David Sazan

Patent Trials and Appeals Board

Apr 2, 2021

2020005922 (P.T.A.B. Apr. 2, 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.
15/051,732 02/24/2016 David Sazan 1193.001 6725
69432 7590 04/02/2021
WEITZMAN LAW OFFICES, LLC
425 EAGLE ROCK AVENUE
SUITE 401
ROSELAND, NJ 07068
EXAMINER
KANERVO, VIRPI H
ART UNIT PAPER NUMBER
3619
NOTIFICATION DATE DELIVERY MODE
04/02/2021 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):
KWEITZMAN@WEITZMANIP.COM
ddouglas@weitzmanip.com
docketing@weitzmanip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DAVID SAZAN
____________

Appeal 2020-005922
Application 15/051,732
Technology Center 3600
____________

Before BIBHU R. MOHANTY, MICHAEL C. ASTORINO, and
TARA L. HUTCHINGS, Administrative Patent Judges.

HUTCHINGS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 2, 4, 7, 8, 11, 12, 14, 17, 18, and 21–30. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 Our decision references Appellant’s Specification (“Spec.,” filed Feb. 24,
2016), Appeal Brief (“Appeal Br.,” filed May 13, 2020), and Reply Brief
(“Reply Br.,” Aug. 15, 2020), and the Examiner’s Final Office Action
(“Final Act.,” mailed Dec. 17, 2019) and Answer (“Ans.,” mailed June 15,
2020). We use the term “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies David Sazan as the real party in
interest. Appeal Br. 4.
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CLAIMED INVENTION
Appellant’s claimed invention “relates generally to digital media
content management and, more particularly, to . . . compar[ing] a user’s
digital media content to a celebrity’s digital media content playlist and
facilitates the acquisition of missing digital media content by the user.”
Spec. ¶ 1.
Claims 1, 11, and 29 are the independent claims on appeal. Claim 11,
reproduced below with bracketed notations added, is illustrative of the
claimed subject matter:
11. A computer-implemented method, comprising:
[(a)] storing, on a first mobile computing device used by
a particular celebrity to listen to or view specific digital content,
a celebrity content list;
[(b)] storing, using at least one processor, a copy of the
celebrity content list in at least one database;
[(c)] in response to the particular celebrity listening to or
viewing the specific digital content, automatically updating the
celebrity content list to add the specific digital content;
[(d)] wirelessly transmitting, from the first mobile
computing device to the database, and in response to the celebrity
content list being automatically updated, notification of the
automatic update,
[(e)] responsive to receiving the notification, updating
the copy of the celebrity content list in the at least one database
such that the copy of the celebrity content list is an accurate copy
of the celebrity content list stored by the first mobile computing
device;
[(f)] receiving, using the at least one processor, a request
wirelessly transmitted from a second mobile computing device
for a specific quantity of content to be provided from the
celebrity content list;
[(g)] retrieving, using the at least one processor, the copy
of the celebrity content list associated with the request from the
at least one database;
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[(h)] receiving, using the at least one processor and from
the second mobile computing device, a user content list
identifying existing content stored on or otherwise accessible by
the second mobile computing device;
[(i)] identifying, using the at least one processor, a first
portion of content from the celebrity content list that is present in
the user content list;
[(j)] identifying, using the at least one processor, a
second portion of content from the celebrity content list that is
not present in the user content list; and
[(k)] causing, using the at least one processor, up to the
specific quantity of content to be transmitted to the second
mobile computing device only from the second portion and
without transmitting the celebrity content list to the second
mobile computing device.
Appeal Br. ii–iii (Claims Appendix).

REJECTION
Claims 1, 2, 4, 7, 8, 11, 12, 14, 17, 18, and 21–30 are rejected under
35 U.S.C. § 101 as directed to a judicial exception without significantly
more.
ANALYSIS
Patent-Ineligible Subject Matter
Principles of Law
35 U.S.C. § 101
An invention is patent eligible if it is a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted § 101 to include implicit
exceptions: “[l]aws of nature, natural phenomena, and abstract ideas are not
patentable.” E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014)
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(quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 589 (2013)).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-part framework, described in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66
(2012), and Alice, “for distinguishing patents that claim laws of nature,
natural phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts.” Alice, 573 U.S. at 217. The first step in that
analysis is to “determine whether the claims at issue are directed to one of
those patent-ineligible concepts,” such as an abstract idea. Id. According to
Supreme Court precedent, concepts determined to be abstract ideas include
certain methods of organizing human activity, such as fundamental
economic practices (id. at 219–20; Bilski v. Kappos, 561 U.S. 593, 611
(2010)); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95
(1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 69
(1972)).
If the claims are not directed to a patent-ineligible concept, e.g., an
abstract idea, the inquiry ends. Otherwise, the inquiry proceeds to the
second step where the elements of the claims are considered “individually
and ‘as an ordered combination’” to determine whether there are additional
elements that “‘transform the nature of the claim’ into a patent-eligible
application.” Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S. at 79, 78).
This is “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.’” Id. at 217–18 (alteration in original).
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USPTO Guidance
We are also guided by U.S. Patent and Trademark Office (“USPTO”)
guidance, as set forth in the 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”), which has been
incorporated into the MPEP §§ 2104–06. “The guidance sets out agency
policy with respect to the USPTO’s interpretation of the subject matter
eligibility requirements of 35 U.S.C. § 101 in view of decisions by the Court
and the Federal Circuit.” Guidance, 84 Fed. Reg. at 51. However, the
“guidance . . . does not create any right or benefit, substantive or procedural,
enforceable by any party against the USPTO” and “[r]ejections will continue
to be based upon the substantive law.” Id.
Under the Guidance, the first step of the Mayo/Alice framework is a
two-prong inquiry. MPEP § 2106.04(II)(A); see also Guidance, 84 Fed.
Reg. at 54 (“Step 2A of the 2019 Revised Patent Subject Matter Eligibility
Guidance is a two-prong inquiry.”). “Prong One asks does the claim recite
an abstract idea, law of nature, or natural phenomenon?”
MPEP § 2106.04(II)(A)(1); see also Guidance, 84 Fed. Reg. at 54. For
determining whether a claim recites an abstract idea, the Office distills the
relevant case law into enumerated groupings of abstract ideas. MPEP
§ 2106.04(a); see also id. § 2106.04(a)(2) (defining abstract idea groupings);
Guidance, 84 Fed. Reg. at 52. If the claim recites a judicial exception, then
the claim requires further analysis at Prong Two. MPEP
§ 2106.04(II)(A)(1); Guidance, 84 Fed. Reg. at 54. “Prong Two asks does
the claim recite additional elements that integrate the judicial exception into
a practical application?” MPEP § 2106.04(II)(A)(2); see also id.
§ 2106.04(d), Guidance, 84 Fed. Reg. at 54–55. Only if a claim (1) recites a
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judicial exception and (2) does not integrate that exception into a practical
application, do we then look, under Step 2B, to whether the additional
elements, individually or in combination, provide an inventive concept. See
MPEP §§ 2106(III), 2106.05.
“An inventive concept ‘cannot be furnished by the unpatentable law
of nature (or natural phenomenon or abstract idea) itself.’” Id. § 2106.05(I)
(quoting Genetic Techs. v. Merial LLC, 818 F.3d 1369, 1376 (Fed.
Cir. 2016)). Among the considerations in determining whether the
additional elements, individually or in combination, amount to significantly
more than the exception itself, we look to whether they add a specific
limitation beyond the judicial exception that is not “well-understood,
routine, conventional” in the field or simply append well-understood,
routine, conventional activities previously known to the industry, specified
at a high level of generality, to the judicial exception. MPEP § 2106.05(II);
Guidance, 84 Fed. Reg. at 56.
Rejection
The Examiner determined that independent claims 1, 11, and 29 recite
a method for providing digital content present in the celebrity content list to
end users via third party. Ans. 12; see also Final Act. 5 (setting forth
limitations that recite the abstract idea). The Examiner identified this
concept as “managing interactions between people — including social
activities,” which is subgrouping of the “certain method of organizing
human activity” grouping of abstract ideas. Final Act. 5 (emphasis omitted).
The Examiner further determined that claims 1, 11, and 29 do not recite
additional elements that integrate the abstract idea into a practical
application or that amount to significantly more than the abstract idea. Id.
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at 6–7. The Examiner also determined that the dependent claims do not
recite any additional elements that integrate the abstract idea into a practical
application or amount to significantly more than the abstract idea. Id.
at 7–11.
Step One of the Mayo/Alice Framework (Guidance, Step 2A)
Appellant argues claims 1, 11, and 29 as a group. Appeal Br. 14–25.
We select claim 11 as representative. Consequently, claims 1 and 29 stand
or fall with claim 11. See 37 C.F.R. §41.37(c)(1)(iv).
The Federal Circuit has explained that “the ‘directed to’ inquiry
applies a stage-one filter to claims, considered in light of the specification,
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 id. at 1335–36. Here, it is clear from the Specification (including
the claim language) that claim 11 focuses on a process that itself qualifies as
an abstract idea, and not on any improvement to technology and/or a
technical field.
The Specification is titled “DIGITAL MEDIA CONTENT
COMPARATOR,” and describes, in the Background section, “[s]ociety
idolizes celebrities and people frequently want to emulate them.” Spec. ¶ 2.
Often, “what [celebrities] do, where they go, and what they wear can
influence consumers’ decision making with respect to taste, style and even
public opinion.” Id. Many consumers “are extremely interested in what
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digital media content (e.g., music, video, books, etc.) celebrities consume.”
Id. ¶ 3 (emphasis omitted). Some celebrities have posted playlists online,
but the playlists “may not be reflective of what a particular celebrity is
actually listening to” and are static. Id. ¶ 4.
However, a problem with a celebrity posting his or her playlist online
or otherwise making it publicly available is that “the celebrity loses the
opportunity to monetize the celebrity’s playlist because consumers can
obtain digital media content in the playlist elsewhere.” Id. “What is needed
is a way for consumers to access the contents of non-static, ‘real’ celebrity
digital media playlists without allowing the consumer to view the playlists.”
Id. ¶ 5. The invention involves creating a celebrity content playlist that is
kept non-viewable to the user. Id. ¶ 16. The celebrity playlist is compared
with the user’s existing digital media content to identify missing content that
the user does not have access to. Id. For a fee paid by the user, the user may
purchase, rent, or download the missing content to the user’s computing
device. Id.
With this background in mind, claim 11 recites a method comprising:
“storing . . . a celebrity content list” (limitation (a)); “storing . . . a copy of
the celebrity content list . . .” (limitation (b)); “in response to the particular
celebrity listening to or viewing the specific digital content, . . . updating the
celebrity content list to add the specific digital content” (limitation (c));
“transmitting . . . in response to the celebrity content list being . . . updated,
notification of the automatic update” (limitation (d)); “responsive to
receiving the notification, updating the copy of the celebrity content list . . .
such that the copy of the celebrity content list is an accurate copy of the
celebrity content list stored . . . ” (limitation (e)); “receiving . . . a request . . .
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for a specific quantity of content to be provided from the celebrity content
list” (limitation (f)); “retrieving . . . the copy of the celebrity content list
associated with the request . . .” (limitation (g)); “receiving . . . a user
content list identifying existing content stored . . .” (limitation (h));
“identifying . . . a first portion of content from the celebrity content list that
is present in the user content list” (limitation (i)); “identifying . . . a second
portion of content from the celebrity content list that is not present in the
user content list” (limitation (j)); and “causing . . . up to the specific quantity
of content to be transmitted . . . only from the second portion and without
transmitting the celebrity content list . . .” (limitation (k)).
Appellant argues that the rejection of claim 11 cannot be sustained at
least because the claim does not recite subject matter that falls within any of
the three enumerated groupings of abstract ideas. Appeal Br. 14. But we
agree with the Examiner that the claim limitations, when given their
broadest reasonable interpretation, recite a method for providing a
celebrity’s digital content to a user, which pertains to “managing personal
behavior or relationships or interactions between people, (including social
activities),” which is a subgrouping of the “certain methods of organizing
human activity” abstract idea grouping. See MPEP § 2106.04(a)(2)(II);
Guidance, 84 Fed. Reg. at 52. More specifically, the invention allows a
celebrity to share his or her playlist with a user (i.e., an interaction between
the celebrity and user) while keeping the content of the celebrity’s playlist
blind from the user.
Appellant argues that the claimed invention cannot be an interaction
between people, because “all ‘interaction’ is between computing devices”
and “the celebrity’s mobile computing device and the end user’s mobile
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computing device never interact at all.” Appeal Br. 14; see also id. at 15
(contending that the invention ensures privacy by preventing human
interaction). Yet, “the number of people involved in the activity is not
dispositive as to whether a claim falls within this grouping” and includes
activity between a person and a computer, such as “a method of anonymous
loan shopping that a person conducts using a mobile phone.”
MPEP § 2106.04(a)(2)(II). “Instead, the determination should be based on
whether the activity itself falls within one of the sub-groupings.” Id.
Put simply, the interaction between the celebrity and the user may be
indirect (e.g., involving two mobile computing devices (i.e., a first mobile
computing device and a second mobile computing device) and an
intermediary (i.e., the at least one processor and at least one database))
instead of direct or physical social interaction is not persuasive of Examiner
error. As the Appellant acknowledges, the claimed invention involves
“sharing” a subset of files accessed by a celebrity with “others interested in a
shared experience with the [celebrity], while protecting the overall privacy”
(Appeal Br. 16) — i.e., an interaction.
The claim language supports this determination. For example,
limitation (c) involves updating the celebrity content list to add specific
digital content “in response to the particular celebrity listening to or viewing
the specific digital content,” which is stored on a first mobile computing
device (i.e., the celebrity device). And limitation (f) involves receiving a
request “from a second mobile computing device” (i.e., the user device) for a
specific quantity of content to be provided from the celebrity content list.
Performance in each of the claimed method steps results in content, up to the
specific quantity, being transmitted to the second computing device (i.e., the
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user device) without transmitting the celebrity content list (limitation (k)).
Put simply, the claim describes an interaction between the user and the
celebrity with respect to the celebrity playlist. See Appeal Br. 8 (describing
claim 11 as a process for “sharing” files accessed by a user with “others
interested in a shared experience with the user”).
Appellant further argues that the Examiner erred in determining that
claim 11 falls into the grouping of “certain methods of organizing human
activity” and its subgrouping of managing interactions between people,
including social activities, because under “this level of generality and
oversimplification,” the computer-implemented claims at issue in BASCOM
“would not have survived scrutiny under § 101 because, at a similarly,
general level, the claimed computer subject matter . . . necessarily involved
managing interactions between people.” Reply Br. 4. Appellant correctly
reasons that the claims at issue in BASCOM would have fallen into the same
grouping of abstract ideas as Appellant’s claim 11 under step one. And,
indeed, that is what the Federal Circuit found at step one. See BASCOM,
827 F.3d at 1348 (“filtering content is an abstract idea because it is a
longstanding, well-known method of organizing human behavior”); see also
id. at 1349 (finding that “the claims and their specific limitations do not
readily lend themselves to a step-one finding that they are not directed to a
non-abstract idea”). Contrary to Appellant’s suggestion, it was under step
two that the Federal Circuit determined that the claims survived scrutiny
under § 101.
The concept of providing a celebrity’s digital content to a user, as set
forth in claim 11, also is similar to the concept of controlling access to
resources (here, digital content from a celebrity playlist), which the Federal
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Circuit has held repeatedly to be an abstract idea. See Appeal Br. 21
(describing the claimed invention as “providing access to [a celebrity
content list] information via a network). For example, in Smartflash LLC v.
Apple Inc., 680 F. App’x 977, 982 (Fed. Cir. 2017), the Federal Circuit
found that the claims at issue were directed to the abstract idea of
“conditioning and controlling access to data based on payment.” See also
Ericsson Inc. v. TCL Commc’n Tech. Holdings Ltd., 955 F.3d 1317, 1326
(Fed. Cir. 2020) (concluding that “claim 1 is directed to the abstract idea of
controlling access to resources”); Smart Sys. Innovations, LLC v. Chicago
Transit Authority, 873 F.3d 1364, 1371 (Fed. Cir. 2017) (holding that the
claims are directed to “the collection, storage, and recognition of data,”
which is abstract); Prism Techs. LLC v. T-Mobile USA, Inc., 696 F. App’x
1014, 1017 (Fed. Cir. 2017) (holding that claims are directed to the abstract
idea of “providing restricted access to resources”). Accordingly, Appellant
does not persuaded us that the Examiner erred in determining that claim 11
recites an abstract idea.
Appellant argues that claim 11 is not “directed to” an abstract idea
because it integrates the recited abstract idea into a practical application
(Step 2A, Prong Two). Appeal Br. 16–21. In this regard, Appellant argues
that the claims improve the functioning of computers in a technological
field, analogous to the claims at issue in Enfish, Thales,2 Cellspin,3 and
Ancora.4 Appeal Br. 16–19. For example, Appellant contends that the

2 Thales Visionix, Inc. v. United States, 850 F.3d 1343, 1349 (Fed. Cir.
2017).
3 Cellspin v. Fitbit, Inc., 927 F.3d 1306, 1318 (Fed. Cir. 2019).
4 Ancora Techs., Inc. v. HTC Am., Inc., 908 F.3d 1343, 1344 (Fed. Cir.
2018).
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claimed invention improves the “speed, accuracy, and usability” of a content
list synchronization system by sharing a subset from a list of files accessed
by a celebrity with others “interested in a shared experience with the user.”
Id. at 16–17.
Yet, the Federal Circuit has routinely held that using a computer to
perform tasks more quickly or more accurately is not sufficient to render a
claim patent eligible. See OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d
1359, 1363 (Fed. Cir. 2015) (“[R]elying on a computer to perform routine
tasks more quickly or more accurately is insufficient to render a claim patent
eligible.”); Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d
1363, 1367 (Fed. Cir. 2015) (“[C]laiming the improved speed or efficiency
inherent with applying the abstract idea on a computer [does not] provide a
sufficient inventive concept.”).
Appellant also contends that preserving the privacy of the celebrity
and minimizing the use of computing resources by preventing transmission
of unnecessary data (e.g., the content that the user already has) provides an
improvement analogous to the improved functionality of a data storage
system. Appeal Br. 17. However, we are not persuaded that preserving
privacy of data or preventing the transmission of redundant data is an
improvement to the functionality of the computer itself or otherwise
analogous to the patent-eligible claims in Enfish, which focused on “a
specific type of data structure [i.e., a self-referential table for a computer
database] designed to improve the way a computer stores and retrieves data
in memory.” Enfish, 822 F.3d at 1339. Instead, such improvement concerns
a process that is itself the abstract idea. See SAP Am., Inc. v. InvestPic, LLC,
898 F.3d 1161, 1170 (Fed. Cir. 2018) (“[P]atent law does not protect such
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claims[, i.e., claims to an asserted advance in the realm of abstract ideas],
without more, no matter how groundbreaking the advance.”); see also MPEP
§§ 2106.04(d); 2106(d)(1); 2016.05(a).
Appellant contends that the claims are analogous to the claims at issue
in Thales, because two data sources are compared to make determinations
based on differences between data. Yet, “[a]s many cases make clear, even
if a process of collecting and analyzing information is ‘limited to particular
content’ or a particular ‘source,’ that limitation does not make the collection
and analysis other than abstract.” SAP, 898 F.3d at 1168 (quoting Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)).
The “character of [the] information simply invokes a separate category of
abstract ideas.” Id. Such an asserted improvement “lies entirely in the realm
of abstract ideas, with no plausibly alleged innovation in the non-abstract
application realm.” Id. at 1163. Appellant does not persuade us that
comparing to different content lists to make determinations based on
difference between the data, as required by claim 11, is a technological
improvement analogous to the use of a particular configuration of inertial
sensors to more accurately and efficiently measure the relative position and
orientation of an object on a moving platform, as in Thales. See Thales, 850
F.3d at 1349.
Appellant asserts that claim 11, like the claims at issue in Cellspin, is
unconventional. Appeal Br. 18. Yet, it is well established that “[t]he
‘novelty’ of any element or steps in a process, [i.e., the entity executing the
test], or even of the process itself, is of no relevance in determining whether
the subject matter of a claim falls within the § 101 categories of possibly
patentable subject matter.” Diamond v. Diehr, 450 U.S. 175, 188–89
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(1981). Moreover, the limitations of claim 11 do not recite technological
implementation details on how to execute the claimed predefined test to
perform a diagnosis of the component. Instead, claim 11 recites a computer-
implemented method that includes steps for “storing,” transmitting,”
“updating,” “receiving,” “retrieving,” “identifying,” “causing” that are
capable of being achieved by any means. Put simply, claim 11 “provides
only a result-oriented solution, with insufficient detail for how [it is
accomplished]. Our law demands more.” Intellectual Ventures I LLC v.
Capital One Fin. Corp., 850 F.3d 1332, 1342 (Fed. Cir. 2017).
Appellant contends that claim 11 is patent eligible because it provides
“a concrete assignment of specified functions among a computer’s
components to improve computer security,” analogous to the claims at issue
in Ancora. However, we disagree that keeping a celebrity playlist (i.e,
“celebrity content list”) private is an improvement to computer security, as
opposed to an improvement in a process that is the abstract idea itself. For
example, celebrities previously posted a celebrity playlist online, but this
approach suffered shortcomings in that consumers could obtain content
listed in the playlist elsewhere. Spec. ¶ 4. Claim 11 improves upon this
process by providing content to the user from the without sharing the list of
content, enabling the celebrity to retain “the opportunity to monetize the
celebrity’s playlist” Id.; see also id. ¶ 41 (describing that if a user starts with
no user content would “require the user to purchase all of the celebrity
content 410, at perhaps considerable expense to the user and a financial gain
to the celebrity).
Appellant further argues that the claims recite a specific manner for
achieving a result, not a mere result. Appeal Br. 18–21. According to
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appellant, the claims recite “specific steps to accomplish the result and have
no pre-emptive effect on anyone who wishes to achieve the same outcome
using a different set of steps or devices to accomplish that outcome.” Id. at
20; see also id. at 20–21 (asserting that the claimed invention is analogous to
claim 1 from Example 375 because it recites a specific manner to accomplish
a specific improvement). According to Appellant, the specific manner used
to accomplish the goal involves retrieving the celebrity content list,
receiving a user content list, identifying a first portion, and identifying a
second portion. Id. at 21. Further, Appellant contends that the specific
improvement that results from the manner being followed is transmitting
only the second portion without transmitting the celebrity content list to the
second mobile device, thereby “eliminating redundancy and protecting
privacy.” Id.
Yet, contrary to Appellant’s contentions, the limitations of claim 11
do not recite technological implementation details for any of the elements.
Claim 11 recites the method steps of storing, updating, transmitting,
receiving, retrieving, identifying, and causing to be transmitted at a high
level such that they are capable of being achieved by any means. Put
simply, claim 11 “provides only a result-oriented solution, with insufficient
detail for how [it is accomplished]. Our law demands more.” Intellectual
Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1342 (Fed. Cir.
2017).

5 USPTO’s 2019 Subject Matter Eligibility Examples: Abstract Ideas
(“Eligibility Examples”) (Jan. 7, 2019) Available at
https://www.uspto.gov/sites/default/files/documents/
101_examples_37to42_20190107.pdf.

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Moreover, Appellant misapprehends the controlling precedent to the
extent Appellant maintains that claim 11 is patent eligible because there is
no risk of preemption. Although the Supreme Court has described “the
concern that drives [the exclusion of abstract ideas from patent-eligible
subject matter] as one of pre-emption,” Alice, 573 U.S. at 216,
characterizing preemption as a driving concern for patent eligibility is not
the same as characterizing preemption as the sole test for patent eligibility.
“The Supreme Court has made clear that the principle of preemption is the
basis for the judicial exceptions to patentability” and “[f]or this reason,
questions on preemption are inherent in and resolved by the § 101 analysis.”
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015) (citing Alice Corp., 573 U.S. at 216). “[P]reemption may signal
patent ineligible subject matter, [but] the absence of complete preemption
does not demonstrate patent eligibility.” Id.
Appellant argues that claim 11 is “startingly similar” to claim 1 from
Example 42 because it stores information, provides access to information via
a network, converts celebrity actions into a standardized format representing
celebrity content-consumption behavior, and provides an update message to
the content message allowing users to consume new content consumed by
that celebrity. Id. at 21. However, claim 1 of Example 42 was deemed
patent eligible because it provided a specific improvement over prior
systems by allowing remote users to share information in real time in a
standardized format regardless of the format in which the information was
originally input. See Eligibility Examples 18–19. Hypothetical claim 1,
thus, addressed technological difficulties related to incompatible computer
formats, disparate geographic locations, and the untimely sharing of
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information. See id. at 17. We are not persuaded that a comparable
improvement is present here.
Appellant contends that the claimed invention arises exclusively
within the context of computer technology, because “one cannot request to
receive and download digital content from a remote computing device of
another based on the other user’s use of their remote mobile computing
device, let alone do so while maintaining the privacy of that other user,
without the prerequisite computers, network, and network devices.” Id.
at 23. According to Appellant, “[i]t is only in the context of modern internet
services that a user can electronically send a request, and receive in response
information from massive content databases, while a central computer
curates what is sent to both avoid redundancy and preserve privacy.” Id.
Yet, that the claimed invention may involve a central computer (i.e.,
the claimed at least one processor) and massive content databases (i.e., the
claimed at least one database) acting as an intermediary is not a persuasive
reason to argue that claim 1 is not directed to an abstract idea. Indeed, the
claimed invention in Alice involved a computer system acting as a third-
party intermediary between two parties. See Alice, 573 U.S. at 213 (citations
omitted). The intermediary computer updated account records and sent
instructions to financial institutions. See id. at 213–24. The Court held that
“the claims at issue amount to ‘nothing significantly more’ than an
instruction to apply the abstract idea of intermediated settlement using some
unspecified, generic computer.” Id. at 225–26. See also In re TLI
Commc’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016) (“[N]ot
every claim that recites concrete, tangible computer components escapes the
reach of the abstract-idea inquiry.”); see also MPEP § 2106.04(d)(I)
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(explaining that using a computer to perform an abstract idea is not
sufficient to integrate an abstract idea into a practical application).
Appellant argues that the limitations recited in claim 11 are similar to
the additional limitations held to be patent eligible in DDR Holdings or
Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir.
2016). Appeal Br. 23; see also Reply Br. 10–11. Yet, we find no parallel
between claim 11 and the claims at issue in these cases. For example,
focusing first on DDR Holdings, we see no technological improvement
recited in claim 11 analogous to the change to the routine, conventional
functioning of computer networks provided by the claims at issue in DDR
Holdings. See DDR Holdings, 773 F.3d at 1257.
In Amdocs, the Federal Circuit held the claim was patent eligible
because the claim entailed an unconventional technological solution
(enhancing data in a distributed fashion) to a technological problem
(massive record flows which previously required massive databases).
Amdocs, 841 F.3d at 1300–01. Turning to claim 11, there is no similar
evidence that the architecture for performing the functions of storing,
receiving, transmitting, retrieving, updating, identifying, and causing to
transmit information is comparable to the components in Amdocs or
otherwise establishes that the computer operates in an unconventional
manner.
Here, beyond the abstract idea, claim 11 recites a processor, database,
and two mobile computing devices and provides that the updating performed
in limitation (c) is performed “automatically” and that the transmitting of
limitation (d) is performed “wirelessly.” However, Appellant’s
Specification makes clear that the claimed invention is implemented using
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generic computer components to perform generic computer functions. See
Spec. ¶¶ 23–26, 53–57. We find no indication in the Specification that the
method steps recited in claim 11 require any specialized computer hardware
or other inventive computer components, i.e., a particular machine, invoke
any allegedly inventive programming, or that the claimed invention is
implemented using other than generic computer components to perform
generic computer functions. See DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[A]fter Alice, there can remain no
doubt: recitation of generic computer limitations does not make an otherwise
ineligible claim patent-eligible.”).
We conclude, for the reasons outlined above, that claim 11 recites a
method of organizing human activity, i.e., an abstract idea, and that the
additional elements recited in the claim beyond the abstract idea are no more
than generic computer components used as tools to perform the recited
abstract idea and do no more than limit the abstract idea to a particular
technological environment. As such, they do not integrate the abstract idea
into a practical application. See Alice, 573 U.S. at 223–24 (“[W]holly
generic computer implementation is not generally the sort of ‘additional
featur[e]’ that provides any ‘practical assurance that the process is more than
a drafting effort designed to monopolize the [abstract idea] itself.’” (quoting
Mayo, 566 U.S. at 77)). Accordingly, we agree with the Examiner that
claim 11 is directed to an abstract idea.
Step Two of the Mayo/Alice Framework (Guidance, Step 2B)
Having determined under step one of the Mayo/Alice framework that
claim 11 is directed to an abstract idea, we next consider under Step 2B of
the Guidance, the second step of the Mayo/Alice framework, whether
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claim 11 includes additional elements or a combination of elements that
provides an “inventive concept,” i.e., whether the additional elements
amount to “significantly more” than the judicial exception itself. MPEP
§ 2106.05(I); Guidance, 84 Fed. Reg. at 56. We agree with the Examiner
that it does not.
Appellant argues that the Examiner has not provided any evidence to
support the Examiner’s determination that the claims do not amount to
“significantly more” than the abstract idea. Appeal Br. 22. In particular,
Appellant asserts that the Examiner must provide support for finding that
something is well-understood, routine, and conventional. Id.
The Examiner determined here, and we agree, that the only additional
elements recited in claim 11, beyond the abstract idea, are “a first mobile
computing device,” “at least one processor,” “at least one database,” and “a
second mobile computing device.” Final Act. 6. The Examiner found that
these additional elements are well-understood, routine, and conventional
elements. See id. at 6–7 (citing Spec. ¶¶ 21–23). The Examiner’s finding is
amply supported by, and fully consistent with Appellant’s Specification.
See Spec. ¶¶ 21–29, 50–57. Appellant cannot reasonably maintain that there
is insufficient factual support for the Examiner’s determination that these
components are well-understood, routine, or conventional, where, as here,
there is nothing in the Specification to indicate that the operations recited in
claim 11 require any specialized hardware or inventive computer
components or that the claimed invention is implemented using other than a
generic computer component to perform generic computer functions, e.g.,
storing, receiving, transmitting, retrieving, updating, identifying, and causing
to transmit information. Indeed, the Federal Circuit, in accordance with
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Alice, has “repeatedly recognized the absence of a genuine dispute as to
eligibility” where claims have been defended as involving an inventive
concept based “merely on the idea of using existing computers or the
Internet to carry out conventional processes, with no alteration of computer
functionality.” Berkheimer v. HP Inc., 890 F.3d 1369, 1373 (Fed. Cir. 2018)
(Moore, J., concurring) (internal citations omitted); see also BSG Tech LLC
v. BuySeasons, Inc., 899 F.3d 1281, 1291 (Fed. Cir. 2018) (“BSG Tech does
not argue that other, non-abstract features of the claimed inventions, alone or
in combination, are not well-understood, routine and conventional database
structures and activities. Accordingly, the district court did not err in
determining that the asserted claims lack an inventive concept.”).
We agree with the Examiner that the additional limitations, considered
individually and as an ordered combination, do not provide an inventive
concept. Accordingly, we are not persuaded, on the present record, that the
Examiner erred in rejecting independent claim 11 under 35 U.S.C. § 101.
Therefore, we sustain the Examiner’s rejection under 35 U.S.C. § 101
of claim 11 and claims 1 and 29, which fall with claim 11. Appellant argues
that the dependent claims are patent-eligible for the same reasons as the
independent claims. Appeal Br. 25. Therefore, we sustain the rejection of
the dependent claims under 35 U.S.C. § 101 for the same reasons set forth
above with respect to the independent claims.

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CONCLUSION
In summary:
Claims
Rejected
35
U.S.C.
§
Basis Affirmed Reversed
1, 2, 4, 7, 8,
11, 12, 14,
17, 18, 21–30
101 Eligibility 1, 2, 4, 7, 8,
11, 12, 14,
17, 18, 21–30

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