Sonstegard, Lois J. et al.Download PDFPatent Trials and Appeals BoardSep 4, 201913112867 - (D) (P.T.A.B. Sep. 4, 2019) Copy Citation 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. 13/112,867 05/20/2011 Lois J. Sonstegard 3465.2.1 8356 36491 7590 09/04/2019 Kunzler Bean & Adamson 50 W. Broadway Suite 1000 Salt Lake City, UT 84101 EXAMINER DURAISAMYGURUSAM, LALITH M ART UNIT PAPER NUMBER 3625 NOTIFICATION DATE DELIVERY MODE 09/04/2019 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): docket@kba.law PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte LOIS J. SONSTEGARD and SOORENA SALARI ____________ Appeal 2018-007917 Application 13/112,867 Technology Center 3600 ____________ Before JOHN A. JEFFERY, DENISE M. POTHIER, and JUSTIN BUSCH, Administrative Patent Judges. JEFFERY, Administrative Patent Judge. DECISION ON APPEAL Under 35 U.S.C. § 134(a), Appellants1 appeal from the Examiner’s decision to reject claims 1–15, which constitute all the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. STATEMENT OF THE CASE Appellants’ invention assists a user with selecting a personal appearance style by (1) storing digital images of personal appearance styles; (2) storing social events and physical and personality characteristics in a 1 Appellants identify the real party in interest as LJL, Inc. App. Br. 2. Appeal 2018-007917 Application 13/112,867 2 database; (3) receiving physical and personality characteristics of a user and a social event the user will attend; (4) determining personal appearance styles that are compatible with the received information from the user; and (5) displaying the personal appearance styles to the user. See generally Abstract; Spec. ¶ 6. Claim 1 is illustrative: 1. A method of assisting a user with a selection of a personal appearance style over an interactive computer based network, comprising: defining a plurality of hairstyles; storing digital images of the plurality of hairstyles on a host computer in a database; associating one or more physical characteristics with each of the plurality of hairstyles; associating one or more hair characteristics with each of the plurality of hairstyles; associating one or more personality categories with each of the plurality of hairstyles, the one or more personality categories being distinguished by age; storing various business and/or social events on the host computer in the database, each business and/or social event having an event type; associating each of the plurality of hair styles with an event type; storing the associations of hairstyles, physical characteristics, hair characteristics, personality categories, and event types in the database; Appeal 2018-007917 Application 13/112,867 3 receiving, from the user via the computer based network, personal information related to physical characteristics, hair characteristics, age, and personality characteristics of the user; generating, at the host computer, a user profile from the received personal information; selecting, by the host computer, a list of event types based on the user age; prompting the user to select an event type from the list of possible events for an event that the user will be attending; receiving, from the user via the computer based network, date information for the event the user will be attending; identifying, by the host computer, one or more recommended hairstyles that match the user’s age, physical characteristics, hair characteristics, personality characteristics, and the event type of the event the user will be attending; transmitting to the user the matching one or more recommended hairstyles via the computer based network; displaying one or more digital images of the one or more matching hairstyles to the user; presenting a list of style changes for the one or more matching hairstyles; determining whether the user wishes to make changes to the one or more matching hairstyles; and displaying at least one modified hairstyle incorporating user-input style changes in response to determining that the user wishes to make changes to the new style. Appeal 2018-007917 Application 13/112,867 4 THE REJECTION2 The Examiner rejected claims 1–15 under 35 U.S.C. § 101 as directed to ineligible subject matter. Non-Final Act. 15–16.3 FINDINGS, CONCLUSIONS, AND CONTENTIONS The Examiner determines that the claimed invention is directed to the abstract idea of “assisting a user with a selection of a personal appearance style.” Non-Final Act. 3, 15. The Examiner adds that the “interactive computer based network,” “host computer,” “database,” and “digital” images recited in the claims are additional elements that do not add significantly more than the abstract idea. Id. at 5–6 (underlining omitted and italics added). Based on these determinations, the Examiner concludes that the claims are ineligible under § 101. Id. at 15–16. Appellants argue that the claimed invention is not directed to an abstract idea. App. Br. 6–8; Reply Br. 2–4. According to Appellants, not only did the Examiner fail to identify a concept the courts found to be an abstract idea (App. Br. 6–7; Reply Br. 2), but the claimed invention is said to improve selecting a personal appearance style by (1) displaying an image of a recommended hairstyle, and (2) incorporating user-input style changes to a modified hairstyle (App. Br. 7–8). Appellants add that the claimed 2 Claims 1–15 had been rejected under 35 U.S.C. § 103(a). Non-Final Act. 16–47. But, because the Examiner withdrew this rejection (Ans. 3), it is not before us. 3 Throughout this opinion, we refer to (1) the Non-Final Rejection mailed May 1, 2017 (“Non-Final Act.”); (2) the Appeal Brief filed February 1, 2018 (“App. Br.”); (3) the Examiner’s Answer mailed May 31, 2018 (“Ans.”); and (4) the Reply Brief filed July 31, 2018 (“Reply Br.”). Appeal 2018-007917 Application 13/112,867 5 invention adds significantly more than the purported abstract idea by reciting limitations that are said to be other than what is well-understood, routine, and conventional in the field. Reply Br. 6. ISSUE Under § 101, has the Examiner erred in rejecting claims 1–15 as directed to ineligible subject matter? This issue turns on whether the claims are directed to an abstract idea and, if so, whether recited elements— considered individually and as an ordered combination—transform the nature of the claims into a patent-eligible application of that abstract idea. PRINCIPLES OF LAW An invention is patent-eligible if it claims a “new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101. However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. See, e.g., Alice, 573 U.S. at 216. 