Thumbtack, Inc.

Patent Trials and Appeals Board

Dec 21, 2021

2021001801 (P.T.A.B. Dec. 21, 2021)

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.
15/921,543 03/14/2018 Muxing Chen 8682P002F 1059
130093 7590 12/21/2021
Nicholson De Vos Webster & Elliott LLP
99 Almaden Boulevard
Suite 575
San Jose, CA 95113
EXAMINER
CAI, LANCE Y
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
12/21/2021 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):
eofficeaction@appcoll.com
ndwe_docketing@cardinal-ip.com
patent@ndwe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MUXING CHEN, JEFFREY LOCK, XIN LIU,
BENJAMIN ROBERT ANDERSON, ZHENYU LIU,
GUQIAN DU, CHRIS PAK, HARSH PANKAJ PANCHAL,
NICK JONES, SHUAI DING, XIAO ZHANG and YEMING FANG
____________

Appeal 2021-001801
Application 15/921,543
Technology Center 3600
____________

Before ATON W. FETTING, JOSEPH A. FISCHETTI, and
KENNETH G. SCHOPFER, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s Final Rejection2 of claims 1-4,6-12, 14-20 and 22-24. We have
jurisdiction under 35 U.S.C. § 6(b).

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies, THUMBTACK, INC.” as the real
party in interest.
2 All references to the Final Office Action refer to the Final Office Action
mailed on March 10, 2020.
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SUMMARY OF DECISION
We affirm.
THE INVENTION
Appellant states the invention relates “to matching a request from a
user to a set of one or more different users for responding to the request.”
Spec. ¶ 2.
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A method comprising:
receiving, at a server, a request for a service from a first user,
wherein the request includes a location where the service is
desired and a category of the service;
performing a first stage of matching that includes
determining a first plurality of second users that match the
location and category;
performing a first stage of matching that includes
performing the following for each of the first plurality of
second users that match the location and category:
computing a first value that quantifies an attractiveness
of the request to that second user,
computing a second value that quantifies a likelihood of
the user selecting that second user to fulfill the request, and
computing third value based at least in part on the
computed first value and the computed second value that
quantifies a score for choosing that second user for responding
to the request;
transmitting the request for the service to at least some of
a second plurality of second users of the first plurality of second
users whose computed third value exceeds a first threshold
value, wherein the second plurality of second users is less than
the first plurality od second users; and
transmitting the request for the service to an allocated
number of a third plurality of second users of the first plurality
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of second users, wherein each of the third plurality of second
users have registered within a predetermined time period
regardless of a score for choosing that one of the third plurality
of second users.
Appeal Br. 25 (Claims App.).
THE REJECTION3
Claims 1–4, 6–12, 14–20, and 22–24 are rejected under 35 U.S.C.
§ 101 because the claimed invention is directed to nonstatutory subject
matter. Final Act. 9–12.
FINDINGS OF FACT
We adopt the Examiner’s findings as set forth on pages 2–12, in the
Final Office Action and on pages 4–11 in the Examiner’s Answer,
concerning only the 35 U.S.C. § 101 rejection.
ANALYSIS
35 U.S.C. § 101 REJECTION
We will affirm the rejection of claims 1-4, 6-12, 14-20, 22-24 under
35 U.S.C. § 101.
The Appellant argues claims 1-4, 6-12, 14-20, 22-24 as a group.
(Appeal Br. 5). We select claim 1 as the representative claim for this group,
and so the remaining claims stand or fall with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(iv) (2019).
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

3 The Examiner withdrew the rejections claims 4, 6–12, 14–20, and 22–24
under 35 U.S.C. § 103(a). (Ans. 3).
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implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573
U.S. 208, 216 (2014).
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 id. 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 (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
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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 (quotation marks 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.
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
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(“Guidance”).4 “All USPTO personnel are, as a matter of internal agency
management, expected to follow the guidance.” Id. at 51;5 see also October
2019 Update at 1.
Under the 2019 Revised 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, or mental processes) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th
ed. Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).6
Guidance, 84 Fed. Reg. at 52–55.

4 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (the “October
2019 Update”) (available at https://www.uspto.gov/sites/default/files/
documents/peg_oct_2019_update.pdf).
5 The 2019 Revised Guidance supersedes MANUAL OF PATENT EXAMINING
PROCEDURE (“MPEP”) § 2106.04 and also supersedes all versions of the
USPTO’s “Eligibility Quick Reference Sheet Identifying Abstract Ideas.”
See Guidance, 84 Fed. Reg. at 51 (“Eligibility-related guidance issued prior
to the Ninth Edition, R-08.2017, of the MPEP (published Jan. 2018) should
not be relied upon.”). Accordingly, Appellant’s arguments challenging the
sufficiency of the Examiner’s rejection will not be addressed to the extent
those arguments are based on now superseded USPTO guidance.
6 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See Guidance - Section III(A)(2), 84 Fed. Reg. at 54–
55.
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Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
Step 2B, 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.
Guidance, 84 Fed. Reg. at 52–56. The U.S. Court of Appeals for the Federal
Circuit has explained that “the ‘directed to’ inquiry applies a stage-one filter
to claims, considered in light of the [S]pecification, based on whether ‘their
character as a whole is directed to excluded subject matter.’” Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir.
2015)). It asks whether the focus of the claims is on a specific improvement
in relevant technology or on a process that itself qualifies as an “abstract
idea” for which computers are invoked merely as a tool. See Enfish,
822 F.3d at 1335–36.
In so doing, as indicated above, we apply a “directed to” two prong
test: 1) evaluate whether the claim recites a judicial exception, and 2) if the
claim recites a judicial exception, evaluate whether the claim “appl[ies],
rel[ies] on, or use[s] the judicial exception in a manner that imposes a
meaningful limit on the judicial exception, such that the claim is more than a
drafting effort designed to monopolize the judicial exception.” Guidance, 84
Fed. Reg. at 53; see also MPEP §§ 2106.04–2106.05.
The Specification states:
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[W]ebsites exist that allow potential service buyers to submit a
request for a service that includes certain details of the request
such as a category and a location, and the online marketplace
may transmit the request to one or more service professionals that
match the requested category and location, and the service
professional may compose and generate a response. These
responses are largely manual and can be time intensive.
Spec. ¶ 4.
The Specification describes extensive mathematical formulas or
equations, and mathematical calculations for “weighted distance between the
requested location and all location where the service has been
responded to previously,” (¶¶ 42, 43), and weighting of engagement data
based on time (¶ 44). For example, paragraph 43 describes a weighted
distance calculation as:
Claim 1 recites in pertinent part:
receiving, … a request for a service from a first user,
wherein the request includes a location where the service is
desired and a category of the service;
performing a first stage of matching that includes
determining a first plurality of second users that match the
location and category;
performing a second stage of matching that includes
performing the following for each of the first plurality of second
users that match the location and category:
computing a first value that quantifies an attractiveness of
the request to that second user,
computing a second value that quantifies a likelihood of
the first user selecting that second user to fulfill the request, and
computing a third value based at least in part on the
computed first value and the computed second value that
quantifies a score for choosing that second user for responding
to the request;
transmitting the request for the service to at least some of
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a second plurality of second users of the first plurality of second
users whose computed third value exceeds a first threshold value,
wherein the second plurality of second users is less than the
first plurality of second users; and
transmitting the request for the service to an allocated
number of a third plurality of second users of the first plurality
of second users, wherein each of the third plurality of second
users have registered within a predetermined time period
regardless of a score for choosing that one of the third plurality
of second users.
Appeal Br. 25 (Claims App.).

The Examiner found claim 1 “cover[s] performance of the
limitations in the mind but for the recitation of computer components
without further limitation of those components.” Final Act. 10. “The
performance of the first and second stage matchings, the computation of the
first and second and third values, and the transmission of the requests,
constitute elements determined to be abstract, directed to mental processes.”
Id. at 6.
Accordingly, all this intrinsic evidence shows that claim 1 recites a
way of matching a request from a user to a set of one or more different
service professionals for responding to the request by computing scores and
setting thresholds, which we find is at least a mental process. This is
consistent with the Examiner’s determination. Guidance, 84 Fed. Reg. at 52.
The verbs listed in italics in the above truncated version of claim 1, are steps
which mimic human thought processes of selecting certain information over
others, i.e., evaluation, and creating perhaps with paper and pencil, graphic
data interpretation perceptible only in the human mind. See In re TLI
Commc’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94 (Fed. Cir.
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2016). The Federal Circuit has held similar concepts to be abstract. For
example, the Federal Circuit has held that abstract ideas include the concepts
of collecting data, analyzing the data, and reporting the results of the
collection and analysis, including when limited to particular content. See,
e.g., Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332,
1340–41 (Fed. Cir. 2017) (identifying the abstract idea of organizing,
displaying, and manipulating data); Elec. Power Grp., LLC v. Alstom S.A.,
830 F.3d 1350, 1354 (Fed. Cir. 2016) (characterizing collecting information,
analyzing information by steps people go through in their minds, or by
mathematical algorithms, and presenting the results of collecting and
analyzing information, without more, as matters within the realm of abstract
ideas). Thus, under the first prong, claim 1 recites the patent ineligible
judicial exception of a mental process.
Claim 1 is also directed to mathematical formulas or equations, and
mathematical calculations. The following steps concern at least
mathematical concepts which are highlighted in italics:
computing a first value that quantifies an attractiveness of
the request to that second user,
computing a second value that quantifies a likelihood of
the first user selecting that second user to fulfill the request, and
computing a third value based at least in part on the
computed first value and the computed second value that
quantifies a score for choosing that second user for responding
to the request;
transmitting the request for the service to at least some of
a second plurality of second users of the first plurality of second
users whose computed third value exceeds a first threshold value,
wherein the second plurality of second users is less than the
first plurality of second users (emphasis added).
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Turning to the second prong of the “directed to” test, claim 1 only
generically requires a server. This component is described in the
Specification at a high level of generality. See Spec. ¶¶ 27–34, Fig. 1. We
fail to see how the generic recitations of this most basic computer
component and/or of a system so integrates the judicial exception as to
“impose[] a meaningful limit on the judicial exception, such that the claim is
more than a drafting effort designed to monopolize the judicial exception.”
Guidance, 84 Fed. Reg. at 53.
Thus, we find that the claim 1 is directed to the judicial exceptions of
a mental process and a mathematical concept.
That the claims do not preempt all forms of the abstraction or may be
limited to matching services to customers, does not make them any less
abstract. See OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362–63
(Fed. Cir. 2015) (“And that the claims do not preempt all price optimization
or may be limited to price optimization in the e-commerce setting do not
make them any less abstract.”).
Turning to the second step of the Alice analysis, because we find that
the claims are directed to abstract ideas/judicial exceptions, the claims must
include an “inventive concept” in order to be patent-eligible, i.e., there must
be an element or combination of elements sufficient to ensure that the claim
in practice amounts to significantly more than the abstract idea itself. See
Alice, 573 U.S. at 217–18 (quoting Mayo, 566 U.S. at 72–73).
Concerning this step, the Examiner found the following:
The claim(s) do not include additional elements that are
sufficient to amount to significantly more than the judicial
exception. As discussed above with respect to the integration of
the abstract idea into a practical application, the additional
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element of using a processor/server to perform the steps amount
to no more than mere instructions to apply the exception using a
generic computer, which cannot provide an inventive concept.
Final Act. 11.
We agree with the Examiner. “[T]he relevant question is whether the
claims here do more than simply instruct the practitioner to implement the
abstract idea . . . on a generic computer.” Alice, 573 U.S. at 225. They do
not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to retrieve, select, and apply decision criteria to data and modify
the data as a result amounts to electronic data query and retrieval—one of
the most basic functions of a computer. In short, each step does no more
than require a generic computer to perform generic computer functions. The
claims do not, for example, purport to improve the functioning of the
computer itself. The Specification spells out different generic equipment
and parameters that might be applied using this concept and the particular
steps such conventional processing would entail based on the concept of
information access under different scenarios. See, e.g., Spec. ¶¶ 27–34, Fig.
1. Thus, the claims at issue amount to nothing significantly more than
instructions to apply the abstract idea using some unspecified, generic
computer. Under our precedents, that is not enough to transform an abstract
idea into a patent-eligible invention. See Alice, 573 U.S. at 225–26.
Considered as an ordered combination, the computer components of
Appellant’s claims add nothing that is not already present when the steps are
considered separately. The sequence of data reception-analysis (receiving/
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matching/computing (successively)/transmitting) and storing is equally
generic and conventional or otherwise held to be abstract. See Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (sequence of
receiving, selecting, offering for exchange, display, allowing access, and
receiving payment recited an abstraction); Inventor Holdings, LLC v. Bed
Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017) (holding that
sequence of data retrieval, analysis, modification, generation, display, and
transmission was abstract); Two-Way Media Ltd. v. Comcast Cable
Commc’ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (holding sequence of
processing, routing, controlling, and monitoring was abstract). The ordering
of the steps is, therefore, ordinary and conventional.
As to the structural claims (17–24), they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic computer
components configured to implement the same idea. This Court
has long “warn[ed] . . . against” interpreting § 101 “in ways that
make patent eligibility ‘depend simply on the draftsman’s art.’”
Alice, 573 U.S. at 226 (quoting Mayo, 566 U.S. at 72). As a corollary, the
claims are not directed to any particular machine.
We have reviewed all the arguments Appellant has submitted
concerning the patent eligibility of the claims before us that stand rejected
under 35 U.S.C. § 101 (Appeal Br.5–17; Reply Br. 2–12). We find that our
analysis above substantially covers the substance of all the arguments, which
have been made. But, for purposes of completeness, we will address various
arguments in order to make individual rebuttals of same.
Appellant argues:
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[I]t is not clear if the Examiner is asserting that each of the
limitations allegedly recite a mental process or whether the
Examiner is asserting that the limitations, as a whole, recite a
mental process. Regardless, the Examiner fails to make a prima
facie case for why these limitations, either taken individually or
in the whole, fall under this category. Further, Appellant
disagrees with this categorization because none of the cited
limitations recite an abstract idea.
Appeal Br. 6–7.
Although Appellant and the Examiner describe, at different levels of
abstraction, to what the claims are directed, it is recognized that “[a]n
abstract idea can generally be described at different levels of abstraction.”
Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016). That
need not and, in this case does not, “impact the patentability analysis.” See
id. at 1241. As we have found above, claim 1 is also directed to a mental
process using mathematical formulas or equations, and mathematical
calculations. The use of such mathematical concepts in the claim does not
preclude the claim from also being directed to a mental process.
We thus disagree with Appellant that the Examiner failed to make a
prima facie case. To the extent Appellant argues that the Examiner erred in
adequately supporting this determination by not providing evidence, we are
unpersuaded. In this regard, there is no requirement that the Examiner must
provide evidentiary support in every case before a conclusion can be made
that a claim is directed to an abstract idea. See, e.g., Manual of Patent
Examining Procedure § 2106.07(a)(III) (2018) (“The courts consider the
determination of whether a claim is eligible (which involves identifying
whether an exception such as an abstract idea is being claimed) to be a
question of law. Thus, the court does not require ‘evidence’ that a claimed
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concept is a judicial exception, and generally decides the legal conclusion of
eligibility without resolving any factual issues.”) (citations omitted).
All that is required of the USPTO to meet its prima facie burden of
production is that the Examiner set forth the statutory basis of the rejection
and the reference or references relied upon in a sufficiently articulate and
informative manner as to meet the notice requirement of 35 U.S.C. § 132.
As the statute itself instructs, the Examiner must “notify the applicant,”
“stating the reasons for such rejection,” “together with such information and
references as may be useful in judging the propriety of continuing the
prosecution of his application.” 35 U.S.C. § 132; see also In re Jung, 637
F.3d 1356, 1363 (Fed. Cir. 2011) (declining “to impose a heightened burden
on examiners beyond the notice requirement of § 132”). Here, as we found
above, the Examiner has made these findings as required by the statute. See
Final Act. 6, 9–12.
Appellant argues, “[t]he claims go beyond ‘mental processes,’
because they cannot practically be performed in the mind or “with pencil
and paper.” For example, the step of ‘performing a second stage of
matching’ includes multiple ‘computing’ steps that cannot practically be
performed in a human mind.” The computing of the first value “requires
more computation than the simplistic ‘1+ 1=2.’” (Appeal Br. 7).
We disagree with Appellant because as early as Parker v. Flook, the
Supreme Court held that calculations, while “primarily useful for
computerized calculations producing automatic adjustments in alarm
settings,” “can [still] be made by pencil and paper calculations.” Parker,
437 U.S. 584, at 586. As such, the Court did not deem the alleged primacy
of computer implementation to be persuasive in its 35 U.S.C. § 101 analysis.
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Appellant here has not produced evidence showing that the claimed
computations cannot be made by human interaction using a pen and paper.
Even assuming, arguendo, Appellant could prove that the claimed
computations could be performed in the mind or “with pencil and paper,”
Appellant here has not provided evidence showing that the claims
implement its process using anything other than the ordinary capabilities of
a general purpose computer. “[A]fter Alice, there can remain no doubt:
recitation of generic computer limitations does not make an otherwise
ineligible claim patent-eligible. The bare fact that a computer exists in the
physical rather than purely conceptual realm is beside the point.” DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014)
(internal citations and quotation marks omitted).
Appellant next argues, “when the examiner has concluded that certain
claim elements recite well-understood, routine, conventional activity in the
relevant field, the examiner must expressly support such a rejection in
writing with one of the four options specified in Section III. A of the
Berkheimer Memorandum.” (Appeal Br. 15).
The Federal Circuit made clear that “not every § 101 determination
contains genuine disputes over the underlying facts material to the § 101
inquiry.” Berkheimer v. HP Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018). In
fact, the Federal Circuit in Berkheimer did not require evidentiary support
for independent claim 1 because “[t]he limitations [of claim 1] amount to no
more than performing the abstract idea of parsing and comparing data with
conventional computer components.” Id. at 1370.
Citing to portions claim 1, Appellant argues:
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These features add significantly more to the Examiner’s
characterization of the claimed subject matter as ‘a mental
process’ and go beyond the ‘generic’ and ‘limited’ computer
functionality of buySAFE. For example, transmitting a request
to a second plurality of second users who have a matching value
exceeding a threshold and to a third plurality of second users
regardless of any matching value, ‘adds a specific limitation or
combination of limitations that are not well understood, routine,
conventional activity in the field.’
(Appeal Br. 16).
Here, we do not find, and Appellant does not identify, any analogous
modification to the routine and conventional functioning of computer
network technology. At best, the claim 1 recites generic computer
components to perform a mental process. And, Appellant fails show error in
the Examiner’s finding that the “ordered combination” of the recited
elements does not ‘transform the nature of the claim’ into a patent–eligible
application.” Alice, 573 U.S. at 217. On page 11 of the Final action, the
Examiner, finds that the ordering of the steps is ordinary and conventional,
which we adopt as our own. In turn, Appellant merely repeats the claim
limitation of, “transmitting a request to a second plurality of second users
who have a matching value exceeding a threshold and to a third plurality of
second users regardless of any matching value.” (Appeal Br. 16). We find
nothing unconventional in the selective transmission of requests based on
given thresholds.
Citing similarities between claim 1 and Bascom Global Internet v.
AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016), Appellant argues, “it
is not conventional to transmit a request for a service to both second users
that have scores exceeding a threshold AND an allocated number of second
users based on time of registration of the second users with the server prior
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to perform the matching.” (Appeal Br. 16–17). But, Appellant’s reliance on
BASCOM is misplaced. In BASCOM, the Federal Circuit determined that
the claimed installation of a filtering tool at a specific location, remote from
the end-users, with customizable filtering features specific to each end user
provided an inventive concept in that it gave the filtering tool both the
benefits of a filter on a local computer and the benefits of a filter on the ISP
server. BASCOM, 827 F.3d at 1350. The court, thus, held that the second
step of the Mayo/Alice framework was satisfied because the claimed
invention “represents a ‘software-based invention[ ] that improve[s] the
performance of the computer system itself.’” Id. at 1351
Here, Appellant does not identify, and we do not find, any
improvement to computer technology analogous to the ordered combination
described in BASCOM or any additional element or elements recited in
claim 1 that yield an improvement in the functioning of a computer, or an
improvement to another technology or technical field. Again, on page 17 of
its Appeal Brief, Appellant merely repeats claim limitations without pointing
out the significance of the recited order of steps which would be comparable
to the claimed installation of a filtering tool at a specific location in Bascom.
We also disagree with Appellant (Appeal Br. 12–13) that under the
holding in Enfish our decision would be different. Enfish, 822 F.3d 1327.
We are unpersuaded that the claims here are directed to an improvement in
computer technology like that of claim 17 in Enfish and therefore are patent
eligible. In Enfish, the invention at issue was directed at a new type of
logical model for a computer database: a self-referential table that allowed
the computer to store many different types of data in a single table and index
that data by column and row information. Id. at 1330–32. In finding the
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claims “not directed to an abstract idea,” but “to a specific improvement to
the way computers operate,” the Federal Circuit noted that “the claims are
not simply directed to any form of storing tabular data, but instead are
specifically directed to a self-referential table for a computer database.” Id.
at 1336–37.
We find nothing in the claims before us arising to this level of
technical improvement in the claimed, “a consumer device and a merchant
device,” which rises to the level of technical proficiency as found in Enfish.
Instead, we find the claims on appeal are focused on “economic or other
tasks for which a computer is used in its ordinary capacity.” Id. at 1336.
For the reasons identified above, we sustain the Examiner’s § 101
rejection of claims 1-4, 6-12, 14-20 and 22-24.
CONCLUSIONS
We conclude the Examiner did not err in rejecting claims 1–4, 6–12,
14–20, and 22–24 under 35 U.S.C. § 101.

DECISION SUMMARY
In summary:
Claim(s)
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–4, 6–
12, 14–
20, 22–24
101 Eligibility 1–4, 6–
12, 14–
20, 22–24

TIME PERIOD FOR RESPONSE
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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