Kobus Paulsen et al.

Patent Trials and Appeals Board

Jun 2, 2020

13485228 - (D) (P.T.A.B. Jun. 2, 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.
13/485,228 05/31/2012 Kobus Paulsen 050066/419622 1089
826 7590 06/02/2020
ALSTON & BIRD LLP
Bank of America Plaza
101 SOUTH TRYON STREET, SUITE 4000
Charlotte, NC 28280-4000
EXAMINER
MISIASZEK, AMBER ALTSCHUL
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
06/02/2020 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):
usptomail@alston.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte KOBUS PAULSEN, CHRISTOPHER D. THOM, IAN HUGHES,
and MARK HOLLAND
____________________

Appeal 2018-005089
Application 13/485,2281
Technology Center 3600
____________________

Before MARC S. HOFF, JASON J. CHUNG, STEVEN M. AMUNDSON,
Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a Final Rejection of
claims 1–23. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellant’s invention is a system and method for monitoring users
over one or more websites. A processor and memory are configured to
receive transaction information from the one or more websites, the
transaction information comprising one or more attributes identifying

1 Appellant states that the real party in interest is UC Group Limited. App.
Br. 3.
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behavior related to the plurality of users engaging in transaction activities on
the websites. The processor then determines norms of behavior based on the
transaction information; compares the attributes for each individual user
against the norms of behavior; identifies potential problem users who have
one or more attributes diverge from the norms of behavior; saves
information on those potential problem users to the memory; compares the
attributes to identify similarities which could indicate potential problem
users; and transmits information on the potential problem users to the one or
more websites. Spec. ¶ 11.
Claim 1 is reproduced below:
1. A system for monitoring a plurality of users over one or
more websites, the one or more websites being independent
of each other, the system comprising:
a memory; and
at least one processor configured to:
(a) receive transaction information from the one or more
websites for the plurality of users, the transaction information
comprising one or more attributes identifying behaviors related
to the plurality of users engaging in transaction activities on the
one or more websites;
(b) associate the transaction information with
corresponding users such that the transaction information
associated with an individual user reflects the individual user’s
behavior across the one or more websites;
(c) after receiving the transaction information:
(1) automatically determine norms of behavior for
a new user engaging in transaction activities on the
one or more websites based on the transaction
information, the norms of behavior being
determined based at least in part upon an analysis
of the one or more attributes identifying behavior
for each of two or more of the plurality of users,
wherein the each of two or more of the plurality of
users are independent of said new user;
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(2) automatically compare the one or more
attributes from the transaction information for each
individual user of the plurality of users and the
new user against the norms of behavior;
(3) identify whether the new user and any
individual users of the plurality of users are
potentially problem users, the potentially problem
users comprising each individual user who has at
least one attribute diverge from the norms of
behavior;
(4) save information on the potentially problem
users in the memory, the information comprising
information on the at least one diverging attribute
for each individual user;
(5) automatically compare the attributes of the
transaction information with the attributes of the
transaction information of confirmed problem
users and identify similarities which could indicate
potentially problem users and save such
information in the memory; and
(6) automatically generate and transmit electronic
instructions to the one or more websites indicating
whether the new user and/or any individual users
of the plurality of users have been identified as a
potential problem user, said electronic instructions
being configured to automatically, upon execution
thereof, prevent further utilization of the one or
more websites by the identified potential problem
users.
App. Br. 36–37 (Claims Appendix).

Claims 1–23 stand rejected under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter. Non-Final Act. 3.
Throughout this decision, we make reference to the Appeal Brief
(“App. Br.,” filed September 28, 2017), the Non-Final Action (“Non-Final
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Act.,” mailed April 6, 2017) and the Examiner’s Answer (“Ans.,” mailed
February 16, 2018) for their respective details.
ISSUES
1. Does the claimed invention recite an abstract idea?
2. Is the recited abstract idea integrated into a practical application?
3. Do the claims recite additional elements that transform the nature of
the claims into a patent-eligible application of an abstract idea?

