Neelakantan Sundaresan et al.

Patent Trials and Appeals Board

Sep 16, 2019

14529757 - (D) (P.T.A.B. Sep. 16, 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.
14/529,757 10/31/2014 Neelakantan Sundaresan EBAY.281216 2410
150601 7590 09/16/2019
Shook, Hardy & Bacon L.L.P.
(eBay Inc.)
2555 Grand Blvd.
KANSAS CITY, MO 64108-2613
EXAMINER
PENG, HUAWEN A
ART UNIT PAPER NUMBER
2158
NOTIFICATION DATE DELIVERY MODE
09/16/2019 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):
IPDOCKET@SHB.COM
IPRCDKT@SHB.COM
docketing.shb@clarivate.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte NEELAKANTAN SUNDARESAN and
KARIN MAUGE'
____________________

Appeal 2018-004291
Application 14/529,757
Technology Center 2100
____________________

Before JOSEPH L. DIXON, JOHN A. JEFFERY, and
JOHNNY A. KUMAR, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2018-004291
Application 14/529,757

2
STATEMENT OF THE CASE
Appellants1 appeal under 35 U.S.C. § 134(a) from a rejection of
claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
The claims are directed to generating a thematic query based on the
submitted query and the determined strength score and presentation of items
based on the theme. Claims 1 and 10, reproduced below, are illustrative of
the claimed subject matter:
1. A system comprising:

an access module configured to access a query submitted
by a user;

an identification module, executable by a processor and
configured to identify the submitted query as corresponding to a
theme by determining a strength score of the submitted query,
the strength score indicating a pertinence of the submitted query
to the theme, the theme being a descriptor of a concept that is
applicable to the submitted query; and

a query module to generate a thematic query based on the
submitted query and the determined strength score.

10. A method comprising:

accessing a query submitted by a user;

identifying the submitted query as corresponding to a
theme by determining a strength score of the submitted query,
the strength score indicating a pertinence of the submitted query
to the theme, the theme being a descriptor of a concept that is

1 According to Appellants, the real party in interest is eBay, Inc. (App. Br.
3).

Appeal 2018-004291
Application 14/529,757

3
applicable to the submitted query, the identifying being
performed by a processor; and

generating a thematic query based on the submitted query
and the determined strength score, the thematic query being
different than the submitted query.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Loftesness US 2008/0082518 A1 Apr. 3, 2008
Mohan US 2009/0150214 A1 June 11, 2009

REJECTIONS
The Examiner made the following rejections:
Claims 1–20 stand rejected on the ground of nonstatutory
obviousness-type double patenting as being unpatentable over claims 1–21
of U.S. Patent No. 8,880,513. (Non-Final Act. 2–5 (mailed June 3, 2016)).
For claims 1–9, the Examiner provides a discussion of the claimed
“modules” under 35 U.S.C. § 112, sixth paragraph and maintains that the
claims contain functional limitations, which require claim interpretation in
light of the corresponding structure, acts, or materials as disclosed in the
Specification. (Ans. 3). Based upon the Examiner’s proffered required
interpretation under 35 U.S.C. § 112, sixth paragraph, claims 1–9 stand
rejected under 35 U.S.C. 112 (pre-AIA), second paragraph, as being
indefinite for failing to particularly point out and distinctly claim the subject
matter which the inventor or a joint inventor, or for pre-AIA the applicant,
regards as the invention. (Ans. 6).
Appeal 2018-004291
Application 14/529,757

4
Claims 1–20 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to a judicial exception (i.e., a law of nature, a
natural phenomenon, or an abstract idea) without significantly more. (Ans.
9).
Claims 1–20 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Mohan in view of Loftesness. (Final Act. 3).

ANALYSIS
Nonstatutory Obviousness-Type Double Patenting
With respect to the nonstatutory obviousness-type double patenting
rejection, the Examiner maintains that the rejection stands pending further
amendment. (Final Act. 2).
Appellants “request[] to defer resolution of the double patenting
rejection until the patentable subject matter is determined.” (App. Br. 10).
The Examiner does not expressly withdraw the rejection in the
Examiner’s Answer, but does not expressly repeat the rejection. Therefore,
the rejection stands as indicated in the Final Action, because it has not been
expressly withdrawn by the Examiner, and Appellants have not responded to
the rejection. As a result, we summarily sustain the nonstatutory
obviousness-type double patenting rejection of claims 1–20.

35 U.S.C. § 112 (pre-AIA), second paragraph
The Examiner maintains that the various claimed “modules” are
directed to claim limitations under 35 U.S.C. § 112, sixth paragraph, and
Appeal 2018-004291
Application 14/529,757

5
Appellants do not disclose the corresponding algorithm for these functional
limitations. (Ans. 7–9).
Generic terms, such as “mechanism,” “element,” “device,” and other
“nonce words” used in a claim, can also be considered as a substitute for the
“means-plus-function” limitation and, as such, may invoke the application of
35 U.S.C. § 112, sixth paragraph, even without reciting the term “means,”
because these generic terms or nonce words “‘typically do not connote
sufficiently definite structure.”’ Williamson v. Citrix Online, LLC, 792 F.3d
1339, 1350 (Fed. Cir. 2015) (en banc). As in Williamson, the claims here do
not recite the term “means,” but “the [access module, identification module,
query module] limitation is drafted in the same format as a traditional
means-plus-function limitation, and merely replaces the term ‘means’ with
‘nonce’ word ‘[module],’ thereby connoting a generic ‘black box’ for
performing the recited computer-implemented functions.” Williamson, 792
F.3d at 1350.
The term “module” in this context is used as a generic term
tantamount to reciting a “means” because “module” provides no indication
of the structure necessary to perform the recited functions. See also Manual
of Patent Examining Procedure (“MPEP”) § 2181(I)(A). The claim
limitation in question is not the “module” by itself; it includes all of the
functions the module is “programmed to” perform. See Williamson, 792
F.3d at 1352. Specifically, at least the functions italicized above require
structure beyond simply a generic processor to carry out the claimed
functions. Accordingly, the presumption against applying 35 U.S.C. § 112,
sixth paragraph, is overcome because the claim merely “recites ‘function
without reciting sufficient structure for performing that function.’”
Appeal 2018-004291
Application 14/529,757

6
Williamson, 792 F.3d at 1348 (quoting Watts v. XL Sys., Inc., 232 F.3d 877,
880 (Fed. Cir. 2000)).
Similarly, the prefixes “access,” “identification,” and “query” provide
one of ordinary skill in the art no insight on the structure necessary to
perform the recited functions. Here, as in Williamson, even if one of
ordinary skill in the art would be capable of programming a computer to
perform the recited functions, it is not sufficient to create the structure not
otherwise disclosed. Williamson, 792 F.3d at 1351.
Even to the extent a person of ordinary skill in the art would have
understood the recited “modules” to include generic computer components
(e.g., a processor or device including a processor), such generic computer
components without specific programming are not capable of performing
each of the recited functions. Williamson, 792 F.3d at 1350–51 (finding the
presumption against invoking 35 U.S.C. § 112, sixth paragraph, is overcome
because the recitation of a “distributed learning control module” connotes
insufficient structure for carrying out the recited functions). Appellants
provide no argument or evidence indicating a generic processor, without the
appropriate specific programming, would be capable of performing at least
the claimed functions.
Even prior to Williamson overruling previous cases holding the
presumption that § 112, sixth paragraph, is not invoked if the claim does not
recite the term “means” is “strong,” 792 F.3d at 1349, the Board provided
guidance on the issue before us. For example, the Board found the recitation
of a generic processor configured to perform functions that would require
special programming invoked § 112, sixth paragraph. Ex parte Lakkala,
Appeal No. 2011-001526, 2013 WL 1341108, at *6 (BPAI Mar. 11, 2013)
Appeal 2018-004291
Application 14/529,757

7
(informative). Similarly, the Board found a claim that recited, in part, “a
processor adapted to” perform various functions invoked § 112, sixth
paragraph, and explained that “[t]o see whether the presumption is
overcome, we look to how a skilled artisan would understand ‘processor,’
whether the limitation recites sufficient structure, material, or acts for
achieving the recited functions, and whether the term ‘processor’ is modified
by functional language.” Ex parte Erol, Appeal No. 2011-001143, 2013 WL
1341107, at *8–9 (PTAB Mar. 11, 2013) (informative); accord Ex parte
Smith, Appeal No. 2012-007631, 2013 WL 1341109, at *6–8 (PTAB Mar.
12, 2013) (informative). The PTAB further explained that, “[t]o confirm
whether the presumption against such a substitution is overcome, we look to
determine whether the functions performed by the processor are typical
functions found in a commercially, available off-the-shelf processor, which
would weigh against invoking § 112, sixth paragraph.” Erol, 2013 WL
1341107, at *8.
Therefore, even though claim 1 recites a “module” rather than a
“means,” we agree with the Examiner that aspects of claim 1 invoke 35
U.S.C. § 112, sixth paragraph, such that they are construed as means-plus-
function limitations, because the recited “modules” would not be
“understood by persons of ordinary skill in the art to have a sufficiently
definite meaning as the name for structure” that is capable of carrying out
each of the recited functions. Williamson, 792 F.3d at 1348 (citing
Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580, 1583 (Fed. Cir.
1996)). See also MPEP 2181(I)(A).
Accordingly, we look to Appellants’ Specification to determine
whether there is sufficient structure to support the recited functions. As
Appeal 2018-004291
Application 14/529,757

8
discussed above, we agree with the Examiner that a generic processor does
not provide sufficient structure to perform each of the recited functions.
Appellants do not dispute the Examiner’s finding of functional
limitations, and Appellants contend that the originally filed Specification
provides adequate corresponding support for these claim limitations to
properly interpret the limitations under 35 U.S.C. § 112, sixth paragraph.
(Reply Br. 2). Appellants identify various portions of the originally filed
Specification from paragraphs 40–76 to provide adequate disclosure of the
corresponding structure, materials, or acts of each of functional claim
element. (Reply Br. 3–4).
We have reviewed the paragraphs identified by the Appellants and
disagree with the Appellants that the originally filed Specification discloses
the specific algorithms for accomplishing the various functional modules
recited in the language of independent claim 1. Moreover, we find that the
originally filed Specification discloses the same scope of disclosure as the
claim language. Additionally, with respect to the claimed “strength score,”
we find the Specification provides little detail and provides no further insight
or guidance with respect to the claimed “strength score.” We further find
Appellants’ Specification essentially discloses that the “strength score” may
be a numerical score, but provides little to no assistance in how the strength
score is calculated or how the strength score is functionally used.2

2 See Spec. ¶ 41:
This identification of the portion 120 includes determining a
strength score of a submitted query (e.g., query 111) among the
submitted queries 110. In particular, a strength score may be
determined for each of the submitted queries 110, and these
strength scores may be used to determine which of the submitted
Appeal 2018-004291
Application 14/529,757

9
However, the Federal Circuit has held that corresponding structure
may be sufficiently disclosed in the form of an algorithm. WMS Gaming,
Inc. v. Int’l Game Tech., 184 F.3d 1339, 1348 (Fed. Cir. 1999) (“A general
purpose computer, or microprocessor, programmed to carry out an algorithm
creates ‘a new machine, because a general purpose computer in effect
becomes a special purpose computer once it is programmed to perform
particular functions pursuant to instructions from program software.’”
(quoting In re Alappat, 33 F.3d 1526, 1545 (Fed. Cir. 1994)). The
Specification’s disclosure that the system may be implemented using
computer programs suggests the claimed “modules” may simply be software
executing on generic computer components, which, without specific
programming, are not capable of performing each of the recited functions.

queries 110 are more likely to be pertinent to a theme. For
example, a subset of the submitted queries 110 that has high
strength scores may be analyzed by the identification module 422
extract one or more themes from the search criteria (e.g., search
criteria 112 and 113) contained in the subset of the submitted
queries 110. Accordingly, a particular strength score indicates
a degree of influence that a particular submitted query has on
the identifying of the portion 120. In some example
embodiments, the greater the strength score, the greater the
degree of influence. An alternative example embodiments, the
lower the strength score, the greater the degree of influence. For
example, the strength score may be a numerical score with a
value between zero and one, where a value of zero indicates no
influence and a value of one indicates maximum influence. As
another example, the strength score may take a value between
one and 100, with lower numerical value (e.g., 11) indicating
greater influence on the identification of the portion 120 (e.g.,
compared to 91).
(Emphases added).

