Gregory Badros et al.

Patent Trials and Appeals Board

Dec 17, 2019

13095899 - (D) (P.T.A.B. Dec. 17, 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.
13/095,899 04/28/2011 Gregory Badros 26295-17283 3502
87851 7590 12/17/2019
Facebook/Fenwick
Silicon Valley Center
801 California Street
Mountain View, CA 94041
EXAMINER
SCHMUCKER, MICHAEL W
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
12/17/2019 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):
fwfacebookpatents@fenwick.com
ptoc@fenwick.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GREGORY BADROS,
RAJAT RAINA,
HONG GE,
DING ZHOU,
NUWAN SENARATNA,
and TUDOR A. ALEXANDRESCU
____________

Appeal 2018-006455
Application 13/095,899
Technology Center 3600
____________

Before ANTON W. FETTING, PHILIP J. HOFFMANN, and
AMEE A. SHAH, Administrative Patent Judges.

FETTING, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE1
Gregory Badros, Rajat Raina, Hong Ge, Ding Zhou, Nuwan
Senaratna, and Tudor A. Alexandrescu (Appellant2) seeks review under
35 U.S.C. § 134 of a non–final rejection of claims 1–9 and 11–26, the only
claims pending in the application on appeal. This is the second time this
Application has come before us. We have jurisdiction over the appeal
pursuant to 35 U.S.C. § 6(b).
The Appellant invented a way of providing information items,
including advertisements, to users of a social networking system based on
the inferred temporal relevance of that information to the users.
Specification para. 1.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A method comprising:
[1] logging a plurality of actions of a user of a social
networking system;
[2] determining a plurality of interests for user based on one or
more of the plurality of actions of the user;

1 Our decision will make reference to the Appellant’s Appeal Brief (“Appeal
Br.,” filed March 13, 2018) and Reply Brief (“Reply Br.,” filed June 5,
2018), and the Examiner’s Answer (“Ans.,” mailed April 5, 2018), and Non-
Final Action (“Non-Final Act.,” mailed October 4, 2017).
2 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 Facebook,
Inc. (Appeal Br. 2).

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[3] discounting the plurality of interests based at least in part on
an amount of time since the performance of the action from
which the plurality of interests were determined;
[4] receiving a plurality of newsfeed stories for display to the
user of the social networking system;
[5] determining a plurality of concepts associated with each of a
plurality of newsfeed stories;
[6] matching,
by a processor,
the discounted interests for the user with the concepts
determined for each of the newsfeed stories;
[7] selecting one or more of the newsfeed stories to display to
the user,
the selecting based at least in part on the matching of the
discounted interests with the concepts;
[8] generating an updated newsfeed interface comprising the
selected newsfeed stories;
and
[9] sending the updated newsfeed interface for display to the
user.
Claims 1–9 and 11–26 stand rejected under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more.
ISSUES
The issues of eligible subject matter turn primarily on whether the
claims recite more than abstract conceptual advice of results desired.
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FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to Claim Construction
01. The disclosure uses the term “discount” as a verb as an
alternative to “weight.” Spec. paras. 4 and 6
Facts Related to Appellant’s Disclosure
02. The only description of an interface in the Specification is “the
third party application 204 may interact with the social networking
system 200 via a system-provided application programming
interface.” Spec. para. 28.
ANALYSIS
Initially we construe the limitations of “discounting the plurality of
interests” and “generating an updated newsfeed interface comprising the
selected newsfeed stories.” The disclosure uses the term “discount” as a
verb as an alternative to “weight.” FF 01. We construe the first limitation as
“weighting the data representing the plurality of interests.” The only
description of an interface in the Specification is that of a system provided
interface. FF 02. None of paragraphs 24, 49, nor 51 Appellant cites (Appeal
Br. 3) as support for this limitation describe generating an interface. Thus,
the invention does not generate a new interface, but only uses a system
provided interface, and it is only in the sense of invocation that the interface
is generated. We construe the second limitation as “invoking a system
provided interface as a newsfeed interface comprising the selected newsfeed
stories.”
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STEP 13
Claim 1, as a method claim, nominally recites one of the enumerated
categories of eligible subject matter in 35 U.S.C. § 101. The issue before us
is whether it is directed to a judicial exception without significantly more.
STEP 2
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, . . .
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. If so, we then ask, “[w]hat
else is there in the claims before us? To answer that question, .
. . consider the elements of each claim both individually and “as
an ordered combination” to determine whether the additional
elements “transform the nature of the claim” into a patent-
eligible application. [The Court] described step two of this
analysis as 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 Corp., Pty. Ltd. v CLS Bank Intl, 573 U.S. 208, 217–18 (2014)
(citations omitted) (citing Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012)). To perform this test, we must first
determine what the claims are directed to. This begins by determining
whether the claims recite one of the judicial exceptions (a law of nature, a
natural phenomenon, or an abstract idea). Then, if claims recite a judicial
exception, determining whether the claims at issue are directed to the recited
judicial exception, or whether the recited judicial exception is integrated into

