Lenovo (Singapore) Pte. Ltd.

Patent Trials and Appeals Board

Dec 10, 2021

2020005293 (P.T.A.B. Dec. 10, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/022,677 09/10/2013 Russell Speight VanBlon RPS920130075USNP(710.250) 9053
58127 7590 12/10/2021
FERENCE & ASSOCIATES LLC
409 BROAD STREET
PITTSBURGH, PA 15143
EXAMINER
NEURAUTER JR, GEORGE C
ART UNIT PAPER NUMBER
2447
MAIL DATE DELIVERY MODE
12/10/2021 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RUSSELL SPEIGHT VANBLON, ROD D. WALTERMANN,
JOHN CARL MESE, ARNOLD S. WEKSLER, and
NATHAN J. PETERSON
_____________

Appeal 2020-005293
Application 14/022,677
Technology Center 2400
____________

Before JEAN R. HOMERE, ST. JOHN COURTENAY III, and
LARRY J. HUME, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1–3, 5, 8–13, 15, and 18–20, which constitute all the claims pending
in this application. See Appeal Br. 5. Claims 4, 6, 7, 14, 16, and 17 are
cancelled. Claims App. We have jurisdiction over the pending claims under
35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). According to Appellant, the real party in interest is
Lenovo (Singapore) PTE. LTD. See Appeal Br. 3.
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STATEMENT OF THE CASE 2
Introduction
Embodiments of Appellant’s claimed subject matter relate generally
to processing action items from messages and providing notifications to the
user. See, e.g., Spec. ¶¶ 1, 2.
Independent Claim 1
1. A method, comprising:

receiving, at a mobile information handling device, a
message directed to a human recipient;

in response to receiving the message, identifying, using
one or more processors of the mobile information handling
device, one or more high priority action items contained in the
message by parsing content of the message to extract action
items from the message, wherein the parsing comprises
identifying action items based upon words within the message,
wherein the one or more high priority action items are extracted
action items that are identified as high priority based upon at
least one of: a current geographic location of the mobile
information handling device, a time sensitivity of the extracted
action item, and a sender of the message being identified as
high priority, wherein the priority of an action item is
determined based upon input from the user;

providing, to the human recipient, a notification
corresponding to the one or more high priority action items
identified on the mobile information handling device, wherein
the notification corresponding to the one or more high priority
action items is a message that is separate from the original

2 We herein refer to the Final Office Action, mailed Nov. 19, 2019 (“Final
Act.”); the Appeal Brief, filed April 20, 2020 (“Appeal Br.”); the
Examiner’s Answer, mailed May 8, 2020 (“Ans.”); and the Reply Brief
(“Reply Br.”), filed July 8, 2020.
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message received on the mobile information handling device;
and

executing at least one action in response to the one or
more high priority action items identified, wherein the executed
at least one action is categorized as a high priority action item
over at least one additional action item identified within the
message, wherein the categorizing of the priority of the at least
one action item identified comprises determining an order of
execution of one or more additional action items comprised in
the message.

Appeal Br. 38–39. Claims App.

Prior Art Evidence Relied Upon by the Examiner
Name Reference Date
Lavoie et al. (“Lavoie”) US 8,032,602 B2 Oct. 4, 2011
Rowe et al. (“Rowe”) US 2011/0145822 A1 June 16, 2011
Lessard et al. (“Lessard”) US 9,300,615 B2 Mar. 29, 2016
Chen et al. (“Chen”) US 2016/0224939 A1 Aug. 4, 2016

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Rejections
Rejection Claims Rejected 35 U.S.C. § Reference(s)/Basis
A 1–3, 5, 8–13, 15, 18–20 101 Eligibility
B 1–3, 5, 8–13, 15, 18–20 112(a) Written description
C 1–3, 5, 8–13, 15, 18–20 112(b) Indefiniteness
D 1, 2, 8, 11, 12, 18, 20 102(a)(2) Rowe
E 3, 13 103 Rowe, Lavoie
F 5, 15 103 Rowe, Chen
G 9, 10, 19 103 Rowe, Lessard

ISSUES AND ANALYSIS
We have considered all of Appellant’s arguments and any evidence
presented. We review appealed rejections for reversible error based upon
the arguments and evidence Appellant provides for each issue identified by
Appellant. See 37 C.F.R. § 41.37(c)(1)(iv); Ex parte Frye, 94 USPQ2d
1072, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung,
637 F.3d 1356, 1365 (Fed. Cir. 2011) (explaining that even if the Examiner
had failed to make a prima facie case, “it has long been the Board’s practice
to require an applicant to identify the alleged error in the examiner’s
rejections.”)).
“[A]ll that is required of the office to meet its prima facie burden of
production is to set forth the statutory basis of the rejection and the reference
or references relied upon in a sufficiently articulate and informative manner
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as to meet the notice requirement of [35 U.S.C.] § 132.” Jung, 637 F.3d at
1363.
To the extent Appellant has not timely advanced separate, substantive
arguments for particular claims, or other issues, such arguments are waived
or forfeited.3 See, e.g., 37 C.F.R. § 41.37(c)(1)(iv). Throughout this
opinion, we give the claim limitations the broadest reasonable interpretation
(BRI) consistent with the Specification. See In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997).

Rejection A under 35 U.S.C. § 101 of
Claims 1–3, 5, 8–13, 15, and 18–20
USPTO 35 U.S.C. § 101 MPEP Guidance
In January and October of 2019, the U.S. Patent and Trademark
Office (“USPTO”) published revised guidance on the application of
35 U.S.C. § 101.4 We note the USPTO current eligibility guidance is found

3 See In re Google Tech. Holdings LLC, 980 F.3d 858, 862 (Fed. Cir. 2020)
(some internal citation omitted):
It is well established that “[w]aiver is different from forfeiture.”
United States v. Olano, 507 U.S. 725, 733 (1993). “Whereas
forfeiture is the failure to make the timely assertion of a right,
waiver is the ‘intentional relinquishment or abandonment of a
known right.’” Id. (quoting Johnson v. Zerbst, 304 U.S. 458, 464
(1938)) (additional citations omitted). The two scenarios can
have different consequences for challenges raised on appeal, id.
at 733–34, and for that reason, it is worth attending to which label
is the right one in a particular case.
4 See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg.
50 (Jan. 7, 2019) (“2019 Revised Guidance”) and USPTO, October 2019
Update: Subject Matter Eligibility (the “October 2019 Update”). “All
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in the Ninth Edition, Revision 10.2019 (revised June 2020) of the Manual of
Patent Examination Procedure (“MPEP”), and particularly within Sections
2103 through 2106.07(c). Therefore, we refer to the MPEP for the
Eligibility Guidance originally published in the Federal Register. All
references to the MPEP throughout this Decision are to the Ninth Edition,
Revision 10.2019 (last revised June 2020), unless otherwise indicated.
Under MPEP § 2106, 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) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into a
practical application (“Step 2A, Prong Two”).5

Step 2A, Prong One
The Judicial Exception
Under MPEP § 2106.04(a)(2), the enumerated groupings of abstract
ideas are defined as follows:
(1) Mathematical concepts — mathematical relationships,
mathematical formulas or equations, mathematical
calculations (see MPEP § 2106.04(a)(2), subsection I);
(2) Certain methods of organizing human activity —
fundamental economic principles or practices (including

USPTO personnel are, as a matter of internal agency management, expected
to follow the guidance.” 84 Fed. Reg. at 51; October 2019 Update at 1.
5 “Examiners evaluate integration into a practical application by:
(1) identifying whether there are any additional elements recited in the claim
beyond the judicial exception(s); and (2) evaluating those additional
elements individually and in combination to determine whether they
integrate the exception into a practical application.” MPEP § 2106.04(d)(II).
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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) (see MPEP § 2106.04(a)(2), subsection II); and
(3) Mental processes — concepts performed in the human mind
(including an observation, evaluation, judgment, opinion)
(see MPEP § 2106.04(a)(2), subsection III).

Here, the Examiner applies MPEP § 2106, Step 2A, Prong One,
and concludes that the claims recite an abstract idea: i.e., “certain methods
of organizing human activity.” Final Act. 14. In particular, the Examiner
concludes that “the claimed concept is merely drawn to concepts relating to
tracking or organizing information and managing relationships or
transactions between people which falls within the enumerated grouping of
abstract ideas that involve certain methods of organizing human activity.”
Id.
Thus, under Step 2A, Prong One, the Examiner categorizes the claims
as reciting certain methods of organizing human activity, as defined under
MPEP § 2106.04(a)(2), subsection II. See Final Act. 14. For essentially the
same reasons provided by the Examiner (Final Act. 14–15), we agree that
claim 1 recites certain methods of organizing human activity, regarding at
least the recited steps of “identifying . . . high priority action items contained
in the message,” “providing to the human recipient, a notification,”
categorizing “a high priority action item,” and “determining an order of
execution of one or more additional action items comprised in the message.”
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(emphasis added). Remaining independent claims 11 and 20 recite similar
limitations of commensurate scope.
But Appellant argues that “the crux of the claims is to parse messages
automatically, and execute the identified actions items within a received
message based upon a priority value, not managing relationships or
transactions between people.” Appeal Br. 25–26 (emphasis added).
Applicant contends that the system’s receiving communication intended for
a person does not mean that the claims are directed toward or even include
limitations for managing relationships or transactions between people. See
Id.
We are not persuaded the Examiner has erred, because method
claim 1 recites the aforementioned steps of identifying, providing,
categorizing, and determining, which we conclude is consistent with an
abstract idea that involves certain methods of organizing human activity, i.e.,
managing personal behavior or relationships or interactions between people
(including social activities, teaching, and following rules or instructions), as
defined under MPEP § 2106.04(a)(2), subsection II. See Final Act. 14–15.
Because we conclude that claims 1–3, 5, 8–13, 15, and 18–20 recite
an abstract idea,6 as identified above, under Step 2A, Prong One, we proceed
to Step 2A, Prong Two, in which we apply the guidance set forth under
MPEP § 2106.04(d).

6 We note that each dependent claim includes all the limitations of the claims
from which it depends. See 35 U.S.C. § 112(d).
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Step 2A, Prong Two Under MPEP § 2106.04(d),
Integration of the Judicial Exception into a Practical Application
Limitations that are indicative of integration into a practical
application under MPEP § 2106.04(d) include:
1. Improvements to the functioning of a computer, or to any
other technology or technical field — see MPEP
§ 2106.05(a);
2. Applying the judicial exception with, or by use of, a
particular machine — see MPEP § 2106.05(b);
3. Effecting a transformation or reduction of a particular article
to a different state or thing — see MPEP § 2106.05(c); and
4. Applying or using the judicial 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 — see MPEP
§ 2106.05(e).
In contrast, limitations that are not indicative of integration into a
practical application include:
1. Adding the words “apply it” (or an equivalent) with the
judicial exception, or merely including instructions to
implement an abstract idea on a computer, or merely uses a
computer as a tool to perform an abstract idea — see MPEP
§ 2106.05(f);
2. Adding insignificant extra-solution activity to the judicial
exception — see MPEP § 2106.05(g); and
3. Generally linking the use of the judicial exception to a
particular technological environment or field of use — see
MPEP § 2106.05(h).
See MPEP § 2106.04(d)(I) (Describing Step 2A, Prong Two).

