Thomas R. Gruber et al.

Patent Trials and Appeals Board

Aug 30, 2019

13251127 - (D) (P.T.A.B. Aug. 30, 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.
13/251,127 09/30/2011 Thomas R. Gruber P11337US4/77870000124104 1543
150004 7590 08/30/2019
DENTONS US LLP - Apple
4655 Executive Dr
Suite 700
San Diego, CA 92121
EXAMINER
BEHNCKE, CHRISTINE M
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
08/30/2019 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):
dentons_PAIR@firsttofile.com
patents.us@dentons.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_____________

Ex parte THOMAS R. GRUBER, ALESSANDRO F. SABATELLI,
FREDDY A. ANZSURES, and DONALD W. PITSCHEL1
_____________

Appeal 2017-010555
Application 13/251,127
Technology Center 3600
______________

Before ROBERT E. NAPPI, ST. JOHN COURTENAY III, and
LARRY J. HUME, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1 through 8, and 21 through 42. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
INVENTION
The claimed invention is directed to a technique for processing task
items using electronic data that represents a task to be performed. In one
approach, a task item is generated based on input from a user and context of
the input. In another approach, different attributes of task items are used to

1 According to Appellants, the real party in interest is Apple Inc. App.
Br. 4.
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organize the task items intelligently into multiple lists. Abstract. Claims 1
and 37 are illustrative of the invention and reproduced below:
1. A method comprising:
at one or more computing devices comprising one or
more processors and memory storing one or more programs for
execution by the one or more processors:
storing a plurality of task items that are organized in a
plurality of lists, each of the plurality of lists having a
respective list identifier;
receiving user input that indicates information about a
new task;
in response to receiving the user input, generating a task
item for the new task;
determining which list of the plurality of lists to add the
task item, wherein the user input does not specify any list of the
plurality of lists;
in response to determining to add the task item to a
particular list of the plurality of lists, storing data that associates
the task item with the particular list;
determining a current context associated with a
computing device of the one or more computing devices; and
ordering the respective list identifiers of at least some of
the plurality of lists to be concurrently presented on the
computing device based on the current context associated with
the computing device.

37. A method comprising:
at a user device comprising one or more processors,
memory, and a display:
storing a plurality of task items that are organized in a
plurality of lists, each of the plurality of lists having a
respective list identifier;
receiving user input that indicates information about a
new task;
in response to receiving the user input, generating a task
item for the new task;
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determining which list of the plurality of lists to add the
task item, wherein the user input does not specify any list of the
plurality of lists;
in response to determining to add the task item to a
particular list of the plurality of lists, storing data that associates
the task item with the particular list; and concurrently
displaying at least two list identifiers each associated with a
respective list selected from a group consisting of: (1) a list of
tasks items associated with a particular time period, (2) a list of
task items associated with a particular type of transit mode, (3)
a list of task groups, each task group containing tasks items
associated with a respective common location, and ( 4) a list of
task items associated with a particular type of action,
comprising at least one of (i) a call action, (ii) an email action,
and (iii) a purchase action, wherein the at least two list
identifiers are concurrently displayed without displaying
information about any task item associated with the at least two
list identifiers.
App. Br. 66, 73 (Claims Appendix).
REJECTIONS AT ISSUE
The Examiner has rejected claims 1 through 8, and 21 through 42
under 35 U.S.C. § 101 for being directed to patent-ineligible subject matter.
Final Act. 3–10.2
The Examiner has rejected claims 1 through 3, 8, 21 through 23, 28
through 31, and 36 under 35 U.S.C. § 103 as being unpatentable over
Schmidt (US 2007/0185754 A1, published Aug. 9, 2007) in view of Alcazar
et al. (US 2012/0124126 A1, published May 17, 2012), and Guay “Location-
Driven Productivity with Task Ave” 19 February 2011,

2 Throughout this Opinion, we refer to the Appeal Brief, filed March 6,
2017 (“App. Br.”), the Reply Brief, filed August 9, 2017 (“Reply Br.”) the
Examiner’s Answer, mailed June 9, 2017 (“Answer”), and the Final Office
Action, mailed May 5, 2016 (“Final Act.”).
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http://iphone.appstorm.net/reviews/productivity/location-driven-
productivity-withtask-ave (hereinafter “TaskAve”). Final Act. 11–25.
The Examiner has rejected claims 4 through 7, 24 through 27, and 32
through 35 under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over
Schmidt, Alcazar, TaskAve, and Bellotti (US 2010/0138416 A1, published).
Final Act. 25–37.
The Examiner has rejected claims 37 through 39 under 35 U.S.C.
§ 103(a) as being unpatentable over Schmidt, TaskAve, Bellotti, and Ng,
GOOGLE'S TASK LIST NOW COMES TO /PHONE, February 4, 2009,
http://www.simonblog.com/2009/02/04/googles-task-list-nowcomes-to-
iphone. Final Act. 37–45.
Examiner has rejected claims 40 through 42 under 35 U.S.C. § 103(a)
as being unpatentable over Schmidt, Alcazar, TaskAve and Kotler et al. (US
2011/0314404 A1, published Dec. 22, 2011). Final Act. 45–47.
ANALYSIS
We have reviewed Appellants’ arguments in the Briefs, the
Examiner’s rejections, and the Examiner’s response to Appellants’
arguments. Appellants’ arguments have not persuaded us of error in the
Examiner’s rejections of claims 1 through 8, and 21 through 42 under
35 U.S.C. § 101 or of claims 37 through 39 under 35 U.S.C. § 103.
However, Appellants’ arguments have persuaded us of error in the
Examiner’s rejection of claims 1 through 8, 21 through 36, and 40 through
42 under 35 U.S.C. § 103.
Initially, we note that Appellants state on page 13 of the Appeal Brief
that the claims do not stand or fall together, but rather, for issues of
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patentability and obviousness, they are to be considered in four groups.
However, in addressing the patent eligibility rejection under 35 U.S.C.
§ 101, Appellants do not separately address any of the claims as is required
under 37 C.F.R. §. 41.37(c)(1)(iv). Thus, we consider all the claims rejected
under 35 U.S.C. § 101 to be grouped together and address the rejection as it
applies to representative claim 1. With respect to the obviousness rejections
under Pre-AIA 35 U.S.C. § 103(a), Appellants have presented separate
arguments and we consider the claims grouped in the four groups identified
on page 13 of the Appeal Brief.

Rejection 35 U.S.C. § 101
PRINCIPLES OF LAW
Patent-eligible subject matter is defined in 35 U.S.C. § 101 of the
Patent Act, which recites:
Whoever invents or discovers any new and useful
process, machine, manufacture, or composition of matter, or
any new and useful improvement thereof, may obtain a patent
therefor, subject to the conditions and requirements of this title.

There are, however, three judicially created exceptions to the broad
categories of patent-eligible subject matter in 35 U.S.C. § 101: “[l]aws of
nature, natural phenomena, and abstract ideas.” Alice Corp. Pty. Ltd. v. CLS
Bank Int’l, 573 U.S. 208, 216 (2014); Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 70 (2012).
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, 566 U.S. 66, 75–77
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(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.
(15 How.) 252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S.
at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 176; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
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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. (alterations in original) (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
The PTO recently published revised guidance on the application of
§ 101. USPTO’s 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (Jan. 7, 2019) (“Memorandum”). Under that guidance, we
first look to whether the claim is directed to a judicial exception because:
(1) the claim recites a judicial exception, including certain groupings
of abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic practice,
or mental processes); and
(2) the claim as a whole fails to recite additional elements that
integrate the judicial exception into a practical application (see
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MANUAL OF PATENT EXAMINING PROCEDURE (MPEP) § 2106.05(a)–
(c), (e)–(h) (9th ed. 2018).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that are 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.
See Memorandum, 84 Fed. Reg. at 56.

ANALYSIS
Memorandum, Step 2A, Prong One 3
The Judicial Exception
The Examiner concludes the claims are not patent eligible as they are
directed to a judicial exception without reciting significantly more. Final
Act. 3–10. Specifically, the Examiner provides an analysis of Appellants’
claims, finding that they recite limitations of gathering data and using
categories to organize store and transmit information, which are steps that
can be performed in the human mind, and as such recite an abstract idea.

3 Throughout this opinion, we give the claim limitations the broadest
reasonable interpretation consistent with the Specification. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
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Final Act. 4, 47 through 49 (citing SmartGene Inc. v. Adv. Bio. Labs. SA,
555 F. App’x 950 (Fed. Cir. 2014) (non-precedential)).
Claim 1 recites: “storing a plurality of lists” (a step of storing data);
“receiving user input that indicates information about a new task” (a step of
receiving data); “generating a task item for item” and “determining which
list of the plurality of lists to add the task item” (steps of analyzing the data);
“in response to determining to add the task item to a particular list storing
the data” (a step of storing the data); determining a current contest
associated with the computing device (a step of gathering data); and
“ordering the respective list identifiers of at least some of the plurality of
lists” (a step of analyzing the data and displaying the results of the analysis).
These limitations, under their broadest reasonable interpretation, recite an
abstract mental process of collecting/gathering information, analyzing it and
displaying or storing it. “The concept of data collection, recognition, and
storage is undisputedly well-known. Indeed humans have always performed
these functions.” Content Extraction, LLC v. Wells Fargo Bank Nat’l Ass’n,
776 F.3d 1343, 1347 (Fed. Cir. 2016).
If a method can be performed by human thought alone, or by a human
using pen and paper, it is merely an abstract idea and is not patent eligible
under § 101. CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
1372–73 (Fed. Cir. 2011); “That purely mental processes can be
unpatentable, even when performed by a computer, was precisely the
holding of the Supreme Court in Gottschalk v. Benson.” CyberSource, 654
F.3d at 1375. See also Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d
1138, 1146–47 (Fed. Cir. 2016).
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Therefore, we concur with the Examiner that representative claim 1
recites limitations that encompass collecting or gathering information,
analyzing the information, and displaying the result, which could be
performed alternatively as a mental process (an abstract idea), or by a human
using pen and paper.
Thus, we conclude that the claims recite steps involving concepts the
courts have held to be abstract.

Moreover, Appellants’ Specification describes the invention as
providing a way for people to remind themselves of tasks or events, and the
invention “assist[s] a user in managing his/her tasks.” Specification paras.
0005, 0016. Further, the Specification identifies the claimed “lists” as
including to-do lists for the user, and the claimed “tasks” include user tasks.
See Specification paras. 0005, 0006. Thus, Appellants’ Specification also
describes the invention broadly in terms of a method of managing human
activity, which is also a category of abstract idea identified in the
Memorandum

Appellants argue that the Examiner’s rejection is in error as the claims
are not directed to an abstract idea. App Br. 19–30, Reply Br. 36–56.
Appellants argue that the claims are directed to efficient methods for
automatically organizing and displaying task and task lists and that the
“invention also improves user efficiency by automatically presenting lists in
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an order that is most useful to the user, and dynamically changing that order
as circumstances change.” App. Br. 18–20. Appellants argue:
The Examiner's conclusion that the claims are directed to
an abstract idea is improper because (1) like the claims in
McRO v. Bandai Namco, Appellants’ claims go beyond merely
organizing information into a new form, (2) like the claims in
Enfish, the claimed invention is directed to improvements in
computer capabilities, (3) the Examiner improperly dissected
the claim into distinct elements and compared them
individually to ideas held to be abstract ( 4) the Examiner
improperly relied on the SmartGene case to identify the alleged
abstract idea, (5) the Examiner improperly relied on the
Cyberfone case to identify the alleged abstract idea, and (6) the
claimed invention is different from any concept identified as an
abstract idea by the courts or in the examples of the Interim
Eligibility Guidance

App Br. 21 (citing McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d
1299 (Fed. Cir. 2016), Enfish, LLC v Microsoft Corp., 822 F.3d 1327 (Fed.
Cir. 2016), SmartGene Inc. and Cyberfone Sys., LLC v. CNN Interactive
Grp. Inc., 558 F. App’x 988 (Fed. Cir. 2014)). Appellants argue their claims
are analogous to those at issue in McRO as they automate tasks that humans
are capable of performing. App Br. 22, Reply Br 40–43. Further,
Appellants argue their invention is similar to McRO as it is “directed to the
incorporation of particular rules and logic in computer-based task
generation, which improve upon the existing technological processes of
creating and managing ‘to-do" lists.’.” Reply Br 43. Similarly, Appellants
argue that their claims like those at issue in Enfish and are not abstract as
“their focus is on [a] specific improvements to electronic devices [to]
manage to-do lists.” App. Br. 23. Further, Appellants argue the claims are
similar to those at issue in Enfish, as Appellants’ Specification identifies that
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the focus of the claims are directed to the improvements in computer
capabilities (to categorize tasks). Reply Br. 43–44 (citing paragraph 72 of
Appellants’ original filed Specification). Finally, Appellants argue that
SmartGene Inc. and Cyberfone are non-precedential decisions, and as the
issues in those cases do not uniquely match Appellants’ claims they do not
show the Appellants’ claims are directed to an abstract idea. App. Br. 24–
29, Reply Br. 46–53.
The Examiner provides a detailed and comprehensive response to
Appellants’ arguments on pages 3 through 22 of the Answer. In response to
Appellants’ arguments directed to McRO, the Examiner states that the claims
are not similar to those at issue in McRO Appellants’ claimed invention does
not “describe any ‘limited rules’ with the specificity by which the claimed
process was described in McRO.” Answer 7. Further, the Examiner
identified that in McRO the claimed rules used by a computer differed from
those that would be applied by humans to perform the conventional process
of synchronizing facial animations. Answer 7 (citing McRO at 1314).
Further, the Examiner states:
In contrast, the claimed “limited rules” of the present
application would be applied in the same way by a human
performing the analysis as they are by the claimed computer-
implemented method. The claimed process may implement a
combined order of rules that output specific information, but
that information is not used in the claimed process to create
anything akin to a desired sequence of synchronized, animated
characters in computer animation. Rather, existing information
is organized into a new form (i.e., lists) through the
performance of a series of logical operations on the existing
information. It is unclear from Appellant's argument how the
claimed determination of which list to add a task item based on
information describing that task item differs from how a human
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would perform such a determination. It is also unclear from
Appellant's argument how the claimed ordering of list
identifiers (i.e., titles of lists) based on, e.g., a distance from a
location associated with tasks in each list differs from how a
human would perform such an ordering.

Answer 8 (footnote citing the claimed steps of: “determining lists”; “in
response to determining lists”; “determining a current contexts”; and
“ordering the respective list identifiers” as the “limited rules” omitted).
We concur with the Examiner. The claims do not recite an ordered
combination of specific rules as in McRO. In McRO the court reviewed
claims which use “a combined order of specific rules that renders
information into a specific format that is then used and applied to create
desired results: a sequence of synchronized, animated characters” McRO,
837 F.3d at 1315. The court found that the claims did not “simply use a
computer as a tool to automate conventional activity,” but instead used the
computer to “perform a distinct process” that is carried out in a different way
than the prior non-computer method to improve the technology of (3-D
animation techniques). See McRO, 837 F.3d at 1314–16. Here, we concur
with the Examiner that the claims do not recite such an ordered set of rules
carried out in a different way than the non-computer method. The claimed
steps, discussed above with respect to the abstract idea analysis, are not
steps, which are unique to a use of a computer and as found by the Examiner
can be performed in the mind. Thus, Appellants’ augments relying upon
McRO have not persuaded us of error in the Examiner’s rejection.
In response to Appellants’ arguments based upon Enfish, the
Examiner identifies that the claims at issue in Enfish were directed to a self-
referral table that differed from conventional data structures and achieved
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improvements in computer functioning. Answer 12 (citing Enfish at 1337).
The Examiner states “Applicant's claims utilize generic computing
components performing conventional data receiving/transmitting/processing
functions to apply rules to input data and organize that data. The claims
recite no modifications to conventional database structures and do not
purport to decrease search times or use less memory over conventional data
processing methods. As no such differences are claimed, it is impossible to
conclude that any improvements in computer functioning are present
analogous to those in Enfish.” Id.
We concur with the Examiner. The data structure of Enfish was “not
simply directed to any form of storing tabular data,” but instead, included a
very specifically defined means for configuring a logical data table that
required a four-step algorithm to render the table self-referential. Enfish,
822 F.3d at 1336. Further, the Enfish court found “the plain focus of the
claims is on an improvement to computer functionality itself, not on
economic or other tasks for which a computer is used in its ordinary
capacity.” Enfish, 822 F.3d at 1336. Thus, the focus of the decision in
Enfish, was not the specificity with which the hardware was claimed but
rather that the claims represented an improvement to the function of the
computer.
Here, as discussed above, Appellants’ Specification identifies the
invention as providing a way for people to remind themselves of tasks or
events. Appellants’ Specification does not identify an improvement to the
operation of the computer, but rather an improvement to an abstract idea,
which is implemented using the computer as a tool. Further, Appellants’
arguments on page 45 of the Reply Brief that the claimed improvements
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decrease search time, uses less memory and improves battery life are merely
attorney argument and unsupported by Appellants’ disclosure. Thus,
Appellants’ arguments directed to Enfish have not persuaded us of error in
the Examiner’s rejection.
With respect to Appellants’ augments regarding the Examiner’s
rejection being in error because the Examiner dissected the claim and
compared the elements individually to ideas being held to be abstract. We
are not persuaded of error, as this is not indicative of error in the rejection.
Merely combining several abstract ideas does not render the combination
any less abstract. RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327
(Fed. Cir. 2017) (“Adding one abstract idea (math) to another abstract idea .
. . does not render the claim non-abstract.”); see also FairWarning IP, LLC
v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94 (Fed. Cir. 2016) (determining
the pending claims were directed to a combination of abstract ideas).
Further, Appellants’ arguments regarding the Examiner’s reliance upon the
non-precedential decisions in SmartGene and Cyberfone, has not persuaded
us of error in the Examiner’s rejection. As discussed above, our analysis,
which does rely upon precedential case authorities, demonstrates the
elements recite an mental process, an abstract concept, and also Appellants’
Specification identifies the concept as being one of organizing human
activity, which is also an abstract concept. Thus, Appellants’ arguments
have not persuaded us the Examiner erred in concluding the claims recite an
abstract idea.
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Memorandum, Step 2A, Prong Two
Integration of the Judicial Exception into a Practical Application
The Examiner finds that the additional claimed elements do not
amount to significantly more than the abstract idea. Final Act. 4. The
Examiner states:
The claim does not include additional elements that are
sufficient to amount to significantly more than the judicial
exception because one or more computing devices comprising
one or more processors and memory are merely generic
computing components on which the abstract idea is
implemented. Further, receiving input amounts to data
gathering, which is an insignificant extra-solution activity to the
judicial exception.
Final Act. 4.
Appellants argue:
[The] Examiner failed to address the additional claim elements
both individually and as a combination. Additionally, the
claimed invention does contain features that amount to
‘significantly more’ because (1) the present claims include
elements or functions that are beyond those recognized in the
art or by the courts as being well-understood, routine, or
conventional; and (2) like the claims in Bascom and MCRO, the
present claims are directed to improvements to another
technology or technical field.
App. Br. 32. Further, Appellants argue that “[b]ecause the claims are both
novel and non-obvious, the claims cannot include only what is ‘well-
understood, routine or conventional’ in the field.” App. Br. 33.
Additionally, Appellants argue that like BASCOM and McRO the claimed
invention improves a technical field as Appellants invention “uses natural
language processing and device context to automatically categorize task
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items.” App. Br. 34 (citing BASCOM Glob. Internet Servs., Inc. v. AT&T
Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016)), Reply Br. 57–58.
The Examiner in response to Appellants’ arguments reiterates that the
claims encompass an abstract idea and that the additional elements are
merely reciting generic computer components performing conventional
functions to implement the abstract idea. Answer 23. Further, the Examiner
finds that the claims are unlike the claims at issue in BASCOM and McRO as
the present claims are not directed to improvements to another technology or
technical field. Answer 22.
We concur with the Examiner. In addition to the claim limitations
discussed above which recite the abstract idea, representative claim 1 recites
“[a] computing device[] comprising one or more processors and a memory
storing . . . programs for execution by the one or more processors.”
Additional limitations directed to a processor, and memory do not draw the
claim to patent eligible subject matter. See, e.g., RecogniCorp, 855 F.3d at
1327 (“Unlike Enfish, [the claim] does not claim a software method that
improves the functioning of a computer . . . [but] claims a ‘process that
qualifies as an “abstract idea” for which computers are invoked merely as a
tool.’”) (citation omitted)). Further, Appellants’ Specification identifies the
computing device as “any computing device that is capable of reciting from
a user and displaying information about tasks.” Specification 23. Thus,
Appellants’ Specification supports the Examiner’s conclusion that the
additional elements are merely generic computer components implementing
the abstract idea. Further, as identified by the Examiner, representative
claim 1 does not recite use of natural language processing and we decline to
import limitations from the specification into the claim. Answer 24.
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With respect to Appellants’ arguments directed to BASCOM and
McRO, as discussed above, we do not find that the claims recite an
improvement to the computer or another technology and are not persuaded
by Appellants’ arguments. See MPEP § 2106.05(a).
Further, we do not find that the method claims on appeal result in the
transformation of an article to a different state or thing; rather they merely
receive and analyze or reorder data. See MPEP § 2106.05(c). Nor have
Appellants’ argued that the method claims on appeal are tied to a particular
machine. See MPEP § 2106.05(b).
Nor do claims 1 through 8, and 21 through 42 on appeal present any
other issues as set forth in the Memorandum regarding a determination of
whether the additional generic elements integrate the judicial exception into
a practical application. See Memorandum, 84 Fed. Reg. at 55.
Thus, under Step 2A, Prong Two (MPEP §§ 2106.05(a)–(c) and (e)–
(h)), we conclude claims 1 through 8, and 21 through 42 do not integrate the
judicial exception into a practical application.
The Inventive Concept – Step 2B
Under the Memorandum, 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 adds a specific limitation
beyond the judicial exception that is not “well-understood, routine,
conventional” in the field (see MPEP § 2106.05(d)); or, simply appends
well-understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception.
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Here, because the claims do not include additional elements other than
those that are well understood, routine or conventional, Appellants’
arguments have not persuaded us of error in the Examiner’s rejection.
Further, Appellants’ arguments based upon novelty and the lack of an
art-based rejection are unavailing. A finding of novelty or non-obviousness
does not necessarily lead to the conclusion that subject matter is patentable
eligible. “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).
In summary, Appellants’ arguments have not persuaded us of error in
the Examiner’s determination that representative claim 1 is directed to an
abstract idea; both a method of collecting/gathering information and
analyzing it (a mental processes) and to a method organizing human activity.
Further, Appellants’ arguments have not persuaded us that the Examiner
erred in finding that the claims are not: directed to an improvement in the
functioning of the computer or to other technology or other technical field;
directed to a particular machine; directed to performing or affecting a
transformation of an article to a different state or thing; directed to using a
judicial exception in some meaningful way beyond linking the exception to a
particular technological environment such that the claim as a whole is more
than a drafting effort to monopolize the judicial exception. For these
reasons, we are unpersuaded that the claims recite additional elements that
integrate the judicial exception into a practical application. See
Memorandum, 84 Fed. Reg. at 54.
As discussed above, Appellants have not presented separate
arguments with respect to claims 2 through 8 and 21 through 42, and thus
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these claims are grouped with claim 1. Accordingly, we sustain the
Examiner’s rejection of claims 1 through 8, and 21 through 42 under 35
U.S.C. § 101 as being directed to a patent-ineligible abstract idea, that is not
integrated into a practical application, and does not include an inventive
concept.
Rejection 35 U.S.C. § 103
Independent claims 1, 21, and 29 and the claims which depend
thereupon.
Appellants present several arguments directed to the Examiner’s
obviousness rejection of independent claims 1, 21 and 29 based upon
Schmidt, Alcazar and TaskAve. App. Br. 34–53. The dispositive issue
presented by these arguments did the Examiner error in finding that the
combination of Schmidt, Alcazar and TaskAve teaches determining a
context and ordering list identifiers of the lists based on the current context
as recited in each of independent claims 1, 21, and 29.
Appellants argue that Alcazar, which the Examiner relies upon to
teach the disputed limitations, teaches tasks and contexts but they are not the
same tasks as claimed and discussed in Schmidt, nor are the contexts the
same as those claimed. App. Br. 44–49, Reply Br. 12–17. Specifically,
Appellants argue that the Specification defines tasks as “an electronic data
item that contains one or more details about a task to perform, whether by a
user or automatically by a process.” App.Br. 44 (citing para 21 of
Appellants’ Specification). Appellants argue Alcazar is a system that
“concerned with providing individual software functions to a user on
demand so that the user is not required to download or purchase entire
software packages that contain other functions that the user is not interested
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in” and that in Alcazar the tasks are program capabilities. App Br. 45 (citing
Alcazar paras. 1, 4, 20, 24, and 45). Thus, Appellants assert that Alcazar’s
tasks are not the same as items to be performed, as is required by the claims.
Id. 44–45. Further, Appellants argue that in Alcazar the context is related to
an application being accessed and is unrelated to tasks as recited in Schmidt
or Appellants’ claims. Id. 46–49 (citing Alcazar 38, 39, and 41); Reply Br.
17–18. Thus, Alcazar thus does not teach ordering tasks as claimed. App.
Br. 46–49 (citing Alcazar 38, 39, and 41); Reply Br. 17–18.
The Examiner responds to Appellants’ arguments by stating “‘an
electronic data item that contains one or more details about a task to perform
. . . by a user’ essentially describes any electronically stored text” and that
“that Alcazar's ‘tasks’ certainly comprise electronically stored text that was
at some point input by some user. Answer 33. Further, the Examiner cites
to paragraph 82 of Alcazar as teaches presenting user interface with
applications (software performing a function or task) based upon the
contexts. Answer 34.
We have reviewed the cited teachings of Alcazar and do not agree
with the Examiner’s findings. We concur with Appellants’ interpretation of
the claimed “task items.” As discussed infra with respect to claims 37–39,
we find that Schmidt teaches the task items that meet the claimed task items,
however we disagree that the “tasks” of Alcazar meet the claimed task items.
As argued by Appellants, the tasks of Alcazar are functions of applications
not “one or more details about a task to perform, whether by a user or
automatically by a process” as is required by the proper interpretation of
independent claims 1, 21, and 29. Further, we fail to see how the contexts
discussed in Alcazar, which are used to determine tasks (functions of
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applications), are used to order the tasks as claimed. Paragraph 82 of
Alcazar, cited by the Examiner teaches generating a user interface of tasks
(not task items as claimed) and does not teach ordering of the tasks as
claimed. Accordingly, we do not sustain the Examiner’s rejection of
independent claims 1, 21, 29 and dependent claims 2, 3, 8, 23, 23, 28, 30
through 31, and 36 similarly rejected.
The Examiner’s rejection of claims 4 through 7, 24 through 27, 32
through 35, and 40 through 42 all depend upon one of claims 1, 21 and 29.
The Examiner’s rejection of these dependent claims similarly rely upon the
teachings of Alcazar to teach the limitations of the independent claims.
Accordingly, we do not sustain the Examiner’s rejection of claims 4 through
7, 24 through 27, 32 through 35 and 40 through 42 for the same reasons as
claims 1, 21, and 29.
Independent claims 37 through 29.
Appellants present several arguments directed to the Examiner’s
obviousness rejection of independent claims 37 through 39 based upon
Schmidt, TaskAve, Bellotti, and Ng. App. Br. 57 through 62. Appellants
argue the rejection is in error for the reasons argued with respect to claim 1
as the combination of the references do not teach “receiving user input that
indicates information about a new task,” and “determining which list of the
plurality of lists to add the task item, wherein the user input does not specify
any list of the plurality of lists[.]” App. Br. 57. Further Appellants argue
that the rejection is in error for the reasons discussed with respect to
Appellants’ directed to claims 4 through 7, 24, through 27, and 32 through
35 (Appellants’ group B). App. Br. 57. Finally, Appellants argue that the
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Examiner’s rationale to combine Ng’s teaching of two list identifiers without
displaying information of a task item, is insufficient as the combination
frustrate the purpose of Schmidt and change it’s principle of operation. App.
Br. 57–62.
The Examiner finds that Schmidt’s teaching of a production order
from a customer meets the claimed information about a task being received
from a user. Answer 26 (citing Schmidt para 28). Further, the Examiner
finds that Schmidt teaches directing tasks to folders (equated to the claimed
lists) manually or automatically based upon rules which use task
characteristics. Answer 26 (citing Schmidt 30, 31, 53 and Figure 5). The
Examiner interprets the claim limitation “wherein the user input does not
specify any list of the plurality of lists” as including user input data where
the input data include characteristics that can be used to determine the folder
(equated to the list). Answer 30 (citing an example of the input “[r]emember
to pick up almond milk at Whole Foods” as being stored into the “whole
Foods list.” provide by Appellants on page 37 of the Appeal Brief). Thus,
the Examiner finds the “utilization of such task characteristics in Schmidt's
rule evaluation is not equivalent to an explicit user specification of ‘any list
of the plurality of lists,’ but that such characteristics simply describe
information about each task. In Schmidt, the equivalent to an explicit user
specification of a particular list to route a task is described by the user's
ability to manually assign input tasks to particular folders.” (i.e. the
Examiner equates Schmidt’s manual entry of task of a task to a folder with a
user input specifying the list, and equates the automatic entry of a task to
based upon characteristics of the user input with placement in a list without a
the user input identifying the list). Answer 29.
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We concur with the Examiner’s claim interpretation and based upon
our review of the cited teachings in Schmidt we concur with the Examiner’s
finding that Schmidt teaches or suggests the disputed limitations. We are
not persuaded that by Appellants’ argument that the production order from a
customer is not an input from a user as Schmidt teaches that the tasks come
from a backend application. Reply Br. 7. Representative claim 37 recites
receiving a user input that indicates information about a new task, thus the
claim does not identify that the user enters the task just that the user enters
information indicating a task. Schmidt teaches in paragraph 28 that the
customer order is a transaction that is used by the backend application to
generate tasks, thus the customer order is an input that is indicative of a task.
Further, we concur with the Examiner’s claim interpretation that the claim
recitation “wherein the user input does not specify any list of the plurality of
lists” does not preclude there being information in the user input which can
be used to determine the list. We concur with the Examiner’s finding that
Schmidt teaches manually and automatically assigning tasks to folders.
Answer 27 (citing Schmidt para. 31). We consider both, manually and
automatically assigning tasks, to demonstrate that the Schmidt teaches the
limitation that the user input does not specify the list. As found by the
Examiner the automatic assignment using rules to assign the tasks to folders,
suggests that the tasks automatically assigned are not assigned to a folder
identified in the user input. See e.g., Schmidt 49 and 53. Further, while
Schmidt’s teaching of manually putting the tasks in a folder may result in an
input where the folder is identified, this teaching is directed to a input by an
administrator, and not the customer input which is mapped to the claim “user
input”. Thus, the manual placement of a task of into a folder also suggests
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that the user input (customer purchase order) does not specify any list of the
plurality of lists. Accordingly, Appellants’ arguments directed to the
combination of Schmidt, TaskAve, Bellotti, and Ng not teaching receiving
user input that indicates information about a new task, wherein the user input
does not specify any list of the plurality of lists, is not persuasive of error in
in the Examiner’s rejection of representative claim 37.
With respect to Appellants’ argument that the argument directed to
claims 4 through 7, 24, through 27, and 32 through 35 (Appellants’ group B)
also apply to claim 37, we are not persuaded of error. Appellants’
arguments directed to group B focus on limitations of claim 4 and the
rationale to combine features of the reference to teach the limitations of
claim 4, (e.g. the limitation directed to storing list association data that
associates first subset of task items with a second list). App. Br. 55–57
These arguments do not apply to claim 37 as the disputed limitations in
claim 4 are not present in claim 37, i.e. claim 37 does not recite a limitation
directed to storing list association data that associates two lists.
In response to Appellant’s arguments concerning the rationale to
combine Ng and Schmidt, the Examiner states:
Ng reference is simply cited to display two concurrently
displayed list identifiers which do not also display information
about any task item associated with the two list identifiers. Such
list identifiers are disclosed by additional references of record
as discussed substantially supra. Simply displaying two data
labels as opposed to displaying the two data labels in
combination with information about task items associated with
those data labels is obvious under at least a simple substitution
rationale, i.e., substituting displaying a first set of known data
for displaying a second set of known data to obtain the
predictable results of a display including the second set of
known data. Respectfully, that is plenty of “a reasoned
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explanation of how and why Schmidt’s user interface would
have been modified by the teachings of Ng.”
Appellant submits that “(t)o modify Schmidt by Ng as
proposed by the Examiner would not have been obvious
because the modification would require a significant change to
Schmidt's principle of operation.” Examiner respectfully
disagrees that constructively adding Ng’s display of particular
information, information already taught by the references of
record, requires any significant change to Schmidt's principle of
operation. In other words, Schmidt displays data based on
inputs, and displaying more (or less) known data does not
change the reference's principle of operation.

Answer 43, 44.
We concur with the Examiner that Ng’s figure teaches a display of
two concurrent identifiers that do not display information about a task item
associated with the identifiers. The application of this type of display into
Schmidt is merely the substitution of known displays for their known
purpose. Further, as stated by the Examiner, this does not change the
principle of operation of Schmidt, which is to display information to users.
We additionally note that the limitation at issue is directed to the information
displayed (printed matter) and does not functionally relate to the claimed
method. As such the limitations does not define the invention over the prior
art. “[O]nce it is determined that the limitation is directed to printed matter,
one must then determine if the matter is functionally or structurally related
to the associated physical substrate, and only if the answer is ‘no’ is the
printed matter owed no patentable weight.” In re DiStefano, 808 F.3d. 845,
851 (Fed Cir. 2015). 4 Accordingly, Appellants’ arguments have not

4 “[W]here the claim as a whole is directed to conveying a message or
meaning to a human reader independent of the intended computer system,
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persuaded us of error in the Examiner’s rejection of representative claim 37
of claims 38 and 39 grouped with claim 37.
DECISION
We affirm the Examiner’s rejection of claims 1 through 8, and 21
through 42 under 35 U.S.C. § 101.
We affirm the Examiner’s rejection of claims 37 through 39 under
35 U.S.C. § 103(a).
We reverse the Examiner’s rejection of claims 1 through 8, 21 through
36, and 40 through 42 under 35 U.S.C. § 103(a).
Because we affirm at least one ground of rejection with respect to
each claim on appeal, we affirm the Examiner’s decision rejecting claims 1
through 8, and 21 through 42. See 37 C.F.R. § 41.50(a)(1).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED

and/or the computer-readable medium merely serves as a support for
information or data, no functional relationship exists.” MPEP § 2111.05
(III.). See also Ex parte Nehls, 88 USPQ2d 1883, 1889 (BPAI 2008)
(precedential) (“[T]he nature of the information being manipulated does not
lend patentability to an otherwise unpatentable computer-implemented
product or process.”).