START TODAY CO., LTD.

Patent Trials and Appeals Board

Aug 3, 2020

2020001385 (P.T.A.B. Aug. 3, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/891,554 11/16/2015 Yusaku MAEZAWA TACHI.P010 9502
28752 7590 08/03/2020
LACKENBACH SIEGEL, LLP
LACKENBACH SIEGEL BUILDING
1 CHASE ROAD
SCARSDALE, NY 10583
EXAMINER
ZIMMERMAN, MATTHEW E
ART UNIT PAPER NUMBER
3684
NOTIFICATION DATE DELIVERY MODE
08/03/2020 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):
ayoung@lsllp.com
patdoc@lsllp.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte YUSAKU MAEZAWA and TATSUYA KUBOTA

Appeal 2020-001385
Application 14/891,554
Technology Center 3600

Before CARL W. WHITEHEAD JR., DAVID M. KOHUT, and
IRVIN E. BRANCH, Administrative Patent Judges.

KOHUT, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–8.2 We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use “Appellant” to reference the applicant as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as
“Start Today Co., Ltd.” Appeal Br. 3.
2 Claims 9 and 10 were previously cancelled and claims 11 and 12 were
withdrawn from consideration. Appeal Br. 3.
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STATEMENT OF THE CASE
Appellant’s Invention
Appellant’s invention addresses a problem of some apparel purchases;
the buyer determines the apparel “hardly fits in with clothes the customer
already has in terms of material, color, etc.” Spec. ¶ 6.
To prevent this problem, the invention provides a point-of-sale
terminal with a scanner and display whereby: a prospective
purchaser scans a barcode of an apparel item’s product tag; the
item is identified to a server for a determination of other
available apparel items that “coordinate” (i.e., match) the
identified item; and the determined coordinate items are
displayed to the prospective purchaser.
Id. ¶ 26.
Claim 1, reproduced below with emphasis, is the sole representative
claim on appeal. See infra 3.
1. A coordinates information providing system comprising:
a commodity code recording medium recording a commodity
code identifying a commodity;
a purchaser terminal that reads said commodity code
therefrom; and
a management server connected to said purchaser terminal
via a network, and is managing coordinates information
indicative of a coordinates example and information of a
commodity used in the coordinates example, corresponding
each other,
wherein when said management server receives said read
commodity code from the purchaser terminal, said
management server transmits said coordinates information
indicative of the coordinates example, in which the commodity
corresponding to the received commodity code is used, to the
purchaser terminal,
wherein said purchaser terminal reads information particular
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to a store from a recording medium placed in the store and
transmits the read information together with said commodity
code to said management server,
wherein said management server stores therein the information
particular to the store and the commodity code received from
said purchaser terminal in connection with each other,
wherein once said management server receives a commodity
code from said purchaser terminal for the commodity that is
purchased when said purchaser purchases the commodity on an
EC site, said management server extracts a store specific code
in connection with the received commodity code from store
specific codes already in said management server and then
carries out a settlement transaction, and
wherein a part of payment for said commodity that is purchased
is transferred to a bank account of the store having the extracted
store specific code.
Appeal Br. 17 (Claims Appendix).
Rejection
Claims 1–8 stand rejected under 35 U.S.C. § 101 as being directed to
a judicial exception of § 101 without significantly more. Final Act. 2–5.
35 U.S.C. § 101
Appellant addresses claims 1–8 collectively and with reference to
only claim 1. See Appeal Br. 11 (quoting claim 1). We select claim 1 as
representative. See 37 C.F.R. § 41.37(c)(1)(iv). For the below reasons, we
are unpersuaded of error in the rejection of claim 1. We accordingly sustain
the rejection of claims 1–8.
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.
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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. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014) (citation omitted).
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. Alice, 573 U.S. at 217−18 (citing Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75−77 (2012)). In accordance
with that framework, we first determine what concept the claim is “directed
to.” See Alice, 573 U.S. at 219 (“On their face, the claims before us are
drawn to the concept of intermediated settlement, i.e., the use of a third party
to mitigate settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611
(2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept
of hedging, or protecting against risk.”).
Concepts determined to be abstract ideas, and thus patent-ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219−20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594−95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent-eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56
U.S. 252, 267−68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
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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 187; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, and this principle cannot be circumvented by attempting
to limit the use of the formula to a particular technological environment.”
Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace
that an application of a law of nature or mathematical formula to a known
structure or process may well be deserving of patent protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a
patent-eligible application.” Alice, 573 U.S. at 221 (citation omitted). “A
claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (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.
PTO Guidance
The PTO provides guidance for 35 U.S.C. § 101. USPTO’s 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
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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 activity such as a fundamental economic practice, and 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. 2018)).
84 Fed. Reg. at 52−55. Only if a claim (1) recites a judicial exception and
(2) does not integrate that exception into a practical application, do we then
conclude the claim is directed to a judicial exception (id. at 54) and look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
Id. at 56.
Step 1: Does Claim 1 Fall within a Statutory Category?
There is no dispute that the claimed subject matter falls within a § 101
category of patentable subject matter. Final Act. 2; see Guidance, 84 Fed.
Reg. at 53−54 (“Step 1”).
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Step 2A(1):3 Does Claim 1 Recite Any Judicial Exceptions?
We agree with the Examiner’s determination that claim 1 recites
judicial exceptions. See October 2019 Patent Eligibility Guidance Update
(“Guidance Update”) at 1 (meaning of “describe”), available at https://
www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.pdf; see
also 84 Fed. Reg. 55942 (Oct. 18, 2019) (notifying the public of the
Guidance Update). Specifically, we agree the unemphasized features of
reproduced claim 1 (supra 2–3) constitute “commercial activities such as
advertising, marketing, or sales activities or behaviors” and thus fall within
the Guidance’s judicial-exception category for “certain method[s] of
organizing human activity.” Final Act. 3; see also Guidance, 84 Fed.
Reg. at 52 (category “(b)”). We also agree with the Examiner’s following

3 The Guidance separates the enumerated issues (1) to (4) (see supra 6–7)
into Steps 2A(1), 2A(2), and 2B, as follows:
[T]he revised procedure . . . focuses on two aspects [of whether
a claim is “directed to” a judicial exception under the first step
of the Alice/Mayo test (USPTO Step 2A)]: (1) [w]hether the
claim recites a judicial exception; and (2) whether a recited
judicial exception is integrated into a practical application.
[W]hen a claim recites a judicial exception and fails to integrate
the exception into a practical application, . . . further analysis
pursuant to the second step of the Alice/Mayo test (USPTO
Step 2B) . . . is needed . . . in accordance with existing USPTO
guidance as modified in April 2018.[footnote omitted]
84 Fed. Reg. at 51 (referencing, via the omitted footnote, “USPTO
Memorandum of April 19, 2018, ‘Changes in Examination Procedure
Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility
Decision (Berkheimer v. HP, Inc.)’ (Apr. 19, 2018), available
at https://www.uspto.gov/sites/default/files/documents/memo-berkheimer-20
180419.PDF [ . . . ‛USPTO Berkheimer Memorandum’].”).
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characterization of those judicially-excepted (JE) activities (i.e., of
reproduced claim 1’s unemphasized features):
[Claim 1] recite[s] commercial activities such as receiving a
commodity code (such as a barcode) from a purchaser terminal
and then transmitting coordinating commodity information
(such as products that coordinate with the scanned product) to
the purchaser terminal. The purchaser terminal then facilitates
the purchase of the scanned product for the purchaser on behalf
of the retailer. The purchase involves payment for the
commodity and a bank account transfer of payment. These
elements comprise an abstract idea and constitute a certain
method of organizing human activity involving commercial
interactions including advertising, marketing, or sales activities
or behaviors.
Ans. 3.
We also agree with the Examiner’s determination that the claimed
commodity code medium constitutes judicially-excepted (JE) subject matter
(i.e., falling within the Guidance’s categories of judicial exceptions).
Final Act. 3. We agree because the corresponding claim language—
“commodity code recording medium recording a commodity code
identifying a commodity”—does not restrict the medium to a physical
manifestation and thus requires only recording or conveyance of a
commodity identifier (which is a commercial activity such as advertising,
etc.). See In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007) (breadth of
“medium”). Further, even assuming (arguendo) the medium constitutes a
physical manifestation, mere physical manifestation of an identifier does not
render use of the identifier nonabstract. See Secured Mail Sols. LLC v.
Universal Wilde, Inc., 873 F.3d 905, 910 (Fed. Cir. 2017) (Affixing
identifier to a mail object did not render use of the identifier “any less
abstract.”).
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We add that recommending ‘mix-and-match’ apparel items, e.g.,
based on a first selected item of a shopper, is a longstanding
‘brick-and-mortar’ sales activity. There has even been pre-computer
automation of this sales activity by printing predetermined ‘mix-and-match’
recommendations on product tags of apparel items. See U.S. Patent
No. 3,775,775 to Mazzenga, “Design Coding for Coordinated Garment Sets”
(filed 1972). Further, the Federal Circuit has repeatedly held it is a
fundamental commercial practice to recommend purchases to someone
based on their needs, e.g., as presumed from their demographics and
activities. See e.g., Intellectual Ventures I LLC v. Capital One Bank (USA),
792 F.3d 1363, 1368 (Fed. Cir. 2015) (customizing web pages based on
information about a user and their activity is a “fundamental practice”
(ellipses omitted)); Affinity Labs of Texas LLC v. Amazon.com, Inc., 838
F.3d 1266, 1271 (Fed. Cir 2016) (customizing a user interface is “[l]ike the
basic concept of tailoring content to a user, as in Intellectual Ventures I”).
Step 2A(2): Are the Recited Judicial Exceptions
Integrated Into a Practical Application?
We agree with the Examiner’s determination that the claimed
additional elements do not integrate the claimed JE activities into a practical
application. See Guidance, 84 Fed. Reg. at 53 (describing a “practical
application” as a “meaningful limit on the [recited judicial exceptions], such
that the claim is more than a drafting effort designed to monopolize the
[exceptions]”); id. at 55 (“exemplary considerations . . . indicative [of] a
practical application”). Specifically, we agree the claimed additional
elements (i.e., claim 1’s features other than the identified JE activities) are
the “management server connected to said purchaser terminal via a
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network[,] purchaser terminal[, and] EC site” denoted by the emphasized
limitations of reproduced claim 1 (supra 2–3). Final Act. 3–4 (original
bulleting omitted); see also Ans. 5. We also agree these additional elements
are “generic computing components” (Final Act. 5; see also id. at 6),
“recited at a high level of generality” (id. at 4), and accordingly:
do not amount to an improvement in the functioning of a
computer or any other technology or technical field, apply the
judicial exception with, or by use of, a particular machine, or
apply or use the judicial exception in some other meaningful
way beyond generally linking the use of the judicial exception
to a particular technological environment, such that the claim as
a whole is more than a drafting effort designed to monopolize
the exception.
Id.; see also Ans. 4–5 (citing Spec. ¶¶ 88, 97; Figs. 1, 20).
We add that MPEP § 2106.05(a)–(c) and (e)–(h) support the
Examiner’s determination that the claimed additional elements do not confer
a practical application. See Guidance 84 Fed. Reg. at 55, nn.25, 27–32
(citing these MPEP sections).
MPEP § 2106.05(a) concerns “Improvements to the Functioning of a
Computer or To Any Other Technology or Technical Field.”
MPEP § 2106.05(a) at 2100-50. Specifically, it concerns “whether the
claim purports to improve computer capabilities or, instead, invokes
computers merely as a tool.” Id. at 2100-51–52. There is no indication
that the claimed invention improves a technology. The claimed technology
merely allocates the JE activities to a client device and server of a computer
network. The claimed “purchase terminal” is a shopper’s or salesperson’s
client device that activates the invention’s service of recommending
‘mix-and-match’ apparel items based on a first selected item of the shopper.
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The claimed “management server” is a server providing the above service.
These are ubiquitous uses of a client device (activate and receive a cloud
computing service) and server (provide a cloud computing service).
The claimed “recording medium” is an identifier of an apparel item
and can be construed as either (both) an abstract concept (see supra 8–9) or
as a generic tag (Ans. 5). This is a ubiquitous use of a “medium”—namely,
to identify a physical item.
MPEP § 2106.05(b) and (c) respectively concern use of a “Particular
Machine” and “Particular Transformation.” MPEP § 2106.05(b) at 2100-54;
§ 2106.05(b) at 56 (transformation must be “of an article”). Claim 1 does
not recite a particular machine; the hardware is generic (e.g., “terminal”).
Nor does claim 1 recite a particular transformation.
MPEP § 2106.05(e) concerns “Other Meaningful Limitations.”
MPEP § 2106.05(e) at 2100-62. Specifically, it concerns whether the
claim “limitations [go] beyond generally linking the use of the judicial
exception to a particular technological environment.” Id. It also describes,
as an example of limitations falling short of this threshold, a “data
processing system and communications controllers . . . [that] merely linked
the use of the abstract idea to a particular technological environment[,] i.e.,
‘implementation via computers’[.]” Id. (quoting Alice, 573 U.S. at 226).
For the reasons discussed with respect to MPEP § 2106.05(a), the additional
elements merely link the recited JE activities to data processing and
communication.
MPEP § 2106.05(f) concerns “Mere Instructions To Apply An
Exception.” MPEP § 2106.05(f) at 2100-63. Specifically, it concerns the
“particularity or generality of the application of the judicial exception.”
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Id. at 2100-66–67. It explains that “generically recit[ing] an effect of the
judicial exception[,] or claim[ing] every mode of accomplishing that effect,
amounts to . . . merely adding the words ‘apply it’ to the judicial exception.”
Id. at 2100-66. Because claim 1 only recites JE activities and generic
computer elements performing their generic functions in a generic
client-server architecture (supra 11) to achieve the JE activities, claim 1
constitutes a mere instruction to apply the JE activities.
MPEP § 2106.05(g) concerns “Insignificant Extra Solution Activity.”
MPEP § 2106.05(g) at 2100-67–69. Specifically, it concerns whether “the
additional elements add more than . . . activities incidental to the primary
process or product.” Id. at 2100-67. “[L]imitations . . . recite only
insignificant extra-solution activity . . . [if] unrelated to how the solution is
achieved.” Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288,
1311 (Fed. Cir. 2016). Such limitations include mere “natural
consequence[s] of carrying out the abstract idea in a computing
environment.” Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d
1315, 1329 (Fed. Cir. 2017) (cited by MPEP § 2106.05(g) at 2100-68).
Claim 1’s additional elements are merely incidental, natural consequences of
the claimed object and solution—i.e., of recommending ‘mix and-match’
apparel items to a shopper (object) based on an identifier of a first selected
item of the shopper (solution). For example, the claimed “terminal that
reads said commodity code therefrom” and “server . . . managing
coordinates information . . . [and] receiv[ing] said read commodity code” is
an incidental, natural pre-solution consequence of achieving the above
object in a computing environment. See MPEP § 2106.05(g) at 2100-67
(insignificant “pre-solution activity”), 68 (“mere data gathering”). The
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claimed “server transmits said coordinates information[,] indicative of the
coordinates example, . . . to the purchaser terminal” is an incidental, natural
post-solution consequence of achieving the above object in a computing
environment. See id. at 2100-67 (insignificant “post-solution activity”), 69
(“printing or downloading”).
MPEP § 2106.05(h) concerns “Field of Use and Technological
Environment.” MPEP § 2106.05(h) at 2100-69. Specifically, it concerns
whether an industry-specific claim limitation “simply . . . acquiesce[s] to
limiting the reach of the patent” by reciting a field of use or technological
environment. Id. It identifies, as an example, limitations that do “not alter
or affect how the process steps . . . were performed.” Id. at 2100-70. There
is no indication that claim 1’s industry specific limitations (e.g., use of a
“purchaser” terminal, “coordinates” information, and “commodity” code)
alter the claimed system’s means of processing data.
For the foregoing reasons, claim 1 is directed to judicial exceptions—
not to a practical application thereof.
Step 2B: Does Claim 1 Recite Anything That Is Beyond
the Recited Judicial Exceptions and Not a
Well-Understood, Routine, Conventional (“WURC”) Activity?
We agree with the Examiner’s determination that all claim features,
i.e., all limitations alone and in combination, constitute either one of the
JE activities or WURC activity. 84 Fed. Reg. at 56. Specifically, we agree
that the claimed uses of computer technology “do[] not recite . . . anything
other than generic computing components” (Ans. 5 (citing Spec. ¶¶ 88, 97;
Figs. 1, 20)) that perform “well-understood, routine, and conventional
activities” of “receiving or transmitting data over a network, . . . repetitive
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calculations, electronic recordkeeping, storing and receiving information in
memory” (Final Act. 5 (citing MPEP § 2106.05(d)).
We add that a claim’s additional elements do not confer “significantly
more” to an invention if merely: (i) adding the words “apply it” or an
equivalent to an abstract idea (Alice, 573 U.S. at 221–23); (ii) instructing to
implement an abstract idea on a computer (id. at 222–23); or (iii) requiring a
generic computer to perform generic computer functions (id. at 225).
Because claim 1’s additional elements are merely generic computer elements
performing their generic functions in a generic client-server architecture to
achieve the JE activities (see supra 11–12), the additional elements plainly
fall within the above third category of WURC activity. See also Intellectual
Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016)
(“The patent discloses only generic computers performing generic
functions” and “thus confirms that the implementation of the abstract idea is
routine and conventional.”).
Appellant’s Arguments
Our above determinations address most of Appellant’s arguments.
Only the below arguments require further discussion.
Appellant contends the unemphasized features of reproduced claim 1
(supra 2–3) are “merely pasted into the Office Action”—that is, are
identified without a specific explanation of how those features constitute
“advertising, marketing, or sales activities.” Appeal Br. 11. We are
unpersuaded because Appellant does not address the Examiner’s specific
findings as to why the unemphasized features of reproduced claim 1
constitute such activities. Ans. 3–4.
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Appellant also contends the Examiner presents a mere “conclusion,”
i.e., without discussion, that claim 1 does not recite a practical application of
the JE activities. Appeal Br. 11. We are unpersuaded because, in addition
to identifying the claimed additional elements, the Examiner finds they are
merely “generic computing components.” See supra 9–10, 13–14. The
Examiner explains that their computing operations are recited only at a high
level of generality and cites the Specification to show they can perform the
JE activities via generic computer technology. Id.
Appellant also contends “the Examiner asserts that since the
application relates to commercial activities, [] the claim is thus abstract.”
Appeal Br. 12. That is simply incorrect. The Examiner follows the
Guidance’s three steps—2A(1), 2A(2), and 2B—and thereby presents
reasoning and evidence that claim 1 is directed to JE activities without
significantly more.
Appellant also contends a non-precedential Board decision, Ex parte
Fanaru, “is assistive . . . to the present case” inasmuch that “the Examiner
[determines] that the claim language as a whole, without pointing to a
specific recitation, is directed to an abstract idea.” Appeal Br. 12. We are
unpersuaded because, as discussed, the Examiner follows the Guidance’s
three steps. We add that Ex parte Fanaru reversed the § 101 rejection
because, unlike in the present case, that examiner proffered an abstract idea
that is not recognized by the Guidance. Ex Parte Fanaru, APPEAL
2017-002898, 2019 WL 325946, *5 (PTAB 2019) (“In light of our guidance,
. . . we conclude ‘collecting usage information’ it is not an abstract idea.”).
Appellant contends, “The Applicant has argued that the present
invention provides advantageous results and an improvement in the
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technology of tracking items and facilitating purchases, as is described
throughout the present specification.” Appeal Br. 13. The Appeal Brief
presents no specific arguments or evidence to show a technological
improvement—e.g., does not identify a Specification disclosure of a
technological improvement.
Appellant contends the Examiner has conflated the Guidance’s
Steps 2A(2) and 2B. Appeal Br. 13. We are unpersuaded because the
Examiner conflates these steps only insomuch as determining the claimed
additional elements are generic computing components, their computing
operations are recited at a high level of generality, and the Specification
shows they can perform the JE activities via generic computer technology.
See supra 9–10, 13–14.
Appellant contends the lack of a rejection under 35 U.S.C. § 102 or
§ 103 shows “the claimed features are non-conventional.” Appeal Br. 14–
16. We are unpersuaded because overcoming §§ 102 and 103 is not a
dispositive consideration for § 101. See Mayo, 566 U.S. at 90 (“[I]n
evaluating the significance of additional steps, the § 101 patent eligibility
inquiry and, say, the § 102 novelty inquiry might sometimes overlap.”
(emphasis added)). To prevail in this vein of argument, Appellant must at
least—but does not—identify a claim feature that distinguishes over the
prior art and lies outside the realm of abstract ideas. See SAP Am., Inc. v.
InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018) (“[An] advance [that]
lies entirely in the realm of abstract ideas . . . is ineligible for patenting.”).
OVERALL CONCLUSION
We affirm the Examiner’s decision to reject claims 1–8.
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DECISION SUMMARY
Claims
Rejected 35 U.S.C. Basis Affirmed Reversed
1–8 § 101 Subject Matter Eligibility 1–8

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this Appeal may be extended under 37 C.F.R. § 1.136(a). See
37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED