Jackson, Peter et al.

Patent Trials and Appeals Board

Jul 14, 2020

11422281 - (D) (P.T.A.B. Jul. 14, 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.
11/422,281 06/05/2006 Peter Jackson 113027.000048US1 3961
79804 7590 07/14/2020
Duncan Galloway Egan Greenwald, PLLC
9625 Ormsby Station Road
Louisville, KY 40223
EXAMINER
RAVETTI, DANTE
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
07/14/2020 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):
carnold@dgeglaw.com
kduncan@dgeglaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PETER JACKSON and MARK A. BLUHM
____________

Appeal 2019-00957
Application 11/422,281
Technology Center 3600
____________

Before ANTON W. FETTING, BIBHU R. MOHANTY, and
PHILIP J. HOFFMANN, Administrative Patent Judges.

FETTING, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE1
Appellant2 seeks review under 35 U.S.C. § 134 of a final rejection of
claims 5–8 and 13–19, the only claims pending in the application on appeal.
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
The Appellant invented a way to facilitate the retrieval of open web
content from pay-for-access research systems. Specification 2:15–17.
An understanding of the invention can be derived from a reading of
exemplary claim 13, which is reproduced below (bracketed matter and some
paragraphing added).
13. A machine-readable medium for use in operating an
online pay-for-access legal research system, the medium
comprising instructions that when executed cause a computer to
perform steps for:
[1] receiving a user query for one of pay-for-access data and
non-pay-for-access data,
[2] receiving a signal representing a user selection of a primary
database, and
[3] automatically identifying a set of primary documents based
on the received user query and the selected primary database;
[4] determining the user query is for pay-for-access data and
upon such determination:

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed May 23, 2018) and Reply Brief (“Reply Br.,” filed November 14,
2018), and the Examiner’s Answer (“Ans.,” mailed September 14, 2018),
and Final Action (“Final Act.,” mailed October 13, 2017).
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Thomson
Reuters Global Resources Unlimited Company (Appeal Br. 1).

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[5] determining at least one non-pay-for-access database based
in part on the selected primary database and
[6] automatically identifying in the at least one non-pay-for-
access database a first set of secondary documents based on the
received user query;
and
[7] responding to the received user query by outputting search
results that include pay-for-access data from the set of primary
documents from the primary database and non-pay-for access
data from the first set of secondary documents from the at least
one non-pay-for-access database;
[8] determining the user query is for non-pay-for-access data
and upon such determination:
[9] determining at least one pay-for-access database based in
part on the selected primary database and automatically
identifying in the at least one pay-for-access database a second
set of secondary documents based on the received user query;
and
[10] responding to the received user query by outputting search
results that include pay-for-access data from the second set of
secondary documents or search results from the at least one
pay-for-access database, and non-pay for access data from the
primary set of documents from the primary database;
[11] wherein both the pay-for-access data and the non-pay-for-
access data represent content related to the received user query,
and
[12] wherein the outputted search results are provided in a
graphical user interface as a set of graphical user interface
elements.
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The Examiner relies upon the following prior art:
Name Reference Date
Larson US 2004/0267556 A1 Dec. 30, 2004
Weiner US 2006/0085741 A1 Apr. 20, 2006
Claims 5–8 and 13–19 stand rejected under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more.
Claims 5–8 and 13–19 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Larson and Weiner.
ISSUES
The issues of eligible subject matter turn primarily on whether the
claims recite more than abstract conceptual advice of results desired.
The issues of obviousness turn primarily on whether Larson describes
the steps in the independent claims.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to the Prior Art
Larson
01. Larson is directed to allowing newspapers to expose archival
content to popular search engines and to prevent revenue loss
from users utilizing the free newspaper content provided by public
libraries by allowing free access to archival content and charging a
fee for recent content. Larson para. 7.
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Weiner
02. Weiner is directed to graphical interfaces adapted to present
network based search results in a customizable multiple web page
window format. Weiner para. 1.
ANALYSIS
Claims 5–8 and 13–19 rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more
STEP 13
Claim 13, as a machine-readable medium claim, nominally recites one
of the enumerated categories of eligible subject matter in 35 U.S.C. § 101.
Claim 13 is drafted as such a medium with instructions for performing
method steps. No structural limitations are recited. Accordingly, in
substance, claim 13 is a method claim reciting a series of steps and we refer
to it as such in the remainder of the analysis. The issue before us is whether
it is directed to a judicial exception without significantly more.
STEP 2
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, . . .
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. If so, we then ask, “[w]hat
else is there in the claims before us? To answer that question, .
. . consider the elements of each claim both individually and “as
an ordered combination” to determine whether the additional
elements “transform the nature of the claim” into a patent-

3 For continuity of analysis, we adopt the steps nomenclature from 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) (“Revised Guidance”).
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eligible application. [The Court] described step two of this
analysis as 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 Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014) (citations
omitted) (citing Mayo Collaborative Servs. v. Prometheus Labs, Inc.,
566 U.S. 66 (2012)). To perform this test, we must first determine what the
claims are directed to. This begins by determining whether the claims recite
one of the judicial exceptions (a law of nature, a natural phenomenon, or an
abstract idea). Then, if the claims recite a judicial exception, determining
whether the claims at issue are directed to the recited judicial exception, or
whether the recited judicial exception is integrated into a practical
application of that exception, i.e., that the claims “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.” Revised Guidance, 84 Fed. Reg. at
54. If the claims are directed to a judicial exception, then finally
determining whether the claims provide an inventive concept because the
additional elements recited in the claims provide significantly more than the
recited judicial exception.
STEP 2A Prong 1
At a high level, and for our preliminary analysis, we note that method
claim 13 recites receiving query and selection data, identifying documents
based on the query and a related database, determining the query is for one
of two alternate criteria data, determining a database, identifying documents,
and outputting search results. The last three operations are recited under
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each of the two alternate criteria. Identifying and determining data are
rudimentary forms of analyzing data. Outputting search results is
conventional data processing and display. Thus, claim 13 recites receiving,
analyzing, processing, and displaying data. None of the limitations recite
technological implementation details for any of these steps, but instead recite
only results desired by any and all possible means.
From this we see that claim 13 does not recite the judicial exceptions
of either natural phenomena or laws of nature.
Under Supreme Court precedent, claims directed purely to an abstract
idea are patent in-eligible. As set forth in the Revised Guidance, which
extracts and synthesizes key concepts identified by the courts, abstract ideas
include (1) mathematical concepts4, (2) certain methods of organizing
human activity5, and (3) mental processes6. Among those certain methods
of organizing human activity listed in the Revised Guidance are commercial
or legal interactions. Like those concepts, claim 13 recites the concept of
operating an online pay-for-access legal research system. Specifically,
claim 13 recites operations that would ordinarily take place in advising one
to provide search results from both pay-for-access and non-pay-for-access

4 See, e.g., Gottschalk v. Benson, 409 U.S. 63, 71–72 (1972); Bilski v.
Kappos, 561 U.S. 593, 611 (2010); Mackay Radio & Telegraph Co. v. Radio
Corp. of Am., 306 U.S. 86, 94 (1939); SAP America, Inc. v. InvestPic, LLC,
898 F.3d 1161, 1163 (Fed. Cir. 2018).
5 See, e.g., Bilski, 561 U.S. at 628; Alice, 573 U.S. at 219-20; Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed Cir. 2014); Smart Sys.
Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1383 (Fed. Cir.
2017); In re Marco Guldenaar Holding B.V., 911 F.3d 1157, 1160–61 (Fed.
Cir. 2018).
6 See, e.g., Benson, 409 U.S. at 67; CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1371–72 (Fed. Cir. 2011); Intellectual Ventures I LLC
v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016).
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sources as primary and secondary sources. The advice to provide search
results from both pay-for-access and non-pay-for-access sources as primary
and secondary sources involves operating an online pay-for-access legal
research system, which is an economic act, and identifying in a pay-for-
access database a set of secondary documents, which is an act ordinarily
performed in the stream of commercial database commerce. For example,
claim 13 recites “operating an online pay-for-access legal research system,”
which is an activity that would take place whenever one is providing
commercial legal search services. Similarly, claim 1 recites “identifying in
the at least one pay-for-access database a second set of secondary
documents,” which is also characteristic of commercial database operation.
The Examiner determines the claims to be directed to solving search
queries. Final Act. 5. The preamble to claim 13 recites that it is for use in
operating an online pay-for-access legal research system. The steps in
claim 13 result in providing search results from both pay-for-access and non-
pay-for-access sources as primary and secondary sources absent any
technological mechanism other than a conventional computer for doing so.
As to the specific limitations, limitations 1 and 2 recite receiving data.
Limitations 3–10 recite generic and conventional analyzing, processing, and
displaying of commercial database data, which advise one to apply generic
functions to get to these results. Limitations 11 and 12 are not steps, but
descriptions of data attributes. The limitations thus recite advice for
providing search results from both pay-for-access and non-pay-for-access
sources as primary and secondary sources. To advocate providing search
results from both pay-for-access and non-pay-for-access sources as primary
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and secondary sources is conceptual advice for results desired and not
technological operations.
The Specification at column 2, lines 15–17 describes the invention as
relating to facilitating the retrieval of open web content from pay-for-access
research systems. Thus, all this intrinsic evidence shows that claim 13
recites operating an online pay-for-access legal research system. This is
consistent with the Examiner’s determination.
This in turn is an example of commercial or legal interactions as a
certain method of organizing human activity because operating an online
pay-for-access legal research system is a commercial enterprise. The
concept of operating an online pay-for-access legal research system by
providing search results from both pay-for-access and non-pay-for-access
sources as primary and secondary sources is one idea for obtaining such
documents. The steps recited in claim 13 are part of how this might
conceptually be premised.
Our reviewing court has found claims to be directed to abstract ideas
when they recited similar subject matter. Affinity Labs of Texas, LLC v.
Amazon.com Inc., 838 F.3d 1266, 1269 (2016) (delivering user-selected
media content); Content Extraction & Transmission LLC v. Wells Fargo
Bank, Nat’l Ass’n, 776 F.3d 1343, 1347 (2014)(data collection, recognition,
and storage); FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093
(Fed. Cir. 2016) (collecting and analyzing information).
Alternately, this is an example of concepts performed in the human
mind as mental processes because the steps of receiving, analyzing,
processing, and displaying data mimic human thought processes of
observation, evaluation, judgment, and opinion, perhaps with paper and
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pencil, where the data interpretation is perceptible only in the human mind.
See In re TLI Commc’ns LLC Patent Litig. 823 F.3d 607, 611 (Fed. Cir.
2016); FairWarning, 839 F.3d at 1093–94. Claim 13, unlike the claims
found non-abstract in prior cases, uses generic computer technology to
perform data reception, analysis, processing, and display and does not recite
an improvement to a particular computer technology. See, e.g., McRO, Inc.
v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314–15 (Fed. Cir. 2016)
(finding claims not abstract because they “focused on a specific asserted
improvement in computer animation”). As such, claim 13 recites receiving,
analyzing, processing, and displaying data, and not a technological
implementation or application of that idea.
From this we conclude that at least to this degree, claim 13 recites
operating an online pay-for-access legal research system by providing search
results from both pay-for-access and non-pay-for-access sources as primary
and secondary sources, which is a commercial and legal interaction, one of
certain methods of organizing human activity identified in the Revised
Guidance, and, thus, an abstract idea.
STEP 2A Prong 2
The next issue is whether claim 13 not only recites, but is more
precisely directed to this concept itself or whether it is instead directed to
some technological implementation or application of, or improvement to,
this concept i.e. integrated into a practical application.7
At the same time, we tread carefully in construing this
exclusionary principle lest it swallow all of patent law. At
some level, “all inventions . . . embody, use, reflect, rest upon,

7 See, e.g., Alice, 573 U.S. at 223, discussing Diamond v. Diehr, 450 U.S.
175 (1981).
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or apply laws of nature, natural phenomena, or abstract ideas.”
Thus, an invention is not rendered ineligible for patent simply
because it involves an abstract concept. “[A]pplication[s]” of
such concepts “ ‘to a new and useful end,’ ” we have said,
remain eligible for patent protection. Accordingly, in applying
the § 101 exception, we must distinguish between patents that
claim the “ ‘buildin[g] block[s]’ ” of human ingenuity and those
that integrate the building blocks into something more.
Alice, 573 U.S. at 217 (citations omitted).
Taking the claim elements separately, the operation performed by the
computer at each step of the process is expressed purely in terms of results,
devoid of implementation details. Steps 1 and 2 are pure data gathering
steps. Limitations describing the nature of the data do not alter this.
Steps 3–10 recite generic computer processing expressed in terms of results
desired by any and all possible means and so present no more than
conceptual advice. Limitations 11 and 12 are not steps, but descriptions of
data attributes. All purported inventive aspects reside in how the data is
interpreted and the results desired, and not in how the process physically
enforces such a data interpretation or in how the processing technologically
achieves those results.
Viewed as a whole, Appellant’s claim 13 simply recites the concept of
operating an online pay-for-access legal research system by providing search
results from both pay-for-access and non-pay-for-access sources as primary
and secondary sources as performed by a generic computer. This is no more
than conceptual advice on the parameters for this concept and the generic
computer processes necessary to process those parameters, and do not recite
any particular implementation.
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Claim 13 does not, for example, purport to improve the functioning of
the computer itself. Nor does it affect an improvement in any other
technology or technical field. The 17+ pages of specification do not bulge
with disclosure, but only spell out different generic equipment8 and
parameters that might be applied using this concept and the particular steps
such conventional processing would entail based on the concept of operating
an online pay-for-access legal research system by providing search results
from both pay-for-access and non-pay-for-access sources as primary and
secondary sources under different scenarios. They do not describe any
particular improvement in the manner a computer functions. Instead,
claim 13 at issue amounts to nothing significantly more than an instruction
to apply operating an online pay-for-access legal research system by
providing search results from both pay-for-access and non-pay-for-access
sources as primary and secondary sources using some unspecified, generic
computer. Under our precedents, that is not enough to transform an abstract
idea into a patent-eligible invention. See Alice, 573 U.S. at 225–26.
None of the limitations reflect an improvement in the functioning of a
computer, or an improvement to other technology or technical field, applies
or uses a judicial exception to effect a particular treatment or prophylaxis for
a disease or medical condition, implements a judicial exception with, or uses
a judicial exception in conjunction with, a particular machine or manufacture
that is integral to the claim, effects a transformation or reduction of a
particular article to a different state or thing, or applies or uses the judicial

8 The Specification describes a personal computer, workstation, personal
digital assistant, mobile telephone, or any other device capable of
providing an effective user interface with a server or database. Spec.
8:24–27.
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exception in some other meaningful way beyond generally linking the use of
the judicial exception to a particular technological environment, such that
the claim as a whole is more than a drafting effort designed to monopolize
the exception.
We conclude that claim 13 is directed to achieving the result of
operating an online pay-for-access legal research system by advising one to
provide search results from both pay-for-access and non-pay-for-access
sources as primary and secondary sources, as distinguished from a
technological improvement for achieving or applying that result. This
amounts to commercial or legal interactions, which fall within certain
methods of organizing human activity that constitute abstract ideas. The
claim does not integrate the judicial exception into a practical application.
STEP 2B
The next issue is whether claim 13 provides an inventive concept
because the additional elements recited in the claim provide significantly
more than the recited judicial exception.
The introduction of a computer into the claims does not generally alter
the analysis at Mayo step two.
the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea “while adding the words ‘apply it’” is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological environment.’”
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implement[t]” an abstract
idea “on . . . a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the preemption
concern that undergirds our § 101 jurisprudence. Given the
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ubiquity of computers, wholly generic computer
implementation is not generally the sort of “additional
feature[e]” that provides any “practical assurance that the
process is more than a drafting effort designed to monopolize
the [abstract idea] itself.”
Alice, 573 U.S. at 223–24 (citations omitted).
“[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea [] on a generic
computer.” Alice, 573 U.S. at 225. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer for receiving, analyzing, processing, and displaying data amounts
to electronic data query and retrieval—one of the most basic functions of a
computer. Limitations 11 and 12 are not steps, but descriptions of data
attributes. All of these computer functions are generic, routine, conventional
computer activities that are performed only for their conventional uses. See
Elec. Power Grp. LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016).
See also In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303,
1316 (Fed. Cir. 2011) (“Absent a possible narrower construction of the terms
‘processing,’ ‘receiving,’ and ‘storing,’ . . . those functions can be achieved
by any general purpose computer without special programming”). None of
these activities is used in some unconventional manner nor does any produce
some unexpected result. Appellant does not contend it invented any of these
activities. In short, each step does no more than require a generic computer
to perform generic computer functions. As to the data operated upon, “even
if a process of collecting and analyzing information is ‘limited to particular
content’ or a particular ‘source,’ that limitation does not make the collection
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and analysis other than abstract.” SAP America, Inc. v. InvestPic LLC, 898
F.3d 1161, 1168 (Fed. Cir. 2018).
Considered as an ordered combination, the computer components of
Appellant’s claim 13 add nothing that is not already present when the steps
are considered separately. The sequence of data reception-analysis-
processing-display is equally generic and conventional. See Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (sequence of
receiving, selecting, offering for exchange, display, allowing access, and
receiving payment recited an abstraction), Inventor Holdings, LLC v. Bed
Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017) (sequence of
data retrieval, analysis, modification, generation, display, and transmission),
Two-Way Media Ltd. v. Comcast Cable Communications, LLC, 874 F.3d
1329, 1339 (Fed. Cir. 2017) (sequence of processing, routing, controlling,
and monitoring). The ordering of the steps is therefore ordinary and
conventional.
We conclude that claim 13 does not provide an inventive concept
because the additional elements recited in the claim do not provide
significantly more than the recited judicial exception.
REMAINING CLAIMS
Claim 13 is representative. The remaining dependent claims merely
describe process parameters. We conclude that the method claims (albeit
drafted as machine-readable medium claims) at issue are directed to a
patent-ineligible concept itself, and not to the practical application of that
concept.
As to the structural claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
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computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long “warn[ed] . . . against” interpreting §
101“in ways that make patent eligibility ‘depend simply on the
draftsman’s art.”’
Alice, 573 U.S. at 226. As a corollary, the claims are not directed to any
particular machine.
LEGAL CONCLUSION
From these determinations we further determine that the claims do not
recite an improvement to the functioning of the computer itself or to any
other technology or technical field, a particular machine, a particular
transformation, or other meaningful limitations. From this we conclude the
claims are directed to the judicial exception of the abstract idea of certain
methods of organizing human activity as exemplified by the commercial and
legal interaction of operating an online pay-for-access legal research system
by advising one to provide search results from both pay-for-access and non-
pay-for-access sources as primary and secondary sources, without
significantly more.
APPELLANT’S ARGUMENTS
As to Appellant’s Appeal Brief arguments, we adopt the Examiner’s
determinations and analysis from Final Action 4–8 and Answer 4–7 and
reach similar legal conclusions. We now turn to the Reply Brief.
We are not persuaded by Appellant’s argument that the claim 13
is tied to specific improvements in the functioning of a
computer. Unlike claims found to be directed towards abstract
ideas, claim 13 is not directed to a patent ineligible concept and
actually improves the functioning of a computer and existing
technology. Claim 13 specifically solves the technical problem
of processing user entered queries against a plurality of
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different database types in a networked computer system
including the identification of the type of query to be executed
on the plurality of databases. The determination of the query
type and the identification of the appropriate database upon
which to execute the query enables the system to identify
another database of a different type on which to execute the
same query in a parallel manner. Identifying databases and
executing the query in this manner provides improved search
results compared to systems and methods of the prior art by
returning search results that are relevant to the query but
otherwise would not have been identified. By identifying
search results in a database not selected by a user, e.g.,
identifying documents in a pay-for-access database when the
user has specified a non-pay-for-access database, the system
can identify and present a more complete and relevant result set
than if the search was confined only to the database specified
by the user.
Reply Br. 2. Claim 13 does not recite how to process user entered queries
against different database types or identify the type of query to be executed
other than to alter the order of querying pay for access and non-pay for
access databases after somehow determining whether the query is for one or
the other. Claim 13 does not recite how this determination is made. Such
selection of order of querying is not a solution to any technical problem, but
merely a convention to follow in a commercial context. Similarly, retrieving
results from some database not chosen by the user is no more than extending
the scope of a search domain, analogous to what librarians did long before
computers.
We are not persuaded by Appellant’s argument that the claims are
analogous to those in Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed.
Cir. 2016). Reply Br. 2–3. The claims differ from those found patent
eligible in Enfish, where the claims were “specifically directed to a self-
referential table for a computer database.” 822 F.3d 1327, 1337 (Fed. Cir.
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2016). The claims thus were “directed to a specific improvement to the
way computers operate” rather than an abstract idea implemented on a
computer. Id. at 1336. Here, by contrast, the claims are not directed to
an improvement in the way computers operate. Though the claims
purport to accelerate and improve the accuracy of the process of searching,
our reviewing court has held that speed and accuracy increases stemming
from the ordinary capabilities of a general purpose computer “do[] not
materially alter the patent eligibility of the claimed subject matter.”
Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d
1266, 1278 (Fed. Cir. 2012). Instead, the claims are more analogous to
those in FairWarning, supra, wherein claims reciting “a few possible rules
to analyze audit log data” were found directed an abstract idea because
they asked “the same questions (though perhaps phrased with different
words) that humans in analogous situations detecting fraud have asked for
decades.” 839 F.3d at 1094, 1095.
Appellant also attempts to analogize the claims to those involved in
McRO, supra. Reply Br. 2–3. In McRO, the court held that, although the
processes were previously performed by humans, “the traditional process
and newly claimed method . . . produced . . . results in fundamentally
different ways.” FairWarning, 839 F.3d at 1094 (differentiating the
claims at issue from those in McRO). In McRO, “it was the incorporation
of the claimed rules not the use of the computer, that improved the
existing technology process,” because the prior process performed by
humans “was driven by subjective determinations rather than specific,
limited mathematical rules.” 837 F.3d at 1314 (internal quotation marks,
citation, and alterations omitted). In contrast, the claims of the instant
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application merely implement an old practice of using decision criteria in
making sales decisions in a new environment. Appellant has not argued that
the claimed processes of selecting products apply rules of selection in a
manner technologically different from those which humans used, albeit with
less efficiency, before the invention was claimed. Merely pigeon holing the
objects of decision making in tiers to aid decision making is both old and
itself abstract.
The claims in McRO were not directed to an abstract idea, but
instead were directed to “a specific asserted improvement in
computer animation, i.e., the automatic use of rules of a
particular type.” We explained that “the claimed improvement
[was] allowing computers to produce ‘accurate and realistic lip
synchronization and facial expressions in animated characters’
that previously could only be produced by human animators.”
The claimed rules in McRO transformed a traditionally
subjective process performed by human artists into a
mathematically automated process executed on computers.
FairWarning, 839 F.3d at 1094 (differentiating the claims at issue from
those in McRO).
Appellants cite Berkheimer for the proposition that evidence of
something being conventional is necessary. Berkheimer v. HP Inc.,
881F.3d1360 (Fed. Cir. 2018). Reply Br. 3. Support for this finding is
provided under Step 2B supra.
We are not persuaded by Appellant’s argument that
the claimed invention processes information within a
specifically recited technological environment and uses special
purpose computer elements and data processing techniques to
process a user query, determine appropriate databases, identify
relevant electronic data and data types, and present the results
of searching a plurality of databases to a user in a specific
graphical user interface, all of which improves the functioning
of a computer.
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Reply Br. 4. Choice of context cannot confer eligibility. “The Supreme
Court and this court have repeatedly made clear that merely limiting the
field of use of the abstract idea to a particular existing technological
environment does not render the claims any less abstract.” Affinity Labs of
Texas, LLC v. DirecTV, LLC, 838 F.3d 1253, 1258 (Fed. Cir. 2016). No
special purpose computer elements are recited. Indeed the Specification
says that a personal computer, workstation, personal digital assistant,
mobile telephone may be used. See footnote 8 supra. The recited
graphical user interface is recited as a generic such interface.
Appellants argue that the asserted claims are akin to the claims
found patent-eligible in Finjan, Inc. v. Blue Coat System, Inc., 879 F.3d
1299 (Fed. Cir. 2018). Reply Br. 4. In Finjan, the Court held that claims to
a “behavior-based virus scan” were a specific improvement in computer
functionality and hence not directed to an abstract idea. 879 F.3d at 1304.
The claimed technique of scanning enabled “more flexible and nuanced
virus filtering” and detection of potentially dangerous code. Id. This was
done by “scanning a downloadable and attaching the results of that scan to
the downloadable itself in the form of a ‘security profile.’” Id. At 1303. The
security profile included the information about potentially hostile operations
produced by a “behavior-based” virus scan, as distinguished from
traditional, “code-matching” virus scans that are limited to recognizing the
presence of previously-identified viruses, typically by comparing the code in
a downloadable to a database of known suspicious code. Id. At 1304. This
behavior-based scan was a new type of file that when attached to a
downloadable allowed the computer to do more to protect itself than in the
past.
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The instant claims present no such new type of processing to create a
file that improves computer performance. Instead, the claims are
conventional data processing of for-payment data. They may improve the
information retrieved, but this is not an improvement to the computer.

Claims 5–8 and 13–19 rejected under 35 U.S.C. § 103(a) as unpatentable
over Larson and Weiner
We are persuaded by Appellant’s argument that Larson does not
describe the steps recited in the independent claims. Reply Br. 6. At best,
Larson describes providing both for pay and not for pay databases from
which search query results may be obtained. But it does not describe the
steps recited in the claims for submitting those queries. As Appellant
argues, the Examiner asserts the claims do so without any supporting
analysis. The Examiner instead says Larson allows the steps, which is
another way of saying the claim could be practiced. Ans. 9. Such a finding
is nearly always fatal to a rejection. “Obviousness concerns whether a
skilled artisan not only could have made but would have been motivated to
make the combinations or modifications of prior art to arrive at the claimed
invention.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (2015).

CONCLUSIONS OF LAW
The rejection of claims 5–8 and 13–19 under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more is proper.
The rejection of claims 5–8 and 13–19 under 35 U.S.C. § 103(a) as
unpatentable over Larson and Weiner is improper.
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CONCLUSION
The rejection of claims 5–8 and 13–19 is affirmed.
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
5–8, 13–19 101 Eligibility 5–8, 13–19
5–8, 13–19 103 5–8, 13–19
Overall Outcome 5–8, 13–19

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) (2011).

AFFIRMED