3 For continuity of analysis, we adopt the steps nomenclature from 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) (“Revised Guidance”).
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a practical application of that exception, i.e., that the claims “apply, rely on,
or use the judicial exception in a manner that imposes a meaningful limit on
the judicial exception, such that the claim is more than a drafting effort
designed to monopolize the judicial exception.” Revised Guidance at 54. If
the claims are directed to a judicial exception, then finally determining
whether the claims provide an inventive concept because the additional
elements recited in the claims provide significantly more than the recited
judicial exception.
STEP 2A Prong 1
At a high level, and for our preliminary analysis, we note that method
claim 1 recites logging user actions, determining and discounting (i.e.,
weighting) user interests, receiving newsfeeds, determining concepts
associated with the newsfeeds, matching user interests and concepts,
selecting a newsfeed, generating an interface comprising newsfeeds, and
sending the interface for display. Logging data is data reception.
Determining, discounting, matching, and selecting are rudimentary forms of
data analysis. An interface is just something between other things, so
generating an interface comprising newsfeeds is updating a dataset for
presentation between a computer and a user, the dataset comprising
newsfeeds. To the extent it also invokes a system provided interface, as
construed, supra, this is only a conventional generic computer operation
(because the interface is system supplied) to apply the instruction. Sending
data is data transmission. Thus, claim 1 recites receiving, analyzing,
updating, and transmitting data. None of the limitations recites
technological implementation details for any of these steps, but instead
recites only results desired by any and all possible means.
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From this we see that claim 1 does not recite the judicial exceptions of
either natural phenomena or laws of nature.
Under Supreme Court precedent, claims directed purely to an abstract
idea are patent in-eligible. As set forth in the Revised Guidance, which
extracts and synthesizes key concepts identified by the courts, abstract ideas
include (1) mathematical concepts4, (2) certain methods of organizing
human activity5, and (3) mental processes6. Among those certain methods
of organizing human activity listed in the Revised Guidance are managing
personal behavior or relationships or interactions between people. Like
those concepts, claim 1 recites the concept of sending news to other people.
Specifically, claim 1 recites operations that would ordinarily take place in
advising one to send news selected by matching concepts to weighted user
interests to other people. The advice to send news selected by matching
concepts to weighted user interests to other people involves sending news to
other people, which is a social act, and collecting such news, which is an act
ordinarily performed in the stream of interactions among people. For
example, claim 1 recites “sending the updated newsfeed interface for

4 See, e.g., Gottschalk v. Benson, 409 U.S. 63, 71–72 (1972); Bilski v.
Kappos, 561 U.S. 593, 611 (2010); Mackay Radio & Telegraph Co. v. Radio
Corp. of Am., 306 U.S. 86, 94 (1939); SAP Am., Inc. v. InvestPic, LLC, 898
F.3d 1161, 1163 (Fed. Cir. 2018).
5 See, e.g., Bilski, 561 U.S. at 628; Alice, 573 U.S. at 219–20; Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed Cir. 2014); Smart Sys.
Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1383 (Fed. Cir.
2017); In re Marco Guldenaar Holding B.V., 911 F.3d 1157, 1160–61 (Fed.
Cir. 2018).
6 See, e.g., Benson, 409 U.S. at 67; CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1371–72 (Fed. Cir. 2011); Intellectual Ventures I LLC
v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016).
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display,” which is an activity that would take place whenever one is sending
news to another person. Similarly, claim 1 recites “selecting one or more of
the newsfeed stories to display to the user” which is also characteristic of
preparing for social interaction.
The Examiner determines the claims to be directed to sending and
receiving data to select and send targeted information. Non-Final Act. 3.
The preamble to claim 1 does not recite what it is to achieve, but the
steps in claim 1 result in sending an updated newsfeed formatted for some
interface absent any technological mechanism other than a conventional
computer for doing so.
As to the specific limitations, limitations 1 and 4 recite data reception.
Limitations 8 and 9 recites recite insignificant updating and transmitting of
newsfeed data, which advise one to apply generic functions to get to these
results. Limitations 2, 3, and 5–7 recite generic data analysis, such as
determining, weighting, matching and selecting data, absent any
technological implementation details. The limitations thus recite advice for
sending news selected by matching concepts to weighted user interests to
other people. To advocate sending news selected by matching concepts to
weighted user interests to other people is conceptual advice for results
desired and not technological operations.
The Specification at paragraph 1 describes the invention as relating to
providing information items, including advertisements, to users of a social
networking system based on the inferred temporal relevance of that
information to the users. Thus, all this intrinsic evidence shows that claim 1
recites sending newsfeed stories to other users, i.e., sending news to other
people. This is consistent with the Examiner’s determination.
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This in turn is an example of managing personal behavior or
relationships or interactions between people as a certain method of
organizing human activity because sending news to other people is a way of
managing interaction between people. The concept of sending news to other
people by sending news selected by matching concepts to weighted user
interests to other people is one idea for how to send news. The steps recited
in claim 1 are part of how this might conceptually be premised.
Our reviewing court has found claims to be directed to abstract ideas
when they recited similar subject matter. Affinity Labs of Texas, LLC v.
Amazon.com Inc., 838 F.3d 1266, 1271 (2016) (Tailoring content);
Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363,
1369 (2015) (Tailoring content).
From this we conclude that at least to this degree, claim 1 recites
sending news to other people by sending news selected by matching
concepts to weighted user interests to other people, which is a way of
managing personal behavior or relationships or interactions between people,
one of certain methods of organizing human activity identified in the
Revised Guidance, and, thus, an abstract idea.
STEP 2A Prong 2
The next issue is whether claim 1 not only recites, but is more
precisely directed to this concept itself or whether it is instead directed to
some technological implementation or application of, or improvement to,
this concept, i.e., integrated into a practical application.7

7 See, e.g., Alice, 573 U.S. at 223, discussing Diamond v. Diehr, 450 U.S.
175 (1981).
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At the same time, we tread carefully in construing this
exclusionary principle lest it swallow all of patent law. At
some level, “all inventions ... embody, use, reflect, rest upon, or
apply laws of nature, natural phenomena, or abstract ideas.”
Thus, an invention is not rendered ineligible for patent simply
because it involves an abstract concept. “[A]pplication[s]” of
such concepts “ ‘to a new and useful end,’ ” we have said,
remain eligible for patent protection. Accordingly, in applying
the § 101 exception, we must distinguish between patents that
claim the “ ‘buildin[g] block[s]’ ” of human ingenuity and those
that integrate the building blocks into something more.
Alice, 573 U.S. at 217 (citations omitted).
Taking the claim elements separately, the operation performed by the
computer at each step of the process is expressed purely in terms of results,
devoid of implementation details. Steps 1 and 4 are pure data gathering
steps. Limitations describing the nature of the data do not alter this. Steps 8
and 9 are insignificant post solution activity, such as storing, transmitting, or
displaying the results. Steps 2, 3, and 5–7 recite generic computer
processing expressed in terms of results desired by any and all possible
means and so present no more than conceptual advice. All purported
inventive aspects reside in how the data is interpreted and the results desired,
and not in how the process physically enforces such a data interpretation or
in how the processing technologically achieves those results.
Viewed as a whole, the Appellant’s claim 1 simply recites the concept
of sending news to other people by sending news selected by matching
concepts to weighted user interests to other people as performed by a generic
computer. This is no more than conceptual advice on the parameters for this
concept and the generic computer processes necessary to process those
parameters, and does not recite any particular implementation.
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Claim 1 does not, for example, purport to improve the functioning of
the computer itself. Nor does it effect an improvement in any other
technology or technical field. The 20 pages of specification spell out
different generic equipment8 and parameters that might be applied using this
concept and the particular steps such conventional processing would entail
based on the concept of sending news to other people by sending news
selected by matching concepts to weighted user interests to other people
under different scenarios. They do not describe any particular improvement
in the manner a computer functions. Instead, claim 1 at issue amounts to
nothing significantly more than an instruction to apply sending news to other
people by sending news selected by matching concepts to weighted user
interests to other people using some unspecified, generic computer. Under
our precedents, that is not enough to transform an abstract idea into a patent-
eligible invention. See Alice, 573 U.S. at 225–26.
None of the limitations reflects an improvement in the functioning of
a computer, or an improvement to other technology or technical field,
applies or uses a judicial exception to effect a particular treatment or
prophylaxis for a disease or medical condition, implements a judicial
exception with, or uses a judicial exception in conjunction with, a particular
machine or manufacture that is integral to the claim, effects a transformation
or reduction of a particular article to a different state or thing, or applies or
uses the judicial exception in some other meaningful way beyond generally
linking the use of the judicial exception to a particular technological

8 The Specification describes personal computer or a mobile phone. Spec.
para. 27.
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environment, such that the claim as a whole is more than a drafting effort
designed to monopolize the exception.
We conclude that claim 1 is directed to achieving the result of sending
news to other people by advising one to send news selected by matching
concepts to weighted user interests to other people, as distinguished from a
technological improvement for achieving or applying that result. This
amounts to managing personal behavior or relationships or interactions
between people, which fall within certain methods of organizing human
activity that constitute abstract ideas. The claim does not integrate the
judicial exception into a practical application.
STEP 2B
The next issue is whether claim 1 provides an inventive concept
because the additional elements recited in the claim provide significantly
more than the recited judicial exception.
The introduction of a computer into the claims does not generally alter
the analysis at Mayo step two.
[T]he mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea “while adding the words ‘apply it’” is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological environment.’”
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implement[t]” an abstract
idea “on . . . a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the preemption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of “additional
feature[e]” that provides any “practical assurance that the
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process is more than a drafting effort designed to monopolize
the [abstract idea] itself.”
Alice, 573 U.S. at 223–24 (citations omitted).
“[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea [] on a generic
computer.” Alice, 573 U.S. at 225. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer for receiving, analyzing, updating, and transmitting data amounts
to electronic data query and retrieval—one of the most basic functions of a
computer. All of these computer functions are generic, routine, conventional
computer activities that are performed only for their conventional uses. See
Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016).
Also see In re Katz Interactive Call Processing Patent Litigation, 639 F.3d
1303, 1316 (Fed. Cir. 2011) (“Absent a possible narrower construction of
the terms ‘processing,’ ‘receiving,’ and ‘storing,’ . . . those functions can be
achieved by any general purpose computer without special programming”).
None of these activities is used in some unconventional manner nor does any
produce some unexpected result. The Appellant does not contend they
invented any of these activities. In short, each step does no more than
require a generic computer to perform generic computer functions. As to the
data operated upon, “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 America, Inc. v. InvestPic LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018).
Considered as an ordered combination, the computer components of
the Appellant’s claim 1 add nothing that is not already present when the
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steps are considered separately. The sequence of data reception-analysis-
update-transmission is equally generic and conventional. See Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (sequence of
receiving, selecting, offering for exchange, display, allowing access, and
receiving payment recited an abstraction), Inventor Holdings, LLC v. Bed
Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017) (sequence of
data retrieval, analysis, modification, generation, display, and transmission),
Two-Way Media Ltd. v. Comcast Cable Communications, LLC, 874 F.3d
1329, 1339 (Fed. Cir. 2017) (sequence of processing, routing, controlling,
and monitoring). The ordering of the steps is therefore ordinary and
conventional.
We conclude that claim 1 does not provide an inventive concept
because the additional elements recited in the claim do not provide
significantly more than the recited judicial exception.
REMAINING CLAIMS
Claim 1 is representative. The other independent method claim 23 is
substantially similar at least as regards this analysis. The remaining method
claims merely describe process parameters. We conclude that the method
claims at issue are directed to a patent-ineligible concept itself, and not to
the practical application of that concept.
As to the structural claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long “warn[ed] ... against” interpreting § 101“in
ways that make patent eligibility ‘depend simply on the
draftsman’s art.’
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Alice, 573 U.S. at 226. As a corollary, the claims are not directed to any
particular machine.
LEGAL CONCLUSION
From these determinations we further determine that the claims do not
recite an improvement to the functioning of the computer itself or to any
other technology or technical field, a particular machine, a particular
transformation, or other meaningful limitations. From this we conclude the
claims are directed to the judicial exception of the abstract idea of certain
methods of organizing human activity as exemplified by the managing
personal behavior or relationships or interactions between people of sending
news to other people by sending news selected by matching concepts to
weighted user interests to other people, without significantly more.
APPELLANT’S ARGUMENTS
We are not persuaded by the Appellant’s argument that
Independent claims 1, 14, and 23 are directed to “select[ing]
information for display to the user based on the inferred
temporal relevance of that information to the user.” See
Specification, [0004]. This solves the problem stated in the
Specification of “a user’s actual current interests may change
over time much more quickly compared to the information used
to select the relevant information items to display.”
Specification, [0003]. In particular, the claims recite such
“information” displayed to the user as “newsfeed stories”
(claims 1, 14) displayed in a “newsfeed interface” (claims 1, 14,
and 23). The specification defines a “newsfeed story” as story
that is an update about an action of a user’s connection. See
Specification, [0002].
App. Br. 9. This argument is instead consistent with our determination supra
that the claims are directed to achieving the result of sending news to other
people by advising one to send news selected by matching concepts to
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weighted user interests to other people, as distinguished from a technological
improvement for achieving or applying that result. This amounts to
managing personal behavior or relationships or interactions between people,
which fall within certain methods of organizing human activity that
constitute abstract ideas.
We are not persuaded by the Appellant’s argument that
The claimed invention is not “a method of organizing human
activities.” According to Guidelines issued by the USPTO on
July 30, 2015 ("July Update"), certain methods of organizing
human activity “describes concepts relating to interpersonal and
intrapersonal activities . . . ” See July Update, p. 4. Here, the
claims are not directed to organizing activities between two or
more people (interpersonal). The claimed invention receives
input from a user but does not seek to organize the activity of
that individual (intrapersonal). In fact, the claims describe a
method for generating a user interface comprising selected
time-relevant newsfeed stories. Thus, the claims are not
correctly classified as involving certain methods of organizing
human activities.
App. Br. 11–12. The analysis supra supports our determination that the
claims are directed to a method of organizing human activities. Sending
news between people is as old as the concept of gossip. The Appellant
argues no more than that a computer process used to assist in sending news
isolates receiver from sender. This does not negate the overall intent and
effect to send new between people, and more importantly fails to show a
technological application or implementation.
The Appellant also attempts to analogize the claims to those involved
in McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed.
Cir. 2016). Appeal Br. 12. In McRO, the court held that, although the
processes were previously performed by humans, “the traditional process
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and newly claimed method . . . produced . . . results in fundamentally
different ways.” FairWarning v. Iatric Systems, 839 F.3d 1089, 1094
(Fed. Cir. 2016) (differentiating the claims at issue from those in McRO).
In McRO, “it was the incorporation of the claimed rules not the use of the
computer, that improved the existing technology process,” because the
prior process performed by humans “was driven by subjective
determinations rather than specific, limited mathematical rules.” 837 F.3d
at 1314 (internal quotation marks, citation, and alterations omitted). In
contrast, the claims of the instant application merely implement an old
practice of using decision criteria in making content decisions in a new
environment. The Appellant has not argued that the claimed processes of
selecting content apply rules of selection in a manner technologically
different from those which humans used, albeit with less efficiency, before
the invention was claimed. Merely pigeon-holing the objects of decision
making to aid decision making is both old and itself abstract.
The claims in McRO were not directed to “a specific asserted
improvement in computer animation, i.e., the automatic use of
rules of a particular type.” We explained that “the claimed
improvement [was] allowing computers to produce ‘accurate
and realistic lip synchronization and facial expressions in
animated characters’ that previously could only be produced by
human animators.” The claimed rules in McRO transformed a
traditionally subjective process performed by human artists into
a mathematically automated process executed on computers.
FairWarning, 839 F.3d at 1094.
We are not persuaded by the Appellant’s argument that the claims
contain an inventive concept that is also found in the specific ordered
combination of the limitations, similar to the Federal Circuit's findings in
BASCOM (BASCOM Global Internet v. AT&T Mobility LLC, 827 F.3d 1341
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(Fed. Cir. 2016)). Appeal Br. 13. Initially, we remind the Appellant that
BASCOM did not find claims eligible on the substance, but rather that the
Appellees did not provide sufficient evidence to support a 12(b)(6) motion to
dismiss in which facts are presumed in the non-movant’s favor.
The key fact in BASCOM was the presence of a structural change in
“installation of a filtering tool at a specific location, remote from the end-
users, with customizable filtering features specific to each end user. This
design gives the filtering tool both the benefits of a filter on a local computer
and the benefits of a filter on the ISP server.” BASCOM, 827 F.3d at 1350.
The instant claims have no analogous structural benefit.
We are not persuaded by the Appellant’s argument that “a genuine
issue of material fact exists because the claims include limitations that
incorporate the stated improvement to computer functionality described in
the specification.” App. Br. 14. As we determined supra, using a computer
for receiving, analyzing, updating, and transmitting data amounts to
electronic data query and retrieval—one of the most basic functions of a
computer. All of these computer functions are generic, routine, conventional
computer activities that are performed only for their conventional uses. Data
content does not make the collection and analysis other than abstract. The
sequence of data reception-analysis-update-transmission is equally generic
and conventional.
We are not persuaded by the Appellant’s argument that “the claims
have been found to be patentably distinguishable over the art.” “A claim for
a new abstract idea is still an abstract idea. The search for a § 101 inventive
concept is thus distinct from demonstrating § 102 novelty.” Synopsys, Inc.
v. Mentor Graphics Corporation, 839 F.3d 1138, 1151 (Fed. Cir. 2016).
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As to separately argued claim 23, the Appellant does no more than
recite the additional elements. Reply Br. 4. This is insufficient to act as a
separate argument under 37 C.F.R. § 41.37. As our reviewing court held,
“we hold that the Board reasonably interpreted Rule 41.37 to require more
substantive arguments in an appeal brief than a mere recitation of the claim
elements and a naked assertion that the corresponding elements were not
found in the prior art.” In re Lovin, 652 F.3d 1349, 1357 (Fed Cir 2011).
CONCLUSIONS OF LAW
The rejection of claims 1–9 and 11–26 under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more is proper.
CONCLUSION
The rejection of claims 1–9 and 11–26 is affirmed.
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–9, 11–26 101 Eligibility 1–9, 11–26

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) (2011).

AFFIRMED