Appeal 2018-004291
Application 14/529,757

10
See Spec. ¶ 86 (“For example, a hardware module may include software
encompassed within a general-purpose processor or other programmable
processor.”).
The “modules” in claim 1 “recite[] ‘function without reciting
sufficient structure for performing that function,’” because Appellants’
system is unable to perform the recited function without specific
programming. Williamson, 792 F.3d at 1349 (quoting Watts, 232 F.3d at
880). None of the identified disclosures describes details (e.g., an algorithm
or other corresponding structure) on how to perform each of the recited
functions. Williamson, 792 F.3d at 1352 (“Even if the specification
discloses corresponding structure, the disclosure must be of ‘adequate’
corresponding structure to achieve the claimed function.”). Although a
general purpose computer may provide sufficient structure to perform
functions that do not require special programming, the same general purpose
computer is insufficient structure for performing specific functions that
require special programming. In re Katz Interactive Call Processing Patent
Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011). Therefore, based on this
record, we conclude the term “module” fails “to fulfill the ‘public notice
function’ of 35 U.S.C. § 112 ¶ 2 by ‘particularly pointing out and distinctly
claiming’ the invention” and “exhibit the ‘overbreadth inherent in open-
ended functional claims.’” Katz, 639 F.3d at 1315 (citing Praxair, Inc. v.
ATMI, Inc., 543 F.3d 1306, 1319 (Fed. Cir. 2008); quoting Halliburton
Energy Servs., Inc. v. M–I LLC, 514 F.3d 1244, 1256 n.7 (Fed. Cir. 2008)).
Therefore, we agree with the Examiner that the Specification does not
disclose the corresponding algorithm for the claimed “access module,”
“identification module,” and “query module” to particularly point out and
Appeal 2018-004291
Application 14/529,757

11
distinctly claim the invention. For the above reasons, we agree with the
Examiner that representative claim 1 is indefinite under 35 U.S.C. § 112,
second paragraph, and we sustain the indefiniteness rejection of
representative independent claim 1 and dependent claims 2–9 not argued
separately.

35 U.S.C. § 101
Appellants do not set forth separate arguments for patent eligibility
under 35 U.S.C. § 101. (Reply Br. 4). Therefore, we select independent
method claim 10 as the representative claim for the group and will address
Appellants’ arguments thereto. (See 37 C.F.R. § 41.37(c)(iv) (2016).)
The Examiner maintains that claims 1–20 “are directed to the abstract
idea of generate a thematic query based on the submitted query and the
determined strength score, as explained in detail below.” (Ans. 9). The
Examiner further maintains that the claim recites the additional limitations
of an access module, an identification module executed by a processor, and a
query module that perform generic computer functions that are well-
understood, routine, and conventional activities that amount to no more than
implementing the abstract idea with a computerized system. (Ans. 11). The
Examiner also maintains that there is no indication that the combination of
elements improves the functioning of a computer or improves any other
technology, and collective functions merely provide conventional computer
implementation. (Ans. 11). Thus, taken alone, the additional elements do
not amount to significantly more than the above-identified judicial exception
(the abstract idea), and looking at the limitations as an ordered combination
adds nothing that is not already present when looking at the elements taken
Appeal 2018-004291
Application 14/529,757

