Case: 20-1644 Document: 44 Page: 1 Filed: 01/12/2021
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
IN RE: JEANNINE A. STURGEON,
Appellant
______________________
2020-1644
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 14/212,028.
______________________
Decided: January 12, 2021
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DAVID E. BENNETT, Coats & Bennett, PLLC, Cary, NC,
for appellant. Also represented by WILLIAM GABRIEL
PAGAN, BRANDEE WOOLARD.
MOLLY R. SILFEN, Office of the Solicitor, United States
Patent and Trademark Office, Alexandria, VA, for appellee
Andrei Iancu. Also represented by THOMAS W. KRAUSE,
AMY J. NELSON, FARHEENA YASMEEN RASHEED.
______________________
Before LOURIE, DYK, and STOLL, Circuit Judges.
DYK, Circuit Judge.
Patent applicant Jeannine A. Sturgeon appeals a deci-
sion of the United States Patent Trial and Appeal Board
(“Board”) affirming the Examiner’s rejection of her
Case: 20-1644 Document: 44 Page: 2 Filed: 01/12/2021
2 IN RE: STURGEON
application under
35 U.S.C. § 101. Because the Board
properly determined that Sturgeon’s application claims un-
patentable subject matter under § 101, we affirm.
BACKGROUND
This case involves U.S. Patent Application
No. 14/212,028 (“the ’028 application”). The ’028 applica-
tion was originally filed on March 14, 2014, with a single
claim. In a preliminary amendment filed March 17, 2014,
Sturgeon canceled the original claim and added independ-
ent claims 2, 10, and 17, and dependent claims 3–9, 11–16,
and 18–20. On August 10, 2016, the United States Patent
and Trademark Office (“Office”) issued a restriction requir-
ing Sturgeon to elect between two groups of claims: either
claims 2–9 and 17–20, or claims 10–16. On October 4,
2016, Sturgeon elected claims 2–9 and 17–20 without trav-
erse and subsequently withdrew claims 10–16.
Sturgeon and the Director of the United States Patent
and Trademark Office (“Director”) agree that claim 2 is rep-
resentative. Claim 2 discloses:
A method of creating a floral arrangement on an
electronic display screen, the method comprising:
selecting a flower from an image library comprising
a plurality of images for the flower, the plurality of
images including images of the flower from differ-
ent angular positions;
placing the flower at a user-selected location in a
floral arrangement that is displayed on an elec-
tronic display screen;
dynamically selecting one of the plurality of images
of the flower based on the location of the flower in
the floral arrangement; and
displaying the selected flower image in the floral
arrangement displayed on the display screen.
Case: 20-1644 Document: 44 Page: 3 Filed: 01/12/2021
IN RE: STURGEON 3
’028 application.
On April 5, 2017, the Examiner issued a final rejection
of claims 2–9 and 17–20 as ineligible under
35 U.S.C. § 101
and anticipated under § 102. Sturgeon appealed to the
Board. The Board affirmed the rejections under § 101 and
reversed the rejections under § 102. Sturgeon appealed to
this court.
DISCUSSION
We review the Board’s legal determinations de novo, In
re Elsner,
381 F.3d 1125, 1127 (Fed. Cir. 2004), including
patent eligibility under § 101, Berkheimer v. HP Inc.,
881
F.3d 1360, 1365 (Fed. Cir. 2018). We review underlying
factual findings for substantial evidence. Elsner,
381 F.3d
at 1127 (citing In re Gartside,
203 F.3d 1305, 1316 (Fed.
Cir. 2000)).
I
The question of eligibility under § 101 is governed by
the two-step framework set out by the Supreme Court in
Alice Corp. Pty. Ltd. v. CLS Bank International,
573 U.S.
208 (2014), and Mayo Collaborative Services v. Prometheus
Laboratories, Inc.,
566 U.S. 66 (2012).
In the first step of the inquiry, we must “determine
whether the claims at issue are directed to” a patent-ineli-
gible concept, i.e., a law of nature, natural phenomenon, or
abstract idea. Alice, 573 U.S. at 217 (citing Mayo,
566 U.S.
at 77). “If the claims are not directed to a patent-ineligible
concept under Alice step 1, ‘the claims satisfy § 101 and we
need not proceed to the second step.’” Data Engine Techs.
LLC v. Google LLC,
906 F.3d 999, 1007 (Fed. Cir. 2018)
(quoting Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc.,
880 F.3d 1356, 1361 (Fed. Cir. 2018)).
Conversely, if we find the subject matter abstract in the
first step, we must proceed to the second step, in which “we
consider the elements of each claim both individually and
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4 IN RE: STURGEON
‘as an ordered combination’ to determine whether the ad-
ditional elements ‘transform the nature of the claim’ into a
patent-eligible application.” Alice, 573 U.S. at 217 (quoting
Mayo,
566 U.S. at 78–79). That is, the second step must
reveal an “inventive concept” to “ensure that the patent in
practice amounts to significantly more than a patent upon”
an ineligible concept.
Id. at 217–18 (quoting Mayo,
566
U.S. at 72–73).
For us to find an “inventive concept” in the second step,
the patent must do more than recite an abstract idea “while
adding the words ‘apply it.’” Id. at 221 (quoting Mayo,
566
U.S. at 72). “[S]imply appending conventional steps, spec-
ified at a high level of generality, to laws of nature, natural
phenomena, and abstract ideas cannot make those laws,
phenomena, and ideas patentable.” Mayo,
566 U.S. at 82.
In particular, “the mere recitation of a generic computer
cannot transform a patent-ineligible abstract idea into a
patent-eligible invention.” Alice, 573 U.S. at 223 (summa-
rizing survey of case law).
II
Sturgeon concedes that merely creating a floral ar-
rangement using a computer is an abstract idea, but at
step 1, she argues that the claim is not abstract because it
adds an element of realism to the floral arrangement. The
Board properly found that the claim is directed to “mental
processes,” “the abstract idea of managing personal behav-
ior,” and “methods of organizing human activity”—in this
case, arranging flowers—and is thus abstract at step 1. See
J.A. 7–8. As we have explained, methods
which can be performed entirely in the human
mind are unpatentable . . . because computational
methods which can be performed entirely in the hu-
man mind are the types of methods that embody
the “basic tools of scientific and technological work”
that are free to all men and reserved exclusively to
none.
Case: 20-1644 Document: 44 Page: 5 Filed: 01/12/2021
IN RE: STURGEON 5
Genetic Techs. Ltd. v. Merial L.L.C.,
818 F.3d 1369, 1378
(Fed. Cir. 2016) (quoting CyberSource Corp. v. Retail Deci-
sions, Inc.,
654 F.3d 1366, 1373 (Fed. Cir. 2011)). The
Board correctly determined that claim 2 is directed to an
abstract idea.
At step 2, Sturgeon argues that claim 2 involves an in-
ventive concept by specifying that an image of the flower at
an appropriate angle must be selected from an image li-
brary based on the location the user has selected for placing
the flower. The Director responds that the ’028 application
lacks an inventive concept because it does not describe any
specific steps that the computer takes to select an appro-
priate image from an image library and does not disclose
an improvement in computer technology.
We agree with the Director and the Board that claim 2
is not directed to an inventive concept as required under
the second step of Alice. Claim 2 recites a method of “se-
lecting a flower from an image library,” “placing the flower
at a user-selected location,” “dynamically selecting” an im-
age from the library based on the chosen location, and “dis-
playing the selected flower . . . on the display screen.” ’028
application (emphases added). As the Board properly
found, these steps do not differentiate the claim from ordi-
nary mental processes and conventional computer activity.
All of these elements are described at a high level of gener-
ality and require only generic computer implementation.
There is no inventive concept here that meaningfully adds
to the existing practice of simulating a floral arrangement
by creating a digital collage—which Sturgeon concedes is
an abstract idea performed on a conventional computer.
See Appellant’s Br. at 18. Nor do the highly general reci-
tations of claim 2 disclose any improvement in computer
functionality.
In these respects, this case is distinguishable from
McRO, Inc. v. Bandai Namco Games Am. Inc.,
837 F.3d
1299 (Fed. Cir. 2016), and DDR Holdings, LLC v.
Case: 20-1644 Document: 44 Page: 6 Filed: 01/12/2021
6 IN RE: STURGEON
Hotels.com, L.P.,
773 F.3d 1245 (Fed. Cir. 2014). In those
cases, we found that the claimed inventions improved com-
puter functionality and recited more than generic com-
puter implementation. See McRO, 837 F.3d at 1314
(quoting Alice, 573 U.S. at 223) (“It is the incorporation of
the claimed rules, not the use of the computer, that ‘im-
proved [the] existing technological process’” (alteration in
original).); DDR Holdings, 773 F.3d at 1257–59 (“[T]he
claimed solution is necessarily rooted in computer technol-
ogy in order to overcome a problem specifically arising in
the realm of computer networks.”).
Because claim 2 lacks an inventive concept, it fails to
“amount[] to significantly more than a patent upon” an in-
eligible abstract idea. See Alice, 573 U.S. at 217–18 (quot-
ing Mayo,
566 U.S. at 72–73). The ’028 application is
therefore ineligible under § 101.
AFFIRMED
