ADOBE INC.

Patent Trials and Appeals Board

Jan 13, 2021

2020004972 (P.T.A.B. Jan. 13, 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.
14/812,805 07/29/2015 SACHIN SONI P5413-US/231499 3752
121363 7590 01/13/2021
Shook, Hardy & Bacon L.L.P.
(Adobe Inc.)
Intellectual Property Department
2555 Grand Blvd
Kansas City, MO 64108
EXAMINER
ANDERSON, SCOTT C
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
01/13/2021 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):
seaton@shb.com
shbdocketing@shb.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SACHIN SONI, SURYADEEP KUMAR AGRAWAL,
WALTER W. CHANG, ANMOL DHAWAN, and
ASHISH DUGGAL

Appeal 2020-004972
Application 14/812,805
Technology Center 3600
____________

Before DONALD E. ADAMS, RICHARD M. LEBOVITZ, and
DEBORAH KATZ, Administrative Patent Judges.

Opinion for the Board filed by Administrative Patent Judge Administrative
Patent Judge LEBOVITZ.

Opinion Dissenting filed by KATZ.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
The Examiner rejected claims 1–20 under 35 U.S.C. § 101 as being
directed to patent eligible subject matter. Pursuant to 35 U.S.C. § 134(a),
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Appellant1 appeals from the Examiner’s decision to reject the claims. We
have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

STATEMENT OF THE CASE
The Examiner rejected claims 1–20 in the Final Office Action under
35 U.S.C. § 101 as directed to an abstract idea “without significantly more.”
Final Act. 2. There are three independent claims on appeal, claims 1, 10, and
17. Claim 1 is representative and reproduced below, with annotations added
to number the steps of the claim.
1. A method for facilitating providing offers utilizing
population densities, the method comprising:
[1] determining location data based on locations of a
plurality of user devices relative to one or more beacons
positioned in a retail environment;
[2] determining, in real time, a population density for a
geographical space in the retail environment by analyzing the
location data;
[3] determining values that indicate priorities of users
located in the geographical space based on a purchase
probability of the users for items associated with the
geographical space;
[4] using the population density and the values associated
with the geographical space to determine a personalized
electronic offer for a user, using an offer analyzer component,
the personalized electronic offer being associated with an item
present in a second geographical space in the retail environment
to entice the user to move from the geographical space to the
second geographical space; and

1 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 Adobe Inc.
Appeal Br. 1.
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[5] providing, using an offer generator component, the
personalized electronic offer for viewing by the user via a user
device.
Appeal Br. 16 (Claims Appendix).

PRINCIPLES OF LAW
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
However, not every discovery is eligible for patent protection. Diamond v.
Diehr, 450 U.S. 175, 185 (1981). “Excluded from such patent protection are
laws of nature, natural phenomena, and abstract ideas.” Id. The Supreme
Court articulated a two-step analysis to determine whether a claim falls
within an excluded category of invention. Alice Corp. v. CLS Bank Int’l, 573
U.S. 208 (2014); Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566
U.S. 66, 75–77 (2012).
In the first step, it is determined “whether the claims at issue are
directed to one of those patent-ineligible concepts.” Alice, 573 U.S. at 217. If
it is determined that the claims are directed to an ineligible concept, then the
second step of the two-part analysis is applied in which it is asked “[w]hat
else is there in the claims before us?” Id. (alteration in original). The Court
explained that this step involves
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, 573 U.S. at 217–18 (alteration in original) (citing from Mayo, 566
U.S. at 75–77).
Alice, relying on the analysis in Mayo of a claim directed to a law of
nature, stated that in the second part of the analysis, “the elements of each
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claim both individually and ‘as an ordered combination’” must be
considered “to determine whether the additional elements ‘transform the
nature of the claim’ into a patent-eligible application.” Alice, 573 U.S. at
217.
The PTO published revised guidance on the application of 35 U.S.C.
§ 101, USPTO’s January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“Eligibility Guidance”). This guidance provides additional direction on how
to implement the two-part analysis of Mayo and Alice.
Step 2A, Prong One, of the Eligibility Guidance, looks at the specific
limitations in the claim to determine whether the claim recites a judicial
exception to patent eligibility. In Step 2A, Prong Two, the claims are
examined to identify whether there are additional elements in the claims that
integrate the exception in a practical application, namely, is there a
“meaningful limit on the judicial exception, such that the claim is more than
a drafting effort designed to monopolize the judicial exception.” 84 Fed.
Reg. 54 (Prong Two).
If the claim recites a judicial exception that is not integrated into a
practical application, then as in the Mayo/Alice framework, Step 2B of the
Eligibility Guidance instructs us to determine whether there is a claimed
“inventive concept” to ensure that the claims define an invention that is
significantly more than the ineligible concept itself. 84 Fed. Reg. 56.
With these guiding principles in mind, we proceed to determine
whether the claimed subject matter in this appeal is eligible for patent
protection under 35 U.S.C. § 101.

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DISCUSSION
Claim 1 is directed to a method for facilitating providing offers
utilizing population densities. A method is also a “process,” one of the
statutory categories of patent-eligible subject matter under 35 U.S.C. § 101.
Because the claim falls into one of the statutory categories of patent-eligible
subject matter, following the first step of the Mayo/Alice analysis, we
proceed to Step 2A, Prong One, of the Eligibility Guidance.
Step 2A, Prong One
In Step 2A, Prong One, of the Eligibility Guidance, the specific
limitations in the claim are examined to determine whether the claim recites
a judicial exception to patent eligibility, namely whether the claim recites an
abstract idea, law of nature, or natural phenomenon.
The Examiner found that claim 1 recites steps comprising providing
an electronic offer to a person in a retail environment which the Examiner
determined is “advertising, sales or marketing activities or behaviors,” one
of the enumerated groupings of abstract ideas in the Eligibility Guidance.
Final Act. 2. See Eligibility Guidance, 84 Fed. Reg. 52 (“Certain methods of
organizing human behavior”, including “advertising, marketing or sales
activities or behaviors”). The Examiner also found that the steps of the claim
could be performed in the human mind and therefore are “Mental
processes,” the third grouping of abstract ideas listed in the Eligibility
Guidance. Final Act. 2.
Appellant argues that claims are not directed to the abstract idea of
“advertising, marketing or sales activities or behaviors” because they
perform “technical operations.” Appeal Br. 9. The “technical operations”
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described by Appellant are the specific “determining” steps recited in the
claim.
This argument does not persuade us that the Examiner erred in
making this determination. The claim preamble recites that it is a “method
for facilitating providing offers.” Examples of “offers” described in the
Specification are “coupons, discounts, or sales.” Spec. ¶ 1. In step [1] of the
claim, “location data based on locations of a plurality of user devices relative
to one or more beacons positioned in a retail environment” is determined.
The user device is therefore in a retail environment, such as a store. The
population density is determined in the retail environment in step [2], and in
step [4], “the population density and the values associated with the
geographical space” are used “to determine a personalized electronic offer
for a user.” Therefore, step [4] determines, for example, whether to offer a
coupon or discount to customer in a store. The “offer” is provided to the user
in the last step of the claim. These steps constitute sales activity, and a
method of organizing human activity, because a purpose of the offer is to
make a sale to a customer. While the steps may be “technical operations,”
how the steps are accomplished technically does not change the fact they
recite sales activities.
Appellant also argues that “determining location data based on
locations of user devices relative to beacons is not a ‘concept performed in
the human mind’ as asserted by the examiner,” but rather uses a computing
device and beacon to make this determination. Appeal Br. 10.
This argument does not persuade us that the Examiner erred in this
determination. Appellant has misconstrued how the abstract idea of a mental
process is applied when the steps of the claim are performed on a computer
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and using other technologies. Specifically, the issue is whether the claimed
process that is accomplished using a technology is automating a process that
could also be performed in the human mind. That is, could a human mind
perform the steps of the claim without using the technology recited in the
claim? “Courts have examined claims that required the use of a computer
and still found that the underlying, patent-ineligible invention could be
performed via pen and paper or in a person’s mind.” Versata Development
Group, Inc. v. SAP America, Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015).
Therefore, while claim 1 may recite steps which are accomplished using a
beacon to determine population density, where the beacon technology is
Bluetooth Low Energy (Spec. ¶¶ 26, 27), the technological-implementation
does not confer patent-eligibility because the steps could still be performed
by a human (See Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d
1307, 1318 (Fed Cir. 2016) (“Furthermore, with the exception of generic
computer-implemented steps, there is nothing in the claims themselves that
foreclose them from being performed by a human, mentally or with pen and
paper.”).
Specifically, a human could determine “population density” by
visually counting the customers present in the geographical space as in step
[2] of claim 1. A human could also ask the customers whether they intend to
make a purchase that day, or ask to see if they have a rewards card
indicating they have shopped in the store before, and therefore establish
“purchase probability of the users” of step [3] of the claim. When the space
is determined to have reached a specific population density, a human could
make an offer to customers associated with items in another part of the retail
environment, such as offering a physical coupon to a user, as in steps [4] and
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[5] of the claim. Accordingly, we are not persuaded the Examiner erred in
determining that claim 1 recites mental processes.
Because we find that the Examiner correctly found that claim 1 recites
an abstract idea, we proceed to Step 2A, Prong Two, of the analysis.

Step 2A, Prong Two
Prong Two of Step 2A under the 2019 Eligibility Guidance asks
whether there are additional elements that integrate the exception into a
practical application. We must look at the claim elements individually and
“as an ordered combination” to determine whether the additional elements
integrate the recited abstract idea into a practical application. “A claim that
integrates a judicial exception into a practical application will 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.” Eligibility Guidance, 84
Fed. Reg. 54. Integration into a practical application is evaluated by
identifying whether there are additional elements individually, and in
combination, which go beyond the judicial exception. Id. at 54–55.
Appellant states that the claim uses specific technology to determine
“location data based on locations of a plurality of user devices” (step [1])
and then analyze this data to determine population density (step [2]) and
provide personalized offers to a user (steps [3] and [4]). Appeal Br. 11.
Appellant argues that the additional element, the technology used in step [2]
of the claim to determine the “plurality of user devices,” “applies and/or uses
the purported judicial exception in a meaningful way beyond generally
linking the use of the purported judicial exception to a particular
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technological environment, such that the claims as a whole are designed to
monopolize the purported exception.” Id. Appellant argues that the claim,
like Diehr, qualifies as a practical application, explaining that the
determination of population density and purchase probability recited in steps
[2] and [3] of the claim are like the rules in Diehr about when rubber is
cured, when then entice users to another part of the store by providing an
offer (steps [4] and [5]), similar to initiating the control signal to open the
mold as in Diehr. Appeal Br. 12–13.
Appellant’s argument does not persuade us that the Examiner erred in
the analysis of the claim under Step 2A, Prong Two. The beacon in step [1]
of the claim is used to determine the locations of a “plurality of user
devices” in the retail environment and then use the location information to
determine population density as in step [2] of the claim. The beacon is
merely automating a step which could be accomplished mentally by a human
observing the location of users in a store and determining the number of
users in a specific location. A judicial exception is not integrated into a
practical application when a computer is used as a tool to perform the
abstract idea. Eligibility Guidance, 84 Fed. Reg. 54. Here, the beacon is used
as a tool to automate the mental process and abstract idea of determining
user location and thus is not the type of technological improvement required
by Step 2A, Prong Two of the eligibility analysis.
Diehr is not dispositive in this case. In Diehr, the question was
whether the use of a well-known mathematical equation in a process of
curing synthetic rubber made the claims ineligible for a patent under 35
U.S.C. § 101. Diehr, 450 U.S. at 192–93. The court determined that it did
not because the equation was used in a physical process of “installing rubber
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in a press, closing the mold, constantly determining the temperature of the
mold, constantly recalculating the appropriate cure time through the use of
the formula and a digital computer, and automatically opening the press at
the proper time” to “lessen[ ] the probability of ‘overcuring’ or
‘undercuring’” and therefore there was no pre-emption of the equation but
rather a practical use of it. Diehr, 450 U.S. at 187. Here, the issue is very
different because the additional element in the claim is being used to
automate a process that could be accomplished mentally.
Step 2B
Because we determined that the judicial exception is not integrated
into a practical application, we proceed to Step 2B of the Eligibility
Guidelines, which asks whether there is an inventive concept. In making this
Step 2B determination, we must consider whether there are specific
limitations or elements recited in the claim “that are not well-understood,
routine, conventional activity in the field, which is indicative that an
inventive concept may be present” or whether the claim “simply appends
well-understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception,
indicative that an inventive concept may not be present.” Eligibility
Guidance, 84 Fed. Reg. 56 (footnote omitted). We must also consider
whether the combination of steps perform “in an unconventional way and
therefore include an ‘inventive step,’ rendering the claim eligible at Step
2B.” Id. In this part of the analysis, we 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-
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eligible application.” Alice, 573 U.S. at 217.
Appellant argues that the Examiner did not establish the combination
of steps in the claim were well-understood, routine, and conventional at the
time the application was filed. Appeal Br. 14. Specifically, Appellant states
that the Examiner did not provide evidence that the steps of determining a
population density using location based on a “plurality of user devices
relative to one or more beacons positioned in a retail environment” in a
geographical space (steps [1] and [2]]) and using this information to
determine an offer to entice users to move to a second geographical space
(steps [4] and [5]) were “known in the field.” Id.; see also id. at 13.
The Examiner responded that tracking the location of a mobile device
was known in the art, and provided evidence to establish this fact,
specifically citing Sharony.2 Ans. 7. Sharony discloses tracking mobile
devices using the Received Signal Strength Indicator (RSSI) method (at ¶ 6),
but the Examiner did not establish that Sharony, in determining the location
of a plurality of devices, uses the location data to “determining, in real time,
a population density for a geographical space in the retail environment by
analyzing the location data” and then uses this information “to entice[s] the
user to move from the geographical space to the second geographical space”
as recited in steps [2] and [4] of the claim.
The dissenting opinion states that “it was known in the prior art to use
beacons in a process of determining population density from the location
data produced by the beacons,” but as explained above, Sharony does not
use the beacon to determine population density and does not use the
determined density to entice customers to move to a different part of the

2 US 2005/0153713 A1, published July 14, 2005.
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store.
Under Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018), as
discussed in a USPTO memorandum, an additional element, or combination
of elements, “is not well-understood, routine or conventional unless the
examiner finds, and expressly supports a rejection in writing” with several
specifically mentioned sources. Memorandum (Apr. 19, 2018), “Changes in
Examination Procedure Pertaining to Subject Matter Eligibility, Recent
Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.),” from Robert
W. Bahr, Deputy Commissioner for Patent Examination Policy, p. 3–4
(“Berkheimer Memorandum”). The Examiner did not meet the burden under
Berkheimer of demonstrating that it was conventional at the time the
application was filed to accomplish the determination of population density
of “a plurality of users” using the additional element of a beacon.
Finding an inventive step in the use of the beacon to determine the
population density of a plurality of users and to entice a user to a second
geographical space is consistent with Thales Visionix, Inc. v. U.S., 850 F.3d
1343 (Fed. Cir. 2017). In Thales, the eligibility of claims “for tracking the
motion of an object relative to a moving reference frame” which comprised
inertial sensors was addressed. Thales, 850 F.3d at 1345. The court found
that the claims were eligible under § 101 because they “are directed to
systems and methods that use inertial sensors in a non-conventional manner
to reduce errors in measuring the relative position and orientation of a
moving object on a moving reference frame.” Id. at 1348. Here, Appellant
asserts that the beacon is used in a non-conventional manner to measure
population density of a plurality of users. The Examiner did not meet the
burden under Berkheimer of establishing that such an assertion is incorrect.
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Therefore, we are compelled to conclude that the Examiner did not meet the
burden under Berkheimer of demonstrating that it was well-understood,
routine, or conventional at the time the application was filed to accomplish
the determination of population density of “a plurality of users” using the
additional element of a beacon.
For the foregoing reasons, the § 101 rejection of claim 1 is reversed.
Independent claims 10 and 17, and dependent claims 2–9, 11–16, and 18–20
incorporate substantially the same limitations and are reversed, as well.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–20 101 Subject matter
eligibility
1–20

REVERSED

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KATZ, Administrative Patent Judge, dissenting.

I agree with my colleagues that the method of Appellant’s claim 1
recites an abstract idea, specifically a mental process, which is not integrated
into a practical application, for the reasons stated in the majority opinion.
Nevertheless, I respectfully disagree that the Examiner erred in
finding the method of Appellant’s claim 1 to be drawn to ineligible subject
matter. Specifically, I disagree that the Examiner erred in finding the
claimed methods include specific limitations or elements “that are not well-
understood, routine, conventional activity in the field” indicating that “an
inventive concept may be present,” rather than “simply append[ing] well-
understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception,
indicative that an inventive concept may not be present.” Eligibility
Guidance, 84 Fed. Reg. 56. Accordingly, I disagree that the Examiner erred
in rejecting Appellant’s claims under 35 U.S.C. § 101.
My colleagues determined that the Examiner failed to meet the burden
of demonstrating it was conventional at the time the application was filed to
accomplish the determination of population density of “a plurality of users”
using the additional element of a beacon. But the Examiner found that a
person of ordinary skill in the art would have been able to determine the
location of multiple humans in the vicinity of a beacon by merely observing
the humans and noticing the locations of the beacons and the locations of the
humans. See Ans. 4. The Examiner found further that Appellant’s claims
do not recite any particularity about the structure or use of the beacons,
reciting only the result achieved. See id. at 4 and 7 (citing Spec. ¶ 29). And
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the Examiner found that Sharony demonstrates that the use of multiple
tracking mobile devices or radio frequency tags to establish location was a
conventional technique at the time. See Final Act. 4–5.
I understand from the Examiner’s findings that it was known in the
prior art to use beacons in a process of determining population density from
the location data produced by the beacons, because the beacons indicate
location and density can be determined by one of ordinary skill from this
location data. The Examiner has set forth sufficient findings to support a
conclusion that the additional elements were well understood, conventional,
and routine, and Appellant provides insufficient evidence to demonstrate
that the Examiner’s determinations were erroneous.
Thus, the overall method claimed by Appellant is directed to the
abstract idea of determining the location of multiple humans in the vicinity
of a beacon with the conventional technology of beacons, determining the
population density by analyzing this location information, and using a
determined population density to provide an offer.
I disagree with my colleagues that because Sharony does not teach
each and every element of Appellant’s claimed method (determination of
population density of “a plurality of users” using the additional element of a
beacon), it is drawn to patentable subject matter. “[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 Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (holding
claims to a method for converting a hardware independent user description
of a logic circuit are not eligible because the use of assignment conditions as
an intermediate step in the translation process is an aid to a mental process
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and does not change the nature of the claims to being directed to more than
an abstract idea).
I also disagree with my colleagues that the facts of this case are
similar to those of Thales Visionix Inc. v. United States, 850 F.3d 1343 (Fed.
Cir. 2017). In Thales, the court found that the claims were eligible under
§ 101 because they did “not use the conventional approach of measuring
inertial changes with respect to the earth,” but rather changed the reference
frame to track the position and orientation of an object within a moving
platform, a method that did not require conventional input or calculations.
Id. at 1345. Thus, in Thales, the claims were directed to an unconventional
way of tracking the motion of an object. In contrast, Appellant’s claimed
method does not recite any unconventional use of beacons. Rather, as the
Examiner found, Appellant’s claimed method fails to recite any particularity
of how the beacons recited in claim 1 are used. See Ans. 4 and 7. Appellant
fails to explain how the use of such beacons would be unconventional, not
routine, or different from the teachings of Sharony.
I conclude that the Examiner met the burden required in Berkheimer
of demonstrating that it would have been well-understood, routine, or
conventional at the time the application was filed to accomplish the
determination of population density of “a plurality of users” using the
additional element of a beacon, because such beacons would have been used
in a conventional way to determine location. Accordingly, I respectfully
dissent from the reversal of the Examiner’s rejection.