Adobe Inc.

Patent Trials and Appeals Board

Nov 12, 2020

14548684 - (D) (P.T.A.B. Nov. 12, 2020)

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.
14/548,684 11/20/2014 Ritwik Sinha P4602-US 8640
108982 7590 11/12/2020
SBMC
116 W. Pacific Avenue
Suite 200
Spokane, WA 99201
EXAMINER
ANDERSON, SCOTT C
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
11/12/2020 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):
docket@sbmc-law.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RITWIK SINHA, TAPAN BOHRA,
SANKET VAIBHAV MEHTA, and ADIT KRISHNAN
Appeal 2020-001362
Application 14/548,684
Technology Center 3600
Before JOSEPH L. DIXON, JOHN A. JEFFERY, and
JOHNNY A. KUMAR, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–3, 7, 8, 10, 11, 13–16, 19, and 20.
Claims 4–6, 9, 12, 17, and 18 are canceled. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a) (2018). Appellant identifies the real party in interest as
Adobe Incorporated. Appeal Br. 3.
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CLAIMED SUBJECT MATTER
The claims are directed to a system and method for personalized
marketing based on sequence mining. Claim 1, reproduced below with
emphases added, is illustrative of the claimed subject matter:
1. In a digital marketing environment for management of
digital marketing campaigns to provide online marketing offers
to consumers, a method to individualize marketing actions
taken with respect to different consumers comprising:
collecting, using a computing device, marketing data
indicative of interactions of the consumers with online
marketing offers provided to the consumers;
selecting, using the computing device, a sequence of
marketing actions for targeted marketing to an individual user
by comparing sequence data obtained from the collected
marketing data that describes sequencing for the marketing
offers provided to the consumers to one or more potential
sequences for the individual user, each of the one or more
potential sequences including a partial sequence of actions
already engaged in with respect to the individual user,
the comparison includes an assessment of
similarity between sequences within the collected
marketing data that satisfied an objective defined for the
targeted marketing to the individual user and the one or
more potential sequences for the individual user, the
assessment of similarity includes calculating, by the
computing device, a minimum super sequence based on
the partial sequence of actions such that the minimum
super sequence includes a minimum number of
interactions that include the partial sequence of
interactions, the minimum number of interactions being a
subset of another sequence of interactions;
the assessment of similarity is further based upon
matching of characteristics of the individual user to
characteristics of consumers associated with the
sequences that satisfied the objective defined for the
targeted marketing to the individual user such that the
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characteristics that are matched include behaviors
associated the individual user and the consumers; and
performing, using the computing device, one or more
marketing actions in accordance with the selected sequence
effective to provide targeted marketing offers to the
individual user.
REJECTION
Claims 1–3, 7, 8, 10, 11, 13–16, 19, and 20 stand rejected under
35 U.S.C. § 101 because the claimed invention is directed to a judicial
exception (an abstract idea) without significantly more.
OPINION
35 U.S.C. § 101
Appellant argues claims 1–3, 7, 8, 10, 11, 13–16, 19, and 20 as a
group. Appeal Br. 12. We select claim 1 to represent the group. See
37 C.F.R. § 41.37(c)(1)(iv). Arguments which Appellant could have made
but did not make in the Briefs are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(iv).
Appellant has the burden on appeal to the Board to demonstrate error
in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985–86 (Fed. Cir.
2006).
Patent eligibility under 35 U.S.C. § 101 is a question of law that is
reviewable de novo. See Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333
(Fed. Cir. 2012).
a. Legal Principles
An invention is patent eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
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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).
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. Alice, 573 U.S. at 217–18 (citing Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with
that framework, under Step 2A, 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, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
If, under Step 2A, the claim is “directed to” an abstract idea, then,
under Step 2B, “we must examine the elements of the claim to determine
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whether it contains an ‘inventive concept’ sufficient to ‘transform’ the
claimed abstract idea into a patent-eligible application.” Alice, 573 U.S. at
221 (quotation marks 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. (quoting
Mayo, 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.
On January 7, 2019, the U.S. Patent and Trademark Office
(“USPTO”) published revised patent subject matter eligibility guidance. See
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(2019) (“Revised Guidance”). Under the Revised Guidance, Step 2A of the
Alice two-step framework is divided in two prongs. For Step 2A, Prong 1,
we look to whether the claim recites any judicial exceptions falling into
certain groupings of abstract ideas (e.g., mathematical concepts, certain
methods of organizing human activity such as a fundamental economic
practice, or mental processes). For Step 2A, Prong 2, if the claim recites
such a judicial exception, we look to whether the claim recites any additional
elements that integrate the judicial exception into a practical application (see
Manual of Patent Examining Procedure (“MPEP”) § 2106.05(a)–(c), (e)–
(h)).
Only if a claim recites a judicial exception and does not integrate that
exception into a practical application, do we then determine, under Step 2B
of the Alice two-step framework, whether the claim adds a specific
limitation beyond the judicial exception that is not “well-understood,
routine, conventional” in the field (see MPEP § 2106.05(d)) or simply
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appends well-understood, routine, conventional activities previously known
to the industry, specified at a high level of generality, to the judicial
exception.
b. Discussion — Claim 1
i. Examiner’s Findings and Conclusions
In the Final Action, the Examiner determines that claim 1 recites
“collecting marketing data, selecting marketing actions by making
comparisons among the data including determining similarities, and
performing marketing actions in order to provide targeted marketing offers
to a person.” Final Act. 2. Examiner determines that all of this falls within
either of “advertising, marketing or sales activities or behaviors”, which are
identified as certain methods of organizing human activity, or concepts
which are capable of being performed mentally such as “observation,
evaluation, judgment, opinion.” Final Act. 2. The Examiner additionally
determines that the additional computer elements, which are recited at a high
level of generality, provide conventional computer functions that do not add
meaningful limits to practicing the abstract idea. Final Act. 3–4 (see Spec.
¶ 18.) The Examiner determines the computation of a minimal
supersequence is trivial and can be done mentally, with ease, for small
amounts of data, and the claim does not require more than small amounts.
The minimal supersequence of “a” and “b” for example is either “ab” or
“ba,” and it took the Examiner about half a second to work that out in his
mind. Final Act. 3. The Examiner also determines that information is
collected about “online marketing offers” is simply a field of use that
attempts to confine the invention to a particular technological environment.
Final Act. 4.
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The Examiner also determines that the claim elements when
considered as an ordered combination, that is, a generic computer
performing a series of abstract steps arranged chronologically, does
nothing more than when analyzed individually. Final Act. 4.
The other independent claims are simply different embodiments but in each
case are directed to abstract computers performing the same or a very similar
process. Final Act. 4.

ii. Appellant’s Arguments and Contentions
In the Appeal Brief, Appellant contends that contrary to certain
methods of organizing human activity, claim 1 is directed to a
method to provide online marketing offers to consumers and is a specific
series of steps performed with the use of a computing device to provide
individualized marketing actions to consumers. Appeal Br. 16.
Appellant also contends that to the extent that the claims may include
an exception, the claims integrate the exception into a particular useful
application. Appeal Br. 17–18. Appellant contends that the features of
claim 1 are more than just a general linking of the use of the judicial
exception to a particular technological environment, and these features
describe specific, detailed, and concrete steps that are implemented using a
computing device to “perform one or more marketing actions with ... the
selected sequence . . . to provide targeted marketing offers.” Appeal Br. 17–
18. Appellant further contends that the sequence of marketing actions is
selected by comparing sequence data obtained from marketing data, which
includes user characteristics (e.g., age, sex, location, affiliations, etc.), and
behaviors (e.g., browsing habits, favorites, purchase history, preferences,
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account activity, page views, offer views etc.), to one or more potential
sequences for a user. Appeal Br. 17–18; see generally Reply Brief 5. (See
Appeal Br. 18–19 citing to Spec. ¶¶ 13–14, 24.)
Appellant also contends that “[p]ersonalizing a sequence of marketing
actions to individuals is an improvement to the technical field of digital
marketing, because it overcomes the deficiencies of traditional marketing
techniques . . . Thus resulting in wastage of resources utilized for digital
marketing.” Appeal Br. 18. Appellant further argues that the claims “The
elements or combination of elements in claim 1 are not well-understood,
routine, or conventional activity in the field” and “directly address a
deficiency that is a characteristic of conventional marketing techniques.”
Appeal Br. 18–19; see generally Reply Brief 6. (See Appeal Br. 18–19
citing to application ¶¶ 13–14, 24.)

iii. Analysis
Appellant addresses the Revised Guidance in the Appeal and Reply
Briefs. We address Appellant’s analysis under the Revised Guidance.
Appellant does not set forth separate arguments for patentability of
claims 1–3, 7, 8, 10, 11, 13–16, 19, and 20 and lists all the claims together.
See Appeal Br. 13; Reply Br. 3. Based on Appellant’s arguments and our
discretion under 37 C.F.R. § 41.37(c)(1)(iv), we select independent claim 1
as the representative claim for the group and address Appellant’s arguments
thereto. See 37 C.F.R. § 41.37(c)(1)(iv). Independent claims 11 and 16
along with dependent claims stand or fall with representative claim 1.
See 37 C.F.R. § 41.37(c)(1)(iv).
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For Step 2A, Prong 1, of the Revised Guidance, we agree with the
Examiner and find that the emphasized portions of claim 1, reproduced
above, recite elements that fall within the abstract idea groupings of certain
methods of organizing human activity (“advertising, marketing or sales
activities or behaviors”, which are identified as certain methods of
organizing human activity, or concepts which are capable of being
performed mentally such as “observation, evaluation, judgment, opinion”);
and mental processes (concepts performed in the human mind). See
generally Final Act. 2–3. The Revised Guidance requires us to evaluate
whether the claim recites a judicial exception (e.g., an abstract idea).
According to the Revised Guidance, to determine whether a claim recites an
abstract idea, we must identify limitations that fall within one or more of the
designated subject matter groupings of abstract ideas. According to the
October 2019 Patent Eligibility Guidance Update produced by the USPTO,
“a claim recites a judicial exception when the judicial exception is ‘set forth’
or ‘described’ in the claim.” See October 2019 Patent Eligibility Guidance
Update Revised Patent Subject Matter Eligibility Guidance,
https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p
df (“October Update”). The Revised Guidance lists “[c]ertain methods of
organizing human activity” as one such grouping and characterizes certain
methods of organizing human activity as including, inter alia, groupings of
certain methods of organizing human activity (managing personal behavior
or relationships or interactions between people (including social activities,
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teaching, and following rules or instructions).” 84 Fed. Reg. at 52. We find
that the emphasized elements of claim 1 describe these judicial exceptions.2
Specifically, regarding certain methods of organizing human activity, we
agree with the Examiner that claim 1 sets forth the human activity of
“collecting marketing data, selecting marketing actions by making
comparisons among the data including determining similarities, and
performing marketing actions in order to provide targeted marketing offers
to a person.” Final Act. 2. We agree with the Examiner that claim 1 falls
within “advertising, marketing or sales activities or behaviors,” which are
identified as certain methods of organizing human activity. Final Act. 2.
Thus, we find that claim 1 recites an abstract idea.
Turning to Prong 2 of Step 2A of the Revised Guidance, we recognize
claim 1 includes an additional element such as a “computing device.”
Furthermore, our review of Appellant’s Specification finds that the term
“computing device” is nominal. Appellant’s Specification indicates that the
“computing device” (see Spec. ¶ 18; see also Final Act. 3–4) of claim 1 do
not recite specific types of additional elements or their specific operations.
As a result, this additional element is not enough to distinguish the steps of
claim 1 from describing certain methods of organizing human activity.
Thus, claim 1 does not integrate the recited abstract idea into a practical
application.
In addition, we determine that claim 1 also recites insignificant post-
solution activity (“performing, using the computing device, one or more

2 We note that similar analysis may be made under the mental processes
category for abstract ideas where each of the recited limitations may be
performed in the human mind or with paper and pencil.
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marketing actions in accordance with the selected sequence effective to
provide targeted marketing offers to the individual user.”) See Apple, Inc. v.
Ameranth, Inc., 842 F.3d 1229, 1241–42 (Fed. Cir. 2016) (addressing
insignificant post-solution activity). We also determine that claim 1 also
recites insignificant pre-solution activity (“collecting, using a computing
device, marketing data indicative of interactions of the consumers with
online marketing offers provided to the consumers”). OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1363–64 (Fed. Cir. 2015) (addressing
insignificant pre-solution activity). The recited insignificant extra-solution
activity does not help integrate the recited methods of organizing human
activity into a practical application of the abstract idea.3
In the Appeal Brief, Appellant does not sufficiently explain what the
claimed “marketing actions” or “marketing offers” refers to or how they are
an improvement to conventional computing systems, as asserted. In the
Reply Brief, Appellant provides a general argument that “the claims describe
specific, detailed, and concrete steps that are implemented using a
computing device to individualize actions towards various consumers” and
[t]he data used to select the sequences, for example, may be
based on user characteristics (e.g., age, location, affiliations,
etc.), and user behaviors (e.g., browsing habits, favorites,
purchase history, preferences, account activity, page views,
offer views, etc.), which cannot effectively and realistically be
collected and analyzed (on any reasonable scale) without use of
a computing device.

3 Alternatively, the indicated extra-solution activity may be deemed to be
part of the recited abstract idea as indicated by the Examiner which would
not change the outcome of the analysis.
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Reply Br. 5. This argument, however, is unpersuasive because Appellant
does not identify any improvement in the computer system that is separate
from the abstract idea of a method of digital marketing environment for
management of digital marketing campaigns to provide online marketing
offers to consumers and is not specifically recited in the language of claim 1.
Thus, Appellant’s argument fails because the argument is not
commensurate with the scope of claim 1. See In re Self, 671 F.2d 1344,
1348 (CCPA 1982) (“[A]ppellant’s arguments fail from the outset because
. . . they are not based on limitations appearing in the claims.”); see also In
re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998) (“[The] proffered facts
. . . are not commensurate with the claim scope and are therefore
unpersuasive.”). The broad language of claim 1 merely specifies
“marketing data indicative of interactions of the consumers with online
marketing offers provided to the consumers” and “one or more potential
sequences for the individual user” without further detail.
Regarding independent claims 1, 11, and 16, our reviewing court
provides further applicable guidance: the “‘mere automation of manual
processes using generic computers’ . . . ‘does not constitute a patentable
improvement in computer technology.’” Trading Techs. Int’l, Inc. v. IBG
LLC, 921 F.3d 1378, 1384 (Fed. Cir. 2019) (quoting Credit Acceptance
Corp. v. Westlake Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017)). As a
result, we agree with the Examiner that the combination of additional
elements as a whole does not integrate the recited abstract idea into a
practical application.
Therefore, based on our analysis under the Revised Guidance, we
agree with the Examiner and find that claim 1 is directed to an abstract idea.
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As a result, we focus our attention on Step 2B of the Alice two-step
framework.
Step 2B of the Alice two-step framework requires us to determine
whether any element, or combination of elements, in the claim is sufficient
to ensure that the claim amounts to significantly more than the judicial
exception. Alice, 573 U.S. at 221. As discussed above, claim 1 includes an
additional element “computing device.” We agree with the Examiner’s
findings that the additional element of claim 1, when considered individually
and in an ordered combination, correspond to nothing more than generic and
well-known components used to implement the abstract ideas. See Final
Act. 3–4. Also, the Examiner determines that the Specification in at least
paragraph 18 describes that the “computing device may be configured as a
computer that is capable of communicating over the network 108, such as a
desktop computer, a mobile station, an entertainment appliance, a set-top
box communicatively coupled to a display device, a wireless phone, a game
console, and so forth.” Final Act. 4. (See also Figure 7.)
In other words, we find that the additional elements, as claimed, are
well-understood, routine, and conventional and “behave exactly as expected
according to their ordinary use.” See In re TLI Commc’ns LLC Patent Litig.,
823 F.3d 607, 615 (Fed. Cir. 2016). Thus, implementing the abstract idea
with these generic and well-known components “fail[s] to transform that
abstract idea into a patent-eligible invention.” Alice, 573 U.S. at 221.
Therefore, we agree with the Examiner that claim 1 does not provide
significantly more than the abstract idea itself.
Therefore, because claim 1 is directed to the abstract ideas of certain
methods of organizing human activity and does not provide significantly
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more than the abstract idea itself, we agree with the Examiner that claim 1 is
ineligible for patenting and affirm the Examiner’s rejection of representative
independent claim 1 under 35 U.S.C. § 101.
Because Appellant has not set forth separate arguments for
patentability of independent claims 11 and 16 and dependent claims 2, 3, 7,
8, 10, 13–15, 19, and 20, we group these claims as falling with
representative independent claim 1.
CONCLUSION
The Examiner’s patent eligibility rejection is sustained.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–3, 7, 8,
10, 11, 13–
16, 19, 20
101 Eligibility 1–3, 7, 8,
10, 11, 13–
16, 19, 20

TIME PERIOD FOR RESPONSE
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