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 Appeal 2018-007917 Application 13/112,867 6 in petitioners’ application explain the basic concept of hedging, or protecting against risk.”). Concepts determined to be abstract ideas, and thus patent ineligible, include certain methods of organizing human activity, such as fundamental economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 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. (15 How.) 252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). In Diehr, the claim at issue recited a mathematical formula, but the Supreme Court held 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.”). That said, 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 Appeal 2018-007917 Application 13/112,867 7 to a known structure or process may well be deserving of patent protection.”). If the claim is “directed to” an abstract idea, we turn to the second step of the Alice and Mayo framework, where “we must examine the elements of the claim to determine whether it contains an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent- eligible application.” Alice, 573 U.S. at 221 (quotation marks and citation omitted). “A claim that recites an abstract idea must include ‘additional features’ to ensure ‘that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].’” Id. (quoting Mayo, 566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[] fail[s] to transform that abstract idea into a patent-eligible invention.” Id. In January 2019, the USPTO published revised guidance on the application of § 101. See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the 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 activities 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: Appeal 2018-007917 Application 13/112,867 8 (3) adds a specific limitation beyond the judicial exception that is not well-understood, routine, and conventional in the field (see MPEP § 2106.05(d)); or (4) simply appends well-understood, routine, and conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. See Guidance, 84 Fed. Reg. at 56. ANALYSIS Alice/Mayo Step One Independent claim 1 recites: A method of assisting a user with a selection of a personal appearance style over an interactive computer based network, comprising: defining a plurality of hairstyles; storing digital images of the plurality of hairstyles on a host computer in a database; associating one or more physical characteristics with each of the plurality of hairstyles; associating one or more hair characteristics with each of the plurality of hairstyles; associating one or more personality categories with each of the plurality of hairstyles, the one or more personality categories being distinguished by age; storing various business and/or social events on the host computer in the database, each business and/or social event having an event type; associating each of the plurality of hair styles with an event type; storing the associations of hairstyles, physical characteristics, hair characteristics, personality categories, and event types in the database; Appeal 2018-007917 Application 13/112,867 9 receiving, from the user via the computer based network, personal information related to physical characteristics, hair characteristics, age, and personality characteristics of the user; generating, at the host computer, a user profile from the received personal information; selecting, by the host computer, a list of event types based on the user age; prompting the user to select an event type from the list of possible events for an event that the user will be attending; receiving, from the user via the computer based network, date information for the event the user will be attending; identifying, by the host computer, one or more recommended hairstyles that match the user’s age, physical characteristics, hair characteristics, personality characteristics, and the event type of the event the user will be attending; transmitting to the user the matching one or more recommended hairstyles via the computer based network; displaying one or more digital images of the one or more matching hairstyles to the user; presenting a list of style changes for the one or more matching hairstyles; determining whether the user wishes to make changes to the one or more matching hairstyles; and displaying at least one modified hairstyle incorporating user-input style changes in response to determining that the user wishes to make changes to the new style.4 As the Specification explains, the present invention assists a user with a selection of a personal appearance style by (1) storing digital images of personal appearance styles; (2) storing social events and combinations of physical and personality characteristics in a database; (3) receiving physical and personality characteristics of a user and a social event the user will be 4 Unless otherwise indicated, we italicize and quote text reproducing the recited limitations for emphasis and clarity. Appeal 2018-007917 Application 13/112,867 10 attending; (4) determining personal appearance styles that are compatible with the received information from the user; and (5) displaying the personal appearance styles to the user. See Spec. ¶ 6. Turning to claim 1, we first note that the claim recites a method and, therefore, falls within the process category of § 101. See Guidance, 84 Fed. Reg. at 53–54 (citing MPEP §§ 2106.03, 2106.06). But despite falling within this statutory category, we must still determine whether the claim is directed to a judicial exception, namely an abstract idea. See Alice, 573 U.S. at 217. To this end, we must determine whether the claim (1) recites a judicial exception, and (2) fails to integrate the exception into a practical application. See Guidance, 84 Fed. Reg. at 52–55. If both elements are satisfied, the claim is directed to a judicial exception under the first step of the Alice/Mayo test. See id. In the rejection, the Examiner determines that claim 1 is directed to an abstract idea, namely “assisting a user with a selection of a personal appearance style.” Non-Final Act. 3, 15. To determine whether a claim recites an abstract idea, we (1) identify the claim’s specific limitations that recite an abstract idea, and (2) determine whether the identified limitations fall within certain subject matter groupings, namely, (a) mathematical Appeal 2018-007917 Application 13/112,867 11 concepts5; (b) certain methods of organizing human activity6; or (c) mental processes.7 Here, apart from the recited (1) “interactive computer based network”; (2) “digital” images; (3) “host computer”; and (4) “database,” all of claim 1’s recited steps, which collectively are directed to assisting a user to select and change a hairstyle that is tailored to the user’s characteristics and an event the user will attend, fit squarely within at least one of the above categories of the agency’s guidelines. First, the step reciting “defining a plurality of hairstyles” could be done entirely mentally by merely thinking about such hairstyles or writing them down—a step that can involve mere observation and logical reasoning. Cf. CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372–73 (Fed. Cir. 2011) (noting that a recited step that utilized a map of credit card numbers to determine the validity of a credit card transaction could be performed entirely mentally by merely using logical reasoning to identify a likely instance of fraud by merely observing that numerous transactions 5 Mathematical concepts include mathematical relationships, mathematical formulas or equations, and mathematical calculations. See Guidance, 84 Fed. Reg. at 52. 6 Certain methods of organizing human activity include fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions). See Guidance, 84 Fed. Reg. at 52. 7 Mental processes are concepts performed in the human mind including an observation, evaluation, judgment, or opinion. See Guidance, 84 Fed. Reg. at 52. Appeal 2018-007917 Application 13/112,867 12 using different credit cards all originated from the same IP address); In re Brown, 645 F. App’x 1014, 1017 (Fed. Cir. 2016) (unpublished) (noting that a claim including a step that identifies hair patterns could be performed entirely in one’s mind). Accordingly, the defining step falls squarely within the mental processes category of the agency’s guidelines and, therefore, recites an abstract idea. See Guidance, 84 Fed. Reg. at 52 (listing exemplary mental processes including observation and evaluation). Second, the steps reciting (1) “storing . . . images of the plurality of hairstyles”; (2) “storing various business and/or social events . . . , each business and/or social event having an event type”; and (3) “storing the associations of hairstyles, physical characteristics, hair characteristics, personality categories, and event types . . .” could be done entirely mentally by merely memorizing, or writing down, such information—a step that can involve mere observation and logical reasoning. Cf. CyberSource, 654 F.3d at 1372–73; Blue Spike, LLC v. Google Inc., 2015 WL 5260506, at *6 (N.D. Cal. 2015), aff’d, 669 F. App’x 575 (Fed. Cir. 2016) (holding a claim reciting, among other things, storing abstracts as mirroring the manner in which the human mind undertakes the same task). Accordingly, the storing steps fall squarely within the mental processes category of the agency’s guidelines and, therefore, recite an abstract idea. See Guidance, 84 Fed. Reg. at 52. Third, the steps reciting (1) “associating one or more physical characteristics with each of the plurality of hairstyles”; (2) “associating one or more hair characteristics with each of the plurality of hairstyles”; (3) “associating one or more personality categories with each of the plurality of hairstyles, the one or more personality categories being distinguished by Appeal 2018-007917 Application 13/112,867 13 age”; and (4) “associating each of the plurality of hair styles with an event type” merely recite functions that could be done entirely mentally by merely thinking about such associations or writing them down—a step that can involve mere observation and logical reasoning. Cf. CyberSource, 654 F.3d at 1372–73; Brown, 645 F. App’x at 1017 (noting that a claim including a step that associates hair patterns with partial zones could be performed entirely in one’s mind). Accordingly, the associating steps fall squarely within the mental processes category of the agency’s guidelines and, therefore, recite an abstract idea. See Guidance, 84 Fed. Reg. at 52. Fourth, the steps reciting (1) “receiving from the user . . . personal information related to physical characteristics, hair characteristics, age, and personality characteristics of the user” and (2) “receiving from the user . . . date information for the event the user will be attending” involves at least personal interactions, including following rules or instructions, at least to the extent that the hairstylist could receive such information by merely reading records or other associated information provided by the user, or alternatively receive that information via oral or written communication with the user. Cf. CyberSource, 654 F.3d at 1372 (noting that limitation reciting obtaining information about transactions that have used an Internet address identified with a credit card transaction can be performed by a human who simply reads records of Internet credit card transactions from a pre-existing database); Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016) (noting that nothing in a claim reciting receiving a message from a sender forecloses it from being performed mentally or with pen and paper except generic computer-implemented steps). Accordingly, the receiving steps fall squarely within the mental processes and methods of Appeal 2018-007917 Application 13/112,867 14 organizing human activity categories of the agency’s guidelines and, therefore, recite an abstract idea. See Guidance, 84 Fed. Reg. at 52 (listing exemplary listing exemplary (1) mental processes including observation and evaluation, and (2) methods of organizing human activity, including managing personal interactions including following rules or instructions). Fifth, the step reciting “generating . . . a user profile from the received personal information” could be done entirely mentally by merely thinking about such information from received personal information or writing it down—a step that can involve mere observation and logical reasoning. Cf. CyberSource, 654 F.3d at 1372–73; Mortg. Grader Inc. v. First Choice Loan Servs., Inc., 811 F.3d 1314, 1324 (Fed. Cir. 2016) (holding a claim reciting, among other things, generating a credit grading for a borrower based on the borrower’s personal information could be performed by humans without a computer). Accordingly, the generating step falls squarely within the mental processes category of the agency’s guidelines and, therefore, recites an abstract idea. See Guidance, 84 Fed. Reg. at 52. Sixth, the step reciting “selecting . . . a list of event types based on the user age” could be done entirely mentally by merely thinking about these event types or writing them down—a step that can involve mere observation and logical reasoning. Cf. CyberSource, 654 F.3d at 1372–73; Mortg. Grader, 811 F.3d at 1324 (holding a claim reciting, among other things, selecting underwriting criteria based on information regarding the borrower’s objectives could be performed by humans without a computer). Accordingly, the selecting step falls squarely within the mental processes category of the agency’s guidelines and, therefore, recites an abstract idea. See Guidance, 84 Fed. Reg. at 52. Appeal 2018-007917 Application 13/112,867 15 Seventh, the step reciting “prompting the user to select an event type from the list of possible events for an event that the user will be attending” merely recites a function that involves at least managing personal interactions, including following rules or instructions, at least to the extent that the hairstylist could prompt such selection via oral or written communication with another person, such as a customer. Cf. CyberSource, 654 F.3d at 1372; LendingTree, LLC v. Zillow, Inc., 656 F. App’x 991, 993– 94, 996 (Fed. Cir. 2016) (unpublished) (noting a claim reciting, among other things, displaying positive credit decisions to a user to receive a decision from the user merely automates a fundamental economic concept). Accordingly, the receiving step falls squarely within the methods of organizing human activity category of the agency’s guidelines and, therefore, recites an abstract idea. See Guidance, 84 Fed. Reg. at 52. Eighth, the step reciting “identifying . . . one or more recommended hairstyles that match the user’s age, physical characteristics, hair characteristics, personality characteristics, and the event type of the event the user will be attending” could be done entirely mentally by merely thinking about such recommended hairstyles or writing them down—a step that can involve mere observation and logical reasoning. Cf. CyberSource, 654 F.3d at 1372–73; Mortg. Grader, 811 F.3d at 1324 (holding a claim reciting, among other things, identifying lenders capability of providing a loan to a borrower based on the borrower’s personal information could be performed by humans without a computer). Accordingly, the identifying step falls squarely within the mental processes category of the agency’s guidelines and, therefore, recites an abstract idea. See Guidance, 84 Fed. Reg. at 52. Appeal 2018-007917 Application 13/112,867 16 Ninth, the steps reciting “transmitting to the user the matching one or more recommended hairstyles . . .” and “presenting a list of style changes for the one or more matching hairstyles” involves at least managing personal interactions, including following rules or instructions, at least to the extent that the hairstylist could communicate that information via oral or written communication with another person requesting such knowledge, such as a customer. Cf. CyberSource, 654 F.3d at 1372; Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367–70 (Fed. Cir. 2015) (noting that tailoring and providing content, such as advertisements, based on a user’s personal characteristics is a fundamental practice long prevalent in our system). Accordingly, the transmitting and presenting steps fall squarely within the methods of organizing human activity category of the agency’s guidelines and, therefore, recite an abstract idea. See Guidance, 84 Fed. Reg. at 52. Tenth, the step reciting “determining whether the user wishes to make changes to the one or more matching hairstyles” involves at least managing personal interactions, including following rules or instructions, at least to the extent that the hairstylist could determine the user’s preference via oral or written communication with the user. Cf. CyberSource, 654 F.3d at 1372; LendingTree, 656 F. App’x at 993–94, 996 (noting a claim reciting, among other things, determining whether a user wishes to accept, deny, or request more information regarding a positive decision from a lending institution merely automates a fundamental economic concept). Moreover, the determining step could be done entirely mentally by merely thinking about such a wish by a user—a step that can involve mere observation and logical reasoning. Cf. CyberSource, 654 F.3d at 1372–73 Netflix, Inc. v. Rovi Corp., Appeal 2018-007917 Application 13/112,867 17 114 F. Supp. 3d 927, 945 (N.D. Cal. 2015), aff’d, 670 F. App’x 704 (Fed. Cir. 2016) (noting the human mind is capable of distinguishing between whether a user watched a television program or not). Accordingly, the determining step falls squarely within the methods of organizing human activity and mental processes categories of the agency’s guidelines and, therefore, recites an abstract idea. See Guidance, 84 Fed. Reg. at 52. Eleventh, the steps reciting (1) “displaying one or more . . . images of the one or more matching hairstyles to the user,” and (2) “displaying at least one modified hairstyle incorporating user-input style changes in response to determining that the user wishes to make changes to the new style” could be done by showing a photograph of the hairstyles or by merely sketching the hairstyles on a piece of paper—a step that can involve mere observation and logical reasoning. Cf. CyberSource, 654 F.3d at 1372–73. Notably, unlike the first displaying step that requires displaying hairstyle images, the second displaying step is not so limited. Rather, this latter display could be achieved by merely cutting the user’s hair according to user’s desired change. The resulting display of this modified hairstyle could not only be seen by others who merely look at the user, but also can be seen by the user looking in a mirror. Accordingly, the displaying steps fall squarely within the mental processes category of the agency’s guidelines and, therefore, recite an abstract idea. See Guidance, 84 Fed. Reg. at 52. Although the claim recites an abstract idea based on these mental processes and certain methods of organizing human activity, we nevertheless must still determine whether the abstract idea is integrated into a practical application, namely whether the claim applies, relies on, or uses the abstract idea in a manner that imposes a meaningful limit on the abstract idea, such Appeal 2018-007917 Application 13/112,867 18 that the claim is more than a drafting effort designed to monopolize the abstract idea. See id. at 54–55. To this end, we (1) identify whether there are any additional recited elements beyond the abstract idea, and (2) evaluate those elements individually and collectively to determine whether they integrate the exception into a practical application. See id. Here, the recited (1) “interactive computer based network”; (2) “digital” images; (3) “host computer”; and (4) “database” are the only recited elements beyond the abstract idea, but those additional elements do not integrate the abstract idea into a practical application when reading claim 1 as a whole. Accord Non-Final Act. 5–6 (finding the recited (1) “interactive computer based network”; (2) “digital” images; (3) “host computer”; and (4) “database” are the additional elements of claim 1 that do not result in the claim amounting to significantly more than the abstract idea). Appellants’ reliance on the decision in Enfish LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) (see App. Br. 6–7) is unavailing. The claimed self-referential table in Enfish was a specific type of data structure designed to improve the way a computer stores and retrieves data in memory. Enfish, 822 F.3d at 1339. As the Enfish court emphasized, the claims were not directed to any form of storing tabular data, but were instead directed to a self-referential table for a computer database. Enfish, 822 F.3d at 1337. Notably, the court explained that the table stored information related to each column in rows of that very table, such that new columns can be added by creating new rows in the table. Id. at 1338. To the extent Appellants contend that the claimed invention improves a computer’s functionality or efficiency, or otherwise change the way that device Appeal 2018-007917 Application 13/112,867 19 functions (see App. Br. 6–7), there is no persuasive evidence on this record to substantiate such a contention. Appellants’ reliance on the decision in Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc., 880 F.3d 1356, 1362 (Fed. Cir. 2018) (App. Br. 7–8) is equally unavailing. The claim in Core Wireless was directed to improvement in the functioning of computers, particularly those with small screens. Compare id. at 1363 (finding the improvement was in “the efficiency of using the electronic device by bringing together ‘a limited list of common functions and commonly accessed stored data,’ which can be accessed directly from the main menu.”), with Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1084, 1093 (Fed. Cir. 2019) (finding claims that recite a purportedly new arrangement of generic information to assist traders in processing information more quickly do not improve the functioning of a computer, make it operate more efficiently, or solve any technological problem), and Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1378, 1385 (Fed. Cir. 2019) (finding claims that recite arranging information along an axis do not improve the functioning of a computer). The Specification supported these improvements over “the prior art interfaces [that] had many deficits relating to the efficient functioning of the computer, requiring a user ‘to scroll around and switch views many times to find the right data/functionality.” Id. That is not the case here. Despite Appellants’ arguments to the contrary (App. Br. 7–8), the claimed invention here is not necessarily rooted in computer technology in the sense contemplated by Core Wireless where the claimed invention improved the functioning of a computer. Although Appellants’ invention uses computer-based components, including a Appeal 2018-007917 Application 13/112,867 20 computer based network and host computer in a database to assisting a user to select a hairstyle, the claimed invention does not improve those components or improve another technology or technical field. Appellants’ reliance on the machine-or-transformation test (App. Br. 8) also is unavailing. To be sure, the machine-or-transformation test, although not the only test, can nevertheless indicate whether additional elements integrate the exception into a practical application. See Guidance, 84 Fed. Reg. at 55 (citing MPEP § 2106.05(c)); accord Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014) (quoting Bilski, 561 U.S. at 594). Under the machine-or-transformation test, a claimed process may be patent eligible under § 101 if it: (1) is tied to a particular machine or apparatus, or (2) transforms a particular article into a different state or thing. In re Bilski, 545 F.3d 943, 954 (Fed. Cir. 2008), aff’d sub nom. Bilski, 561 U.S. at 593. Although an underlying article can be intangible, such as electrical signals, and transformation can include data transformation, the data must represent a physical object or an article to be patent eligible under § 101. Id. at 962–63 (citing In re Abele, 684 F.2d 902, 908–09 (CCPA 1982)).8 8 Although the soundness of the Federal Circuit’s analysis of Abele in its Bilski opinion is an open question in view of subsequent Supreme Court opinions, this particular aspect of Bilski has nonetheless not been overruled and, therefore, remains applicable here. See Solutran, Inc. v. Elavon, Inc., 931 F.3d 1161, 1169 (Fed. Cir. 2019) (“Regardless of whether our Bilski opinion’s analysis of Abele is still sound in view of recent Supreme Court opinions, Solutran’s check-scanning argument directly conflicts with Content Extraction [& Transmission LLC v. Wells Fargo, 776 F.3d 1343 (Fed. Cir. 2014)].”). Appeal 2018-007917 Application 13/112,867 21 In Abele, the court held a process for calculating certain values for a data point in a field and displaying the value as a signed gray scale at a point in an image corresponding to the data point was directed solely to the mathematical algorithm and, thus, ineligible. Abele, 684 F.2d 902 at 908. The court, however, reached a different result with respect to dependent claim 6, which further recited that the data, on which the algorithm was performed in order to graphically display an image, was “X-ray attenuation data produced in a two dimensional field by a computed tomography scanner.” Id. The court determined that dependent claim 6 was patent eligible because it required “X-ray attenuation data.” The court reasoned the X-ray attenuation data could be obtained only by passing an X-ray beam, produced by a computerized axial tomography (CAT) scanner, through physical and tangible objects such as bones, organs, and body tissues and detecting the beam upon its exit. Id.; see also Arrhythmia Research Tech., Inc. v. Corazonix Corp., 958 F.2d 1053 (Fed. Cir. 1992) (concluding that claims directed to an apparatus and process of analyzing electrocardiographic signals were patent-eligible because these electrical signals were obtained from physical heart activity that was being monitored in a patient). Claim 1 recites, in relevant part: transmitting to the user the matching one or more recommended hairstyles via the computer based network; displaying one or more digital images of the one or more matching hairstyles to the user; presenting a list of style changes for the one or more matching hairstyles; determining whether the user wishes to make changes to the one or more matching hairstyles; and Appeal 2018-007917 Application 13/112,867 22 displaying at least one modified hairstyle incorporating user-input style changes in response to determining that the user wishes to make changes to the new style. According to Appellants, “the claimed invention at least transforms data of the one or more recommended hairstyles into the at least at least one modified hairstyle.” App. Br. 8 (emphasis added). We disagree. Although the displayed modified hairstyle incorporates user-input style changes, the claimed invention, while arguably involving data representing a physical object, namely the user’s hair, nonetheless differs significantly from the above-noted data transformation involving X-ray attenuation data produced in a two dimensional field by a tomography scanner that the court held eligible in Abele. So, leaving aside the fact that satisfying the machine-or- transformation test is no longer dispositive to patent eligibility,9 there is no data transformation here to satisfy that test in any event. Furthermore, as noted previously, displaying a modified hairstyle encompasses physically cutting the user’s hair to reflect the modified hairstyle. Notably, this interpretation is strikingly similar to the claim at issue in Brown, where the court agreed with “the Board’s determination that the central purpose of the claimed method is the process before cutting, and that the hair-cutting step constitutes ‘insignificant post-solution activity.’” Brown, 645 F. App’x at 1016 (quoting Ex parte Brown, No. 2014–004390, 9 See Bilski, 561 U.S. at 605–06; see also DDR Holdings, LLC v. Hotels.com, 773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[I]n Mayo, the Supreme Court emphasized that satisfying the machine-or-transformation test, by itself, is not sufficient to render a claim patent-eligible, as not all transformations or machine implementations infuse an otherwise ineligible claim with an ‘inventive concept.’”). Appeal 2018-007917 Application 13/112,867 23 at *4 (PTAB 2015) (non-precedential)). Thus, under this interpretation, displaying a modified hairstyle is also insignificant post-solution activity, at least in the sense that it is merely ancillary to the focus of the claimed invention, namely assisting a user to select and change a hairstyle, particularly given the modified hairstyle displaying step’s high level of generality and context in the claimed invention. Therefore, the additional elements in the above claim limitations do not integrate the identified judicial exceptions into a practical application for this additional reason. See Guidance, 84 Fed. Reg. at 55 (citing MPEP § 2106.05(g)). Therefore, we do not find that the claim recites additional elements (1) improving the computer itself; (2) improving another technology or technical field; (3) implementing the abstract idea in conjunction with a particular machine or manufacture that is integral to the claim; or (4) transforming or reducing a particular article to a different state or thing. See Guidance, 84 Fed. Reg. at 55 (citing MPEP §§ 2106.05(a)–(c)). Rather, the above-noted additional elements merely (1) apply the abstract idea on a computer; (2) include instructions to implement the abstract idea on a computer; or (3) use the computer as a tool to perform the abstract idea. See Guidance, 84 Fed. Reg. at 55 (citing MPEP § 2106.05(f)). Therefore, the recited additional elements, namely the recited (1) “interactive computer based network”; (2) “digital” images; (3) “host computer”; and (4) “database” do not integrate the abstract idea into a practical application when reading claim 1 as a whole. We add that the storing and receiving steps not only are abstract ideas and use generic computing components to perform the abstract ideas as noted above, but the storing and receiving steps are also insignificant pre- Appeal 2018-007917 Application 13/112,867 24 solution activity that merely gather data and, therefore, do not integrate the exception into a practical application for that additional reason. See Bilski, 545 F.3d at 963 (characterizing data gathering steps as insignificant extra- solution activity); see also CyberSource, 654 F.3d at 1371–72 (noting that even if some physical steps are required to obtain information from a database (e.g., entering a query via a keyboard, clicking a mouse), such data- gathering steps cannot alone confer patentability). Accord Guidance, 84 Fed. Reg. at 55 (citing MPEP § 2106.05(g)). That the claimed invention identifies physical characteristics of a user and applies hair designs accordingly does not integrate the abstract idea into a practical application. See Brown, 645 F. App’x at 1017 (holding the idea of identifying a head shape and applying hair designs accordingly is an abstract idea capable of being performed entirely on one’s mind). Moreover, that the claimed invention uses a user’s personal information to create a customized presentation of recommended hairstyles does not integrate the abstract idea into a practical application. See Personalized Media Commc’ns, LLC v. Amazon.Com, Inc., 161 F.Supp.3d 325 at 330–31, 38 (D. Del. 2015), aff’d, 671 F. App’x 777 (Mem) (Fed. Cir. 2016) (holding the ideas of (1) using personal information to create a customized presentation, and (2) providing personalized recommendations as being abstract ideas). In conclusion, although the recited functions may be beneficial by assisting a user to select a hairstyle, a claim for a useful or beneficial abstract idea is still an abstract idea. See Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379–80 (Fed. Cir. 2015); see also Synopsys, 839 F.3d at 1151 (noting “a claim for a new abstract idea is still an abstract idea.”). Appeal 2018-007917 Application 13/112,867 25 We, therefore, agree with the Examiner that claim 1 is directed to an abstract idea. Alice/Mayo Step Two Turning to Alice/Mayo step two, claim 1’s additional recited elements, namely the recited (1) “interactive computer based network”; (2) “digital” images; (3) “host computer”; and (4) “database”—considered individually and as an ordered combination—do not provide an inventive concept such that these additional elements amount to significantly more than the abstract idea. See Alice, 573 U.S. at 221; see also Guidance, 84 Fed. Reg. at 56. As noted above, the claimed invention merely uses generic computing components to implement the recited abstract idea. To the extent that Appellants contend that the recited limitations detailed above in connection with Alice/Mayo step one add significantly more than the abstract idea to provide an inventive concept under Alice/Mayo step two (see Reply Br. 5–6), these limitations are not additional elements beyond the abstract idea, but rather are directed to the abstract idea as noted previously. See Guidance, 84 Fed. Reg. at 56 (instructing that additional recited elements should be evaluated in Alice/Mayo step two to determine whether they (1) add specific limitations that are not well- understood, routine, and conventional in the field, or (2) simply append well-understood, routine, and conventional activities previously known to the industry (citing MPEP § 2106.05(d)). Rather, the recited (1) “interactive computer based network”; (2) “digital” images; (3) “host computer”; and (4) “database” are the additional recited elements whose generic computing functionality is well-understood, Appeal 2018-007917 Application 13/112,867 26 routine, and conventional. See Intellectual Ventures, 792 F.3d at 1368 (noting that a recited user profile (i.e., a profile keyed to a user identity), database, and communication medium are generic computer elements); Mortg. Grader, 811 F.3d at 1324–25 (Fed. Cir. 2016) (noting that components such an “interface,” “network,” and “database” are generic computer components that do not satisfy the inventive concept requirement); buySAFE 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.”); accord Non-Final Act. 6–7 (concluding that the claims’ generically recited computer components do not add significantly more than the abstract idea); see also Spec. ¶¶ 14–19 (describing generic computer components associated with the disclosed invention). We reach a similar conclusion regarding the recited insignificant extra-solution activity, namely the storing, receiving, and modified hairstyle display steps. That (1) instruction sets are stored; (2) a document is received; and (3) a modified hairstyle is displayed does not mean that these steps are performed in an unconventional way to add significantly more than the abstract idea and provide an inventive concept under Alice/Mayo step two. See Guidance, 84 Fed. Reg. at 56. Given these limitations’ (1) high level of generality, and (2) use of generic computing components whose functionality is well-understood, routine, and conventional for the reasons noted previously, the recited extra-solution activity does not add significantly more than the abstract idea to provide an inventive concept under Alice/Mayo step two. Appeal 2018-007917 Application 13/112,867 27 Appellants’ reliance on the decision in Amdocs (Isr.) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016) (Reply Br. 3) is unavailing. There, the court held that a claim directed to using accounting information with which a network accounting record is correlated to enhance the record was held eligible because the claim involved an unconventional technological solution (enhancing data in a distributed fashion) to a technological problem (massive record flows which previously required massive databases). Although the court recognized that this solution used generic components, the recited enhancing function necessarily required these generic components to operate in an unconventional manner to achieve an improvement in computer functionality. Amdocs, 841 F.3d at 1300–01. Notably, the recited enhancement in Amdocs depended on not only the network’s distributed architecture, but also on the network devices and “gatherers” working together in a distributed environment. Id. at 1301. In reaching its eligibility conclusion, the court noted the patent’s emphasis on the drawbacks of previous systems where all network information flowed to one location making it very difficult to keep up with massive record flows from network devices and requiring huge databases. Id. at 1300. The court also noted similar network-based drawbacks that were overcome by similar unconventional distributed solutions in other patents at issue. See id. at 1305–06. That is not the case here. Although the claimed invention uses conventional computing components that define, store, associate, receive, generate, select, prompt, identify, transmit, display, present, and determine data, there is no persuasive evidence on this record to show that these Appeal 2018-007917 Application 13/112,867 28 generic components operate in an unconventional manner to achieve an improvement in computer functionality as in Amdocs. Appellants’ reliance on the decision in BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016) (Reply Br. 3) is unavailing. There, the court held eligible claims directed to a technology-based solution to filter Internet content that overcame existing problems with other Internet filtering systems by making a known filtering solution—namely a “one-size-fits-all” filter at an Internet Service Provider (ISP)—more dynamic and efficient via individualized filtering at the ISP. BASCOM, 827 F.3d at 1351. Notably, this customizable filtering solution improved the computer system’s performance and, therefore, was patent- eligible. See id. But, unlike the filtering system improvements in BASCOM that added significantly more to the abstract idea, the claimed invention here uses generic computing components to implement an abstract idea as noted previously. That the Examiner did not reject the claims as anticipated or obvious over prior art as Appellants indicate (Reply Br. 5–6) is not dispositive to patent eligibility—a separate statutory inquiry. See Return Mail, Inc. v. U.S. Postal Service, 868 F.3d 1350, 1370 (Fed. Cir. 2017). Although the second step in the Alice/Mayo test is a search for an “inventive concept,” the analysis is not directed to novelty or nonobviousness, but rather searches for elements sufficient to ensure that the claimed invention is directed to more than a patent ineligible concept, such as an abstract idea. See Alice, 573 U.S. at 217–18. “Groundbreaking, innovative, or even brilliant discovery does not by itself satisfy the § 101 inquiry.” Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013); see also Diehr, 450 U.S. at Appeal 2018-007917 Application 13/112,867 29 188–89 (“The ‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.”); Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1263 n.3 (Fed. Cir. 2016) (noting that an eligibility finding does not turn on the novelty of using a user-downloadable application for the particular purpose recited in the claims). In conclusion, the additional recited elements—considered individually and as an ordered combination—do not add significantly more than the abstract idea to provide an inventive concept under Alice/Mayo step two. See Alice, 573 U.S. at 221; see also Guidance, 84 Fed. Reg. at 56. Therefore, we are not persuaded that the Examiner erred in rejecting claim 1, and claims 2–15 not argued separately with particularity. CONCLUSION The Examiner did not err in rejecting claims 1–15 under § 101. DECISION The Examiner’s decision to reject claims 1–15 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)(1). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation