Adobe Inc.

Patent Trials and Appeals Board

Apr 14, 2021

2020006685 (P.T.A.B. Apr. 14, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/351,223 11/14/2016 Carsten Ziegeler P6489-US 9311
108982 7590 04/14/2021
FIG. 1 Patents
116 W. Pacific Avenue
Suite 200
Spokane, WA 99201
EXAMINER
CIRNU, ALEXANDRU
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
04/14/2021 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):
Fig1Docket@fig1patents.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CARSTEN ZIEGELER, and ALLAERT JOACHIM DAVID
BOSSCHAERT

Appeal 2020-006685
Application 15/351,223
Technology Center 3600
____________

Before RICHARD M. LEBOVITZ, FRANCISCO C. PRATS, and
JAMIE T. WISZ, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
The Examiner rejected the claims under 35 U.S.C. § 112(b) as
indefinite, § 103 as obvious, and § 101 as lacking patent-eligibility.
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s
decision to reject the claims. 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. Appellant identifies the real party in interest as Adobe, Inc.
Appeal Br. 3.
Appeal 2020-006685
Application 15/351,223

2
STATEMENT OF THE CASE
The Examiner rejected claims 1–18, 20, and 21 as follows:
1. Claims 18, 20, and 21 under 35 U.S.C. § 112(b) as being indefinite
for failing to particularly point out and distinctly claim the subject matter
which the inventor regards as the invention. Non-Final Act. 3
2. Claims 1–5 and 7–10 under 35 U.S.C. § 103 as obvious in view of
Heath (US 8,138,930 B1, issued Mar. 20, 2012) (“Heath”) and Sushil et al.
(US 2012/0150619 Al, published June 14, 2012) (“Sushil”). Non-Final Act.
6.
3. Claim 6 under 35 U.S.C. § 103 as obvious in view of Heath, Sushil,
and Chalk (US 2014/0122215 A1, published May 1, 2014 (“Chalk”). Non-
Final Act. 11.
4. Claim 11 under 35 U.S.C. § 103 as obvious in view of Heath,
Sushil, and Arujunan et al. (US 8,675,112 B2, issued Mar. 18, 2014)
(“Arujunan”). Non-Final Act. 11.
5. Claims 12, 13, and 15–17 under 35 U.S.C. § 103 as obvious in
view of Heath and Robertson et al. (US 2014/0337137 A1, published Nov.
13, 2014) (“Robertson”). Non-Final Act. 12.
6. Claim 14 under 35 U.S.C. § 103 as obvious in view of Heath,
Sushil, and Chalk. Non-Final Act. 15.
7. Claims 18, 20, and 21 under 35 U.S.C. § 103 as obvious in view of
Heath, Chalk, and Robertson. Non-Final Act. 16.
8. Claims 1–18, 20, and 21 under 35 U.S.C. § 101 “because the
claimed invention is directed to a judicial exception (i.e., a law of nature, a
natural phenomenon, or an abstract idea) without significantly more.” Non-
Final Act. 3.
Appeal 2020-006685
Application 15/351,223

3
Independent claims 1, 12, and 18 are copied below (numbered
annotations have been added for referenced to the limitations in each claim):
1. In a digital medium environment in which data from at
least one sensor is used to select a marketing campaign, a
method comprising:
[1] receiving, by at least one computing device, sensor
data from the at least one sensor at a physical store that
describes an environmental condition of a physical environment
in a vicinity of the physical store;
[2] selecting, by the at least one computing device, the
marketing campaign from a plurality of potential marketing
campaigns maintained in a storage device based on [2a] the
environmental condition and [2b] availability of the good or
service at the physical store; and
[3] outputting, by the at least one computing device, the
marketing campaign for exposure to customers of the physical
store.

12. In a digital medium marketing campaign
environment, a system comprising:
at least one sensor;
a plurality of output devices;
a processing system; and
a computer-readable storage medium having a plurality
of marketing campaigns and instructions stored thereon that,
responsive to execution by the processing system, causes the
processing system to perform operations comprising:
[1] receiving sensor data from the at least one sensor;
[2] determining an environmental condition of a physical
environment of a physical store based on the sensor data;
[3] selecting a marketing campaign from the plurality of
marketing campaigns based on the environmental condition;
[4] selecting an output device from the plurality of output
devices based on the environmental condition; and
[5] causing output of the selected marketing campaign by
the selected output device.

Appeal 2020-006685
Application 15/351,223

4
18. At least one computer-readable storage media device
comprising instructions stored there that, responsive to
execution by a processing system, cause the processing system
to perform operations including:
[1] receiving sensor data from at least one environmental
sensor disposed in a vicinity of a physical store;
[2] determining a number of users in the vicinity of the
physical store based on the sensor data;
[3] generating an output from a storage device that
includes the marketing campaign as selected from a plurality of
marketing campaigns based on the number of users;
[4] selecting an output device from a plurality of output
devices for the marketing campaign based on an environmental
condition indicated by the sensor data; and
[5] outputting the marketing campaign for output by the
selected output device based on the environmental condition.

REJECTION 1 BASED ON SECTION 112(B)
The Examiner found that the recitation of “computer-readable storage
media device” in claims 18, 20, and 21 is indefinite. Non-Final Act. 3. The
Examiner found that the term is not defined in the Specification, but found
that the Specification, citing paragraph 51, discloses that “computer readable
storage media” may refer to “media and/or devices.” Non-Final Act. 3. The
Examiner stated that the “‘or’ seems to indicate that ‘media’ can be a
separate entity than a ‘device’ such that the claimed ‘storage media device’
could be a subset of the broader term ‘computer readable storage medium,’”
but the Specification does not “clearly establish what the line is between
‘media’ and ‘device’, since they are all included within the term ‘computer
readable storage media’.” Id.
We shall reverse this rejection. The Specification uses the terms
“media” and “device” roughly interchangeably:
Appeal 2020-006685
Application 15/351,223

5
“Computer-readable storage media” may refer to media and/or
devices that enable persistent and/or non-transitory storage of
information in contrast to mere signal transmission, carrier
waves, or signals per se. . . . The computer-readable storage
media includes hardware such as volatile and nonvolatile,
removable and non-removable media and/or storage devices
implemented in a method or technology suitable for storage of
information such as computer readable instructions, data
structures, program modules, logic elements/circuits, or other
data. Examples of computer-readable storage media may
include, but are not limited to, RAM, ROM, EEPROM, flash
memory or other memory technology, CD-ROM, digital
versatile disks (DVD) or other optical storage, hard disks,
magnetic cassettes, magnetic tape, magnetic disk storage or
other magnetic storage devices, or other storage device, tangible
media, or article of manufacture suitable to store the desired
information and which may be accessed by a computer.
Spec. ¶ 51 (emphasis added).
The skilled worker would understand that any storage device or media
that “enable[s] persistent and/or non-transitory storage of information”
would meet the recited limitation of a “computer-readable storage media
device.” We therefore find that the term is reasonably precise and informs
the public of the metes and bounds of the claim. See In re Packard, 751 F.3d
1307, 1313 (Fed. Cir. 2014).

REJECTION 2 BASED ON OBVIOUSNESS
Claim 1 uses data from at least one sensor to select a marketing
campaign. The first step [1] of the claim receives data from at least one
sensor at a physical store about the physical environment around the store.
The second step selects a marketing campaign based on [2a] the
environmental condition and [2b] availability of the good or service at the
Appeal 2020-006685
Application 15/351,223

6
store. In the last step [3] of the clam, the campaign is output for exposure to
customers of the store. The steps are performed by a computing device.
The Examiner found that Heath describes substantially all the steps of
claim 1, but not step [2b] of selecting a marketing campaign based on the
availability of a good or service at the store. Non-Final Act. 7. To meet this
limitation of the claim, the Examiner further cited Sushil, finding that Sushil
describes selecting a marketing campaign based on availability of a good or
service at the physical store. Non-Final Act. 8. The Examiner determined it
would have been obvious to one of ordinary skill in the art at the filing of the
application to modify Heath with Sushil’s teachings “so that a real-time
selling strategy can take into account real-time product/service inventory.”
Id.
Appellant contends that Sushil does not describe limitation [2b] of
claim 1 of “availability of the good or service at the physical store.” Appeal
Br. 35. Appellant states that “Sushil describes providing group offers to
online or in-store customers, and mentions that conventional techniques do
not consider inventory.” Appeal Br. 36. Appellant argues that the “mere
mention of conventional techniques failing to consider inventory of a
product when running promotions, does not suggest that marketing
campaigns are selected ‘based on the availability of the good or service’” as
recited step [2b] of claim 1. Id. Appellant states that Sushil does not suggest
that “inventory” corresponds to “the availability of the good or service at the
physical store” as recited in claim 1. Reply Br. 13. Further, Appellant
contends that “Sushil’s mention of inventory can relate to online inventory
instead of availability ‘at the physical store,’ as claimed.” Appeal Br. 36.
Appeal 2020-006685
Application 15/351,223

7
Appellant asserts that using Sushil to meet step [2b] of the claim is
“impermissible hindsight.” Appeal Br. 37.
We do not agree with Appellant that the Examiner erred. Sushil
discloses that “Retailers, in an attempt to increase the number of online
sales, may run various types of promotions, such as discount coupon codes,
free shipping, etc.” Sushil ¶ 2. Sushil further discloses that “these types of
promotions are static in nature and do not necessarily take into account the
real-time attributes/dynamics (e.g., simultaneous presence of customers
online and/or in a physical store, quantity of product remaining in the
inventory, strategy in selling current inventory) thereby negating the
effectiveness of these promotions to translate into sales.” Sushil ¶ 3
(emphasis added). Sushil makes these same statements in the “Detailed
Description.” Sushil ¶ 33. Sushil also discloses:2
In step 402, promotions rule engine 303 obtains information
regarding the product being viewed by users/customers online,
on mobile devices 101 and in the physical store. For example,
promotions rule engine 303 may obtain the current inventory of
the product, the product price over time, the product inventory
strategy (e.g., need to sell the current inventory of leather shoes
before the monsoon season), etc. As explained in further detail
below, the information acquired by promotions rule engine 303
is used to generate an appropriate group offer as well as if such
a group offer should be made to customers online and/or users
of mobile device 101 and/or customers in the physical store
whose presence are being tracked in step 401.
Sushil ¶ 44.

2 Cited by the Examiner in the Answer on page 12. The pages of the Answer
are unnumbered. We numbered them, beginning with “1” on the title page of
the Answer.
Appeal 2020-006685
Application 15/351,223

8
Sushil’s acknowledgement in the Background section that the
effectiveness of sales promotions is negated by retailers’ failure to take into
account the “quantity of product remaining in inventory” and adopt a
“strategy in selling current inventory” (Sushil ¶¶ 2, 3) is a suggestion that
quantity of goods in inventory should be taken into account in marketing
campaigns. This conclusion is consistent with Sushil mentioning the same
deficiency in the “Detailed Description” (Sushil ¶ 33) and further explaining
that the promotions rule engine “may obtain the current inventory of the
product, the product price over time, the product inventory strategy (e.g.,
need to sell the current inventory of leather shoes before the monsoon
season), etc.” (Sushil ¶ 44). Therefore, Sushil identifies a deficiency in the
prior art and provided a solution to it, namely taking the availability of
goods in inventory as a basis to devise a sales promotion. Sushil is not only
mentioning deficiencies in “conventional” marketing “techniques” as
asserted by Appellant (Appeal Br. 36), but Sushil is also describing a way to
address the deficiency by “obtain[ing] current inventory of the product,”
such as the “need to sell the current inventory of leather shoes before the
monsoon season,” and designing a marketing campaign to sell the product.
Sushil ¶ 44.
Appellant states the inventory described by Sushil is not at a physical
store as required by step [2b] of claim 1. Appeal Br. 36. We do not agree.
First, Sushil’s description of “inventory” is broad enough to include
and reasonably suggest inventory at a physical store. Second, Sushil
expressly discloses targeting “customers in the physical store whose
presence are being tracked” (Sushil ¶ 44), which reasonably suggests that the
availability of the goods in the store would be taken into account so that the
Appeal 2020-006685
Application 15/351,223

9
customer can obtain the goods at the store, itself. “A person of ordinary skill
is also a person of ordinary creativity, not an automaton.” KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 421 (2007). Because we are not persuaded that
the Examiner erred in rejecting claim 1, we affirm the obviousness rejection
of the claim based on Heath and Sushil. Claims 2–5 and 7–10 were not
argued separately and fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv).

REJECTION 5 OF CLAIM 12 BASED OBVIOUSNESS
Claim 12 comprises a computer-readable storage medium that has a
plurality of marketing campaigns and instructions to perform a market
campaign. The first step [1] is receiving data from a sensor and then, in step
[2], determining the environmental condition of a physical environment of a
physical store based on the sensor data. A marketing campaign and output
device are selected based on the environmental condition in steps [3] and
[4], respectively. The marketing campaign is output on the selected device in
the last step [5] of claim 12.
The Examiner found that Heath describes substantially all the steps of
claim 12, but not selecting an output device from the plurality of output
devices based on the environmental condition and causing output on that
device as recited in steps [4] and [5] of the claim. Non-Final Action 13–14.
However, the Examiner found that Robertson describes selecting a billboard
for advertising bases on environmental conditions, and determined it would
have been obvious to one of ordinary skill in the art at the time the
application was filed to incorporate these features into Heath to display the
marketing campaign on a billboard. Non-Final Act. 14.
Appellant states that “Robertson describes that a seller may provide
attributes describing a billboard such as weather patterns near the billboard,
Appeal 2020-006685
Application 15/351,223

10
and that multiple billboards may be packaged together based on these
attributes,” but argues that “merely packaging together billboards based on
seller-provided attributes does not correspond” to steps 4 and 5 of the claim.
Appeal Br. 40. Appellant contends that Robertson’s reason for packaging
together billboards “is for the purpose of selling a package of billboards”
and not causing output of a selected marketing campaign on a selected
device. Id. Appellant also argues Robertson’s purpose “would be defeated if
Robertson output a marketing campaign directly to a packaged billboard”
because “if content was automatically displayed on Robertson’s group of
billboards, then sellers would not be able to offer the billboard to marketers
for sale.” Id. Appellant also argues that the seller submits the attributes, and
not a sensor as required by the claim. Appeal Br. 41.
Appellant’s arguments do not persuade us that the Examiner erred in
rejecting claim 12 as obvious in view of Heath and Robertson.
As found by the Examiner, Robertson describes an “inventory
management module 202 [that] allows billboard owners, or sellers 106, to
provide demographic and location information, and to identify terms and
policies” for their billboards. Robertson ¶ 21. Robertson further discloses:
[A] seller 106 submits attributes describing the inventory of
billboards. The attributes for billboard 108 may include
physical characteristics of the billboard or the physical
environment proximate to the billboard, such as the height and
width of the billboard 108, the proximity of the billboard 108 to
other businesses, the amount of daily traffic that passes by the
billboard 108, general traffic conditions near the billboard 108,
weather patterns or weather conditions near the billboard 108.
Robertson ¶ 21.
The disclosure in Robertson cited by the Examiner expressly
describes attributes of the billboards, such an environmental conditions
Appeal 2020-006685
Application 15/351,223

11
(“weather patterns or weather conditions near the billboard 108”), which are
listed in a billboard inventory. The advertiser who purchases the billboard
space is doing so based on the billboard attributes. Robertson expressly
explains that “an advertiser 104 defines a campaign policy by first selecting
one or more billboards 108 in various locations and/or having various
attributes to display the advertiser's 104 digital content.” Robertson ¶ 29.
While the billboards may be packaged together based on attributes
(Robertson ¶ 29), we do not see how packaging billboard’s together to
facilitate their sale to advertisers, defeats the teaching in Robertson that
billboards are selected based on attributes. Environmental conditions are one
such attribute expressly disclosed by Robertson (at ¶ 21). Appellant did not
persuasively explain how displaying an ad campaign on a billboard selected
for its location in a specific environment would defeat Robertson’s purpose.
The purpose of Robertson is to sell billboard space to advertisers to display
an advertising campaign:
Described herein are methods and systems for providing an
advertising campaign on a digital billboard. In an embodiment,
information is established about at least one digital billboard
operated by a seller, the established information including a
geographic location of the digital billboard and an available
inventory formed of time intervals in which digital content may
be displayed by the digital billboard. Pricing guidelines are
established for the seller, indicating pricing requirements for the
available inventory.
Robertson ¶ 4.
Appellant also argues that Robertson does not use a sensor to gather
the environmental information. Appeal Br. 41. However, the Examiner
relied on the teaching in Heath for the claimed sensor. Appellant did not
identify a deficiency in the Examiner’s rationale for combining Heath and
Appeal 2020-006685
Application 15/351,223

12
Robertson in which a sensor is provided to determine the environmental
conditions, rather than the billboard seller manually providing this
information to the inventory manager. It is more efficient to use the sensor
and Robertson expressly explains how.
Because we are not persuaded that the Examiner erred in rejecting
claim 12, we affirm the obviousness rejection of the claim based on Heath
and Robertson. Claims 13 and 15–17 were not argued separately and fall
with claim 12. 37 C.F.R. § 41.37(c)(1)(iv).

REJECTION 7 OF CLAIM 18 BASED ON OBVIOUSNESS
Claim 18 is directed to a computer-readable storage media device
comprising instructions that perform operations or steps [1]–[5] of the claim.
In the first step [1], sensor data from at least one environmental sensor
disposed in a vicinity of a physical store is received. A number of users in
the store is determined based on the sensor data (step [2]) and a marketing
campaign output is selected based on the number of users (step [3]). An
output device is selected based on an environmental condition indicated by
the sensor data and a marketing campaign is output on the selected output
device based on the environmental condition as recited in steps [4] and [5],
respectively.
The Examiner found that Heath and Robertson describes the steps in
claim 18, as explained above, but that these publications do not describe
determining the number of users in a physical store. Non-Final Act. 17, 18.
However, the Examiner found that Chalk describes determining the number
of users in the vicinity of a store “that promotions can be adjusted based on
Appeal 2020-006685
Application 15/351,223

13
the determined traffic,” making it obvious to incorporate this limitation into
Heath. Non-Final Act. 17.
Appellant makes the same unpersuasive arguments based on the
purported deficiencies in Robertson. Appeal Br. 43–44. Appellant further
argues that the environmental sensor can send data “indicative of a heavy
thunderstorm in the vicinity of the store” which would allow the selection of
marketing campaign on the store’s website that recognizes customers are
unlikely to visit the store, a “functionality [that] is simply not possible in the
asserted references, because the references fail to describe selecting an
output device based on an environmental condition indicated by sensor
data.” Appeal Br. 44.
We disagree. Robertson teaches selecting a device (the billboard)
based on environmental conditions. Robertson ¶ 21. Robertson doesn’t
describe using a sensor to do so, but Heath describes using a sensor to gather
information about environmental conditions:
In general, in one aspect, information about an environmental
condition of a remote user who is accessing a network is
received at a server, an advertisement based on the
environmental condition is identified at the server, the
information about the environmental condition being derived
from an output of a sensor located at the remote user, and the
advertisement is provided to the user through the network.
Heath 2: 1–7.
In general, in another aspect, information about an
environmental condition of a remote device is received, the
environmental condition being determined based on a signal
output from a sensor of the remote device or a sensor coupled
to the remote device; an advertisement is identified based on the
environmental condition; and the advertisement is provided to
the remote device.
Heath 2: 20–26.
Appeal 2020-006685
Application 15/351,223

14
The Examiner explained that it would have been obvious to place the
sensor at the billboard to detect environmental conditions, and choose the
billboard based on the environmental data gather by the sensor. Non-Final
Act. 14. Appellant did not identify error in the Examiner’s reasoning to
combine the references, but rather attacked Robertson individually when it
was cited in combination with Heath. “Non-obviousness cannot be
established by attacking references individually where the rejection is based
upon the teachings of a combination of references. . . . [The reference] must
be read, not in isolation, but for what it fairly teaches in combination with
the prior art as a whole.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir.
1986).
Because we are not persuaded that the Examiner erred in rejecting
claim 18, we affirm the obviousness rejection of the claim based on Heath,
Robertson, and Chalk. Claim 20–21 were not argued separately and fall with
claim 18. 37 C.F.R. § 41.37(c)(1)(iv).

REJECTIONS 3, 4, and 6
Appellant did not separately argue Rejections 3, 4, and 6 listed above.
The claims in these rejections, claims 6, 11, and 14, therefore fall with
claims 1, 12, and 18.

PATENT ELIGIBILITY
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.
Appeal 2020-006685
Application 15/351,223

15
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. Pty. Ltd. 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) (citation and
quotation marks omitted). 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
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
(citation omitted).
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)
Appeal 2020-006685
Application 15/351,223

16
(“Eligibility Guidance”) (we cite to the Federal Register where the
Eligibility Guidance was published). 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.” Eligibility
Guidance, 84 Fed. Reg. (Step 2A, 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. Eligibility Guidance, 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.

Discussion
Appellant focused their arguments on claim 12 which is directed to a
system. The system is an article of manufacture and one of the broad
statutory categories of patent-eligible subject matter listed in 35 U.S.C.
§ 101. Therefore, following the first step of the Mayo/Alice analysis, we find
Appeal 2020-006685
Application 15/351,223

17
that the claim is directed to a statutory class of invention. We thus proceed to
Step 2A, Prong One, of the 2019 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 Eligibility
Guidance directs examiners to search each limitation in the claim to
determine whether it recites abstract an abstract idea. Eligibility Guidance,
84 Fed. Reg. 54.
The Examiner found that the steps of claim 12 recite advertising
activities/behaviors which represents a method of organizing human activity
that “the Courts and by the 2019 Patent Eligibility Guidance” identify as an
abstract idea. Non-Final Act. 4. The Examiner also found that the step of
determining an environmental condition and selecting an output device
could be performed mentally, without a sensor, and therefore is a mental
process, another category of abstract ideas listed in the Eligibility Guidance.
Non-Final Act. 5.
Appellant contends that the claimed subject matter does not pertain to
methods of organizing human activity because it utilizes devices and
operations of these devices, such as a sensor, output devices, a processing
system, and a computer-readable storage medium. Appeal Br. 19. Appellant
argues that the operations performed using the sensor and devices are not
fundamental economic principles or practices, such as hedging, insurance,
and mitigating risk. Appeal Br. 20. Appellant states that simply because the
Appeal 2020-006685
Application 15/351,223

18
claim involves “marketing campaigns,” does not mean the claim recites a
method of organizing human activity because the operations recited in the
claim are “executable in a computing environment by specific devices and
recites control of those specific devices within the computing environment.”
Id.
Appellant’s argument does not persuade us that the Examiner erred.
Specifically, the Eligibility Guidance lists “advertising, marketing or sales
activities or behaviors” as an example of “Certain methods of organizing
human activity.” 84 Fed. Reg. 52. Claim 12 recites “[3] selecting a
marketing campaign from the plurality of marketing campaigns based on the
environmental condition,” “[4] selecting an output device from the plurality
of output devices based on the environmental condition;” and then “[5]
causing output of the selected marketing campaign by the selected output
device.” These steps are marketing activity because they involve the
selection of a marketing campaign and output devices on which to display
the campaign to the customer. The sensor for the environmental conditions
is employed to tailor the campaign to the physical store. While sensors,
devices, etc., are using the selection of the campaign, this does not change
the focus of the claim on a method of marketing to humans and hence a
human activity. There is no indication from either the Eligibility Guidance
or court cases that an actual human actor must participate in the claim for it
to be classified as a method of organizing human activity. Rather, a claim
recites a method of organizing human activity when the claim is performed,
for example, for the purpose of advertising or marketing to a human. In
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014), the court
Appeal 2020-006685
Application 15/351,223

19
found a method of advertising to be an abstract idea even though it was
performed on the internet using steps that did not involve a human actor.
The focus of the claim is on tailoring the content of the marketing
campaign based on the environmental conditions at the physical location of
the store. As discussed in Intellectual Ventures I LLC v. Capital One Bank
(USA), 792 F.3d 1363, 1369 (Fed. Cir. 2015), “tailoring content based on the
viewer’s location or address” is “‘a fundamental . . . practice long prevalent
in our system . . .’” Fundamental practices are listed in the Eligibility
Guidance as “Certain methods of organizing human activity.” Consequently,
for this reason, we conclude that the Examiner properly found the claim to
recite an abstract idea.
The steps also recite mental processes because a human could
determine environmental conditions as recited in step 2 of claim 12 and use
that information to select a marketing campaign and output device as in
steps 3 and 4 of the claim. While these steps are performed by a processing
system, “computational methods which can be performed entirely in the
human mind” are still abstract ideas. CyberSource, 654 F.3d at 1373. See
also Intellectual Ventures I LLC), 792 F.3d at 1370–71 (Fed. Cir. 2015)
(“Steps that do nothing more than spell out what it means to ‘apply it on a
computer’ cannot confer patent-eligibility. Alice, 134 S.Ct. at 2359.”).
Accordingly, we conclude that the Examiner properly found that the
claims recite an abstract idea, and therefore proceed to Step 2A, Prong Two,
of the Eligibility Guidance.

Appeal 2020-006685
Application 15/351,223

20
Step 2A, Prong Two
Prong Two of Step 2A under the Eligibility Guidance asks whether
there are additional elements that integrate the exception into a practical
application. Integration into a practical application is evaluated by
identifying whether there are additional elements individually, and in
combination, which go beyond the judicial exception. Eligibility Guidance,
84 Fed. Reg. at 54–55. As explained in the Eligibility Guidance, integration
may be found when an additional element “reflects an improvement in the
functioning of a computer, or an improvement to other technology or
technical field” 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 environment, such that the claim as a whole is
more than a drafting effort designed to monopolize the exception.” Id. at 55.
Appellant argues that the features recited in claim 12 provide a
“technological improvement” that distinguishes claim 12 from an abstract
idea. Appeal Br. 20. We note in making this argument, Appellant has made
this argument under Step 2A, Prong One, which involves the determination
of whether a claim recites an abstract idea and not whether the claim
provides a technological improvement. For clarification, we point Appellant
to 84 Fed. Reg. 55 of the Eligibility Guidance which addresses technological
improvements under Step 2A, Prong Two.
The improvement identified by Appellant is using the sensor to detect
environmental conditions and choosing an advertising campaign based on
the environmental conditions detected by the sensor. Appeal Br. 21. As
explained in the Specification, “[t]his way, the campaign selection system
may quickly adapt to changes in environmental conditions of a physical
Appeal 2020-006685
Application 15/351,223

21
environment of the physical store, which is not possible using conventional
techniques.” Spec. ¶ 16. Appellant states that the “ability to dynamically
react to changing environmental conditions is simply not feasible for
humans to perform without the improvements in the computer-related
technology recited in the claims.” Appeal Br. 21. Appellant further argues,
citing Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc., 880 F.3d
1356 (Fed Cir. 2018), that the claim “improve the efficiency of a computing
device by providing purveyors of products and services at physical stores the
ability to leverage sensors to detect changing environmental conditions in or
around such physical stores and based on this dynamically deploy marketing
campaigns through output device control.” Appeal Br. 22. Appellant cites to
the Specification to show that the claims address “a problem with
conventional techniques” (Appeal Br. 22) that “current conditions in or
around the store are constantly changing,” as well as “desires and attitudes
of customers,” making “traditional marketing campaign selection techniques
. . . slow to adapt to current conditions in or around a store.” Spec. ¶ 1. The
Specification explains that the sensor detects environmental conditions of
the physical environment of the store and uses this information to select a
marketing campaign. Spec. ¶ 4. “For example, if the weather is nice (e.g.,
warm and not-raining) outside a more attractive marketing campaign (higher
discount) may be provided than if the weather was poor, e.g., cold and
raining.” Id.
Appellant also analogizes the claims to DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1255 (Fed. Cir. 2014), arguing that the
steps in the claim “clearly indicates solving a digitally rooted challenge, with
specific steps involved in receiving sensor data, determining an
Appeal 2020-006685
Application 15/351,223

22
environmental condition, selecting an output device based on the
environment condition and causing output the selected marketing campaign
by the selected output device.” Appeal Br. 26.
Appellant further explains that upon receiving the sensor data,
“campaign selection module selects an appropriate campaign, and the
appropriate campaign is exposed to customers of the store,” and that by
doing so, “the campaign selection module may quickly adapt to changes in
environmental conditions of a physical store.’” Appeal Br. 27 (citing Spec.
¶ 16). Appellant concludes that “[t]his problem simply cannot be solved by
humans without the computing technology recited in claim 12.” Appeal Br.
27.
The solution to the marketing problem identified in the Specification
is to use a sensor to detect changes in the environment. We agree with
Appellant that this is an additional element in the claim beyond the judicial
exception. The question is whether the use of the sensor takes the idea of
selecting a marketing campaign based on an environmental condition out of
the realm of abstract ideas.
In our opinion, it does not. The distinction between when a data-
gathering sensor confers eligibility on a claim and when it does not was
articulated in iLife Technologies, Inc. v. Nintendo of America, Inc., 2021 WL
117027, *1 (Fed. Cir. 2021). In iLife, the claims were directed to a system
comprising a sensor “that senses dynamic and static accelerative
phenomena” of a body and then processes that information to “determine
whether said evaluated body movement is within environmental tolerance.”
Appeal 2020-006685
Application 15/351,223

23
Id. The court, in finding the claim ineligible for a patent because it recited an
abstract idea, explained:
iLife argues claim 1 is not directed to an abstract idea because it
recites a physical system that incorporates sensors and
improved techniques for using raw sensor data like the claims
we held eligible in Thales Visionix Inc. v. United States, 850
F.3d 1343 (Fed. Cir. 2017) and CardioNet, LLC v. InfoBionic,
Inc., 955 F.3d 1358 (Fed. Cir. 2020). But in Thales, the claims
recited a particular configuration of inertial sensors and a
specific choice of reference frame in order to more accurately
calculate position and orientation of an object on a moving
platform. 850 F.3d at 1349. We held the claims were not
directed to an abstract idea because they sought to protect “only
the application of physics to the unconventional configuration
of sensors as disclosed.” Id. Likewise, the claims in CardioNet
were not abstract because they focused on a specific means or
method that improved cardiac monitoring technology,
improving the detection of, and allowing more reliable and
immediate treatment of, atrial fibrillation and atrial flutter. 955
F.3d at 1368. In contrast, claim 1 of the ’796 patent is not
focused on a specific means or method to improve motion
sensor systems, nor is it directed to a specific physical
configuration of sensors. It merely recites a motion sensor
system that evaluates movement of a body using static and
dynamic acceleration information.
iLife, *2.
Here, like the claims in iLife, and in contrast to the technological
improvements recited in the claims of Thales and CardioNet, rejected claim
12 is not focused on an improvement to sensor technology. The claim recites
“receiving sensor data from the at least one sensor,” but does provide any
detail on the sensor or how the data is collected. The Specification refers to
sensors, such as weather sensors, temperature sensors, rain sensors,
population monitoring devices, etc. (Spec. ¶¶ 13, 14, 20, 25), but other than
disclose that they can have communication capability (id. at ¶ 14), does not
Appeal 2020-006685
Application 15/351,223

24
provide any guidance on how the sensor detects the environment. The claim
also does not recite a specific configuration or arrangement for the sensor as
in Thales, or a functionality that is different from how a sensor generically is
used.
The sensor recited in claim 12 is used to gather information about the
environment. Indeed, this step could be performed mentally by a human
reporting the environmental conditions. Merely using a technology to
automate a step that could be accomplished manually is insufficient to
confer patent eligibility on 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); Intellectual Ventures I, 838 F.3d at 1318
(“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.”). We acknowledge
that the sensor is not a computer. However, like the computer in Versata and
Intellectual Ventures I, the sensor is a generic component that provides
generic functionality, namely automatically collecting information about
environmental conditions, rather than requiring a human to do so.
The data-gathering step provided by the sensor is insufficient to make
a patent-ineligible claim eligible, even though physical steps are involved.
As explained in CyberSource, 654 F.3d at 1370, “even if some physical
steps are required to obtain information from the database (e.g., entering a
query via a keyboard, clicking a mouse), such data-gathering steps cannot
alone confer patentability.”
Appeal 2020-006685
Application 15/351,223

25
Appellant also analogizes their claims to DDR. We do not agree that
the rejected claims are like those in DDR. In DDR, a hybrid webpage was
automatically generated in the claim “that combines visual ‘look and feel’
elements from the host website and product information from the third-party
merchant’s website related to the clicked advertisement” to retain customers
on the host website while “provid[ing] visitors with the opportunity to
purchase products from the third-party merchant without actually entering
that merchant’s website.” DDR, 773 F.3d at 1257–1258. The claim in DDR,
773 F.3d at 1249–1250, comprised an “active link,” which when activated,
identifies the “source page” on which the link has been activated, retrieves
the source data from the source page, and “using the data retrieved,
automatically generate and transmit to the web browser a second web page
that displays: (A) information associated with the commerce object
associated with the link that has been activated, and (B) the plurality of
visually perceptible elements visually corresponding to the source page.” In
this way, the court found that the claims “address the problem of retaining
website visitors that, if adhering to the routine, conventional functioning of
Internet hyperlink protocol, would be instantly transported away from a
host’s website after ‘clicking’ on an advertisement and activating a
hyperlink.” Id. at 1257. The court found that the distinguishing feature of the
claims was that that they “specify how interactions with the Internet are
manipulated to yield a desired result—a result that overrides the routine and
conventional sequence of events ordinarily triggered by the click of a
hyperlink.” Id. at 1258. Specifically, the claims in DDR recited a specific
element that provided a functionality to the claimed system and method,
serving as the basis for patent eligibility.
Appeal 2020-006685
Application 15/351,223

26
Here, Appellant has not persuasively identified an additional element
in the claim that is analogous to the “link” providing a hybrid webpage, the
pivot of eligibility in DDR. The sensor in claim 12 simply gathers
information about the environment which is then used to select a market
campaign and output device. The sensor operates generically to gather
environment data. The functionality it provides is generic in contrast to the
functionality provided by the hyperlink in DDR.
Claim 12 does not describes how the sensor data is specifically used
to select the campaign and the output device. As held in McRO, Inc. v.
Bandai Namco Games Am. Inc., 837 F.3d 1299, 1315 (Fed. Cir. 2016), we
must “look to whether the claims . . . focus on a specific means or method
that improves the relevant technology or are instead directed to a result or
effect that itself is the abstract idea and merely invoke generic processes and
machinery.” Dropbox, Inc. et al. v. Synchronoss Technologies, Inc., 815 Fed.
Appx. 529, 533 (Fed. Cir. 2020) (nonprecedential), further explained:
The patent has to describe how to solve the problem in a
manner that encompasses something more than the “principle in
the abstract.” See [ChargePoint, Inc. v. SemaConnect, Inc., 920
F.3d 759, 769 (Fed. Circ. 2019)] (explaining that an invention
may not be patent eligible if the “claims ‘were drafted in such a
result-oriented way that they amounted to encompassing the
‘principle in the abstract’ no matter how implemented’”
(quoting Interval Licensing LLC v. AOL, Inc., 896 F.3d 1335,
1343 (Fed. Cir. 2018))).
Dropbox, 815 Fed. Appx. at 533.
The steps for selecting the marketing campaign and output device in
claim 12 are recited in a “result-oriented way.” Specifically, the claim does
not recite how the selection using the sensor data is implemented. The steps
state the desired result, but not how the result is accomplished.
Appeal 2020-006685
Application 15/351,223

27
Appellant states that the automatic display of the marketing campaign
improves the specific manner of automatically displaying a marketing
campaign based on a detected environmental condition improves upon prior
systems by quickly adapting to “changes in environmental conditions of a
physical environment of [a] physical store.” Appeal Br. 29 (citing Spec.
¶16).
To support its position, Appellant cites Example 37 of the Subject
Matter Eligibility Examples (Jan. 7, 2019) (“2019 SMEE”).3 Claim 1 of
Example 37 was determined to be patent-eligible because “the additional
elements recite a specific manner of automatically displaying icons to the
user based on usage which provides a specific improvement over prior
systems, resulting in an improved user interface for electronic devices.”
2019 SMEE 2. Although the step carried out by the processor was
determined to be a mental step (“determining, by a processor, the amount of
use of each icon over a predetermined period of time”), the additional
element of a graphical user interface (“GUI”) that received input and then
resulted in the movement of icons “to a position on the GUI closest to the
start icon of the computer system based on the determined amount of use,”
was determined to be an improvement in GUI technology. Id. Here, the
sensor does not change how the marketing campaign is displayed to the user.
The device is selected and the marketing campaign is output on it in step [5]
of the claim without any improvement to how the campaign is displayed,

3
https://www.uspto.gov/sites/default/files/documents/101_examples_37to42_
20190107.pdf (last accessed Feb. 12, 2021).
Appeal 2020-006685
Application 15/351,223

28
unlike Example 37 where the detection of icon usage changed how the icons
were displayed to the user.
Consequently, for the reasons discusses above, we are not persuaded
that using a sensor to select a marketing campaign is sufficient to integrate
the abstract idea into a practical application.
Because we find that the abstract idea is not integrated into a practical
application under Step 2, Prong Two, we proceed to Step 2B of the analysis.

Step 2B
Step 2B of the Eligibility Guidance 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.” 84 Fed.
Reg. 56 (footnote omitted).
Appellant argues that the “specific features recited in claim 12 are not
well-understood, routine, or conventional activity” Appeal Br. 30. Appellant
argues that the Examiner has not complied with the Berkheimer memo. Id. at
31. This argument is not persuasive. The rejections described in detail above
based on the cited Heath and Robertson publications, establish that the use
of a sensor to detect environmental conditions and selecting a marketing
campaign based on the environmental conditions was known at the time the
application was filed. As stated in Heath: “This document describes a system
for allowing advertisers to target on-line advertisements based on
Appeal 2020-006685
Application 15/351,223

29
environmental factors of end users.” Heath 1:52–53. Heath describes a
sensor to detect the environmental conditions. Heath 2:1–12; 3:4–9, 20–26.
Likewise, Robertson describes the concept of selecting an output device by
the environmental condition. Robertson ¶ 21. It is not inventive to automate
the collection of the environmental data used to select the campaign and
device because the sensor is being used for its well-understood and
conventional functionality as established by Heath’s disclosure.
Consequently, we find that the Examiner did not err in determining that the
claim as whole recited routine and conventional elements to target customers
at a physical store using a selected output device based on the environmental
conditions.

Claims 1 and 18
Appellant’s arguments regarding claims 1 and 18 appear to be
essentially redundant to the arguments made for claim 12. Appeal Br. 31–34.
Appellant did not argue a specific limitation in these claims that would
warrant a different outcome from claim 12.

Summary
For the foregoing reasons, we affirm the rejection of clams 1–18, 20,
and 21 as lacking patent eligibility.

Appeal 2020-006685
Application 15/351,223

30
CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
18, 20, 21 112(b) Indefiniteness 18, 20, 21
1–5, 7–10 103 Health, Sushil 1–5, 7–10
6 103 Heath, Sishil,
Chalk
6
11 103 Heath, Sushil,
Arujunan
11
12, 13, 15–
17
103 Heath, Robertson 12, 13, 15–
17

14 103 Heath, Chalk,
Robertson
14
1–18, 20, 21 101 Eligibility 1–18, 20, 21
Overall
Outcome
1–18, 20, 21

TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED