Yehonatan Aumann

Patent Trials and Appeals Board

Oct 31, 2019

12590895 - (D) (P.T.A.B. Oct. 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.
12/590,895 11/16/2009 Yehonatan Aumann 113027.000039US1 1754
79804 7590 10/31/2019
Duncan Galloway Egan Greenwald, PLLC
9625 Ormsby Station Road
Louisville, KY 40223
EXAMINER
PATEL, MANGLESH M
ART UNIT PAPER NUMBER
2178
NOTIFICATION DATE DELIVERY MODE
10/31/2019 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):
carnold@dgeglaw.com
kduncan@dgeglaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte YEHONATAN AUMANN
____________

Appeal 2018-008838
Application 12/590,895
Technology Center 2100
____________

Before HUNG H. BUI, GREGG. I. ANDERSON,
and MICHAEL M. BARRY, Administrative Patent Judges.

BARRY, Administrative Patent Judge.

DECISION ON APPEAL

Appellant1 appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1–5, 7–17, 19–29, and 31–37, which are all of the pending claims.
See Final Act. 1 and Appeal Br. 32–39 (Claims App’x). We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use “Appellant” to refer to the “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies Thomson Reuters Global Resources as the real
party in interest. Appeal Br. 1.
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Introduction
According to Appellant, the
invention relates to processes, software and systems for use in
delivery of services related to the financial services sector as
well as systems for use in other areas, such as other profes-
sional services and in technical research and education sectors.
More particularly, the present invention relates to a system that
identifies key terms, phrases, images, graphics, or sections for
redaction from documents, such as reports, articles and other
documents related to financial concerns, technical research,
professional services, industries, and companies, to be pre-
sented in conjunction with an offer to purchase or otherwise
obtain such documents such as via an online service.
Spec. ¶ 1.
Claim 1 is illustrative:
1. A computer-implemented method comprising:
(a) associating an original electronic document with an
offering;
(b) identifying a set of content type information to redact
from the original document, the set of content type information
being identified for redaction based at least in part on a
weighted combination of criteria other than location of the
content type information within the original electronic
document;
(c) generating a redacted version of the original
document by redacting the set of content type information from
the original electronic document;
(d) receiving a request for a set of information related to
the original document and identifying a set of responsive
information;
(e) in response to the request, transmitting the redacted
version of the original document and a set of offers comprising
offers respectively associated with at least one portion of the set
of content type information redacted from the original
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document, whereby less than all of the set of content type
information redacted from the original document is un-redacted
based on a selection of one or more offers from the set of
offers; and,
(f) presenting the offering, the offering representing a
proposed transaction for obtaining at least a part of the redacted
set of content type information from the original electronic
document.
Appeal Br. 32 (Claims App’x).
The Rejections at Issue
All pending claims stand rejected under 35 U.S.C. § 101 (as directed
to an abstract idea, without reciting significantly more), § 112, first
paragraph (as failing to comply with the enablement requirement), and
§ 103(a) (as being unpatentable in view of Matichuk (US 2007/0094594 A1;
Apr. 26, 2007) and Baird (US 7,475,242 B2; Jan. 6, 2009)). Final Act. 2–12.
ANALYSIS
A. The § 101 Rejection
For the § 101 rejection, Appellant argues all claims together based on
claim 1, making it representative for all pending claims for this rejection.
Appeal Br. 8–16; 37 C.F.R. § 41.37(c)(1)(iv)
§ 101 General Legal Framework and the USPTO Guidance
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101. The
Supreme Court, however, has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S.
208, 216 (2014) (internal quotation marks and citation omitted).
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In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See Alice, 573
U.S. at 219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”). Concepts determined to be abstract ideas, and, thus, patent
ineligible, include certain methods of organizing human activity such as
fundamental economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S.
at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95
(1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 69
(1972)). Concepts determined to be patent eligible include physical and
chemical processes, such as “molding rubber products” in Diamond v.
Diehr, 450 U.S. 175, 191 (1981).
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 (internal 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,
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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 early 2019, the PTO published revised guidance on the application
of § 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50–57 (Jan. 7, 2019) (“Guidance”). Under the Guidance, we first look,
in step one of the Alice/Mayo analysis, 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) (“prong one”); and
(2) additional elements that integrate the judicial exception
into a practical application (“prong two”) (see MPEP
§ 2106.05(a)–(c), (e)–(h)).2
See Guidance, 84 Fed. Reg. at 52–55. Only if a claim (1) recites a judicial
exception and (2) does not integrate that exception into a practical
application, do we then look to whether the claim adds “significantly more”
under step two of the Alice/Mayo analysis, i.e., 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 simply appends well-understood,
routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial
exception.
See Guidance, 84 Fed. Reg. at 56.
The Examiner’s Determinations
The Examiner determines claim 1 is directed to the abstract idea of
“associating and presenting an offer associated with redaction.” Non-Final
Act. 2; see also Ans. 12. The Examiner explains that “[i]n addition to being

2 All references to the MPEP are to the 9th Ed, Rev. 08.2017 (Jan. 2018).
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a classic business method of associating and presentation of an offer, the
claim[] simply describes a process for filtering data via redaction,” which is
a concept “not meaningfully different than those concepts found by the
courts to be abstract.” Id. (citing multiple cases, including Electric Power
Group3). The Examiner additionally determines that, beyond the claim
elements reciting the abstract idea, the additional claim elements, “when
considered both individually and as a combination[,] do not amount to
significantly more than the abstract idea because the limitations are merely
instructions to implement the abstract idea on a computer and require no
more than a generic computer to perform generic computer functions.” Non-
Final Act. 3.
Appellant’s Contentions
Appellant contends the Examiner’s identified idea “is an overbroad
and improper abstraction of the claimed limitations.” Appeal Br. 9.
Appellant contends “[c]laim 1 is not merely directed towards an abstract
idea, but rather is an improvement to another technology or technical field
and does comprise meaningful limitations beyond generally linking the user
of an abstract idea to a particular technological environment, and the claims
were not properly considered as a whole.” Appeal Br. 9.
Appellant further contends the invention solves a unique problem
“that did not exist prior to the advent of computers” and “is not analogous or
in any way similar to the claims at issue in cases where the claimed subject
matter was found to be directed towards an abstract idea.” Appeal Br. 10
(citing multiple cases, including Electric Power Group). Appellant contends
claim 1 is, instead, analogous to the patent-eligible claims at issue in

3 Electric Power Group v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016)
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Amdocs,4 Enfish,5 BASCOM,6 McRO,7 Finjan,8 and Core Wireless.9 Appeal
Br. 10–11; Reply Br. 4–5.
Appellant yet further contends, pursuant to step two of the Alice/Mayo
framework, that claim 1 recites significantly more than any abstract idea,
because it recites “specific improvements to a computer.” Appeal Br. 12
(citing Amdocs and BASCOM); see also id. at 12–16 (also contending
McRO, DDR Holdings,10 Enfish, Diamond v. Diehr, and Alice compel a
determination that claim 1 recites “significantly more” under step two of
Alice/Mayo). Appellant also contends the Examiner fails to provide evidence
that the additional limitations beyond the recited abstract idea were well-
understood, routine, and conventional, as required by Berkheimer v. HP Inc.,
881 F.3d 1360 (Fed. Cir. 2018). Reply Br. 3–4. Appellant furthermore
contends claim 1 “does not pre-empt the entire field of data processing or
redaction” and “involves steps that are clearly separate from any abstract
idea.” Appeal Br. 16 (also contending “the claimed process does not fall
under any of the three exceptions to patentability, i.e., ‘laws of nature,
physical phenomena, and abstract ideas’” (citing Diamond v. Chakrabarty,
447 U.S. 303, 308 (1980)).

4 Amdocs (Israel) Limited v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir.
2016).
5 Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016).
6 BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d
1341 (Fed. Cir. 2016).
7 McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed.
Cir. 2016).
8 Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc., 880 F.3d 1356
(Fed. Cir. 2018).
9 Finjan, Inc. v. Blue Coat Systems, Inc., 879 F.3d 1299 (Fed. Cir. 2018).
10 DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014).
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Our Analysis
Alice/Mayo Step One, Guidance Step 2A, Prong One
We begin our analysis under prong one of step 2A by determining
whether, under the broadest reasonable interpretation, the claims recite a
patent-ineligible concept, i.e., here, an abstract idea. In doing so, we keep in
mind it is necessary to analyze the limitations in a way that is specifically
“[]tethered [to] the language of the claim[].” Enfish, 822 F.3d at 1337.
The first step of Appellant’s claim 1 recites “associating an original
[]11 document with an offering.” A person can mentally perform such an
association between a document and an offering, for example by simply
deciding a particular document is to be offered for sale. The second step of
“identifying” also encompasses a mental process (“identifying a set of
content type information to redact from the original document”) as well as a
mathematical concept (“the set of content type information being identified
for redaction based at least in part on a weighted combination of criteria
other than location of the content type information within the original []
document”). As recited, this step encompasses activities a person can
perform using pen and paper. For example, in deciding to redact a subset of
information related to customers (a type of content), a person can place more
weight on redacting financial information than on redacting information that
identifies customer names.
The third step, “generating a redacted version of the original
document by redacting the set of content type information from the original
[] document,” also recites functionality that requires no technology. For

11 In performing our analysis of claim 1 under step 2A prong 1, we redact
“electronic” from “electronic document.”
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example, a person can redact the identified information from an original
document using a black marker. The fourth step, “receiving a request for a
set of information related to the original document and identifying a set of
responsive information,” also describes a routine human activity that does
not involve technology—it is routine for a person to receive and respond to
such requests from other people. The final two steps, which recite
transmitting the redacted version of the document along with “a set of
offers” for un-redacting redacted information, similarly describe activity a
person can implement without using technology.
In view of the foregoing, Appellant does not persuade us of error in
the Examiner’s determination that the foregoing limitations, collectively,
describe (recite) an idea for “associating and presenting an offer associated
with redaction” (Non-Final Act. 2). We also disagree with Appellant’s
contention that it “is an overbroad and improper abstraction of the claimed
limitations” (Appeal Br. 9) and “and the claims were not properly
considered as a whole” (id.)—this idea reflects the limitations recited in each
of claim 1’s six steps. In accordance with the Guidance, because the
limitations of claim 1 recite an idea that encompasses a combination of
mental processes, certain methods of organizing human activity, and a
mathematical concept, claim 1 recites an abstract idea. See Guidance, 84
Fed. Reg. at 52; RecogniCorp, LLC v. Nintendo Co. LTD., 855 F.3d 1322,
1327 (Fed. Cir. 2017) (“Adding one abstract idea . . . to another abstract idea
. . . does not render the claim non-abstract.”). Thus, Appellant’s argument
that “the claimed process does not fall under any of the three exceptions to
patentability, i.e., ‘laws of nature, physical phenomena, and abstract ideas’”
(Appeal Br. 16) is unpersuasive.
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Because claim 1 recites an abstract idea, we next proceed to prong
two of step 2A of the Guidance, to determine whether claim 1 integrates the
recited idea into a practical application). See Guidance, 84 Fed. Reg. at 54.
Alice/Mayo Step One, Guidance Step 2A, Prong Two
To determine whether this judicial exception is integrated into a
practical application, we identify whether there are “any additional elements
recited in the claim beyond the judicial exception(s)” and evaluate those
elements to determine whether they integrate the judicial exception into a
practical application. Guidance, 84 Fed. Reg. at 54–55 (emphasis added);
see also MPEP § 2106.05(a)–(c), (e)–(h).
Here, the additional limitations in claim 1 beyond those that describe
the abstract idea are the recitations for an “electronic” original document and
that the method be “computer-implemented.” These high-level limitations
simply require “computerizing” implementation of the recited abstract idea.
Claim 1 does not recite any technological improvement to a computer or to
an electronic document, it merely requires using generic technology for its
conventional purposes to carry out the recited abstract idea. Thus, claim 1
does not improve the functioning of a computer or any other technology or
technical field, and neither does it apply the judicial exception with any
particular machine. See MPEP § 2106.05(a)–(b). Claim 1 also does not
effect a particular transformation of any recited articles, which are used for
their ordinary purposes, nor does it add any other meaningful (technological)
limitations beyond “linking the use” of the method to generically recited
technology; thus, the technological limitations amount to no more than
instructions to implement the abstract idea using general computer-related
technology. See MPEP § 2106.05(c), (e)–(f); see also id. at (g)–(h) (use of
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well-known limitations beyond the judicially excepted matter constitutes
“insignificant extra-solution activity” (g) and claim limitations “merely
indicating a field of use or technological environment in which to apply a
judicial exception do not amount to significantly more” (h)). Thus, we
conclude claim 1 does not integrate the recited judicial exception into a
practical application and, accordingly, claim 1 is “directed to” its recited
judicial exception of a certain method of organizing human activity.
Guidance, 84 Fed. Reg. at 53.
In view of the foregoing, Appellant’s contention that claim 1 solves a
unique problem “that did not exist prior to the advent of computers” (Appeal
Br. 10) is unpersuasive. The contention that claim 1 “is not analogous or in
any way similar to the claims at issue in cases where the claimed subject
matter was found to be directed towards an abstract idea” because analogous
to the patent-eligible claims at issue in Amdocs, Enfish, BASCOM, and
McRO (id. at 10–11) is also unpersuasive, for reasons we next discuss.
Unlike Appellant’s claim 1, the claim at issue in Amdocs had a
technology focus—it “entail[ed] an unconventional technological solution
(enhancing data in a distributed fashion) to a technological problem
(massive record flows which previously required massive databases).” 841
F.3d at 1300 (determining the claim term “to enhance” was a specific
technological limitation, construed as meaning “to apply a number of field
enhancements in a distributed fashion”). From a technological perspective,
whereas Appellant’s claim 1 requires only that the method be “computer-
implemented” and a document be “electronic,” the Amdocs claims were
“tied to a specific structure of various components (network devices,
gatherers, ISMs, a central event manager, a central database, a user interface
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server, and terminals or clients)” such that the components were
“purposefully arrange[d] . . . in a distributed architecture to achieve a
technological solution to a technological problem specific to computer
networks.” Id.
Enfish is also inapposite to Appellant’s claim 1. The claims at issue in
Enfish were “specifically directed to a self-referential table for a computer
database,” which was “a specific improvement to the way computers
operate,” rather than an abstract idea implemented on a computer. Enfish,
822 F.3d at 1336–37. By contrast, Appellant’s claim 1 is not directed to an
improvement in the way computers or networks operate, but instead recites
only generic computing technology that is used for its ordinary purposes.
The patent at issue in BASCOM described a particular arrangement of
Internet server filtering software that enables individually customizable
filtering at a remote ISP server by taking advantage of the technical ability
of the ISP server to identify individual accounts and associate a request for
Internet content with a specific individual account. See BASCOM, 827 F.3d
at 1343–45. The Federal Circuit recognized that BASCOM’s installation of
an Internet content filter at a particular network location is “a technical
improvement over prior art ways of filtering such content” that provided the
advantage of allowing the Internet content filter to have “both the benefits of
a filter on a local computer and the benefits of a filter on the ISP server” and
“give[s] users the ability to customize filtering for their individual network
accounts.” BASCOM, 827 F.3d at 1350, 1352. There is no evidence in the
record to support the contention that Appellant’s claimed system provides a
similar technical solution through an unconventional arrangement of
technological components in a manner similar to BASCOM.
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The claim at issue in McRO, which “focused on a specific asserted
improvement in computer animation, i.e., the automatic use of rules of a
particular type,” also is not analogous to Appellant’s claim 1. McRO, 837
F.3d at 1314; see also id. at 1313 (explaining the claimed rules were
“limiting in that they define morph weight sets as a function of the timing of
phoneme sub-sequences”). The McRO claim “require[d] that the rules be
rendered in a specific way: as a relationship between sub-sequences of
phonemes, timing, and the weight to which each phoneme is expressed
visually at a particular timing (as represented by the morph weight set),”
such that it was directed to a technological improvement. See id. at 1315–16
(quoting id. at 15). Appellant’s claim 1 includes no such technological focus
or limitations.
The claim at issue in Finjan was “directed to a method of providing
computer security by scanning a downloadable and attaching the results of
that scan to the downloadable itself in the form of a ‘security profile.’”
Finjan, 879 F.3d at 1303. All recited steps of the claim at issue in Finjan
included limitations that processed “a Downloadable” in order to provide a
technological improvement in the use of security technology on the web for
handling suspicious code in the Downloadable. Id. Appellant’s claim 1, by
comparison, simply recites generic technology components for
implementing the recited abstract idea.
Claim 1 also is inapposite to the claims at issue in Core Wireless, in
which the recited claim limitations focused on specific user interface
functionality, and the court concluded the claims were “directed to an
improved user interface.” Core Wireless, 880 F.3d at 1362. Whereas the
Core Wireless “claims recite[d] a specific improvement over prior systems,”
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Appellant’s claim 1 recites no specific user interface limitations, much less
specific any specific interface limitations that purport to improve a
conventional interface. Id. at 1363. Although the Specification describes
embodiments that “provide[] a Graphical User Interface (GUI)” (see Spec.
¶¶ 6, 41–45), claim 1 includes no limitations that describe (recite) a user
interface improvement. Regardless that claim 1 may implicitly require a user
interface, e.g., as part of the “presenting” step (or explicitly, as in the generic
requirements for employing “a graphical user interface” as in dependent
claims 11, 23, and 36), the inclusion of generic interface requirements does
not amount to an improvement in user interfaces, as in Core Wireless.
Accordingly, because the recited judicial exception is not integrated
into a practical application, the Examiner did not err in determining claim 1
is directed to an abstract idea. Thus, we proceed to step two of the Alice/
Mayo analysis (step 2B of the Guidance).
Alice/Mayo Step Two; Guidance Step 2B
In step two of the Alice/Mayo analysis, we consider whether there are
additional limitations that, individually or as an ordered combination, ensure
the claims amount to “significantly more” than the abstract idea. Alice, 573
U.S. at 217–18 (citing Mayo, 566 U.S. at 72–73, 77–79). As stated in the
Guidance, many of the considerations to determine whether the claims
amount to “significantly more” under step two of the Alice framework are
already considered as part of determining whether the judicial exception has
been integrated into a practical application. Guidance, 84 Fed. Reg. at 56.
Thus, at this point of our analysis, we determine if claim 1 adds a specific
limitation, or combination of limitations, that is not well-understood, routine,
conventional activity in the field; or whether, in addition to the recited
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judicial exception, they recite only well-understood, routine, conventional
activities at a high level of generality. Id.
Here, beyond the limitations describing the abstract idea, claim 1 does
not recite any limitations (or combination of limitations) that are not well-
understood, routine, and conventional. The Examiner finds, and we agree,
that the additional limitations constitute use of technology that was well
known to those of ordinary skill prior to the invention. Non-Final Act. 3.;
see also Ans. 4–6. The disclosure in Appellant’s Specification of the claimed
technological features is at a generic level. See, e.g., Spec. ¶¶ 1, 6–14, 23–
24, 41–42. There is no discussion of any special functionality or
considerations for a technological aspect of any technological component
recited in the independent claims. Thus, Appellant’s contention that claim 1
recites “specific improvements to a computer” (Appeal Br. 12) is
unpersuasive.
Appellant’s contention that Amdocs, Enfish, BASCOM, and McRO
compel a determination that claim 1 recites significantly more than the
recited judicial exception under step two of the Alice/Mayo framework is
unpersuasive for the same reasons discussed above for the analysis under
prong two of step 2A of the guidance. DDR Holdings, Diamond v. Diehr,
and Alice are similarly inapposite to Appellant’s claim 1.
The patent-eligible claim at issue in DDR Holdings recited limitations
for providing a composite web page based on a link activation occurring at a
remote computer, thereby addressing “a challenge particular to the Internet.”
DDR Holdings, 773 F.3d at 1257–58 (“We caution, however, that not all
claims purporting to address Internet-centric challenges are eligible for
patent.”). Diamond v. Diehr is not germane to the Alice/Mayo step two
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analysis—as discussed above, the claims at issue in that case were not
directed to an abstract idea, rather they were directed to a non-abstract
directed to a patent-eligible process for molding rubber products. Alice also
does not support Appellant’s argument—just as the Alice “claims at issue
amount[ed] to ‘nothing significantly more’ than an instruction to apply the
abstract idea . . . using some unspecified, generic computer” (Alice, 573 U.S.
at 225–26), claim 1’s recitation of “[a] computer-implemented method” and
“[a]n original electronic document” constitutes simply instructions to apply
the abstract idea using generic computer technology.
Appellant’s reliance on Berkheimer is also misplaced. The exemplary
claim limitation at issue in Berkheimer was “storing a reconciled object
structure in the archive without substantial redundancy,” which the court
found was “directed to [an] arguably unconventional inventive concept
described in the specification.” 881 F.3d at 1370. There was no evidence in
the record that this limitation described well-understood, routine, and
conventional technology. Id. at 1368. The court held there was a “genuine
issue of material fact” and that “fact questions created by the specification’s
disclosure” precluded summary judgment of invalidity under step two of the
Alice/Mayo framework. Id. Here, however, as discussed above, the only
limitations not reciting a part of the abstract idea are “computer-
implemented” and “electronic.” The Examiner made a finding in the record
that Appellant’s Specification demonstrates that this type of automation for
redacting is well-understood, routine and conventional. Ans. 13 (citing Spec.
¶ 33). Thus, Berkheimer is inapposite, because the record before supports the
finding that, beyond the abstract idea, claim 1 recites only well-understood,
routine, and conventional technology.
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Preemption
Appellant’s contention that claim 1 is patent eligible because it “does
not pre-empt the entire field of data processing or redaction” (Appeal Br. 16)
is also unpersuasive. “While preemption may signal patent ineligible subject
matter, the absence of complete preemption does not demonstrate patent
eligibility.” FairWarning IP, 839 F.3d at 1098 (quoting Ariosa Diagnostics,
Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)); see also OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362–63 (Fed. Cir. 2015)
(“[T]hat 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.”). Further, “[w]here a patent’s claims are deemed only to disclose
patent ineligible subject matter under the [Alice/]Mayo framework, as they
are in this case, preemption concerns are fully addressed and made moot.”
Ariosa, 788 F.3d at 1379.
Conclusion of Our § 101 Analysis
Accordingly, we sustain the § 101 rejection of claims 1–5, 7–17, 19–
29, and 31–37. In doing so, as consistent with our discussion above, we
adopt the Examiner’s findings and reasons as set forth in the Non-Final
Office Action and as set forth in the Answer.
The § 112 Enablement Rejection
In rejecting claims 1–5, 7–17, 19–29, and 31–37 under the first
paragraph of 35 U.S.C. § 112 as failing to comply with the enablement
requirement, the Examiner points to paragraphs 31–32 of the Specification
which, after paragraphs 24–30 explain a variety of redaction criteria, state:
Other criteria for redaction include the following. The
system may be configured to redact text with a specific struc-
ture or pattern. For example, a sentence mentioning two com-
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panies or two consecutive sentences in which the second sen-
tence somewhat negates the first sentence or the first sentence
in each paragraph. Also, a counting routine may be used in
which, for example, every other or every third word, or the
first word of every sentence is redacted. In another variation,
the system may use an example-based method in which the
redaction routine considers examples of patterns or other
schemes and generalizes automatically to make redaction
determinations.
In addition, it is understood that the redaction system
may use any and all combinations of the above, including
weighted combinations. The applications of some or all of the
above criteria and any weighting associated with such criteria
may be predetermined or may be based on an initial interroga-
tion of the document by the system, e.g., the system makes an
initial pass at the document to determine the existence of certain
patterns, terms, structures, verb-phases, nouns, adjectives,
tables, graphs, formulas or equations, and numbers.
Non-Final Act. 3–4 (emphasis by the Examiner).
The Examiner finds that in view of these two paragraphs, because the
described “criteria include[] an “infinite any and all combination of
criteria [sic],” the claim requirement of “criteria other than location of the
content type information,” as recited “is therefore contradictory as any
and all combinations are used according to the [S]pecification.” Id. at 4.
Appellant contends the Examiner errs, because the “Examiner seeks to
include the phrases ‘all combinations of the above’ and ‘all of the above
criteria’ while completely ignoring the terms immediately preceding these
phrases – ‘may use any and’ and ‘applications of some or’ respectively.”
Appeal Br. 18 (citing Spec. ¶ 32) (additionally contending the “Examiner’s
rejection fails to consider other portions of Appellant’s [S]pecification which
provide criteria other than location criteria used to identify the set of content
type information”). Appellant’s argument is persuasive. In view of the
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Specification discussion of the various alternative redaction criteria, artisans
of ordinary skill would have understood how to implement (make and use),
without undue experimentation, a method that identifies types of content to
redact using “criteria other than location of the content type information,” as
recited. See Spec. ¶¶ 24–34.
The Examiner additionally finds “weighted is not described in the
[S]pecification to enable one of ordinary skill to make or use the invention,”
and that “instead paragraph 32 only recites that [weighting] can be used but
[the Specification is] lacking any description or detail regarding how [a]
weighted combination is determined.” Non-Final Act. 4 (further explaining
that “[f]or this reason both the location and weighted language will be
ignored in the claims”). Appellant contends the Examiner errs, because “a
person having ordinary skill in the relevant art, namely machine intelligence
and computer science, could determine the appropriate weight to apply to
the claimed combination of criteria to arrive at a desired result.” Appeal Br.
19. We agree. The use of weighted criteria is well-known, basic principle.
“A patent need not teach, and preferably omits, what is well known in the
art.” Spectra-Physics, Inc. v. Coherent, Inc., 827 F.2d 1524, 1534 (Fed. Cir.
1987); see also In re Buchner, 929 F. 2d 660, 661 (Fed. Cir. 1991).
Accordingly, we do not sustain the § 112, first paragraph rejection of
claims 1–5, 7–17, 19–29, and 31–37.
The § 103 Rejection
In rejecting the independent claims under § 103, the Examiner gives
no patentable weight to the “a weighted combination of criteria other than
location of the content type information within the original electronic
document,” as recited. See Final Act. 5. Appellants contend the Examiner
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errs because the “Examiner has disregarded key claim limitations.” Appeal
Br. 20. We agree. Because there is no finding in the record that the cited
prior art teaches these claim limitations that are recited in each of the
independent claims, we do not sustain the § 103 rejection of claims 1–5, 7–
17, 19–29, and 31–37.
DECISION SUMMARY
Claims
Rejected
35 U.S.C.§ Basis Affirmed Reversed
1–5, 7–17, 19–29,
31–37
101 Nonstatutory
Subject Matter
1–5, 7–17,
19–29, 31–37

1–5, 7–17, 19–29,
31–37
112, first
paragraph
Enablement 1–5, 7–17,
19–29, 31–37
1–5, 7–17, 19–29,
31–37
103 Matichuk,
Baird
1–5, 7–17,
19–29, 31–37
Overall
Outcome
1–5, 7–17,
19–29, 31–37

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