Jose Emir. Garza et al.

Patent Trials and Appeals Board

Sep 23, 2019

12108545 - (D) (P.T.A.B. Sep. 23, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/108,545 04/24/2008 Jose Emir Garza GB920070049US1
8152-0101
1833
73109 7590 09/23/2019
Cuenot, Forsythe & Kim, LLC
20283 State Road 7
Ste. 300
Boca Raton, FL 33498
EXAMINER
YUN, CARINA
ART UNIT PAPER NUMBER
2194
NOTIFICATION DATE DELIVERY MODE
09/23/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOSE EMIR GARZA, STEPHEN JAMES HOBSON,
and PETER SIDDALL
____________

Appeal 2018-008901
Application 12/108,545
Technology Center 2100
____________

Before JEFFREY S. SMITH, JOHN A. EVANS, and CHRISTA P. ZADO,
Administrative Patent Judges.

EVANS, Administrative Patent Judge.

DECISION ON APPEAL
Appellants1 seek our review under 35 U.S.C. § 134(a) of the
Examiner’s Final Rejection of 49–66, which constitute all the claims
pending in this application. App. Br. 1. Claims 1–48 have been canceled.
Id. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.2

1 Appellants state the International Business Machines Corporation is the
real party in interest. App. Br. 1.
2 Rather than reiterate the arguments of Appellants and the Examiner, we
refer to the Appeal Brief (filed May 7, 2018, “App. Br.”), the Reply Brief
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STATEMENT OF THE CASE
The claims relate to a method of messaging between two computer
systems. See Abstract.
Invention
Claims 49, 55, and 61 are independent. An understanding of the
invention can be derived from a reading of Claim 49, which is reproduced
below.
49. A computer-implemented method within a first
messaging computer system configured to interact with a
shared storage device separate from the first messaging
computer system, comprising:
transmitting, by a first application within the first
messaging computer system, a message to the shared storage
device;
intercepting, prior to being received into the shared
storage device, the message;
generating, responsive to a size of the message having
exceeded a predetermined threshold, a pointer for the message;
storing the pointer in the shared storage device; and
storing the message in a first log owned by the first
messaging application, wherein
the first log is accessible by a second messaging
application within a second messaging computer system
separate from the first messaging computer system, and

(filed September 18, 2018, “Reply Br.”), the Examiner’s Answer (mailed
July 20, 2018, “Ans.”), the Final Action (mailed December 5, 2017, “Final
Act.”), and the Specification (filed April 24, 2008, “Spec.”) for their
respective details.
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access rights to the first log by the first messaging
application are greater than access rights to the first log by the
second messaging application.

References and Rejections3
Imamura et al. (“Imamura”) US 5,781,741 July 14, 1998
Miller US 6,915,457 B1 July 5, 2005
Rooke et al. (“Rooke”) US 2007/0288564 A1 Filed Aug. 31, 2006
Flaherty et al. (“Flaherty”) US 2006/0200516 A1 Sept. 7, 2006

1. Claims 49–66 stand rejected under 35 U.S.C. § 112 (1st ¶), as failing
to comply with the written description requirement. Final Act. 3.
2. Claims 49–66 stand rejected under 35 U.S.C. § 112 (2nd ¶), as
indefinite. Final Act. 4.
3. Claims 49–66 stand rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more. Final Act. 5.
4. Claims 49–51, 55–57, and 61–63 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Flaherty and Miller. Final Act. 6–
9.
5. Claims 52, 54, 58, 60, 64, and 66 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Flaherty, Miller, and Imamura.
Final Act. 9–10.

3 The present Application is being examined under the pre-AIA first to
invent provisions. Final Act. 2.
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6. Claims 53, 59, and 65 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Flaherty, Miller, and Rooke. Final Act. 10–
11.
ANALYSIS

We have reviewed the rejections of Claims 49–66 in light of
Appellants’ arguments. We consider Appellants’ arguments as they are
presented in the Appeal Brief, pages 6–32 and the Reply Br., pages 1–16.
For the reasons that follow, we are persuaded the Examiner has erred.

CLAIMS 49–66: WRITTEN DESCRIPTION AND INDEFINITENESS.
With respect to written description, Appellants state Claims 50–66
stand or fall with Independent Claim 49. App. Br. 6. R. 52. With respect to
indefiniteness, Appellants state Claims 50–54 and 56–66 stand or fall with
Independent Claim 49 and Claim 55 stands or falls alone. App. Br. 10.

A first log owned by a first messaging application.
Independent Claims 49, 55, and 61, recite, inter alia, “storing the
message in a first log owned by the first messaging application.” The
Examiner finds the Specification describes the first log being associated with
the first application, but does not describe the first log as being owned by the
first application. Final Act. 3 (Citing Spec., ¶ 22).
Appellants contend support for the recitation “owned” is present in the
original Specification. App. Br. 6 (quoting Spec., ¶ 23)(“[a] messaging
application typically has read/write access to its own log.”).
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The Examiner finds the Specification discloses “the first messaging
application has an associated first log and the first log ‘owned’ by the first
messaging application.” Ans. 13. The Examiner finds the disclosure of
“own” to mean an application is in possession of, i.e., “owns” an association
to a log, but does not own the log, itself. Id.
The Specification discloses: “A messaging application typically has
read/write access to its own log.” Spec., ¶ 23. Appellants contend that in
the disclosure, the word ‘“own” clearly and unambiguously modifies the log
(i.e., ‘own log’) - not an association.” Reply Br. 3.
We agree with Appellants and find a person of skill in the art would
understand the application “owns” a log, not an association. Figure 1
depicts first computer system (105) and second computer system (125).
Appellants disclose first computer system (105) comprises a first application
(110), a first messaging application (115) (e.g. comprising a queue manager)
and apparatus (117). Spec., ¶ 17. Appellants disclose second computer
system (125) comprises a second application (130), a second messaging
application (135) (e.g. comprising a queue manager), and may also comprise
an apparatus. Id. Appellants disclose the first messaging application (115)
has an associated first log (140) and the second messaging application (135)
has an associated second log (145). Spec., ¶ 23. But Appellants distinguish
the two types of association by disclosing [a] messaging application
typically has read/write access to its own log (shown with a solid line in FIG.
1) and read only access to a log associated with another messaging
application (shown with a dashed line in FIG. 1). Spec., ¶ 23 (emphasis
added). Appellant discloses a messaging application can thus read data from
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a log of another messaging application. Id. Thus, we find, first log (140) is
associated with, and owned by first messaging application (115) and second
log (145) is associated with, and owned by second messaging application
(135).
Access rights.
The Examiner finds Claims 49, 50, 55, 56, 61, and 62 recite, inter
alia, “access rights to the first log by the first messaging application are
greater than access rights to the first log by the second messaging
application,” but that the Specification does not describe access rights of the
first application being greater than the second application. Final Act. 3.
Appellants contend the accused recitation is supported by original
disclosure. App. Br. 6 (quoting Spec., ¶ 23)(“[a] messaging application
typically has read/write access to its own log . . . and read only access to a
log associated with another messaging application.”).
The Examiner finds the Specification does not specifically state that
“greater” means “read/write” access. Ans. 14.
We disagree with the Examiner and find a person of ordinary skill in
the art would understand that an application that had read/write access to a
log would have “greater” access to that log than would an application
limited to read-only access.
In view of the foregoing, we decline to sustain the rejection of Claims
49–66, either as lacking written description or as being indefinite.
Transitory media.
The Examiner finds Claim 55 (and claims dependent therefrom)
recites a product claim containing a computer usable storage device which
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may be interpreted as having both transitory and non-transitory
embodiments. Final Act. 4. The Examiner finds a transitory embodiment is
directed to non-statutory subject matter. Id.
Claim 55 recites, inter alia, “a computer usable storage device.”
Appellants cite Ex parte Lance for the proposition that: “the broadest
reasonable interpretation of a computer readable storage memory is a
computer readable storage device, and that claim 20 is therefore an article of
manufacture directed to statutory subject matter.” App. Br. 13 (quoting Ex
parte Lance, Appeal No. 2014/007071, Application 12/625,044, slip op. 5
(October 21, 2016)).
We agree with Appellants. The IEEE defines “device” in terms of
hardware, e.g., “[a] hardware unit that is capable of performing some
specific function” and [a] mechanism or piece of equipment designed to
serve a purpose or perform a function.” IEEE 100 The Authoritative
Dictionary of IEEE Standards Terms, 7th Ed., D297, IEEE (2000). We find a
person of ordinary skill in the computer arts would understand the claimed
“computer usable storage device” to refer to a unit of hardware and not to an
evanescent, transitory thing.
In view of the foregoing, we decline to sustain the rejection of Claims 49–66
under 35 U.S.C. § 112 (either 1st or 2nd ¶).

CLAIMS 49–66: INELIGIBLE SUBJECT MATTER.
Appellants state Claims 50–66 stand or fall with Independent Claim
49. App. Br. 17. R. 63. Therefore, we decide the appeal of the § 101
rejections with reference to Claim 49 and refer to the rejected claims
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collectively herein as “the claims.” See 37 C.F.R. § 41.37(c)(1)(iv); see also
In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
PRINCIPLES OF LAW
A. 35 U.S.C. § 101
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.4
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. Mayo Collaborative Services v. Prometheus
Labs., Inc., 566 U.S. 66, 70 (2012) (citing Diamond v. Diehr, 450 U.S. 175,
185 (1981)).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014)
(citing Mayo, 566 U.S. at 75–77). In accordance with that framework, we
first determine what concept the claim is “directed to.” See Alice, 573 U.S.
at 219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4

4 This threshold analysis of whether a claim is directed to one of the four
statutory categories of invention, i.e., a process, machine, manufacture, or
composition of matter, is referred to as “Step 1” in the patent-eligibility
inquiry under 35 U.S.C. § 101.
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in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; see also Bilski, 561 U.S. at
611); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95
(1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 67
(1972)). Concepts determined to be patent eligible include physical and
chemical processes, such as “molding rubber products” (Diehr, 450 U.S. at
191); “tanning, dyeing, making water-proof cloth, vulcanizing India rubber,
smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. (15
How.) 252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at
69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held “a claim drawn to subject matter otherwise statutory
does not become nonstatutory simply because it uses a mathematical
formula.” Diehr, 450 U.S. at 187, 191 (“We view respondents’ claims as
nothing more than a process for molding rubber products and not as an
attempt to patent a mathematical formula.”). Having said that, the Supreme
Court also indicated that a claim “seeking patent protection for that formula
in the abstract . . . is not accorded the protection of our patent laws, and this
principle cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment.” Id. at 191 (citing
Benson and Flook), 187 (“It is now commonplace that an application of a
law of nature or mathematical formula to a known structure or process may
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well be deserving of patent protection.”).
Abstract ideas may include, but are not limited to, fundamental
economic practices, methods of organizing human activities, and
mathematical formulas or relationships. Alice, 573 U.S. at 217–21. Under
this guidance, we must therefore ensure at step one that we articulate what
the claims are directed to with enough specificity to ensure the step one
inquiry is meaningful. Id. at 217 (“[W]e tread carefully in construing this
exclusionary principle lest it swallow all of patent law.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (citation omitted). “A claim
that recites an abstract idea must include ‘additional features’ to ensure ‘that
the [claim] is more than a drafting effort designed to monopolize the
[abstract idea].’” Id. (quoting Mayo, 566 U.S. at 77 (alteration in original)).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
B. United States Patent and Trademark Office Revised Guidance5
The USPTO recently published revised guidance in the Federal
Register concerning the application of § 101.

5 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(January 7, 2019) (hereinafter “Revised Guidance,” or “Rev. Guid.”)
(https://www.govinfo.gov/content/pkg/FR-2019-01-07/pdf/2018-28282.pdf).
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Under the Revised Guidance, we first look to whether the claim
recites:
(1) any judicial exceptions, including certain
groupings of abstract ideas (i.e., mathematical concepts,
certain methods of organizing human activity such as a
fundamental economic practice, or mental processes);6 and
(2) additional elements that integrate the judicial
exception into a practical application (see Manual for
Patent Examining Procedure (“MPEP”) §§ 2106.05(a)–(c),
(e)–(h)).7
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial
exception that are not “well-understood, routine,
conventional” in the field (see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine,
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial
exception.8
See Revised Guidance.

6 Referred to as “Revised Step 2A, Prong 1” in the Revised Guidance
(hereinafter “Step 2A(i)”).
7 Referred to as “Revised Step 2A, Prong 2” in the Revised Guidance
(hereinafter “Step 2A(ii)”).
8 Items (3) and (4) continue to be collectively referred to as “Step 2B” of the
Supreme Court’s two-step framework, described in Mayo and Alice.
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Step 2A(i) — Abstract Idea
Informed by our judicial precedent, the Revised Guidance extracts and
synthesizes key concepts identified by the courts as abstract ideas to explain
that the abstract idea exception includes the following groupings of subject
matter, when recited as such in a claim limitation:
(a) Mathematical concepts—mathematical
relationships, mathematical formulas or equations,
mathematical calculations;
(b) Certain methods of organizing human activity —
fundamental economic principles or practices (including
hedging, insurance, mitigating risk); commercial or legal
interactions (including agreements in the form of
contracts; legal obligations; advertising, marketing or sales
activities or behaviors; business relations); managing
personal behavior or relationships or interactions between
people (including social activities, teaching, and following
rules or instructions); and
(c) Mental processes—concepts performed in the
human mind (including an observation, evaluation,
judgment, opinion).
Under the Revised Guidance, if the claim does not recite a judicial
exception (a law of nature, natural phenomenon, or subject matter within the
enumerated groupings of abstract ideas above), then the claim is patent-
eligible at Step 2A(i). This determination concludes the eligibility analysis,
except in rare situations identified in the Revised Guidance.9

9 In the rare circumstance in which an Examiner believes a claim limitation
that does not fall within the enumerated groupings of abstract ideas should
nonetheless be treated as reciting an abstract idea, the procedure described in
of the Guidance for analyzing the claim should be followed. See Guidance,
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However, if the claim recites a judicial exception (i.e., an abstract idea
enumerated above, a law of nature, or a natural phenomenon), the claim
requires further analysis for a practical application of the judicial exception
in Step 2A(ii).
Step 2A(ii) — Practical Application
If a claim recites a judicial exception in Step 2A(i), we determine
whether the recited judicial exception is integrated into a practical
application of that exception in Step 2A(ii) by: (a) identifying whether there
are any additional elements recited in the claim beyond the judicial
exception(s); and (b) evaluating those additional elements individually and
in combination to determine whether they integrate the exception into a
practical application.
The seven identified “practical application” sections of the MPEP,10
cited in the Revised Guidance under Step 2A(ii), are:
(1) MPEP § 2106.05(a) Improvements to the Functioning of
a Computer or To Any Other Technology or Technical
Field
(2) MPEP § 2106.05(b) Particular Machine
(3) MPEP § 2106.05(c) Particular Transformation
(4) MPEP § 2106.05(e) Other Meaningful Limitations
(5) MPEP § 2106.05(f) Mere Instructions To Apply An

Section III.C.
10 See MPEP § 2106.05(a)–(c), (e)–(h). Citations to the MPEP herein refer
to revision [R-08.2017].
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Exception
(6) MPEP § 2106.05(g) Insignificant Extra-Solution Activity
(7) MPEP § 2106.05(h) Field of Use and Technological
Environment
If the recited judicial exception is integrated into a practical application as
determined under one or more of the MPEP sections cited above, then the
claim is not directed to the judicial exception, and the patent-eligibility
inquiry ends. If not, then analysis proceeds to Step 2B.
Step 2B — “Inventive Concept” or “Significantly More”
Under our precedent, it is possible that a claim that does not
“integrate” a recited judicial exception under Step 2A(ii) is nonetheless
patent eligible. For example, the claim may recite additional elements that
render the claim patent eligible even though a judicial exception is recited in
a separate claim element.11 The Federal Circuit has held claims eligible at
the second step of the Alice/Mayo test (USPTO Step 2B) because the
additional elements recited in the claims provided “significantly more” than
the recited judicial exception (e.g., because the additional elements were
unconventional in combination).12 Therefore, if a claim has been
determined to be directed to a judicial exception under Revised Step 2A, we
must evaluate the additional elements individually and in combination under

11 See, e.g., Diehr, 450 U.S. at 187.
12 See, e.g., Amdocs (Israel), Ltd. v. Openet Telecom, Inc., 841 F.3d 1288,
1300, 1304 (Fed. Cir. 2016); BASCOM Global Internet Servs., Inc. v. AT&T
Mobility LLC, 827 F.3d 1341, 1349–52 (Fed. Cir. 2016); DDR Holdings,
LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257–59 (Fed. Cir. 2014).
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Step 2B to determine whether they provide an inventive concept (i.e.,
whether the additional elements amount to significantly more than the
exception itself).13
Under the Revised Guidance, we must consider in Step 2B whether an
additional element or combination of elements: (1) “Adds a specific
limitation or combination of limitations that are not well-understood,
routine, conventional activity in the field, which is indicative that an
inventive concept may be present;” or (2) “simply appends well-understood,
routine, conventional activities previously known to the industry, specified
at a high level of generality, to the judicial exception, which is indicative
that an inventive concept may not be present.” See Revised Guidance,
III.B.14

13 The patent eligibility inquiry may contain underlying issues of fact.
Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325.
(Fed. Cir. 2016). In particular, “[t]he question of whether a claim element or
combination of elements is well-understood, routine and conventional to a
skilled artisan in the relevant field is a question of fact.” Berkheimer v. HP
Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018).
14 In accordance with existing Step 2B guidance, an Examiner’s finding that
an additional element (or combination of elements) is well understood,
routine, conventional activity must be supported with at least one of the four
specific types of evidence required by the USPTO Berkheimer
Memorandum, as shown above. For more information concerning
evaluation of well-understood, routine, conventional activity, see MPEP
§ 2106.05(d), as modified by the USPTO Berkheimer Memorandum
(USPTO Commissioner for Patents Memorandum dated Apr. 19, 2018,
“Changes in Examination Procedure Pertaining to Subject Matter Eligibility,
Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.)”
(hereinafter “Berkheimer Memo”).
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In the Step 2B analysis, an additional element (or combination of
elements) is not well-understood, routine or conventional unless the
examiner finds an evidentiary basis, and expressly supports a rejection in
writing with, one or more of the following:
1. A citation to an express statement in the
specification or to a statement made by an applicant during
prosecution that demonstrates the well-understood, routine,
conventional nature of the additional element(s). . . .
2. A citation to one or more of the court decisions
discussed in MPEP § 2106.05(d)(II) as noting the well-
understood, routine, conventional nature of the additional
element(s).
3. A citation to a publication that demonstrates the
well-understood, routine, conventional nature of the additional
element(s)
. . . .
4. A statement that the examiner is taking official
notice of the well-understood, routine, conventional nature of
the additional element(s)
See Berkheimer Memo.
The analysis in Step 2B further determines whether an additional
element or combination of elements:
(a) Adds a specific limitation or combination of
limitations that are not well-understood, routine, conventional
activity in the field, which is indicative that an inventive
concept may be present; or
(b) simply appends well-understood, routine,
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial exception,
which is indicative that an inventive concept may not be
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present.
Revised Guidance; see Berkheimer Memo.
If the Examiner or the Board determines under Step 2B that the
element (or combination of elements) amounts to significantly more than the
exception itself, the claim is eligible, thereby concluding the eligibility
analysis.
However, if a determination is made that the element and combination
of elements does not amount to significantly more than the exception itself,
the claim is ineligible under Step 2B, and the claim should be rejected for
lack of subject matter eligibility.
ANALYSIS
Step 1
Claim 1 is a method (process) claim by reciting one of the enumerated
categories of eligible subject matter in 35 U.S.C. § 101. Therefore, the issue
before us is whether it is directed to a judicial exception without
significantly more. Based upon our de novo review15 of the record in light
of recent Director Policy Guidance16 with respect to patent-eligible subject
matter rejections under 35 U.S.C. § 101, we reverse the rejection of Claims
49–66.

15 “Whether a claim is drawn to patent-eligible subject matter is an issue of
law that we review de novo.” SiRF Tech., Inc. v. Int’l Trade Comm’n, 601
F.3d 1319, 1331 (Fed. Cir. 2010).
16 USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84(4)
Fed. Reg. 50–57 (January 7, 2019) (“Revised Guidance”).
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Step 2A(i): Does the Claim Recite a Judicial Exception?
The Examiner finds the claims are directed to the abstract idea of
handling messages of beyond a threshold size. Final Act. 5. The Examiner
analogizes the claims to those of Electric Power Group, LLC v. Alstom S.A,
830 F.3d 1350 (2016) finding they relate to collecting, analyzing, and
displaying information without more. Id.
Appellants contend the claims provide an improvement to a computer
technology. App. Br. 18.
The preamble of Claim 49 recites: “A computer-implemented method
within a first messaging computer system configured to interact with a
shared storage device separate from the first messaging computer system,
comprising.” Table I compares the remaining limitations of Claim 49 to the
categories of abstract ideas set forth in the Revised Guidance.

Claim 49 Revised Guidance
[a]17 transmitting, by a first
application within the first
messaging computer system,
a message to the shared
storage device;
An extra-solution activity data-
gathering step. See Rev. Guid. 55, n.
30.
[b] intercepting, prior to
being received into the shard
storage device, the message;
An extra-solution activity data-
gathering step. See Rev. Guid. 55, n.
30.
[c] generating, responsive to
a size of the message having
exceeded a predetermined
Mathematical concepts—
mathematical relationships,
mathematical formulas or equations,

17 Step designators, e.g., “[a]” were added to facilitate discussion.
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threshold, a pointer for the
message;
mathematical calculations. Rev.
Guid. 52.
[d] storing the pointer in the
shared storage device; and
An extra-solution activity step. See
Rev. Guid. 55, n. 30.
[e] storing the message in a
first log owned by the first
messaging application,
An extra-solution activity step. See
Rev. Guid. 55, n. 30.
[f] wherein the first log is
accessible by a second
messaging application within
a second messaging computer
system separate from the first
messaging computer system,
and
A characterization of a computer log
unrelated to a Guidance
classification of an abstract idea.
[g] [wherein] access rights to
the first log by the first
messaging application are
greater than access rights to
the first log by the second
messaging application.
A characterization of a computer log
unrelated to a Guidance
classification of an abstract idea.

Thus, under Step 2A(i), we find limitation [c] recites a step which
may fit within the Revised Guidance category of “mathematical concepts.”
Step 2A(ii): Judicial Exception Integrated into a Practical Application?
If the claims recite a patent-ineligible concept, as we conclude above,
we proceed to the “practical application” Step 2A(ii) in which we determine
whether the recited judicial exception is integrated into a practical
application of that exception by: (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception(s); and
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(b) evaluating those additional elements individually and in combination to
determine whether they integrate the exception into a practical application.
The Revised Guidance is “designed to more accurately and consistently
identify claims that recite a practical application of a judicial exception []
and thus are not ‘directed to’ a judicial exception.” Revised Guidance, 53.
For the reasons which follow, we conclude that Appellants’ claims
integrate the judicial exception into a practical application.
MPEP § 2106.05(a) “Improvements to the Functioning of a Computer
or To Any Other Technology or Technical Field.”
“In determining patent eligibility, examiners should consider whether
the claim ‘purport(s) to improve the functioning of the computer itself’” or
“any other technology or technical field.” MPEP § 2106.05(a).
With respect to technological improvements, Appellants contend that
the state of the art at the time of the invention provided “a mechanism to
store shared messages using a coupling facility comprising an associated
queue as the shared storage.” Spec., ¶ 2. Appellants argue “the relative cost
of such storage makes it use for storing large messages prohibitive.” App.
Br. 22 (citing Spec., ¶ 4). Appellants contend their claimed solution which
involves storage of a pointer instead of an over-size message and differential
access by messaging applications to various logs owned by the applications,
is an improvement over the prior art Flaherty. App. Br. 22–23. Appellants
note Flaherty was specifically referenced in the Specification in order to
point out the technical improvement thereover. Id.
Appellants argue, analogously to McRo, that the claimed invention
represents an improvement over the teachings of the prior art. Appr. Br. 23.
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“As described within Appellants’ specification, the provision of different
logs owned by separate messaging application yet accessible by both
messaging applications ‘allows data to be recovered from a log associated
with a failed messaging application, by another messaging application.’” Id.
Appellants further argue “[t]he read [of a log by one messaging application]
can occur whilst the other messaging application continues to write to the
log.” Id.
The Examiner acknowledges the Specification discloses the invention
as an improvement to computer technology, but finds Appellants have not
described the improvement in the claims. Ans. 16.
Contrary to the Examiner’s finding, the Enfish Court found:
our conclusion that the claims are directed to an improvement
of an existing technology is bolstered by the specification's
teachings that the claimed invention achieves other benefits
over conventional databases, such as increased flexibility, faster
search times, and smaller memory requirements.
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1337 (2016).
We find Appellants’ claims integrate the judicial exception into a
practical application by providing “[i]mprovements to the Functioning of a
Computer or To Any Other Technology or Technical Field.” MPEP §
2106.05(a). We, therefore, find the claims are not directed to an abstract
idea and recite eligible subject matter under 35 U.S.C. § 101.

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CLAIMS 49–66: OBVIOUSNESS OVER
FLAHERTY, MILLER, IMAMURA, AND ROOKE.
Independent Claim 49 recites, inter alia, “a first log owned by the first
messaging application.” Independent Claims 55 and 61 recite
commensurate limitations.
To teach “a first log owned by the first messaging application,” the
Examiner finds Flaherty teaches: “[o]nce the server 16a has determined that
the message that will be put on the queue exceeds a predetermined threshold,
the message 34 is written immediately to the database 30 and committed.”
Final Act 7 (quoting Flaherty, ¶ 27).
Appellants contend the cited passage of Flaherty may teach “a log
associated with a first messaging application,” as recited in the claim as
originally filed, but Flaherty fails to the amended language, i.e., “a first log
owned by the first messaging application.” (emphasis added). App. Br. 25–
26. Appellants also contend that Flaherty does not disclose “access rights to
the first log by the first messaging application are greater than access rights
to the first log by the second application” as recited in claim 49, because
each of the servers in Flaherty has equal access rights to the shared database,
so as to be able to both read and write to the database. App. Br. 26–27.
The Examiner disagrees in view of the finding under § 112(2nd)
wherein the messaging application that has write access to a log is
interpreted as owning the association to that log. Ans. 18. The Examiner
finds Flaherty teaches server 16a owns the first log by disclosing server 16a
writes message 34 to database (i.e., log) 30. Id. (citing Flaherty, ¶ 27).
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Appellants reply Flaherty discloses that each of servers 16a and 16b
has write access to database 30 thus Flaherty fails to teach ownership of a
log in view of differential access to that log. Reply 13. We agree with
Appellants that the prior art fails to teach a log is owned by a messaging
application. See our prior discussion of ownership in context of the rejection
under § 112(2nd), supra.
Appellants also contend that the Examiner must give patentable
weight to the claim term “greater access” (Reply 14), and that all of the
servers within Flaherty’s system have equal access to the shared database
(Reply 15–16). We agree with Appellants. The section of Flaherty cited by
the Examiner discloses that “[e]ach server . . . is arranged to access the
database 30.” Final Act. 7 (citing Flaherty ¶ 33 (emphasis added)). The
Examiner has not explained how the servers in Flaherty, which each have
the same read and write access to the database, teach “access rights to the
first log by the first messaging application are greater than access rights to
the first log by the second application” as claimed.
In view of the foregoing, we decline to sustain the rejection of Claims
49–66 under 35 U.S.C. § 103.

DECISION
The rejection of Claims 49–66 under 35 U.S.C. § 101 is REVERSED.
The rejection of Claims 49–66 under 35 U.S.C. § 103 is REVERSED.
The rejection of Claims 49–66 under 35 U.S.C. § 112, first and second
paragraphs, is REVERSED.
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REVERSED