12
individually. Consequently, the Examiner maintains that there is no
indication that the combination of elements improves the functioning of a
computer or improves any other technology and the collective functions
merely provide conventional computer implementation. (Ans. 11).
Appellants dispute the Examiner’s conclusion that the pending claims
are directed to patent-ineligible subject matter. (Reply Br. 4–11). In
particular, Appellants argue the claims “are directed to an improvement in
computer-related technology.” (Reply Br. 7 (emphasis omitted)).
Appellants argue the claimed invention is not analogous to the concepts
found abstract by the court decisions cited by the Office Action. (Reply Br.
5).
The Supreme Court’s two-step framework guides our analysis of
patent eligibility under 35 U.S.C. § 101. Alice Corp. v. CLS Bank Int’l, 573
U.S. 208, 217 (2014). In addition, the Office recently published revised
guidance for evaluating subject matter eligibility under 35 U.S.C. § 101,
specifically with respect to applying the Alice framework. USPTO, 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) (“Office Guidance”). If a claim falls within one of the statutory
categories of patent eligibility (i.e., a process, machine, manufacture, or
composition of matter) then the first inquiry is whether the claim is directed
to one of the judicially recognized exceptions (i.e., a law of nature, a natural
phenomenon, or an abstract idea). Alice, 573 U.S. at 217. As part of this
inquiry, we must “look at the ‘focus of the claimed advance over the prior
art’ to determine if the claim’s ‘character as a whole’ is directed to excluded
subject matter.” Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d
1253, 1257 (Fed. Cir. 2016). Per Office Guidance, this first inquiry has two
Appeal 2018-004291
Application 14/529,757

13
prongs of analysis: (i) does the claim recite a judicial exception (e.g., an
abstract idea), and (ii) if so, is the judicial exception integrated into a
practical application. 84 Fed. Reg. at 54. Under the Office Guidance, if the
judicial exception is integrated into a practical application, see infra, the
claim is patent eligible under § 101. 84 Fed. Reg. at 54–55. If the claim is
directed to a judicial exception (i.e., recites a judicial exception and does not
integrate the exception into a practical application), the next step is to
determine whether any element, or combination of elements, amounts to
significantly more than the judicial exception. Alice, 573 U.S. at 217; 84
Fed. Reg. at 56.
Here, Appellants’ representative claim 10 recites an abstract idea
within the category of mental processes. 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 performed in the
mind. 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.”);
see also 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); Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 71 (2012) (explaining mental processes are not
patentable); 84 Fed. Reg. at 52–53 nn.14–15.
Appeal 2018-004291
Application 14/529,757

14
The Examiner maintains that the claimed invention recites, in part,
a system for performing the steps of accessing a submitted query,
identifying the submitted query as corresponding to a theme,
determining a strength score that indicating a pertinence of the
submitted query to the theme, and generate a thematic query
based on the submitted query and the determined strength score.
These steps describe the concept of generating a thematic query
based on the submitted query and the determined strength score,
which corresponds to concepts identified as abstract ideas by the
courts, such as remotely accessing and retrieving user-specified
information (Int. Ventures v. Erie Indemnity ‘002 patent).
The claim is directed to finding a theme, such as
“Thanksgiving,” for queries comprising “turkey,” “pilgrim,”
“cranberry sauce,” and “pumpkin pie”, see [0017] of the instant
specification. Determining a theme or category for an
information request is no different than a librarian determining a
category of fiction based upon specific examples of books that a
library patron has previously enjoyed. Further, the claim could
be performed mentally or by hand, see, e.g., Cybersource, 654
F.3d at 1371 (invalidating patent on ground that it claimed an
“unpatentable mental process - a subcategory of unpatentable
abstract ideas”), and the limitations are both result-focused and
recited at a high level of generality.
(Ans. 10).
In particular, Appellants’ claims generally concern finding a theme.
This is consistent with how Appellants describe the claimed invention. See
Spec. ¶¶ 2, 14, 41, Fig. 4; see also Abstract (“The machine generates a
thematic query based on the identified portion and obtains search results by
executing the thematic query.”). Generating a thematic query based on the
identified portion can be performed by a human, mentally, or with pen and
paper. Consistent with our Office Guidance and case law, we conclude that
generating a thematic query based on the identified portion is a mental
process and, thus, an abstract idea. See 84 Fed. Reg. at 52; see also
Appeal 2018-004291
Application 14/529,757

15
CyberSource, 654 F.3d at 1371–72 (concluding claims directed to “detecting
credit card fraud based on information relating [to] past transactions” can be
performed in the human mind and were drawn to a patent-ineligible mental
process); FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94
(Fed. Cir. 2016) (concluding claims directed to “collecting and analyzing
information to detect misuse and notifying a user when misuse is detected”
to be mental processes within the abstract-idea category).
Claim 10 is reproduced below and includes the following claim
limitations that recite generating a thematic query based on the submitted
query and the determined strength score, emphasized in italics:
10. A method comprising:
accessing a query submitted by a user;

identifying the submitted query as corresponding to a
theme by determining a strength score of the submitted query,
the strength score indicating a pertinence of the submitted query
to the theme, the theme being a descriptor of a concept that is
applicable to the submitted query, the identifying being
performed by a processor; and

generating a thematic query based on the submitted query
and the determined strength score, the thematic query being
different than the submitted query.
More particularly, the concept of generating a thematic query based
on the submitted query and the determined strength score comprises (i)
accessing a query submitted by a user; (ii) identifying the submitted query as
corresponding to a theme by determining a strength score of the submitted
query, the strength score indicating a pertinence of the submitted query to
the theme, the theme being a descriptor of a concept that is applicable to the
submitted query, the identifying being performed by a processor; and
Appeal 2018-004291
Application 14/529,757

16
(iii) generating a thematic query based on the submitted query and the
determined strength score, the thematic query being different than the
submitted query. We also are unpersuaded by Appellants’ argument that the
claims are not directed to an abstract idea because they are directed to an
improvement of computer-related technology. (Reply Br. 7).
As an initial matter, we agree with the Examiner the limitations are
both result-focused and recited at a high level of generality. (Ans. 10).
Moreover, using a computer to perform tasks more quickly or efficiently
does not confer patent eligibility on an otherwise ineligible abstract idea.
See, e.g., Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can. (U.S.),
687 F.3d 1266, 1278 (Fed. Cir. 2012) (“[T]he fact that the required
calculations could be performed more efficiently via a computer does not
materially alter the patent eligibility of the claimed subject matter.”).
Because the claim recites a judicial exception, we next determine
whether the claim integrates the judicial exception into a practical
application. 84 Fed. Reg. at 54. To determine whether the judicial
exception is integrated into a practical application, we identify whether there
are “any additional elements recited in the claim beyond the judicial
exception(s)” and evaluate those elements to determine whether they
integrate the judicial exception into a recognized practical application. 84
Fed. Reg. at 54–55 (emphasis added); see also MPEP §§ 2106.05(a)–(c),
(e)–(h) (9th ed. Rev. 08.2017, Jan. 2018).
Here, we find the additional limitation(s) of determining a strength
score and the identifying being performed by a processor do not integrate the
judicial exception into a practical application. More particularly, the claims
do not recite: (i) an improvement to the functionality of a computer or other
Appeal 2018-004291
Application 14/529,757

17
technology or technical field (see MPEP § 2106.05(a)); (ii) use of a
“particular machine” to apply or use the judicial exception (see MPEP
§ 2106.05(b)); (iii) a particular transformation of an article to a different
thing or state (see MPEP § 2106.05(c)); or (iv) any other meaningful
limitation (see MPEP § 2106.05(e)). See 84 Fed. Reg. at 55. Rather, the
additional elements merely refine elements of the abstract idea. Moreover,
gathering of data as input for further processing is the type of extra-solution
activities (i.e., in addition to the judicial exception) the courts have
determined insufficient to transform judicially excepted subject matter into a
patent-eligible application. See MPEP § 2106.05(g); see also Bilski v.
Kappos, 561 U.S. 593, 612 (2010) (holding the use of well-known
techniques to establish inputs to the abstract idea as extra-solution activity
that fails to make the underlying concept patent eligible); Elec. Power Grp.,
LLC v. Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016) (explaining that
“selecting information, by content or source, for collection, analysis, and
display does nothing significant to differentiate a process from ordinary
mental processes”). Further, the generic recitation that the steps are
performed by “one or more processors” does not integrate the judicial
exception into a practical application. See claim 16 (reciting that operations
are performed when instructions are “executed by one or more processors of
a machine”).
The claims in McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d
1299 (Fed. Cir. 2016)—unlike the claims here—recited a “specific . . .
improvement in computer animation” using “unconventional rules” that
related “sub-sequences of phonemes, timings, and morph weight sets” to
automatically animate lip synchronization and facial expressions for three-
Appeal 2018-004291
Application 14/529,757

18
dimensional characters that only human animators could previously produce.
McRO, 837 F.3d at 1302–03, 1307–08, and 1313–15. In McRO, “the
incorporation of the claimed rules” improved an existing technological
process. McRO, 837 F.3d at 1314. In contrast, Appellants’ claims here do
not improve an existing technological process. Contrary to Appellants’
assertions (see Reply Br. 4–8), the claims do not improve computer
technology, but instead use computers and computer-based devices to
perform the claimed mental process (i.e., generating a thematic query). See
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335–36 (Fed. Cir. 2016)
(distinguishing between claims wherein the focus of the claims is on an
improvement in computer capabilities and those that invoke a computer as a
tool). For at least the foregoing reasons, the claims do not integrate the
judicial exception into a practical application.
Because we determine the claims are directed to an abstract idea or
combination of abstract ideas, we analyze the claims under step two of Alice
to determine if there are additional limitations that individually, or as an
ordered combination, ensure the claims amount to “significantly more” than
the abstract idea. Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S. at 72–
73, 77–79). As stated in the Office Guidance, many of the considerations to
determine whether the claims amount to “significantly more” under step two
of the Alice framework are already considered as part of determining
whether the judicial exception has been integrated into a practical
application. See 84 Fed. Reg. at 56. Thus, at this point of our analysis, we
determine if the claims add a specific limitation, or combination of
limitations, that is not well-understood, routine, conventional activity in the
Appeal 2018-004291
Application 14/529,757

19
field, or simply appends well-understood, routine, conventional activities at
a high level of generality. See 84 Fed. Reg. at 56.
Here, Appellants’ claims do not recite specific limitations (or a
combination of limitations) that are not well-understood, routine, and
conventional. As an initial matter, we note, as does the Examiner (see, e.g.,
Ans. 10–11), that Appellants describe the components of the claimed
invention at a high level of generality and the components perform generic
functions that are well-understood, routine, and conventional. See Spec.
¶¶ 2, 14, 41, 88–93, Fig. 4.
For example, the claim’s recitation of a method performed by “one or
more processors” (independent claim 16) fails to transform a patent-
ineligible concept into an eligible one. See Mortgage Grader, Inc. v. First
Choice Loan Servs. Inc., 811 F.3d 1314, 1324–25 (Fed. Cir. 2016) (generic
computer components, such as an “interface,” “network,” and “database,”
fail to satisfy the inventive concept requirement; Alice, 573 U.S. at 226
(“Nearly every computer will include a ‘communications controller’ and [a]
‘data storage unit’ capable of performing the basic calculation, storage, and
transmission functions required by the method claims.”).
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the Examiner’s patent eligibility rejection of
representative independent claim 10 under 35 U.S.C. § 101 and independent
claims 1 and 16, not separately argued, and dependent claims 2–9, 11–15,
and 17–20, not separately argued. See 37 C.F.R. § 41.37(c)(1)(iv).

Appeal 2018-004291
Application 14/529,757

20
35 U.S.C. § 103(a)
Appellants have not set forth separate arguments for patentability
based upon obviousness of the independent claims in the Appeal Brief.
Therefore, we select independent claim 1 as the representative claim for the
group of claims not specifically argued and we will address Appellants’
arguments thereto. Appellants set forth separate headings for claims 2, 3, 5,
6, 8, 12, 13, 15, 18, and 19.

Claim 1
We have reviewed Appellants’ arguments in the Appeal Brief, the
Examiner’s rejections, and the Examiner’s responses to Appellants’
arguments. For at least the reasons discussed below, we agree with and
adopt the Examiner’s factual findings and legal conclusions, as set forth in
the Final Action and Examiner’s Answer. In our analysis below, we
highlight and address specific findings and arguments for emphasis.
Additionally, Appellants do not respond to the Examiner’s clarifications and
responses to the obviousness rejection in the Reply Brief. (Appellants only
respond to the indefiniteness rejection and the patent eligibility rejection in
the Reply Brief). Appellants set forth three points of argument in the Appeal
Brief, and we address those points below.
With respect to POINT 1 of Appellants’ arguments (App. Br. 15-16),
the Examiner provides additional citations to paragraphs 28 and 36 of the
Mohan reference that associate categories of items such as “Toys” with
queries and query identification number corresponding to a particular
clothing category- dresses which is identifying the submitted query as
corresponding to a theme. (Ans. 18). Appellants do not respond to the
Appeal 2018-004291
Application 14/529,757

21
Examiner’s further teachings which show identifying the submitted query as
corresponding to a theme. As a result, Appellants have not shown error in
the Examiner’s factual findings and legal conclusions.
With respect to POINT 2 of Appellants’ arguments (App. Br. 16), the
Examiner provides additional citations to paragraphs 28 and 36 of the
Mohan reference that teach that the number of queries recorded in a time
period indicates levels of interest in a particular product category that
describes the strength score indicating a pertinence of the submitted query to
the theme. (Ans. 19–20). Appellants do not respond to the Examiner’s
further teachings which show a number of queries recorded in a time period
indicates levels of interest. As a result, Appellants have not shown error in
the Examiner’s factual findings or conclusion of obviousness.
With respect to POINT 3 of Appellants’ arguments (App. Br. 16-17),
the Examiner provides additional citation to paragraph 60 of the Loftesness
reference that teaches the query “country music” is paired with the
classification “theme-based query” and is based on the queries submitted by
the users who were predominately interested in items with a thematic
bearing on the topic of “country music,” a query that thematically related to
“country music” is generated and searched. (Ans. 20–21). Appellants do
not respond to the Examiner’s further teachings which show a number of
queries recorded in a time period indicate levels of interest. As a result,
Appellants have not shown error in the Examiner’s factual findings or
conclusion of obviousness. The Examiner has substantively responded to
each of Appellants’ three points of error and provided further detailed
analysis and line of reasoning for the obviousness conclusion representative
independent claim 1. (Ans. 17–21).
Appeal 2018-004291
Application 14/529,757

22
Consequently, we sustain the rejection of representative independent
claim 1 and independent claims 10 and 16, not separately argued, and
dependent claims 4, 7, 9, 11, 14, 17, and 20 not separately argued.

Dependent claims
With respect to dependent claims 2, 3, 5, 6, 8, 12, 13, 15, 18, and 19,
Appellants set forth separate headings and set forth general arguments
following the same general format. Appellants recite the claim language,
quote the text from the Mohan reference, and generally contend that the
Examiner has failed to map the claimed elements to the Mohan reference
thus failing to establish a proper showing of obviousness. Appellants repeat
the claim language three more times arguing that the Mohan reference and
the combination of the Mohan and Loftesness references does not teach or
suggest the claim limitations. (See App. Br. 18–31).
The Examiner substantively addresses Appellants’ general arguments
and provides additional citations to the Mohan reference and additional
discussions relating to the claimed limitations of each of the dependent
claims. (Ans. 21–30). Appellants do not respond to the Examiner’s further
clarifications and analysis of the obviousness rejection. As a result, we find
Appellants’ arguments unavailing to show error in the Examiner’s factual
findings or conclusion of obviousness of dependent claims 2, 3, 5, 6, 8, 12,
13, 15, 18, and 19.

CONCLUSIONS
The Examiner did not err in rejecting claims 1–20 based upon
nonstatutory obviousness-type double patenting; the Examiner did not err in
Appeal 2018-004291
Application 14/529,757

23
rejecting claims 1–9 based upon indefiniteness under 35 U.S.C. § 112,
second paragraph. The Examiner did not err in rejecting claims 1–20 based
upon a lack of patent eligible subject matter under 35 U.S.C. § 101. The
Examiner did not err in rejecting claims 1–20 as obvious under 35 U.S.C.
§ 103.

DECISION
For the above reasons, we sustain all of the Examiner’s rejections of
claims 1–20.
DECISION SUMMARY
Claims
Rejected
Basis  Affirmed Reversed
1–20 nonstatutory
obviousness-type
double patenting 
1–20 None
1–9 § 112, second
paragraph 
1–9 None
1–20 § 101 1–20 None

1–20 § 103 1–20 None
Overall
Outcome
1–20 None

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).

AFFIRMED