Sonstegard, Lois J. et al.

Patent Trials and Appeals Board

Sep 4, 2019

13112867 - (D) (P.T.A.B. Sep. 4, 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.
13/112,867 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.
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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;

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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.

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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.”).
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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
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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
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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:
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(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;
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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.
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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
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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.
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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
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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
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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.
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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.
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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.,
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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
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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
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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
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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)].”).
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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
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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.’”).
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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-
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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.”).
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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,
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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.
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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
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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
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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