Hao, Jianxiu et al.

Patent Trials and Appeals Board

Jun 12, 2020

11495274 - (D) (P.T.A.B. Jun. 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.
11/495,274 07/28/2006 Jianxiu Hao VZ06044 2649
170055 7590 06/12/2020
VERIZON - HH
VERIZON PATENTING GROUP
1300 I STREET NW
SUITE 500 EAST
WASHINGTON, DC 20005
EXAMINER
TOKARCZYK, CHRISTOPHER B
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
06/12/2020 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):
VZPatent170055@verizon.com
ptomail@harrityllp.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JIANXIU HAO, ZHIYING JIN,
DAHAI REN, and LAZAR KOYFMAN
____________

Appeal 2019-000754
Application 11/495,274
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and
MEREDITH C. PETRAVICK, Administrative Patent Judges.

FETTING, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE1
Jianxiu Hao, Zhiying Jin, Dahai Ren, and Lazar Koyfman
(Appellant2) seeks review under 35 U.S.C. § 134 of a final rejection of
claims 1–4, 6–14, 16–19, and 22–26, the only claims pending in the
application on appeal. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).
The Appellant invented a way of providing a client device with
requested information and advertisements. Specification para. 12.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A method, comprising:
[1] receiving, by a server,
a first request for information that is related to a specified
location,
the first request for information being received from a
client device via a communications network;
[2] formulating, by the server,
a first query configured to retrieve one or more
advertisements related to the specified location;

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed August 10, 2018) and Reply Brief (“Reply Br.,” filed November
6, 2018), and the Examiner’s Answer (“Ans.,” mailed September 18, 2018),
and Final Action (“Final Act.,” mailed March 21, 2018).
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Verizon
Communications Inc. (Appeal Br. 3).

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[3] providing, by the server and to an advertisement database,
the first query;
[4] receiving, by the server and from the advertisement
database,
a response to the first query, the response to the first
query
including one or more advertisements related to
the specified location;
[5] selecting, by the server,
a particular advertisement, from the one or more
advertisements,
to be sent to the client device,
the server selecting the particular advertisement based on
a randomly selected selection heuristic, the randomly
selected selection heuristic including one of:
a round robin selection heuristic,
a random selection heuristic,
a weighted round robin selection heuristic,
or
a modified random selection heuristic;
[6] formulating, by the server and based on the first request,
a second query
configured to retrieve the information that is
related to the specified location;
[7] providing, by the server and to a content database and a map
database,
the second query;
[8] sending, by the server,
the particular advertisement,
the client device displaying the particular advertisement
during a period of time in which the second query is
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being processed by the content database and the map
database;
[9] receiving, by the server and from the content database and
the map database,
a first search result that is responsive to the second query,
the first search result including:
the information that is related to the specified
location,
and
a map displaying a geographic area associated with
the specified location;
and
[10] sending, by the server and to the client device, the first
search result after sending the particular advertisement to the
client device, the client device one of:
displaying the first search result, after the period of time
in which the second query is being processed by the
content database and the map database, instead of
displaying the particular advertisement,
or
displaying the particular advertisement for a particular
amount of time before displaying the first search result.
The Examiner relies upon the following prior art:
Name Reference Date
McGuire US 2003/0023489 A1 Jan. 30, 2003
Durand US 2005/0245241 A1 Nov. 3, 2005
Ives US 2007/0067305 A1 Mar. 22, 2007
Claims 1–4, 6–14, 16–19, and 22–26 stand rejected under 35 U.S.C.
§ 101 as directed to a judicial exception without significantly more.
Claims 1–4, 6–14, 16–19, and 22–26 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Ives, McGuire, and Durand.
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ISSUES
The issues of eligible subject matter turn primarily on whether the
claims recite more than abstract conceptual advice of results desired.
The issues of obviousness turn primarily on whether the art applied
describes all limitations.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to the Prior Art
Ives
01. Ives is directed to servers for search engine systems, providing
a search service over a wireless network, using the search service,
and to corresponding apparatus or software. Ives para. 2.
02. Ives describes a query server of a mobile search engine system
for searching content items accessible online, the query server
being arranged to send search results across a wireless network to
a mobile device for presentation to a user by a browser on the
mobile device in response to a search query, and being arranged to
send at least a first screenview of the search results to the browser,
and send instructions in a scripting language to the browser for a
background process to be run by the browser at least while the
first screenview is presented to the user, the query server and the
background process being arranged to cooperate to send further
information to the mobile device relating to the search results, for
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presentation to the user under the control of the scripting language
instructions. Ives para. 15.
03. Ives describes search results being split by a query server so
that the user can view the first screenview while the background
process is used to download the rest of the information relating to
the search results. Thus the critical delay before the user can view
the first results can thus be reduced since less information need be
contained in the first screenview. The further information relating
to the search results can then be viewed as desired without the
need for a further round trip delay across the wireless network.
Furthermore the use of the instructions to control presentation of
the further information means the user can be presented with a
simpler navigation model than that possible with the limitations of
scrolling and or page-reloading required in the known browser
solution. Ives para. 16.
04. Ives describes using a background process to display
information such as advertising material during the wait interval
while a page is being downloaded. This can reduce the amount of
page space per result item by not displaying adverts at the same
time as result items. Instead, the interval between pressing a key
that initiates a page change and the desired page being ready to be
displayed, is used to display advertising content. A search query
page is sent with interval advertising material and scripting
language instructions for presenting the material. The search
query page is displayed, and the background process stores the
interval advert. Ives para. 123–124.
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McGuire
05. McGuire is directed to the targeted distribution of
advertisements over a network. McGuire para. 2.
06. McGuire describes available advertisements for a web site and
location combination being served in a round robin manner.
McGuire para. 116.
Durand
07. Durand is directed to providing mobile advertising and
directory service to wireless handsets in a rich multimedia format.
Durand para. 3.
08. Durand describes an exemplary presentation that shows a map
that is specific to the user’s current, default, or manually entered
location. Durand para. 115.
ANALYSIS
Claims 1–4, 6–14, 16–19, and 22–26 rejected under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more
STEP 13
Claim 1, as a method claim, nominally recites one of the enumerated
categories of eligible subject matter in 35 U.S.C. § 101. The issue before us
is whether it is directed to a judicial exception without significantly more.

3 For continuity of analysis, we adopt the steps nomenclature from 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) (“Revised Guidance”).
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STEP 2
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, . . .
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. If so, we then ask, “[w]hat
else is there in the claims before us? To answer that question, .
. . consider the elements of each claim both individually and “as
an ordered combination” to determine whether the additional
elements “transform the nature of the claim” into a patent-
eligible application. [The Court] described step two of this
analysis as a search for an “‘inventive concept’”—i.e., an
element or combination of elements that is “sufficient to ensure
that the patent in practice amounts to significantly more than a
patent upon the [ineligible concept] itself.”
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014) (citations
omitted) (citing Mayo Collaborative Servs. v. Prometheus Labs, Inc.,
566 U.S. 66 (2012)). To perform this test, we must first determine what the
claims are directed to. This begins by determining whether the claims recite
one of the judicial exceptions (a law of nature, a natural phenomenon, or an
abstract idea). Then, if the claims recite a judicial exception, determining
whether the claims at issue are directed to the recited judicial exception, or
whether the recited judicial exception is integrated into a practical
application of that exception, i.e., that the claims “apply, rely on, or use the
judicial exception in a manner that imposes a meaningful limit on the
judicial exception, such that the claim is more than a drafting effort designed
to monopolize the judicial exception.” Revised Guidance, 84 Fed. Reg. at
54. If the claims are directed to a judicial exception, then finally
determining whether the claims provide an inventive concept because the
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additional elements recited in the claims provide significantly more than the
recited judicial exception.
STEP 2A Prong 1
At a high level, and for our preliminary analysis, we note that method
claim 1 recites receiving request data, formulating and providing query data,
receiving response data, selecting advertisement data, formulating and
providing more query data, sending advertisement data, receiving search
result data, and sending advertisement and search result data. Formulating
data is analyzing and generating data. Providing data is transmitting data.
Thus, claim 1 recites receiving, generating, transmitting, and analyzing data.
None of the limitations recite technological implementation details for any
of these steps, but instead recite only results desired by any and all possible
means.
From this we see that claim 1 does not recite the judicial exceptions of
either natural phenomena or laws of nature.
Under Supreme Court precedent, claims directed purely to an abstract
idea are patent in-eligible. As set forth in the Revised Guidance, which
extracts and synthesizes key concepts identified by the courts, abstract ideas
include (1) mathematical concepts4, (2) certain methods of organizing
human activity5, and (3) mental processes6. Among those certain methods

4 See, e.g., Gottschalk v. Benson, 409 U.S. 63, 71–72 (1972); Bilski v.
Kappos, 561 U.S. 593, 611 (2010); Mackay Radio & Telegraph Co. v. Radio
Corp. of Am., 306 U.S. 86, 94 (1939); SAP America, Inc. v. InvestPic, LLC,
898 F.3d 1161, 1163 (Fed. Cir. 2018).
5 See, e.g., Bilski, 561 U.S. at 628; Alice, 573 U.S. at 219-20; Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed Cir. 2014); Smart Sys.
Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1383 (Fed. Cir.
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of organizing human activity listed in the Revised Guidance are commercial
or legal interactions. Like those concepts, claim 1 recites the concept of
managing advertising. Specifically, claim 1 recites operations that would
ordinarily take place in advising one to select and send an ad with search
results from a query including a specified location. The advice to select and
send an ad with search results from a query including a specified location
involves sending a particular advertisement, which is an economic act, and
selecting the particular advertisement, which is an act ordinarily performed
in the stream of commerce. For example, claim 1 recites “sending the
particular advertisement,” which is an activity that would take place
whenever one is displaying advertising over some media. Similarly, claim 1
recites “selecting the particular advertisement,” which is also characteristic
of advertising management.
The Examiner determines the claims to be directed to sending
advertising. Final Act. 3. The preamble to claim 1 does not recite what it is
to achieve, but the steps in claim 1 result in selecting and sending an ad with
search results from a query including a specified location absent any
technological mechanism other than a conventional computer for doing so.
As to the specific limitations, limitations 1–10 recite generic and
conventional receiving, generating, transmitting, and analyzing of
advertising, query, and location data, which advise one to apply generic
functions to get to these results. The limitations thus recite advice for

2017); In re Marco Guldenaar Holding B.V., 911 F.3d 1157, 1160–61 (Fed.
Cir. 2018).
6 See, e.g., Benson, 409 U.S. at 67; CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1371–72 (Fed. Cir. 2011); Intellectual Ventures I LLC
v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016).
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selecting and sending an ad with search results from a query including a
specified location. To advocate selecting and sending an ad with search
results from a query including a specified location is conceptual advice for
results desired and not technological operations.
The Specification at paragraph 12 describes the invention as relating
to providing a client device with requested information and advertisements.
Thus, all this intrinsic evidence shows that claim 1 recites managing
advertising. This is consistent with the Examiner’s determination.
This in turn is an example of commercial or legal interactions as a
certain method of organizing human activity because managing advertising
coordinates interactions to advertise goods and services in the promotion of
commerce. The concept of managing advertising by selecting and sending
an ad with search results from a query including a specified location is one
idea for managing the selection and transmission. The steps recited in claim
1 are part of how this might conceptually be premised.
Our reviewing court has found claims to be directed to abstract ideas
when they recited similar subject matter. Ultramercial, Inc. v. Hulu, LLC,
772 F.3d 709, 715 (Fed. Cir. 2014)(advertising).
From this we conclude that at least to this degree, claim 1 recites
managing advertising by selecting and sending an ad with search results
from a query including a specified location, which is a commercial and legal
interaction, one of certain methods of organizing human activity identified in
the Revised Guidance, and, thus, an abstract idea.
STEP 2A Prong 2
The next issue is whether claim 1 not only recites, but is more
precisely directed to this concept itself or whether it is instead directed to
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some technological implementation or application of, or improvement to,
this concept i.e. integrated into a practical application.7
At the same time, we tread carefully in construing this
exclusionary principle lest it swallow all of patent law. At
some level, “all inventions ... embody, use, reflect, rest upon, or
apply laws of nature, natural phenomena, or abstract ideas.”
Thus, an invention is not rendered ineligible for patent simply
because it involves an abstract concept. “[A]pplication[s]” of
such concepts “ ‘to a new and useful end,’ ” we have said,
remain eligible for patent protection. Accordingly, in applying
the § 101 exception, we must distinguish between patents that
claim the “ ‘buildin[g] block[s]’ ” of human ingenuity and those
that integrate the building blocks into something more.
Alice, 573 U.S. at 217 (citations omitted).
Taking the claim elements separately, the operation performed by the
computer at each step of the process is expressed purely in terms of results,
devoid of implementation details. Steps 1, 4, and 9 are pure data gathering
steps. Limitations describing the nature of the data do not alter this. Steps
3, 7, 8, and 10 recite basic conventional data operations such as generating,
updating, and storing data. Steps 2, 5, and 6 recite generic computer
processing expressed in terms of results desired by any and all possible
means and so present no more than conceptual advice. All purported
inventive aspects reside in how the data is interpreted and the results desired,
and not in how the process physically enforces such a data interpretation or
in how the processing technologically achieves those results.
Viewed as a whole, Appellant’s claim 1 simply recites the concept of
managing advertising by selecting and sending an ad with search results

7 See, e.g., Alice, 573 U.S. at 223, discussing Diamond v. Diehr, 450 U.S.
175 (1981).
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from a query including a specified location as performed by a generic
computer. This is no more than conceptual advice on the parameters for this
concept and the generic computer processes necessary to process those
parameters, and do not recite any particular implementation.
Claim 1 does not, for example, purport to improve the functioning of
the computer itself. Nor does it effect an improvement in any other
technology or technical field. The 16+ pages of specification do not bulge
with disclosure, but only spell out different generic equipment8 and
parameters that might be applied using this concept and the particular steps
such conventional processing would entail based on the concept of
managing advertising by selecting and sending an ad with search results
from a query including a specified location under different scenarios. They
do not describe any particular improvement in the manner a computer
functions. Instead, claim 1 at issue amounts to nothing significantly more
than an instruction to apply managing advertising by selecting and sending
an ad with search results from a query including a specified location using
some unspecified, generic computer. Under our precedents, that is not
enough to transform an abstract idea into a patent-eligible invention. See
Alice, 573 U.S. at 225–26.
None of the limitations reflect an improvement in the functioning of a
computer, or an improvement to other technology or technical field, applies
or uses a judicial exception to effect a particular treatment or prophylaxis for
a disease or medical condition, implements a judicial exception with, or uses

8 The Specification describes any one of a number of known mobile or
portable computing devices, such as a cellular telephone, personal digital
assistant, handheld computer. Spec. para. 13.
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a judicial exception in conjunction with, a particular machine or manufacture
that is integral to the claim, effects a transformation or reduction of a
particular article to a different state or thing, or applies or uses the judicial
exception in some other meaningful way beyond generally linking the use of
the judicial exception to a particular technological environment, such that
the claim as a whole is more than a drafting effort designed to monopolize
the exception.
We conclude that claim 1 is directed to achieving the result of
managing advertising by advising one to select and send an ad with search
results from a query including a specified location, as distinguished from a
technological improvement for achieving or applying that result. This
amounts to commercial or legal interactions, which fall within certain
methods of organizing human activity that constitute abstract ideas. The
claim does not integrate the judicial exception into a practical application.
STEP 2B
The next issue is whether claim 1 provides an inventive concept
because the additional elements recited in the claim provide significantly
more than the recited judicial exception.
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The introduction of a computer into the claims does not generally alter
the analysis at Mayo step two.
the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea “while adding the words ‘apply it’” is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological environment.’”
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implement[t]” an abstract
idea “on . . . a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the preemption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of “additional
feature[e]” that provides any “practical assurance that the
process is more than a drafting effort designed to monopolize
the [abstract idea] itself.”
Alice, 573 U.S. at 223–24 (citations omitted).
“[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea [] on a generic
computer.” Alice, 573 U.S. at 225. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer for receiving, generating, transmitting, and analyzing data amounts
to electronic data query and retrieval—one of the most basic functions of a
computer. The limitations of the client device displaying data (in steps 8
and 10) are not steps, but recitations of what another device is to do with the
claim results, viz. an expected further action, which is outside the sequence
of recited steps and therefore aspirational rather than functional. Even
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giving these weight, however, they are still no more than conventional data
display with rudimentary analysis to determine what to display. All of these
computer functions are generic, routine, conventional computer activities
that are performed only for their conventional uses. See Elec. Power Grp.
LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). See also In re
Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316 (Fed.
Cir. 2011) (“Absent a possible narrower construction of the terms
‘processing,’ ‘receiving,’ and ‘storing,’ . . . those functions can be achieved
by any general purpose computer without special programming”). None of
these activities is used in some unconventional manner nor does any produce
some unexpected result. Appellant does not contend it invented any of these
activities. In short, each step does no more than require a generic computer
to perform generic computer functions. As to the data operated upon, “even
if a process of collecting and analyzing information is ‘limited to particular
content’ or a particular ‘source,’ that limitation does not make the collection
and analysis other than abstract.” SAP America, Inc. v. InvestPic LLC, 898
F.3d 1161, 1168 (Fed. Cir. 2018).
Considered as an ordered combination, the computer components of
Appellant’s claim 1 add nothing that is not already present when the steps
are considered separately. The sequence of data reception-generation-
transmission-analysis is equally generic and conventional. See
Ultramercial, 772 F.3d at 715 (sequence of receiving, selecting, offering for
exchange, display, allowing access, and receiving payment recited an
abstraction), Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d
1372, 1378 (Fed. Cir. 2017) (sequence of data retrieval, analysis,
modification, generation, display, and transmission), Two-Way Media Ltd. v.
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Comcast Cable Communications, LLC, 874 F.3d 1329, 1339 (Fed. Cir.
2017) (sequence of processing, routing, controlling, and monitoring). The
ordering of the steps is therefore ordinary and conventional.
We conclude that claim 1 does not provide an inventive concept
because the additional elements recited in the claim do not provide
significantly more than the recited judicial exception.
REMAINING CLAIMS
Claim 1 is representative. The remaining method claims merely
describe process parameters. We conclude that the method claims at issue
are directed to a patent-ineligible concept itself, and not to the practical
application of that concept.
As to the structural claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long “warn[ed] ... against” interpreting § 101“in
ways that make patent eligibility ‘depend simply on the
draftsman’s art.’
Alice, 573 U.S. at 226. As a corollary, the claims are not directed to any
particular machine.
LEGAL CONCLUSION
From these determinations we further determine that the claims do not
recite an improvement to the functioning of the computer itself or to any
other technology or technical field, a particular machine, a particular
transformation, or other meaningful limitations. From this we conclude the
claims are directed to the judicial exception of the abstract idea of certain
methods of organizing human activity as exemplified by the commercial and
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legal interaction of managing advertising by advising one to select and send
an ad with search results from a query including a specified location, without
significantly more.
APPELLANT’S ARGUMENTS
As to Appellant’s Appeal Brief arguments, we adopt the Examiner’s
determinations and analysis from Final Action 2–6 and Answer 3–7 and
reach similar legal conclusions. We now turn to the Reply Brief.
We are not persuaded by Appellant's argument that
the Examiner is just making a conclusory allegation that the
limitations of the independent [claim] “describe abstract ideas
that correspond to concepts identified as abstract ideas by the
courts" and is then just reciting concepts that the concepts
identified by the courts (final Office Action at page 3).
Therefore, the Examiner fails to consider “the claim as a whole"
or identify the alleged abstract idea “as it is recited (i.e., set
forth or described) in the claim.”
Reply Br. 3. Such consideration and identification are shown supra.
We are not persuaded by Appellant's argument that
Appellant also demonstrated that, for example, independent
claim 1 as a whole is directed to enabling a computing device to
provide a local advertisement to client devices associated with
potential customers located near an entity associated with the
local advertisement based on search queries submitted via the
client devices and to enabling the client devices to display the
local advertisement only while the search queries are being
processed. Such an arrangement enables the entity to conserve
computing resources associated with providing the local
advertisement to client devices not located near the entity. The
arrangement also enables the client devices to conserve
computing resources associated with displaying the
advertisement with search results.
Reply Br. 3. The first sentence shows that, as we determine supra, the
claims are directed to the judicial exception of the abstract idea of certain
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methods of organizing human activity as exemplified by the commercial and
legal interaction of managing advertising by advising one to select and send
an ad with search results from a query including a specified location, without
significantly more. Limitations regarding timing of display are no more than
timing parameters based on when data is available for display — the ad is
retrieved first and displayed first. Conservation of resources is no more than
a serendipitous side effect of timing in any context.
Appellant further argues that the asserted claims are akin to the
claims found patent-eligible in DDR Holdings, LLC v. Hotels.com, L.P.
773 F.3d 1245 (Fed. Cir. 2014). Reply Br. 3–4. In DDR Holdings, the
Court evaluated the eligibility of claims “address[ing] 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. There, the Court
found that the claims were patent eligible because they transformed the
manner in which a hyperlink typically functions to resolve a problem
that had no “pre-Internet analog.” Id. at 1258. The Court cautioned,
however, “that not all claims purporting to address Internet-centric
challenges are eligible for patent.” Id. For example, in DDR Holdings
the Court distinguished the patent-eligible claims at issue from claims
found patent-ineligible in Ultramercial. See id. at 1258–59 (citing
Ultramercial, 772 F.3d a t 15–16). As noted there, the Ultramercial
claims were “directed to a specific method of advertising and content
distribution that was previously unknown and never employed on the
Internet before.” Id. at 1258 (quoting Ultramercial, 772 F.3d at 715–
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16). Nevertheless, those claims were patent ineligible because they
“merely recite[d] the abstract idea of ‘offering media content in exchange
for viewing an advertisement,’ along with ‘routine additional steps such as
updating an activity log, requiring a request from the consumer to view the
ad, restrictions on public access, and use of the Internet.’” Id.
Appellant’s asserted claims are analogous to claims found ineligible
in Ultramercial and distinct from claims found eligible in DDR Holdings.
The ineligible claims in Ultramercial recited “providing [a] media product
for sale at an Internet website;” “restricting general public access to said
media product;” “receiving from the consumer a request to view [a]
sponsor message;” and “if the sponsor message is an interactive message,
presenting at least one query to the consumer and allowing said consumer
access to said media product after receiving a response to said at least one
query.” 772 F.3d at 712. Similarly, Appellant’s asserted claims recite
receiving, generating, transmitting, and analyzing data. This is precisely
the type of Internet activity found ineligible in Ultramercial.
We are not persuaded by Appellant's argument that
the claims focus on providing computer capabilities that did
not previously exist (e.g., a capability of enabling a
computing device to provide a local advertisement to client
devices located near an entity associated with the local
advertisement based on search queries submitted via the
client devices, and enabling the client devices to display the
local advertisement only while the search queries are being
processed).
Reply Br. 4. This is not a computer capability but an information timing
provision. At best, the claims improve the information presented to a
prospect by product marketers. This is insufficient for patent eligibility.
“The claims are focused on providing information to traders in a way that
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helps them process information more quickly, not on improving computers
or technology. . . . The “tool for presentation” here . . . is simply a generic
computer.” Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1378, 1384–85
(Fed. Cir. 2019)(citations omitted).
We are not persuaded by Appellant’s argument that the claims contain
an inventive concept that is also found in the specific ordered combination
of the limitations, similar to the Federal Circuit's findings in BASCOM
(BASCOM Global Internet v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir.
2016)). Reply Br. 4–5. Initially, we remind Appellant that BASCOM did
not find claims eligible on the substance, but rather that the Appellees did
not provide sufficient evidence to support a 12(b)(6) motion to dismiss in
which facts are presumed in the non-movant’s favor.
The key fact in BASCOM was the presence of a structural change in
“installation of a filtering tool at a specific location, remote from the end-
users, with customizable filtering features specific to each end user. This
design gives the filtering tool both the benefits of a filter on a local computer
and the benefits of a filter on the ISP server.” BASCOM, 827 F.3d at 1350.
The instant claims have no analogous structural benefit.
Appellants cite Berkheimer for the proposition that evidence of
something being conventional is necessary. Berkheimer v. HP Inc.,
881F.3d1360 (Fed. Cir. 2018). Reply Br. 5. Support for this finding is
provided under Step 2B supra.
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Claims 1–4, 6–14, 16–19, and 22–26 rejected under 35 U.S.C. § 103(a) as
unpatentable over Ives, McGuire, and Durand
We are persuaded by Appellant's argument that
even assuming, paragraph 119 of IVES discloses
“advertisements related to the specific location,” . . . this does
not disclose or suggest a server sending “the first search result”
to the client device after the same server “send[s] the particular
advertisement to the client device,” let alone that “the first
search result” and “the particular advertisement,” are related to
the same, specified location.
Reply Br. 8. The Examiner determines that further background searching
occurs during ad display. Ans. 7–8. This does not describe the
advertisement being displayed prior to the first search result. Instead, Iver
describes displaying ads in the interval following a search result while
processing the next result.
CONCLUSIONS OF LAW
The rejection of claims 1–4, 6–14, 16–19, and 22–26 under 35 U.S.C.
§ 101 as directed to a judicial exception without significantly more is proper.
The rejection of claims 1–4, 6–14, 16–19, and 22–26 under 35 U.S.C.
§ 103(a) as unpatentable over Ives, McGuire, and Durand is improper.
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CONCLUSION
The rejection of claims 1–4, 6–14, 16–19, and 22–26 is affirmed.

In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–4, 6–14,
16–19, 22–26
101 Eligibility 1–4, 6–14,
16–19, 22–26

1–4, 6–14,
16–19, 22–26
103 Ives, McGuire,
Durand
1–4, 6–14,
16–19, 22–26
Overall Outcome 1–4, 6–14,
16–19, 22–26

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2011).

AFFIRMED