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Additional Limitations
Applying the USPTO guidance under MPEP § 2106.04(d), we
consider whether there are additional elements set forth in the claims that
integrate the judicial exception into a practical application.
The Examiner finds:
Regarding Prong Two, the claims additionally recite such
elements such as a “mobile information handling device”
programmed by software to perform the steps and which also
“provides” to “a human user” “a notification” and also generic
reception of “messages”. Such a generically specified element
fails to amount to significantly more as it amounts to a generic
portable computer with generic means to notify a user and to
receive messages. Use of a computer and its associated
elements in their ordinary capacity to perform their respective
generic functions fails to amount to more than . . . a recitation
of the words “apply it” (or an equivalent) since the claims
merely invoke a computer or other machinery as a tool to
perform an existing process.
Final Act. 15–16 (emphasis added).
In order to be patent-eligible, the elements additional to the identified
abstract idea must amount to more than “an instruction to apply the abstract
idea . . . using some unspecified, generic computer” to render the claim
patent-eligible. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 226
(2014)(emphasis added).
Here, the Specification supports the Examiner’s finding that the
recited generic additional claim elements do not integrate the abstract idea
into a practical application. See Final Act. 15–17.
In particular, we note that claims 1–3, 5, 8–13, 15, and 18–20 recite
steps, acts, or functions that are intended to be implemented “using one or
more processors of the mobile information handling device.” Claim 1. We
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find embodiments of such devices are described generically in the
Specification, e.g., at paragraph 22, which provides a non-limiting
exemplary description:
FIG. 1, for its part, depicts a block diagram of another example
of information handling device circuits, circuitry or
components. The example depicted in FIG. 1 may correspond
to computing systems such as the THINKPAD series of
personal computers sold by Lenovo (US) Inc. of Morrisville,
NC, or other devices.
Spec. ¶ 22 (emphasis added).
But merely adding generic hardware and computer components to
perform abstract ideas does not integrate those ideas into a practical
application. See Alice Corp., 573 U.S. at 223 (The “mere recitation of a
generic computer cannot transform a patent-ineligible abstract idea into a
patent-eligible invention.”); see also McRO, Inc. v. Bandai Namco Games
Am. Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016) (“The abstract idea exception
prevents patenting a result where ‘it matters not by what process or
machinery the result is accomplished.’” (quoting O’Reilly v. Morse, 56 U.S.
62, 113 (1854)) (emphasis added)).
In view of the above analysis, we determine that Appellant’s claims
1–3, 5, 8–13, 15, and 18–20 amount to no more than mere instructions to
implement the identified abstract idea on a generic computer. See MPEP
§ 2106.05(f).
Extra or Post-Solution Activities under MPEP § 2106.05(g)
“[T]he prohibition against patenting abstract ideas ‘cannot be
circumvented by attempting to limit the use of the formula to a particular
technological environment’ or [by] adding ‘insignificant post[-]solution
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activity.’” Bilski v. Kappos, 561 U.S. 593, 610–12 (2010) (quoting
Diamond v. Diehr, 450 U.S. 175, 191–92 (1981)).
Here, we find independent claim 1 recites one or more additional
limitations that are extra-solution activities the courts have determined to be
insufficient to transform judicially excepted subject matter into a patent-
eligible application. See MPEP § 2106.05(g).
For example, we conclude at least the claim 1 initial step or act of
“receiving, at a mobile information handling device, a message directed to a
human recipient” is merely data gathering. (Emphasis added). We note that
similar limitations of commensurate scope are recited in remaining
independent claims 11 and 20. As such, these limitations recite insignificant
extra-solution activities. See buySAFE, Inc. v. Google, Inc., 765 F.3d 1350,
1355 (Fed. Cir. 2014) (“That a computer receives and sends the information
over a network—with no further specification—is not even arguably
inventive.”) (emphasis added).
MPEP § 2106.05(a) — Improvement to the Functionality of a Computer or
Other Technology or Technical Field.
Applying the guidance under MPEP § 2106.05(a), we consider whether
there are any claimed improvements to the functioning of a computer or to
any other technology or technical field.
The Examiner finds:
The claims are not similar to other improvements to computer
technology such as a particular configuration of inertial sensors
and a particular method of using the raw data from the sensors
in order to more accurately calculate the position and
orientation of an object on a moving platform (Thales Visionix
v. United States, 2015-5150 (Fed. Cir. 2017)), an improved
memory system by configuring the memory system based on
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the type of processor connected to the memory system (Visual
Memory v. Nvidia, 2016-2254 (Fed. Cir. 2017)), behavior-based
virus scanning (Finjan Inc. v. Blue Coat Systems, Inc., 879 F.3d
1299 (Fed. Cir. 2018)) or an improved user interface for mobile
devices that displays an application summary of each
application on the main menu while those applications are in an
unlaunched state (Core Wireless Licensing S.A.R.L., v. LG
Electronics, Inc., 880 F.3d 1356 (Fed. Cir. 2018)). Rather here,
the claims are abstractly directed to collecting information,
parsing and comparing/analyzing information using
predetermined criteria, and displaying the results to a user by
notification.
Final Act. 15 (emphasis added).
But Appellant disagrees, and contends:
Applicant respectfully submits that the claims parse received
messages automatically which then extracts action items
identified within the message and executes the identified action
item in an unconventional manner. Generally, the conventional
techniques require a user to read a received message and to
recognize an action item within the message to be performed.
Further, performing the action identified must be performed by
the user as a separate task, rather than being performed after
determination of the action item. Thus, a system performing the
receiving, parsing, identifying, providing, and executing based
upon the receipt of a message is clearly an improvement over
the conventional methods.
Appeal Br. 29 (emphasis added).
To the extent that Appellant’s computing system of claim 1 merely
automates a manual approach to parsing received messages, we note that the
“‘mere automation of manual processes using generic computers’ . . . ‘does
not constitute a patentable improvement in computer technology,’” Trading
Techs. Int’l v. IBG LLC, 921 F.3d 1378, 1384 (Fed. Cir. 2019) (quoting
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Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1055 (Fed. Cir.
2017).
To the extent that Appellant’s claim method performs such parsing of
received messages faster than a person, 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). Additionally,
“a claim for a new abstract idea is still an abstract idea.” Synopsys, Inc. v.
Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016).
On this record, we find Appellant does not advance any substantive,
persuasive arguments explaining how the claimed generic computer
components: (1) improve the method other than by using a computer for its
expected advantage in improving the speed and efficiency of computations,
(2) the extent to which the computer improves the method beyond the
computer’s expected functionality, or (3) the significance of a computer to
the performance of the method to improve the recited generic computer
components. See MPEP § 2106.05(a).
Accordingly, on this record, we find that independent claim 1 does not
recite an improvement to the functionality of a computer or other technology
or technical field. See MPEP § 2106.05(a). Remaining independent claims
11 and 20 recite similar limitations of commensurate scope, and therefore do
not remedy the aforementioned deficiency of claim 1.
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MPEP § 2106.05(b), 2106.05(c)
Appellant does not advance any arguments explaining how any
method claims on appeal are: (1) tied to a particular machine under MPEP
§ 2106.05(b), or (2) transform an article to a different state or thing under
MPEP § 2106.05(c). Arguments not timely made are forfeited. See Google
Tech., 980 F.3d at 862; see also 37 C.F.R. § 41.37(c)(1)(iv).
MPEP § 2106.05(e) Meaningful Claim Limitations
Regarding independent claims 1, 11, and 20, the Examiner finds that
the “additional elements do not reflect an improvement in the functioning of
a computer, or an improvement to [another] technology or technical field, nor
do they apply or use the judicial exception in some other meaningful way
beyond generally linking the use of the judicial exception to a particular
technological environment, [therefore] they fail to integrate the abstract idea
into a practical application.” Final Act. 16–17 (emphasis added).
Appellant advances no arguments in either Brief traversing the
Examiner’s findings under MPEP § 2106.05(e). Because Appellant does not
advance any substantive, persuasive arguments explaining how the judicial
exception is applied or used in some meaningful way, as described under
MPEP § 2106.05(e), on this record, we are not persuaded the Examiner
erred.
Accordingly, under Step 2A, Prong Two (MPEP § 2106.05(a)–(c) and
(e)–(h)), we conclude that all claims 1–3, 5, 8–13, 15, and 18–20 do not
integrate the judicial exception into a practical application.
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The Inventive Concept — Step 2B
As set forth under MPEP § 2106.05(d), only if a claim (1) recites a
judicial exception, and (2) does not integrate that exception into a practical
application, do we then look, under Step 2B, to whether the claim: (3) adds
a specific limitation beyond the judicial exception that is not “well-
understood, routine, conventional activity” in the field; 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.
In applying Step 2B, the Examiner finds that the additionally recited
steps or acts of method claim 1 were “well-understood, routine, and
conventional within the electronic messaging art, particularly in the context
of filtering electronic messages for the purposes of extracting information
out of messages for presentation to a user.” Final Act. 20, lines 1–4
(emphasis added).
In support, the Examiner provides Berkheimer7 evidence, citing to
Thurlow et al., US Pat. No. 5,917,489 that describes “performing similar
tasks on a client similar to the claimed ‘mobile information handling device’
that contains a well-known application (‘OUTLOOK 97’).” Final Act. 20.
Appellant disagrees:
Applicant respectfully submits that the claims represent an
inventive concept, as the claims when analyzed in combination
and as a whole, adds a specific limitation or combination of
limitations that are not well-understood, routine, conventional
activity in the field, which is indicative of an inventive concept,
per Revised Guidance. Accordingly, Applicant respectfully
submits that, even in the event that the Office reaches Step 2B,