PRINCIPLES OF LAW
An invention is patent eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to
include implicit exceptions: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. See, e.g., Alice Corp. v. CLS Bank Int’l,
573 U.S. 208, 216 (2014).
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. Id. at 217–18 (citing Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with
that framework, we first determine what concept the claim is “directed
to.” See Alice, 573 U.S. at 219 (“On their face, the claims before us are
drawn to the concept of intermediated settlement, i.e., the use of a third
party to mitigate settlement risk.”); see also Bilski v. Kappos, 561 U.S.
593, 611 (2010) (“Claims 1 and 4 in petitioners’ application explain the
basic concept of hedging, or protecting against risk.”).
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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; 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, 69 (1972)).
Concepts determined to be patent eligible include physical and chemical
processes, such as “molding rubber products” (Diamond v. Diehr, 450
U.S. 175, 192 (1981)); “tanning, dyeing, making waterproof cloth,
vulcanizing India rubber, smelting ores” (id. at 184 n.7 (quoting Corning
v. Burden, 56 U.S. 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 that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 at 176; see also id. at 192 (“We view
respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”).
Having said that, the Supreme Court also indicated that a claim “seeking
patent protection for that formula in the abstract . . . is not accorded the
protection of our patent laws, . . . and this principle cannot be
circumvented by attempting to limit the use of the formula to a particular
technological environment.” Id. (citing Benson and Flook); see, e.g., id. at
187 (“It is now commonplace that an application of a law of nature or
mathematical formula to a known structure or process may well be
deserving of patent protection.”).
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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 (quotation marks omitted). “A
claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to
transform that abstract idea into a patent-eligible invention.” Id.
In January 2019, the PTO published revised guidance on the
application of § 101. USPTO’s January 7, 2019 Memorandum, 2019
Revised Patent Subject Matter Eligibility Guidance (“Memorandum”).
84 Fed. Reg. 50. Under that guidance, we first look to whether the claim
recites:

(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h)).
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
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are not “well-understood, routine, conventional” in the field
(see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See Memorandum.

ANALYSIS
SECTION 101 REJECTION
Representative claim 1 recites the following limitations.
1. A system for monitoring a plurality of users over one or more
websites, the one or more websites being independent of each other, the
system comprising:
a memory; and
at least one processor configured to:
(a) receive transaction information from the one or more
websites for the plurality of users, the transaction information
comprising one or more attributes identifying behaviors related to
the plurality of users engaging in transaction activities on the one
or more websites;
(b) associate the transaction information with corresponding
users such that the transaction information associated with an individual
user reflects the individual user’s behavior across the one or more
websites;
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(c) after receiving the transaction information:
(1) automatically determine norms of behavior for a
new user engaging in transaction activities on the one or
more websites based on the transaction information, the
norms of behavior being determined based at least in part
upon an analysis of the one or more attributes identifying
behavior for each of two or more of the plurality of users,
wherein the each of two or more of the plurality of users are
independent of said new user;
(2) automatically compare the one or more attributes
from the transaction information for each individual user of
the plurality of users and the new user against the norms of
behavior;
(3) identify whether the new user and any individual
users of the plurality of users are potentially problem users,
the potentially problem users comprising each individual
user who has at least one attribute diverge from the norms of
behavior;
(4) save information on the potentially problem users
in the memory, the information comprising information on
the at least one diverging attribute for each individual user;
(5) automatically compare the attributes of the
transaction information with the attributes of the transaction
information of confirmed problem users and identify
similarities which could indicate potentially problem users
and save such information in the memory; and
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(6) automatically generate and transmit electronic
instructions to the one or more websites indicating whether
the new user and/or any individual users of the plurality of
users have been identified as a potential problem user, said
electronic instructions being configured to automatically,
upon execution thereof, prevent further utilization of the one
or more websites by the identified potential problem users.

These limitations, under the broadest reasonable interpretation,
constitute a plurality of steps to monitor users on one or more websites,
identify whether a user is potentially a problem user based on analysis of a
number of attributes, and prevent further utilization of the website(s) by the
identified potential problem user(s).
We determine that limitation (a) corresponds to the gathering of data
(“receiving transaction information”). We determine that limitations (c)(4)
and (c)(6) constitute post-solution activity: saving information on the
potentially problem users in the memory, and transmitting to one or more
websites the conclusion that one or more users have been identified as
potential problem users, respectively.
The Memorandum recognizes that certain groupings of subject matter
have been determined by the courts to constitute judicially excepted abstract
ideas: (a) mathematical concepts, (b) certain methods of organizing human
activity, and (c) mental processes. Memorandum, 84 Fed. Reg. at 52. If a
claim, under its broadest reasonable interpretation, covers performance in
the mind but for the recitation of generic computer components, then it is
still in the mental-processes category unless the claim cannot practically be
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performed in the mind.2 We determine that the claim steps beyond those
directed to extra-solution activity (i.e., gathering, display, or storage of data)

2 See Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318
(Fed. Cir. 2016) (“[W]ith the exception of generic computer implemented
steps, there is nothing in the claims themselves that foreclose them from
being performed by a human, mentally or with pen and paper.”); Mortg.
Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d. 1314, 1324 (Fed.
Cir. 2016) (holding that computer-implemented method for “anonymous
loan shopping” was an abstract idea because it could be “performed by
humans without a computer”); Versata Dev. Grp. v. SAP Am., Inc., 793 F.3d
1306, 1335 (Fed. Cir. 2015) (“Courts have examined claims that required the
use of a computer and still found that the underlying, patent-ineligible
invention could be performed via pen and paper or in a person’s mind.”);
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375, 1372
(Fed. Cir. 2011) (holding that the incidental use of “computer” or “computer
readable medium” does not make a claim otherwise directed to process that
“can be performed in the human mind, or by a human using a pen and
paper” patent eligible); id. at 1376 (distinguishing Research Corp. Techs. v.
Microsoft Corp., 627 F.3d 859 (Fed. Cir. 2010), and SiRF Tech., Inc. v. Int’l
Trade Comm’n, 601 F.3d 1319 (Fed. Cir. 2010), as directed to inventions
that “could not, as a practical matter, be performed entirely in a human’s
mind”). Mayo, 566 U.S. at 71 (“‘[M]ental processes[ ] and abstract
intellectual concepts are not patentable, as they are the basic tools of
scientific and technological work’” (quoting Benson, 409 U.S. at 67));
Flook, 437 U.S. at 589 (same); Benson, 409 U.S. at 67, 65 (noting that the
claimed “conversion of [binary-coded decimal] numerals to pure binary
numerals can be done mentally,” i.e., “as a person would do it by head and
hand.”); Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1139,
(Fed. Cir. 2016) (holding that claims to the mental process of “translating a
functional description of a logic circuit into a hardware component
description of the logic circuit” are directed to an abstract idea, because the
claims “read on an individual performing the claimed steps mentally or with
pencil and paper”); In re BRCA1 & BRCA2-Based Hereditary Cancer Test
Patent Litig., 774 F.3d 755, 763 (Fed. Cir. 2014) (concluding that concept of
“comparing BRCA sequences and determining the existence of alterations”
is an “abstract mental process”); In re Brown, 645 F. App’x 1014, 1017
(Fed. Cir. 2016) (non-precedential) (claim limitations “encompass the mere
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— limitation (b), associating transaction information with corresponding
users; limitation (c)(1), automatically determining norms of behavior for a
new user engaging in transaction activities; limitation (c)(3), identifying
whether a new user and any individual users are potentially problem users;
and limitation (c)(5), automatically comparing attributes of transaction
information with attributes of confirmed problem users to identify
similarities which could indicate potential problem users, constitute steps
that may be performed in the mind, but for the recitation of generic
computer components.
We agree with the Examiner and determine the limitations at issue to
be analogous to those at issue in Intellectual Ventures I LLC v. Symantec
Corp., 838 F.3d 1307 (Fed. Cir. 2016). The representative claim in
Intellectual Ventures recited, in pertinent part, “receiving, on a processing
system, file content identifiers for data files from a plurality of file content
identifier generator agents, each agent provided on a source system and
creating file content IDs using a mathematical algorithm, via a network;
determining, on the processing system, whether each received content
identifier matches a characteristic of other identifiers; and outputting, to at
least one of the source systems responsive to a request from said source
system, an indication of the characteristic of the data file based on said step
of determining.” Intellectual Ventures, 838 F.3d at 1313. The Federal Circuit
analogized the claim at issue to the practice of looking at paper mail

idea of applying different known hair styles to balance one’s head.
Identifying head shape and applying hair designs accordingly is an abstract
idea capable, as the Board notes, of being performed entirely in one’s
mind”).
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envelopes and discarding certain letters, without opening them, from sources
from which they did not wish to receive mail based on characteristics of the
mail. Id. at 1314. The court found that “[t]he list of relevant characteristics
could be kept in a person’s head.” Id.
The Intellectual Ventures I court further analogized the claim to
Content Extraction & Transmission LLC v. Wells Fargo Bank, N.A., 776
F.3d 1343 (Fed. Cir. 2014), a case in which the court found that the claims
“are drawn to the abstract idea of 1) collecting data, 2) recognizing certain
data within the collected data set, and 3) storing that recognized data in a
memory,” and determined that “humans have always performed these
functions . . . [and] [b]anks have, for some time, reviewed checks,
recognized relevant data . . . and stored that information in their records.”
Content Extraction, 776 F.3d at 1347.
With reference to the invention under appeal, we determine that the
steps of associating transaction information with corresponding users, and
of comparing attributes from transaction information against norms of
behavior in order to identify potential problem users, may be performed
mentally by a person deciding which users should be classified as potential
problem users. We further determine that identifying one or more users as
potential problem users, and informing others of that identification decision,
may be performed mentally by a human being, with the further involvement
of generic computer components.
Appellant argues that the claimed invention is not directed to an
abstract idea because “tangible near real-time action is taken . . . such that
those being identified as a potential problem user are prevented from further
utilization of the one or more websites,” preventing “any fraudulent or
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problematic use of the websites,” which “avoids undue costs and/or
difficulties that might otherwise be incurred by the one or more websites if
such information were not so timely, accurately, and efficiently provided.”
App. Br. 26–27. This argument is not persuasive because Appellant has not
established that the claimed invention amounts to a specific asserted
improvement in computer functionality. Enfish LLC v. Microsoft Corp., 822
F.3d 1327, 1335 (Fed. Cir. 2016). Rather, we determine instead that the
focus of the claims is a process that qualifies as an abstract idea, for which
computers are invoked merely as a tool. Id. at 1336.
Accordingly, we conclude that the claims recite a mental process, one
of the categories of abstract ideas recognized in the Memorandum. 84 Fed.
Reg. at 52. We, thus, conclude that the claims recite an abstract idea.

INTEGRATED INTO A PRACTICAL APPLICATION
We next evaluate whether the claims integrate the identified abstract
idea of comparing attributes from transaction information against norms of
behavior, in order to identify users who diverge from such norms as
potential problem users, into a practical application. See Memorandum,
84 Fed. Reg. at 51. We consider whether there are any additional elements
beyond the abstract ideas that, individually or in combination, “integrate the
[abstract ideas] into a practical application, using one or more of the
considerations laid out by the Supreme Court and the Federal Circuit.” Id. at
54–55.
The Memorandum provides exemplary considerations that are
indicative that an additional element may have integrated the exception (i.e.,
the abstract idea recited in the claim) into a practical application:
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(i) an improvement to the functioning of a computer;
(ii) an improvement to another technology or technical field;
(iii) an application of the abstract idea with, or by use of, a
particular machine;
(iv) a transformation or reduction of a particular article to a
different state or thing; or
(v) other meaningful limitations beyond generally linking the
use of the abstract idea to a particular technological
environment.
See Memorandum, 84 FR at 55; MPEP §§ 2106.05(a)–(c), (e)–(h).

As noted supra, we note that the claims recite the additional elements
of one or more websites, a memory, a processor. Appellant defines
“website” according to what is well known in the art, as “an Internet-based
site owned and operated by an entity,” which “contain[s] a set of related web
pages containing a variety of content, which is accessible from a simple
Uniform Resource Locator.” Spec. ¶ 33. Appellant defines “memory” by
example, as possibly including “both read only memory (‘ROM’) 465 and
random access memory (‘RAM’) 467.” Spec. ¶ 67. Appellant defines
“processor” by reference to examples such as “a processing element, a
microprocessor, a coprocessor, a controller, a controller, or various other
processing devices . . . such as an application specific integrated circuit
(‘ASIC’), a field programmable gate array (‘FPGA’), a hardware
accelerator, or the like.” Id. We determine, then, that Appellant’s disclosure
of a “memory” and “processor” are similarly generic.
Appellant argues that even if the pending claims are directed to an
abstract idea, the claims are directed to something more than that abstract
idea so as to integrate the abstract idea into a practical application. App. Br.
28. Appellant contends that the claims (1) apply the judicial exception with,
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or by use of, a particular machine; (2) add specific limitations other than what
is well-understood, routine and conventional in the field; and/or (3) provide
meaningful limitations beyond generally linking the use of an abstract idea to a
particular technological environment. Id.
Appellant asserts that, as in DDR Holdings,3 the claimed solution is
necessarily rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer networks. App. Br. 29–30.
Appellant’s analogy of the invention to the invention in DDR Holdings is
not persuasive. App. Br. 15–16. Appellant contends that the invention
automatically generates and transmits, “at the most optimal time,”
instructions that one or more users are potential problem users, the
instructions automatically preventing further utilization of the websites by
the identified potential problem users. We do not agree with Appellant that
identifying potential problem customers or users (e.g., underage customers,
compulsive gamblers), is particular to the internet, or even particular to
computers. Thus, this feature of the invention does not satisfy DDR
Holdings’ requirement of something necessarily rooted in computer
technology to overcome a problem specifically arising in the realm of
computer networks. DDR Holdings, 773 F.3d at 1253.
Appellant further contends, invoking BASCOM,4 that the invention
“advantageously arranges certain known and conventional features alongside
novel features in a nonconventional manner.” App. Br. 30. Appellant alleges
that the claimed process avoids “delay and inefficiencies” by “timely and

3 DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014).
4 BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility, LLC, 827 F.3d
1341 (Fed. Cir. 2016).
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optimally” conveying electronic instructions for automatic execution. App.
Br. 31–32. Appellant’s argument is not persuasive. We determined that the
alleged improvements cited by Appellant are improvements to the
underlying abstract idea of identifying potential problem users of websites,
rather than technological improvements of a “specific and discrete” nature
that go beyond well-understood, routine, and conventional activities.
Despite Appellant’s submissions, Appellant does not explain, and we
find no basis for, the contention that the claimed invention involves applying
the abstract idea by use of a particular machine. Appellant provides no
evidence of specific limitations beyond those well-understood, routine, and
conventional. We determine that Appellant’s claimed invention does not
provide meaningful limitations beyond generally linking the use of an
abstract idea to a particular technological environment.
In response to Appellant’s argument (App. Br. 29) that the claims do
not pre-empt the abstract idea of monitoring for potential problem website
users, we note that lack of preemption will not demonstrate patent eligibility.
“Where a patent’s claims are deemed only to disclose patent ineligible
subject matter under the Mayo framework, as they are in this case,
preemption concerns are fully addressed and made moot.” Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
We conclude that the claims do not recite additional elements that
integrate the recited abstract idea of evaluating transaction information
against norms of behavior so as to identify potential problem users of a
website, and to transmit an indication of such potential problem users to one
or more websites to prevent the further utilization thereof, into a practical
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application under the considerations laid out by the Supreme Court and the
Federal Circuit.

INVENTIVE CONCEPT
Last, we consider whether claims 1–23 express an inventive concept,
i.e., whether any additional claim elements “‘transform the nature of the
claim’ into a patent-eligible application.” Alice, 573 U.S. at 217 (quoting
Mayo, 566 U.S. at 78, 79). This requires us to evaluate whether the
additional claim elements add “a specific limitation or combination of
limitations that are not well-understood, routine, and conventional activity in
the field” or “simply append[] well-understood, routine, conventional
activities previously known to the industry, specified at a high level of
generality.” Memorandum, 84 Fed. Reg. at 50, 56.
“The 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). Berkheimer was decided on February 8, 2018, and
Appellant’s Reply Brief was filed February 26, 2018.
As noted supra, we note that the claims recite the additional elements
of a website, processor, and memory. As discussed supra, we find that
Appellant’s Specification does not define these terms in other than generic
fashion. We determine, then, that Appellant’s disclosure of a “website,”
“processor,” and “memory” are similarly well-understood, routine, and
conventional.
Regarding the use of the recited generic computer components
identified – i.e., “website,” “processor,” and “memory” – the Supreme Court
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has held that “the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.” Alice, 573
U.S. at 223. Our reviewing court provides additional guidance: See
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1096 (Fed. Cir.
2016) (“[T]he use of generic computer elements like a microprocessor or
user interface do not alone transform an otherwise abstract idea into patent-
eligible subject matter.”); OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d
1359, 1363 (Fed. Cir. 2015) (claims reciting, inter alia, sending messages
over a network, gathering statistics, using a computerized system to
automatically determine an estimated outcome, and presenting offers to
potential customers found to merely recite “‘well-understood, routine
conventional activit[ies],’ either by requiring conventional computer
activities or routine data-gathering steps” (alteration in original)). We
determine from Appellant’s bare disclosure of these elements that the
claimed website, processor, and memory should be considered generic
computer components. As such, they cannot transform the recited patent-
ineligible abstract idea into a patent-eligible invention.
Appellant has presented no argument contesting the Examiner’s
characterization of any additional claim element as well-understood, routine,
and conventional. Appellant has not contended that the Examiner lacked
factual support for any finding that a claim element is well-understood,
routine, and conventional. As a result, we determine that none of the claim
elements, additional to those limitations we determined to constitute a
mental process, recite a limitation or combination of limitations that are not
well-understood, routine, and conventional activity in the field of website
user monitoring.
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SUBJECT MATTER ELIGIBILITY - CONCLUSION
We conclude that the claims recite a process of website user
monitoring, which we determine to constitute a mental process, one of the
categories of invention found by the courts to constitute an abstract idea.
We further conclude that the claims do not integrate the identified
abstract idea into a practical application.
We further conclude that the claimed invention does not recite
additional claim elements that transform the nature of the claim into a
patent-eligible application of an abstract idea.
Accordingly, we sustain the Examiner’s 35 U.S.C. § 101 rejection of
claims 1-23.

CONCLUSIONS
1. The claimed invention recites an abstract idea.
2. The recited abstract idea is not integrated into a practical
application.
3. The claims do not recite additional elements that transform the
nature of the claims into a patent-eligible application of an abstract idea.
Appeal 2018-005089
Application 13/485,228

20
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed
1–23 101 Patent Eligible
Subject Matter
1–23
Overall
Outcome

1–23

ORDER
The Examiner’s decision to reject claims 1–23 under 35 U.S.C. § 101
is affirmed.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED