Vakil, Sanjay S. et al.

Patent Trials and Appeals Board

Dec 31, 2019

13491416 - (D) (P.T.A.B. Dec. 31, 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.
13/491,416 06/07/2012 Sanjay S. Vakil TRIPA.001A 4335
20995 7590 12/31/2019
KNOBBE MARTENS OLSON & BEAR LLP
2040 MAIN STREET
FOURTEENTH FLOOR
IRVINE, CA 92614
EXAMINER
EVANS, KIMBERLY L
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
12/31/2019 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):
efiling@knobbe.com
jayna.cartee@knobbe.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SANJAY S. VAKIL, STEPHEN KAUFER,
and ADAM ROSENBERG

Appeal 2019-001271
Application 13/491,416
Technology Center 3600
____________

Before RICHARD M. LEBOVITZ, RYAN H. FLAX, and
CYNTHIA M. HARDMAN, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
The Examiner rejected the claims under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter and under 35 U.S.C. § 103 as
obvious. Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject the claims. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as TripAdvisor
LLC. Br. 5.
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STATEMENT OF THE CASE
The claims stand rejected by the Examiner as follows:
1. Claims 1–33 under 35 U.S.C. § 101 (2006) because the claimed
invention is directed to a judicial exception to patent-eligibility. Non-Final
Act. 12.
2. Claims 1–24 and 33 under pre-AIA 35 U.S.C. § 103(a) (2006) as
obvious in view of Crawford (US 2007/0214180 A1, published Sept. 13,
2007) and Tseng (US 2012/0310968 A1, published Dec. 6, 2012). Non-
Final Act. 16.
3. Claims 25–32 under pre-AIA 35 U.S.C. § 103(a) as obvious in
view of Crawford, Tseng, and Siddique et al. (US 2010/0030578 A1,
published Feb. 4, 2010) (“Siddique”). Non-Final Act. 40.
There are four independent claims, claims 1, 5, 16, and 25.
Appellants made the same arguments for each independent claim. Appeal
Br. 23–29, 33–38. Therefore, we have selected claim 1 as representative.
Claim 1 is reproduced below (bracketed numbering has been added for
reference to the claim limitations):
1. A system for identifying users of a traveler’s social
network who may possess travel information of interest to the
traveler, the system comprising:
[1] one or more data stores that store information
regarding users of an electronic social networking service; and
[2] a computing device in communication with the one or
more data stores, the computing device operative to:
[3] receive, from a traveler computing device, a
request for travel information of interest to the traveler;
[4] identify at least one user of the electronic social
networking service that is associated with the traveler;
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[5] request information regarding the at least one
user from at least one of the electronic social networking
service and another network-based service;
[6] determine, from the information that is
requested, a location associated with the at least one user
based at least in part on geotagged location information
associated with the at least one user;
[7] determine that the location associated with the
at least one user corresponds to the travel information of
interest;
[8] generate instructions that, when executed on
the traveler computing device, cause the traveler
computing device to generate a message for delivery to a
computing device of the at least one user;
[9] generate a user interface object for presentation
on a user interface of the traveler computing device,
[10] wherein the user interface object
represents the at least one user and signifies that
the traveler may contact the at least one user with
the user interface object,
wherein the user interface object comprises:
[10a] the instructions, and
[10b] media identifying the user that
is associated with the traveler, and
[11] wherein selection of the user interface
object via the user interface of the traveler
computing device causes the traveler computing
device to execute the instructions; and
[12] transmit the user interface object to the
traveler computing device for presentation on the user
interface.

Appellant did not provide separate arguments for dependent claims 2–
4, 6–15, 17–24, and 26–33 or argue the obviousness rejections separately.
Appeal Br. 23–29, 33–38. These claims therefore all stand or fall together.
37 C.F.R. § 41.37(c)(1)(iv). We address both obviousness rejections
together.
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1. REJECTION BASED ON §101
Principles of Law
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
However, not every discovery is eligible for patent protection. Diamond v.
Diehr, 450 U.S. 175, 185 (1981). “Excluded from such patent protection are
laws of nature, natural phenomena, and abstract ideas.” Id. The Supreme
Court articulated a two-step analysis to determine whether a claim falls
within an excluded category of invention. 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, 75–77 (2012).
In the first step, it is determined “whether the claims at issue are
directed to one of those patent-ineligible concepts.” Alice, 573 U.S. at 217.
