thereof, Appellant directs our attention
to the Specification. “Applicant’s specification is replete with examples

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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indicating how it improves the functioning of the computer and/ or
technology.” Appeal Br. 15.
Three examples are given.
First,
paragraph [0001] of Appellant’s specification describes the
problem wherein “managing a to-do list can be time consuming
and disruptive” and that “with these lists there is no way to keep
track of task completion except for the user manually indicating
that they have fully or partially completed the task.” (Appellant’s
Specification, paragraphs [0001] and [0020]).
Appeal Br. 15.
Appellant does not explain how this disclosure shows claim 1 is
directed to an improvement in the functioning of a computer. If Appellant
means to suggest that, in contrast to manually managing to-do lists, claim 1
calls for automatic management, that is not reflected in the claim. Claim 1
does not limit performing the steps in an automatic fashion. It is broader
than that. Moreover, simply automating a manual process does not affect our
determination that claim 1 is directed to an abstract idea. Cf. Credit
Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1056 (Fed. Cir. 2017).
CAC suggests that the invention solves this problem because it
“provides software that allows computers to supplant and
enhance” the existing series of manual steps of securing
financing—“a task they were previously not configured to
perform.” CAC Opening Br. 28.

But merely “configur[ing]” generic computers in order to
“supplant and enhance” an otherwise abstract manual process is
precisely the sort of invention that the Alice Court deemed
ineligible for patenting. See Alice, 134 S. Ct. at 2357–59 (“[T]he
relevant question is whether the claims here do more than simply
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instruct the practitioner to implement the abstract idea . . . on a
generic computer.”); . . . .
Second,
[p]aragraph [0021] then describes how the present system
and method address this problem, specifically to:
monitor the actions of a user and interpret these actions
with respect to the items on a to-do list so as to help create
and manage the to-do list. In this way, the user does not
always have to manually add items to their to-do list, and
the user does not always need to mark items complete
when they are done because the system will keep track of
actions that constitute completion of at least some of the
to-do tasks.
(Appellant’s Specification, paragraph [0021]).
Appeal Br. 15.
Again, Appellant does not explain how this disclosure shows claim 1
is directed to an improvement in the functioning of a computer. If Appellant
means to suggest that, in contrast to manually managing to-do lists, claim 1
calls for automatic management, that is not reflected in the claim. And
moreover, simply automating a manual process does not affect our
determination that claim 1 is directed to an abstract idea.
Third,
[p]aragraph [0032] of Appellant’s Specification further
describes this solution. These paragraphs were particularly
referenced by the Board in its affirmance of patent eligibility of
the parent claims. Thus, the claimed invention improves a
computer or other technology.
Id.
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It is true that we referenced paragraph 32 of the Specification in
reversing the §101 rejection of the claims on appeal in 2015-002683. See
Dec. 4, reproduced below:
The Specification discusses how the system solves the
problem, as exemplified in Fig. 1.
The action-based to-do list assists a user in
remembering and accomplishing a variety of tasks.
According to one illustrative embodiment, the personal
management device contains a computer storage unit
which stores a task definition file. The task definition file
contains a number of criteria which can be tracked and
used to automatically manipulate the to-do list. The
processor of the personal management device monitors the
user’s actions and compares the user’s actions to the
criteria within the task definition file to determine if one
or more of the criteria have been fulfilled. If a criterion has
been met, the processor of the personal management
device then modifies the to-do list based on the fulfilled
criteria.
Para. 32. The claims are directed to such a system.
But the claims there on appeal reflected what is disclosed there.
Claim 1 here appeal does not. Claim 1 does not require a personal
management device to contain a computer storage unit which stores a task
definition file, automatic manipulation of the to-do list, or the personal
management device determining if one or more of the criteria have been
fulfilled. These limitations, now missing from claim 1, were critical to our
finding that “the solution to the problem the inventors have sought to
overcome is rooted in technology.” Dec. 4. We explained in detail what we
saw in representative claim 1 on appeal in 2015-002683 that rendered said
claim patent eligible. See id. at4–5. These limitations have been stripped
from claim 1 here on appeal, rendering the claim no longer rooted in
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computer technology so as to direct it away from being directed to an
abstract idea.
The three disclosures in the Specification Appellant relies upon do not
persuasively show that the claim is directed to an improvement in computer
functionality and are thus unpersuasive as to error in our determination that
the claim is directed to an abstract idea.
Appellant also contends that “the claims very clearly describe a
particular way to manage a to-do list which includes the use of a task
definition file which describes the completion criteria for a task. Others may
still manage a to-do list with or without the assistance of a task definition
file.” Appeal Br. 16.
Appellant does not explain and we do not understand from this
contention how the claim improves computer functionality. Accordingly,
said contention is unpersuasive as to error in our determination that the
claim is directed to an abstract idea.
For the foregoing reason, we do not find that the claim adequately
reflects an improvement in computer functionality.
The method as claimed describes, in very general terms, steps for
processing (via “monitoring,” “determining,” and “modifying” steps) certain
types of information, e.g., a to-do list. The method as claimed is not focused
on improving technology but on a scheme for managing a to-do list vis-a-vis
a task definition file. 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.”).
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We have carefully reviewed the claim. Per our previous claim
construction analysis, claim 1 is reasonably, broadly construed as covering a
scheme for managing a to-do list. We see no specific asserted improvement
in computer capabilities recited in the claim. Rather than being directed to
any specific asserted improvement in computer capabilities, the claim
supports the opposite view — that the claimed subject matter is directed to a
scheme for managing a to-do list.
The claim provides no additional structural details that would
distinguish any device required to be employed to practice the method as
claimed, such as the recited “personal management device,” from its generic
counterparts.11
With respect to the “monitoring,” “determining,” and “modifying”
steps, the Specification attributes no special meaning to any of these
operations, individually or in the combination, as claimed. In our view, these
are, at best, 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, [573 U.S. at 225 (quoting

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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Mayo, 566 U.S. at 73)] . . . . 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, [573 U.S. at 225 (quoting Mayo, 566 U.S. at 73])
(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 specification—is not even arguably inventive.”).
We find Appellant’s suggestion that the claim presents a computer-
improvement solution unpersuasive as to error in our characterization of
what the claim is directed to because the method as claimed fails to
adequately support it. We are unable to point to any claim language
suggestive of an improvement in computer functionality. An attorney
argument that such an improvement exists is alone insufficient. See
generally In re Glass, 474 F.2d 1015, 1019 (CCPA 1973); In re Pearson,
494 F.2d 1399, 1405 (CCPA 1974); In re De Blauwe, 736 F.2d 699, 705
(Fed. Cir. 1984); In re Schulze, 346 F.2d 600, 602 (CCPA 1965).
Accordingly, within the meaning of the 2019 Revised 101 Guidance,
we find there is no integration of the abstract idea into a practical
application.
We have considered Appellant’s other arguments as though they were
challenging our determination under step one of the Alice framework and
find them unpersuasive. For the foregoing reasons, the record supports our
determination that claim 1 is directed to an abstract idea.

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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
practice amounts to significantly more than a patent upon the [ineligible
concept] itself.’” Alice, 573 U.S. at 217–18 (quoting Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72–73 (2012)).
In that regard, the Examiner determined, inter alia, that “viewed as a
whole, these additional claim element(s) do not provide meaningful
limitation(s) to transform the abstract idea into a patent eligible application
of the abstract idea such that the claim(s) amounts to significantly more than
the abstract idea itself.” Final Act. 8.
In the context on what is claimed here on appeal, we agree.
We addressed the matter of whether the claim presented any purported
specific asserted computer improvements 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

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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or the second step of the Alice/Mayo [framework].” 2019 Revised 101
Guidance, 84 Fed. Reg. at 53.
Appellant’s arguments, discussed above, point to various disclosures
in the Specification discussing the problem and solution.
But the arguments do not explain in what way the method, as it is
claimed, provides a technical improvement. The arguments appear to rely on
the claim’s result-based functional language involving the management of a
to-do list.
Rather than being based on any technical details, the argument looks
to the very scheme for managing to-do lists that we have characterized as
being an abstract idea. In effect, such an argument posits that the abstract
idea is “not well-understood, routine or conventional.” That may be but
“[g]roundbreaking, innovative, or even brilliant discovery does not by itself
satisfy the § 101 inquiry.” Ass’n for Molecular Pathology, 569 U.S. at 591.
Cf. Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1315
(Fed. Cir. 2016).
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.
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The arguably unconventional nature of the abstract idea does not affect the
determination that the claim is directed to an abstract idea. The abstract idea
itself cannot amount to “‘significantly more than a patent upon the
[ineligible concept] itself.’” Alice, 573 U.S. at 218 (quoting Mayo, 566 U.S.
at 73), whether or not it is conventional.
We are unpersuaded that claim 1 presents an element or combination
of elements indicative of a specific asserted computer improvement, thereby
rendering the claimed subject matter sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon a scheme for
managing a to-do list.
We have reviewed the claim in light of the Specification and, as
explained above, we find the claimed subject matter insufficiently expresses
a computer improvement 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 “personal management device” as claimed is
conventional. See, e.g., Spec. para. 31. In doing so, we have adhered to the
“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”)).
Here, the Specification indisputably shows the recited “personal
management device” individually and in the context of managing a to-do list
as claimed was conventional at the time of filing. Accordingly, there is
sufficient factual support for the well-understood, routine, or conventional
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nature of the claimed “personal management device” individually or in the
combination as claimed.
No other persuasive arguments having been presented, we conclude
that no error has been committed in determining 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 a patent-eligible application.
We have considered all of 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
determination that representative claim 1, and claims 2–12, and 15–20 which
stand or fall with claim 1, 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.,
788 F.3d at 1364; FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089,
1098 (Fed. Cir. 2016).
However, our reasoning — especially as to the articulation of the
abstract idea — departs substantially from that of the Examiner.
Accordingly, although we affirm the Examiner’s decision that the claims are
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directed to patent-ineligible subject matter, we denominate our affirmance as
a new ground of rejection.

The rejection of claims 1–20 under 35 U.S.C. § 103(a) as being
unpatentable over Saravanan and James.
All the claims require a task definition file.
In that regard, the Examiner states (with respect to the claim 1
“monitoring” step that calls for a personal management device to compare
user actions against a task definition file) the following:
(¶0113 The capabilities of the Daily Planner user interface make
it ideally suited for basic delivery of elder care services. Consider
the following scenario. Your older parent wants to live alone
despite your protestations; you’re uncomfortable because you’re
living at a distance. He needs to take his medication three times
a day and it could get serious if he misses his medication. You
set up the Mediabee application on an inexpensive PC (or on a
consumer device licensed to run Mediabee application) in his
home similar to system 110 in FIG. 1. It reminds him of his
medication 3 times a day requiring that he acknowledge doing
so. You’re in between meetings at your office when you notice
that he didn’t take his medication in the afternoon -- so you call
him. It turns out that he’s not feeling well so you need to visit
him).
Final Act. 9.
We agree with Appellant that
nowhere in Saravanan is there anything at all similar to a task
definition file. That is, the task definition file in claim 1 includes
a number of criteria which “indicate completion of at least one
task” and which “are tracked and used to modify), the action-
based to do list.” (Claim 1). Saravanan does not include any sort
of a description of this type of task definition file. Again, turning
to the relied-on portions of Saravanan, what portion of the
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disclosure describes a file that indicates criteria to determine
when taking medication has been completed?
Appeal Br. 18.
We are unable to discern from the cited passage from the Specification what
the Examiner is relying on as evidence that Saravanan discloses the “task
definition file” as claimed. Neither the Final Action nor the Answer
elaborate. Even if one were to interpret Saravanan’s “Daily Planner User
Interface” (see Fig. 6 and associated disclosure at para. 72) as a “task
definition file,” there is also the matter of the “task definition file” having to
“compris[e] a number of criteria which: indicate completion of at least one
task: and are tracked and used to modify the action-based to do list” (claim
1). These additional limitations have not been adequately shown to be
disclosed in Saravanan or suggested by the combination of Saravanan and
James.
Given no other evidence that said “task definition file” is disclosed or
suggested by the cited prior art references, a prima facie case of obviousness
has not been made out in the first instance. The rejection of the claims is not
sustained.
CONCLUSION
In summary:
Claims
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed New
Ground
1–20 101 Eligibility 1–12,
15–20
13, 14 1–12,
15–20
1–20 103(a) Saravanan, James 1–20
Overall
Outcome
1–12,
15–20
13, 14 1–12,
15–20
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NEW GROUND
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” 37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment
of the claims so rejected or new Evidence relating to the claims
so rejected, or both, and have the matter reconsidered by the
examiner, in which event the prosecution will be remanded to
the examiner. . . .

(2) Request rehearing. Request that the proceeding be
reheard under §41.52 by the Board upon the same Record. . . .

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

AFFIRMED IN PART; 37 C.F.R. § 41.50(b)