7 See Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018).
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the claims represent an inventive concept and are, thus, patent
eligible.
Appeal Br. 30 (emphasis added).
However, Appellant does not substantively traverse the Examiner’s
Berkheimer evidence: Thurlow et al. US Pat. 5, 917,489. See Final Act. 20.
Arguments not made are waived or forfeited. See, e.g., 37 C.F.R.
§ 41.37(c)(1)(iv); see also Google Tech. Holdings, 980 F.3d at 862.
Therefore, on this record, we are not persuaded that the Examiner erred with
respect to the analysis required under Step 2B of the Director’s 2019 Revised
Guidance, as now set forth under MPEP § 2106.05(d), and the mandatory
USPTO policy set forth under the Berkheimer8 Memorandum at 3–4.
Accordingly, we affirm the Examiner’s Rejection A of claims 1–3, 5, 8–13,
15, and 18–20 under 35 U.S.C. § 101.

8 USPTO Memorandum, Changes in Examination Procedure Pertaining to
Subject Matter Eligibility, Recent Subject Matter Eligibility Decision
(Berkheimer v. HP, Inc.) (Apr. 19, 2018), available at
https://www.uspto.gov/sites/default/files/documents/memo-berkheimer-
20180419.PDF.
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Rejection B under 35 U.S.C. § 112(a) of
Claims 1–3, 5, 8–13, 15, and 18–20
Issue

Did the Examiner err in rejecting claims 1–3, 5, 8–13, 15, and
18–20 under 35 U.S.C. § 112(a) as failing to comply with the
written description requirement?

Analysis

Claim 1 recites in pertinent part: “wherein the categorizing of the
priority of the at least one action item identified comprises determining an
order of execution of one or more additional action items comprised in the
message.” Appeal Br. 38–39, Claims App. (emphasis added).
The Examiner finds a lack of written description support for claim 1
because “the specification does not, in any respect, describe any ‘ordering’
of ‘execution’ of any ‘action items.’” Final Act. 24.
Appellant disagrees, and contends:
While the language “categorizing of the priority of the at least
one action item identified comprises determining an order of
execution of one or more additional action items” is not
expressly used within the specification, the claim limitation
does not have to be expressly supported within the originally
filed disclosure. Rather, the claim limitations may be implicitly
or inherently supported in the originally filed disclosure. See
MPEP § 2163(I)(B). The originally filed specification discloses
that “if the message is high priority ... , an embodiment may
then execute additional actions.” Specification at [0030].
Additionally, the specification discloses “if the action item
message was received from a low priority contact ... , an
embodiment may take no additional action even though the
message contains one or more action items.” Specification at
[0030]. The specification further discloses “an embodiment
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may determine an urgency of an action item as part of a priority
determination.” Specification at [0031]. The specification
further describes how different action items are treated with
different automated actions. See Specification at [0030] –
[0037]. Not all of these actions are associated with an
automated action or can be performed without user input. Thus,
Applicant respectfully submits that the claim limitation
“categorizing of the priority of the at least one action item
identified comprises determining an order of execution of one
or more additional action items” is supported in the originally
filed disclosure as required by the written description
requirement.
Appeal Br. 31 (underlining omitted).
Appellant further submits that the Specification:
supports that whether or not actions are executed and what
actions are executed are determined based upon a priority of the
message, see Specification at [0030], or priority of the contact
sending the message including the action. See Specification at
[0030]. Accordingly, Applicant respectfully submits that the
specification at least implicitly supports that the action items
are prioritized. If something is prioritized then, by reason,
things are placed into an order based upon the priority.
Accordingly, the specification at least implicitly supports that
the action items are ordered based upon the priority of the
identified action items.
Reply Br. 33 (underlining omitted).
The written description “must clearly allow persons of ordinary skill
in the art to recognize that [the inventor] invented what is claimed.” Ariad
Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en
banc) (citation and quotations omitted). The test is whether the disclosure
“conveys to those skilled in the art that the inventor had possession of the
claimed subject matter as of the filing date.” Id. “[A]ctual ‘possession’ or
reduction to practice outside of the specification is not enough. Rather ... it is
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the specification itself that must demonstrate possession.” Id. at 1352; see
also PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306–07 (Fed.
Cir. 2008) (emphasis added) (explaining that § 112, ¶ 1 “requires that the
written description actually or inherently disclose the claim element”). “[I]t
is ‘not a question of whether one skilled in the art might be able to construct
the patentee’s device from the teachings of the disclosure. . . . Rather, it is a
question whether the application necessarily discloses that particular device
. . . A description which renders obvious the invention for which an earlier
filing date is sought is not sufficient.” Lockwood v. American Airlines, Inc.,
107 F.3d 1565, 1572 (Fed. Cir. 1997) (quoting Jepson v. Coleman, 314 F.2d
533, 536 (CCPA 1963)) (emphasis added).
Here, we do not find a supporting description in any of paragraphs
30–37 of the Specification for the claim 1 step of “wherein the categorizing
of the priority of the at least one action item identified comprises
determining an order of execution of one or more additional action items,”
as recited in the last several lines of claim 1. (Emphasis added).
Moreover, we find Appellant’s original Specification (including the
drawings and original claims) is silent regarding any mention of such
categorizing, which was added to the claims by amendment during
prosecution before the Examiner. We emphasize that a description in the
Specification which merely renders obvious the invention for which an
earlier filing date is sought is insufficient to demonstrate possession of that
which is claimed. See Lockwood, 107 F.3d at 1572. Therefore, on this
record, we find Appellant has not shown possession of the claimed subject
matter found missing from the Specification by the Examiner. See Final
Act. 24.
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Accordingly, based upon the preponderance of the evidence, we
sustain the Examiner’s written description Rejection B under 35 U.S.C.
§ 112(a) of representative independent claim 1 and grouped claims 2, 3, 5,
8–13, 15, and 18–20 (not argued separately) under 35 U.S.C. § 112(a). See
37 C.F.R. § 41.37(c)(1)(iv)

Rejection C under 35 U.S.C. § 112(b) of
Claims 1–3, 5, 8–13, 15, and 18–20
Issue

Did the Examiner err in rejecting claims 1–3, 5, 8–13, 15, and
18–20 under 35 U.S.C. § 112(b) as being indefinite?

Analysis

In rejecting claims 1–3, 5, 8–13, 15, and 18–20 under 35 U.S.C.
§ 112(b) as being indefinite, the Examiner notes that the claim terms “the
original message,” “the categorizing of the priority of the at least one action
item identified,” and “determining an order of execution of one or more
additional action items comprised in the message” lack sufficient antecedent
basis. Final Act. 24.
Appellant does not traverse the Examiner’s Rejection C, but merely
states: “Applicant would be willing to amend the claims to address these
rejections.” Appeal Br. 32. But we have no authority to hold Rejection C
in abeyance until Appellant cures the problem via amendment.
Accordingly, we pro forma sustain the Examiner’s Rejection C of
claims 1–3, 5, 8–13, 15, and 18–20 under 35 U.S.C. § 112(b), because
Appellant has not substantively traversed the basis for the rejection, as set
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forth by the Examiner. See Final Act. 24. Arguments not made are waived
or forfeited. See, e.g., 37 C.F.R. § 41.37(c)(1)(iv); see also Google Tech.
Holdings, 980 F.3d at 862.

Rejection D under 35 U.S.C. § 102
of Claims 1, 2, 8, 11, 12, 18, and 20
Issue: Did the Examiner err by finding Rowe discloses the following
steps or acts:
providing, to the human recipient, a notification corresponding
to the one or more high priority action items identified on the
mobile information handling device, wherein the notification
corresponding to the one or more high priority action items is a
message that is separate from the original message received on
the mobile information handling device; and

executing at least one action in response to the one or more
high priority action items identified, wherein the executed at
least one action is categorized as a high priority action item
over at least one additional action item identified within the
message, wherein the categorizing of the priority of the at least
one action item identified comprises determining an order of
execution of one or more additional action items comprised in
the message,

within the meaning of representative independent claim 1? (emphasis
added).
The Examiner cites to Rowe’s paragraph 53 for disclosing the
“providing” limitation, and further cites to paragraphs 62, 63, 79, 43, and 44
for disclosing the “executing” limitation. Final Act. 26.
Appellant contends the Examiner erred in finding Rowe discloses the
aforementioned “providing” and “executing” steps. See Appeal Br. 32–33.
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Appellant contends the “action items” identified in Rowe are specific to
events and therefore do not disclose the disputed limitations. Appeal Br. 33
(citing Rowe ¶¶ 42–46).
However, Appellant’s arguments do not explain why the paragraphs
of Rowe cited by the Examiner fail to disclose the disputed limitations.
Instead, Appellant diverts our attention to other portions of Rowe not relied
upon by the Examiner. See Appeal Br. 33–35.
On this record, we find a preponderance of the evidence supports the
Examiner’s finding of anticipation, because the Examiner explains that it is
Rowe’s user who receives an action item communication, which must be
completed by the end of a current time period, and Rowe’s description of
extracting and parsing events (based upon deadlines and time periods) which
disclose the disputed limitations. See Ans. 16–17 (citing Rowe ¶¶ 43–46,
53, 54, Fig. 4).
Therefore, on this record, and based upon a preponderance of the
evidence, we are not persuaded the Examiner erred. Accordingly, we
sustain anticipation Rejection D of representative independent claim 1, and
Rejection D of grouped claims 2, 8, 11, 12, 18, and 20 (not argued
separately), which fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
Rejections E, F, and G under 35 U.S.C. § 103
Appellant does not advance any separate arguments regarding
remaining dependent claims 3, 5, 9, 10, 13, 15, and 19 that were rejected
under obviousness rejections E, F, and G. Therefore, we sustain the
Examiner’s Rejections E, F, and G of these claims, based upon the doctrines
of waiver or forfeiture. See, e.g., 37 C.F.R. § 41.37(c)(1)(iv); see also
Google Tech. Holdings, 980 F.3d at 862.
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CONCLUSIONS
(1) By applying the Director’s 2019 Revised Guidance and October
2019 Update, as now set forth under MPEP Sections 2103 through
2106.07(c), Appellant has not shown that the Examiner erred in concluding
that claims 1–3, 5, 8–13, 15, and 18–20 are directed to patent-ineligible
subject matter under 35 U.S.C. § 101 (Rejection A).
(2) Appellant has not shown that the Examiner erred with respect to
Rejection B of claims 1–3, 5, 8–13, 15, and 18–20, under 35 U.S.C. § 112(a)
(written description).
(3) Appellant has not shown that the Examiner erred with respect to
Rejection C of claims 1–3, 5, 8–13, 15, and 18–20, under 35 U.S.C. § 112(b)
(indefiniteness).
(4) Appellant has not shown that the Examiner erred with respect to
anticipation Rejection D of claims 1, 2, 8, 11, 12, 18, and 20, under 35
U.S.C. § 102(a)(2) over Rowe.
(5) Appellant has not shown that the Examiner erred with respect to
obviousness Rejections E, F, and G of claims 3, 5, 9, 10, 13, 15, and 19 over
the cited combinations of prior art.

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DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Ba
sis Affirmed Reversed
1–3, 5, 8–13,
15, 18–20 101 Eligibility
1–3, 5, 8–13,
15, 18–20
1–3, 5, 8–13,
15, 18–20 112(a)
Written
description
1–3, 5, 8–13,
15, 18–20
1–3, 5, 8–13,
15, 18–20 112(b) Indefiniteness
1–3, 5, 8–13,
15, 18–20
1, 2, 8, 11,
12, 18, 20

102(a)(2) Rowe 1, 2, 8, 11, 12, 18, 20
3, 13 103 Rowe, Lavoie 3, 13
5, 15 103 Rowe, Chen 5, 15
9, 10, 19 103 Rowe, Lessard 9, 10, 19
Overall
Outcome
1–3, 5, 8–13,
15, 18–20
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)(1)(iv). See
37 C.F.R. § 41.50(f).
AFFIRMED