If it is determined that the claims are directed to an ineligible concept, then
the second step of the two-part analysis is applied in which it is asked
“[w]hat else is there in the claims before us?” Id. The Court explained that
this step involves
a search for an ‘inventive concept’ — i.e., an element or
combination of elements that is ‘sufficient to ensure that the
patent in practice amounts to significantly more than a patent
upon the [ineligible concept] itself.’
Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S. at 75–77).
Alice, relying on the analysis in Mayo of a claim directed to a law of
nature, stated that in the second part of the analysis, “the elements of each
claim both individually and ‘as an ordered combination’” must be
considered “to determine whether the additional elements ‘transform the
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nature of the claim’ into a patent-eligible application.” Alice, 573 U.S. at
217 (citing Mayo, 566 U.S. at 79, 78).
The PTO published revised guidance on the application of 35 U.S.C.
§ 101. USPTO’s January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 51–57 (2019) (“2019
Eligibility Guidance”). This guidance provides additional direction on how
to implement the two-part analysis of Mayo and Alice.
Step 2A, Prong One, of the 2019 Eligibility Guidance, looks at the
specific limitations in the claim to determine whether the claim recites a
judicial exception to patent eligibility. In Step 2A, Prong Two, the claims
are examined to identify whether there are additional elements in the claims
that integrate the exception in a practical application, namely, is there a
“meaningful limit on the judicial exception, such that the claim is more than
a drafting effort designed to monopolize the judicial exception.” 84 Fed.
Reg. 54 (2. Prong Two).
If the claim recites a judicial exception that is not integrated into a
practical application, then as in the Mayo/Alice framework, Step 2B of the
Eligibility Guidance instructs us to determine whether there is a claimed
inventive concept to ensure that the claims define an invention that is
significantly more than the ineligible concept, itself. 84 Fed. Reg. 56. In
making this determination, we must consider whether there are specific
limitations or elements recited in the claim “that are not well-understood,
routine, conventional activity in the field, which is indicative that an
inventive concept may be present” or whether the claim “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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indicative that an inventive concept may not be present.” 84 Fed. Reg. 56
(footnote omitted).
With these guiding principles in mind, we proceed to determine
whether the claimed subject matter in this appeal is eligible for patent
protection under 35 U.S.C. § 101.
Discussion
Claim 1 is directed to a system “for identifying users of a traveler’s
social network who may possess travel information of interest to the
traveler.” The system comprises [2] a computing device operative to carry
out a method comprising steps [3]–[12]. A computing device is a
“machine,” one of the four categories of patent-eligible subject matter
enumerated in 35 U.S.C. § 101. We thus proceed to Step 2A, Prong One, of
the 2019 Eligibility Guidance, to consider whether the claim is directed to a
judicial exception to patent eligibility under § 101.
Step 2A, Prong One
In Step 2A, Prong One, the specific limitations in the claim are
examined to determine whether the claim recites a judicial exception to
patent eligibility, namely whether the claim recites an abstract idea, law of
nature, or natural phenomenon. 84 Fed. Reg. 54. The Examiner found that
the claims are directed to certain methods of organizing human activity
(Non-Final Act. 3, 13), which is one of the three groupings listed in the 2019
Eligibility Guidance as a patent-ineligible abstract idea. 84 Fed. Reg. 52.
The first step of the method that can be implemented on the [2]
computing device is [3] receiving a request for travel information of interest
to a traveler from a “traveler computing device.”
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At least one user can be identified in step [4] who is a user of an
“electronic social networking service that is associated with the traveler” of
step [3]. The Specification defines social network services as including
“services that enable users to register with the service, to store and share
selected user information with other users, and to view selected information
of other users.” Spec. ¶ 22. The Specification explains that “users may
identify the other users by indicating that these users are ‘friends’ or as
individuals who they are ‘following’.” Id.
Once the user is identified in step [4], information about the user can
be requested from the electronic social networking service and “another
network-based service” in step [5]. The Specification discloses that a
network-based service may include:
network-based travel services such as those that provide travel
information authored by registered users of the service,
network-based retailers that sell travel items (e.g., flights,
hotels, auto rentals, etc.) for purchase, network-based sources of
entertainment and/or information (e.g., travel applications,
electronic guidebooks, network-based encyclopedias, media
sharing, etc.), and the like.
Spec. ¶ 36.
A location of the user can be determined in step [6], and in step
[7], whether the location associated with the user corresponds to the
travel information of interest requested by the traveler in step [3] can
be determined.
In sum, in steps [3]–[7] of the method “operative” on the computing
device, it is determined whether a user of the same social network as the
traveler is associated with a location that the traveler has requested travel
information about. These steps involve “managing . . . interactions between
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people (including social activities . . .)” which is described in the 2019
Eligibility Guidance as the abstract idea of “[c]ertain methods of organizing
human activity.” 84 Fed. Reg. 52. We therefore agree with the Examiner
the claim 1 recites an abstract idea.
In subsequent step [8] of claim 1, instructions are generated “that,
when executed on the traveler computing device, cause the traveler
computing device to generate a message for delivery to a computing device
of the at least one user.” This message is executed when a “user interface
object” is generated and transmitted on the “traveler computing device” in
steps [9] and [12], and then selected in step [11]. Thus, steps [8]–[12]
facilitate communication between a traveler and a user of the same
electronic social network as the traveler, where the user is associated with
the travel location about which the traveler has requested information.
These steps also recite the abstract idea of “[c]ertain methods of organizing
human activity” because they manage interactions, specifically
communication, between people. See 84 Fed. Reg. 52.
While the steps of the method are performed on a computer, the
Supreme Court in Alice found that the implementation of a method on a
generic computer “fail[s] to transform that abstract idea into a patent-eligible
invention.” Alice, 573 U.S. at 221. We therefore proceed to Step 2A, Prong
2 of the analysis to determine whether the abstract ideas are integrated into a
practical application. 84 Fed. Reg. 54.
Step 2A, Prong Two
Prong Two of Step 2A under the 2019 Eligibility Guidance asks
whether there are additional elements that integrate the exception into a
practical application. 84 Fed. Reg. 54. As in the Mayo/Alice framework, we
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must look at the claim elements individually and “as an ordered
combination” to determine whether the additional elements integrate the
recited abstract idea into a practical application. As discussed in the 2019
Guidance, “[a] claim that integrates a judicial exception in a practical
application will apply, rely on, or use the judicial exception in a manner that
places a meaningful limit on the judicial exception, such that the claim is
more than a drafting effort designed to monopolize the judicial exception.”
84 Fed. Reg. 54. Integration into a practical application is evaluated by
identifying whether there are additional element individually, and in
combination, which go beyond the judicial exception. Id. at 54–55. As
explained in the October 2019 Update to Subject Matter Eligibility,2 “first
the specification should be evaluated to determine if the disclosure provides
sufficient details such that one of ordinary skill in the art would recognize
the claimed invention as providing an improvement.” 2019 Oct. PEG
Update 12. Furthermore, the 2019 Oct. PEG Update explains that the
“specification need not explicitly set forth the improvement, but it must
describe the invention such that the improvement would be apparent to one
of ordinary skill in the art.” Id.
The Specification describes its invention as relating “to travel
recommendations and, in particular, to identifying members of a traveler’s
social network that may provide knowledge regarding travel information of
interest to the traveler.” Spec. ¶ 11. This corresponds to steps [3]–[7] of

2 Available at https://www.uspto.gov/sites/default/files/documents/
peg_oct_2019_update.pdf (last accessed Nov. 15, 2019) (“2019 Oct. PEG
Update”).

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claim 1. The recommendations would be obtained by the steps recited in
[8]–[12] of claim 1.
In challenging the Examiner’s determination that the claims are
directed to an abstract idea, Appellant argues that the claims “are not
directed to the concept of ‘identifying members of a traveler’s social
network that may provide knowledge regarding travel information of interest
to the traveler,’ as alleged in the Office Action,” because they also recite
generating a “user interface object” that, when selected, causes the traveler
computing device to execute instructions as in step [11] of claim 1. Appeal
Br. 18–19. Appellant contends that steps [8]–[12] of claim 1 constitute a
patent-eligible improvement to computer technology that add significantly
more to any abstract idea recited in the claims. Id. at 20, 23. In support of
this argument Appellant argues that the improvement is analogous to the
type of computer improvement found to be patent-eligible in Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016), DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014), and Core Wireless
Licensing S.A.R.L. v. LG Electronics, Inc., 880 F.3d 1356 (Fed. Cir. 2018).
Appeal Br. 15.
While Appellant identifies the improvement as the steps of generating
[8] instructions and [9] a user interface object that enables a message to be
sent to a user device when the user interface object is selected in step [11],
the claims do not specify how these steps are implemented. Business
method claims in Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1241 (2016)
were held to be ineligible for a patent under 35 U.S.C. § 101 because they
did “not claim a particular way of programming or designing the software to
create menus that have these features, but instead merely claim the resulting
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systems.” The court held “the claims are directed to certain functionality—
here, the ability to generate menus with certain features.” Id.
The rejected claims in this appeal have the same deficiency identified
in Apple v Ameranth. The claims recite certain functions in steps [8]–[11],
but do not recite how the functionalities of generating instructions and user
objects are accomplished.
Another concern raised by the steps in the claim is preemption. In
McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1315 (Fed.
Cir. 2016), the court found that, while the McRO claims involved the
manipulation of data, e.g., generating morph weight sets to animate lip and
facial expressions of three dimensional characters, the claimed “automation
goes beyond merely ‘organizing [existing] information into a new form’ or
carrying out a fundamental economic practice.” McRO, 837 F.3d at 1315
(alternation in original) (quoting Digitech Image Techs., LLC v. Elecs. For
Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014)). Instead, the court
found that the “claimed process uses 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.” Id.
The claims were therefore found to be directed to a “technological
improvement over the existing, manual 3-D animation techniques.” McRO,
837 F.3d at 1316.
McRO further held that the “limitations in claim 1 prevent preemption
of all processes for achieving automated lip-synchronization of 3-D
characters.” McRO, 837 F.3d at 1315. The court explained that “[t]he
specific structure of the claimed rules would prevent broad preemption of all
rules-based means of automating lip synchronization.” Id. Steps [8]–[12]
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— generating instructions [8], generating a user interface object [9] with
instructions and media [10], and selecting the object to execute instructions
[11], [12] — are recited in such general terms that utilizing the user interface
object to send a message poses a risk that the abstract idea embodied in the
claims would be preempted. As stated in McRO, 837 F.3d at 1314, we must
“look to whether the claims in these patents focus on a specific means or
method that improves the relevant technology or are instead directed to a
result or effect that itself is the abstract idea and merely invoke generic
processes and machinery.” Here, the recited limitations are directed to a
result which itself is an abstract idea of organizing human activity. Thus,
steps [8]–[12] have the same eligibility deficiency discussed in McRO.
The Specification’s description of the claimed steps does not elucidate
an improvement in computer technology as asserted by Appellant. For
example, the Specification discloses that the invention “facilitate[s]
communication between the traveler and one or more of the members
selected from the traveler’s social network, allowing the traveler to obtain
knowledge regarding the travel information of interest.” Spec. ¶ 33. The
Specification discloses “mechanisms enabling communication between the
traveler and one or more of the selected members,” including “short message
service (SMS) messaging, MMS messaging, microblogs, instant messaging
(IM), electronic mail, voice over internet protocol (VOIP), video
conferencing, and other communication mechanisms known in the art and
combinations thereof.” Spec. ¶ 34 (emphasis added). The Specification
further discloses the “user interface object” of step of steps [9]–[12] as
enabling the communication between the traveler and user. Spec. ¶¶ 70, 72,
73. However, none of the disclosures in the Specification teach how the
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claimed instructions and user interface object are generated nor how the
communication is facilitated except to the extent that the object is selected
and communication enabled by a hyperlink (Spec ¶ 72: “Figure 3B
illustrates user interface objects 362 that represent the identified members
(e.g., hyperlinked images). By selecting one of the user interface objects
362, the traveler may view identifying information for the member
represented by the selected user interface object 362.”). Hyperlinks were
known in the art at the time of the invention. See, e.g., Tseng ¶ 49; Siddique
¶ 198. Thus, a review of the Specification does not reveal a specific
improvement to the technology, but rather uses known messaging systems
and hyperlinks to accomplish the claimed steps. The claim limitations,
themselves, state the result, but lack the specificity as to how the result is
achieved, in contrast to the patent-eligible claims in McRO.
Appellant argues that the claims are like those in Core Wireless which
described “an improved user interface.” Appeal Br. 20. In Core Wireless,
880 F.3d at 1362–63, the court found that the claims were “directed to a
particular manner of summarizing and presenting information in electronic
devices” that specified “a particular manner by which the summary window
must be accessed” and disclosed “a specific manner of displaying a limited
set of information to the user, rather than using conventional user interface
methods to display a generic index on a computer.” Id. The court found that
“these claims recite[d] a specific improvement over prior systems, resulting
in an improved user interface for electronic devices.” Id. at 1363. The court
further explained that “the disclosed invention improve[d] the efficiency of
using the electronic device by bringing together ‘a limited list of common
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functions and commonly accessed stored data,’ which can be accessed
directly from the main menu.” Id.
Here, the only item displayed on the traveler computing device is the
[10] user interface object comprising [10b] media identifying the user that is
associated with the traveler. Appellant has not explained how such a display
constitutes the type of patent-eligible improvement found in Core Wireless
(characterized as bringing a list of common functions together and accessed
in a manner that the court found not to be conventional or generic). Core
Wireless, 880 F.3d at 1362–63. Rather, here, neither the claim nor the
Specification describe an improvement in software functionality, but rather
appear to use generic computer tools (such as messaging and hyperlinks) to
carry out the claimed steps. Appellant asserts that the improvement is
enabling “communication between travelers and members of their social
networks who may have information of interest regarding a travel
destination.” Appeal Br. 20. Appellant does not identify how the interface
constitutes an improvement over other interfaces that enable communication
between a first party and a second party wanting information from the first
party. We have reviewed the Specification for evidence of the improvement,
but, as explained above, found that a generic hyperlink may be used to
implement the communication on known messaging systems (Spec. ¶¶ 72,
73).
Enfish, cited by Appellant, involved claims directed to a data storage
and retrieval system for a computer system that comprised a logical table
including logical rows and logical columns for indexing data in the table.
Enfish, 822 F.3d at 1336. The Enfish court referred to the logical table as a
“self-referential table” and found that the table functioned differently from
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conventional databases and “is a specific type of data structure designed to
improve the way a computer stores and retrieves data in memory.” Id. at
1336, 1339. Appellant has not explained how executing instructions that
enable communication between a traveler and user in the same social
network improves how a computer functions. The rejected claims at issue
here recite the functions which are performed, but not a specific structure to
accomplish the recited functions of steps [8]–[12].
Appellant asserts there is an improvement to computer technology
because claim limitation [8] “generate[s] instructions that, when executed on
the traveler computing device, cause the traveler computing device to
generate a message for delivery to a computing device of the at least one
user” (Appeal Br. 20), but this step itself is part of the abstract idea. It does
not by itself constitute an “additional element” that reflects an improvement
to computer technology, but instead is simply an implementation of the
abstract idea on a computer which enables the traveler to contact the user on
its device. “The Court in Alice made clear that a claim directed to an
abstract idea does not move into section 101 eligibility territory by ‘merely
requir[ing] generic computer implementation.’” buySAFE, Inc. v. Google,
Inc., 765 F.3d 1350, 1354 (2014) (alteration in original) (quoting Alice, 573
U.S. at 221).
Appellant also asserts that there is an improvement to a user interface
that facilitates communication between a traveler and user. Appeal Br. 20.
The user interface in the claims comprises [9] “a user interface object for
presentation on a user interface of the traveler computing device.” The
display of the object on the interface is paired with a functionality that [11]
cause the selection of the object to execute the instructions of step [8].
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However, such functionality as explained in the Specification could be a
hyperlink. Spec. ¶ 72. The Specification does not disclose that the
functionality embodied in the user interface object “resolves a specifically
identified problem in the prior state of the art” as it did in the patent eligible
claims in Trading Technologies International, Inc. v. CQG, Inc., 675 Fed.
Appx. 1001, 1004 (Fed. Cir. 2017). Instead, these claim are like those in
Trading Technologies International, Inc. v. IBG LLC, 921 F.3d 1084, 1093
(2019), where the court found that the claims ineligible for a patent because
they did not “improve the functioning of the computer, make it operate more
efficiently, or solve any technological problem,” but only assisted a trader in
making an order. Likewise, the user interface object recited in rejected
claim 1 simply displays media identifying a user and automates sending a
message to the user. Appellant identified the user interface comprising the
user interface object as the improvement, but does not identify a
technological improvement. “The fact that this is a ‘computer-based
method’ does not render the claims non-abstract.” Trading Technologies
Int’l, Inc. v. IBG LLC, 921 F.3d at 1093.
Appellant does not provide any specific showing, either in the claim
language or the Specification, of an improvement in the computer
components, or that these components are being used in a unique or
unconventional manner different from their ordinary purpose. Indeed, the
Specification makes it clear that the steps involve general-purpose computer
operations. (Spec. ¶ 76 (disclosing that “[a]ll of the processes described
herein may be embodied in, and fully automated via software code modules
executed by one or more general purpose computers or processors”).) Thus,
the claim does not require a specialized machine or manufacture, and does
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not transform an article to a different state. 84 Fed. Reg. 55; BASCOM
Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1348
(Fed. Cir. 2016) (“An abstract idea on ‘an Internet computer network’ or on
a generic computer is still an abstract idea.”).
For the foregoing reasons, we conclude that the claims recite an
abstract idea relating to certain methods of organizing human activity and
the abstract idea is not integrated into a practical application.
Step 2B
Because we determined that the claims recite a judicial exception that
is not integrated into a practical application, we proceed to Step 2B of the
2019 Guidelines, which asks, as in the Mayo/Alice framework, whether there
is an inventive concept claimed. 84 Fed. Reg. 56. In making this Step 2B
determination, we must consider whether there are specific limitations or
elements recited in the claim “that are not well-understood, routine,
conventional activity in the field, which is indicative that an inventive
concept may be present” or whether the claim “simply appends well-
understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception,
indicative that an inventive concept may not be present.” 84 Fed. Reg. 56
(footnote omitted). We also consider whether the combination of steps are
performed “in an unconventional way and therefore include an ‘inventive
step,’ rendering the claim eligible at Step 2B.” Id.
Appellant contends that the steps recited in the claim, particularly
steps [8] and [9] “cannot be dismissed as generic or conventional activity.
Rather, these recitations of Claim 1 represent a ‘non-conventional and non-
generic arrangement’ of user interface elements and computing device
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functionality, and apply the alleged judicial exception in a meaningful way.”
Appeal Br. 23. We have already considered how the claimed instructions
are executed to cause the computing device to generate a message, and
found that the Specification discloses that it could be accomplished with a
hyperlink (Spec. ¶ 75), a known and routine computer functionality.
Appellant has not persuaded us that the steps in which the user interface
object is generated and displayed on the traveler computing device, either
individually or as an ordered combination, are non-conventional, non-
generic, or operate in a unique and unconventional manner.
Under Step 2B, we are not persuaded that the Examiner erred in
determining that the limitations of claim 1, recited in addition to the abstract
idea and considered individually and as an ordered combination, do not
transform the claim into significantly more than the abstract idea. Claim 1 is
not significantly more than instructions to apply the abstract idea of a certain
method of organizing human activity using generic computer components.
Under precedent, that is not enough to transform an abstract idea into a
patent-eligible invention.
Summary
For the foregoing reasons, the rejection under § 101 of claims 1, 5, 16,
and 25 is affirmed. Dependent claims 2–4, 6–15, 17–24, and 26–33 fall with
the independent claims.
REJECTION BASED ON § 103
The Examiner determined that claims 1–24 and 33 would have been
obvious based on Crawford and Tseng. The Examiner found that Crawford
describes [2] a computing device that carries out steps [3]–[5] of claim 1.
Non-Final Act. 16–17. The Examiner acknowledged that Crawford does
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not describe determining location information as in steps [6] and [7] of claim
1, generating instructions for delivering a message as in step [8], or [9]
generating a user interface object which provides the functions of steps [10]–
[12] of the claim. Non-Final Act. 18. However, the Examiner found that
Tseng discloses a method comprising these recited steps (id. at 18–22), and
explained why it would have obvious to have combined Crawford and Tseng
because Tseng “provides an efficient means for providing information and
location-based services” (id. at 22–23).
Appellant contends that the Examiner invoked the “printed matter
doctrine” and did not properly give patentable weight to the recited user
interface object in steps [9]–[11] of the claims. Appeal Br. 31. Appellant
states that the user interface object has a functional relationship with the
“wherein” clause that recites [11] “selection of the user interface object via
the user interface of the traveler computing device causes the traveler
computing device to execute the instructions.” Id. at 32.
We are not persuaded by Appellant’s argument that the Examiner
erred in rejecting the claims as obvious.
The Examiner stated that Tseng describes a “comment feature,” which
the Examiner found to meet the claimed “user interface object.” Non-Final
Act. 22. The Examiner also found that this feature allowed a user to “enter
information and/or provide a comment to a traveler of Tseng.” Id. Thus, the
Examiner found that the comment feature carried out the same function
recited in limitation [11] of the claim of enabling communicating between
the user and traveler, namely “wherein selection of the user interface object
via the user interface of the traveler computing device causes the traveler
computing device to execute the instructions.”
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In making this finding about the “comment feature,” the Examiner
stated that “the labels themselves carry little patentable weight” and cited In
re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) and In re Lowry, 32 F.3d
1579 (Fed Cir. 1994) as holding that “descriptive material will not
distinguish the claimed invention from the prior art in terms of
patentability.” Non-Final Act. 22. As indicated by Appellant, the latter two
cases are also referred to as the “printed matter” cases. The Examiner
referenced these two cases, and mentioned the descriptive matter as not
distinguishing the claim over the prior art, because Tseng used a different
term than the term recited in the claim for the same function required by
element [11] of claim 1. The Examiner was making the point that while the
“labels” used were different — “user interface object” in claim 1 and
“comment” in Tseng — the label, or descriptive matter, did not distinguish
the two elements because the function they perform is the same.
Appellant also argues that the “comment feature (406)” identified by
the Examiner as meeting the recited user interface object is described in
Tseng as “the time at which a user ‘checked in’ on a social media platform”
and “does not teach or suggest the user interface object recited in Claim 1 at
all, and further submits that none of the features disclosed in Fig. 4 of Tseng
teach or suggest the recited user interface object.” Appeal Br. 33.
In referring to Figure 4 of Tseng, the Examiner interpreted the
“comment feature (406)” as the location where information in the user
interface can be entered and a comment provided to a traveler, meeting the
function of the user interface object of claim 1. Non-Final Act. 22. Figure 4
of Tseng is reproduced below:
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Figure 4 of Tseng, reproduced above, shows an automatically
generated “check-in.” Tseng ¶ 9. Tseng teaches that check-in 400 includes
a profile picture 401 of a user checking in at a specific location (e.g. Ben
Lewis 402 checking in at the Eiffel Tower 403). Tseng ¶ 45. Tseng
discloses that “Check-in 400 also includes the time 406 of the check-in, and
an interactive space 407 where other users may comment or express affinity
for check-in 400.” Id.
It is true that the Examiner referenced 406 as the “comment feature”
and user interface object of claim 1. Non-Final Act. 22. However, it is clear
from the figure that the comment feature is actually labeled 407 in the figure
and the Examiner correctly made this finding on the previous page of the
Non-Final Office Action (citing “interactive space 407”). Non-Final Act.
21. Appellant did not provide an argument as to why the interactive space
and comment function provided by Tseng did not meet the requirement of
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the claimed user interface object as comprising [10b] media and enabling
[11] “selection of the user interface object via the user interface of the
traveler computing device causes the traveler computing device to execute
the instructions” to [8] “cause the traveler computing device to generate a
message for delivery to a computing device of the at least one user.” In
other words, the traveler requesting travel information ([3] of claim 1) sees
the media picture showing Ben Lewis at the Eiffel Tower and can send a
message to him (James Smith sends a message through the user interface
object (407) to Ben stating “Awesome! I’ve always wanted to go!” (Fig. 4 of
Tseng reproduced above)). Accordingly, we conclude that the Examiner
correctly determined that Tseng describes limitations [8]–[12] of claim 1.
Appellant argued that claims 5, 16, and 25 are also patentable over
Crawford and Tseng. Appeal Br. 33–38. However, Appellant repeated the
same arguments for these claims as for claim 1. Thus we find them
unpersuasive for the same reasons, and specifically refer to Figure 4 and
paragraph 45 of Tseng and providing the pertinent teachings as discussed
above.
For the foregoing reasons, the rejection of claim 1 is affirmed.
Claims 2–4 depend directly or indirectly from Claim 1. Claims 6–15
depend directly or indirectly from Claim 5. Claims 17–24 depend directly or
indirectly from Claim 16. Claims 26–33 depend directly or indirectly from
Claim 25. Appellant contends that these claims are not obvious to one of
ordinary skill in the art for the same reasons as to the respective independent
claims. Appeal Br. 38. Thus, the rejections of these claims are affirmed for
the same reasons.

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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–33 101 Eligibility 1–33
1–24, 33 103 Crawford, Tseng 1–24, 33
25–32 103 Crawford, Tseng,
Siddique
25–32
Overall
Outcome
1–33

TIME PERIOD
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).

AFFIRMED