Naotaka Takeshita

Patent Trials and Appeals Board

Sep 3, 2019

13727777 - (D) (P.T.A.B. Sep. 3, 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.
13/727,777 12/27/2012 Naotaka Takeshita SONYJP 3.0-3064 4539
15028 7590 09/03/2019
SONYJP
Lerner, David, Littenberg, Krumholz & Mentlik, LLP
600 South Ave West
Westfield, NJ 07090
EXAMINER
ROBINSON, KITO R
ART UNIT PAPER NUMBER
3695
NOTIFICATION DATE DELIVERY MODE
09/03/2019 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):
eOfficeAction@ldlkm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte NAOTAKA TAKESHITA
____________

Appeal 2018-002754
Application 13/727,777
Technology Center 3600
____________

Before ANTON W. FETTING, AMEE A. SHAH, and
MATTHEW S. MEYERS, Administrative Patent Judges.

SHAH, Administrative Patent Judge.

DECISION ON APPEAL1
The Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final decision rejecting claims 29–37.3 The Appellant’s representative
appeared for Oral Argument on August 19, 2019.4 We have jurisdiction
under 35 U.S.C. § 6(b). We AFFIRM.

1 Throughout this Decision, we refer to the Appellant’s Appeal Brief
(“Appeal Br.,” filed Sept. 15, 2017), Reply Brief (“Reply Br.,” filed Jan. 16,
2018), and Specification (“Spec.,” filed Dec. 27, 2012), and to the
Examiner’s Answer (“Ans.,” mailed Dec. 13, 2017) and Final Office Action
(“Final Act.,” mailed Apr. 24, 2017).
2 According to the Appellant, the real party in interest is Sony Corporation.
Appeal Br. 2.
3 Claims 9–28 are withdrawn and not pending in this appeal.
4 Throughout this Decision, we refer to the transcript of the Hearing (“Tr.”).
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STATEMENT OF THE CASE
The Appellant’s invention generally “relates to information
processing apparatuses, information processing methods, information
management apparatuses, information management methods, recording
media, and information processing systems,” and more “particularly relates
to an information processing apparatus, an information processing method,
an information management apparatus, an information management method,
a recording medium, and an information processing system which are
capable of providing services using electronic money of high value for users
and electronic money companies.” Spec. ¶ 1.
Claims 29, 35, and 36 are the independent claims on appeal.
Independent claim 35, which we reproduce below with added bracketing and
paragraphing for reference, is illustrative of the subject matter on appeal:
35. An information processing method for use with a
mobile terminal having an IC (integrated circuit) chip having
unique identification information which uniquely identifies the
IC chip of the mobile terminal from other IC chips of other
mobile terminals, a memory, a communication unit connected to
an input/output interface, and a CPU (Central Processing Unit),
said mobile terminal configured for use in a system having an
information management apparatus and implementing a reward
campaign for a user of the mobile terminal, said method
comprising:
[(a)] wirelessly receiving, by use of the communication
unit, condition data representing a number of predetermined
conditions needed to be satisfied within a predetermined period
of time from the information management apparatus which
accepts access from a plurality of mobile terminals connected by
way of a communication network; and
[(b)] executing, by use of the CPU, a program obtained
from the memory and upon execution thereof
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(i) performing a first determination as to whether
the number of predetermined conditions are satisfied in
accordance with usage history stored in advance in the
mobile terminal and the condition data such that the first
determination is performable in the mobile terminal,
(ii) causing an indication of a result of the first
determination to be provided to a user of the mobile
terminal and,
when the result of the first determination indicates
that the number of predetermined conditions are satisfied,
causing a selectable input to be provided to the user which
when selected causes application data including address
information of the mobile terminal and the unique
identification information of the IC chip to be wirelessly
transmitted by way of the communication network for
receipt by the information management apparatus,
(iii) after wirelessly transmitting the application
data, performing a second determination as to whether a
response has been received from the information
management apparatus, in which the response pertains to
a determination performed by the information
management apparatus as to whether the number of
predetermined conditions are satisfied, and
(iv) when a result of the second determination
indicates that the response has been received, causing a
second selectable input to be provided to the user which
when selected requests user information pertaining to the
user to be wirelessly transmitted for receipt by the
information management apparatus such that a respective
user who is not provided with the second selectable input
is not requested to wirelessly transmit the user information
pertaining to the respective user.
Appeal Br. 10–11 (Claims App.).

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THE REJECTION
Claims 29–37 stand rejected under 35 U.S.C. § 101 as being directed
to a judicial exception without significantly more.

ANALYSIS
The Appellant argues claims 29–37 as a group. See Appeal Br. 6, 8.
We select claim 35 from the group as representative, with the remaining
claims standing or falling therewith. See 37 C.F.R. § 41.37(c)(1)(iv).
35 U.S.C. § 101 Framework
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. 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, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (185))); 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 U.S. at 176; see also id. at 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. (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 (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. (alterations in original) (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.
Earlier this year, the PTO published revised guidance on the
application of § 101. 2019 REVISED PATENT SUBJECT MATTER ELIGIBILITY
GUIDANCE, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019 Revised Guidance”).
Under the 2019 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); and
(2) additional elements that integrate the judicial
exception into a practical application (see MANUAL OF
PATENT EXAMINING PROCEDURE (MPEP) §§ 2106.05(a)–
(c), (e)–(h) (9th Ed., Rev. 08.2017, Jan. 2018)).
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 is not “well-understood, routine, conventional” in the
field (see MPEP § 2106.05(d)); or
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(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 2019 Revised Guidance.
Step One of the Mayo/Alice Framework
Under the first step of the Mayo/Alice framework, the Examiner
determines that claim 35 is “directed to managing information to determine
if predetermined conditions have been satisfied” (Final Act. 3) and more
particularly to “implementing a reward campaign (i.e. managing
information), which is implemented by a system that uses computer and
networking components” (Ans. 7). The Examiner determines that
Implementing a reward campaign (i.e. managing
information) is ‘method of organizing human behavior’
that is similar to other concepts that have been identified
as abstract by the courts, such as tracking financial
transactions to determine whether they exceed a pre-set
spending limit[;] . . . 1) collecting data, 2) recognizing
certain data within the collected data set, and 3) storing
that recognized data in a memory[;] . . . 1) Collecting
information, 2) analyzing it, and 3) displaying certain
results of the collection and analysis[;] . . . and Monitoring
delivery of real-time information to users.
Id. (citing Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d
1363 (Fed. Cir. 2015), Content Extraction and Transmission LLC v. Wells
Fargo, 776 F.3d 1343 (Fed. Cir. 2014), Electric Power Grp., LLC v. Alstom
S.A., 830 F.3d 1350 (Fed. Cir. 2016), and Two-Way Media Ltd. v. Comcast
Cable Commc’ns LLC, 874 F.3d 1329 (Fed. Cir. 2017)); see also Final
Act. 3. When viewed through the lens of the 2019 Revised Guidance, Step
2A, Prong One, the Examiner’s analysis depicts the claimed subject matter
as a “[c]ertain method[] of organizing human activity” that includes
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“fundamental economic principles or practices (including hedging,
insurance, mitigating risk); [and] commercial or legal interactions (including
agreements in the form of contracts; legal obligations; advertising,
marketing or sales activities or behaviors; business relations).” 2019
Revised Guidance, 84 Fed. Reg. at 52.
The Appellant contends “the claims are directed to implementing a
reward campaign for a user of a mobile terminal” (Appeal Br. 6), which is
not dissimilar to the Examiner’s characterization. However, the Appellant
argues that the claim “recites numerous steps, hardware elements, and
interactions between hardware elements that no reasonable person would
characterize as a mere ‘method of organizing human behavior.’
Characterizing [the] claim . . . as mere ‘method of organizing human
behavior’ amounts to a gross oversimplification of the claim.” Reply Br. 2.
Before determining whether the claims at issue are directed to an
abstract idea, we first determine to what the claims are directed.
[T]he “directed to” inquiry applies a stage-one filter to
claims, considered in light of the specification, based on
whether “their character as a whole is directed to excluded
subject matter.” Internet Patents Corp. v. Active Network,
Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015); see Genetic
Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1375, 2016
WL 1393573, at *5 (Fed. Cir. 2016) (inquiring into “the
focus of the claimed advance over the prior art”).
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). The
question is whether the claims as a whole “focus on a specific means or
method that improves the relevant technology” or are “directed to a result or
effect that itself is the abstract idea and merely invoke generic processes and
machinery.” McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299,
1314 (Fed. Cir. 2016).
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An examination of claim 35 shows that the claim recites “[a]n
information processing method for use with a mobile terminal having an IC
(integrated circuit) chip” with information uniquely identifying the chip, “a
memory, a communication unit connected to an input/output interface, and a
CPU (Central Processing Unit),” with the “mobile terminal configured for
use in a system having an information management apparatus and
implementing a reward campaign for a user of the mobile terminal,” and the
method comprising the steps of: (a) wirelessly receiving, by use of the
communication unit and from the information management apparatus that is
connected to and accessed by plurality of mobile terminals, “condition data
representing . . . predetermined conditions needed to be satisfied within a
predetermined period of time; and (b) “executing, by use of the CPU, a
program obtained from the memory.” Appeal Br. 10–11 (Claims App.).
The program “(i) perform[s] a first determination as to whether the number
of predetermined conditions are satisfied . . . such that the first determination
is performable in the mobile terminal, (ii) caus[es] an indication of a result
of the first determination to be provided to a user of the mobile terminal,”
conditionally “causing a selectable input to be provided to the user which
when selected causes” application data and identification information to be
wirelessly transmitted “when the result of the first determination indicates
that the number of predetermined conditions are satisfied,” (iii) performs,
after wirelessly transmitting the application data, “a second determination as
to whether a response has been received from the information management
apparatus,” the response “pertain[ing] to a determination performed by the
information management apparatus as to whether the number of
predetermined conditions are satisfied,” and (iv) conditionally, “when a
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result of the second determination indicates that the response has been
received, caus[es] a second selectable input to be provided to the user” that
causes information to be transmitted to the management apparatus “such that
a . . . user who is not provided with the second selectable input is not
requested to wirelessly transmit” that user’s information. Id.
The mobile terminal that performs the claimed method has an IC chip,
memory, communication unit, input/output interface, and CPU (see id.;
Spec. ¶¶ 80–85) and “is configured as an electronic apparatus such as a
smart phone or a tablet terminal carried by a user” (Spec. ¶ 63). The
Specification describes the information management apparatus as “including
a communication unit, a memory, and a controller” (id. ¶ 210) and as having
a storage unit such as a hard disk, transmission and reception units such as a
modem and network interface card, a drawing execution unit that may be
software, display units such as an LCD and speaker (see id. ¶¶ 19–25, 180).
When considered collectively and under the broadest reasonable
interpretation of the claim’s limitations, we agree with the Examiner that the
claim recites a method for implementing a reward campaign by managing
information through using computer and networking components, which is
not dissimilar to the Appellant’s characterization of a method for
implementing a reward campaign for a user of a mobile terminal. Receiving
and accessing data are extra-solution activities. See In re Bilski, 545 F.3d
943, 963 (Fed. Cir. 2008) (en banc), aff’d sub nom Bilski v. Kappos, 561
U.S. 593 (2010) (characterizing data gathering steps as insignificant extra-
solution activity). The elements of determining and causing are functionally
recited without any detail how the results are accomplished, i.e., in what
way(s) technologically or by what algorithm. Based on the example
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provided that a determination of whether a certain amount of money is spent
during a time period (Spec. ¶ 158), the determinations can be performed by
any analysis and comparison of data, which can be done mentally.
Transmitting and presenting the results of the analysis are merely
insignificant post-solution activities. See Bilski, 561 U.S. at 610–11 (“Flook
stands for the proposition that the prohibition against patenting abstract ideas
‘cannot be circumvented by attempting to limit the use of the formula to a
particular technological environment’ or adding ‘insignificant postsolution
activity.”’) (quoting Diehr, at 191–92).
Thus, we are left with the limitations regarding causing inputs to be
provided, with no meaningful steps outside that scope. The claims do not
specifically recite how, technologically or by what algorithm, the CPU
causes selectable inputs to be conditionally provided. The Appellant directs
attention to the Specification at paragraphs 106, 111, 135, 136, 139, 160,
167, and 168. Appeal Br. 4. These paragraphs provide that images that
prompt for and notify of information are displayed, a URL for displaying an
image is transmitted, and input information is transmitted. As such, the
causing of selectable inputs comprises displaying prompts for receiving
information. As noted above, displaying and receiving information are
extra-solution activities.
Implementing a reward campaign by managing information through
using computer and networking components is similar to the concepts of
“selecting certain information, analyzing it using mathematical techniques,
and reporting or displaying the results of the analysis” in SAP America, Inc.
v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018), of “customizing a
user interface to have targeted advertising based on user information” in
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Affinity Labs of Texas, LLC v. Amazon.com Inc., 838 F.3d 1266, 1271 (Fed.
Cir. 2016) (“Amazon”), of customizing and tailoring web page content based
on navigation history and known user information in Intellectual Ventures I,
792 F.3d at 1369–70, and of providing incentive awards in Kroy IP
Holdings, LLC v. Safeway, Inc., 107 F.Supp.3d 677, 690 (E.D. Tex. 2015),
aff'd, 639 F. App’x 637 (Fed. Cir. 2016). Accordingly, we conclude the
claim recites a way of implementing a reward campaign, which is a
commercial interaction of advertising, marketing, or sales activities, one of
the certain methods of organizing human activity as identified in the 2019
Revised Guidance, 84 Fed. Reg. at 52, and thus an abstract idea. As such,
we disagree that the Appellant’s contentions that the specific requirements”
of the claim were not considered (see Appeal Br. 7) and that
“[c]haracterizing . . . [the] claim . . . as mere ‘method of organizing human
behavior’ amounts to a gross oversimplification of the claim” (Reply Br. 2).
We also disagree that because the claim “recites numerous steps,
hardware elements, and interactions between hardware elements that no
reasonable person would characterize as a mere ‘method of organizing
human behavior.’” Appeal Br. 6. The number of steps does not alter the
abstract nature under step one simply by adding a “degree of particularity”
to the abstract idea. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715
(Fed. Cir. 2014).
The Appellant argues that “the feature ‘cause a selectable input to be
provided to the user which when selected causes application data including
address information of the mobile terminal and the unique identification
information of the IC chip to be wirelessly transmitted by way of the
communication network for receipt by the information management
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apparatus’ as recited in claim 29, and similarly in claims 35 and 36, cannot
be performed ‘mentally’,” and thus, the claim does not recite an abstract
idea. Appeal Br. 7–8. However, the wireless transmission of data using
general components simply confines the idea to a particular technological
environment of mobile devices. “The Supreme Court and [the Federal
Circuit] have repeatedly made clear that merely limiting the field of use of
the abstract idea to a particular existing technological environment does not
render the claims any less abstract.” Affinity Labs of Texas, LLC v.
DIRECTV, LLC, 838 F.3d 1253, 1259 (Fed. Cir. 2016) (“DIRECTV”), citing
Alice, 573 U.S. at 222; Mayo, 566 U.S. at 71; Bilski, 561 U.S. at 612,
Content Extraction, 776 F.3d at 1348, buySAFE, Inc. v. Google, Inc., 765
F.3d 1350, 1355 (Fed. Cir. 2014). The Specification is clear that cellular
phones and smart phones, and thus wireless communication, had been
widely in use at the time of the invention. See, e.g., Spec. ¶ 2. “[T]hat the
claimed invention transmits data wirelessly and therefore does not rely on a
wired path is not itself a technological improvement, but rather simply a
feature of wireless communication, which the specification explains was
already a basic, conventional form of communication.” Chamberlain Grp.,
Inc. v. Techtronic Indus. Co., No. 2018-2103, 2019 WL 3938278, at *3 (Fed.
Cir. Aug. 21, 2019)
Under Step 2A, Prong 2 of the 2019 Revised Guidance, 84 Fed. Reg.
at 54, we look to whether the claims “apply, rely on, or use the judicial
exception in a manner that imposes a meaningful limit on the judicial
exception, such that the claim is more than a drafting effort designed to
monopolize the judicial exception,” i.e., “integrates a judicial exception into
a practical application.” Here, the Appellant contends that the claim
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“recite[s] an ordered combination of elements that realize an improved,
practical technology for implementing a reward campaign for a user of a
mobile terminal.” Appeal Br. 6–7.5 When viewed through the lens of the
2019 Revised Guidance, the Appellant contends that the elements of the
claim integrate the abstract idea into a practical application because “[a]n
additional element reflects an improvement in the functioning of a computer,
or an improvement to other technology or technical field.” 84 Fed. Reg.
at 55 ((citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245,
1258–59 (Fed. Cir. 2014). We disagree.
Specifically, the Appellant contends that the claim addresses the
“numerous drawbacks associated with prior technologies for providing
rewards to mobile terminal users based on their usage of electronic money.”
Appeal Br. 6 (citing Spec. ¶¶ 3–9); see also Reply Br. 2–3. The
Specification describes these “drawbacks” as: (1) all owners using electronic
money receiving notification prompting participation in campaigns offering
products because “it is difficult to select users who satisfy campaign
conditions from among owners of the IC cards, the cellular phones, and the
smart phones, for example” (Spec. ¶ 5; see also id. ¶¶ 3–4); (2) the difficulty
in “organiz[ing] a campaign for promoting use of electronic money” when
incentives are given at the tine a specific purchase is made (id. ¶ 6);
(3) users’ hesitation in disclosing personal information and thus withholding
from participating in the campaign when advance user registrations

5 We acknowledge that some of these considerations may be properly
evaluated under Step 2 of Alice (Step 2B of Office guidance). Solely for
purposes of maintaining consistent treatment within the Office, we evaluate
them under Step 1 of Alice (Step 2A of Office guidance). See 2019 Revised
Guidance at 55.
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containing personal information are required (id. ¶ 7); and (4) a campaign is
organized solely by an electronic money company in many cases, and it has
not been assumed that a plurality of electronic money companies organize a
campaign in cooperation with one another” (id. ¶ 8). The Specification thus
describes previous problems related to user convenience and promotional
campaign participation, but does not discuss how these are technological
problems. Rather, “[t]he claimed invention desir[es] to provide a service
utilizing electronic money of high value for users and electronic money
companies.” Id. ¶ 9.
The Appellant does not provide reasoning or evidence, and we do not
see from the claim, how the limitations claim a solution “necessarily rooted
in computer technology in order to overcome a problem specifically arising
in the realm of computer networks.” DDR Holdings, 773 F.3d at 1257.
Having more user participation in promotional campaigns is a problem that
existed before the Internet and electronic money. And the purported
solution is the use of general mobile and computing devices operating in
their ordinary and conventional capacities. The claim is not directed to a
solution to a technological problem nor an improvement in computer,
network, or wireless functionality. See DIRECTV, 838 F.3d at 1262. As the
Examiner states, the claim “is not clearly directed to an improvement in
computer-related technology (e.g., computer functionality) but rather a
business practice of implementing a rewards campaign that uses computers
as tools to manage information and implement the rewards campaign.”
Ans. 7. Any improvement lies in facilitating and encouraging selective user
to participate in promotional campaigns (see Appeal Br. 6; Reply Br. 3) by
wirelessly transmitting inviting participation based on meeting requirement.
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These are not technological improvements or improvements to a
technological area. The alleged improvement lies in the abstract idea itself,
not to any technological improvement. See BSG Tech LLC v. Buyseasons,
Inc., 899 F.3d 1281, 1287–88 (Fed. Cir. 2018); Chamberlain Grp., 2019 WL
3938278 at *5 (“Wireless communication cannot be an inventive concept
here, because it is the abstract idea that the claims are directed to.”). And, as
discussed above, there is no further description of a particular technological
manner for performing the steps. See TDE Petroleum Data Sols., Inc., v.
AKM Enter., Inc., 657 F. App’x 991, 993 (Fed. Cir. 2016) (“As we discussed
at greater length in Electric Power, the claims of the ’812 patent recite the
what of the invention, but none of the how that is necessary to turn the
abstract idea into a patent-eligible application” (citing Electric Power, 830
F.3d at 1353)); Enfish, 822 F.3d at 1336 (focusing on whether the claim is
“an improvement to [the] computer functionality itself, not on economic or
other tasks for which a computer is used in its ordinary capacity”).
At the Hearing (see Tr.), the Appellant also contends that, under the
2019 Revised Guidance, the claim recites “an additional element [that]
implements a judicial exception with, or uses a judicial exception in
conjunction with, a particular machine or manufacture that is integral to the
claim” (84 Fed. Reg. at 55), because the claim uses an integrated chip with
specific information used by the CPU to perform determinations such that
the IC chip is integral to the claim (see Tr.). Specifically, the Appellant
argues that the claim takes different information and uses it in a different
way. See id. We disagree. That the claim requires specific computer or
technological components, i.e., an integrated circuit card and a CPU, does
not save the claim from abstraction. See BSG Tech., 899 F.3d at 1286. The
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recited structure merely provides a generic environment with which to
perform the functions of retrieving and determining information. See id.
Here, as discussed above, the IC chip and CPU are conventional components
commonly used at the time of the invention (see supra; Spec. ¶¶ 2, 5, 81–85)
and merely limit the abstract idea to a particular technological environment
(see BSG Tech, 899 F.3d at 2386–87).
We further disagree with the Appellant’s contention (see Tr.) that the
claim here is similar to those of Core Wireless Licensing S.A.R.L. v. LG
Elecs., Inc., 880 F.3d 1356 (Fed. Cir. 2018). In Core Wireless, the Federal
Circuit held that “claims drawn to improved interfaces for electronic devices
with small screens that allowed users to more quickly access desired data
stored in, and functions of applications included in, the electronic devices
were not drawn to the abstract idea of an index. Core Wireless, 880 F.3d at
1359, 1362.” Chamberlain Grp., 2019 WL 3938278 at *4. The court
“concluded that the claims recited ‘a specific improvement over prior
systems, resulting in an improved user interface for electronic devices.’” Id.
(quoting Core Wireless, 880 F.3d at 1363). Here, as discussed above, the
claim merely recites a system with computer components that operate in
their conventional manners to receive information, make determinations, and
display the results of the determinations without any technological
improvement to the computer components themselves.
Thus, we are not persuaded of error in the Examiner’s determination
that claim 35 is directed to an abstract idea.

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The Second Step
Under the second step in the Alice framework (corresponding to Step
2B of the 2019 Revised Guidance), we find supported the Examiner’s
determination that the claim’s limitations, taken individually or as an
ordered combination, do not amount to significantly more than the judicial
exception, because they “are recited at a high level of generality” and use
generic computer components to perform well-understood, routine, and
conventional activities. Final Act. 4–5; Ans. 9.
The Appellant does not offer additional reasoning or argument why
the claim “[a]dds 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.” 2019 Revised
Guidance, 84 Fed. Reg. at 56.
Taking the claimed elements separately, the function performed by the
computer at each step of the process is purely conventional. The claimed
mobile terminal is a generic smart phone or tablet computing device, and the
information management apparatus is a conventional, general purpose
computer. See supra. It is clear from the Specification, including the
claim’s language, that the “limitations require no improved computer
resources [the Appellant] claims to have invented, just already available
computers, with their already available basic functions, to use as tools in
executing the claimed process” performed by the claimed system. SAP Am.,
898 F.3d at 1169–70. We agree with the Examiner that the computing
device and processor operate in their ordinary and conventional capacities to
perform the well-understood, routine, and conventional functions of
accessing, wirelessly receiving, determining, and conditionally causing
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wireless presentation of data. See Electric Power, 830 F.3d at 1355
(gathering, sending, monitoring, analyzing, selecting, and presenting
information does not transform the abstract process into a patent-eligible
invention); DIRECTV, 838 F.3d at 1262 (“The claim simply recites the use
of generic features of cellular telephones, such as storage medium and an
graphical user interface, as well as routine functions, such as transmitting
and receiving signals, to implement the abstract idea.”), 1265 (the additional
limitations of an application being wirelessly downloadable and displaying
the broadcast channel/data “describe purely conventional features of cellular
telephones and the applications that enable them to perform particular
functions”); Chamberlain Grp, 2019 WL 3938278 at *3 (“The specification
admits that the act of transmitting data wirelessly is ‘well understood in the
art’”); SAP Am., 898 F.3d at 1170 (“[A]n invocation of already-available
computers that are not themselves plausibly asserted to be an advance, for
use in carrying out improved mathematical calculations, amounts to a
recitation of what is ‘well-understood, routine, [and] conventional.’”)
(quoting Mayo, 566 U.S. at 73).
Considered as an ordered combination, the components of the
Appellant’s claims add nothing that is not already present when the steps are
considered separately. The sequence of data communication (accessing and
receiving), analyzing (determining and weighting), and using the analysis to
generate or present data is equally generic and conventional or otherwise
held to be abstract. DIRECTV, 838 F.3d at 1262–1265 (holding that
sequence of maintaining, presenting, and wirelessly transmitting and
receiving data was abstract), Electric Power, 830 F.3d at 1354–56 (holding
that the sequence of gathering, analyzing, and displaying in real-time was
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abstract); Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d
1372, 1378 (Fed. Cir. 2017) (holding that the sequence of data retrieval,
analysis, modification, generation, display, and transmission was abstract);
SAP Am., 898 F.3d at 1170 (holding that the sequence of storing, receiving,
analyzing, and generating data was abstract). The ordering of the steps is,
therefore, ordinary and conventional.
Thus, we are not persuaded of error in the Examiner’s determination
that the limitations of claim 35 do not transform the claims into significantly
more than the abstract idea.
For at least the reasons above, we sustain the Examiner’s rejection
under 35 U.S.C. § 101 of independent claim 35 and of claims 29–34, 36,
and 37, the rejection of which stands with claim 35.
DECISION
The Examiner’s rejection of claims 29–36 under 35 U.S.C. § 101 is
AFFIRMED.
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)(l)(iv).
AFFIRMED